United States Court of Appeals
`for the Federal Circuit
`______________________
`
`POWER INTEGRATIONS, INC.,
`Plaintiff-Cross-Appellant
`
`v.
`
`FAIRCHILD SEMICONDUCTOR
`INTERNATIONAL, INC., FAIRCHILD
`SEMICONDUCTOR CORPORATION,
`FAIRCHILD (TAIWAN) CORPORATION,
`Defendants-Appellants
`______________________
`
`2015-1329, 2015-1388
`______________________
`
`Appeals from the United States District Court for the
`District of Delaware in No. 1:08-cv-00309-LPS, Chief
`Judge Leonard P. Stark.
`______________________
`
`Decided: December 12, 2016
`______________________
`
`FRANK E. SCHERKENBACH, Fish & Richardson, P.C.,
`Boston, MA, argued for plaintiff-cross-appellant. Also
`represented by CRAIG E. COUNTRYMAN, San Diego, CA;
`MICHAEL R. HEADLEY, HOWARD G. POLLACK, Redwood
`City, CA.
`
`BLAIR M. JACOBS, Paul Hastings LLP, Washington,
`DC, argued for defendants-appellants. Also represented
`
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` POWER INTEGRATIONS v. FAIRCHILD SEMICONDUCTOR
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`by STEPHEN B. KINNAIRD, CHRISTINA A. ONDRICK, PATRICK
`J. STAFFORD.
`
`______________________
`
`Before PROST, Chief Judge, SCHALL, and CHEN, Circuit
`Judges.
`
`CHEN, Circuit Judge.
`This appeal follows a ten-day jury trial in the District
`of Delaware that resulted in verdicts that (1) Power
`Integrations Inc.’s U.S. Patent Nos. 7,110,270 and
`7,834,605 were neither anticipated nor obvious and were
`not directly or indirectly infringed by Fairchild Semicon-
`ductor International, Inc., Fairchild Semiconductor Cor-
`poration, and Fairchild (Taiwan) Corporation (collectively,
`Fairchild); (2) Power Integrations’ U.S. Patent Nos.
`6,107,851 and 6,249,876 were not anticipated and were
`directly
`and
`indirectly
`infringed
`by Fairchild;
`(3) Fairchild’s U.S. Patent No. 7,259,972 was not obvious,
`was infringed by Power Integrations under the doctrine of
`equivalents, but was not literally infringed or indirectly
`infringed by Power Integrations; and (4) Fairchild’s U.S.
`Patent No. 7,352,595 was not anticipated and was not
`infringed by Power Integrations. Following trial, the
`district court granted Power Integrations’ motion for
`judgment as a matter of law (JMOL) that Fairchild direct-
`ly infringed the ’605 patent, but denied the parties’ other
`JMOL motions and motions for a new trial. Power Inte-
`grations, Inc. v. Fairchild Semiconductor Int’l, Inc., 935 F.
`Supp. 2d 747 (D. Del. 2013) (JMOL Decision). The court
`subsequently granted Power Integrations’ motion for a
`permanent injunction and denied Fairchild’s motion for a
`permanent
`injunction.
` Power Integrations, Inc. v.
`Fairchild Semiconductor Int’l, Inc., No. 1:08-cv-00309-
`LPS, 2014 WL 2960035 (D. Del. June 30, 2014) (Perma-
`nent Injunction Order); Power Integrations, Inc. v.
`Fairchild Semiconductor Int’l, Inc., No. 1:08-cv-00309-
`LPS (D. Del. June 16, 2014) (Dkt. No. 790). The district
`
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`court entered final judgment as to liability on January 13,
`2015. Power Integrations, Inc. v. Fairchild Semiconductor
`Int’l, Inc., No. 1:08-cv-00309-LPS (D. Del. Jan. 13, 2015)
`(Dkt. No. 819). All damages claims were bifurcated by the
`district court and remain pending.
`Fairchild appeals and Power Integrations cross-
`appeals various decisions from the district court.1 We
`hold as follows:
`• The jury’s verdict that the asserted claims of the
`’876 patent were not anticipated by Martin2 or
`Wang3 is affirmed.
