Federal Circuit Clarifies Inter Partes Review Time Bar Provision Under 35 U.S.C. § 315(b)

In Power Integrations, Inc. v. Semiconductor Components Industries., LLC, the Federal Circuit tackled for the first time the issue in inter partes reviews of "whether privity and RPI [real party in interest] relationships arising after filing but before institution should be considered for purposes of the § 315(b) time-bar." Power Integrations, No. 2018-1607, slip op at 12-13 (Fed. Cir. June 13, 2019). The Court concluded that the "best reading" of § 315(b) required that privity and RPI relationships that arise after the filing of an IPR petition but before institution be considered in determining whether a petition was time-barred. Id., at 14. In this case, Semiconductor Components Industries, LLC, which did business as ON Semiconductor ("ON"), merged with a third party (Fairchild Semiconductor) who had been served with a complaint more than one year before ON filed its petition. Id., at 4. That merger closed just four days before the PTAB's decision to institute. Id. The Court held the IPR was time-barred "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." Id., at 21.

Slip opinion available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1607.Opinion.6-13-2019.pdf.