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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`------------------------------------X
`SEMICONDUCTOR COMPONENTS INDUSTRIES,
`LLC d/b/a ON SEMICONDUCTOR,
` Petitioner, Case No.
` IPR2016-00809
` vs. Patent 6,212,079
`POWER INTEGRATIONS, INC.,
` Patent Owner.
`------------------------------------X
` TELEPHONE CONFERENCE
` March 30, 2017
`
`B E F O R E :
` Lynne E. Pettigrew
` Brian J. McNamara
` Thomas L. Giannetti
`
`Reported by:
`MARY F. BOWMAN, RPR, CRR
`JOB NO. 121895
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`ON SEMICONDUCTOR EXHIBIT 1014
`ON Semiconductor v. Power Integrations, Inc. - IPR2016-01600
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`------------------------------------X
`SEMICONDUCTOR COMPONENTS INDUSTRIES,
`LLC d/b/a ON SEMICONDUCTOR,
` Petitioner, Case No.
` IPR2016-00809
` vs. Patent 6,212,079
`POWER INTEGRATIONS, INC.,
` Patent Owner.
`------------------------------------X
` TELEPHONE CONFERENCE
` March 30, 2017
`
`B E F O R E :
` Lynne E. Pettigrew
` Brian J. McNamara
` Thomas L. Giannetti
`
`Reported by:
`MARY F. BOWMAN, RPR, CRR
`JOB NO. 121895
`
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`ON SEMICONDUCTOR EXHIBIT 1014
`ON Semiconductor v. Power Integrations, Inc. - IPR2016-01600
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` March 30, 2017
` 2:10 p.m.
`
` Telephone conference, before Mary
` F. Bowman, a Registered Professional
` Reporter, Certified Realtime Reporter, and
` Notary Public of the State of New Jersey.
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`ON SEMICONDUCTOR EXHIBIT 1014
`ON Semiconductor v. Power Integrations, Inc. - IPR2016-01600
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` APPEARANCES:
`
`BAKER BOTTS
`Attorneys for Petitioner
` 910 Louisiana Street
` Houston, TX 77002
`BY: ROGER FULGHUM, ESQ.
` BRETT THOMPSEN, ESQ.
`
`FISH & RICHARDSON
`Attorneys for Patent Owner
` 500 Arguello Street
` Redwood City, CA 94063
`BY: NEIL WARREN, ESQ.
` STEPHEN SCHAEFER, ESQ.
`
`Also present:
`Josh Engel, ON Semiconductor
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`ON SEMICONDUCTOR EXHIBIT 1014
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` JUDGE PETTIGREW: Good afternoon,
` Judge Pettigrew, on the call with me is
` Judge McNamara, and Judge Giannetti may
` be joining us shortly.
` This is a call for IPR 2016-01600
` On Semiconductor versus Power
` Integrations.
` Patent owner requested this call
` to satisfy its requirement under our
` Rule 121(a) to consult with the board
` before filing a motion to amend.
` Who do we have on the call for
` petitioner?
` MR. FULGHUM: Good afternoon. On
` the call for petitioner is Roger
` Fulghum, and also with me is back-up
` counsel, Brett Thompsen. Also on the
` line is senior IP counsel for Witness
` On Semiconductor, Josh Engel, and I
` will also note for the record we have a
` court reporter today on the line.
` MR. FULGHUM: We will ask you
` then to file the transcript as an
` exhibit in due course after the call.
`
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`ON SEMICONDUCTOR EXHIBIT 1014
`ON Semiconductor v. Power Integrations, Inc. - IPR2016-01600
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` MR. FULGHUM: Yes, your Honor.
` JUDGE PETTIGREW: Who is on the
` on the call for patent owner?
` MR. SCHAEFER: Good afternoon,
` Steve Schaefer of Fish & Richardson for
` patent owner Power Integrations. I'm
` lead counsel, and with me on another
` line is Neil Warren who will be taking
` the lead on this call. He is back-up
` counsel.
` JUDGE PETTIGREW: The purpose of
` this call is to provide the parties
` with guidance regarding the filing of a
` motion to amend.
` Patent owner, you provided us by
` e-mail a proposed amended claim and we
` appreciate that. So with that proposed
` amendment in mind, we will review some
` of the procedural requirements for
` filing a motion to amend.
` Generally, well, we refer you to
` the board's decisions in MasterImage
` and Idle Free, as well as the board's
` Office Trial Practice Guide, and after
`
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`ON SEMICONDUCTOR EXHIBIT 1014
`ON Semiconductor v. Power Integrations, Inc. - IPR2016-01600
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` this call, we will issue an order
` summarizing some of the requirements as
` well.
