United States District Court, D. Delaware
LEONARD. P. STARK UNITED STATES DISTRICT JUDGE.
Wilmington this 8th day of December,
before the Court is a dispute over the dismissal of U.S.
Patent. No. 6, 229, 366 ("'366 patent") from
this action. For the reasons stated below, IT
IS HEREBY ORDERED that the '366 patent is
DISMISSED WITHOUT PREJUDICE.
than a dozen years ago, Power Integrations, Inc.
("Power") filed a complaint alleging infringement
of, among others, the '366 patent, which issued in May
2001. (See D.I. 1) Eventually, at trial, Power
asserted the '366 patent's independent claim 9 and
dependent claim 14. (See, e.g., D.I. 415 at 4) Both
claims incorporated the term "soft start circuit, "
which the Court originally construed as a 35 U.S.C. §
112 ¶ 6 (now § 112(f)) means-plus-function
limitation. (See D.I. 231 at 28-33) A jury found
that Fairchild infringed the asserted claims of the '366
patent (see D.I. 415 at 4), and a subsequent jury
found that Fairchild failed to prove that those claims were
invalid (see D.I. 555 at 3-4). On appeal, the United
States Court of Appeals for the Federal Circuit held that the
Court had erred in its construction of "soft start
circuit." See Power Integrations, Inc. v. Fairchild
Semiconductor Int % Inc., 711 F.3d 1348, 1365-66 (Fed.
Cir. 2013). The Federal Circuit remanded with instructions to
re-construe the claims and assess the effect of the
construction on the validity of the claims. See Id.
at 13 81.
parallel with the ongoing litigation in federal court,
Fairchild pursued ex parte reexamination at the U.S.
Patent and Trademark Office ("PTO"). The PTO
rejected claim 9 as anticipated and claim 14 as obvious under
35 U.S.C. §§ 102 and 103. (See D.I. 857-2)
In response, Power filed an amendment, changing the
"soft start circuit" term to "soft start
circuit means." (D.I. 857-3 at 4) The PTO allowed the
amended claims and issued a reexamination certificate on
December 20, 2011. (See D.I. 857-4; D.I. 857-5)
After the Federal Circuit's remand, Fairchild moved to
dismiss the '366 patent from the instant case. Fairchild
argued that the Court lacked subject matter jurisdiction
following the reexamination amendments. (See D.I.
855, 856) Power responded that it was premature to consider
Fairchild's motion to dismiss because the Court had not
yet construed the reexamined claim term nor compared the
scope of the original and reexamined claims. (See
D.I. 874) At the same time, Power asked the Court to
sever and dismiss with prejudice Power's infringement
claim to the extent it sought damages for the
pre-reexamination period. (See D.I. 873, 874 at 7-9)
Court denied both parties' motions without prejudice
(see D.I. 911) and went on to re-construe the
pre-amendment '366 patent's "soft start
circuit" term. The Court's new construction of the
pre-amendment "soft start circuit" term was broader
than the Court's previous means-plus-function
construction. (See D.I. 918 at 11) Similarly, the
new "non-means-plus-function" construction of the
pre-amendment "soft start circuit" term was broader
in scope than the construction the Court had (in the
meantime) given to the amended/reexamined "soft start
circuit means" term (in the context of another case,
Power V). (See id.) Therefore, the scope of the
pre-amendment and post-amendment claims is not substantially
identical. (See Id. at 11-12) The Court directed the
parties to file a joint status report outlining their
position(s) as to the impact of these rulings. (See
Id. at 12)
parties' March 31, 2016 j oint status report reflected
continued disagreement. After the Court informed the parties
that it was "inclined to agree with Fairchild that it
lacks subject matter jurisdiction over ... the '366
patent" (D.I. 922), in subsequent briefing Power
appeared to adopt Fairchild's view as well
(compare D.I. 921 at 2 with D.I.
parties disagree, however, as to whether the Court can and
should dismiss the '366 patent with prejudice. Fairchild,
citing Cooper Notification, Inc. v. Twitter, Inc.,
545 Fed.Appx. 959 (Fed. Cir. 2013), argues that the Court
retains the ability to enter a dismissal with prejudice.
