Case 1:08-cv-00309-LPS Document 682 Filed 07/25/12 Page 1 of 15 PageID #: 17292
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`POWER INTEGRATIONS, INC., a
`Delaware corporation,
`
`
`
`
`
` Plaintiff,
`
`v.
`
`C.A. No. 08-309 LPS
`
`
`
`
`FAIRCHILD SEMICONDUCTOR
`INTERNATIONAL, INC., FAIRCHILD
`SEMICONDUCTOR CORPORATION, and
`SYSTEM GENERAL CORPORATION,
`
`
`
` Defendants.
`
`
`POWER INTEGRATIONS’ BRIEF IN OPPOSITION TO DEFENDANTS’ RENEWED
`MOTION FOR JUDGMENT AS A MATTER OF LAW THAT POWER
`INTEGRATIONS’ ’605 PATENT IS INVALID FOR ANTICIPATION OR, IN THE
`ALTERNATIVE, ITS MOTION FOR A NEW TRIAL ON THE INVALIDITY OF THE
`’605 PATENT
`
`FISH & RICHARDSON P.C.
`William J. Marsden, Jr. (#2247)
`Joseph B. Warden (#5402)
`222 Delaware Avenue, 17th Floor
`P.O. Box 1114
`Wilmington, DE 19899-1114
`Telephone: (302) 652-5070
`marsden@fr.com
`warden@fr.com
`
`Frank E. Scherkenbach
`One Marina Park Drive
`Boston, MA 02110-2804
`Telephone: (617) 542-5070
`
`Howard G. Pollack
`Michael R. Headley
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Telephone: (650) 839-5070
`
`ATTORNEYS FOR PLAINTIFF
`POWER INTEGRATIONS, INC
`
`July 18, 2012
`
`ON SEMICONDUCTOR EXHIBIT 1010
`Page 1 of 15
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`Case 1:08-cv-00309-LPS Document 682 Filed 07/25/12 Page 2 of 15 PageID #: 17293
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`TABLE OF CONTENTS
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`PAGE
`
`I. 
`
`II. 
`
`INTRODUCTION .................................................................................................1 
`
`LEGAL STANDARDS .........................................................................................2 
`
`III. 
`
`ARGUMENT .........................................................................................................3 
`
`A. 
`
`B. 
`
`C. 
`
`Substantial Evidence Supports The Verdict that the Maige
`Patent Does Not Anticipate Claims 1 or 2 of the ’605 Patent ...................4 
`
`Substantial Evidence Supports the Verdict that the White Patent
`Does Not Anticipate Claims 1 or 2 of the ’605 Patent ..............................7 
`
`Fairchild Is Not Entitled to a New Trial ..................................................10 
`
`IV. 
`
`CONCLUSION ....................................................................................................12 
`
`
`
`
`
`i
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`CASES
`
`TABLE OF AUTHORITIES
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ...................................................................................................................2
`
`Gomez v. Allegheny Health Servs. Inc.,
`71 F.3d 1079 (3d Cir. 1995).......................................................................................................2
`
`Harris Corp. v. Ericsson, Inc.,
`417 F.3d 1241 (Fed. Cir. 2005)..................................................................................................2
`
`Honeywell Int’l. Inc. v. Universal Avionics Sys. Corp.,
`426 F. Supp. 2d 211 (D. Del. 2006) ...........................................................................................4
`
`Johnson v. Campbell,
`332 F.3d 199 (3d Cir. 2003).......................................................................................................2
`
`Koito Mfg. Co., Ltd. v. Turn–Key–Tech,
`LLC, 381 F.3d 1142 (Fed. Cir. 2004) ........................................................................................3
`
`Lab. Skin Care, Inc. v. Ltd. Brands, Inc.,
`No. 06–601–LPS, 2011 WL 4005444 (D. Del. Sept. 8, 2011) ........................................ passim
`
`Leader Tech., Inc. v. Facebook, Inc.,
`770 F. Supp. 2d 686 (D. Del. 2011) ...........................................................................................3
`
`Tristrata Tech., Inc. v. Mary Kay, Inc.,
`423 F. Supp. 2d 456 (D. Del. 2006) ...........................................................................................2
`
`Williamson v. Consol. Rail Corp.,
`926 F.2d 1344 (3d Cir. 1991).....................................................................................................3
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 50(a)(1) ....................................................................................................................2
`
`
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`ii
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`I.
