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ON Semiconductor Corp. v. Power Integrations, Inc.

United States District Court, D. Delaware

October 9, 2018

ON SEMICONDUCTOR CORPORATION and SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC, Plaintiffs,
v.
POWER INTEGRATIONS, INC., Defendant.

          John G. Day and Andrew C. Mayo, ASHBY & GEDDES, Wilmington, DE, Roger Fulghum, BAKER BOTTS L.L.P., Houston, TX, Colette Reiner Mayer, MORRISON & FOERSTER LLP, Palo Alto, CA, Attorneys for Plaintiffs.

          John W. Shaw and Andrew E. Russell, SHAW KELLER LLP, Wilmington, DE, Joseph B. Warden and Warren K. Mabey Jr., FISH & RICHARDSON P.C., Wilmington, DE, Frank E. Scherkenbach, FISH & RICHARDSON P.C., Boston, MA, Howard G. Pollack, Michael R. Headley, and Neil A. Warren, FISH & RICHARDSON P.C., Redwood City, CA Attorneys for Defendant.

          MEMORANDUM OPINION

          STARK, U.S. DISTRICT JUDGE.

         Plaintiffs ON Semiconductor Corporation and Semiconductor Components Industries, LLC ("Plaintiffs" or "ON") brought this patent infringement suit against Defendant Power Integrations, Inc. ("Defendant" or "Power"), alleging that Power infringes ON's U.S. Patent Nos. 7, 440, 298 (the "'298 patent"), 7, 564, 705 (the "'705 patent"), 7, 800, 923 (the "'923 patent"), 7, 796, 407 (the "'407 patent"), 9, 077, 258 (the "'258 patent"), and 7, 102, 211 (the "'211 patent"). (See generally D.I. 24) Power asserted counterclaims alleging that ON infringes Power's U.S. Patent Nos. 6, 107, 851 (the "'851 patent"), 6, 229, 366 (the "'366 patent"), 6, 337, 788 (the "'788 patent"), 6, 456, 475 (the "'475 patent"), 8, 077, 483 (the "'483 patent"), and 8, 773, 871 (the "'871 patent").[1] (See generally D.I. 34, 87) The asserted patents generally relate to power supply controllers. (See D.I. 81 at 1)

         Presently before the Court is the issue of claim construction. The parties submitted technology tutorials (see D.I. 79, 80), objections to such technology tutorials (see D.I. 92, 94), claim construction briefs (see D.I. 81, 83, 91, 95), supporting exhibits (see D.I. 82, 83-1, 93, 96), notices of supplemental authorities (see D.I. 102, 106), and a joint letter requested by the Court (see D.I. 105). The Court held a claim construction hearing on August 6, 2018, at which both sides presented oral argument. (See D.I. 104 ("Tr."))

         I. LEGAL STANDARDS

         The ultimate question of the proper construction of a patent is a question of law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "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. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted).

         "[T]here is no magic formula or catechism for conducting claim construction." Id. 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 citation omitted).

         It is likewise true that "[differences 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." Id. 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." Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (internal quotation marks omitted).

         In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), affd, 517 U.S. 370 (1996). 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.

         In some cases, "the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period." Teva, 135 S.Ct. at 841. Extrinsic evidence "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 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. Furthermore, "statements made by a patent owner during an IPR [inter partes review] proceeding ... can be considered for claim construction." Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017). 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. Where the intrinsic record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583).

         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. Int'l Trade Comm 'n 505 F.3d 1351, 1358 (Fed. Cir. 2007) (quotingModine Mfg. Co. v. U.S. Int'l Trade Comm 'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).

         II. CONSTRUCTION OF DISPUTED TERMS[2]

         A. ON'S PATENTS

         1. '298 and '705 Patents

         a. "magnetized voltage"[3] "demagnetized voltage"[4]

"magnetized voltage"

ON

"voltage produced at a secondary winding while an input voltage is applied to a primary winding"

"demagnetized voltage"

ON

"voltage applied to the secondary winding while an input voltage is not applied to the primary winding"

Power

"voltage at the output of the transformer during the magnetization period" ('298 patent, els. 1, 2)

"voltage at the output of the magnetic device during the magnetization period" ('298 patent, els. 10, 11; '705 patent, els. 1, 3, 4, 5, 6)

Power

"voltage at the output of the transformer during the demagnetization period" ('298 patent, els. 1, 2)

"voltage at the output of the magnetic device during the demagnetization period" ('298 patent, els. 10, 11; '705 patent, els. 1, 3, 4, 5, 6)

Court

"voltage at the output of the transformer during the magnetization period" ('298 patent, els. 1, 2)

"voltage at the output of the magnetic device during the magnetization period" ('298 patent, els. 10, 11; '705 patent, els. 1, 3, 4, 5, 6)