`• Because the district court’s jury instruction incor-
`rectly stated the law on inducement, the jury’s ver-
`dict that Fairchild induced infringement of the
`asserted claims of the ’876 and ’851 patents is va-
`cated.
`• The jury’s verdict that the asserted claims of the
`’605 patent were not anticipated by Maige4 is re-
`versed.
`• The district court’s construction that the asserted
`claims of the ’972 patent require “sampling a volt-
`age from the auxiliary winding of the transformer
`when the transformer is discharging” is affirmed.
`
`
`1 Neither party appeals the jury’s verdicts on the
`’270 and ’595 patents.
`2 U.S. Patent No. 4,638,417.
`3 Andrew C. Wang and Seth R. Sanders, Pro-
`grammed Pulsewidth Modulated Waveforms for Electro-
`magnetic Interference Mitigation in DC-DC Converters,
`IEEE Transactions on Power Electronics, Vol. 8, No. 4
`(Oct. 1993).
`4 U.S. Patent No. 4,763,238.
`
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`• The jury’s verdict that the asserted claims of the
`’972 patent would not have been obvious in view of
`Majid5 is affirmed.
`• The jury’s verdict that Power Integrations infringed
`the asserted claims of the ’972 patent under the
`doctrine of equivalents is reversed.
`• The district court’s grant of Power Integrations’
`motion for a permanent injunction is vacated in
`view of the above holdings.
`• The district court’s denial of Fairchild’s motion for
`a permanent injunction is moot in view of the above
`holdings.
`In sum, we affirm-in-part, reverse-in-part, and vacate-
`in-part the final judgment entered by the district court
`and remand for further proceedings.
`BACKGROUND
`Power Integrations and Fairchild are direct competi-
`tors in the power supply controller chip market. They
`have engaged in a long-running and multi-fronted patent
`dispute involving actions in at least the United States
`District Courts for the District of Delaware6 and the
`Northern District of California,7 as well as the United
`States Patent and Trademark Office Patent Trial and
`
`
`5 U.S. Patent No. 5,956,242.
`6 See Power Integrations, Inc. v. Fairchild Semicon-
`ductor Int’l, Inc., No. 1:08-cv-00309-LPS (D. Del. filed May
`23, 2008); Power Integrations, Inc. v. Fairchild Semicon-
`ductor Int’l, Inc., No. 1:04-cv-01371-LPS (D. Del. filed Oct.
`20, 2004).
`7 See Power Integrations, Inc. v. Fairchild Semicon-
`ductor Int’l, Inc., No. 3:09-cv-05235-MMC (N.D. Cal. filed
`Nov. 4, 2009).
`
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`Appeal Board.8 We are not unfamiliar with the parties or
`their disputes. In fact, we have heard appeals of at least
`two decisions that involved two of the very patents at
`issue here. See Power Integrations, Inc. v. Lee, 797 F.3d
`1318 (Fed. Cir. 2015) (vacating Patent Board’s decision
`that claims of the ’876 patent were unpatentable as
`anticipated); Power Integrations, Inc. v. Fairchild Semi-
`conductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013) (re-
`viewing jury verdict on ’851 and ’876 patents, among
`others).
`Power supplies are ubiquitous in modern society. An-
`yone who has purchased an electronic device in recent
`times—whether a cellular phone, computer, television, or
`the like—is familiar with the different cords and plugs
`provided to power and/or charge those devices. Some-
`where in the cord/plug combination resides a power
`supply. The power supply is often integrated into the
`plug itself, as is the case with many cellular phones. In
`other configurations, the power supply resides in a
`standalone module, as with many laptop computers.
`
`
`
`Figure 2: Power supply as
`
`
`Figure 1: Power supply
`
`8 See Power Integrations, Inc. v. Fairchild Semicon-
`ductor Corp., No. 2015-00769, 2015 WL 9595648 (PTAB
`Dec. 31, 2015); see also Ex parte Power Integrations, Inc.,
`No. 2010-011021, 2010 WL 5244756 (BPAI Dec. 22, 2010).
`
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`integrated into plug
`
`a standalone module
`
`The power supply does more than simply allow power
`to flow from a wall outlet to the connected electronic
`device. Power supplies serve the integral role of convert-
`ing the power supplied by the wall outlet into a form the
`electronic device can use. The power a wall outlet pro-
`vides is of a relatively high voltage and uses alternating
`current (AC). In contrast, electronic devices generally
`require a relatively low voltage and direct current (DC).
