CAFC in Fairchild v. Power Integrations: Put simply, “[i]f a defendant brought an invalidity challenge in a district court litigation and was unsuccessful, it is not permitted to bring the same challenge in an inter partes reexamination.”

The outcome was "Fairchild wins":


Fairchild (Taiwan) Corporation moves the court to
remand this case to the Patent Trial and Appeal Board
with instructions to vacate certain aspects of its final
decision in the underlying inter partes reexamination and
issue a reexamination certificate. Power Integrations,
Inc. opposes the motion. We agree with Fairchild and
grant the motion.



The issue related to concurrent proceedings before PTAB and the court system:


In June 2012, Power Integrations requested inter
partes reexamination of claims 1, 2, 5–7, 11, 12, 15, 17–19,
22, 32, 34, and 52–66 of the ’972 patent. The examiner
rejected all of the claims in the reexamination, including
claims 6, 7, 18, and 19, finding those claims unpatentable
under § 103(a) in view of TEA1401T and Balakrishnan.
In December 2015, the Board issued a decision affirming
the examiner’s rejection of the claims. After the Board
denied Fairchild’s request for rehearing, Fairchild appealed
to this court in October 2016. Fairchild brought
this motion to vacate and remand following the issuance
of this court’s mandate in Power Integrations.



From text within Fairchild:


Put simply, “[i]f a defendant
brought an invalidity challenge in a district court litigation
and was unsuccessful, it is not permitted to bring the
same challenge in an inter partes reexamination.” Function
Media, L.L.C. v. Kappos, 508 F. App’x 953, 955–56
(Fed. Cir. 2013) (holding that there was no basis for
continuing an appeal in light of § 317(b)).


We have held that this restriction applies when “all
appeals have terminated.” Bettcher Indus., Inc. v. Bunzl
USA, Inc., 661 F.3d 629, 646 (Fed. Cir. 2011). That is
precisely the situation here. The district court entered
judgment against Power Integrations, holding that it
failed to prove claims 6, 7, 18, and 19 were obvious over
Majid and Balakrishnan. This court affirmed the holding,
and the time to petition for a writ of certiorari has passed.
Moreover, Power Integrations does not dispute that these
obviousness grounds could have been raised in the civil
action in which it failed to meet its burden.
While it is true that in Power Integrations this court
vacated and remanded for additional proceedings, we
cannot agree with Power Integrations that this renders
the decision not “final” for [35 USC] § 317(b) purposes. Critically,
those proceedings are unrelated to the ’972 patent. By its
terms, § 317(b) is concerned with a final decision “that the
party has not sustained its burden of proving the invalidity
of any patent claim.”