Interactions During Preliminary Proceeding Can Doom PTAB
Filing
Since last summer's decisions in
Applications in Internet Time, LLC v. RPX Corp.,
and
Worlds Inc. v. Bungie, Inc., the Patent Trial &
Appeal Board (PTAB) has seen RPI/privity disputes spring back
to the fore. The renewed scrutiny presents challenges for
petitioners participating in joint defense groups or
those obligated under indemnification agreements.
A precedential decision issued today by the Federal Circuit
highlights the danger of new RPI and privy interactions
post-petition filing.
Power Integrations sued Fairchild Semiconductor Corporation for
infringement in 2009 for infringement of U.S. Patent
No. 6,212,079 ("the '079 patent"). On November
18, 2015, Semiconductor Components Industries, LLC ("ON")
entered into an agreement to merge with Fairchild. Prior to the
merger being completed, ON filed a petition for IPR of the
'079 patent on March 29, 2016 (more than one year after
Fairchild
