Power Integrations, Inc. v. Fairchild Semiconductor International, Inc.
843 F.3d 1315
| Fed. Cir. | 2016Background
- Power Integrations sued Fairchild in D. Del. alleging infringement of several patents (’851, ’876, ’605, ’270); Fairchild counterclaimed asserting patents ’972 and ’595. Liability and damages were bifurcated; ten-day jury trial on liability occurred in 2012.
- Jury found mixed results: some Power Integrations’ claims not invalid; Fairchild found liable for infringement of the ’851 and ’876 patents (including induced infringement); Power Integrations found to infringe Fairchild’s ’972 patent under doctrine of equivalents only.
- The district court granted JMOL for Power Integrations on direct infringement of the ’605 patent, denied other JMOL/new-trial motions, and later issued a permanent injunction against Fairchild; final liability judgment entered Jan 13, 2015.
- On appeal the Federal Circuit reviewed claim constructions, jury instructions, JMOL/new-trial denials, verdict form, validity (anticipation/obviousness), inducement, doctrine of equivalents, and the permanent injunction.
- The Federal Circuit: affirmed some validity findings, vacated induced-infringement verdicts for ’851/’876 due to an incorrect jury instruction, reversed the jury’s non-anticipation finding for the ’605 patent (Maige anticipates), reversed the ’972 doctrine-of-equivalents infringement (vitiation), affirmed the ’972 claim construction and non-obviousness, and vacated the permanent injunction for re-consideration.
Issues
| Issue | Power Integrations’ Argument | Fairchild’s Argument | Held |
|---|---|---|---|
| Anticipation of ’876 by Martin/Wang | ’876 is novel because it varies about a predetermined target frequency and its counter is “coupled” to the DAC | Martin/Wang disclose pseudo-random frequency variation and thus anticipate | Affirmed: jury verdict that Martin/Wang do not anticipate ’876 supported by substantial evidence (no known target frequency; counter decoupled by ROM) |
| Induced infringement of ’851/’876 | Fairchild took affirmative acts (demo boards, marketing to US standards/customers, US support) with knowledge; therefore induced infringement | Foreign sales/distribution system preclude specific intent to induce US infringement; jury instruction was incorrect | Vacated: jury instruction misstated law by allowing liability absent actual inducement; record has conflicting evidence so retrial/remand appropriate |
| Anticipation of ’605 by Maige | ’605 variable current limit is novel | Maige discloses increasing current threshold during startup (on-time), thus anticipates | Reversed: jury’s verdict that Maige did not anticipate was unsupported—Maige teaches a variable current limit that increases during on-time (startup) |
| ’972 claim construction re: sampling Vaux and discharge time | Phrase requires sampling both a voltage and a discharge time (two distinct items) | Phrase means sampling the auxiliary winding voltage when transformer is discharging (i.e., where and when) | Affirmed: construction adopted—sample the auxiliary-winding voltage when transformer is discharging; construction supported by specification |
| Obviousness of ’972 (Majid + ’876) | Combination would disclose claimed elements and be within skill of the art | Majid does not disclose the claimed second feedback signal; combining would be difficult | Affirmed: jury’s non-obviousness verdict upheld (substantial evidence supports credibility of Fairchild’s expert) |
| Doctrine of equivalents infringement of ’972 by Power Integrations | Even if not literal, LinkSwitch-II is equivalent | LinkSwitch-II uses a single feedback signal; claims require two distinct feedback signals | Reversed: doctrine-of-equivalents verdict vacated due to vitiation—finding equivalence would eliminate the claimed requirement of distinct signals |
| Permanent injunction | Injunction appropriate based on liability | Injunction improper given narrowed/altered liability on appeal | Vacated: injunction vacated and denial of Fairchild’s injunction rendered moot; remand for reconsideration in light of holdings |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (claim construction review framework; factual findings reviewed for clear error)
- Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011) (definition of "induce" requires successful communication/intent)
- DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006) (standard for induced infringement jury instructions)
- Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014) (jury-instruction error requires prejudice for verdict to be set aside)
- Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263 (Fed. Cir. 2004) (plaintiff must prove defendants’ actions led to direct infringement to prevail on indirect infringement)
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) (doctrine of equivalents and vitiation principle)