Power Integrations, Inc. v. Semiconductor Components Indus., LLC ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
POWER INTEGRATIONS, INC.,
Appellant
v.
SEMICONDUCTOR COMPONENTS INDUSTRIES,
LLC, DBA ON SEMICONDUCTOR,
Appellee
______________________
2018-1607
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00809.
______________________
Decided: June 13, 2019
______________________
FRANK SCHERKENBACH, Fish & Richardson, PC, Bos-
ton, MA, argued for appellant. Also represented by
MICHAEL R. HEADLEY, HOWARD G. POLLACK, NEIL WARREN,
Redwood City, CA; JOHN WINSTON THORNBURGH, San Di-
ego, CA.
MICHAEL HAWES, Baker Botts, LLP, Houston, TX, ar-
gued for appellee. Also represented by ROGER FULGHUM;
BRETT J. THOMPSEN, Austin, TX; LAUREN J. DREYER, Wash-
ington, DC.
______________________
2 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
COMPONENTS
Before PROST, Chief Judge, REYNA and STOLL,
Circuit Judges.
PROST, Chief Judge.
Semiconductor Components Industries, LLC, doing
business as ON Semiconductor (“ON”), petitioned for inter
partes review (“IPR”) of several claims of U.S. Patent No.
6,212,079 (“the ’079 patent”). The Patent Trial and Appeal
Board (“Board”) determined that the IPR was not time-
barred by 35 U.S.C. § 315(b) and that the challenged claims
were invalid. ON Semiconductor Corp. v. Power Integra-
tions, Inc., No. IPR2016-00809, Paper 67 (P.T.A.B. Sept.
22, 2017). Power Integrations, Inc. (“Power Integrations”)
appeals the Board’s decision.
For the reasons explained below, we hold that this IPR
is time-barred under § 315(b). We therefore vacate the
Board’s final written decision and remand with instruc-
tions to dismiss IPR2016-00809.
I
A
Power Integrations owns the ’079 patent, which relates
to switched mode power supplies. ’079 patent col. 1 ll. 7,
11–26. These power supplies function to convert high-volt-
age alternating current into low-voltage direct current to
power electronic devices. Id. The ’079 patent discloses a
“switching regulator” to help conserve power and maintain
output regulation at low loads without skipping cycles. Id.
col. 1 ln. 65–col. 2 ln. 35.
B
In 2005 and 2006, Fairchild Semiconductor Corpora-
tion and Fairchild (Taiwan) Corporation (collectively,
“Fairchild”) challenged several claims of the ’079 patent in
two ex parte reexaminations, which were consolidated.
J.A. 87. On May 5, 2009, the U.S. Patent and Trademark
POWER INTEGRATIONS, INC. v. SEMICONDUCTOR 3
COMPONENTS
Office (“PTO”) confirmed the validity of the challenged
claims as amended and 22 new claims. J.A. 86–92.
Then, on November 4, 2009, Power Integrations sued
Fairchild for infringement of the ’079 patent and two other
patents. J.A. 1103–12. Fairchild was served with the com-
plaint for infringement on November 6, 2009. In March
2014, a jury found claims 31, 34, 38, and 42 of the ’079 pa-
tent not invalid and infringed. J.A. 1033–35. The jury
awarded damages of $105 million. J.A. 1035. Following
our decision in VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d
1308 (Fed. Cir. 2014), the district granted Fairchild’s mo-
tion for a new trial on damages for infringement of the ’079
patent. In the second damages trial in December 2015, a
jury applied the entire market value rule and awarded
damages of $139.8 million. J.A. 1038–39.
Fairchild appealed, and we affirmed the jury’s verdict
of infringement of the ’079 patent. Power Integrations, Inc.
v. Fairchild Semiconductor Int’l, Inc., 904 F.3d 965, 974
(Fed. Cir. 2018), cert. denied, 139 S. Ct. 1265 (2019). We
concluded, however, that the entire market value rule
could not be used to calculate damages in this case, vacated
the damages award, and remanded for further proceedings.
Id. at 977–80. On May 6, 2019, the district court granted
the parties’ joint motion to release and return Fairchild’s
posted bond of $146,480,598 and any accrued interest. To
date, there has been no further action in the district court
proceeding.
C
On November 18, 2015, ON entered into an agreement
to merge with Fairchild. J.A. 143–44. But the merger did
not close immediately. See J.A. 143. Several months later,
while the merger was still pending, ON filed a petition for
IPR challenging claims 31, 32, 34, 38, 39, and 42 of the ’079
4 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
COMPONENTS
patent. 1 J.A. 137–202. This petition for IPR was filed on
March 29, 2016, more than one year after Fairchild was
served with the complaint alleging infringement of the ’079
patent. The Fairchild-ON merger closed several months
later, on September 19, 2016. J.A. 281–82. The Board in-
stituted the IPR four days after that, on September 23,
2016. J.A. 103–31.
Power Integrations argued in both its Patent Owner
Preliminary Response and its Patent Owner Response that
this IPR should be time-barred under § 315(b) because ON
and Fairchild were in privity at the time of filing and
Fairchild had been served with a complaint for infringe-
ment more than one year before the petition was filed.
