UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC d/b/a
`ON SEMICONDUCTOR
`Petitioner
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`v.
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`POWER INTEGRATIONS, INC.
`Patent Owner
`____________
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`Case No. IPR2016-01600
`Patent 7,834,605
`____________
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`PETITIONER’S REVISED MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`1
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC d/b/a
`ON SEMICONDUCTOR
`Petitioner
`
`v.
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`POWER INTEGRATIONS, INC.
`Patent Owner
`____________
`
`Case No. IPR2016-01600
`Patent 7,834,605
`____________
`
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`PETITIONER’S REVISED MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`Petitioner’s Revised Mandatory Notices for IPR2016-01600
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`Pursuant to 37 C.F.R. § 42.8, Petitioner submits the following revised
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`Mandatory Notices in support of the Petition for IPR of U.S. Patent 7,834,605.
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`I. MANDATORY NOTICES
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`Real Party in Interest: The real parties in interest are: (i) ON Semiconductor
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`Corporation, (ii) Semiconductor Components Industries, LLC, doing business as
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`ON Semiconductor, and — as of September 19, 2016 — (iii) Fairchild
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`Semiconductor International, Inc., (iv) Fairchild Semiconductor Corporation, (v)
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`Fairchild (Taiwan) Corporation, and (vi) System-General Corporation.
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`On November 18, 2015, ON Semiconductor Corporation, Falcon Operations
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`Sub, Inc., and Fairchild Semiconductor International, Inc. (“Fairchild”) entered
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`into an Agreement and Plan of Merger, which called for Falcon Operations Sub,
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`Inc. to be merged with and into Fairchild, with Fairchild surviving as a wholly-
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`owned subsidiary of ON Semiconductor Corporation. On August 25, 2016, ON
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`Semiconductor Corporation received notice
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`that
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`the U.S. Federal Trade
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`Commission (“FTC”) accepted a proposed consent order for public comment and
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`terminated the Hart-Scott-Rodino waiting period applicable to the proposed merger
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`with Fairchild. (See Exhibit 1011). On September 16, 2016, ON Semiconductor
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`Corporation received confirmation that clearance related to the completion of its
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`proposed merger from the Ministry of Commerce in the People’s Republic of
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`China had been obtained and that ON Semiconductor was entitled to close the
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`Petitioner’s Revised Mandatory Notices for IPR2016-01600
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`transactions under the law of the People’s Republic of China. (See Exhibit 1012).
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`The merger was closed on September 19, 2016, at which time Falcon Operations
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`Sub, Inc., which was previously identified as a real party in interest, was merged
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`with and into Fairchild and ceased to exist. Fairchild and its subsidiaries had no
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`role in the decision to file the Petition, the content of the Petition, or the
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`preparation of the Petition. Fairchild and its subsidiaries did not contribute in any
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`manner to the funding for the Petition. The following entities are identified as
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`additional real parties in interest in this Revised Mandatory Notice, and became
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`real parties in interest as of the close of the merger on September 19, 2016:
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`Fairchild Semiconductor International, Inc., Fairchild Semiconductor Corporation,
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`Fairchild (Taiwan) Corporation, and System-General Corporation. Fairchild
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`Semiconductor International, Inc., Fairchild Semiconductor Corporation, Fairchild
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`(Taiwan) Corporation, and System-General Corporation were not real parties in
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`interest or a privy of Petitioner as of the filing of the Petition or at any time before
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`the close of the merger on September 19, 2016.
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`Although System-General Corporation has not been a named party in
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`litigation involving other patents owned by Patent Owner, System-General
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`Corporation is named herein as a real party in interest because a defendant in a
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`lawsuit entitled Power Integrations, Inc. v. System General Corp., No. 5:04-cv-
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`02851 (N.D. Cal.) was identified as “System General USA”, and System-General
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`Petitioner’s Revised Mandatory Notices for IPR2016-01600
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`Corporation is the existing legal entity that appears to be the closest match for the
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`party that is described as “System General USA” in Power Integrations, Inc. v.
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`System General Corp., No. 5:04-cv-02851 (N.D. Cal.). Petitioner’s investigation
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`has not identified an entity with the name “System General USA.”
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`Because the merger closed after the filing of the Petition, the identification
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`of additional real parties in interest due to the closing of the merger has no bearing
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`on the application of Section 315(b). In Synopsys, Inc. v. Mentor Graphics Corp.,
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`Case IPR2012-00042, slip op. at 12 (PTAB February 22, 2014) (Paper 60), the
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`Board held that the PTO rule implementing Section 315(b) “makes clear that it is
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`only privity relationships up until the time a petition is filed that matter; any
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`later-acquired privies are irrelevant.” Similarly, when evaluating an alleged
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`later-acquired real party-in-interest, the Board held that “it is only relationships up
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`until the time a petition is filed that matter.” Id. at 15. Similarly, in Arris Group,
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`LLC v. TQ Delta, LLC, IPR2016-00430, Paper No. 9, at 7, the Board held that
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`Section 315(b) “is concerned with privity relationships up until the time a petition
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`is filed.” At the time of the filing of the Petition, neither the Petitioner, nor any
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`party then qualifying as a privy or real party in interest, had been served with a
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`complaint alleging infringement of U.S. Patent No. 7,834,605.
