Opticurrent, LLC v. Power Integrations, Inc.
| Decision Date | 05 June 2019 |
| Docket Number | Case No. 17-cv-03597-EMC |
| Court | U.S. District Court — Northern District of California |
| Parties | OPTICURRENT, LLC, Plaintiff, v. POWER INTEGRATIONS, INC., et al., Defendants. |
PUBLIC/REDACTED VERSION
Plaintiff Opticurrent, LLC ("Opticurrent") brought this suit against Defendant Power Integrations, Inc. ("PI"), alleging infringement of U.S. Patent No. 6,958,623 (the "'623 patent"). The '623 patent, which was issued to inventor James Congdon in 2005, claims "[a] noninverting transistor switch having only three terminals" which "limits the current leakage between the third terminal and the second terminal." Docket No. 1-1. On February 25, 2019, after a four-day trial, the jury delivered a verdict finding that: (1) PI literally infringed claim 1 of the '623 patent; (2) PI infringed claim 1 of the '623 Patent under the doctrine of equivalents; (3) PI did not induce infringement of the '623 patent; and (4) Opticurrent is entitled to damages in the amount of $6,666,484.77 (i.e., 3% of PI's sales, through March 31, 2018, of $222,216,159). Docket No. 285.
The parties have filed a number of post-trial motions. For the reasons discussed below, the Court rules as follows:
A party may make a motion under Federal Rule of Civil Procedure 50(a) for judgment as a matter of law before a case is submitted to the jury. If the court denies or defers ruling on the motion, and the jury then returns a verdict against the moving party, the party may renew its motion under Rule 50(b). E.E.O.C. v. Go Daddy Software, Inc., 581 F.3d 951, 961 (9th Cir. 2009). A court "review[s] a jury's verdict for substantial evidence in ruling on a properly made motion under Rule 50(b)." Id. "The test applied is whether the evidence permits only one reasonable conclusion, and that conclusion is contrary to the jury's verdict." Barnard v. Theobald, 721 F.3d 1069, 1075 (9th Cir. 2013) (quoting Josephs v. Pac. Bell, 443 F.3d 1050, 1062 (9th Cir. 2005)). Thus, judgment as a matter of law should be granted only where "there is no legally sufficient basis for a reasonable jury to find for that party on that issue." Krechman v. Cnty. of Riverside, 723 F.3d 1104, 1109-10 (9th Cir. 2013) (quoting Jorgensen v. Cassiday, 320 F.3d 906, 917 (9th Cir. 2003)). "[I]n entertaining a motion for judgment as a matter of law, the court . . . may not make credibility determinations or weigh the evidence," and "may not substitute its view of the evidence for that of the jury." Id. at 1110 (citations and internal quotation marks omitted).
A court may grant a new trial under Rule 59 "if 'the verdict is contrary to the clear weightof the evidence, or is based upon evidence which is false, or to prevent, in the sound discretion of the trial court, a miscarriage of justice.'" United States v. 4.0 Acres of Land, 175 F.3d 1133, 1139 (9th Cir. 1999) (quoting Oltz v. Saint Peter's Community Hosp., 861 F.2d 1440, 1452 (9th Cir. 1988)). Unlike on a motion for a judgment as a matter of law, when considering a motion for a new trial, the Court "can weigh the evidence and assess the credibility of witnesses, and need not view the evidence from the perspective most favorable to the prevailing party." Landes Constr. Co. v. Royal Bank of Canada, 833 F.2d 1365, 1371 (9th Cir. 1987). However, a motion for new trial should not be granted "simply because the court would have arrived at a different verdict." Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir. 2002).
PI moves for judgment as a matter of law or, in the alternative, for a new trial, on several issues. Docket No. 309 ("PI Mot.") at 1.
