POWER INTEGRATIONS v. FAIRCHILD SEMICONDUCTOR Civ. No. 08-309-LPS.
763 F.Supp.2d 671 (2010)
POWER INTEGRATIONS, INC., Plaintiff, v. FAIRCHILD SEMICONDUCTOR INTERNATIONAL, INC., Fairchild Semiconductor Corporation, and System General Corporation, Defendants.
United States District Court, D. Delaware.
October 5, 2010.
William J. Marsden, Jr., Kyle Wagner Compton, 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, for Plaintiff.
John G. Day, Lauren E. Maguire, Tiffany Geyer Lydon, Ashby & Geddes, Wilmington, DE; Bas de Blank, Diana M. Rutowski, George Hopkins Guy, III, Ulysses Hui, Vicki L. Feeman, Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA, for Defendants.
STARK, District Judge:
Pending before the Court are four motions for summary judgment filed by plaintiff Power Integrations, Inc. ("Power") (D.I. 235, 239, 243, 250); three motions for summary judgment filed by defendants Fairchild Semiconductor International, Inc., Fairchild Semiconductor Corporation, and System General Corporation (collectively, "Fairchild") (D.I. 254, 257, 262); two Daubert motions filed by Power (D.I. 232, 247); and one Daubert motion filed by Fairchild (D.I. 260). This Opinion provides the Court's reasoning with respect to resolution of each of these ten motions.
The details of the parties' respective patents-in-suit and the technology claimed by those patents were set forth in the Court's order on claim construction. (D.I. 212, 337) It is enough here to note that Power asserts that Fairchild's accused devices infringe claims of the three Power patents-in-suit, while Fairchild counters that Power infringes asserted claims of the two Fairchild patents-in-suit. (D.I. 1, 49, 135, 136) Both parties further contend that each others' patents are invalid. (D.I. 1, 49, 135, 136) This case is related to earlier (and still pending) litigation between the parties involving alleged infringement of some of the same patents that also are in suit here. See Power Integrations, Inc. v. Fairchild Semiconductor, Int'l, Inc., C.A. No. 04-1371-LPS (D. Del., filed Oct. 20, 2004) (hereinafter "Fairchild I").
Oral argument on the instant motions was held on June 17, 2010. (Mot. Hr'g Tr., June 17, 2010 (D.I. 347), hereinafter "Tr.") Thereafter, the Court required supplemental briefing on three topics (D.I. 332), which the parties completed on July 22, 2010 (D.I. 335, 336, 338). The parties have also submitted letters regarding the most recent events in the ongoing re-examination of Power's '851 patent by the U.S. Patent and Trademark Office ("PTO"). (D.I. 342, 345)
II. Legal Standards
A. Summary Judgment
A grant of summary judgment is appropriate only where "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c)(2). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp.,
B. Daubert Motions
Motions to exclude evidence are committed to the Court's discretion. See In re Paoli R.R. Yard PCB Litig.,
Rule 702 embodies a "liberal policy of admissibility." See Pineda v. Ford Motor Co.,
Konstantopoulos v. Westvaco Corp.,
III. Power's Motions For Summary Judgment
A. To Preclude Fairchild From Challenging The Validity Of The '876 And '851 Patents Based On Prior Art Martin, The SMP211, And Wang (D.I. 235)
The Fairchild I jury found that Fairchild infringed claim 1 of the '876
Here, in Fairchild II, Fairchild again asserts that the '876 and '851 patents are invalid. Power moves for summary judgment on several of Fairchild's invalidity defenses based on collateral estoppel. For the reasons explained below, Power's motion will be granted in part and denied in part.
The Parties' Contentions
It is undisputed that the jury in Fairchild I determined that claim 1 of the '876 patent was not obvious. (Fairchild I, D.I. 555) At trial, Fairchild attempted to demonstrate that claim 1 of '876 patent was obvious in light of Martin by showing that Martin taught or rendered obvious the elements of claim 1, including "frequency jittering" and a counter and DAC that are "coupled." (D.I. 238 Ex. E at 718-19; Ex. F at 1061-67) According to Power, this was the only invalidity theory about which the jury heard evidence in Fairchild I; thus, the jury's finding of non-obviousness necessarily means that the jury decided that at least one of these two elements of claim 1—"frequency jittering" or a counter and DAC that are "coupled" to control the oscillator's frequency—were not taught by Martin. Power contends that collateral estoppel (issue preclusion) prevents Fairchild from attempting to persuade another jury to reach a different conclusion about whether Martin renders claim 1 of the '876 patent invalid.
Power takes its issue preclusion argument further. In Power's view, claim 21 of the '876 patent contains elements identical to claim 1: specifically, the "frequency jittering" limitation and the limitation requiring the counter to be "coupled" to the DAC. (D.I. 237 at 10) Thus, Fairchild is
Power's argument with respect to the '851 patent is similar. The Fairchild I jury found claims 1 and 4 of '851 patent were not obvious in light of Martin, the SMP211 device, or the combination thereof. Because the "exact same elements found not to exist in claim 1 of the '851 patent" (which is not asserted in Fairchild II) "also appear in claim 11 of the '851 patent" (which is asserted in this case), "Fairchild is also precluded from using Martin or the SMP211 to challenge claim 11." (D.I. 237 at 2) Power also argues that because claims 17 and 18 of the '851 patent depend from claim 11, if claim 11 is not invalid in light of Martin, then claims 17 and 18 are likewise not invalid in light of Martin. (Id. at 14)
Power next attempts to prevent Fairchild from asserting that the patents-in-suit are invalid based on the Wang prior art reference.