J.A. 218–20, 369–72. The Board rejected this argument in
its institution decision and again in its final written deci-
sion.
In its institution decision, the Board focused its
§ 315(b) analysis on whether ON and Fairchild were in
privity when Fairchild filed its petition. Power Integra-
tions argued that the existence of a merger agreement and
a confidentiality agreement stating that ON and Fairchild
“share[d] a common legal and commercial interest” and
“are or may become joint defendants in proceedings”
showed that they had a common interest in annulling the
jury’s $139.8 million damages award against Fairchild for
infringing the ’079 patent. J.A. 218–19. ON had disclosed
the merger agreement in its IPR petition but noted that the
merger was not closed at the time it filed the petition and
that the merger was dependent on several uncertain condi-
tions occurring. J.A. 143. ON also asserted that Fairchild
1 ON also filed two additional petitions for IPR
against the ’079 patent and nine petitions for IPR against
five of Power Integrations’ other patents. J.A. 277–78. ON
filed all of these petitions after its merger with Fairchild
was announced but before it closed.
POWER INTEGRATIONS, INC. v. SEMICONDUCTOR 5
COMPONENTS
had no role in the decision to file the IPR petition, had no
control over the content of the IPR petition, and did not pay
for the IPR petition. J.A. 143–44. The Board determined
that there was insufficient evidence of record to establish
control and therefore insufficient evidence to establish
privity between Fairchild and ON at the time the petition
was filed. J.A. 113–14. The Board thus held that the IPR
was not time-barred by § 315(b) and instituted the IPR.
J.A. 115, 130.
After institution, Power Integrations requested au-
thorization to file a motion under 37 C.F.R. § 42.51(b)(2) for
additional discovery on the relationship between ON and
Fairchild. J.A. 289–90. ON objected to providing the addi-
tional discovery. J.A. 1903. The Board applied the factors
enumerated in Garmin International, Inc. v. Cuozzo Speed
Technologies LLC, No. IPR2012-00001, Paper 26 at 6–7
(P.T.A.B. Mar. 5, 2013), which govern requests for addi-
tional discovery, and denied Power Integrations’ request
for authorization to file a motion for additional discovery.
J.A. 290–92. In denying the request, the Board determined
that “Patent Owner has expressed no more than a suspi-
cion (mere speculation) that such evidence exists and
would be uncovered by additional discovery” and therefore
had not met the first Garmin factor. J.A. 292. The Board
also concluded that even if Power Integrations had estab-
lished the first Garmin factor, it would not grant the re-
quest for additional discovery because the requests were
overly broad. Id.
In its Patent Owner Response, Power Integrations
again argued that ON was in privity with Fairchild (an un-
disputedly time-barred party) at the time ON filed the pe-
tition. J.A. 369–72. The Board rejected this argument for
the same reasons it had rejected it in its institution deci-
sion. J.A. 10–13. It again focused on the issue of control
and held that there was insufficient evidence of record to
show that Fairchild exercised, or could have exercised, con-
trol over the IPR petition. Id.
6 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
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Power Integrations next asserted that ON was acting
as Fairchild’s proxy in filing the IPR petition. J.A. 369–72.
The Board rejected this argument as well, finding that
Power Integrations offered mere speculation, not evidence,
that ON filed the petition as Fairchild’s proxy. J.A. 15–17.
The Board determined that ON had its own interest in the
IPR proceeding because it had a multi-billion-dollar mer-
ger with Fairchild pending at the time it filed the petition.
J.A. 17.
Finally, Power Integrations argued that the IPR was
time-barred by § 315(b) because Fairchild, a barred party,
was an admitted real party in interest (“RPI”) before insti-
tution. J.A. 364–69. Fairchild became an RPI at least by
the time its merger with ON closed—four days before insti-
tution. J.A. 364–66. Two other panels of the Board had
previously issued nonprecedential decisions holding that
only privity relationships up until the time an IPR petition
is filed are relevant for purposes of the § 315(b) time-bar.