`These devices would likely be damaged if exposed to high-
`voltage AC power. Power supplies convert the high-
`voltage AC power supplied by the wall outlet into the low-
`voltage DC power required by the electronic device.9
`The controller chip is the “brains” of the power supply.
`It ensures that the power supply functions properly. Over
`time, controller chips have evolved to incorporate new
`features that make power supplies smaller, cheaper, and
`more efficient. The patents at issue in this appeal relate
`to some of the features that have been incorporated into
`modern controller chips.
`I. The ’851 and ’876 Patents
`Power Integrations is the assignee of the ’851 and ’876
`patents. These patents relate to “frequency jitter” in
`power supplies.
`Modern power supplies operate in what is known as
`“switched mode.” Switched-mode power supplies conserve
`energy by rapidly switching between on and off states.
`They differ from older, linear power supplies, which
`remained in an on state. The switched-mode power
`supply’s controller chip commands the alternating on/off
`
`
`9 For a more detailed explanation of AC and DC
`power and the conversion between the two, see our prior
`opinion in Power Integrations, 711 F.3d at 1357–58.
`
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`states through the use of an oscillator. Prior art switch-
`mode power supplies most often used a high-frequency
`oscillator operating at a fixed frequency. ’851 patent,
`1:22–26; ’876 patent, 1:12–18. The fixed, high-frequency
`operation of the oscillator tended to inject noise in the
`form of electromagnetic interference (EMI) into the power
`supply at the specific frequency of the oscillator. This
`noise would, in turn, impact the operation of downstream
`and co-located components. ’851 patent, 1:22–40; ’876
`patent, 1:19–33.
`The ’851 and ’876 patents claim circuits that “jitter”—
`or vary—the frequency of the controller chip’s oscillator to
`reduce the amount of EMI the switched-mode power
`supply generates. ’851 patent, 3:43–48; ’876 patent, 1:66–
`67. One form of jitter is captured in Figure 2 of the ’876
`patent:
`
`
`As shown in the figure, the oscillator frequency increases
`by a fixed amount every eight clock cycles before resetting
`after 128 clock cycles. By jittering the oscillator frequen-
`cy—using a step function like the one shown above or
`some other scheme—the power supply divides any EMI it
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`The invention of the ’605 patent attempts to solve this
`problem. It introduces a regulator to the current-limiting
`circuit that steadily increases the current threshold
`during the time the power supply is in an on state. ’605
`patent, 1:51–59. This variable current limit is shown in
`Figure 2 of the ’605 patent:
`
`
`The square wave—labeled “Duty Cycle Max 15”—
`represents the alternating on and off states of the power
`supply: when the wave is high, the power supply is on;
`when the wave is low, the power supply is off. The cur-
`rent limit (i.e., “Intrinsic Current Limit 22”) steadily
`increases throughout the period the power supply is on; it
`decreases throughout the period the power supply is off.
`This increasing current limit provides advantages
`over prior art power supplies. For instance, with this
`improved design, an immediate surge in output current
`will trip the current limit at a lower level. This offers
`additional protection to downstream components without
`impacting operation of the power supply at normal power
`levels.
`
`III. The ’972 Patent
`Fairchild is the assignee of the ’972 patent. The ’972
`patent is a combination patent and claims a power supply
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`that includes frequency jitter—similar to that claimed in
`the ’851 and ’876 patents—and overcurrent protection—
`similar to the claimed invention of the ’605 patent. ’972
`patent, 1:9–12.
`However, the ’972 patent discloses an approach to
`overcurrent protection that differs from that of the ’605
`patent. Whereas the regulator claimed in the ’605 patent
`monitored the power supply’s output voltage and current
`at the actual output of the power supply, ’605 patent,
`6:16–18, the power converter claimed in the ’972 patent
`monitors the output voltage and current at what is known
`as the “primary side” of the power supply’s transformer,
`’972 patent, 2:42–46.
`This is best explained with reference to Figure 1 of
`the ’972 patent:
`
`
`The figure is a schematic diagram of a power supply. Id.