Finally, Power argues that Fairchild is precluded from trying to prove that the '876 and '851 patents are invalid due to anticipation based on any of the Martin, SMP211, or Wang prior art references. In Power's view, just as this prior art may not be the basis for an obviousness defense in the instant action, neither may they be the basis for an anticipation defense.
Fairchild, of course, disagrees with each of Power's contentions. Fairchild emphasizes that the claims asserted by Power in Fairchild I—claim 1 of the '876 patent and claims 1 and 4 of '851 patent—are not asserted here in Fairchild II. (D.I. 302 at 3) Here, Power instead asserts claim 21 of the '876 patent and claims 11, 17, and 18 of the '851 patent. Fairchild disputes that these newly-asserted claims have "essentially the same requirements" as the claims previously litigated. (Id.) Furthermore, the jury verdict sheet in Fairchild I does not specify which claim elements the jury believed were missing from the Martin reference, so it is possible the jury decided than an element unique to one of the claims asserted in Fairchild I was missing, rendering the Fairchild I finding inapplicable to the instant case.
Turning to Wang, Fairchild cites Innogenetics, N.V. v. Abbott Labs.,
Last, with respect to its anticipation defense, Fairchild shows that the Fairchild I
Collateral estoppel, or issue preclusion, applies where: "(1) the issue sought to be precluded is the same as that involved in the prior action; (2) that issue was actually litigated; (3) it was determined by a final and valid judgment; and (4) the determination was essential to the prior judgment." Burlington N.R.R. v. Hyundai Merch. Marine Co.,
Obviousness Based On Martin And/Or SMP211
'876 patent claim 21
It is undisputed that the Fairchild I jury decided that claim 1 of the '876 patent is not obvious in light of Martin. (D.I. 238 Ex. B at 3; Fairchild I, D.I. 555) This Court then denied Fairchild's motion for judgment as a matter of law that claim 1 of the '876 patent was invalid. (D.I. 238 Ex. C at 8-9; Fairchild I, D.I. 690 at 8-9) The only bases the jury had before it for reaching such a conclusion were that Martin, because it contained a ROM between the counter and the DAC, failed to disclose "frequency jittering" and/or a counter "coupled" with a DAC. (See D.I. 237 at 4-5 (summarizing trial testimony); D.I. 238 Ex. C at 8-9)
Claim 21 of the '876 patent contains these same two elements as claim 1 of the '876 patent. (See D.I. 237 at 10-11 & nn. 6-7) Therefore, the issue of whether Martin discloses the "frequency jittering" and/or counter "coupled" with a DAC limitation of claim 21 of the '876 patent is the same as the claim 1 issue that was actually litigated in Fairchild I, a case in which the jury's determination against Fairchild was essential to a final judgment against Fairchild.
'851 patent claim 11
It is undisputed that the Fairchild I jury decided that claims 1 and 4 of the '851
'851 patent claims 17 and 18
Claims 17 and 18 of the '851 patent depend from claim 11. Hence, they contain the same limitations—including the "frequency variation" and "oscillator" limitations—as claim 11. As already noted, these limitations were found by the jury in Fairchild I not to be taught by Martin and/or the SMP211. It follows that, for the same reasons as for claim 11, Fairchild is precluded from asserting that claims 17 and 18 of the '851 patent are invalid due to obviousness based on Martin and/or the SMP211.
Obviousness Based On Wang
Fairchild's own experts have testified that the teaching of the Wang prior art reference is substantially identical to the teaching of the Martin prior art reference with respect to the claim elements at issue here. Specifically, Martin and Wang both contain the ROM, located between the DAC and the counter, that controls frequency change. In the instant action, Fairchild's expert, Dr. Wei, was asked in deposition about the ROM, and responded: "Yes. The Wang article shows a ROM that's between the counter and the DAC as well. That's Martin." (D.I. 234 Ex. I at 275-76) (emphasis added) Likewise, Fairchild's expert in Fairchild I, Dr. Horowitz, agreed that the circuit disclosed in Wang, like that disclosed in Martin, shows a ROM interposed between a counter and a DAC. (D.I. 238 Ex. G at 60; Fairchild I, D.I. 209 at ¶ 5) Further, Dr. Wei noted in his supplemental expert report in the instant action that, for the frequency variation limitation in the '876 patent, "a person of ordinary skill in the art at the time . . . would have understood that each of the prior art Martin Patent and Wang Article teach the claimed digital frequency jittering circuit for varying the switching frequency of a power supply." (D.I. 234 Ex. A at ¶ 245 (internal quotation marks omitted); see also D.I. 234 Ex. A at ¶¶ 239, 243 (using identical language to describe the techniques for changing the frequency for both the Martin and Wang references))
By comparison, Fairchild has identified no record evidence to support the view that Wang and Martin are materially different. Moreover, Fairchild conflates issue preclusion and summary judgment when it argues that Wang has not been "actually litigated." While the Wang reference itself has not been litigated (it was not before the jury in Fairchild I), the Martin reference was indisputably "actually litigated." The question on this motion for summary judgment, therefore, is whether Wang and Martin teach the same limitations. This is a question of fact, but the record reveals no genuine dispute that Wang and Martin disclose substantially identical teachings with respect to the specific
Accordingly, summary judgment will be granted to Power with respect to the Wang reference. Fairchild will be precluded from asserting Wang as a basis for invalidating the '876 or '851 patents due to obviousness.