`
`INTRODUCTION
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`Fairchild’s motion for judgment as a matter of law (“JMOL”) on anticipation of the ’605
`
`patent simply asks the Court to second guess the Jury’s decisions on pure questions of fact.
`
`Failing to raise a single question of law or substantial evidentiary deficiency that could
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`potentially be resolved in its favor on JMOL, Fairchild instead reargues the evidence and
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`contends the Jury came to the wrong decision. But, after hearing testimony from both experts,
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`weighing their respective credibility, and reviewing the prior art, it was for the Jury to decide
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`whether the Maige Patent or the White Patent anticipates the asserted ’605 patent claims. The
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`Jury’s unanimous answer of “No” is supported by substantial evidence and should be sustained.
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`As to both references, the expert opinions differed on whether the claim element: “a
`
`current limit threshold that increases during the on time of switch” was taught. Having won the
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`verdict, all reasonable inferences must be drawn in favor of Power Integrations, and it must be
`
`presumed that the Jury agreed with Dr. Kelley that neither reference teaches the required
`
`increasing threshold. In particular, substantial evidence shows that the Maige Patent discloses a
`
`fixed threshold, while the White Patent discloses a decreasing threshold. Accordingly,
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`Fairchild’s motion for JMOL of invalidity of the ’605 patent should be denied.
`
`Fairchild’s motion for a new trial fares no better. There is no basis in the record to
`
`conclude that Dr. Kelley argued, or implied, that the ’605 patent claims were limited to a
`
`particular use (i.e. solving the current overshoot problem). Not only does Fairchild
`
`mischaracterize Dr. Kelley’s testimony, it ignores the fact that it never objected to that testimony
`
`at trial. Unlike Fairchild’s expert, Dr. Wei, who clearly and improperly re-argued claim
`
`construction during trial [see, e.g., D.I. 637 at 4-8], Dr. Kelley just explained the reasons why he
`
`concluded that the limitation in question (a threshold that increased during the on-time of the
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`Case 1:08-cv-00309-LPS Document 682 Filed 07/25/12 Page 5 of 15 PageID #: 17296
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`switch) was not found in the disclosure of the prior art. Accordingly, Fairchild’s new trial
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`motion should also be denied.
`
`II.
`
`LEGAL STANDARDS
`
`A court should only grant judgment as a matter of law when it finds that “a reasonable
`
`jury would not have a legally sufficient evidentiary basis to find for the party on that issue.” Fed.
`
`R. Civ. P. 50(a)(1). The court is not free, on a post-trial motion for judgment as a matter of law,
`
`to weigh evidence, pass on credibility issues, or substitute its judgment for that of the Jury:
`
`“[c]redibility determinations, the weighing of the evidence, and the drawing of legitimate
`
`inferences from the facts are jury functions, not those of a judge.” Anderson v. Liberty Lobby,
`
`Inc., 477 U.S. 242, 255 (1986). Accordingly, JMOL motions 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.” Tristrata Tech., Inc. v. Mary Kay, Inc., 423 F. Supp. 2d 456,
`
`461-62 (D. Del. 2006) (quoting Johnson v. Campbell, 332 F.3d 199, 204 (3d Cir. 2003)).1
`
`“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
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`light most favorable to him. 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. Rather,
`
`the court must determine whether the evidence reasonably supports the jury's verdict.” Lab. Skin
`
`Care, Inc. v. Ltd. Brands, Inc., No. 06–601–LPS, 2011 WL 4005444, at *1 (D. Del. Sept. 8,
`
`2011) (internal quotations and citations omitted); see also Gomez v. Allegheny Health Servs. Inc.,
`
`
`1 Regional circuit law governs consideration of motions for judgment as a matter of law. See
`Harris Corp. v. Ericsson, Inc., 417 F.3d 1241, 1248 (Fed. Cir. 2005) (“The denial of JMOL
`is not a patent-law-specific issue, so regional circuit law applies.”).
