Power Integrations, Inc. v. Fairchild Semiconductor International, Inc.
711 F.3d 1348
| Fed. Cir. | 2013Background
- Power Integrations sued Fairchild for infringement of four U.S. patents related to PWM power supplies for electronic devices.
- A first infringement/damages jury found willful infringement and awarded about $34 million; a second validity jury found the asserted claims valid.
- The district court remitted the damages by 82% after concerns about damages testimony, resulting in about $6.12 million and a permanent injunction.
- Following a bench retrial on willfulness, the court upheld willfulness and later doubled the remitted damages as enhanced damages, totaling about $12.23 million.
- Fairchild appealed challenging claim construction, JMOL on obviousness, remittitur, evidence of pre-notice price erosion, and willfulness; Power Integra-tions cross-appealed the remittitur and related rulings.
- The Federal Circuit vacates/affirms/remands across several issues, including remittitur, willfulness, certain claim constructions, and post-verdict accounting, and remands for further proceedings consistent with the opinion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Obviousness of the ’876 Patent | Fairchild argued the ’876 claim1 would have been obvious over Martin. | Power Integrations contends Martin teaches and removal of EPROM was obvious and supported by prior art. | Affirmed non-obviousness; substantial evidence supports verdict. |
| Construction of frequency variation signal | Frequency variation signal has plain meaning; district court erred by importing internal/cyclic limitations. | Court correctly limited to internal, cyclically varying signals inherent in the invention. | Affirmed district court's restriction that frequency variation signal is internal and cyclically varying within a fixed period. |
| Construction of soft start circuit | Soft start circuit should not be read as means-plus-function; sufficient structure is present in the claim language. | Soft start circuit is means-plus-function with no corresponding structure in the claims. | Reversed; soft start circuit not means-plus-function; remand to re-construe with proper analysis. |
| Damages—remittitur and induced infringement | Remittitur properly reduced damages; induced-infringement theory supported. | Remittitur improper; evidence for induced infringement unreliable or insufficient. | Vacated remittitur; rejected induced-infringement damages due to insufficient evidence; remand for direct infringe-ment damages. |
| Pre-notice price erosion evidence | Pre-notice price erosion evidence should be admissible for post-notice damages under applicable law. | Marking statute precludes pre-notice damages; does not bar use in calculating post-notice damages. | Reversed; district court must admit pre-notice price erosion evidence for post-notice damages. |
| Post-verdict accounting | Court should award post-verdict accounting for damages. | No right to accounting without explicit preservation in pleadings/order. | Remanded to determine post-verdict accounting for post-verdict infringing sales. |
Key Cases Cited
- In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (two-step willfulness standard; clear and convincing evidence first, then objective risk must be known or obvious)
- Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325 (Fed. Cir. 2010) (standard for JMOL on obviousness; de novo with fact-finding reviewed for substantial evidence)
- Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538 (Fed. Cir. 1995) (standard for remittitur; whether verdict is clearly unsupported)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims construction principles; intrinsic evidence as primary source)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (claims construction anchored in intrinsic record and description)
- Renishaw PLC v. Marposs Società per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) (claims construction reliance on intrinsic record)
- Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003) (structure conveyed by claim language and accompanying description)
- Abacus Software v. MIT, 462 F.3d 1344 (Fed. Cir. 2006) (circuit treats circuit as sufficient structure if operation described)
- Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004) (circuit not a means-plus-function where structure is disclosed)
- Starceski v. Westinghouse Elec. Corp., 54 F.3d 1089 (3d Cir. 1995) (remittitur standards; abuse-of-discretion review)