The Federal Circuit has stated: "While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different." Cohesive Technologies, Inc. v. Waters Corp.,
The Fairchild I jury was not asked to render a verdict with respect to Fairchild's anticipation defense; nor was this Court asked to reach such a judgment. Therefore, Fairchild's anticipation defenses were not "actually litigated" and issue preclusion does not apply.
B. Cross Motions For Summary Judgment Of Infringement Or Non-Infringement Of Claims 6-9 Of Power's '270 Patent (D.I. 239, 257)
Power moves for summary judgment that Fairchild's accused products infringe claims 6-9 of the '270 patent.
The '270 patent relates to circuits in a voltage regulator for limiting the maximum output current to keep it constant. Claim 6 reads:
A power supply regulator, comprising:
('270 patent, col. 6 lines 47-63) Claims 7-9 depend from claim 6.
Fairchild's accused products, for example the SG5841J, include a "saw limiter" circuit, which Power claims—and Fairchild—denies practices all of claims 6-9 of the '270 patent. The parties agree that the crux of their dispute turns on the meaning of the term "an approximately constant output current below an output threshold voltage," which is contained in claim 6. (See D.I. 282 at 1; D.I. 303 at 1) Resolution of this motion requires the Court first to consider the meaning of this term.
Power argues that "an approximately constant output current below an output threshold range" should be construed as "an output current that remains substantially constant with changes in input line voltage," (D.I. 282 at 2; D.I. 336 at 5) Power further contends that it is too late for Fairchild to seek an alternative construction of this term because, when the parties met and conferred to identify disputed claim terms, Fairchild took the position that this term was indefinite, and did not seek its own construction. Now Fairchild's expert, Dr. Wei, proposes a construction of the term, but, Power argues, Fairchild should not be heard on this point.
Fairchild responds that it never waived the opportunity to propose a construction of the "approximately constant output current" term. Rather, Fairchild did not believe the term required special construction since its plain meaning to one of ordinary skill in the art was clear. Fairchild now advocates what it characterizes as the "plain and ordinary" meaning of the disputed term: "the output current is approximately constant below an output threshold voltage." (D.I. 335 at 4) This is essentially the same construction employed by Fairchild's expert, Dr. Wei. (D.I. 258 at 4-5; see also D.I. 234 Ex. A at ¶¶ 470-76; D.I. 233 at 12)
Following the June 17, 2010 hearing, the Court determined that it was necessary to construe the disputed "approximately constant output current" claim term. The Court does not agree with Power that, under the circumstances, Fairchild should be found to have waived its right to propose
Claim construction is a question of law for the Court to decide. See Markman v. Westview Instruments, Inc.,
The Court concludes that Power's proposed construction—that the term "approximately constant output current," as used in claim 6 and its dependent claims, means "output current that remains substantially constant with changes in input line voltage"—is correct, as it comports best with the patent's specification and claims. The specification of the '270 patent repeatedly discloses that the claimed circuit acts to keep the output current substantially constant with respect to changes in line voltage. ('270 patent, col. 2 lines 42-27; id. at col. 3 lines 34-37; id. at col. 5 lines 47-52) Likewise, the Abstract, Summary, and Detailed Description of the '270 patent each state that output (or load) current is maintained at a constant with respect to input (or line) voltage. ('270 patent, col. 1 lines 1-4, 57-59; id. at col. 2 lines 42-45) Figure 1 of the patent also depicts a circuit structure for maintaining constant current with varying input line voltage.
Additionally, while Fairchild is correct that Figure 5 of the '270 patent shows a "region" in which the output current will be approximately constant, claim 6 only requires that the current be constant at a given output voltage below a certain "output threshold voltage" ('270 patent, col. 6 lines 58-60), not that it must remain constant for any and all variations in voltage. Furthermore, as Power contends, Figure 5 depicts merely one embodiment of the '270 patent's claimed invention. Fairchild's proposed construction would improperly read out one of the '270 patent's preferred embodiments; i.e., the embodiment disclosed in Figure 1. (D.I. 241 at 16)
Having adopted Power's proposed construction of the disputed claim term, the Court finds there remain genuine disputes
C. Non-Infringement And Invalidity Of The Remaining Asserted Claims Of The Yang '595 Patent (D.I. 243)
In its counterclaims, Fairchild asserts that Power's accused products infringe, inter alia, Fairchild's '595 patent.
Power argues that Fairchild has abandoned the theory of infringement it initially pressed in this action, in favor of a belated, post-discovery, drastically different theory, which Fairchild only first revealed in the opening report of its expert, Dr. Wei. Power further complains that Dr. Wei did not present a theory of infringement under the doctrine of equivalents until his supplemental report, even though he admitted he had all the information necessary to have done so at the time he wrote his initial report.
The Court will not grant Power summary judgment due to the purportedly untimely nature of Fairchild's disclosure of its infringement position. Under the circumstances—in which two sophisticated, well-represented parties are battling one another over multiple patents, and multiple products, in both this action and the simultaneously pending Fairchild I—the Court discerns no persuasive basis for depriving Fairchild of the opportunity to proceed with its now-disclosed infringement theories. The Court does not find that Power will be unduly or unfairly prejudiced as a result.