See ARRIS Grp., Inc. v. TQ Delta LLC, No. IPR2016-00430,
Paper 9 at 6 (P.T.A.B. July 1, 2016); Synopsys, Inc. v. Men-
tor Graphics Corp., No. IPR2012-00042, Paper 60 at 12
(P.T.A.B. Feb. 19, 2014). The Board in this case similarly
held that RPI and privity relationships for purposes of the
§ 315(b) time-bar are only relevant up to the date the peti-
tion is filed. J.A. 14–15; see also J.A. 11–12 (“Panels of the
Board have interpreted [§] 315(b) (and our associated rule
37 C.F.R. § 42.101(b)) to mean that ‘it is only privity rela-
tionships up until the time a petition is filed that matter.’”
(quoting Synopsys, No. IPR2012-00042, Paper 60 at 12)).
Because the Board determined that Fairchild was not an
RPI at the time the petition was filed and rejected Power
Integrations’ privity and proxy arguments, it concluded
that the IPR was not time-barred.
Having found the IPR not time-barred, the Board pro-
ceeded to address the merits of the challenged claims and
found them unpatentable as obvious over the combination
of Japanese Unexamined Patent Application Publication
POWER INTEGRATIONS, INC. v. SEMICONDUCTOR 7
COMPONENTS
No. JP H10-323028 (“Oda”) and Japanese Unexamined Pa-
tent Application Publication No. JP S59-144366 (“Naka-
mura”).
Power Integrations timely appealed. We have jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(4)(A).
II
On appeal, Power Integrations argues that this IPR
was time-barred under § 315(b). As our court has previ-
ously held, when the PTO institutes an IPR, its rejection of
a time-bar challenge under § 315(b) is reviewable. Wi-Fi
One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 (Fed.
Cir. 2018) (en banc). Power Integrations argues that priv-
ity and RPI relationships arising after filing but before in-
stitution should be considered for purposes of the § 315(b)
time-bar. Under Power Integrations’ interpretation of
§ 315(b), this IPR would be time-barred because Fairchild,
a time-barred party, became an RPI after ON filed this pe-
tition but before institution. ON contends that privity and
RPI relationships for purposes of § 315(b) should be as-
sessed only at the time the IPR petition is filed and that
this IPR is not time-barred.
Making things even more intersting, in a motion filed
after the principal briefing in this appeal was completed,
ON contended that Power Integrations is precluded from
challenging the Board’s § 315(b) determination because it
did not appeal the Board’s final written decision reaching
the same § 315(b) determination in another IPR. Power
Integrations responded that its challenge is not precluded
because an exception to issue preclusion applies in this
case.
We begin by addressing ON’s motion and then turn to
the merits of the appeal.
8 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
COMPONENTS
A
1
In its motion, ON argues that issue preclusion bars
Power Integrations’ § 315(b) challenge because in a differ-
ent IPR proceeding (IPR2016-01594) on a different patent
(U.S. Patent No. 8,115,457), Power Integrations did not ap-
peal the Board’s final written decision, which reached the
same § 315(b) determination as the Board decision under-
lying this appeal. Motion to Preclude Challenge to § 315(b)
Determination at 2–4 (Oct. 9, 2018), ECF No. 66 (“Mo-
tion”). 2 We disagree.
The Supreme Court has long recognized that, under
certain conditions, a tribunal’s resolution of an issue can
preclude the party that lost on that issue from later con-
testing the same issue in another case:
[W]hen an issue of fact or law is actually litigated
and determined by a valid and final judgment, and
the determination is essential to the judgment, the
determination is conclusive in a subsequent action
between the parties, whether on the same or a dif-
ferent claim.
B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct.
1293, 1303 (2015) (quoting Restatement (Second) of Judg-
ments § 27 (1980)); see also Worlds Inc. v. Bungie, Inc., 903
F.3d 1237, 1247 (Fed. Cir. 2018); Papst Licensing GmbH &
2 The Board issued its final written decision in the
IPR underlying this appeal on September 22, 2017, and
Power Integrations filed a notice of appeal on February 23,
2018. The Board issued its final written decision in
IPR2016-01594 on February 14, 2018. Power Integrations
filed a request for rehearing on March 16, 2018, which the
Board denied on April 26, 2018. The time to appeal in
IPR2016-01594 has since expired.
POWER INTEGRATIONS, INC. v. SEMICONDUCTOR 9
COMPONENTS
Co. KG v. Samsung Elecs. Am., Inc., No. 2018-1777, 2019
WL 2219683, at *4 (Fed. Cir. May 23, 2019). 3
But this principle is subject to certain well-known ex-
ceptions. B & B Hardware, 135 S. Ct. at 1303 (referring to
exceptions stated in Restatement (Second) of Judgments
§ 28). As the Supreme Court explained in B & B Hardware,
the Restatement allows for exceptions to issue preclusion
even when the basic requirements for issue preclusion are
satisfied. Id. at 1303, 1309−10. One of those exceptions is
a lack of opportunity or incentive to litigate the first action.
