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 OBJECTIONS UNDER 37 C.F.R. § 42.64 TO
`PATENT OWNER’S EVIDENCE SUBMITTED WITH
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`1
`
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`
`
`
`____________
`
`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 OBJECTIONS UNDER 37 C.F.R. § 42.64 TO
`PATENT OWNER’S EVIDENCE SUBMITTED WITH
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`1
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`
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`Petitioner’s Objections to Patent Owner’s Evidence for IPR2016-01600
`
`Petitioner, ON Semiconductor, respectfully submits the following objections
`
`to exhibits filed on November 22, 2016 by Patent Owner in conjunction with its
`
`Patent Owner Preliminary Response (Paper 8). These objections are made within
`
`ten business days from the institution of the trial on February 17, 2017 (see Paper
`
`11).
`
`The following chart lists Petitioner’s objections to the admissibility of
`
`certain documents (identified below) that accompany Patent Owner’s Preliminary
`
`Response and the basis for those objections:
`
`Objected to Exhibit
`
`Basis for Objection
`
`
`1. Exhibit 2001
`(document regarding merger
`transaction)
`
`2. Exhibit 2002
`(document regarding merger
`transaction)
`
`3. Exhibit 2003
`(district court litigation
`document)
`
`4. Exhibit 2005
`(document regarding merger
`transaction)
`
`5. Exhibit 2006
`(district court litigation
`document)
`
`
`
`
`FRE 401-403: At least because the exhibits and the
`
`statements
`
`therein are
`
`irrelevant and
`
`therefore
`
`inadmissible, and/or their probative value, if any, is
`
`substantially outweighed by a danger of one or more
`
`of the following: unfair prejudice, confusing the
`
`issues, and/or wasting time.
`
`For example, several of the exhibits, including Exs.
`
`2001, 2002, 2005, and 2007, concern a merger
`
`transaction
`
`involving
`
`ON
`
`Semiconductor
`
`Corporation, Falcon Operations Sub, Inc., and
`
`2
`
`
`
`
`
`Petitioner’s Objections to Patent Owner’s Evidence for IPR2016-01600
`
`
`6. Exhibit 2007
`(document regarding merger
`transaction)
`
`7. Exhibit 2008
`(oscilloscope
`documentation)
`
`8. Exhibit 2009
`(oscilloscope
`documentation)
`
`
`Fairchild
`
`Semiconductor
`
`International,
`
`Inc.
`
`(“Fairchild”). Because Fairchild and its subsidiaries
`
`had no role in the decision to file the Petition in this
`
`proceeding, the content of the Petition, or the
`
`preparation of
`
`the Petition, and because
`
`the
`
`contemplated merger transaction did not close until
`
`after the filing of the Petition, these exhibits are not
`
`relevant to any issue in this proceeding.
`
`Moreover, Exhibits 2003 and 2006 concern district
`
`court litigation between Patent Owner and Fairchild
`
`and its subsidiaries. Because Fairchild and its
`
`subsidiaries had no role in the decision to file the
`
`Petition in this proceeding, the content of the
`
`Petition, or the preparation of the Petition, and
`
`because the contemplated merger transaction did not
`
`close until after the filing of the Petition, these
`
`exhibits are not relevant to any issue in this
`
`proceeding.
`
`In addition, Exs. 2003 and 2006 are documents from
`
`litigation in district court. This proceeding involves
`
`3
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`Petitioner’s Objections to Patent Owner’s Evidence for IPR2016-01600
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`a standard of proof for invalidating a patent that is
`
`different from the clear and convincing evidence
`
`standard used in district court litigation. See 37
`
`C.F.R. § 42.1(d).
`
` Moreover,
`
`the
`
`litigation
`
`referenced in the exhibits did not involve the prior
`
`art at issue in this proceeding. The different
`
`standard of proof, and the different prior art at issue
`
`in this proceeding renders these exhibits irrelevant
`
`and of little probative value in light of the confusion
`
`that would be introduced by these exhibits.
`
`Finally, Exs. 2008 and 2009 relate to the operation
`
`and functionality of oscilloscopes. Oscilloscopes
`
`are wholly unrelated to the subject matter of the
`
`patent and the particular claims at issue in this
`
`Petition. Therefore, these exhibits are irrelevant to
`
`any issue in this proceeding.
`
`FRE 901:
`
` These exhibits have not been
`
`authenticated. Patent Owner has not provided
`
`evidence regarding the origin of the documents or
`
`whether the documents are true and correct copies.
`
`4
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`Petitioner’s Objections to Patent Owner’s Evidence for IPR2016-01600
`
`March 6, 2017
`Date
`
`
`
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`
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`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
`
`5
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`Petitioner’s Objections to Patent Owner’s Evidence for IPR2016-01600
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`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. §§ 42.6(e), the undersigned certifies that on
`
`the 6th day of March, 2017, a complete and entire copy of PETITIONER’S
`
`OBJECTIONS UNDER 37 C.F.R. § 42.64 TO PATENT OWNER’S
`
`EVIDENCE SUBMITTED WITH PATENT OWNER’S PRELIMINARY
`
`RESPONSE 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
`
`
`
`
`
`March 6, 2017
`Date
`
`
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`
`
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`
`
`
`
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`
`
` /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
`
`
`6
`
`
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