In a significant ruling on the scope of the inter partes review time bar, the Patent Trial and Appeal Board rejected Greenthread's attempts to dismiss Semiconductor Components' petition as untimely, providing key guidance on privity relationships under 35 U.S.C. § 315(b).
The decision centered on Greenthread's argument that the petition was time-barred due to the petitioner's alleged privity with Intel and other licensees. The Board found these arguments unpersuasive, emphasizing the need for concrete evidence over theoretical relationships.
"The question of whether Petitioner is time-barred under § 315(b) is part of the determination of whether to institute an inter partes review," the Board noted, citing the Supreme Court's decision in Thryv, Inc. v. Click-to-Call Tech., LP.
Greenthread's attempts to establish privity through various business relationships met particular skepticism. The Board emphasized that "a manufacturer-customer relationship does not necessarily suggest a privity relationship, and because Petitioner's sales to Intel are licensed (as Patent Owner acknowledges), they do not support privity."
The Patent Owner's due process arguments also failed to gain traction. The Board pointed out that Greenthread "did not request additional discovery following entry of Petitioner's Preliminary Reply, or during trial." This failure to pursue available procedural remedies undermined claims of due process violations.
Notably, the Board rejected arguments that had already faced scrutiny in a Director review. "Patent Owner presented these arguments in its request for Director review of our Institution Decision, which was summarily denied," the Board observed, highlighting the uphill battle parties face when recycling previously rejected arguments.
The decision sets a high bar for establishing privity relationships to trigger the § 315(b) time bar. As the Board emphasized, theoretical connections between parties are insufficient – substantive evidence of privity must be developed during trial.
The ruling serves as a reminder that time-bar challenges require more than assertions of business relationships. As the Board concluded, "The record thus demonstrates that Patent Owner's argument that it was denied an opportunity to examine evidence underlying our Institution Decision lacks support."
This outcome reinforces the strategic importance of developing a robust evidentiary record during trial, particularly when seeking to establish privity relationships that could trigger the IPR time bar.
The case was decided before Administrative Patent Judges Tornquist, Ullagaddi, and Heaney, with Judge Heaney writing for the Board. The decision is Semiconductor Components Industries, LLC d/b/a ON Semiconductor v. Greenthread, LLC, Case No. IPR2023-01243, Paper 84 (Public Final Written Decision) (PTAB Feb. 19, 2025)
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