According to Restatement (Second) of Judgments
§ 28(5)(c), issue preclusion does not apply when:
(5) There is a clear and convincing need for a new
determination of the issue . . . (c) because the party
sought to be precluded, as a result of the conduct of
his adversary or other special circumstances, did
not have an adequate opportunity or incentive to
obtain a full and fair adjudication in the initial ac-
tion.
As the Supreme Court recognized, “[i]ssue preclusion
may be inapt if ‘the amount in controversy in the first ac-
tion [was] so small in relation to the amount in controversy
3 Issue-preclusion principles can apply in a second
action even when the first “action” was before an agency.
See B & B Hardware, 135 S. Ct. at 1302–03 (“[I]ssue pre-
clusion is not limited to those situations in which the same
issue is before two courts. Rather, where a single issue is
before a court and an administrative agency, preclusion
also often applies.”). In particular, Board decisions in IPR
proceedings can trigger issue preclusion. MaxLinear, Inc.
v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018)
(“The TTAB, at issue in B & B Hardware, and the Board,
in this case, are indistinguishable for preclusion pur-
poses.”); Papst, 2019 WL 2219683, at *4.
10 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
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in the second that preclusion would be plainly unfair.’”
B & B Hardware, 135 S. Ct. at 1309 (alteration in original)
(quoting Restatement (Second) of Judgments § 28 cmt. j).
As the Court explained: “After all, ‘[f]ew . . . litigants would
spend $50,000 to defend a $5,000 claim.” Id. (alterations
in original) (quoting 18 Charles Alan Wright & Arthur R.
Miller, Federal Practice and Procedure § 4423 (2d ed.
2002)).
Our court has also recognized that the lack-of-incen-
tive-to-litigate exception may justify not applying issue
preclusion, even when the basic requirements are satisfied.
See Kroeger v. U.S. Postal Serv., 865 F.2d 235, 239–40 (Fed.
Cir. 1988) (“[C]ollateral estoppel has been deemed unfair
when the party that would be bound lacked incentive to lit-
igate the issue in the first proceeding because its stake in
that proceeding was minimal in comparison with its stake
in the second.”); Soverain Software LLC v. Victoria’s Secret
Direct Brand Mgmt., LLC, 778 F.3d 1311, 1316 (Fed. Cir.
2015) (“[T]he issue of incentive to litigate arises where
‘[t]he stakes in the first action may be so small that exten-
sive effort is not reasonable if the risk is limited to the first
action.’” (quoting 18 Wright & Miller, supra, § 4423)).
2
We agree with ON that Power Integrations raises the
same § 315(b) time-bar argument in this appeal that it did
in the non-appealed IPR on a different patent, Motion at 5–
7, and actually litigated that issue in the non-appealed
IPR, id. at 7–8. We also agree with ON that the Board’s
§ 315(b) determination in the non-appealed IPR was essen-
tial to the final decision in that proceeding. Id. at 8–9. We
conclude that ON has established the basic requirements
for issue preclusion, and Power Integrations has not sub-
stantively disputed that conclusion. See Power Integra-
tions’ Opposition to Motion to Preclude at 6–13 (Oct. 19,
2018), ECF No. 67 (“Opposition”).
POWER INTEGRATIONS, INC. v. SEMICONDUCTOR 11
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We conclude, however, that Power Integrations has es-
tablished that the lack-of-incentive-to-litigate exception
applies here and justifies rejecting ON’s issue preclusion
argument. The disparity in incentives to appeal the
§ 315(b) issue between the IPR underlying this appeal and
the non-appealed IPR are significant. See Response at 9–
10. Fairchild, which has since merged with ON, has been
found to infringe the patent underlying the appealed IPR
decision but not the patent underlying the non-appealed
IPR decision. 4 Indeed, a first jury awarded $105 million in
damages and a second jury awarded $139.8 million in dam-
ages for infringement of the patent underlying this appeal.
Moreover, ON and Fairchild entered their merger agree-
ment one month before the second damages trial, and ON
filed the petition for IPR three months after the second
damages verdict. 5 In contrast, there is no infringement
finding or damages award associated with the patent un-
derlying the non-appealed IPR decision.
We are therefore persuaded by Power Integrations’ ar-
gument that it had a considerably greater incentive to con-
tinue litigating the § 315(b) issue in the IPR underlying
this appeal than it had in the non-appealed IPR concerning
a patent unassociated with any infringement finding or
damages award. 6 See Papst, 2019 WL 2219683, at *5
4 Fairchild was found not to infringe the ’457 patent
in a district court action in the District of Delaware. Judg-
ment, Fairchild Semiconductor Corp. v. Power Integrations
Inc., No. 1:12-cv-00540-LPS (D. Del. Aug. 7, 2015), ECF
No. 427.
