from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 95/002, 009.
Lourie, Moore, and Reyna, Circuit Judges.
(Taiwan) Corporation moves the court to remand this case to
the Patent Trial and Appeal Board with instructions to vacate
certain aspects of its final decision in the underlying
inter partes reexamination and issue a reexamination
certificate. Power Integrations, Inc. opposes the motion. We
agree with Fairchild and grant the motion.
is the owner of U.S. Patent No. 7, 259, 972 ("the
'972 patent"). In 2008, Fairchild charged Power
Integrations with infringement of three patents, including
claims 6, 7, 18, and 19 of the '972 patent. The
jury's verdict rejected Power Integrations's argument
that the '972 patent claims were invalid under 35 U.S.C.
§ 103 in view of Majid and Balakrishnan and found that
the patent claims had been infringed. On appeal, this court
upheld the jury's obviousness determination but reversed
its findings on infringement, and remanded for further
proceedings unrelated to the '972 patent claims.
Power Integrations, Inc. v. Fairchild Semiconductor
Int'l, Inc., 843 F.3d 1315, 1340-42 (Fed. Cir.
2012, Power Integrations requested inter partes
reexamination of claims 1, 2, 5-7, 11, 12, 15, 17-19, 22, 32,
34, and 52-66 of the '972 patent. The examiner rejected
all of the claims in the reexamination, including claims 6,
7, 18, and 19, finding those claims unpatentable under §
103(a) in view of TEA1401T and Balakrishnan. In December
2015, the Board issued a decision affirming the
examiner's rejection of the claims. After the Board
denied Fairchild's request for rehearing, Fairchild
appealed to this court in October 2016. Fairchild brought
this motion to vacate and remand following the issuance of
this court's mandate in Power Integrations.
the version of 35 U.S.C. § 317(b) (2006) that governs
this case, no inter partes reexamination proceeding
can be brought or "maintained" on
"issues" that a party "raised or could have
raised" in a civil action arising in whole or in part
under 28 U.S.C. § 1338 once "a final decision has
been entered" in the civil action that "the party
has not sustained its burden of proving the invalidity"
of the patent claim. Put simply, "[i]f a defendant
brought an invalidity challenge in a district court
litigation and was unsuccessful, it is not permitted to bring
the same challenge in an inter partes
reexamination." Function Media, L.L.C. v.
Kappos, 508 F.App'x 953, 955-56 (Fed. Cir. 2013)
(holding that there was no basis for continuing an appeal in
light of § 317(b)).
held that this restriction applies when "all appeals
have terminated." Bettcher Indus., Inc. v. Bunzl
USA, Inc., 661 F.3d 629, 646 (Fed. Cir. 2011). That is
precisely the situation here. The district court entered
judgment against Power Integrations, holding that it failed
to prove claims 6, 7, 18, and 19 were obvious over Majid and
Balakrishnan. This court affirmed the holding, and the time
to petition for a writ of certiorari has passed. Moreover,
Power Integrations does not dispute that these obviousness
grounds could have been raised in the civil action in which
it failed to meet its burden.
it is true that in Power Integrations this court
vacated and remanded for additional proceedings, we cannot
agree with Power Integrations that this renders the decision
not "final" for § 317(b) purposes. Critically,
those proceedings are unrelated to the '972 patent. By
its terms, § 317(b) is concerned with a final decision
"that the party has not sustained its burden of proving
the invalidity of any patent claim." And here, Power
Integrations does not suggest, nor is there any reason to
believe, that any unresolved issue on remand would have any
effect on the now-final '972 patent validity
we persuaded by Power Integrations's argument concerning
the remaining claims that Fairchild appealed. Fairchild has
asked the court to consider its appeal concerning the
remaining claims abandoned and to remand only those claims at
issue in Power Integrations. Power Integrations
fails to offer any persuasive reason why such request should
not be granted. While Fairchild is abandoning independent
claims 1 and 15, that has no bearing on the application of
§ 317(b) here.
remand, the Board is ordered to dismiss the reexamination of
claims 6, 7, 18, and 19 of the '972 patent. Fairchild has
abandoned its appeal of the decision affirming the rejection
of claims 1, 2, 5, 11, 12, 15, 17, 22, 32, 34, and 52-66, and
therefore the Board is further ordered to enter a
reexamination certificate invalidating those claims.
It Is Ordered That:
motion is granted. The case is remanded for further