`at 2:62–64. The transformer, labeled “10,” divides the
`power supply. All circuitry to the left of transformer 10 in
`the schematic is the “primary side” of the power supply;
`all circuitry to the right of transformer 10 is the “second-
`ary side” of the power supply. See id. at 2:64–66. Power
`supplies use a transformer to isolate the input terminals
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`of the power supply (VIN) from the output terminals (VO)
`for safety and reliability reasons. Id. at 1:17–20.
`Prior art power supplies, like that claimed in the ’605
`patent, monitored output voltage and/or current on the
`secondary side of the power supply. Id. at 1:24–30. Such
`a scheme required a regulator on the secondary side as
`well as an opto-coupler to provide feedback from the
`secondary side of the power supply to the primary side.
`Id. at 1:30–33. The addition of these components in-
`creased the size and cost of the power supply. Id.
`The power supply claimed in the ’972 patent, in con-
`trast, controls the output power at the primary side of the
`transformer based on feedback received on the primary
`side. Id. at 2:42–46. The power supply thereby does not
`require the secondary-side regulator or the opto-coupler
`found on prior art devices. Id. at 2:50–51. As a result,
`the power supply could be smaller in size and lower in
`cost.
`
`PROCEDURAL HISTORY
`Power Integrations filed suit against Fairchild on May
`23, 2008 in the District of Delaware alleging that
`Fairchild directly and indirectly infringed the ’851, ’876,
`and ’270 patents. Power Integrations subsequently
`amended its complaint to add allegations that Fairchild
`directly and
`indirectly
`infringed
`the
`’605 patent.
`Fairchild filed counterclaims alleging that Power Integra-
`tions directly and indirectly infringed the ’972 and ’595
`patents and U.S. Patent No. 7,061,780. Each party de-
`nied the infringement allegations made against it and
`alleged that all patents asserted against it were invalid
`and/or unenforceable.
`The district court bifurcated the liability and damages
`phases of the case prior to trial. A ten-day jury trial on
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`liability commenced on April 11, 2012.10 At the conclu-
`sion of trial, the jury returned a mixed verdict. The jury
`found all claims asserted by Power Integrations not
`invalid. Specifically, the jury found claims 1 and 2 of the
`’605 patent neither anticipated nor obvious; claims 6 and
`7 of the ’270 patent neither anticipated nor obvious;
`claims 1 and 21 of the ’876 patent not anticipated; and
`claim 18 of the ’851 patent not anticipated.
`The jury found Fairchild liable for infringement of the
`’876 and ’851 patents. It found that: Fairchild’s
`SG5841J-type products did not literally infringe claims 1
`or 21 of the ’876 patent but did infringe those claims
`under the doctrine of equivalents; Fairchild’s FAN103-
`type products literally infringed claims 1 and 21 of the
`’876 patent; Fairchild induced others to infringe claims 1
`and 21 of the ’876 patent; Fairchild’s SG5841J- and
`SG6842J-type products literally infringed claim 18 of the
`’851 patent; and Fairchild induced others to infringe claim
`18 of the ’851 patent. The jury found that Fairchild did
`not directly infringe or induce infringement of claims 1 or
`2 of the ’605 patent or claims 6 or 7 of the ’270 patent.
`Turning to Fairchild’s patents, the jury found all as-
`serted claims not invalid. In particular, the jury found
`claims 6, 7, 18, and 19 of the ’972 patent not obvious and
`claims 17 and 22 of the ’595 patent not anticipated. On
`infringement, the jury found for Fairchild under a single
`theory: Power Integrations infringed the asserted claims
`of the ’972 patent under the doctrine of equivalents. The
`jury found that Power Integrations did not literally in-
`fringe those claims nor did it induce others to infringe
`those claims. The jury found that Power Integrations did
`not infringe the asserted claims of the ’595 patent literal-
`ly, under the doctrine of equivalents, or by inducement.
`
`
`10 By the time of trial, the ’780 patent was no longer
`at issue.
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`The parties filed a multitude of post-trial motions
`challenging aspects of the jury’s verdict or seeking a new
`trial. The district court granted Power Integrations’
`motion for JMOL of direct infringement of the ’605 patent.
