IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

FAIRCHILD SEMICONDUCTOR
CORPORATION and FAIRCHILD
(TAIWAN) CORPORATION,
Plaintiffs,
v.

C.A. No. 12-540-LPS

POWER INTEGRATIONS, INC.,

Defendant.

John G. Day, Lauren E. Maguire, Andrew C. Mayo, ASHBY & GEDDES, Wilmington, DE.
Blair M. Jacobs, Christina A. Ondrick, PAUL HASTINGS LLP, Washington, D.C.
Attorneys for Plaintiffs.

William J. Marsden, Jr., Joseph B. Warden, Jr., FISH & RICHARDSON P.C., Wilmington, DE.
Frank E. Scherkenbach, FISH & RICHARDSON P.C., Boston, MA.
Howard G. Pollack, Michael R. Headley, FISH & RICHARDSON P.C., Redwood City, CA.
Attorneys for Defendant.

MEMORANDUM OPINION

April23,2015
Wilmington, Delaware

STARK, U.S. District Judge:

Among the motions still pending before the Court is Fairchild's Motion for Summary
Judgment of No Willful Infringement of PI's '366 Patent. (See D.I. 193; D.I. 194 at 16-17; D.I.
226 at 14-16; D .I. 236 at 7-8) For the reasons set forth below, the Court will grant this portion of
Fairchild's motion. 1

I.

BACKGROUND
On May 1, 2012, Plaintiffs Fairchild Semiconductor Corporation and Fairchild (Taiwan)

Corporation (collectively, "Fairchild" or "Plaintiffs") filed a complaint against Power

Integrations, Inc. ("PI" or "Defendant") alleging infringement of several Fairchild patents. (D.I.
1) On June 21, 2012, Power Integrations counterclaimed against Fairchild, alleging infringement
of several PI patents, including U.S. Patent Nos. 6,229,366 (''the '366 Patent"). (D.I. 11)
Fact and expert discovery are complete and trial will begin on May 26, 2015. The Court
heard oral argument on the pending motions on March 3, 2015. ("Tr.")

II.

LEGAL STAND ARDS

Pursuant to Rule 56(a) of the Federal Rules of Civil Procedure, "[t]he court shall grant

summary judgment if the movant shows that there is no genuine dispute as to any material fact
and the movant is entitled to judgment as a matter of law." The moving party bears the burden of
demonstrating the absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co.,

Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585-86 (1986). An assertion that a fact cannot be- or,

0ther portions of Fairchild's motion for summary judgment remain pending, including
Fairchild's request for summary judgment of non-infringement of PI's '366 patent. Regardless
of whether that portion of Fairchild's motion is ultimately granted or denied, the Court has
concluded that Fairchild has at least a reasonable non-infringement position, which is the basis
for the Court's ruling today that PI cannot prove willful infringement.
1

alternatively, is - genuinely disputed must be supported either by citing to "particular parts of

materials in the record, including depositions, documents, electronically stored information,
affidavits or declarations, stipulations (including those made for purposes of the motion only),
admissions, interrogatory answers, or other materials," or by "showing that the materials cited do
not establish the absence or presence of a genuine dispute, or that an adverse party cannot
produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(l)(A) & (B). If the
moving party has carried its burden, the nonmovant must then "come forward with specific facts
showing that there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation
mark omitted). The Court will "draw all reasonable inferences in favor of the nonmoving party,
and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson

Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).

To defeat a motion for summary judgment, the nonmoving party must "do more than
simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475
U.S. at 586; see also Podobnik v. U.S. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (stating
party opposing summary judgment "must present more than just bare assertions, conclusory
allegations or suspicions to show the existence of a genuine issue") (internal quotation marks
omitted). The "mere existence of some alleged factual dispute between the parties will not defeat
an otherwise properly supported motion for summary judgment;" a factual dispute is genuine
only where "the evidence is such that a reasonable jury could return a verdict for the nonmoving
party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986) (emphasis in original). "If
the evidence is merely colorable, or is not significantly probative, summary judgment may be
granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S.

