Power Integrations v. Fairchild Semiconductor

• Decision Date: 07 November 2008
• Docket Number: C.A. No. 04-1371-JJF.
• Citation: 585 F.Supp.2d 568
• Parties: POWER INTEGRATIONS, INC., a Delaware corporation, Plaintiff, v. FAIRCHILD SEMICONDUCTOR INTERNATIONAL, INC., a Delaware corporation, and Fairchild Semiconductor Corporation, a Delaware corporation, Defendants.
• Court: U.S. District Court — District of Delaware

585 F.Supp.2d 568

POWER INTEGRATIONS, INC., a Delaware corporation, Plaintiff, v. FAIRCHILD SEMICONDUCTOR INTERNATIONAL, INC., a Delaware corporation, and Fairchild Semiconductor Corporation, a Delaware corporation, Defendants.

C.A. No. 04-1371-JJF.

United States District Court, D. Delaware.

November 7, 2008.

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Frank E. Scherkenbach, Esquire of Fish & Richardson P.C., Boston, MA, Howard G. Pollack, Esquire and Michael R. Headley, Esquire of Fish & Richardson P.C., Redwood City, CA, William J. Marsden, Jr., Esquire and Kyle Wagner Compton, Esquire of Fish & Richardson P.C., Wilmington, DE, for Plaintiff.

G. Hopkins Guy, III, Esquire; Vickie L. Feeman, Esquire; Bas de Blank, Esquire; Gabriel M. Ramsey, Esquire and Brian H. VanderZanden, Esquire of Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA, Steven J. Balick, Esquire; John G. Day, Esquire and Lauren E. Maguire, Esquire of Ashby & Geddes, Wilmington, DE, for Defendants.

MEMORANDUM OPINION

FARNAN, District Judge.

Pending before the Court is a Motion For Judgment As A Matter Of Law Or New Trial Regarding Invalidity Of U.S. Patent No. 4,811,075 (D.I. 616) filed by Defendants, Fairchild Semiconductor International, Inc. and Fairchild Semiconductor Corporation (collectively, "Fairchild"). For the reasons discussed, the Court will deny Fairchild's Motion.

BACKGROUND

The background relevant to this action has been set forth by the Court in previous decisions rendered in this case. (D.I. 231, 683). By way of summary, a jury returned a verdict in favor of Power Integrations on the issues of infringement, willful infringement, and damages, awarding Power Integrations slightly less than $34 million. A second, different jury also returned a verdict in favor of Power Integrations on the validity of the patents-in-suit. Inequitable conduct was tried before the Court, and the Court concluded that Fairchild failed to establish that the patents were unenforceable due to inequitable conduct. (D.I. 683, 684).

DISCUSSION

I. Fairchild's Motion For Judgment As A Matter Of Law

A. Legal Standard

To prevail on a renewed motion for judgment as a matter of law following a jury trial, the moving party "`must show that the jury's findings, presumed or express are not supported by substantial evidence or, if they were, that the legal conclusions implied [by] the jury's verdict cannot in law be supported by those findings.'" Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed.Cir.1998) (quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984)); accord Price v. Delaware Department of Correction, 40 F.Supp.2d 544, 549 (D.Del.1999). In assessing the sufficiency of the evidence, the court must give the non-moving party, "as [the] verdict winner, the benefit of all logical inferences that could be drawn from the evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the record in the light most favorable to him." Williamson v. Consolidated Rail Corp., 926 F.2d 1344, 1348 (3d Cir.1991), reh'q en banc denied, 1991 U.SApp. LEXIS 16758 (3d Cir.1991); Perkin-Elmer Corp., 732 F.2d at 893.

The court may not evaluate the credibility of the witnesses, may not weigh the evidence, and may not substitute its view of the evidence for the jury's view. Price, 40 F.Supp.2d at 550. Rather, the court must determine whether the evidence reasonably supports the jury's verdict. Dawn Equip. Co. v. Kentucky Farms, Inc., 140 F.3d 1009, 1014 (Fed.Cir. 1998). Motions for judgment as a matter of law are granted "sparingly" and only in those circumstances in which "the record is critically deficient of the minimum quantum of evidence in support of the verdict." Johnson v. Campbell, 332 F.3d 199, 204 (3d Cir.2003). Thus, stated succinctly, the Court must determine "whether, viewing the evidence in the light most favorable to the verdict, a reasonable jury could have found for the prevailing party." Id.