`JMOL Decision, 935 F. Supp. 2d at 756. It denied all
`other motions. Id. at 764.
`Later, the court granted Power Integrations’ motion
`for a permanent injunction and enjoined “Fairchild from
`selling, offering to sell, and importing the products found
`at trial to infringe and those products ‘not colorably
`different’ from them.” Permanent Injunction Order, 2014
`WL 2960035, at *2. The district court denied Fairchild’s
`motion for a permanent injunction.
`The district court entered final judgment as to liabil-
`ity on January 13, 2015. Fairchild filed a timely appeal
`and Power Integrations cross-appealed. We have jurisdic-
`tion pursuant to 28 U.S.C. § 1295(a)(1).
`DISCUSSION
`The parties raise twelve issues on appeal. The issues
`can be categorized as follows: (1) challenges to the district
`court’s construction of certain claim terms; (2) a challenge
`to the district court’s jury instructions; (3) a challenge to
`the verdict form adopted by the district court; (4) chal-
`lenges to the district court’s denial of certain of the par-
`ties’ motions for JMOL; (5) challenges to the district
`court’s denial of certain of the parties’ motions for a new
`trial; and (6) challenges to the district court’s grant or
`denial of a party’s motion for a permanent injunction.
`We apply the framework established in Teva Pharma-
`ceuticals U.S.A., Inc. v. Sandoz, Inc. when reviewing a
`district court’s construction of a patent’s claims. 135 S.
`Ct. 831, 835 (2015). Under that framework, we review
`the district court’s ultimate claim construction de novo
`with any underlying factual determinations involving
`extrinsic evidence reviewed for clear error. Id. at 841–42.
`
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`We review “the legal sufficiency of jury instructions on
`an issue of patent law without deference to the district
`court.” DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293,
`1304 (Fed. Cir. 2006) (en banc). “A jury verdict will be set
`aside only if the jury instructions were ‘legally erroneous’
`and the ‘errors had prejudicial effect.’” Ericsson, Inc. v. D-
`Link Sys., Inc., 773 F.3d 1201, 1225 (Fed. Cir. 2014)
`(quoting Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356,
`1363 (Fed. Cir. 2004)).
`We review the verdict form adopted by the district
`court for an abuse of discretion. See Wyers v. Master Lock
`Co., 616 F.3d 1231, 1248 (Fed. Cir. 2010) (“[I]t must be
`left to the sound discretion of the trial court what form of
`verdict to request of a jury.” (quoting Structural Rubber
`Prods. Co. v. Park Rubber Co., 749 F.2d 707, 720 (Fed.
`Cir. 1984))).
`“We review the denial of a motion for JMOL . . . under
`the law of the pertinent regional circuit. The Third Cir-
`cuit exercises plenary review of a denial of JMOL, apply-
`ing the same standard as the district court.” Siemens
`Med. Sols. USA, Inc. v. Saint-Gobain Ceramics & Plastics,
`Inc., 637 F.3d 1269, 1277–78 (Fed. Cir. 2011) (citations
`omitted). “To prevail on a renewed motion for JMOL
`following a jury trial, a party must show that the jury’s
`findings, presumed or express, are not supported by
`substantial evidence or, if they were, that the legal con-
`clusion(s) 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) (internal quotation
`marks and citations omitted).
`“In reviewing a district court’s disposition of . . . a new
`trial motion, this court applies the law of the regional
`circuit where the district court sits.” Bettcher Indus., Inc.
`v. Bunzl USA, Inc., 661 F.3d 629, 638 (Fed. Cir. 2011)
`(citation omitted). The Third Circuit “review[s] a district
`court’s grant or denial of a new trial motion by applying
`the deferential ‘abuse of discretion’ standard to the rul-
`
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`ing.” Olefins Trading, Inc. v. Han Yang Chem Corp., 9
`F.3d 282, 289 (3d Cir. 1993).
`We review a district court’s ultimate decision to grant
`or deny a permanent injunction for an abuse of discretion.
`Apple, Inc. v. Samsung Elecs. Co., Ltd., 809 F.3d 633, 639
`(Fed. Cir. 2015). We review the district court’s conclu-
`sions on each of the underlying factors set forth in eBay
`Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), for an
`abuse of discretion and its underlying factual findings for
`clear error. Apple, 809 F.3d at 639.