5 We issued a decision vacating the second damages
verdict on July 3, 2018, almost a year after the final written
decision in this IPR. See Power Integrations, 904 F.3d 965.
6 We have no occasion to consider the preclusive ef-
fect of IPR decisions in circumstances different than pre-
sented in this case.
12 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
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(noting that the appellant presented no “legally significant
disparity in incentives” to satisfy exception to issue preclu-
sion). Accordingly, we conclude that giving preclusive ef-
fect to the Board’s § 315(b) determination in the non-
appealed IPR is inappropriate in this case. See Kroeger,
865 F.2d at 239–40; Soverain Software, 778 F.3d at 1316. 7
Because we find the lack-of-incentive-to-litigate excep-
tion to issue preclusion applicable in this case, we do not
reach the additional exceptions that Power Integrations
contends also apply. See Response at 10–13. We hold that
issue preclusion does not bar Power Integrations from chal-
lenging the Board’s § 315(b) determination. ON’s Motion
is accordingly denied.
B
We now turn to the merits of this appeal. The primary
issue is one of statutory interpretation and one of first im-
pression: whether privity and RPI relationships arising
7 In addition, we note that Power Integrations’ judi-
cial efficiency argument is apt here. See Response at 9–10.
We decline to apply issue preclusion, especially when a rec-
ognized exception is satisfied, in a way that would require
Power Integrations to have appealed from every adverse
IPR decision, even where there is little or no incentive, to
preserve its ability to challenge a legal issue like the
Board’s interpretation of § 315(b). See, e.g., Ferrell v.
Pierce, 785 F.2d 1372, 1385 (7th Cir. 1986) (“[T]he govern-
ment may disagree with a court’s interpretation of a decree
yet believe that the ruling is too insignificant to warrant
appeal. If we were to hold that the government is then
foreclosed from challenging the judicial interpretation in a
later case . . . the government would be forced to appeal
every adverse ruling, even the ones it can live with, merely
to protect itself. We decline to encourage such unnecessary
litigation.”).
POWER INTEGRATIONS, INC. v. SEMICONDUCTOR 13
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after filing but before institution should be considered for
purposes of the § 315(b) time-bar.
1
Statutory interpretation is an issue of law that we re-
view de novo. Unwired Planet, LLC v. Google Inc., 841 F.3d
1376, 1379 (Fed. Cir. 2016). “In statutory construction, we
begin ‘with the language of the statute.’” Kingdomware
Techs., Inc. v. United States, 136 S. Ct. 1969, 1976 (2016)
(quoting Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450
(2002)). Our “first step ‘is to determine whether the lan-
guage at issue has a plain and unambiguous meaning with
regard to the particular dispute in the case.’” Barnhart,
534 U.S. at 450 (quoting Robinson v. Shell Oil Co., 519 U.S.
337, 340 (1997)). “It is a ‘fundamental canon of statutory
construction that the words of a statute must be read in
their context and with a view to their place in the overall
statutory scheme.’” FDA v. Brown & Williamson Tobacco
Corp., 529 U.S. 120, 133 (2000) (quoting Davis v. Mich.
Dep’t of Treasury, 489 U.S. 803, 809 (1989)).
2
35 U.S.C. § 315 governs the relationship between IPRs
and other proceedings. Section 315(b) reads:
(b) Patent Owner’s Action.—An inter partes re-
view may not be instituted if the petition request-
ing the proceeding is filed more than 1 year after
the date on which the petitioner, real party in in-
terest, or privy of the petitioner is served with a
complaint alleging infringement of the patent. The
time limitation set forth in the preceding sentence
shall not apply to a request for joinder under sub-
section (c).
ON argues that privity and RPI relationships for pur-
poses of the § 315(b) time-bar should be assessed only at
filing, while Power Integrations argues that privity and
RPI relationships arising after filing but before institution
14 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
COMPONENTS
should also be considered. While the parties argue for op-
posing interpretations of when privity and RPI relation-
ships should be assessed, they both contend that the
statute is clear and unambiguous in favor of their opposing
interpretations. See Appellant’s Br. 27; Appellee’s Br. 32–
34, 37.
We agree with Power Integrations that the best read-
ing of § 315(b) requires consideration of privity and RPI re-
lationships arising after filing but before institution. 8
Turning to the statutory language, § 315(b) states that
an IPR “may not be instituted” if a stated condition is true.
35 U.S.C. § 315(b) (emphasis added). That condition is “if
the petition requesting the proceeding is filed more than 1
year after the date on which the petitioner, real party in
interest, or privy of the petitioner is served with a com-
plaint alleging infringement of the patent.” Id. The
Board’s decision under § 315(b) is whether to institute or
not. The condition precedent for this decision is whether a
time-barred party (a party that has been served with a
complaint alleging infringement of the patent more than
one year before the IPR was filed) is the petitioner, real
party in interest, or privy of the petitioner. In other words,
the statute specifically precludes institution, not filing.