`2
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`71 F.3d 1079, 1083 (3d Cir. 1995) (describing standard as “whether there is evidence upon
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`which a reasonable jury could properly have found its verdict”).
`
`“The decision to grant or deny a new trial is committed to the sound discretion of the
`
`district court. However, where the ground for a new trial is that the jury’s verdict was against the
`
`great weight of the evidence, the court should proceed cautiously, because such a ruling would
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`necessarily substitute the court's judgment for that of the jury. Although the standard for grant of
`
`a new trial is less rigorous than the standard for grant of judgment as a matter of law—in that the
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`court need not view the evidence in the light most favorable to the verdict winner—a new trial
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`should only be granted where a miscarriage of justice would result if the verdict were to stand,
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`the verdict cries out to be overturned, or where the verdict shocks the conscience.” Lab. Skin
`
`Care, Inc., 2011 WL 4005444, at *2 (internal quotations and citations omitted).
`
`III. ARGUMENT
`
`Not surprisingly, Fairchild believes its expert was right and Power Integrations’ expert
`
`was wrong. But, such a dispute simply does not justify JMOL. See Lab. Skin Care, Inc., 2011
`
`WL 4005444, at *1 (citing Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir.
`
`1991)). Weighing contrary evidence as to the scope and teaching of the prior art and assessing
`
`how it lines up with the asserted claims is at the heart of the anticipation inquiry, and it is a pure
`
`question of fact for the Jury. See Leader Tech., Inc. v. Facebook, Inc., 770 F. Supp. 2d 686, 703
`
`(D. Del. 2011) (citing Koito Mfg. Co., Ltd. v. Turn–Key–Tech, LLC, 381 F.3d 1142, 1149 (Fed.
`
`Cir. 2004)). On that question of fact, the Jury sided with Power Integrations and found no
`
`anticipation of the ’605 patent. [D.I. 577.] Fairchild’s motion fails to raise any question of law
`
`that would call into question that verdict; instead, it simply argues that the Court should
`
`substitute Fairchild’s view of the evidence for the Jury’s and believe Dr. Wei over Dr. Kelley –
`
`the Court cannot do this on JMOL. See Lab. Skin Care, 2011 WL 4005444, at *1.
`3
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`A.
`
`Substantial Evidence Supports The Verdict that the Maige Patent Does Not
`Anticipate Claims 1 or 2 of the ’605 Patent
`
`The Jury heard competing arguments regarding the threshold disclosed by the Maige
`
`Patent. Ultimately, however, the Jury found that the Maige Patent does not anticipate. [D.I.
`
`577.] With the Jury’s verdict in its favor, all logical inferences of fact must be drawn in Power
`
`Integrations’ favor. See Lab. Skin Care, 2011 WL 4005444, at *1. That is, “[i]n 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.’” Id. In particular, because the scope of the prior art is a pure question of fact, it must be
`
`assumed that the Jury credited Dr. Kelley’s expert opinion that the Maige Patent discloses a
`
`threshold that is fixed, and therefore not increasing, during the on time of the switch. See
`
`Honeywell Int’l. Inc. v. Universal Avionics Sys. Corp., 426 F. Supp. 2d 211, 223 (D. Del. 2006).
`
`Moreover, despite Fairchild’s numerous references to its own expert’s testimony, as a matter of
`
`law, this favorable testimony is unavailing in the JMOL context. See id. (explaining that the fact
`
`that an expert “presented contrary testimony does not alter this finding, since on a JMOL motion
`
`the court is not to determine the credibility of witnesses or substitute its judgment for that of the
`
`jury.”). Because Fairchild simply argues that Dr. Wei was right and Dr. Kelley was wrong, it
`
`offers the Court no basis upon which to grant JMOL.
`
`Dr. Kelley’s testimony provided the Jury with substantial evidence to support the verdict.
