by Dennis Crouch
Last week, Acting USPTO Director Coke Morgan Stewart vacated Final Written Decisions invalidating two semiconductor patents, remanding the cases back to the PTAB with instructions to permit discovery into potential privity relationships. Semiconductor Components Industries, LLC v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244 (April 24, 2025). This represents a significant rebuke of the PTAB's handling of time-bar issues and privity allegations under 35 U.S.C. § 315(b), and is yet another general victory for patentees seeking relief from IPR cancellations. IPR2023-01242 -1243 -1244 Semiconductor v Greenthread DR Decision
Although the privity issue is juicy because it suggests backroom dealing, two additional aspects of the decision may end up being more important: the Board's refusal to hear certain arguments about prior art disclosures and its improper exclusion of district court claim construction orders.
