Trials@uspto.gov
`571-272-7822
`
`Paper: 13
`Entered: November 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC,
`d/b/a ON SEMICONDUCTOR,
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.,
`Patent Owner.
`_______________
`
`IPR2018-01810, IPR2018-01812 (Patent 8,773,871 B2)
`IPR2018-01811, IPR2018-01813 (Patent 6,456,475 B2)
`IPR2018-01814, IPR2018-01815 (Patent 6,337,788 B2)
` IPR2018-01816, IPR2018-01818 (Patent 8,077,483 B2)1
`_______________
`
`Before TREVOR M. JEFFERSON, KRISTINA M. KALAN,
`JULIA HEANEY, and SCOTT B. HOWARD, Administrative Patent
`Judges.2
`
`HOWARD, Administrative Patent Judge.
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`2 This is not an expanded panel. The panel for IPR2018-01810, IPR2018-
`01812, IPR2018-01814, and IPR2018-01815 includes Judges Jefferson,
`Kalan, and Howard. The panel for IPR2018-01811, IPR2018-01813,
`IPR2018-01816, and IPR2018-01818 includes Judges Jefferson, Kalan, and
`Heaney.
`
`
`571-272-7822
`
`Paper: 13
`Entered: November 15, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC,
`d/b/a ON SEMICONDUCTOR,
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.,
`Patent Owner.
`_______________
`
`IPR2018-01810, IPR2018-01812 (Patent 8,773,871 B2)
`IPR2018-01811, IPR2018-01813 (Patent 6,456,475 B2)
`IPR2018-01814, IPR2018-01815 (Patent 6,337,788 B2)
` IPR2018-01816, IPR2018-01818 (Patent 8,077,483 B2)1
`_______________
`
`Before TREVOR M. JEFFERSON, KRISTINA M. KALAN,
`JULIA HEANEY, and SCOTT B. HOWARD, Administrative Patent
`Judges.2
`
`HOWARD, Administrative Patent Judge.
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`2 This is not an expanded panel. The panel for IPR2018-01810, IPR2018-
`01812, IPR2018-01814, and IPR2018-01815 includes Judges Jefferson,
`Kalan, and Howard. The panel for IPR2018-01811, IPR2018-01813,
`IPR2018-01816, and IPR2018-01818 includes Judges Jefferson, Kalan, and
`Heaney.
`
`
`
`IPR2018-01810, IPR2018-01812 (Patent 8,773,871 B2)
`IPR2018-01811, IPR2018-01813 (Patent 6,456,475 B2)
`IPR2018-01814, IPR2018-01815 (Patent 6,337,788 B2)
`IPR2018-01816, IPR2018-01818 (Patent 8,077,483 B2)
`
`
`DECISION and ORDER
`Granting Joint Motions to Terminate Proceeding
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`On November 5, 2019, Petitioner (Semiconductor Components
`Industries, LLC d/b/a ON Semiconductor) and Patent Owner (Power
`Integrations, Inc.) (collectively, the “Parties”) filed in the eight proceedings
`identified below essentially identical Joint Motions to Terminate these
`proceedings, along with a copy of their written settlement agreement. Patent
`Owner also filed essentially identical Motions requesting that the settlement
`agreement be treated as business confidential information, which Petitioner
`opposes. The motions and exhibits are identified below:
`Case
`Motion to
`Settlement
`Motion to Treat Settlement
`Terminate
`Agreement
`Agreement as Confidential
`Paper 13
`Ex. 2003
`Paper 14
`Paper 14
`Ex. 2018
`Paper 15
`Paper 14
`Ex. 2003
`Paper 15
`Paper 13
`Ex. 2018
`Paper 14
`Paper 14
`Ex. 2018
`Paper 15
`Paper 14
`Ex. 2018
`Paper 15
`Paper 10
`Ex. 2006
`Paper 11
`Paper 11
`Ex. 2006
`Paper 12
`
`IPR2018-01810
`IPR2018-01811
`IPR2018-01812
`IPR2018-01813
`IPR2018-01814
`IPR2018-01815
`IPR2018-01816
`IPR2018-01818
`
`For expediency, we cite to the papers filed in IPR2018-01810. The Board
`authorized the filing of the Motions on October 29, 2019, via email.