`
`Specifically, Dr. Kelley explained that the Maige threshold is fixed during the on time of the
`
`switch, while the claim requires an increasing threshold. [D.I. 599 (Trial Tr. 4/24/2012) at
`
`1732:16-1734:5; PD-1060.] To support his conclusion, Dr. Kelley explained that the switch
`
`described in Maige turns on and off at a frequency of 20 kilohertz in response to a first oscillator,
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`while the relevant threshold is set by a second, much slower, 1 hertz oscillator. [D.I. 599 (Trial
`
`Tr. 4/24/2012) at 1732:20-1733:10.] As a result, the switch turns on and off 20,000 times during
`
`a single oscillation period of the low frequency oscillator. [D.I. 598 (Trial Tr. 4/23/2012) at
`
`1589:22-24 (Wei); D.I. 599 (Trial Tr. 4/24/2012) at 1732:20-1733:10 (Kelley).] Because of the
`
`exceptionally large magnitude of the difference in frequencies between the two oscillators,
`
`during each on time of the switch, the threshold remains unchanged. [D.I. 599 (Trial Tr.
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`4/24/2012) at 1732:16-1734:5; PD-1060.] To illustrate his opinion that the threshold was fixed
`
`during each on time, Dr. Kelley showed the Jury a graphic comparing the relative periods of the
`
`two oscillators. [D.I. 599 (Trial Tr. 4/24/2012) at 1733:11-1734:1; PD-1060.] While it now
`
`argues Dr. Kelley’s demonstrative is “imaginary,” Fairchild neither cross-examined Dr. Kelley
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`on its accuracy, nor had Dr. Wei address it at trial. Fairchild disagrees with Dr. Kelley’s
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`conclusion, but it was for the Jury to weigh the evidence along with the respective experts’
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`credibility and render a verdict. See Lab. Skin Care, 2011 WL 4005444, at *1.
`
`Beyond Dr. Kelley’s direct testimony, Dr. Wei’s candid admissions provide further
`
`evidence supporting the verdict. The plain claim language – for which neither party sought a
`
`construction – makes this point. The claim first recites “a comparator having a first input
`
`coupled to sense a voltage representative of a current flowing through a switch during an on time
`
`of the switch” – referring to a single switching cycle during which current would flow and be
`
`sensed. Accordingly, when the claim goes on to recite “the comparator having a second input
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`coupled to receive a variable current limit threshold that increases during the on time of the
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`switch,” the antecedent basis is provided in the prior element, and is therefore referring to a
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`single on time of the switch. As such, Dr. Wei conceded there can be no anticipation when he
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`admitted “that Maige does not show any current limit threshold that is changing coincident with
`
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`Case 1:08-cv-00309-LPS Document 682 Filed 07/25/12 Page 9 of 15 PageID #: 17300
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`the switching frequency of the switch.” [D.I. 598 (Trial Tr. 4/23/2012) at 1589:8-12.] Further,
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`Dr. Wei conceded no increase could possibly be detected during a single switching cycle:
`
`Q.
`
`
`A.
`
`But you agree that during the on time of the switch, during an on time of
`the switch, in that snapshot, you don’t know any instrument that can
`actually detect a change?
`
`During that one single on time, it’s a very short period of time, and it’s
`hard to detect, yes.
`
`
`Q. Well, you are not aware of any instrument that could detect it; right?
`
`A.
`
`[D.I. 598 (Trial Tr. 4/23/2012) at 1590:24-1591:6; see also 1589:25-1590:5 (admitting he was
`
`I am not aware.
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`“not aware of any instrument like an oscilloscope that would allow anyone to look at that
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`threshold signal over one twenty-thousandth of a second and actually observe any change”).]
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`Fairchild’s and Dr. Wei’s argument that the Maige Patent’s threshold “increases” – albeit
`
`imperceptibly – was not accepted by the Jury as clear and convincing evidence. And, the Jury
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`was justified in weighing the evidence and deciding to reject Dr. Wei’s argument that he knew
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`the threshold was increasing despite the fact that he admitted no increase was detectable.
