904 F.3d 965
Fed. Cir.2018Background
- Power Integrations sued Fairchild for infringement of U.S. Pat. Nos. 6,212,079 (’079) and 6,538,908 (’908) covering power‑supply controller features; juries found infringement of asserted claims (’079 literal; ’908 under doctrine of equivalents).
- First trial awarded ~$105M; after intervening Federal Circuit precedent (VirnetX) the district court ordered a new damages trial focused on apportionment.
- Second damages trial produced a $139.8M reasonable‑royalty verdict based solely on the entire market value rule (EMVR); district court denied JMOL and new‑trial motions.
- Key technical disputes: (1) whether accused Fairchild chips had a “fixed switching frequency for a first range of feedback signals” (’079), including so‑called frequency‑hopping/jitter products; (2) whether Fairchild’s use of voltage (rather than measured current) could be equivalent to a claimed “current limit” (’908) given alleged prosecution‑history statements.
- The Federal Circuit affirmed infringement rulings for both patents but held the damages award improper because Power Integrations failed to justify use of the entire market value rule given other valuable, unpatented features in the accused products; damages vacated and remanded.
Issues
| Issue | Power Integrations’ Argument | Fairchild’s Argument | Held |
|---|---|---|---|
| Scope of “fixed switching frequency” (’079) | “Fixed” includes real‑world minor variation; per‑second aggregate can be fixed | “Fixed” means absolutely non‑varying; frequency‑hopping products not fixed | Court: construction allowed natural minor variance; substantial evidence supported infringement under district court’s construction (affirmed) |
| Time interval for measuring frequency (per‑second limitation) | District court construction (non‑varying cycles per second) is proper | “Per second” limitation was added by court and is erroneous; preserves trial‑level factual dispute | Court: Fairchild waived this claim‑construction challenge by failing to preserve it; review limited to substantial‑evidence (affirmed) |
| Doctrine of equivalents vs. prosecution‑history estoppel (’908) | Voltage can be equivalent to current (Ohm’s Law); no clear surrender in prosecution | Prosecution remarks in parent/related prosecution distinguished voltage from current and bar equivalents | Court: prosecution history of related parent did not clearly and unmistakably surrender the ground; equivalents claim allowed (affirmed) |
| Damages: use of Entire Market Value Rule (EMVR) | Patented frequency‑reduction feature drove customer demand (Energy Star, marketing, comparative sales) so EMVR appropriate | Product has other valuable features (e.g., jittering); must apportion; EMVR improper | Court: Power Integrations failed to prove patented feature was sole/primary driver of demand given other valuable features; EMVR unjustified; damages vacated and remanded |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim‑construction ordinary‑meaning framework)
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) (prosecution‑history estoppel limits doctrine of equivalents)
- VirnetX, Inc. v. Cisco Sys., 767 F.3d 1308 (Fed. Cir.) (apportionment and limits on smallest salable unit / EMVR)
- LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir.) (strict limits on EMVR; patented feature must drive demand)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir.) (EMVR principles)
- Ericsson, Inc. v. D‑Link Sys., Inc., 773 F.3d 1201 (Fed. Cir.) (value of what was taken; apportionment in reasonable‑royalty analysis)
- Garretson v. Clark, 111 U.S. 120 (1884) (patentee must separate/apportion damages)