- 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 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 20, 2016 · IPR2016-00478 · APJ James B Arpin · IPR · Institution
The Board denied institution on all challenged claims as time-barred under § 315(b), after dismissing the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner acknowledges that a complaint alleging infringement of the ʼ968 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 8–9. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id. (“[H]owever, a motion to joinder has been filed to join the inter partes review requested in the ’149 petition not later than 1 month after institution in accordance with 37 U.S.C. § 315(c).”). Because we dismiss that Joinder Motion (see supra Section II), we conclude that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ149 IPR” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because we denied the petition in IPR2016-00149, and we did not institute inter partes review in that case, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).1” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied
“’149 IPR, Paper 11, 7; see ’149 IPR, Paper 2, 8–9. In view of our determination that the Petition is time-barred under 35 U.S.C. § 315(b), however, we do not need to decide the separate grounds for denial urged by Patent Owner. See Prelim. Resp. 18–60. IV. ORDER It is, therefore, ORDERED that the Motion for Joinder is dismissed as moot; and FURTHER ORDERED that the Petition is denied as to all challenged claims as untimely filed, and no trial is instituted.” slip op. at 4
Discretionary denialPatents in suitUS 6,965,968 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 20, 2016 · IPR2016-00479 · APJ James B Arpin · IPR · Institution
The Board denied institution on all challenged claims as untimely under § 315(b), after dismissing the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because we denied the petition in IPR2016-00150, and we did not institute inter partes review in that case, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).1” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner acknowledges that a complaint alleging infringement of the ʼ968 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 9. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id. (“[H]owever, a motion to joinder has been filed to join the inter partes review requested in the ’150 petition not later than 1 month after institution in accordance with 37 U.S.C. § 315(c).”). Because we dismiss the Joinder Motion (see supra Section II), we conclude that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ150 IPR” slip op. at 3
Discretionary denialPatents in suitUS 6,965,968 - Lannett Holdings, Inc. v. Astrazeneca ABInstitution deniedPTAB · Feb 2, 2016 · IPR2015-01630 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution for claims 1–16 because Petitioner did not show that the petition was timely under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“instituted “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied
“CONCLUSION Based on evidence of the record, Petitioner has not made sufficient showing that it is not barred from requesting an inter partes review. 35 U.S.C. § 315(b); 37 C.F.R. § 42.104(a).” slip op. at 9
Discretionary denialPatents in suitUS 7,220,767 - Lannett Holdings, Inc. v. Astrazeneca ABInstitution deniedPTAB · Jan 27, 2016 · IPR2015-01629 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution on claims 1–16 because Petitioner failed to show it was not time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“status of Petitioner, and not its registered agent for accepting service, that dictates the proper procedure for service of process. Petitioner is a corporation. Ex. 2027. Delaware Title 6, § 18-105, the statute Petitioner relies on, addresses “Service of process on domestic limited liability companies.” Thus, on its face, it does not apply to service on Petitioner, which is not a limited liability company. Petitioner also does not cite any authority under Delaware law applying this statute to a limited-liability-company agent receiving service on behalf of a corporation. We, therefore, are not persuaded by Petitioner’s argument, which is based on this inapplicable statute. In Delaware, service of process on a corporation “shall be made by delivering a copy personally to . . . the registered agent of the corporation . . . .” 8 Del. C. § 321. Petitioner does not argue that the July 25, 2014 service fails to comply with this applicable statute. Thus, the mere 5 fact that the Proof of Service shows CSC, and not an individual, as having accepted the service, does not persuade us that service on July 25, 2014 was ineffective.” slip op. at 5
Discretionary denialPatents in suitUS 6,750,237 - 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.