Turning to the merits, Power insists that Fairchild's expert. Dr. Wei, has failed to demonstrate that the accused products have a "current signal," as required by the "second circuit" limitation in asserted claims 17 and 22. In support of this proposition, Power points to Dr. Wei's deposition testimony, in which Dr. Wei testified that "a current signal is represented by the digital code S1-S14." (D.I. 245 at 17) (emphasis added) Moreover, according to Power, Dr. Wei's belated infringement by equivalents theory is flawed because it fails to account for the "all elements rule" and the "prosecution history
The Court agrees with Fairchild that genuine disputes of material fact are present and necessitate resolution by trial. Dr. Wei's opening and supplemental reports provide a basis from which a reasonable factfinder could conclude that Power's accused products infringe the '595 patent, literally and by the doctrine of equivalents. For example, Dr. Wei specifically states in his opening report that digital code S1-S14 represents the primary-side switching current of the transformer, and thus is the claimed "current signal." (D.I. 305 Ex. D at ¶ 150) A reasonable factfinder could credit Dr. Wei's opinion and reach a verdict of infringement.
Power contends that "an expert's unsupported conclusion on the ultimate issue of infringement cannot alone create a genuine issue of material fact." (D.I. 245 at 16) For this proposition Power relies on Intellectual Science and Technology, Inc. v. Sony Electronics Inc.,
Power asserts that the '595 patent is invalid as anticipated. Anticipation requires that a single prior art reference disclose all of the limitations of the claim in dispute. See, e.g., Zenith Elec. Corp. v. PDI Comm. Sys. Inc.,
Here, Power argues that the report by its expert, Blauschild, makes out a prima facie argument that the Philips TEA1401T datasheet anticipates the asserted claims. Under Power's view, the only real issue that Fairchild raises about the TEA1401T datasheet is one of claim construction— whether the limitation "in order to compensate for voltage drop across a cable" should be read into the first reference signal because, according to Fairchild, that is "what the patent is about." (D.I. 245 at 26) Power argues that since this is a legal claim construction issue, and one that Fairchild waived by not raising it during the claim construction process, invalidity is ripe for summary determination by the Court. (Id.)
Fairchild responds by identifying two material facts that are in dispute: whether the prior art TEA1401T discloses a "first reference signal," and whether the TEA1401T discloses "voltage compensation." (D.I. 305 at 4-5) The two experts. Power's Blauschild and Fairchild's Wei, disagree about whether the compensation block of the TEA 1401T meets the first reference signal limitation contained in the '595 patent. (Compare D.I. 305 Ex. A at ¶ 17 with D.I. 305 Ex. B at ¶ 169)
The Court agrees with Fairchild. Whether the TEA1401T datasheet teaches
D. Motion For Summary Judgment That SG's '972 Patent Is Unenforceable Due To Inequitable Conduct (D.I. 250)
Power asserts that Fairchild's '972
According to Power, two Power patents, the '876 and '366, were material and not cumulative prior art to Fairchild's '972 patent, yet the Power patents were not disclosed to the PTO. (D.I. 252 at 14) Power claims that none of the prior art that Fairchild disclosed in the '972 application contained a frequency hopping limitation. Even after Yang's initial application was rejected and he amended it to include a "frequency hopping" limitation, he still failed to disclose the Power patents, despite admitting to knowing about them.
In Power's view, Yang's intent to deceive is evident from the lack of credibility of his explanation that he failed to disclose the Power patents because he believed his '972 patent was limited to "primary side" control, making the prior Power patents immaterial. (Id. at 18) Yang, who is not a patent attorney, admitted that he often does not read the "details" of his patent applications. Power cites case law suggesting that ignorance of the legal significance of claims does not excuse a failure to disclose material information. (Id. at 19) Moreover, to Power, it is inconsistent for Yang to assert that he does not know the legal significance of the claim language he used while "in the same breath" state that he thought his patent was limited to the primary side. (Id.) Finally, Power argues that Yang's pattern of disclosing the Power patents in connection with some but not all of his pending applications demonstrates his intent to deceive. In this regard, Power points out that Yang used a different law firm, Finnegan Henderson, to prosecute the '972 patent, rather than the J.C. Patents firm, which prosecuted previous Yang patents in which the Power patents were disclosed. (Id. at 24)
In response, Fairchild identifies material disputes of fact it insists preclude summary judgment. Fundamentally, Fairchild contends that the Court will have to weigh all the evidence, including its assessment of Yang's credibility, in evaluating Power's inequitable conduct claim. Fairchild disputes the materiality of the prior art Power patents, mostly on the basis that "frequency hopping" was well known in the art and, therefore, cumulative. Fairchild also insists that Yang's explanation that he believed his '972 patent was limited to "primary side control," rendering the Power patents immaterial, is plausible. (D.I. 304 at 4, 7)
Taking the evidence in the light most favorable to Fairchild, as the non-moving party, the Court concludes that there is a genuine dispute both as to the materiality of the Power patents and as to Yang's intent in not disclosing that prior art. See Paragon Podiatry Lab., Inc. v. KLM Lab., Inc.,
Inequitable conduct defenses are tried to the Court, not a jury. See General Electro Music Corp. v. Samick Music Corp.,
Power further characterizes its motion as presenting the following question: whether Yang, "who admits he does not know the current legal standard, [can] withhold known, clearly material prior art from the PTO and his attorneys with no contemporaneous evidence of any reason for having done so and after the fact, during litigation, insulate himself from an inequitable conduct finding solely on the basis of a professed good-faith and yet mistaken understanding of the law?" (Tr. at 178-79) Power argues that allowing this issue to go to trial will induce inventors to "cultivate ignorance." (D.I. 321 at 13) The Court disagrees. After seeing all the evidence, including Yang's testimony, the Court may yet find that Yang did engage in inequitable conduct. The Court's ruling today is only that there are genuine disputes of material fact that preclude reaching any conclusion on the merits based on the current record.