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`Related Matters: The ’605 Patent was involved in a lawsuit entitled Power
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`Integrations, Inc. v. Fairchild Semi. Int’l Inc., No. 1:08-cv-00309 (D. Del.) (“D.
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`4
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`Petitioner’s Revised Mandatory Notices for IPR2016-01600
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`Del. Litigation”). The outcome of this lawsuit is pending appeal in Power
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`Integrations, Inc. v. Fairchild Semi. Int’l., Inc., No. CAFC-15-1329.1 With respect
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`to the above related matter, ON Semiconductor was not involved in any way with
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`the matter before September 19, 2016.
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`ON Semiconductor has filed petitions for IPR against other patents held by
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`Patent Owner, including U.S. Patent 6,107,851 (IPR2016-01598 and IPR2016-
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`01599); U.S. Patent 6,212,079 (IPR2016-00809, IPR2016-01590, IPR2016-
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`01592); U.S. Patent 6,538,908 (IPR2016-00995 and IPR2016-01597); U.S. Patent
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`6,249,876 (IPR2016-01588 and IPR2016-01589); and U.S. Patent No. 8,115,457
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`(IPR2016-01594 and IPR2016-01595).
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`Finally, in Patent Owner’s Supplemental Mandatory Notices filed September
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`20, 2016 (Paper No. 11) in IPR2016-00809, Patent Owner identified IPR2016-
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`01833, Semiconductor Components Industries, LLC d/b/a ON Semiconductor v. In-
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`Depth Test LLC, because, according to Patent Owner, that proceeding “may raise
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`an issue in common with the present IPR matter regarding application of a bar
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`under 35 U.S.C. § 315(b) and the issue as to whether or not Fairchild
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`Semiconductor Corporation is a real party in interest or a privy of Petitioner.” Id.
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`1 Associated appeal Power Integrations, Inc. v. Fairchild Semi. Int’l., Inc., No.
`CAFC-15-1388 was consolidated with No. CAFC-15-1329.
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`5
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`Petitioner’s Revised Mandatory Notices for IPR2016-01600
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`IPR2016-01833 does not involve the patent involved in this proceeding. Petitioner
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`respectfully submits that IPR2016-01833 is not a related matter because Petitioner
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`is not barred under Section 315(b) in either this proceeding or IPR2016-01833.
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`Lead Counsel: Lead Counsel is Roger Fulghum (Reg. 39,678) of Baker
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`Botts L.L.P.; Back-up Counsel are Brian Oaks (Reg. 44,981) and Brett Thompsen
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`(Reg. 69,985) of Baker Botts L.L.P.
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`Service Information: Baker Botts L.L.P., One Shell Plaza, 910 Louisiana
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`Street, Houston, Texas 77002-4995; Tel. (713) 229-1234; Fax (713) 229-1522.
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`Petitioner
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`consents
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`to
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`service
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`by
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`electronic
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`at:
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`ONSemi_605IPR@bakerbotts.com.
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`Petitioner’s Revised Mandatory Notices for IPR2016-01600
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`In the event any fees are required for this update, please charge Deposit
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`Account No. 02-0384.
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`October 7, 2016
`Date
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`Respectfully submitted,
`BAKER BOTTS L.L.P.
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`
` /Roger Fulghum/
`Roger Fulghum (Reg. No. 39,678)
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002-4995
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`Brian W. Oaks (Reg. No. 44,981)
`Brett J. Thompsen (Reg. No. 69,985)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
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`Attorneys for Petitioner,
`Semiconductor Components Industries, LLC
`d/b/a ON Semiconductor
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`7
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`Petitioner’s Revised Mandatory Notices for IPR2016-01600
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. §§ 42.6(e), the undersigned certifies that on
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`the 7th day of October, 2016, a complete and entire copy of PETITIONER’S
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`REVISED MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 was served on
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`the patent owner via electronic mail at the following correspondence addresses:
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`Stephen R. Schaefer (schaefer@fr.com)
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`Neil A. Warren (warren@fr.com)
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`IPR10256-0021IPC@fr.com
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`PTABInbound@fr.com.
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`October 7, 2016
`Date
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` /Roger Fulghum/
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`Roger Fulghum (Reg. No. 39,678)
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002-4995
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`Brian W. Oaks (Reg. No. 44,981)
`Brett J. Thompsen (Reg. No. 69,985)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
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`Attorneys for Petitioner,
`Semiconductor Components Industries, LLC
`d/b/a ON Semiconductor
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`8
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