When the Board finds that an IPR is barred under § 315(b),
it denies institution. It does not reject the petitioner’s fil-
ing. The focus of § 315(b) is on institution. The language
of the statute, in our view, makes privity and RPI relation-
ships that may arise after filing but before institution rel-
evant to the § 315(b) time-bar analysis.
This reading of the statutory language is consistent
with our prior cases, which have characterized the § 315(b)
time-bar “[a]s a statutory limit on the Director’s ability to
8 We do not address the impact of a change in RPI,
privity, or ownership occurring after institution.
POWER INTEGRATIONS, INC. v. SEMICONDUCTOR 15
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institute IPR.” Wi-Fi One, 878 F.3d at 1374 (emphasis
added); see also id. at 1373 (“[Section] 315(b) controls the
Director’s authority to institute IPR . . . .”); id. at 1374 (“It
sets limits on the Director’s statutory authority to insti-
tute . . . .”); Applications in Internet Time, LLC v. RPX
Corp., 897 F.3d 1336, 1365 (Fed. Cir. 2018) (Reyna, J., con-
curring) (“Section 315(b) is the gatekeeper to deny institu-
tion of petitions from time barred petitioners, their real
parties in interest, and their privies.”), cert. denied, 139
S. Ct. 1366 (2019).
Our reading of the statute is also consistent with com-
mon law preclusion principles. The statutory terms “real
party in interest” and “privy” are not defined in Title 35.
However, they are well-established common law terms.
See Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329,
1335 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 826 (2019);
WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308,
1317 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1216 (2019).
Where Congress “uses a common-law term in a statute, we
assume the ‘term . . . comes with a common law meaning,
absent anything pointing another way.’” Microsoft Corp. v.
i4i Ltd. P’ship, 564 U.S. 91, 101 (2011) (quoting Safeco Ins.
Co. of Am. v. Burr, 551 U.S. 47, 58 (2007)). Thus, as we
have previously recognized, “[t]he use of the familiar com-
mon law terms ‘privy’ and ‘real party in interest’ indicate
that Congress intended to adopt common law principles to
govern the scope of the section 315(b) one-year bar.” Wi-Fi
One, 887 F.3d at 1335. As we stated in Western-Geco, “[t]he
legislative history [of the Leahy-Smith America Invents
Act (“AIA”)] thus lends support to the conclusion that ‘priv-
ity’ in § 315(b) should be given its common law meaning.”
889 F.3d at 1318 (citing 154 Cong. Rec. S9987 (daily ed.
Sept. 27, 2008) (statement of Sen. Kyl) (“The concept of
privity, of course, is borrowed from the common law of judg-
ments.”)). We therefore look to common law preclusion
principles for guidance.
16 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
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“The basic premise of preclusion is that parties to a
prior action are bound and nonparties are not bound.” 18A
Wright & Miller, supra, § 4449 (3d ed. 2019). However, the
general rule against nonparty preclusion is subject to sev-
eral exceptions. Taylor v. Sturgell, 553 U.S. 880, 893
(2008). Early definitions of privity were narrow. See 18A
Wright & Miller, supra, § 4449. But over time, the common
law term “privity” became “used more broadly, as a way to
express the conclusion that nonparty preclusion is appro-
priate on any ground.” Taylor, 553 U.S. at 894 n.8. The
legislative history of the AIA recognized that the term
“privity” has acquired an expanded meaning that is focused
on the “practical situation.” See 157 Cong. Rec. S1376
(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (‘‘[P]rivity
is an equitable rule that takes into account the ‘practical
situation,’ and should extend to parties to transactions and
other activities relating to the property in question.’’).
Common law preclusion cases suggest that preclusion
can apply based on privity arising after a complaint is filed.
“Courts have repeatedly found privity where, after a suit
begins, a nonparty acquires assets of a defendant-in-
fringer.” Kloster Speedsteel AB v. Crucible Inc., 793 F.2d
1565, 1583 (Fed. Cir. 1986) (emphasis added), overruled on
other grounds by Knorr-Bremse Systeme Fuer Nutzfahr-
zeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004)
(en banc). As we explained in Kloster, the supporting ra-
tionale is that:
[i]f a third party may thus come into the acquisition
of rights involved in pending litigation without be-
ing bound by the final judgment, and require a suit
de novo in order to bind him, he might, pending
that suit, alienate that right to another with the
same result, and a final decree bearing fruit could
never be reached.
