- 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 - Tristar Products, Inc. v. Choon’S Design, LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00840 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution in IPR2015-00840 because the petition was filed more than one year after service, triggering the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent” to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner’s arguments regarding “not ha[ving] an opportunity to challenge the alleged February 2[8], 2014 service” and “allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date” (315(b) Br. 5) are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel (the 315(b) Brief), but as noted above, did not allege any procedural defect in that service.” slip op. at 5
Discretionary denialPatents in suitUS 8,622,441 - Tristar Products, Inc. v. Choon’S Design, LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00838 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution in IPR2015-00838 and IPR2015-00840 because the petitions were filed more than one year after service, triggering the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent” to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner’s arguments regarding “not ha[ving] an opportunity to challenge the alleged February 2[8], 2014 service” and “allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date” (315(b) Br. 5) are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel (the 315(b) Brief), but as noted above, did not allege any procedural defect in that service.” slip op. at 5
Discretionary denialPatents in suitUS 8,485,565 - 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.