`For simplicity, we address all issues associated with a
`particular patent—or group of patents—together. We
`therefore depart from our normal practice and intersperse
`the issues raised in Fairchild’s appeal with the issues
`raised in Power Integrations’ cross-appeal as necessary.
`I. The ’851 and ’876 Patents (Frequency Jitter)
`Fairchild commits much of its briefing to its argument
`that it is entitled to JMOL that it did not induce in-
`fringement of the ’851 and ’876 patents or, at the very
`least, that it is entitled to a new trial on the issue. Before
`reaching the jury’s induced infringement verdict, howev-
`er, we must first address Fairchild’s argument that claims
`1 and 21 of the ’876 patent are invalid as anticipated.11
`A. Validity of the ’876 Patent
`The jury found that neither Martin nor Wang antici-
`pated claims 1 and 21 of the ’876 patent. The ’876 patent
`claims a “frequency jittering” circuit used in switched-
`mode power supplies to reduce EMI emissions produced
`by the power supply. ’876 patent, Abstract. Claim 1
`reads as follows:
`
`
`11 Fairchild does not appeal the jury’s verdict that
`claim 18 of the ’851 patent was not invalid as anticipated.
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`1. A digital frequency jittering circuit for varying
`the switching frequency of a power supply, com-
`prising:
`an oscillator for generating a signal hav-
`ing a switching frequency, the oscillator
`having a control input for varying the
`switching frequency;
`a digital to analog converter coupled to the
`control input for varying the switching
`frequency; and
`a counter coupled to the output of the oscil-
`lator and to the digital to analog converter,
`the counter causing the digital to analog
`converter to adjust the control input and
`to vary the switching frequency.
`Id. at 8:42–53 (emphases added). Claim 21 is similar. It
`too is directed to a “frequency jittering circuit.” Id. at
`9:55–65. It includes a limitation analogous to the one
`emphasized above in claim 1: “a counter coupled to the
`output of the oscillator and to the one or more current
`sources.” Id. at 9:64–65.
`Martin and Wang each disclose a controller circuit
`used to reduce the EMI signature associated with a power
`supply’s oscillator. See Martin, 1:55–56; Wang at 585.
`The circuits accomplish this reduction by varying the
`oscillator frequency through the use of a pseudo-random
`code stored in read-only memory (ROM). See, e.g., Mar-
`tin, 1:53–55. The below figure from Martin is exemplary:
`
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`Martin, Fig. 1. In this circuit, counter 10 acts as an index
`to EPROM 11. As the output of counter 10 increases, it
`accesses the pseudo-random code value stored at the
`corresponding address of EPROM 11. Id. at 2:39–44.
`This value is outputted to digital-to-analog converter 12,
`which in turn drives the circuit’s oscillator (i.e., VCO 13).
`Id. at 2:44–49. The result is an oscillator with a frequen-
`cy that varies according to the pseudo-random code stored
`in EPROM 11.
`At trial, Power Integrations disputed Fairchild’s ar-
`gument that Martin and Wang anticipated claims 1 and
`21. It argued to the jury that the invention of the ’876
`patent differed from the prior art references in at least
`two key ways: (1) the circuits of Martin and Wang do not
`vary about a “target frequency” as required by the district
`court’s construction of “frequency jittering;” and (2) the
`counters of Martin and Wang are not “coupled” to the
`digital-to-analog converter as the district court construed
`that term. The jury agreed and found that the claims
`were not anticipated by Martin or Wang.
`We find that the jury’s verdict was supported by sub-
`stantial evidence. The district court construed “frequency
`jittering” to mean “varying the switching frequency of a
`switch mode power supply about a target frequency in
`order to reduce electromagnetic interference.” Power
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
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`No. 1:08-cv-00309-LPS, 2009 WL 4928029, at *20 (D. Del.