` The first I would like to mention
` is that a motion to amend may cancel
` claims or it may be contingent on a
` determination that the original claims
` are unpatentable. And typically, a
` request to cancel claims will not be
` regarded as contingent and the motion
` should make clear whether the motion is
` contingent.
` Patent owner, you provided us a
` proposed claim 1. Now, are you
` proposing to cancel claims in this
` proceeding?
` MR. WARREN: Your Honor, this is
` Neil Warren for patent owner. We are
` not. We are proposing to amend claim
` 1. The remaining challenged claims are
` dependent from claim 1.
` JUDGE PETTIGREW: Are you -- so
` you are not proposing to cancel any
` claims?
`
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` MR. WARREN: At this point, we
` are not. We would propose to amend
` claim 1 as suggested in the proposal.
` JUDGE PETTIGREW: Are you
` proposing a -- let me rephrase that.
` Are you proposing a substitute for
` claim 1? You would be canceling
` originally claim 1 as it exists, or are
` you only proposing to amend claim one
` should it be determined to be
` unpatentable?
` I think we have a little bit of
` an unusual circumstance in this case in
` which claims 1 and 2 have been
` addressed by the Federal Circuit. The
` parties filed their briefs, is that
` correct?
` MR. WARREN: That's correct, your
` Honor, and we believe notwithstanding
` the finding of the Federal Circuit
` which went to claims 1 and 2, as you
` mentioned, that we can amend claim 1
` within this proceeding.
` We would be happy to provide
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` briefing on that as well if the court
` is amenable, but the current proposal
` is to amend claim 1 and argue the
` patentability based on the amendment of
` claim 1.
` MR. SCHAEFER: This is Steve
` Schaefer. I think just to clarify
` here, we are not going to argue in
` favor of claim 1 in this IPR, in its
` unamended form. We are going to -- and
` I think this might just be what Neil is
` saying -- but we are going to
` substitute for claim 1 an amended
` version that we provided to you. So it
` would be a substitute claim for claim
` 1.
` JUDGE PETTIGREW: Thank you for
` that clarification.
` So with regard to the dependent
` claims, are you planning to file a
` patent owner response to address the
` merits of the patentability of those
` claims as they exist today, meaning as
` they depend from existing claim 1?
`
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` MR. WARREN: No, your Honor.
` This is Neil Warren for patent owner.
` We will be arguing the patentability of
` all of the claims solely based on the
` proposed amendment of claim 1.
` We won't be separately arguing
` the patentability of the dependent
` elements.
` JUDGE PETTIGREW: As they exist
` right now.
` OK, so that brings me to my next
` point which is that dependent claims
` that are not amended will continue to
` have the same scope before and after
` the amendment.
` So in other words, let's take --
` claim 9 is one of the claims at issue
` and it depends directly from claim 1 if
` you do not amend! claim or propose an
` amended claim 9 or a substitute claim
` 9, it will continue to depend from
` claim 1 in its current state.
` Now, if what you intend to do is
` to have dependent claims 2, 5 and 9
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` depend from your proposed substitute
` for claim 1, then the motion to amend
` should propose substitute claims for
` claims 2, 5 and 9 to change the
` dependency.
` MR. WARREN: Understood, your
` Honor. That is our intention and that
` is what we will do then. On that --
` JUDGE PETTIGREW: Go ahead.
` MR. WARREN: My only question
` would be would you prefer that we amend
` them to change the dependency or
` rewrite those claims in a dependent
` form, including the new scope of claim
` 1?
` JUDGE PETTIGREW: I think what
` you can do is to rewrite them or write
` them as dependent claims depending from
` the new claim, and this brings me to
` another point which is the proposed
` substitute for claim 1 should have a
` new number and that will solve some of
` these issues.
` MR. WARREN: Understood.
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` JUDGE PETTIGREW: At this point,
` the patent as issued had 12 claims, so
` the proposed substitute for claim 1
` should be claim 13, and you can also
` propose substitute claims 14, 15 and 16
` that would be substitutes for 2, 5 and
` 6 and would then depend from what would
` be claim 13. Does that make sense?
` MR. WARREN: Yes, Neil Warren for
` the patent owner. That is what we will
` plan to do.
` So what I said earlier about our
` plan, that makes a lot of sense and I
` very much appreciate your guidance on
` that.
` JUDGE PETTIGREW: Thank you. I
` think we are on the same page now.
