Docket No. 2017-1002
LOURIE, MOORE, REYNA
April 21, 2017
Motion Panel Order (Precedential)
Brief Summary: PTAB “ordered to dismiss the reexamination of claims 6, 7, 18, and 19 of the ‘972 patent” (for which a final decision has already been rendered (§ 317(b) and issue a reexamination certificate invalidating the claims for which no final decision had already been reached.
Summary: Fairchild motioned the court to remand the case to the PTAB with instructions to vacate the Board’s decision affirming the examiner’s rejection of the claims of US 7,259,972 for obviousness in view of the “TEA1401T” and Balakrishnan references after inter partes reexamination requested by Power Integrations. Fairchild argued that PI’s request for reexamination was improper because “no inter partes reexamination proceeding can be brought or ‘maintained’ on ‘issues’ that a party ‘raised or could have raised’ in a civil action arising in whole or in part under 28 USC § 1338 once ‘a final decision has been entered’ in the civil action that ‘the party has not sustained its burden of proving the invalidity’ of the patent claim” (§ 317(b) (2006); “[i]f a defendant bought an invalidity challenge in a district court litigation and was unsuccessful, it is not permitted to bring the same challenge in an inter partes reexamination” (Function Media, FC 2013; Bettcher Indus., FC 2011 (“this restriction applies when ‘all appeals have terminated’”)). Fairchild argued that prior civil action is Power Integrations (FC 2016) in which the FC upheld the jury determination of no invaldity for obviousness (in view of the Majid and Balakrishnan references) but reversed as to infringement, and remanded the decision for futher proceedings unrelated to the ‘972 patent claims. PI argued that decision was not “‘final’ for § 317(b) purposes” but the FC panel disagreed because the “additional proceedings” remanded “are unrelated to the ‘972 patent” and “§ 317(b) is concerned with a final decision ‘that the party has not sustained its burden of proving the invalidity of any patent claim.’” “And here,” PI “does not suggest, nor is there any reason to believe, that any unresolved issue on remand would have any effect on the now-final ‘972 patent validity determinations.” The Board was therefore “ordered to dismiss the reexamination of claims 6, 7, 18, and 19 of the ‘972 patent” (for which a final decision has already been rendered) and issue a reexamination certificate invalidating the claims for which no final decision had already been reached.