Court

"voltage at the output of the transformer during the demagnetization period" ('298 patent, els. 1, 2)

"voltage at the output of the magnetic device during the demagnetization period" ('298 patent, els. 10, 11; '705 patent, els. 1, 3, 4, 5, 6)

         While the specification focuses on magnetic devices with primary and secondary windings (see '298 patent at 1:14-32; D.I. 95 at 11; Tr. at 6), the claims refer not only to a transformer (which characteristically has distinct first and second windings) but also more broadly to a magnetic device generally (see D.I. 81 at 20-21), which may include, for example, an inductor (see Tr. at 14). ON's construction improperly would eliminate the claims' distinction between a transformer and a magnetic device. (See Id. at 20-21)

         The Court recognizes its adoption of Power's proposed constructions results in different constructions than the PTAB provided. However, since Power did not propose any constructions of these terms to the PTAB, it does not appear that the PTAB rejected the constructions adopted here. (See id at 7-8; D.I. 102-1 Ex. V at 11-12; D.I. 106-1 Ex. Z at 12-13)

         b. The "in response to" Terms:

         "generat(e/ing) a [] signal... in response to"[5]

ON

Plain and ordinary meaning

Alternatively, "generat(e/ing) a [x] signal... in response to [y]" -► "generat(e/ing) a [x] signal based, at least in part, on [y]"

Power

When a claim recites that signal A "is generated ... in response to" signal B (and potentially other signals) it means that "the value of [x] is derived, at least in part, from the value of [y]"

Court

"generat(e/ing) a [x] signal... in response to [y]" -► "generat(e/ing) a [x] signal based, at least in part, on [y]"

         ON agrees that there is "a clear and definite relationship between [y] and the step of generating signal [x]," but is concerned about identifying the specific relationship of each instance of the claim phrase without separately defining each specific claim term in each separate patent (as it alternatively proposes). (D.I. 105 at 1-2 Ex. A) During oral argument, Power conceded that "based on, at least in part" would be "fine" and that its proposed "derived" was meant as "another way of saying 'generate' without just repeating 'generate.'" (Tr. at 30-31) ON's revised, proposed, compromise construction adequately encompasses the generic relationship that exists between [x] and [y]. During the summary judgment stage or at trial, experts will be able to explain further that specific relationship (whether or not mathematical) for each claim term and how the accused product allegedly infringes.

         2. '258 Patent

         a. "generating a compensation signal in accordance with a synchronous rectifying signal"[6]

ON

"generating a compensation signal so that it conforms to a synchronous rectifying signal"

Power

When a claim recites "generating [signal A] in accordance with [signal B]" it means that the value (i.e. magnitude, duration, etc.) of signal A is derived, at least in part, from the value of signal B.

Court

"generating a compensation signal based, at least in part, on a synchronous rectifying signal"

         ON argues that the phrase "in accordance with [something]" means "conforming with [that something]." (D.I. 83 at 7; D.I. 95 at 17) ON admits that "mere coincidence would not suffice." (D.I. 83 at 8; D.I. 95 at 17) During oral argument, Power conceded that "based on" would work just as well as "derived" to demonstrate that "there is a mathematical relationship between the input and the output." (Tr. at 39-40) The Court's modified construction, which includes "based, at least in part, on," is consistent with its conclusions on the "in response to" terms.

         b. "error amplifier"[7]

ON

"a circuit component that amplifies the difference in magnitude between two input signals"

Power

"a circuit component that generates an output having a magnitude representative of the difference in magnitude between two input values; not a comparator"

Court

"a circuit component that generates an output having a magnitude representative of the difference in magnitude between two input values; not a comparator"

         The parties dispute "whether an 'error amplifier' must generate an analog output signal having a magnitude that is representative of the actual difference between two input signals" (Power's position) or whether "an error amplifier generates an output signal merely indicating whether a difference exists between input signals" (ON's position). (D.I. 81 at 26-27) The parties also dispute whether an "error amplifier" may encompass a comparator: Power says no, while ON says yes.

         The Court sides with Power, which correctly writes: "The intrinsic record demonstrates that the claimed 'error amplifier' generates an analog output signal that represents the amount of the difference between the measured voltage and a desired voltage." (Id. at 27; see also D.I. 91 at 17-18 (error amplifiers "generate an analog signal output (VF) that is representative of the actual difference between the two inputs (VREF and VA")) Dictionary definitions further support a finding that a POSA would understand that an error amplifier is an analog device whose "output is an analog signal that represents the difference between its two inputs," whereas a comparator is a digital device whose output is a logic state indicating "whether one input is higher than the other." (Tr. at 46)

         3. '407 and ...


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