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UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC d/b/a
`ON SEMICONDUCTOR
`Petitioner
`
`v.
`
`POWER INTEGRATIONS, INC.
`Patent Owner
`____________
`
`Case No. IPR2016-01600
`Patent 7,834,605
`____________
`
`
`PETITIONER’S REVISED MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
`
`
`1
`
`
`
`
`
`

`
`Petitioner’s Revised Mandatory Notices for IPR2016-01600
`
`Pursuant to 37 C.F.R. § 42.8, Petitioner submits the following revised
`
`Mandatory Notices in support of the Petition for IPR of U.S. Patent 7,834,605.
`
`I. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Petitioner provides the following updated
`
`mandatory notices regarding an opinion issued by the United States Court of
`
`Appeals for the Federal Circuit in a case that was previously identified as a related
`
`matter. The other information provided in Petitioner’s Revised Mandatory Notices
`
`of October 7, 2016 (Paper 6) remains correct, and the information below is
`
`provided as a supplement.
`
`A. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`In Petitioner’s previously filed Revised Mandatory Notices of October 7,
`
`2016 (Paper 6), the following lawsuit and pending appeal involving the ’605 Patent
`
`were identified as related matters: (1) Power Integrations, Inc. v. Fairchild Semi.
`
`Int’l Inc., No. 1:08-cv-00309 (D. Del.) (“D. Del. Litigation”); and (2) Power
`
`Integrations, Inc. v. Fairchild Semi. Int’l., Inc., No. CAFC-15-1329.1 On
`
`December 12, 2016, the Federal Circuit issued an opinion holding that Claims 1
`
`and 2 of the ’605 Patent are invalid as anticipated by Maige. Ex. 1013 at 32-36.
`
`
`1 Associated appeal Power Integrations, Inc. v. Fairchild Semi. Int’l., Inc., No.
`CAFC-15-1388 was consolidated with No. CAFC-15-1329.
`
`
`
`2
`
`

`
`Petitioner’s Revised Mandatory Notices for IPR2016-01600
`
`In the event any fees are required for this update, please charge Deposit
`
`Account No. 02-0384.
`
`January 3, 2017
`Date
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`
` / Roger Fulghum/
`Roger Fulghum (Reg. No. 39,678)
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002-4995
`
`Brian W. Oaks (Reg. No. 44,981)
`Brett J. Thompsen (Reg. No. 69,985)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`
`Attorneys for Petitioner,
`Semiconductor Components Industries, LLC
`d/b/a ON Semiconductor
`
`3
`
`
`
`
`
`
`
`

`
`Petitioner’s Revised Mandatory Notices for IPR2016-01600
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. §§ 42.6(e), the undersigned certifies that on
`
`the 3rd day of January, 2017, a complete and entire copy of PETITIONER’S
`
`REVISED MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 was served on
`
`the patent owner via electronic mail at the following correspondence addresses:
`
`Stephen R. Schaefer (schaefer@fr.com)
`
`Neil A. Warren (warren@fr.com)
`
`IPR10256-0021IPC@fr.com
`
`PTABInbound@fr.com.
`
`
`
`
`
`January 3, 2017
`Date
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` / Roger Fulghum/
`
`Roger Fulghum (Reg. No. 39,678)
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002-4995
`
`Brian W. Oaks (Reg. No. 44,981)
`Brett J. Thompsen (Reg. No. 69,985)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`
`Attorneys for Petitioner,
`Semiconductor Components Industries, LLC
`d/b/a ON Semiconductor
`
`4

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