United States District Court, D. Delaware
FAIRCHILD SEMICONDUCTOR CORPORATION and FAIR CHILD (TAIWAN) CORPORATION, Plaintiffs,
POWER INTEGRATIONS, INC., Defendant
For Plaintiffs: John G. Day, Lauren E. Maguire, Andrew C. Mayo, ASHBY & GEDDES, Wilmington, DE; Blair M. Jacobs, Christina A. Ondrick, PAUL HASTIN GS LLP, Washington, DC; Leigh J. Martinson, MCDERMOTT, WILL & EMERY LLP, Boston, MA; Patrick James Stafford, MCDERMOTT, WILL & EMERY LLP, Washington, DC.
For Defendant: 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, Neil Warren, FISH & RICHARDSON P.C., Redwood City, CA.
Leonard P. Stark, United States District Judge.
Pending before the Court are the following motions:
1. Fairchild's Motion for Summary Judgment (D.I. 193); and
2. Power Integrations' Motion for Summary Judgment (D.I. 196).
Prior opinions addressed aspects of these motions. ( See D.I. 295, 329) Here the Court resolves the remaining issues raised by both motions.
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 U.S. Patent Nos. 7,525,259 (" the '259 Patent" ), 7,259,972 (" the '972 Patent" ), 7,616,461 (" the '461 Patent" ), and 7,286,123 (" the '123 Patent" ). (D.I. 1) On June 21, 2012, Power Integrations counterclaimed against Fairchild, alleging infringement of U.S. Patent Nos. 6,229,366 (" the '366 Patent" ), 7,876,587 (" the '587 Patent" ), 8,115,457 (" the '457 Patent" ), and 7,995,359 (" the '359 Patent" ).
Fact and expert discovery are complete, and a trial will begin on May 26, 2015. The Court heard oral argument on the pending motions on March 3, 2015. (D.I. 292, or " Tr." )
II. LEGAL STANDARDS
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 a genuine issue of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585-86, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). An assertion that a fact cannot be -- or, alternatively, is -- genuinely disputed demonstrating the absence of 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)(1)(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 marks 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, 120 S.Ct. 2097, 147 L.Ed.2d 105 (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). However, 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, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). " 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, 106 S.Ct. 2548, 91 L.Ed.2d 265 (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.
A. Fairchild's Motion for Summary Judgment (D.I. 193)
1. Infringement of Claims 8 and 13 of the '259 Patent
Fairchild argues that there are no genuine disputes of material fact with regard to infringement of independent claims 8 and 13 of Fairchild's '259 patent by PI's LinkSwitch-II and LinkSwitch-PH products. According to Fairchild, PI's expert, Dr. Kelley, incorrectly analyzed these claims as means-plus-function claims, when only independent claim 1 is in means-plus-function format. PI responds that Dr. Kelley appropriately analyzed the structural limitations of these apparatus claims and, moreover, that the opinions of Fairchild's expert, Dr. Collins, are internally inconsistent. In PI's view, there is at least a genuine dispute of material fact, making summary judgment inappropriate.
The Court concludes that summary judgment is not warranted. Dr. Collins' identification of the requisite " feedback circuit" (the limitation in claims 8 and 13 on which Fairchild's motion is based) in the accused products is at least arguably inconsistent, as it may be reasonably interpreted as opining that identical structure in different products both does and does not infringe. ( See, e.g., D.I. 227, Ex. 1 at 208-13; see also D.I. 195, Ex. E at ¶ 185 (Dr. Kelley explaining that feedback circuitry identified by Dr. Collins for LinkSwitch-II product LNK632, which Dr. Collins opines cannot meet the feedback circuit limitation, is identical to corresponding circuitry of other LinkSwitch-II products, which Dr. Collins opines can meet the feedback circuit limitation)) Because this raises a genuine dispute of material fact, this portion of Fairchild's summary judgment motion will be denied.
2. Non-Obviousness of Claim 8 of the '123 Patent
Because PI has withdrawn its obviousness contention with respect to claim 8 of Fairchild's '123 patent ( see D.I. 227, Ex. 2 at 2), this portion of Fairchild's motion will be granted. ( See Tr. at 106)
3. Validity of the '259 Patent Under 35 U.S.C. § 112
Fairchild argues that PI has failed to show that it can prove, by clear and convincing evidence, invalidity of any of claims 1-4, 6, and 8-14 of the '259 patent due to lack of enablement, lack of written description, and/or indefiniteness.
Enablement and written description are required by the first paragraph of 35 U.S.C. § 112, which states:
[t]he specification shall contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or ...