FAIRCHILD SEMICONDUCTOR CORPORATION, and SYSTEM GENERAL CORPORATION, Plaintiffs,
POWER INTEGRATIONS, INC., Defendant.
John G. Day, Esq., Lauren E. Maguire, Esq., Andrew C. Mayo, Esq., ASHBY & GEDDES, Wilmington, DE.
Blair M. Jacobs, Esq., Christina A. Ondrick, Esq., Rose S. Whelan, Esq., McDERMOTT WILL & EMERY LLP, Washington, DC.
Terrence P. McMahon, Esq., McDERMOTT WILL & EMERY LLP, Menlo Park, CA.
Leigh J. Martinson, Esq., McDERMOTT WILL & EMERY LLP, Boston, MA. Attorneys for Plaintiffs Fairchild Semiconductor Corporation, and System General Corporation.
William J. Marsden, Jr., Esq., Joseph B. Warden, Esq., FISH & RICHARDSON, P.C., Wilmington, DE.
Frank E. Scherkenbach, Esq., FISH & RICHARDSON, P.C., Boston, MA.
Howard G. Pollack, Esq., Michael R. Hatley, Esq., Enrique Duarte, Esq., FISH & RICHARDSON, P.C., Redwood City, CA. Attorneys for Defendant Power Integrations, Inc.
LEONARD P. STARK, District Judge.
Plaintiffs Fairchild Semiconductor Corporation and System General Corporation (collectively, "Plaintiffs" or "Fairchild") filed this patent infringement action against Defendant Power Integrations, Inc. ("Defendant" or "Power") on May 1, 2012, asserting three U.S. Patents: (1) U.S. Pat. No. 7, 259, 972 ("the '972 patent"); (2) U.S. Pat. No. 7, 525, 259 ("the '259 patent"); and (3) U.S. Pat. No. 7, 286, 123 ("the '123 patent"). On June 21, 2012, Power counterclaimed for infringement of five U.S. Patents: (1) U.S. Pat. No. 6, 229, 366 ("the '366 patent"); (2) U.S. Pat. No. 7, 995, 359 ("the '359 patent"); (3) U.S. Pat. No. 7, 952, 895 ("the '895 patent"); (4) U.S. Pat. No. 7, 876, 587 ("the '587 patent"); and (5) U.S. Pat. No. 8, 115, 457 ("the '457 patent"). The '972, '259, '366, '359, '895, ' 587, and '457 patents relate to aspects of switching power supply regulators. The '123 patent relates to driver circuits for light emitting diodes.
Presently before the Court is the issue of claim construction of various disputed terms of the eight patents-in-suit. The parties completed claim construction briefing on May 24, 2013. (D.I. 59, 60, 69, 72) The Court conducted a Markman hearing on July 15, 2013. ( See D.I. 86) (hereinafter "Tr.")
I. LEGAL STANDARDS
"It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. A WH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted). Construing the claims of a patent presents a question of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995), aff'd, 517 U.S. 370 , 388-90 (1996). "[T]here is no magic formula or catechism for conducting claim construction." Phillips, 415 F.3d at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.
"[T]he words of a claim are generally given their ordinary and customary meaning... [which is] the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). The patent specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of particular claim terms, " the context of the surrounding words of the claim also must be considered. Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment... [b]ecause claim terms are normally used consistently throughout the patent...." Id. (internal citations omitted).
It is likewise true that "[d]ifferences among claims can also be a useful guide.... For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." I d. at 1314-15 (internal citation omitted). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
It is also possible that "the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed. Cir. 2007).
In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is "intrinsic evidence, " "consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id.
A court also may rely on "extrinsic evidence, " which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of ordinary skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1318-19.
Finally, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societa ' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. ITC, 505 F.3d 1351, 1358 (Fed. Cir. 2007).
In this case, the Defendant contends that several disputed phrases are written in means-plus-function format. Under 35 U.S.C. § 112, ¶ 6:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Courts follow a two-step process when construing "means-plus-function" claim terms. See Chi. Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361, 1367 (Fed. Cir. 2012). First, the Court must identify the particular claimed function. See id. Second, the Court must look to the specification and identify the corresponding structure for that function. See id. For the second step, "structure disclosed in the specification is corresponding'structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim." B. Braun Medical v. Abbott Lab., 124 F.3d 1419, 1424 (Fed. Cir. 1997).
II. CONSTRUCTION OF DISPUTED TERMS
The parties seek construction of seventeen disputed terms. The Court's construction for each disputed term is set forth below.
A. U.S. Pat. No. 7, 259, 972
1. "a second feedback signal associated with a current control loop" [claims 1 and 15]
The Court construed this phrase in a previous litigation between the same parties. See CA. No. 08-309-LPS D.I. 212, 337) Plaintiffs propose that the Court simply adopt its previous construction. (D.I. 60 at 4) Defendant, on the other hand, contends that the claim requires further construction to account for disclaimers made by Plaintiffs during the subsequent reexamination of the '972 patent. (D.I. 59 at 12) The Court agrees with Defendant.
"[S]tatements made by a patent applicant during prosecution to distinguish a claimed invention over prior art may serve to narrow the scope of a claim." Spectrum Int'l v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998). During reexamination, Plaintiffs sought to overcome a rejection over the prior art by arguing that the term '"second feedback signal' is not properly interpreted to include the conventional current limit circuit...." (D.I. 51 Ex. E-1) Plaintiffs also explained in the reexamination that the output of the current limit circuit "is unrelated to the claimed second feedback signal associated with a current control loop." ( Id.) (citing '972 patent at col. 5, 11. 44-49) Given these clear and unambiguous statements, the Court concludes that the disclaimer language integrated into Defendant's proposed construction is appropriate. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-25 (Fed. Cir. 2003).
2. "generates the first feedback signal by sampling a voltage from the auxiliary winding of the transformer and a discharge time of the transformer" [claim 6] and "generating the first feedback signal by sampling a voltage from the auxiliary winding of the transformer and a discharge time of the transformer" [claim 18]
This is another phrase that the Court has previously construed. ( See CA. No. 08-309-LPS D.I. 212, 337) Plaintiffs again propose that the Court adopt its previous construction. Defendant proposes: (1) to construe the word "sampling" to mean "measuring and holding;" and (2) to clarify that sampling can only occur "at the end of the discharge time." The Court agrees with Plaintiffs that the Court's prior construction should be adopted again, without modification.
Defendant contends that the '972 patent specification requires the term "sampling" to be limited to "measuring and holding." But the portions of the specification cited by Defendant relate to a preferred embodiment. Defendant identifies no adequate "words or expressions of manifest exclusion or restriction" ...