317, 322 (1986) (stating entry of summary judgment is mandated "against a party who fails to
make a showing sufficient to establish the existence of an element essential to that party's case,
and on which that party will bear the burden of proof at trial"). Thus, the "mere existence of a
scintilla of evidence" in support of the nonmoving party's position is insufficient to defeat a
motion for summary judgment; there must be "evidence on which the jury could reasonably find"
for the nonmoving party. Anderson, 477 U.S. at 252.

III.

DISCUSSION
In In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), the Federal Circuit set

forth a two-prong test for establishing willful infringement. In order to meet the first prong, the
plaintiff must show "by clear and convincing evidence that the infringer acted despite an
objectively high likelihood that its actions constituted infringement of a valid patent." Id. at
1371. If the first prong is satisfied, the plaintiff must next establish ''that this objectively-defined
risk (determined by the record developed in the infringement proceeding) was either known or so
obvious that it should have been known to the accused infringer." Id. If, however, the first prong
cannot be shown, then the Court should not put the issue of willfulness - including the second
"subjective" prong- before a jury. See Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1236
(Fed. Cir. 2011) ("Since Seagate, [the Federal Circuit] has required patentees to prove the
objective prong of the willful infringement inquiry by clear and convincing evidence as a
predicate to the jury's consideration of the subjective prong. ... Should the court determine
that the infringer's reliance on a defense was not objectively reckless, it cannot send the
question of willfulness to the jury, since proving the objective prong is a predicate to
consideration of the subjective prong.") (emphasis added).

The Court concludes that the first prong of Seagate cannot be satisfied here due to
Fairchild's assertion ofreasonable non-infringement positions based on the Court's claim
construction of "a soft start circuit means." Specifically, Fairchild contends that its accused
products lack the required "soft start circuit means." (D.I. 194 at 16) Fairchild further contends
that its accused products are redesigned versions of products that were previously found to
infringe and that the redesign is consistent with what PI had previously indicated would not be
infringing. (See, e.g., id. 17) These are, at minimum, credible, reasonable non-infringement
theories, and consequently the first prong of Seagate cannot be satisfied. 2 See Uniloc USA Inc. v.

Microsoft Corp., 632 F.3d 1292, 1310 (Fed. Cir. 2011) ("If the accused infringer's position is
susceptible to a reasonable conclusion of no infringement, the first prong of Seagate cannot be
met."). As PI "has failed to meet the threshold objective prong of Seagate," Uniloc, 632 F.3d at
1310, summary judgment of no willful infringement will be granted to Fairchild. See also Power

Integrations, Inc. v. Fairchild Semiconductor lnt'l, Inc., 2014 WL 4437631, at *4-5 (N.D. Cal.
Sept. 9, 2014) (finding as matter oflaw that PI failed to establish objective recklessness where
Fairchild asserted reasonable defenses to infringement).
PI's efforts to defeat Fairchild's motion are unavailing. They rest principally on
purportedly "striking ... parallels" between the willfulness issue here and that involved in

This is true even ifthe Court or a jury ultimately rejects Fairchild's non-infringement
theories. See generally, e.g., Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620
F.3d 1305, 1319-20 (Fed. Cir. 2010) (upholding grant of judgment as matter oflaw of no willful
infringement where there was substantial question of obviousness of patent despite jury's finding
of non-obviousness); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F .3d 1314, 133637 (Fed. Cir. 2010) (upholding grant of judgment as matter oflaw on willful infringement where
defendant "presented a substantial question" of non-infringement under doctrine of equivalents,
even though jury found infringement by equivalence).
4

Fairchild I (C.A. No. 04-1371-LPS (D. Del. filed Oct. 20, 2004)), an earlier case in which

Fairchild was found to be a willful infringer. (D.I. 226 at 14-15) PI insists that "Fairchild is an
adjudged copier as to the Fairchild I accused products, which remain essentially unchanged."
(Id. at 15) (emphasis added) The Court finds these contentions unconvincing, at least in the

context of an objective recklessness analysis for purposes of willfulness. By PI's implicit

concession (in describing the new products as only "essentially," but not entirely, unchanged),
the accused products are changed from what was found to infringe in the earlier case. As
Fairchild observes, "Fairchild I involved different products and different litigation positions."
(D.I. 236 at 7) Fairchild reasonably contends that it believes its changes are material and render
the now-accused products non-infringing. On this record, then, PI cannot prove "by clear and
convincing evidence that [Fairchild] acted despite an objectively high likelihood that its actions
constituted infringement of a valid patent." Seagate, 497 F.3d at 1371.