793 F.2d at 1583 (quoting J.R. Clark Co. v. Jones & Laugh-
lin Steel Corp., 288 F.2d 279, 280 (7th Cir. 1961)). Thus,
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common law principles lend support to our reading of the
statutory text that privity relationships arising after an
IPR is filed but before institution should be considered in
the § 315(b) time-bar analysis.
Our view is further supported by the statute’s purpose,
as demonstrated by its language. As we explained in Ap-
plications in Internet Time, in drafting § 315(b), Congress
“chose language that bars petitions where proxies or priv-
ies would benefit from an instituted IPR, even where the
petitioning party might separately have its own interest in
initiating an IPR.” 897 F.3d at 1347 (emphasis added); see
also id. at 1348 (stating that “the real-party-in-interest in-
quiry . . . bear[s] in mind who will benefit from having those
claims canceled or invalidated” (emphasis added)). Against
this backdrop, we decline to construe § 315(b) in a way that
would have the Board, when deciding whether to institute,
ignore the existence of RPIs or privies who would benefit
from having an IPR instituted simply because they were
not RPIs or privies when the petition was filed.
3
ON’s arguments for limiting evaluation of privity and
RPI relationships to only the time of filing are unpersua-
sive. ON’s primary statutory interpretation argument is
that the statutory language “tethers the analysis of any po-
tential real party-in-interest and privy issues to the peti-
tion’s filing date” because of its focus on when “the petition
requesting the proceeding is filed.” Appellee Br. 32–33.
But the “is filed” language in § 315(b) does not dictate fi-
nally determining RPI or privity relationships at filing.
Rather, the “is filed” language merely marks the end of the
one-year window that the petitioner has to file a petition
for IPR. See Click-To-Call Techs., LP v. Ingenio, Inc., 899
F.3d 1321, 1330 (Fed. Cir. 2018) (en banc in part) (stating
that § 315(b) “unambiguously precludes the Director from
instituting an IPR if the petition seeking institution is filed
more than one year after the petitioner, real party in
18 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
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interest, or privy of the petitioner ‘is served with a com-
plaint’ alleging patent infringement’” (quoting § 315(b))).
ON argues that Wi-Fi One supports its statutory inter-
pretation because we stated that “[n]othing in § 315(b) sets
up a two-stage process for addressing the time bar: the
time-bar determination may be decided fully and finally at
the institution stage.” 878 F.3d at 1373; Appellee’s Br. 34–
35. We disagree. If anything, this statement bolsters the
reading of § 315(b) that we set forth here. The “two
stage[s]” referred to in Wi-Fi One are pre-institution and
post-institution. In Wi-Fi One, we contrasted § 314(a),
which concerns the pre-institution “preliminary” determi-
nation of whether the petitioner has a “reasonable likeli-
hood” of prevailing on the issue of patentability, with
§ 315(b), which concerns the time-bar determination. See
878 F.3d at 1372–73. We concluded that § 314(a), while
considered preliminarily pre-institution, is considered fully
and decided finally post-institution and that, in contrast,
the § 315(b) time-bar can be “decided fully and finally at
the institution stage.” See id. Our use of “at the institution
stage” rather than “at filing” in Wi-Fi One is entirely con-
sistent with our holding here that privity and RPI relation-
ships arising after filing but before institution may time-
bar institution under § 315(b).
ON also raises several practical concerns with our
reading of the statute. These practical concerns are una-
vailing and do not to justify departing from the most natu-
ral reading of the statute. See Pereira v. Sessions, 138 S.
Ct. 2105, 2118 (2018). First, ON contends that assessing
privity and RPI relationships arising after filing but before
institution creates a “moving target” because the Board can
make its institution decision anytime within three months
after the Patent Owner Preliminary Response is filed or is
due. Appellee’s Br. 36–37 (citing 35 U.S.C. § 314(b)). ON
notes that the Board could possibly reach a different out-
come on whether the IPR is time-barred depending on
when it makes its institution decision relative to events
POWER INTEGRATIONS, INC. v. SEMICONDUCTOR 19
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affecting the relationship between the petitioner and other
entities. ON argues instead that “the filing date is the
more appropriate date to analyze § 315(b) because it is
fixed, giving the Board and the parties a known date for
evaluating the time-bar issue.” See Appellee’s Br. 36–37.