B. Whether Fairchild Is Entitled To Judgment As A Matter Of Law That Claim 1 Of The '075 Patent Is Anticipated Under 35 U.S.C. § 102(e)

By its Motion, Fairchild contends that claim 1 of the '075 patent is anticipated under Section 102(e) by U.S. Patent No. 4,823,173 (the "'173 patent" or the "Beasom patent") invented by James Beasom. Fairchild contends that Power Integrations did not offer sufficient evidence to establish that Dr. Eklund conceived of and reduced to practice the invention claimed in the '075 patent before the filing date of the '173 patent. Because Power Integrations concedes that claim 1 of the '075 patent is contained in the earlier filed '173 patent, Fairchild contends that the '075 patent is anticipated as a matter of law under Section 102(e).

In pertinent part, 35 U.S.C. § 102(e) provides that "[a] person shall be entitled to a patent unless ... the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent...." Anticipation under 35 U.S.C. § 102(e) requires that "each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc. v. Union Oil Co., 814 F2d 628, 631 (Fed.Cir.1987). To establish that a patent is prior art under Section 102(e), it must be filed before the "invention by the applicant for patent." 35 U.S.C. § 102(e). The Supreme Court has explained that the use of the word "invention" in Section 102(e) refers to "conception" and does not require a subsequent reduction to practice:

The primary meaning of the word "invention" in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea. The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented. Neither the statutory definition of the term in § 100 nor the basic conditions for obtaining a patent set forth in § 101 make any mention of "reduction to practice."

Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 60-61, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998).¹ Rather, the Supreme Court has expressed the view that the concept of reduction to practice is relevant to a Section 102(g) anticipation inquiry.²

As with all invalidity arguments, anticipation under Section 102(e) must be shown by clear and convincing evidence. However, for purposes of establishing prior art under Section 102(e), there is a rebuttable presumption that the filing date of a patent is its invention date. Ecolochent, Inc. v. Southern Calif Edison Co., 227 F.3d 1361, 1371 (Fed.Cir.2000). To overcome this presumption, the patentee bears the burden of producing evidence supporting an invention date earlier than the ostensible prior art reference. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576-1579 (Fed.Cir.1996); Spectralytics v. Cordis Corp., 576 F.Supp.2d 1030, 1045-48, 2008 WL 4216343, *12-14 (D.Minn.2008) (discussing the application of Mahurkar and the questions it raises). This burden, however, is a burden of production not a burden of persuasion, meaning that the patentee need not persuade the fact-finder of the invention date. Spectralytics, 576 F.Supp.2d at 1045, 2008 WL 4216343 at *12. Rather, the burden of proof remains on the defendant to establish by clear and convincing evidence that the patentee's invention date does not precede the date of the ostensible prior art reference. Id.

Power Integrations does not dispute that claim 1 of the '075 patent is contained in the Beasom patent. Thus, the only question remaining for the Court is whether sufficient evidence exists to support the jury's verdict that Dr. Eklund conceived of the invention claimed in claim 1 of the '075 patent prior to the 1986 filing date of Mr. Beasom's '173 patent. Reviewing the evidence in the light most favorable to Power Integrations as the nonmovant, the Court concludes that a sufficient evidentiary basis exists to support the jury's implicit finding that Dr. Eklund conceived of the '075 patent before the filing date of the '173 patent. "To have conceived of an invention, an inventor must have formed in his or her mind `a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.'" Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228, 32 USPQ2d 1915, 1919 (Fed.Cir. 1994), cert. denied, 516 U.S. 1070, 116 S.Ct. 771, 133 L.Ed.2d 724 (1996) (citations omitted). An inventor's testimony, standing alone, is insufficient proof of prior conception. Rather, oral testimony of an inventor must be corroborated by other evidence. Adequate corroboration is determined by applying a "rule of reason" analysis. Price v. Symsek, 988 F.2d 1187, 1195 (Fed.Cir. 1993). Under a rule of reason analysis, "[a]n evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor's story may be reached." Id. Physical exhibits do not require corroboration because "[t]he trier of fact can conclude for itself what documents show, aided by testimony as to what the exhibit would mean to one skilled in the art." Id.

In this case, Power Integrations offered the testimony of Dr. Eklund corroborated by his inventor notes from September 1984 and January 1985, the testimony of Jan Brunnberg who witnessed a version of Dr. Eklund's original notes showing substantially the same subject matter, and the testimony of Mr. Shields to further explain what the documents mean to one skilled in the art. (PX 29; PX 30; Tr. 9/20/07 at 1096:17-1098:23, 1112:15-1114:16, 1116:8-1120:24, 1247:5-1255:2; Tr. 9/21/07 at 1376:23-1382:13). Fairchild contends that Dr. Eklund's notes are insufficient...