Accordingly, the Court will deny Power's motion for summary judgment with respect to its defense of invalidity of Fairchild's
IV. Fairchild's Motions For Summary Judgment
A. No Willful Infringement Of Power's '876 And '851 Patents (D.I. 254)
In Fairchild I, Fairchild was found to have willfully infringed claim 1 of the '876 patent and claims 1 and 4 of the '851 patents. (Fairchild I, D.I. 415, 555, 750) In the instant action, Power asserts that Fairchild willfully infringes claims 1 and 21 of the '876 patent and claims 11, 17, and 18 of the '851 patent. (D.I. 255 at 2) Under the Federal Circuit's decision in In re Seagate,
Fairchild moves for summary judgment of no willful infringement of the Power '876 and '851 patents, largely due to events that have occurred during the reexaminations of both of these patents. Fairchild contends that even if it infringed the '876 and '851 patents, its infringement cannot, as a matter of law, have been objectively reckless, given how poorly Power's patents are faring before the PTO in reexamination. Fairchild relies on cases suggesting that if the PTO grants reexamination of a patent, the PTO's finding of "substantial new questions" precludes a showing by the patentee of objective recklessness (and, therefore, of willfulness). See, e.g., Pivonka v. Cent. Garden & Pet Co., 2008 WL 486049, at *2, 2008 U.S. Dist. LEXIS 12022, at *6 (D.Colo. Feb. 19, 2008); Lucent Techs., Inc. v. Gateway, Inc., 2007 WL 6955272, at *8, 2007 U.S. Dist. LEXIS 95934, at *22 (S.D.Cal. Oct. 30, 2007). Fairchild argues that when the PTO grants reexamination of a patent, this determination itself is evidence that the case presents a "close call" on validity, making a finding of willful infringement unavailable. (D.I. 255 at 8-10) It follows, in Fairchild's view, that the further along the reexamination process goes, the more evidence there is that the accused infringer was not "objectively reckless" in infringing the patent. (Id. at 11)
Here, according to Fairchild, the PTO's reexamination of Power's '876 and '851 patents demonstrate that Fairchild has a strong argument that these patents are not valid. Fairchild maintains that Power had to amend claim 1 of the '876 patent and, even after amendment, the PTO rejected the claim as anticipated by three prior art references. (Id. at 12) While Power has appealed the amended version of claim 1 to the Board of Patent Appeals and Interferences, it has not appealed the original version of claim 1, which gives rise to, in Fairchild's view, an "irrebuttable presumption that the original claim was flawed." (Id.) (relying on Bloom Eng'g
Power responds by identifying genuine disputes as to the following material facts: Fairchild's knowledge of Power's patents before the litigation commenced; Fairchild's reverse-engineering of Power's patents; Fairchild's continual infringement of Power's patents despite two jury verdicts and an injunction in Fairchild I; and Fairchild's lack of any meaningful non-infringement position with respect to the '876 patent, other than one that sounds in an untimely claim construction issue. (D.I. 284 at 4-5) Power also argues that adopting Fairchild's view would mean that any reexamination proceeding would act as a per se bar to a patentee recovering for willful infringement. (Id. at 1) Because reexaminations are granted with such frequency, this would encourage all accused infringers automatically to seek reexamination, effectively eliminating the availability of enhanced damage recoveries for patent holders whose patents are willfully infringed. Power also observes that, in making a willful infringement finding, the factfinder is required to use a "totality of the circumstances" analysis, so the sole fact of a reexamination (in whatever stage) cannot itself be determinative. (Id. at 2)
Power also challenges Fairchild's characterization of the reexamination proceedings—which, Power emphasizes, do not even involve the same claims that are asserted against Fairchild here (claim 21 of the '876 patent and claim 18 of the '851 patent). Power argues that it has not "cancelled" claims 1 and 11 of the '851 patent; instead, Power rewrote them as claims 19 and 20. at the request of the PTO. (Id. at 3, 6; see also D.I. 342) Moreover, Power insists it has made no substantive changes to any of the patent claims undergoing reexamination. Indeed, Power argues that the PTO has now accepted the amended version of claim 11 of the '851 patent, contained as claim 20, that merely incorporates the Court's prior construction of "frequency variation signal." (D.I. 342) Moreover, the reexamination proceedings are ongoing and will not be final until after all appeals are completed.
Most importantly, Power explains that the standard by which the PTO conducts a reexamination is not the same as the standard used in litigation regarding the validity of a patent. See, e.g., In re Swanson,
The Court is persuaded by Power and the authorities it cites that there is a substantial risk of confusion and unfair prejudice if a jury deciding issues of infringement and validity is presented with the full record of the ongoing reexamination proceedings. However, this case is noteworthy in that: the reexamination proceedings here are far advanced and have not gone entirely well for the patentee; these parties know one another, and each others' patent portfolios, very well; and these parties have been engaged in patent litigation against one another for many years. In these circumstances, it would be unfair to Fairchild to make a determination that it acted willfully—that is, despite an objectively high likelihood that its actions constituted infringement of a valid patent— without even considering the possibility that the PTO may, in the end, invalidate one or more of Power's asserted patent claims.
Balancing these competing concerns, the Court has decided to exercise its discretion to sever the issue of willful infringement for a separate trial. See Fed. R. Civ. Proc. 42(b); see also Ciena Corp. v. Corvis Corp., 210 F.R.D. 519, 521 (D.Del.2002) ("Under Rule 42(b) a district court has broad discretion in separating issues and claims for trial as part of its wide discretion in trial management.... Courts, when exercising their broad discretion to bifurcate issues for trial under Rule 42(b), should consider whether bifurcation will avoid prejudice, conserve judicial resources, and enhance juror comprehension of the issues presented in the case.") (internal quotation marks omitted); Allergan Inc. v. Pharmacia Corp., 2002 WL 1268047, at *1 n. 1 (D.Del. May 17, 2002). If Power prevails at the initial trial, by proving infringement of a valid claim of the '876 or '851 patents, the Court will hold a separate trial on whether Fairchild's infringement was willful. Evidence of the pending reexaminations may be admissible at the willfulness trial, although the Court is not today making any decisions on admissibility.