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`Finally, the documentary evidence also supports the verdict. That is, Fairchild believed it
`
`relevant to tell the Jury that the Maige Patent was not before the Patent Office during
`
`prosecution. [D.I. 597 (Trial Tr. 4/17/2012) at 1339:7-11]. Yet, it was later revealed that
`
`substantially identical soft start circuits were, in fact, before the patent office. [D.I. 599 (Trial
`
`Tr. 4/24/2012) at 1731:13-15; 1732:12-15.] The Jury could have logically inferred that if Maige-
`
`like circuits were the claimed invention, then the Patent Office would have rejected the patent
`
`based on the other references before it. See Lab. Skin Care, 2011 WL 4005444, at *1. The
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`absence of any such rejections speaks volumes. In fact, Dr. Wei candidly admitted that the
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`Maige Patent’s soft start was a “common technique.” [D.I. 599 (Trial Tr. 4/24/2012) at 1731:3-4
`
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`(Kelley); D.I. 598 (Trial Tr. 4/23/2012) at 1588:13-15 (Wei).] As such, the Jury could have
`
`logically inferred that if such an admittedly “common technique” really did embody the claimed
`
`invention, the Patent Office would have likely known about it and rejected the claims. See Lab.
`
`Skin Care, 2011 WL 4005444, at *1.
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`With the merits against it, Fairchild erroneously argues that Dr. Kelley’s opinions had an
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`improper basis. But this argument too fails when scrutinized. Specifically, Fairchild argues
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`
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`[D.I. 623 at 6 (emphasis in original).] A review of his testimony shows that
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`this is simply incorrect. In fact, Dr. Kelley promptly corrected Fairchild’s counsel when this
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`basis was alleged during cross-examination:
`
`The reason why you provided this opinion that Maige is constant and not
`variable is because it’s a soft-start circuit. Right?
`
`Q.
`
`
`A.
`
`The reason I provided my opinion is that the threshold doesn’t increase
`during the on time of the switch. That is the basis of my opinion.
`
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`[D.I. 599 (Trial Tr. 4/24/2012) at 1785:4-9.] In the end, whether because of the substantial
`
`evidence provided by Dr. Kelley’s direct testimony, the admissions elicited from Dr. Wei
`
`through cross-examination, or the logical inferences that can be drawn from the documentary
`
`evidence, the Jury had a reasonable basis to conclude that the Maige Patent does not disclose the
`
`claimed invention, and its verdict should be sustained.
`
`B.
`
`Substantial Evidence Supports the Verdict that the White Patent Does Not
`Anticipate Claims 1 or 2 of the ’605 Patent
`
`Fairchild’s motion for JMOL based on the White Patent rehashes the same fact
`
`arguments it made at trial and that the Jury rejected. Just as it did at trial, Fairchild ignores the
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`critical distinction between a “threshold” (claimed) and a “signal” (not claimed). In particular,
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`’605 patent claims recite a “current limit threshold that increases during the on time of the
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`Case 1:08-cv-00309-LPS Document 682 Filed 07/25/12 Page 11 of 15 PageID #: 17302
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`switch,” not simply an increasing signal. [PX-4 at Claim 1, see D.I. 632.] While Fairchild has
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`seized upon the White Patent because it shows an increasing signal being fed into a comparator,
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`that disclosure in White is irrelevant because the increasing signal represents, in fact, a
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`decreasing threshold. [D.I. 599 (Trial Tr. 4/24/2012) at 1735:2-4; 1737:5-8.] Drawing all
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`reasonable inferences in Power Integrations’ favor, it can be assumed the Jury recognized this
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`distinction, which was explained by Dr. Kelley, and decided that the White Patent does not
`
`disclose an increasing current limit threshold. See Lab. Skin Care, 2011 WL 4005444, at *1.
`
`Dr. Kelley’s testimony provided substantial evidence upon which the Jury could rightly
`
`conclude the White Patent discloses a decreasing – not increasing – current limit threshold. To
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`explain his opinion that the White current limit threshold decreases during the on time of the
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`switch, Dr. Kelley explained that when the switch in White is on, the switch current increases,
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`but, due to the nature of how that current is sensed, the representative voltage at the first
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`comparator input actually decreases. [D.I. 599 (Trial Tr. 4/24/2012) at 1736:1-22.] Dr. Wei
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`confirmed that he agreed with Dr. Kelley’s technical explanation on this point:
`
`Okay. You would agree that with regard to this A2(-) signal, that as the
`magnitude of the sense current increases, the level of this signal actually
`goes down; right?
`
`Q.
`
`
`A.
`
`Yes.
