On June 26, 2019, Chris Loh was quoted in Law360 regarding two of the most important patent rulings in the first six months of 2019: Regents of the University of Minnesota v. LSI Corp. and Power Integrations Inc. v. Semiconductor Components Industries, DBA ON Semiconductor.
According to the article, the Federal Circuit’s June decision in Regents of the Univ. of Minn. v. LSI Corp. wiped out a unique advantage that state entities, including universities, enjoyed over other patent owners at the Patent Trial and Appeal Board (PTAB): immunity from inter partes review (IPR). The Federal Circuit said that IPRs are less like civil litigation, where state immunity generally would apply, and more similar to an enforcement action brought by a federal agency.
"I think it reflects the fact that the Federal Circuit wanted to bolster its opinion given that the Supreme Court hasn't been entirely consistent in how it characterizes IPRs," Loh said.
In Power Integrations v. Semiconductor Components, the Federal Circuit decided that challenges ON Semiconductor brought against Power Integrations patents at the PTAB were too late because of ON Semiconductor's merger with Fairchild Semiconductor. ON Semiconductor filed its petitions for IPR in early 2016, and the PTAB agreed several months later to review the patents. In between, the company finalized its merger with Fairchild.
"The Federal Circuit has really tried over the past two years or so to clarify open questions concerning the time-bar," Loh said. "They've been really proactive in terms of taking these cases and answering [time-bar] questions quickly."