Accordingly, Fairchild's motion for summary judgment of no willful infringement will be denied without prejudice. Fairchild may renew its motion following trial on infringement and validity and prior to the separate trial on willfulness.
B. Limitation Of Damages (D.I. 262)
Fairchild argues that Power's damages should be limited in three respects: 1) Power may not recover "worldwide" damages, as the vast majority of Fairchild's accused products have no connection to the U.S. market; 2) Power may not recover pre-complaint damages, as Power failed to mark or to provide constructive or actual notice of its patents, as required by 35 U.S.C. § 287; and 3) Power may not recover damages based on "lost profits," because Power cannot establish that Fairchild's alleged infringement was the "but for" cause of Power's lost sales. Naturally, Power disputes each of Fairchild's assertions.
Pursuant to Federal Rule of Civil Procedure 42(b), the Court will sever issues of damages for a separate trial, to follow trial on infringement and validity. Given that this case involves three Power patents and two Fairchild patents, at least eighteen asserted claims, three families of accused devices, and several infringement and invalidity theories for each patent-in-suit,
Accordingly, the Court will deny Fairchild's motion without prejudice. Fairchild may renew its motion to limit damages after trial of infringement and validity and prior to the separate trial on damages.
V. Daubert Motions
A. Power's Motion To Strike Wei's Supplemental Expert Report (D.I. 232)
Power moves to strike the Supplemental Expert Report of Fairchild's expert, Dr. Wei. (D.I. 234 Ex. B (hereinafter "Wei's Supplemental Report")) Power asserts two grounds. First, Power contends that Wei's Supplemental Report contains an untimely articulation of Fairchild's theory that Power infringes Fairchild's '595 and '972 patents under the doctrine of equivalents. Second, Power contends that Wei's Supplemental Report departs significantly from the Court's claim construction order in this case. The Court addresses each of these arguments in turn.
Fairchild's Theory of Infringement by Equivalents
On November 7, 2008, Fairchild filed its counterclaims, asserting that Power infringed Fairchild's '972, '595, and '780 patents. (D.I. 49 at ¶¶ 9-23) On November 19, 2008, Power answered Fairchild's counterclaims, including by denying that it infringed Fairchild's asserted patents. (D.I. 50 at ¶¶ 9-23, 43, 60, 66, 72)
On January 29, 2009, the Court entered a Scheduling Order. (D.I. 61) Among the pertinent provisions of the Scheduling Order is ¶ 3.c:
Also pertinent is ¶ 3.d:
Consistent with the Scheduling Order, on April 20, 2009 both parties served one another with infringement contentions regarding their respective asserted patents. (D.I. 233 at 4; D.I. 234 Exs. C & D) At this time, Fairchild did not disclose a basis for infringement under the doctrine of equivalents, although Fairchild did put Power on notice that it might do so in the future. (D.I. 234 Ex. A at ¶¶ 67, 142; see also D.I. 281 Ex. A at 6) There is no dispute that Fairchild bears the burden of proof on the issue of infringement of the Fairchild patents under the doctrine of equivalents.
In July 2009, both parties complained about the adequacy of each other's responses to contention interrogatories. (D.I. 96, 99, 100, 101) The Court held a teleconference and denied both parties' requests to compel production of more detailed responses. (D.I. 105 at 26-27) At no point prior to service of Wei's Supplemental Report did Fairchild serve Power with supplemental interrogatory responses disclosing the basis for Fairchild's contention that Power infringes under the doctrine of equivalents.
