`
`
`Trials@uspto.gov
`571-272-782 Entered: October 23, 2017
`
`
`
`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 IPR2016-01589 (Patent 6,249,876 B1)
`Case IPR2016-01600 (Patent 7,834,605 B2)1
`____________
`
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER AUTHORIZING ADDITIONAL BRIEFING
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one Order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`
`
`Case IPR2016-01589 (Patent 6,249,876 B1)
`Case IPR2016-01600 (Patent 7,834,605 B2)
`
`
`In IPR2016-01589 (“the 1589 IPR”), on May 15, 2017, Patent Owner
`filed a contingent Motion to Amend. Paper 21. In IPR2016-01600 (“the
`1600 IPR”), on May 15, 2017, Patent Owner filed a Motion to Amend.
`Paper 16. In each proceeding Petitioner filed an Opposition to Patent
`Owner’s Motion to Amend (Paper 32 in the 1589 IPR, Paper 18 in the 1600
`IPR). In each proceeding Patent Owner filed a Reply to Petitioner’s
`Opposition to Patent Owner’s Motion to Amend (Paper 34 in the 1589 IPR,
`Paper 21 in the 1600 IPR). All briefing was completed September 18, 2017.
`Oral hearing is scheduled for November 15, 2017.
`On October 4, 2017 the U.S. Court of Appeals for the Federal Circuit
`issued an en banc decision in Aqua Products v. Matal, No. 2015-1177, 2017
`WL 4399000, at *1 (Fed. Cir. Oct. 4, 2017), in which it instructed that in all
`pending IPRs, the Board “assess[] the patentability of proposed substitute
`claims without placing the burden of persuasion on the patent owner.”
`On October 16, 2017, by email, Petitioner contacted the Board and
`requested a conference to discuss the impact of Aqua Products on the
`pending motions to amend. On October 18, 2017, in response to Petitioner’s
`October 16, 2017 e-mail request, we conducted a teleconference with the
`parties during which we heard their views on additional briefing on the
`motions in light of the Aqua Products decision. As a result of that
`conference, we authorize Petitioner to file a Supplemental Brief not to
`exceed 10 pages by October 25, 2017. Patent Owner is authorized to file a
`Response to Petitioner’s Supplemental Brief not to exceed 10 pages by
`November 1, 2017. As discussed during the conference, the briefs may not
`
`2
`
`
`
`Case IPR2016-01589 (Patent 6,249,876 B1)
`Case IPR2016-01600 (Patent 7,834,605 B2)
`
`introduce new evidence or include additional declarations.
`In consideration of the above it is
`ORDERED that Petitioner is authorized to file a Supplemental Brief
`on the pending motions to amend, not to exceed 10 pages, by October 25,
`2017;
`
`FURTHER ORDERED that Patent Owner is authorized to file a
`Response to Petitioner’s Supplemental Brief, not to exceed 10 pages, by
`November 1, 2017; and
`FURTHER ORDERED that the briefs authorized herein may not
`introduce new evidence or declarations.
`
`
`3
`
`
`
`Case IPR2016-01589 (Patent 6,249,876 B1)
`Case IPR2016-01600 (Patent 7,834,605 B2)
`
`
`FOR PETITIONER:
`
`Roger Fulghum
`Brett Thompsen
`Brian Oaks
`BAKER BOTTS L.L.P.
`roger.fulghum@bakerbotts.com
`brett.thompsen@bakerbotts.com
`brian.oaks@bakerbotts.com
`
`FOR PATENT OWNER:
`
`John Phillips
`Neil Warren
`Howard Pollack
`Stephen Schaefer
`FISH & RICHARDSON P.C.
`phillips@fr.com
`warren@fr.com
`pollack@fr.com
`schaefer@fr.com
`
`
`4
`
`
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