` So other than that, you're
` probably familiar with the requirements
` for what you need to do substantively.
` The proposed substitute claim should be
` responsive to the ground of
` unpatentability, applicable to the
` original claim.
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` You cannot enlarge the scope of
` the claim. Patent owner should propose
` a claim construction for any term
` that's used in a proposed substitute
` claim that you reasonably anticipate a
` dispute, for which you reasonably
` anticipate a dispute.
` Patent owner bears the burden of
` establishing entitlement to the
` requested relief and that includes
` showing patentability over the prior
` art that's relevant to the substitute
` claims, including the prior art of
` record and prior art known to the
` patent owner and we refer you to the
` MasterImage case in that regard.
` And you also need to show that
` the proposed claims comply with the
` requirement of 112 including the
` written description requirement.
` Patent owner, do you have any
` additional questions?
` MR. WARREN: Your Honor, this is
` Neil Warren for the patent owner. I do
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` not.
` JUDGE PETTIGREW: All right,
` petitioner, do you have any questions?
` MR. FULGHUM: Your Honor, I don't
` think we have any questions. We will
` just note for the record we will
` reserve our rights to oppose the
` amendments on all grounds and we will
` exercise those rights at the
` appropriate time.
` MR. WARREN: Neil Warren for
` patent owner. One issue that I would
` ask is whether or not the court would
` be amenable to us providing our initial
` papers on this by e-mail and getting
` some preliminary guidance from the
` court on them perhaps by a separate
` call prior to the due date of the
` motion to amend?
` JUDGE PETTIGREW: Just a moment.
` Let me confer with my panel on that.
` Exactly what is it you're
` proposing to file, to send us a draft?
` MR. WARREN: Correct, I propose
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` that given the specifics on the
` substantive and the procedural
` requirements, it would be helpful for
` patent owner if we could provide it to
` you and if anything is glaring or
` anything jumps out at you, to get some
` initial guidance on it so we could
` correct it before the due date of the
` final motion to amend and we can do
` that by e-mail and a separate call.
` MR. FULGHUM: Roger Fulghum for
` petitioner. May I speak to that issue?
` JUDGE PETTIGREW: Please go
` ahead, Mr. Fulghum.
` MR. FULGHUM: Your Honor, we
` would oppose that sort of informal
` process. We think the rules of the
` PTAP, the rules of interparties review
` are well set out and they do not
` provide for advisory opinions. We
` think this would be in the nature of an
` advisory opinion.
` This request is unbounded as well
` as in terms of what's being requested,
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` the relief that would be provided, the
` kind of guidance that would be
` provided. This sort of request of an
` advisory nature should not be allowed.
` JUDGE PETTIGREW: Thank you,
` Petitioner.
` Yes, we agree with that. It does
` seem what you are asking for, Patent
` Owner, is in the nature of an advisory
` opinion.
` I think we have clarified, I
` hope, the mechanics of how you need to
` present the proposed substitute claims
` and we are not inclined to give any
` specific guidance regarding the merits
` of your motion before you actually file
` your motion.
` You will have an opportunity,
` after petitioner files his opposition,
` to file a reply in support of your
` motion to amend and also you can look
` at other cases, particularly those in
` which motions to amend have been
` granted and see what has been
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` successful in other cases. And if it
` is helpful to you, we can identify a
` couple of those cases in an order after
` this call.
` MR. WARREN: Understood, your
` Honor. It would be helpful, any
` guidance you can give, and if there are
` specific cases that have similar
` reasoning or give reasoning that your
` Honor supports, that would be very
` helpful.
` JUDGE PETTIGREW: We will plan to
` do that.
` OK, anything else from patent
` owner then?
` MR. WARREN: No, your Honor.
` JUDGE PETTIGREW: Petitioner?
` MR. FULGHUM: No, your Honor.
` JUDGE PETTIGREW: Thank you for
` your time today and this call is
` adjourned.
` Thank you.
` * * * *
`
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` CERTIFICATE
`
` I, MARY F. BOWMAN, a Registered
` Professional Reporter, Certified
` Realtime Reporter, and Notary Public do
` hereby certify:
` The foregoing is a true record of
` the testimony given by in these
` proceedings.
` I further certify that I am not
` related to any of the parties to this
` action by blood or marriage and that I
` am in no way interested in the outcome
` of this matter.
` In witness whereof, I have
` hereunto set my hand this 6th day of
` April, 2017.
`
` __________________________
` MARY F. BOWMAN, RPR, CRR
`
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