On February 1, 2010, Fairchild served the opening expert report of Wei. (D.I. 233 at 5-6; D.I. 234 Ex. A ("Wei's Opening Report")) Consistent with the approach Fairchild had taken in connection with its infringement contentions, Wei's Opening Report declined to address the doctrine of equivalents, but made clear that Wei would opine that Power's accused devices infringe under that doctrine if he eventually decided he needed to address the issue. (D.I. 281 at 4; D.I. 234 Ex. A at ¶¶ 67,142 and p. 124 n. 31) On March 1, 2010 (the first business day after the Scheduling Order's deadline of February 28, 2010), Power served the rebuttal expert report of Blauschild, responding to Wei's opinion of infringement. (D.I. 233 at 6) On March 16, 2010, Fairchild served Wei's Supplemental Report, which, unlike Wei's Opening Report, articulated a theory of infringement under the doctrine of equivalents. (Id.; D.I. 234 Ex. B)
Federal Rule of Civil Procedure 26(a)(2)(B)(i) requires that an expert's report contain "a complete statement of all opinions the witness will express and the basis and reasons for them." Further, Rule 26(a)(2)(C) provides that "a party must make these [expert] disclosures at the time and in the sequence that the court orders." Parties are always under an obligation to supplement their contentions, including supplementing expert reports, when it becomes necessary to do so. See Fed. R. Civ. Proc. 26(e)(1)(A) ("[A]ny party who has . . . responded to an interrogatory. . . must supplement or correct its disclosure or response . . . in a timely manner if the party learns that in some material respect the disclosure or response is incomplete."); see also D.I. 105 at 27 (Court reminding parties "of their ongoing obligation to supplement, in particular, contention interrogatories"). Parties may not use their obligation to supplement as an excuse to violate the clear terms of a Scheduling Order, unilaterally buying
Pursuant to Rule 37(c)(1), the Court has the power to exclude evidence as a sanction for a party's failure to comply with its obligations under the rules, including the specific deadlines and obligations imposed by a scheduling order. Exclusion of "critical evidence," such as an expert report on infringement, is an "extreme sanction, not normally to be imposed absent a showing of willful deception or flagrant disregard of a court order by the proponent of the evidence," In re Paoli R.R. Yard PCB Litig.,
Whether to strike the portion of Wei's Supplemental Report finally disclosing Fairchild's theory of infringement by the doctrine of equivalents presents a close call. The factors favoring striking include: Fairchild has the burden of proof on infringement, including under the doctrine of equivalents, and the combination of the Scheduling Order and Rule 26(a)(2) make clear that Fairchild should have disclosed the bases of its equivalents theory no later than Wei's Opening Report; Fairchild knew at the time it served Wei's Opening Report that Power was disputing that it literally infringed Fairchild's asserted patent claims; and, at the time he was preparing his opening report, Wei already had all the materials he needed to reach his opinion—and articulate the bases for it— that Power infringed under the doctrine of equivalents (D.I. 234 Ex. I at 16-17, 30-31). By contrast, the factors disfavoring striking include: Power knew at least since Fairchild served its responses to contention interrogatories in April 2009 that Fairchild was likely going to attempt to prove infringement under the doctrine of equivalents; and courts' general reluctance to strike crucial evidence from a case, as reflected in the stringent burden a party seeking such exclusion must meet, particularly when relief short of such exclusion may alleviate any unfair prejudice to the party seeking exclusion.
The Court concludes that the appropriate exercise of its discretion, under all the circumstances, is to deny the motion to strike, but to permit Power (if it has not already done so)
The parties shall meet and confer and provide the Court with their proposal(s) for a modification of the Scheduling Order consistent with this ruling. Power's motion to strike the portions of Wei's Supplemental Report regarding infringement by the doctrine of equivalents will be denied.
Wei's Handling Of Claim Construction Issues
Pursuant to the Scheduling Order, the parties submitted a Joint Claim Construction Chart identifying the claim terms that the parties agreed required construction by the Court. (D.I. 109) The Court then received claim construction briefing, held a Markman hearing, and issued a Report & Recommendation regarding the proper construction of ten disputed claim terms. (D.I. 118, 122, 138, 140, 174, 184, 212) Both parties objected to portions of the Report & Recommendation. (D.I. 220, 221, 222, 223) On July 20, 2010, the Court adopted the Report & Recommendation without modification. (D.I. 337)
Wei's Supplemental Report expresses opinions that, in Power's view, are inconsistent with the Court's claim construction. Specifically, Power argues that portions of Wei's Supplemental Report must be stricken for the following reasons: (i) Wei purports to construe claim terms for which Fairchild never provided proposed constructions; (ii) Wei "re-construes" claim terms that the Court already construed; and (iii) Wei purports to construe claim terms that the Court "implicitly" already construed. The Court addresses each of Power's contentions in turn.
Terms for which Fairchild never proposed constructions
"approximately constant output current"
Following the motions hearing in June 2010, the Court ordered supplemental briefing, including on the parties' proposed constructions of the term "approximately constant output current." (D.I. 332) Earlier in this Opinion, in conjunction with Power's motion for summary judgment of infringement by Fairchild of claims 6-9 of the '270 patent, the Court found it necessary to construe this claim term. (See supra 3(B) (discussing cross-motions for summary judgment of infringement and invalidity of '270 patent)) Accordingly, there is no basis to strike the portions of Wei's Supplemental Report that, in Power's view, purport to construe this claim term or which otherwise relate to this claim term. Power's motion to strike will be denied in this respect.
"a feedback terminal coupled to disable the regulation circuit"
The Court ordered supplemental briefing on the proper construction of this claim term. (D.I. 332) The parties provided this briefing. (D.I. 335, 336, 338) As the Court will now construe this disputed claim term, there is no basis to strike the portions of Wei's Supplemental Report that, in Power's view, purport to construe it or that otherwise relate to this term.
Power, by contrast, proposes that this claim term should be construed to mean "the feedback signal received at the feedback terminal is used either to terminate a switching cycle, or to inhibit a switching cycle in order to regulate the output." (D.I. 233 at 17; D.I. 234 Ex. E at 3) Power notes that the only element in claim 11 of the '851 patent that is expressly conditioned on the regulation circuit being "not disabled" is the drive circuit. (D.I. 336 at 8; see also '851 patent, col. 13 lines 41-43 ("a drive circuit that provides said drive signal when said maximum duty cycle signal is in said first state and said regulation circuit is not disabled")) In Power's view. Fairchild's construction would exclude all of the embodiments disclosed in the specification. (D.I. 336 at 8)
Having reviewed the '851 patent, the parties' supplemental briefs, and the materials referred to in the briefs, the Court adopts Power's proposed construction. There is no disclosure in the '851 patent, including in its specification, of the feedback signal being used to turn off the oscillator or the frequency variation circuit. It appears that Fairchild's proposed "plain meaning" would render the claimed invention unworkable. (See D.I. 336 at 9) It also appears that Fairchild's construction would read out of the patent every embodiment of the invention disclosed in the patent.