PI argues that Opticurrent failed to prove that PI literally infringed the '623 patent. PI Mot. at 5-6. In so arguing, PI fixates upon the preamble to claim 1 of the '623 patent, which describes the claimed invention as "[a] noninverting transistor switch having only three terminals." Docket No. 1-1. PI insists that its accused products do not literally infringe because they are switches with four terminals, not three. PI Mot. at. 5. However, Judge Gilstrap already declined to adopt this simplistic reading of the claim language during claim construction when he ruled that the phrase "a noninverting transistor switch having only three terminals" means "a noninverting transistor switch with three terminals that does not have a fourth terminal connected to a power supply." Docket No. 58 at 13 (emphasis added). Judge Gilstrap explicitly rejected PI's contention that the preamble language limits the '623 patent to switches with "no more than three" terminals, noting that the patent specification "states that a three terminal noninverting transistor switch may have a fourth terminal/pin and still be considered a three terminal switch." Id. at 12-13. PI's argument that its accused products do not infringe because they contain more than three terminals is not availing; it ignores the claim construction ruling herein.
The more salient question is whether the fourth terminal in the accused products is "connected to a power supply." Id. at 13. If it is, then the accused products would not infringe under the Court's claim construction. PI claims it "introduced unrebutted evidence" at trial that "its accused products cannot be used unless the fourth pin is attached to an external capacitor that is necessary to supply power to the chip." PI Mot. at 5-6. However, Opticurrent's expert testified that the external capacitor is not a "power supply" because the capacitor itself receives its power from an external power source, and serves as a filter for the external power source rather than an independent source of power. See Tr. at 345:22-346:9, 347:11-351:13, 621:2-622:23. In the face of this evidence, PI's characterization of its products is not the "only one" permitted by the evidence, Barnard, 721 F.3d at 1075; nor is the jury's verdict of infringement "contrary to the clear weight of the evidence," 4.0 Acres of Land, 175 F.3d at 1139. The jury could reasonably have credited Opticurrent's explanation that the capacitor in PI's accused products is not a "power supply."
Accordingly, PI's motion is DENIED with respect to literal infringement.
PI also contends that Opticurrent failed to prove infringement under the doctrine of equivalents. PI Mot. at 6-8. As with its literal infringement arguments, however, PI's position on this point is fundamentally a disagreement with the Court's claim construction and the jury's weighing of the evidence and is therefore unpersuasive.
PI's primary argument is that Opticurrent was "required to show . . . the presence of a 'noninverting transistor switch having only three terminals'" because the "all elements rule" requires that all claim elements must be established under the doctrine of equivalents. PI Mot. at 6. As explained above, Judge Gilstrap construed "having only three terminals" to mean "not hav[ing] a fourth terminal connected to a power supply.'" Docket No. 58 at 13. And Opticurrent presented evidence to the jury to counter PI's characterization of its accused products containing a fourth terminal connected to a power supply. The jury weighed the competing evidence and concluded that the fourth terminal in PI's products is not connected to a power supply, and therefore that all elements of claim 1 of the '623 patent are present in the accused products. Thisconclusion was not unreasonable in light of the evidence at trial.
Citing the proposition that "the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims," Dolly, Inc. v. Spalding & Evenflo Companies, Inc., 16 F.3d 394, 400 (Fed. Cir. 1994), PI claims that its four-terminal switches are specifically excluded by the '623 patent's "only three terminals" language, PI Mot. at 7. Again, the '623 patent, as construed by Judge Gilstrap, does exclude switches that contain a fourth terminal connected to a power supply. But the jury determined, on the basis of the evidence proffered at trial, that the accused products do not contain a fourth terminal connected to a power supply. PI's accused products thus are not "specifically excluded" from the claims as construed herein.
PI's third argument is that Opticurrent's equivalence theory relied on "comparing the internal capacitor in [the inventor] Mr. Congdon's breadboard (and associated drawing) with the external capacitor used by the accused products." PI Mot. at 7. According to PI, this contravened the Court's instruction to the jury that Jury Instruction No. 29. In particular, PI highlights the following exchange from the direct examination of Dr. Regan Zane, Opticurrent's expert witness:
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