IV.

CONCLUSION
An appropriate Order will be entered.

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE
FAIRCHILD SEMICONDUCTOR
CORPORATION and FAIRCHILD
(TAIWAN) CORPORATION,
Plaintiffs,
Civ. No. 12-540-LPS

V.

POWER INTEGRATIONS, INC.,

Defendant.
ORDER
At Wilmington this 23rd day of April 2015, consistent with the Memorandum Opinion
issued this date, IT IS HEREBY ORDERED that Fairchild's Motion for Summary Judgment of
No Willful Infringement of PI's '366 Patent (D.I. 193) is GRANTED. Except as expressly
addressed in this Order or any prior Opinion or Order of the Court, Fairchild's motion for
summary judgment remains pending.

HON. LEONARD P. STARK

UNITED STATES DISTRICT JUDGE

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE
FAIRCHILD SEMICONDUCTOR
CORPORATION and FAIRCHILD
(TAIWAN) CORPORATION,
Plaintiffs,
C.A. No. 12-540-LPS

v.
POWER INTEGRATIONS, INC.,
Defendant.

MEMORANDUM ORDER
At Wilmington this 23rd day of April, 2015, having reviewed the parties' proposed
pretrial order including briefing on various motions in limine ("MIL") (D.I. 303 Exs. 6, 7),

IT IS HEREBY ORDERED that:

1.

Plaintiffs Fairchild Semiconductor Corp. and Fairchild (Taiwan) Corp.'s

("Fairchild") MIL 1, to preclude any reference to any pending reexamination proceeding or any
completed reexamination proceeding of any asserted patent, is GRANTED. The pending
reexamination of Fairchild's asserted '972 patent is not final, as Fairchild has appellate rights.
Pursuant to Federal Rule of Evidence 403, the limited probative value of evidence of the
reexamination 1 is substantially outweighed by the risk of unfair prejudice to Fairchild, especially

Defendant Power Integrations, Inc. ("PI") argues that the fact the PTO finally rejected all
asserted claims of the '972 "is central to the 'specific intent' element (or the lack thereof) of
Fairchild's inducement claim" and similarly negates Fairchild's proof of intent with respect to
willful infringement. However, the Federal Circuit "has often warned of the limited value of
actions by the PTO when used for" the purpose of "negating the requisite intent for inducement."
1

the risk of confusion and the need to educate jurors on administrative proceedings governed by
different standards and on the potential for reversal of the PTO on appeal. Evidence and
argument relating to the completed reexamination of PI's '366 patent also has minimal probative
value- the '366 patent has been valid and presumed valid since its issuance, and remains so
following reexamination - which would be substantially outweighed by the risk of unfair
prejudice to Fairchild if admitted, as jurors could mistakenly apply a higher burden to a challenge
to the validity of claims that have withstood reexamination. While there shall be no reference to
"reexamination," evidence (including prior art) used during a reexamination is not inadmissible
solely due to its use or even creation during a reexamination, provided that general terminology
(e.g., "prosecution history") is used and necessary redactions are made. In particular, the parties
will be permitted to prove and argue that certain evidence was (or was not) reviewed by the PTO,
but will not be permitted to prove or argue how many times such evidence was reviewed by the
PTO.
2.

Fairchild's MIL 2, to preclude lay witness testimony on ultimate issues of

infringement and validity, is DENIED WITHOUT PREJUDICE. While the Court shares
Fairchild's concern that some of the testimony PI may intend to elicit through examination of
inventors would constitute impermissible expert testimony, the Court agrees with PI that this is
an issue best addressed in specific circumstances as they arise during trial.
3.