Power, relying on In re Orthopedic "Bone Screw
" Products Liability Litigation, 132 F.3d 152 (3d
Cir. 1997), contends that the Court's lack of subject
matter jurisdiction requires a dismissal without prejudice.
enforcement of reexamined claims is governed by 35 U.S.C.
§ 307, which incorporates 35 U.S.C. § 252's
prescriptions for reissued claims. See 35 U.S.C.
§ 307(b) ("Any proposed amended ... claim
determined to be patentable and incorporated into a patent
following a reexamination proceeding will have the same
effect as that specified in section 252 for reissued patents
...."); see also Fresenius USA, Inc. v. Baxter
Int'l, Inc., 721 F.3d 1330, 1339 (Fed. Cir. 2013).
Under § 252, reissued patents have "the same effect
and operation in law" as if they were "originally
granted in such amended form, " but only if the
"claims of the original and reissued patents are
substantially identical." 28 U.S.C. § 252. In other
words, "[u]pon reissue, original claims that are
not reissued in identical form
bec[o]me unenforceable, " as the original claims are
"dead." Fresenius, 721 F.3d at 1338
(internal quotation marks omitted).
incorporating § 252, the reexamination statute similarly
"restricts a patentee's ability to enforce the
patent's original claims to those claims that survive
reexamination in identical form." Id. at 1339
(internal quotation marks omitted). When a claim is amended
during reexamination "to render the claim valid, no suit
can be maintained for the period prior to the validating
amendment." Id. "In sum, under either the
reissue or reexamination statute, if the PTO confirms the
original claim in identical form, a suit based on that claim
may continue, but if the original claim is cancelled or
amended to cure invalidity, the patentee's cause of
action is extinguished and the suit fails." Id.
at 1340 (internal quotation marks omitted).
parties apparently agree that the only involvement the
'366 patent has in the instant action is limited to the
assertion of claims 9 and 14 in their original, pre-amendment
form. (See D.I. 921 at 1 (Power: "Power
Integrations' assertion of the reexamined '366 patent
in the parties' later-filed litigation ... leaves only
the question of pre-reexamination infringement in this
case"); id. at 2 (Fairchild: "Power
Integrations has only ever asserted the original... claims of
the '366 patent in this case.")) As noted, the Court
has concluded that the reexamination amendments to those
claims effected a substantive change in claim scope.
(See D.I. 918) Consequently, any cause of action
predicated on the original claims was extinguished when the
reexamination certificate issued. See Fresenius, 721
F.3d at 1339-40; see also generally Target Training
Int'l, Ltd. v. Extended Disc N. Am., Inc., 645
Fed.Appx. 1018, 1023 (Fed. Cir. 2016) (affirming dismissal
where assignee did not amend infringement contentions to
incorporate new post-reexamination claims, and attempted to
litigate only original, cancelled claims).
another way, no "live case or controversy" or any
"personal stake in the outcome of the lawsuit"
exists with regard to the '366 patent as it is presently
asserted here. United States v. Huff, 703 F.3d 609,
611 (3d Cir. 2013) (internal quotation marks omitted).
"Whenever an action loses its character as a present
live controversy during the course of litigation, federal
courts are required to dismiss the action as moot."
Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d
1316, 1324 (Fed. Cir. 2016) (internal quotation marks
omitted). "[A] dismissal for mootness is a dismissal for
lack of jurisdiction." Target Training, 645
Fed.Appx. at 1025.
Fairchild nonetheless urges the Court to enter a dismissal of
the '366 patent with prejudice. In the absence of such a
dismissal, Fairchild believes it "run[s] the risk that
Power Integrations games the system and seeks to harass
Fairchild by filing another lawsuit on these original
claims." (D.I. 931 at 3) The Court is sympathetic to
Fairchild's desire for a conclusive disposition of the
'366 patent's original claims. Still, when a court
"determines that it lacks subject matter jurisdiction,
it cannot decide the case on the merits.... The disposition
of such a case will... be without prejudice." Bone
Screw, 132 F.3d at 155; see also Id. at 156