Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Entered: March 31, 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 IPR2016-01600
`Patent 7,834,605 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.121
`
`
`
`
`
`On March 30, 2017, a conference call was held among respective
`counsel for the parties and Judges McNamara and Pettigrew. Patent Owner
`requested the call to fulfill its requirement under 37 C.F.R. § 42.121(a) to
`
`
`571-272-7822
`
`Paper 14
`Entered: March 31, 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 IPR2016-01600
`Patent 7,834,605 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.121
`
`
`
`
`
`On March 30, 2017, a conference call was held among respective
`counsel for the parties and Judges McNamara and Pettigrew. Patent Owner
`requested the call to fulfill its requirement under 37 C.F.R. § 42.121(a) to
`
`
`
`IPR2016-01600
`Patent 7,834,605 B2
`
`confer with the Board prior to filing a motion to amend the claims of U.S.
`Patent No. 7,834,605 (“the ’605 patent”). A court reporter was present on
`the call. Petitioner will arrange for the filing of a transcript.
`On the call, we provided the parties with guidance as to the mechanics
`and substance of a motion to amend. The following information was
`discussed during the conference or is provided to clarify the requirements of
`the motion to amend.
`A motion to amend may cancel claims or may be contingent on a
`determination that original claims are unpatentable. The motion to amend
`should make clear whether it is contingent. A proposed substitute claim
`should be responsive to the ground of unpatentability applicable to the
`original patent claim for which it is a substitute, and may not enlarge the
`scope of the claim or introduce new matter. 37 C.F.R. § 42.121(a)(2). The
`presumption is that only one substitute claim is needed for each challenged
`claim. Id. § 42.121(a)(3).
`A claim listing is required by 37 C.F.R. § 42.121(b). Patent Owner
`must reproduce each proposed substitute claim in the claim listing and may
`append the claim listing to the motion. For each proposed substitute claim,
`the motion must show the changes of the proposed substitute claim with
`respect to the patent claim that it is intended to replace. Each proposed
`substitute claim should have a new claim number. The ’605 patent issued
`with 12 claims. Thus, new claim numbers starting with claim 13 should be
`used.
`
`Dependent claims that are not amended will continue to have the same
`scope as before the amendment. If Patent Owner wants to amend a
`challenged dependent claim to depend from a proposed substitute claim
`
`2
`
`
`
`IPR2016-01600
`Patent 7,834,605 B2
`
`rather than the original claim, Patent Owner must propose another substitute
`claim that changes the dependency of that claim.
`Patent Owner represented on the call that it does not plan to argue in a
`Patent Owner Response the patentability of the challenged claims at issue in
`this proceeding (claims 1, 2, 5, and 9). Patent Owner also represented that it
`plans to propose a substitute claim to replace independent claim 1. This
`claim should be numbered claim 13. Patent Owner further represented that
`it would like to propose substitute claims for dependent claims 2, 5, and 9
`that depend from the replacement for claim 1. These claims may be
`numbered, for example, claims 14–16 and may be drafted in dependent form
`to depend directly or indirectly from claim 13.
`In the motion to amend, Patent Owner must show patentability over
`the prior art that is relevant to the substitute claims, including prior art of
`record and prior art known to Patent Owner, which may include references
`beyond those applied by Petitioner against the original claims. Patent
`Owner also must show that the proposed claims comply with the written
`description, enablement, and definiteness requirements of 35 U.S.C. § 112.
`For written description support, citation should be made to the original
`disclosure of the application as filed (and any earlier priority application)
`rather than to the patent as issued. Patent Owner must show written
`description support for the entire proposed substitute claim, not just the
`feature added by the proposed substitute claim.
`Patent Owner also should propose a claim construction, with
`supporting evidence, for any new term used in a proposed substitute claim
`where Patent Owner reasonably anticipates a dispute as to the meaning of
`such term.
`
`3
`
`
`
`IPR2016-01600
`Patent 7,834,605 B2
`
`ORDER
`
`Accordingly, it is:
`
`ORDERED that Patent Owner has satisfied the requirement to confer
`
`with the Board pursuant to 37 C.F.R. § 42.121(a); and
`
`FURTHER ORDERED that the parties should direct their attention to
`the following for guidance regarding the mechanics and substance of the
`motion to amend:
`• Idle Free Sys., Inc. v. Bergstrom, Case IPR2012-00027 (PTAB
`June 11, 2013) (Paper 26) (setting forth considerations the Board
`typically makes when considering the motion);
`• MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB
`July 15, 2015) (Paper 42) (precedential) (clarifying the scope of prior
`art to be addressed in the motion);
`• Shinn Fu Co. v. The Tire Hanger Corp., IPR2015-00208 (PTAB
`Apr. 22, 2016) (Paper 24) (granting motion to amend);
`• Global Tel*Link Corp. v. Securus Techs., Inc., IPR2015-01225
`(PTAB Dec. 14, 2016) (Paper 45) (granting-in-part motion to amend);
`and
`• Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766–67
`(Aug. 14, 2012) (Section II.G Motions to Amend).
`
`4
`
`
`
`IPR2016-01600
`Patent 7,834,605 B2
`
`PETITIONER:
`Roger Fulghum
`Brian W. Oaks
`Brett J. Thompsen
`BAKER BOTTS L.L.P.
`roger.fulghum@bakerbotts.com
`brian.oaks@bakerbotts.com
`brett.thompsen@bakerbotts.com
`
`PATENT OWNER:
`Stephen R. Schaefer
`Neil A. Warren
`FISH & RICHARDSON P.C.
`schaefer@fr.com
`warren@fr.com
`
`5
`
`
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