`
`
`[D.I. 598 (Trial Tr. 4/23/2012) at 1586: 22-1587:1; see also id. at 1587:13-17.] As Dr, Kelley
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`explained: “In other words, the sense of the circuit has been turned upside down.” [D.I. 599
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`(Trial Tr. 4/24/2012) at 1736:17-18.] That is, referring to Figure 2 of the White patent, the
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`current sense resistor (94) is referenced to the high voltage input (6), as opposed to a low voltage
`
`ground, as is more typical. [D.I. 599 (Trial Tr. 4/24/2012) at 1736:13-22; DX-1270 at Fig. 2, see
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`D.I. 629 at Ex. BB.] Because this decreasing voltage signal represents an increasing current
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`level, a truly increasing current limit threshold would also have to be represented by a decreasing
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`signal. The result of this “upside down” circuit arrangement is that the increasing signal (108)
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`being fed into the comparator (114) is, in fact, a decreasing current limit threshold. [D.I. 599
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`(Trial Tr. 4/24/2012) at 1736:13-1737:8.] In addition to explaining the technical details of the
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`circuit, Dr. Kelley also explained the effect of the fundamental differences between the claimed
`
`circuit and the White Patent circuit:
`
`If you have a decreasing threshold, what would happen is you would actually
`generate more overshoot for a higher DC input voltage in comparison to the lower
`DC input voltage. So you would actually have this peak current, this power limit,
`instead of getting better, it would be made worse.
`
` [D D.I. 599 (Trial Tr. 4/24/2012) at 1737:9-22; compare PD-1066 with PD-1067 (showing the
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`difference between the claimed circuit and White Patent circuit functionality).] As illustrated in
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`Figure 4 of the White patent, this is effectively the opposite of the claimed circuit. [D.I. 599
`
`(Trial Tr. 4/24/2012) at 1737:19-22; DX-1270 at Fig. 4, see D.I. 629 at Ex. BB.]
`
`In response to Dr. Kelley’s analysis, Dr. Wei never disputed that the White Patent’s
`
`threshold represented a decreasing quantity of current – indeed he agreed on that point. [D.I. 598
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`(Trial Tr. 4/23/2012) at 1586: 22-1587:1; 1587:13-17.] Instead, he simply reiterated that “the
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`signal, indeed, is increasing during the on time of the switch.” [D.I. 597 (Trial Tr. 4/17/2012) at
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`1348:6- 1349:6.] But, because the patent claim requires that the threshold increase, not just a
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`signal, the Jury rightly sided with Dr. Kelley and rendered a verdict of no anticipation.
`
`Failing to raise any proper JMOL issues, Fairchild again resorts to mischaracterizing Dr.
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`Kelley’s testimony in its Opening Brief. First, Fairchild argues that
`
` [D.I. 623 at 11.] Not true. Dr. Kelley’s opinion was based on an
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`analysis of the circuit’s structure and operation, which was never disputed by Dr. Wei. In fact,
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`Case 1:08-cv-00309-LPS Document 682 Filed 07/25/12 Page 13 of 15 PageID #: 17304
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`the trial transcript shows that neither the word
`
`nor the word
`
` were
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`spoken during the trial. In any event, if Fairchild believed such inputs alone were the basis for
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`Dr. Kelley’s opinions – and they were not – it could have cross-examined Dr. Kelley on the issue
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`at the appropriate time. Next, Fairchild argues that
`
`
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`[D.I. 623 at 11 (emphasis in original).] This odd mischaracterization too is false. Dr. Kelley’s
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`opinion was that the comparator receives a decreasing current limit threshold, which has nothing
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`to do with what happens after the comparator receives it. [D.I. 599 (Trial Tr. 4/24/2012) at
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`1736:13-1737:8.] Here, again, the evidence weighing in favor of the verdict is substantial, and
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`Fairchild has offered the Court no basis to grant JMOL.
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`C.