`Dec. 18, 2009) (Claim Construction Order).12 Fairchild
`does not challenge this construction. Rather, it contends
`that the claim limitation was disclosed in the prior art,
`using an argument akin to the symmetric property in
`mathematics.13 Fairchild first notes that one type of
`target frequency (“a”) disclosed in the ’876 patent is an
`average frequency (“b”). It next contends that one can
`take the pseudo-random frequencies used in Martin and
`Wang and calculate an average frequency (“b”). It finally
`argues that if the ’876 patent’s target frequency can be an
`average frequency (i.e., a = b), then Martin’s and Wang’s
`average frequency (that Fairchild proposed can be calcu-
`lated) must be a target frequency (i.e., b = a).
`While Fairchild’s argument is creative, it fails to ac-
`count for the temporal aspect of the district court’s claim
`construction. The district court explained that “frequency
`jittering” requires “varying the switching frequency of a
`switch mode power supply about a target frequency in
`order to reduce electromagnetic interference.” Id. Under
`this construction, the claimed circuit—or its designer—
`must have a priori knowledge of the target frequency in
`order to vary the switching frequency about that target
`frequency. See id. (explaining that the patent specifica-
`tion “refer[s] to varying the switching frequency about a
`narrow, known, or fixed range of frequencies in order to
`reduce EMI”). As the district court correctly noted,
`Fairchild’s proposed calculation of Martin’s and Wang’s
`average frequency is done entirely “after the fact.” JMOL
`Decision, 935 F. Supp. 2d at 761 (“Calculating an average
`frequency after the fact does not teach one of skill in the
`art how to vary the switching frequency, and does not
`
`12 The district court adopted then-Magistrate Judge
`Stark’s Report and Recommendation Regarding Claim
`Construction on July 20, 2010. J.A. 49–50.
`13 Under the symmetric property, if a = b then b = a.
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`produce the desired result of reducing electromagnetic
`interference.”). Neither reference teaches use of a known
`target frequency about which switching frequencies are
`varied. Therefore, substantial evidence supports the
`jury’s findings that the references do not anticipate claim
`1 or 21.
`Martin and Wang likewise do not teach the “coupled
`to” limitations of claims 1 and 21. The district court
`construed “coupled” to mean that “two circuits are coupled
`when they are connected such that voltage, current or
`control signals pass from one to another.” J.A. 17137.
`Martin and Wang each disclose a circuit that includes a
`counter linked to a digital-to-analog converter by way of a
`ROM. See Martin, Fig. 1; Wang at 604. The ROM takes
`the output of the upstream counter as its input. Martin,
`2:22–24; Wang at 604. It then outputs a different, stored
`value to the digital-to-analog converter. Martin, 2:29–32;
`Wang at 604. The addition of the ROM thereby ensures
`that no “voltage, current or control signals pass from” the
`counter to the digital-to-analog converter. In other words,
`the ROM “decouples” the counter from the digital-to-
`analog converter. As such, substantial evidence supports
`the jury verdict that neither Martin nor Wang anticipates
`claim 1 or 21. The district court therefore correctly denied
`Fairchild’s JMOL motion.
`B. Induced Infringement of the ’851 and ’876 Patents
`The
`jury
`found that Fairchild’s SG5841J- and
`SG6842J-type products literally infringed claim 18 of the
`’851 patent; its SG5841J-type products infringed claims 1
`and 21 of the ’876 patent under the doctrine of equiva-
`lents; and its FAN103-type products literally infringed
`claims 1 and 21 of the ’876 patent. The jury further found
`that Fairchild induced others to infringe these claims.
`Fairchild does not appeal the jury’s direct infringement
`verdicts. It does appeal the jury’s indirect infringement
`verdicts.
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`Fairchild raises three issues with respect to the jury’s
`induced infringement verdict. Fairchild first argues that
`the verdict should be reversed because its foreign sales of
`and sales activities related to the infringing products
`cannot constitute specific intent to bring about infringe-
`ment in the United States. Alternatively, Fairchild
`argues that the verdict should be vacated because the jury
`was improperly instructed that Fairchild need not suc-
`cessfully induce a third party to infringe to be liable for
`induced infringement. Finally, Fairchild argues that the
`district court’s failure to include interrogatories on the
`verdict form requiring identification of direct infringers is
`a separate ground to vacate the jury verdict.
`We agree with Fairchild that the district court’s jury
`instruction misstated the law on induced infringement in