`
`
` 2
`
`
`
`
`
`
`
`IPR2018-01810, IPR2018-01812 (Patent 8,773,871 B2)
`IPR2018-01811, IPR2018-01813 (Patent 6,456,475 B2)
`IPR2018-01814, IPR2018-01815 (Patent 6,337,788 B2)
`IPR2018-01816, IPR2018-01818 (Patent 8,077,483 B2)
`
`
`Motion to Terminate
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.”
`35 U.S.C. § 317(a) states that if no petitioner remains in the inter
`partes review, the Office may terminate the review. Additionally, the Board
`expects that a proceeding will terminate after the filing of a settlement
`agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,768 (Aug. 14, 2012).
`After we instituted trial in each of the eight proceedings, Patent
`Owner filed its Responses and, in some case, Petitioner filed its Reply. For
`example, in IPR2018-01810, Patent Owner filed its Response on June 26,
`2019 (Paper 11), and Petitioner filed its Reply on September 18, 2019
`(Paper 12). We have not yet decided the merits of any of the proceedings,
`and final written decisions have not been entered in any of the proceedings.
`Notwithstanding that the eight proceedings have moved beyond the
`preliminary stage, the Parties have shown adequately that the termination of
`the proceedings is appropriate. Under these circumstances, we determine
`that good cause exists to terminate the eight proceedings with respect to the
`Parties.
`The Parties must also comply with 37 C.F.R. § 42.74(b), which
`requires that “[a]ny agreement or understanding between the parties made in
`connection with, or in contemplation of, the termination of a proceeding
`
` 3
`
`
`
`
`
`
`
`IPR2018-01810, IPR2018-01812 (Patent 8,773,871 B2)
`IPR2018-01811, IPR2018-01813 (Patent 6,456,475 B2)
`IPR2018-01814, IPR2018-01815 (Patent 6,337,788 B2)
`IPR2018-01816, IPR2018-01818 (Patent 8,077,483 B2)
`
`shall be in writing and a true copy shall be filed with the Board before the
`termination of the trial.” The Parties represent that they “are concurrently
`filing a true and complete copy of their written Definitive Agreement
`(Confidential Exhibit 2003) (‘Settlement Agreement’) in connection with
`this matter pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)–(c).”
`Paper 13, 2. The Parties also represent that “there are no other agreements or
`understandings, oral or written, between the Parties, including any collateral
`agreements, made in connection with, or in contemplation of, the
`termination of the present proceeding.” Id.
`The Parties further represent that (1) “[t]hrough the Settlement
`Agreement, the Parties have agreed to end all outstanding legal and
`administrative disputes between them” (id.); (2) the “Settlement Agreement
`settles all of the above-captioned inter partes review proceedings,
`the . . . district court litigations [between the Parties], and all of the various
`additional legal and administrative disputes between the Parties” (id. at 3);
`and (3) the “concurrent district court litigations involving the[] patents [in
`the Parties’ inter partes review proceedings] has been dismissed” (id. at 5).
`Based on the facts of these proceedings, and in view of the Parties’
`Joint Motions to Terminate, we are persuaded that it is appropriate to
`terminate the eight proceedings with respect to both Parties without
`rendering a final written decision. See 37 C.F.R. §§ 42.5(a), 42.72.
`Therefore, the Joint Motions to Terminate are granted.
`
`
` 4
`
`
`
`
`
`
`
`IPR2018-01810, IPR2018-01812 (Patent 8,773,871 B2)
`IPR2018-01811, IPR2018-01813 (Patent 6,456,475 B2)
`IPR2018-01814, IPR2018-01815 (Patent 6,337,788 B2)
`IPR2018-01816, IPR2018-01818 (Patent 8,077,483 B2)
`
`
`Power Integrations’ Motion to Treat Settlement Agreement as Confidential
`Under 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Patent Owner requests
`that the settlement agreement be treated as business confidential
`information, and be filed separately from the file of the involved patents.