Thus, the Court construes the phrase "feedback terminal coupled to disable the regulation circuit," as used in claim 11 of the '851 patent, to mean "the feedback signal received at the feedback terminal is used either to terminate a switching cycle, or to inhibit a switching cycle in order to regulate the output."
Terms Wei purportedly attempts to "re-construe"
Power argues that there are three terms this Court has already construed that Wei's Supplemental Report improperly attempts to "re-construe." The terms are: (i) "the first reference signal is varied in response to the change of the second signal," as used in claim 17 of the '595 patent; (ii) "a digital to analog converter," as used in claim 1 of the '876 patent; and (iii) "means . . . for varying the switching frequency," as used in claim 21 of the '876 patent. There is no question that the Court has construed each of these terms. (D.I. 212 at 43-44; D.I. 337 (adopting R & R)) In doing so, the Court complied with its obligation, as a matter of law, to determine the proper meaning of disputed claim
While a claim construction ruling is always an important stage in patent infringement litigation, it is not automatically dispositive. Wei attests that in forming his opinions he relied on the Court's construction of the disputed claim terms. This includes the Court's constructions on the three terms Power now accuses Wei of "re-construing." (See, e.g., D.I. 281 Ex. G at ¶¶ 58, 222, 229; see also D.I. 281 Ex. N at ¶¶ 31-32) The Court finds no basis to reject Wei's representation. Power will be entitled to cross-examine and otherwise challenge Wei's opinion at trial.
In essence, Power's position is that Wei should have agreed with Power's own expert, Blauschild, that, under the Court's construction, Power should prevail in this case. The Court does not agree. Thus, the Court will not strike the portions of Wei's Supplemental Report in which Power believes Wei has "re-construed" the Court's claim construction.
Terms this Court "implicitly" construed
Power asserts that Wei's Supplemental Report improperly relies on constructions of disputed claim terms that are inconsistent with the constructions that were "implicitly" adopted by this Court in its Markman rulings. The two terms Power insists were "implicitly" construed are: "the oscillator having a control input," as used in claims 1 and 21 of Power's '876 patent; and "voltage control loop . . . in the primary side," as used in claims 22 and 32 of Fairchild's '972 patent.
The Court did not "implicitly" construe the claim terms identified by Power. Instead, the Court precisely construed those—and only those—claim terms as described in the Report & Recommendation. (D.I. 212 at 43-45) (adopted by D.I. 337) The implications of the Court's constructions are matters on which the parties' experts may opine, and may disagree.
The Court recognizes its obligation to construe all disputed claim terms (which are material to asserted claims) by the time it instructs the jury. See 02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,
B. Power's Motion To Strike Improper Expert Testimony On Willfulness (D.I. 247)
Power moves to exclude the expert testimony of Fairchild's Stephen Marcus, an attorney who has prepared a report relating to the reexamination proceedings and their impact, if any, on Power's claim of willful infringement. As has already been explained, the Court will be severing the issue of willfulness for a separate trial to follow trial on infringement and invalidity. Accordingly, the Court will deny Power's motion to strike without prejudice to Power's opportunity to renew its motion prior to the separate trial on willfulness.
C. Fairchild's Motion To Preclude Expert Testimony On Damages (D.I. 260)
Fairchild moves to preclude the testimony of Power's damages expert, Richard Troxel. As has already been explained, the Court will be severing the issue of damages for a separate trial to follow trial on infringement and invalidity. Accordingly, the Court will deny Fairchild's motion to strike without prejudice to Fairchild's opportunity to renew its motion prior to the separate trial on damages.
The Court will enter an Order consistent with the rulings described above on each of the pending motions.
At Wilmington, this 5th day of October, 2010, for the reasons set forth in the Memorandum Opinion issued this same date,
1. Power's Motion for Summary Judgment to Preclude Fairchild from Challenging the Validity of the '876 And '851 Patents Based on Prior Art Martin, SMP211, and Wang (D.I. 235) is GRANTED IN PART and DENIED IN PART. Fairchild is precluded from advancing an obviousness defense for the '876 and '851 patents based on Martin, the SMP211, and Wang. Fairchild may, however, put forward an anticipation defense for the '876 and '851 patents based on any of these prior art references.
2. Power's Motion for Summary Judgment of Infringement of Claims 6-9 of Power's '270 Patent (D.I. 239), and Fairchild's Cross-Motion for Summary Judgment of Non-Infringement of Claims 6-9 of Power's '270 Patent (D.I. 257), are DENIED.
3. Power's Motion for Summary Judgment of Non-Infringement and Invalidity of the Remaining Asserted Claims of the Yang '595 Patent (D.I. 243) is DENIED.
4. Power's Motion for Summary Judgment that SG's '972 Patent is Unenforceable due to Inequitable Conduct (D.I. 250) is DENIED.
5. Fairchild's Motion for Summary Judgment of No Willful Infringement of Power's '876 and '851 Patents (D.I. 254) is DENIED WITHOUT PREJUDICE. Issues of willfulness will be tried separately from infringement and validity. Fairchild may renew its motion after the trial on infringement and invalidity.
6. Fairchild's Motion for Summary Judgment of Limitation of Damages (D.I. 262) is DENIED WITHOUT PREJUDICE. The Court will hold a separate trial on damages. Fairchild may renew its motion prior to that trial.
7. Power's Motion to Strike Gu-Yeon Wei's Supplemental Report on Infringement and to Preclude Fairchild from Relying on New Claim Construction (D.I. 232) is DENIED.
8. Power's Motion to Strike Improper Testimony on Willfulness (D.I. 247) is DENIED WITHOUT PREJUDICE.
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