Fairchild's MIL 3, to preclude testimony that the soft start circuits accused of

Virnet.X, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1324-25 (Fed. Cir. 2014). As explained
elsewhere in this Order (see infra n.4) and as will be discussed further at the pretrial conference,
the Court intends to address the objective prong of willfulness prior to trial, and the Court's
rulings on the MILs may need to be reevaluated if it is ultimately determined that evidence going
to the subjective prong of willfulness is going to be presented to the jury.
2

I
I

infringement in this case are the same as circuits found to infringe in earlier litigation, is
GRANTED, subject to the Court's further explanation of its ruling on this motion. As a general

matter, the prior litigations among the parties, and the results of such proceedings, have minimal
if any probative value while also presenting a substantial risk of unfair prejudice to the nonprevailing party in the prior litigation, given the potential that the jury will defer to that prior
decision.
PI's arguments for the admissibility of the challenged testimony are, in the context of this
case, unavailing. PI argues: "Because willfulness, inducement, and obviousness are all at issue in
this case, the fact that Fairchild copied the patented circuit and the similarities between the
accused circuit and the one previously found to infringe are both relevant." (D.I. 303 Ex. 6C at
19) However, the Court will be addressing PI's allegation of willful infringement of its '366
patent by Fairchild in a separate order (granting Fairchild's motion for summary judgment of no
willfulness). With respect to inducement, the probative value is minimal, as PI's evidence relates
to a different product used at a different time, which is substantially outweighed by the risk of
unfair prejudice arising from the inflammatory nature of PI' s "copying" evidence. See VirnetX,
767 F.3d at 1324-25. Secondary considerations of obviousness are not relevant because Fairchild
is not asserting an obviousness defense to the '366 patent. Hence, again, the Rule 403 balance
strongly disfavors admissibility of the challenged testimony.
Notwithstanding this Order, should PI believe that at trial Fairchild puts "at issue"
Fairchild's "design-around," PI may request that the Court reconsider its Order and permit PI to
challenge whether there was a design-around and whether it succeeded.
4.

PI's MIL 1, to preclude testimony from PI's prior expert (Mr. Blauschild), is
3

I
I

GRANTED. Blauschild's testimony has minimal if any probative value as it related to a

different product; Blauschild did not have before him the (allegedly redesigned) product at issue
here and never had an opportunity to express an opinion on that actual product. The risk of
unfair prejudice to PI - having its own former expert used against it in snippets of testimony that
would take great time and effort to place in context for the jury - substantially outweighs
whatever minimal probative value it may have. 2
5.

PI's MIL 2, to preclude Fairchild from violating the spirit of this Court's repeated

orders striking as untimely material in Fairchild's supplemental contentions and expert reports, is
GRANTED. 3 While evidence (e.g., factual testimony regarding how accused products work) is

not inadmissible solely because it was cited in contentions and/or portions of an expert report
that were later stricken, the Court agrees with PI that Fairchild "cannot ... elicit testimony from
fact witnesses (or from Dr. Kelley) in an attempt to back door infringement or validity
contentions -whether made by Fairchild's expert, fact witnesses, or just argued by its counselthat Fairchild is prohibited from making pursuant to the Court's orders." (D.I. 303 Ex. 7B at 12)
6.

PI's MIL 3, to preclude evidence or argument regarding the finding of direct

infringement of the '972 patent by PI, is GRANTED. By separate Order, the Court has held that
PI is precluded from relitigating the issue of whether the LinkSwitch-11 chips when used in a
power supply with a transformer infringe the '972 patent under the doctrine of equivalents. As

Although Fairchild asserts that it relied on Blauschild's opinion in undertaking its

redesign implementation, it does not dispute PI's contention that the redesign predates his
testimony.
3

The Court will rule by separate Order on Fairchild's objections to the Special Master's
orders regarding motions to strike, which are discussed in the parties' briefing on PI's MIL 2.
4

this portion of Fairchild's induced infringement cause of action cannot be contested at trial, there
is no probative value to the fact that a prior jury found such infringement. Yet there is a
substantial risk of unfair prejudice to PI if it is portrayed as an adjudicated infringer of one of the
patents-in-suit. 4

IT IS FURTHER ORDERED, with respect to disputed provisions in the proposed

pretrial order (see D.I. 303):
1.