`Paper 14. Petitioner opposes the motions because “the Settlement
`Agreement specifies that the Settlement Agreement is not confidential,” and
`“ON will file a complete copy of the Settlement Agreement as an attachment
`to its next 10-K filed with the Securities and Exchange Commission.” Paper
`13, 2 n.1.
`35 U.S.C. § 317(b) provides that:
`At the request of a party to the proceeding, the agreement or
`understanding shall be treated as business confidential
`information, shall be kept separate from the file of the
`involved patents, and shall be made available only to Federal
`Government agencies on written request, or to any person on
`a showing of good cause.
`See also 37 CFR § 42.74.
`Here, Patent Owner’s motions were timely filed with the Parties’ Joint
`Motions to Terminate. Petitioner opposes the Motions for two reasons.
`First, Petitioner argues that “the Settlement Agreement specifies that the
`Settlement Agreement is not confidential.” Paper 13, 2 n.1. Petitioner,
`however, does not identify support for its argument in the settlement
`agreement. The Parties’ settlement agreement does not prohibit Power
`Integrations from requesting that the settlement agreement be treated as
`business confidential information. Second, Petitioner asserts that it “will file
`a complete copy of the Settlement Agreement as an attachment to its next
`
` 5
`
`
`
`
`
`
`
`IPR2018-01810, IPR2018-01812 (Patent 8,773,871 B2)
`IPR2018-01811, IPR2018-01813 (Patent 6,456,475 B2)
`IPR2018-01814, IPR2018-01815 (Patent 6,337,788 B2)
`IPR2018-01816, IPR2018-01818 (Patent 8,077,483 B2)
`
`10-K filed with the Securities and Exchange Commission.” Id. From this
`assertion, we understand that Petitioner may, at some time in the future,
`publicly disseminate the settlement agreement but has not yet done so.
`Because the settlement agreement has not yet been publicly disseminated,
`we grant Patent Owner’s motions. If the settlement agreement is publicly
`disseminated, the Parties are authorized to file motions to declassify the
`settlement agreement.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is
`ORDERED that Patent Owner’s Motions to treat the settlement
`agreement as business confidential information are granted;
`FURTHER ORDERED that the Parties’ Joint Motions to Terminate
`the nine proceedings are granted; and
`FURTHER ORDERED that the following cases are terminated with
`respect to both Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a)
`and 37 C.F.R. § 42.72:
`IPR2018-01810 (Patent 8,773,871 B2)
`IPR2018-01811 (Patent 6,456,475 B2)
`IPR2018-01812 (Patent 8,773,871 B2)
`IPR2018-01813 (Patent 6,456,475 B2)
`IPR2018-01814 (Patent 6,337,788 B2)
`IPR2018-01815 (Patent 6,337,788 B2)
`IPR2018-01816 (Patent 8,077,483 B2)
` IPR2018-01818 (Patent 8,077,483 B2).
`
` 6
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01810, IPR2018-01812 (Patent 8,773,871 B2)
`IPR2018-01811, IPR2018-01813 (Patent 6,456,475 B2)
`IPR2018-01814, IPR2018-01815 (Patent 6,337,788 B2)
`IPR2018-01816, IPR2018-01818 (Patent 8,077,483 B2)
`
`PETITIONER:
`
`Roger Fulghum
`roger.fulghum@bakerbotts.com
`
`Brian Oaks
`brian.oaks@bakerbotts.com
`
`Nicolas Schuneman
`nick.schuneman@bakerbotts.com
`
`Brett Thompsen
`brett.thompsen@bakerbotts.com
`
`
`PATENT OWNER:
`
`Neil Warren
`warren@fr.com
`
`John Phillips
`phillips@fr.com
`
` 7
`
`
`
`
`
`
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