At the outset, we disagree that the statutorily man-
dated three-month window for the Board to make an insti-
tution decision following the Patent Owner Response is too
unpredictable for the parties to evaluate and address a
time-bar issue. While the exact date that the Board insti-
tutes within the three-month window is beyond the peti-
tioner’s control, the terms and timeline of a possible merger
are not. We also disagree with ON’s position that it would
be difficult or burdensome for the Board to assess RPI and
privity relationships arising after filing but before institu-
tion. Notably, the petitioner is required to identify all real
parties in interest in its petition, 35 U.S.C. § 312(a)(2), and
is under a continuing obligation to update the Board within
21 days of any change to the RPI, 37 C.F.R. § 42.8(a)(3),
(b)(1). This continuing obligation to provide notice would
seem to make little sense unless it was relevant to the on-
going proceedings. Finally, while federal courts apply a
“time-of-filing” rule for assessing jurisdiction at the time a
complaint is filed, we decline to adopt a similar “time-of-
filing” rule for assessing the time-bar of § 315(b). See
Grupo Dataflux v. Atlas Glob. Grp., L.P., 541 U.S. 567,
570–71 (2004). Section 315(b) is not about federal-court ju-
risdiction; it is about preclusion in an agency proceeding.
Thus, common law preclusion principles rather than fed-
eral-court juridical rules inform our reading of § 315(b).
We have considered the parties’ remaining statutory
interpretation arguments and find them unpersuasive.
4
ON raises the issue of deference to the PTO’s interpre-
tation of § 315(b). It argues that we should give the PTO’s
regulation on time-bar determinations, 37 C.F.R.
20 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
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§ 42.101(b), deference under Chevron, U.S.A., Inc. v. Natu-
ral Resources Defense Council, Inc., 467 U.S. 837 (1984), or
at least give the Board’s interpretation of the regulation
deference under Auer v. Robbins, 519 U.S. 452 (1997). Ap-
pellee’s Br. 38–40.
The governing PTO regulation states:
A person who is not the owner of a patent may file
with the Office a petition to institute an inter
partes review of the patent unless:
....
(b) The petition requesting the proceeding is filed
more than one year after the date on which the pe-
titioner, the petitioner’s real party-in-interest, or a
privy of the petitioner is served with a complaint
alleging infringement of the patent . . . .
37 C.F.R. § 42.101. We do not, however, give Chevron def-
erence to an agency regulation that merely parrots the
statutory language. See Gonzales v. Oregon, 546 U.S. 243,
257–58 (2006); Click-To-Call, 899 F.3d at 1338 (“The gov-
erning regulation [§ 42.101(b)] largely parrots
§ 315(b) . . . .”). Nor do we give Auer deference to an
agency’s interpretation of a parroting regulation. See Gon-
zales, 546 U.S. at 257 (“An agency does not acquire special
authority to interpret its own words when, instead of using
its expertise and experience to formulate a regulation, it
has elected merely to paraphrase the statutory language.”).
ON argues further that the Board’s nonprecedential
decisions interpreting § 315(b) are entitled to Chevron def-
erence. Appellee’s Br. 38 (referring to Synopsys, No.
IPR2012-00042, Paper 60 at 12, and ARRIS, No. IPR2016-
00430, Paper 9 at 6). Based on these facts and the similar-
ity between the regulatory and statutory text, we decline
to give Chevron deference to these nonprecedential Board
decisions, which do not even bind other panels of the
POWER INTEGRATIONS, INC. v. SEMICONDUCTOR 21
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Board. 9 See Click-To-Call, 899 F.3d at 1341 (“[B]ecause the
regulation merely parrots the statute, deference is not
owed even to the Director’s interpretation of the regulation,
much less to a Board panel’s interpretation.”); see also
United States v. Mead Corp., 533 U.S. 218, 230–31 (2001);
Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1320 (Fed. Cir.
2017) (en banc) (plurality opinion) (“Because Chevron def-
erence displaces judicial discretion to engage in statutory
interpretation, it requires a relatively formal expression of
administrative intent, one with the force and effect of
law.”).
Because there is no agency interpretation deserving of
the requested deference, we resort to the traditional prin-
ciples of statutory construction without deference to the
PTO and adopt the most natural reading of § 315(b) ex-
plained above.
5
In light of the foregoing, we hold that this IPR was
time-barred by § 315(b) because Fairchild was an RPI at
the time the IPR was instituted, even though it was not an
RPI at the time the petition was filed.
In view of this holding, we need not reach the remain-
ing issues raised in this appeal—including Power Integra-
tions’ arguments pertaining to obviousness, commercial
success, claim construction, and discovery. Nor do we ad-
dress Power Integrations’ argument that, even if privity
and RPI relationships should be determined only at filing
for purposes of § 315(b), the IPR would still be time-barred
because ON was acting as Fairchild’s proxy in filing the pe-
tition for IPR, or at least was in privity with Fairchild at
the time the petition was filed.
9 Indeed, this court has not yet opined on whether
deference is warranted for precedential Board decisions.
22 POWER INTEGRATIONS, INC. v. SEMICONDUCTOR
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III
For the foregoing reasons, we vacate the Board’s final
written decision and remand for the Board to dismiss
IPR2016-00809.
VACATED AND REMANDED
COSTS
The parties shall bear their own costs.