PI's proposal on the disputed issue at page 5 is ADOPTED as the Court will not

impose an arbitrary limit on the number of witnesses who may testify by deposition.
2.

PI's proposal on the disputed issue at pages 6-7 is ADOPTED as the Court will

rule during trial on objections to expert testimony as beyond the scope of prior expert
disclosures, with time for all such arguments to be charged to the party that does not prevail on
the objection.
3.

PI's proposal on the disputed issue at the bottom of page 7 is ADOPTED as the

Court will require all exhibits to be used in a party's rebuttal case to be listed, subject to
exceptions for good cause or agreement of all parties.
4.

PI's proposal on the disputed issue at page 9 is ADOPTED as impeachment

material may be shown to the jury at the time of impeachment.

5.

As indicated above, the Court intends to resolve the objective prong of any

Fairchild insists that the evidence of PI's infringement is "highly relevant" to its
willfulness allegations. In defending against PI's willfulness allegations, however, Fairchild
takes the position that the Court should assess the objective prong of willfulness before trial (see
D.I. 303 at 12-13)- an approach with which the Court agrees. The Court will discuss with the
parties how it will assess Fairchild's showing on the objective prong prior to trial. Hence, as
noted above (see supra n.1 ), it may be that no evidence going to the subjective prong of
willfulness is going to be presented to the jury.
5

willfulness allegations prior to trial, consistent with the general outline provided by Fairchild at
pages 12-13. The Court will discuss with the parties at the pretrial conference the specifics of
how it will resolve issues relating to willfulness.
6.

Fairchild's proposal on the disputed issue at pages 13-14 is ADOPTED as a party

will be charged time for all sides' arguments on objections a party raises to another party's
exhibits, including demonstrative exhibits.
7.

Each side is allocated a maximum of twenty-one (21) hours for its trial

presentation. Given the number of patents-in-suit and accused products, given the pretrial rulings
the Court has made to date and will continue to make, and given the parties' requests for 20-23
hours per side, the Court believes it has provided each side with more than sufficient time to
fairly and effectively present its case.
In addition to the MILs and the above disputes that are raised throughout the pretrial

order, each side has presented an extensive number of"Other Matters for Resolution by the
Court," a listing running to four pages of single-spaced text, without any context or response
from the other side. Specifically, Fairchild lists ten issues and PI seven more. Many of these
"other matters" could likely be characterized as untimely motions (for summary judgment or to
exclude expert testimony) or additional motions in limine beyond the Court's limit of three per
side.
Despite the Court's concern with the parties' approach, in hopes that resolution of some
of these issues might prove helpful to the parties as they prepare for the pretrial conference and
trial, IT IS HEREBY FURTHER ORDERED that:
1.

Any reference to the findings and results of the parties' previous litigations
6

(Fairchild issue 1) is PRECLUDED absent leave of the Court (which must be requested prior to
any attempt to use such evidence) or agreement of all parties (which, if achieved, must be
communicated to the Court prior to use of such evidence).
2.

The parties are PRECLUDED from making arguments or presenting evidence

that runs contrary to the Court's claim construction rulings (Fairchild issue 2).
3.

Absent approval of the Court, all experts for all parties are PRECLUDED from

testifying beyond the scope of their reports and contradicting the Court's orders (Fairchild issue
4).

4.

All parties MAY PROPOSE appropriate redactions so that evidence is presented

to the jury consistent with the Court's orders (Fairchild issue 9).
5.

Fairchild is PRECLUDED from making any reference to PI's actions or practices

regarding the filing of continuation patent applications, including any effort to elicit testimony or
suggest anything regarding PI's motives in filing continuations (PI issue 6).
The parties shall be prepared to address all remaining disputes, including those listed as
"Other Matters" that are not resolved by this Order, as well as any pending motions, objections,
or requests for relief, at the pretrial conference tomorrow.

UNITED STATES DISTRICT COURT