Fairchild (Taiwan) Corp. v. Power Integrations, Inc.
854 F.3d 1364
| Fed. Cir. | 2017Background
- Fairchild owns U.S. Patent No. 7,259,972; Power Integrations sued for noninfringement and invalidity in district court; jury rejected Power Integrations’s §103 obviousness defense for claims 6, 7, 18, 19 and found infringement; this court later affirmed obviousness rulings but reversed infringement and remanded on unrelated issues.
- Power Integrations requested inter partes reexamination in 2012 of numerous claims of the ’972 patent, including claims 6, 7, 18, 19; the PTO examiner rejected those claims as obvious over TEA1401T and Balakrishnan; the PTAB affirmed in 2015.
- Fairchild appealed the PTAB decision to this court; after issuance of this court’s mandate in the earlier litigation (Power Integrations v. Fairchild), Fairchild moved to remand the reexamination to the PTAB to vacate rejections of certain claims and issue a reexamination certificate.
- 35 U.S.C. §317(b) (2006) prohibits maintaining an inter partes reexamination on issues a party raised or could have raised in a civil action once a final decision has been entered that the party failed to prove invalidity.
- The court held that the district- and appellate-court determinations that Power Integrations failed to prove invalidity of claims 6, 7, 18, 19 are final for §317(b) purposes because the remand in the separate appeal concerned matters unrelated to the ’972 patent validity.
- Remedy: the court ordered the PTAB to dismiss the reexamination as to claims 6, 7, 18, 19 and to enter a reexamination certificate invalidating the other claims Fairchild abandoned on appeal.
Issues
| Issue | Fairchild's Argument | Power Integrations' Argument | Held |
|---|---|---|---|
| Whether §317(b) bars maintenance of inter partes reexamination on issues already litigated and finally decided in a civil action | §317(b) prohibits maintaining reexamination of issues Power Integrations raised and lost in district court and on appeal | The earlier appellate remand renders the decision not "final" for §317(b) purposes | §317(b) applies; the prior invalidity rulings are final and bar reexamination of those issues |
| Whether the appellate remand in Power Integrations v. Fairchild prevents §317(b) from applying | Finality exists because remand concerns matters unrelated to the ’972 patent validity | Finality destroyed by the remand in the related appeal | Remand did not affect finality; §317(b) still applies |
| Whether Fairchild’s abandonment of certain appealed claims affects §317(b) application to claims 6,7,18,19 | Abandonment of other claims does not affect §317(b) as to claims already finally decided | Argued relevance of other claim appeals to finality | Abandonment of other claims is irrelevant to §317(b) here |
| Appropriate remedy for claims subject to §317(b) bar | Vacate PTAB rejections of claims 6,7,18,19 and remand for dismissal; issue reexamination certificate for abandoned claims | Opposed remand/vacatur | Court ordered remand to PTAB to dismiss reexamination of claims 6,7,18,19 and enter reexamination certificate invalidating abandoned claims |
Key Cases Cited
- Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315 (Fed. Cir. 2016) (prior appellate decision addressing infringement and obviousness issues)
- Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011) (§317(b) applies when all appeals have terminated)
- Function Media, L.L.C. v. Kappos, [citation="508 F. App'x 953"] (Fed. Cir. 2013) (interpreting §317(b) to bar reexamination of issues unsuccessfully raised in prior district court litigation)