April 21, 2017

§317(b) Resurrects Claims Invalidated in Reexamination, That Were Found Not Invalid in Litigation

By Bryan K. Wheelock, Principal

In Fairchild Corporation v. Power Intergrations, Inc., [2017-1002] the Federal Circuit remanded the appeal from a PTAB decision in an Inter Partes Reexamination, with direction to vacate certain aspects of its final decision in the underlying Inter Partes Reexamination and issue a reexamination certificate.

Fairchild sued Power Integrations for infringement of U.S. Patent No. 7,259,972.  The jury’s verdict rejected Power Integrations’s argument that the ’972 patent claims were invalid under 35 U.S.C. § 103, and found that the patent claims had been infringed.  On appeal, the Federal Circuit affirmed the jury’s non-obviousness determination but reversed its findings on infringement, and remanded for further proceedings unrelated to the ’972 patent claims.

While the litigation was pending, Power Integrations requested Inter Partes Reexamination of the ‘972 patent.  The Examiner rejected all of the claims in the reexamination under § 103(a), and the Board affirmed, resulting in the instant appeal.

Fairchild argued that the results of the reexamination proceeding should be vacated under §317(b) because the final decision in the litigation bars the maintenance of the reexamination.  The Federal Circuit agreed, noting that the time for petitioning for certiorari had passed, and thus the district court’s holding that the patent was not invalid barred the maintenance of the reexamination as to the claims challenged in the litigation..