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`Fairchild Is Not Entitled to a New Trial
`
`In its argument for a new trial, Fairchild again mischaracterizes Dr. Kelley’s testimony
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`and also ignores the relevant legal standards. First and foremost, Dr. Kelley never argued or
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`implied that the ’605 patent was limited to a circuit correcting for current overshoot. Contrary to
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`Fairchild’s contention, there is no evidence that the Jury was led to
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` [D.I. 623 at 13.] Instead, Fairchild conflates cause with effect. Dr. Kelley first
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`explained that neither reference included the required “current limit threshold that increases
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`during the on time of the switch.” With that in mind, there was nothing improper about him
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`explaining how that missing element would affect current overshoot in the prior art circuits. He
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`also noted that because the White and Maige circuits were intended to solve different problems,
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`the solutions for which were antithetical to solving the problem of current overshoot, a person of
`
`skill in the art would be informed that the relevant thresholds disclosed were likely not
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`increasing during the on time of the switch as recited in the claim. [D.I. 599 (Trial Tr.
`10
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`Page 13 of 15
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`

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`Case 1:08-cv-00309-LPS Document 682 Filed 07/25/12 Page 14 of 15 PageID #: 17305
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`4/24/2012) at 1734:6-19; 1737:9-1737:22 .] Thus, rather than arguing there were additional
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`limitations to the claims, Dr. Kelley’s testimony about the structure, operation, and intended
`
`purposes of the prior art was offered to explain his opinion that the art failed to disclose what
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`was expressly required – a “current limit threshold that increases during the on time of the
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`switch.”
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`Notably, Dr. Wei never disputed Dr. Kelley’s opinion on the application of either Maige
`
`or White to the current overshoot problem. Nor did Fairchild object to or raise any issue with
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`Dr. Kelley’s testimony discussing current overshoot or his demonstrative slides that illustrated
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`the consequences of applying the Maige and White circuits to the problem. Given that Dr.
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`Kelley’s testimony was legally proper, and drew no objections, Fairchild has no basis to contend
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`that a new trial is warranted under the applicable standard. See Lab. Skin Care, 2011 WL
`
`4005444, at *2 (holding “a new trial should only be granted where ‘a miscarriage of justice
`
`would result if the verdict were to stand,’ the verdict ‘cries out to be overturned,’ or where the
`
`verdict ‘shocks [the] conscience.’”).
`
`Fairchild’s argument on this issue rings particularly hollow in view of Dr. Wei’s express
`
`reliance on the words “current overshoot” in the TDA16822 datasheet to provide a basis for his
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`opinion that it teaches all the elements of the asserted claims in the related ’270 patent, which
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`also contains no such “current overshoot” limitation. [D.I. 597 (Trial Tr. 4/17/2012) at 1328:13-
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`21; D.I. 598 (Trial Tr. 4/23/2012) at 1593:25-1594:10.] Apparently, Fairchild contends that Dr.
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`Wei can point to the words “current overshoot” as an indication of the presence of the claimed
`
`invention in the prior art, but in rebuttal, Dr. Kelley is barred from speaking those words to
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`indicate the absence of the claimed invention. This inconsistency is untenable. In any event,
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`there is no basis here to grant a new trial on the issue of invalidity of the ’605 patent.
`
`
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`11
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`ON SEMICONDUCTOR EXHIBIT 1010
`Page 14 of 15
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`

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`Case 1:08-cv-00309-LPS Document 682 Filed 07/25/12 Page 15 of 15 PageID #: 17306
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`IV. CONCLUSION
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`For the reasons above, Power Integrations respectfully requests the Court deny
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`Fairchild’s renewed motion for JMOL that the ’605 patent is invalid as anticipated and also
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`reject its motion for a new trial on the validity of the patent.
`
`Dated: July 18, 2012
`
`FISH & RICHARDSON P.C.
`
`By: /s/ William J. Marsden, Jr.
` William J. Marsden, Jr. (#2247)
`Joseph B. Warden (#5402)
`222 Delaware Avenue, 17th Floor
`P.O. Box 1114
`Wilmington, DE 19801
`Telephone: (302) 652-5070
`marsden@fr.com
`warden@fr.com
`
`Frank E. Scherkenbach
`One Marina Park Drive
`Boston, MA 02210-1878
`Telephone: (617) 542-5070
`
`Howard G. Pollack
`Michael R. Headley
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Telephone: (650) 839-5070
`
`ATTORNEYS FOR PLAINTIFF
`POWER INTEGRATIONS, INC.
`
`12
`
`80123687
`
`
`
`ON SEMICONDUCTOR EXHIBIT 1010
`Page 15 of 15