- PTAB · Mar 2, 2020 · IPR2019-01589 · APJ Kevin W Cherry · IPR · Institution
The Board denied joinder because no proceeding remained to join, then denied institution because the petition was time barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Because IPR2019-00748 has terminated in a Final Written Decision and no proceeding remains for Petitioner to join, we deny Petitioner’s motion to join IPR2019-00748.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Under 35 U.S.C. § 315(b), an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which ... the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.101(b). Because Petitioner was served with a complaint asserting infringement of the ’535 patent more than one year before it filed the Petition, Pet. 5, we deny the Petition as barred under 35 U.S.C. § 315(b).” slip op. at 2
Discretionary denialPatents in suitUS 8,934,535 - Semiconductor Components Industries, LLC D/B/A On Semiconductor v. In-Depth Test LLCInstitution deniedPTAB · Mar 24, 2017 · IPR2016-01833 · APJ Justin T Arbes · IPR · Institution
The Board denied institution on all challenged claims because Fairchild was ON Semiconductor’s privy, making the petition time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“need to be completed before the merger can close. But in assessing privity, we must take into account the practical situation between the parties at the relevant time. In this case, the Merger Agreement had been in place for nearly ten months, all regulatory approvals had been obtained, and the necessary majority of shares had been tendered as of September 16, 2016. Under these circumstances, finding that ON Semiconductor was not in privity with Fairchild on Friday, September 16, 2016—but was in privity after closing on the morning of the next business day, Monday, September 19, 2016—would put form over substance and ignore the practical situation that existed on September 16, 2016.3” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“[o]n November 18, 2015, ON Semiconductor Corporation, Falcon Operations Sub, Inc., and Fairchild Semiconductor International, Inc. (“Fairchild”) entered into an Agreement and Plan of Merger, which calls for Falcon Operations Sub, Inc. to be merged with and into Fairchild, with Fairchild surviving as a wholly-owned subsidiary of ON Semiconductor Corporation. The proposed merger has not yet closed. All of the requirements and closing conditions of the Agreement and Plan of Merger have not been satisfied, and it is uncertain when or whether the merger will close. Fairchild has had no role in the decision to file this Petition, the content of this Petition, or the preparation of this Petition. Fairchild did not contribute in any manner to the funding for this Petition. Fairchild is not a real party in interest or a privy of any petitioner. The real parties in interest do not control and have not controlled any litigation between any affiliate of Fairchild and [Patent Owner]. Pet. 1–2. Patent Owner argues that ON Semiconductor was in privity with Fairchild on September 16, 2016, because (1) all of the conditions precedent for the merger were fully satisfied, such that the merger should be “deemed complete” as of that date, (2) ON Semiconductor will have a full and fair opportunity to litigate the validity of the challenged claims in the district court case, which is ongoing, (3) ON Semiconductor had sufficient control over the district court case based on OSC’s settlement authority and the fact that the case was stayed, and (4) the Petition in this proceeding was timed to” slip op. at 9
Discretionary denialPatents in suitUS 6,792,373 - Target Corporation v. Destination Maternity CorporationInstitution deniedPTAB · Sep 25, 2014 · IPR2014-00509 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the petition was filed more than one year after Target was served with an infringement complaint, barring review under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“The instant Petition, accorded a filing date of March 14, 2014, was filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3
Discretionary denial
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.