Chief Judge Stark recently resolved a motion for summary judgment of no willfulness and various motions in limine in the lead-up to a trial in the litigation between Fairchild Semiconductor and Power Integrations.
Judge Stark determined that the first Seagate prong, the objectively high likelihood of infringement of a valid patent, was not satisfied and therefore the subjective prong and the ultimate question of willfulness could not go to the jury. Fairchild Semiconductor Corp., et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS, Memo. Op. at 3 (D. Del. Apr. 23, 2015). The objective prong was not satisfied, Judge Stark explained, because Fairchild asserted reasonable non-infringement positions based on the Court’s claim construction and the fact that it had redesigned its products in a manner that Power Integrations had previously admitted would not infringe. Judge Stark found that these were, “at minimum, credible, reasonable non-infringement theories, and consequently the first prong of Seagate cannot be satisfied,” “even if the Court or a jury ultimately rejects Fairchild’s non-infringement theories” and “[r]egardless of whether [summary judgment of non-infringement] is ultimately granted or denied.” Id. at 1, 4. Judge Stark also rejected Power Integrations’ contention that Fairchild acted recklessly, explaining that the “implicit concession (in describing the new products as only ‘essentially,’ but not entirely, unchanged), the accused products are changed from what was found to infringe in the earlier case,” and therefore willfulness could not be proven on this record.
The same day, Judge Stark resolved numerous pre-trial motions in limine in addition to addressing various other pre-trial matters. His Honor granted the plaintiffs’ motion to preclude any reference to pending or completed reexamination proceedings, including both the non-final reexamination of plaintiff’s patent and the completed reexamination that found defendant’s patent valid. Fairchild Semiconductor Corp., et al. v. Power Integrations, Inc., C.A. No. 12-540-LPS, Memo. Or. at 1-2 (D. Del. Apr. 23, 2015). Judge Stark next denied without prejudice a motion to preclude impermissible expert testimony from lay witnesses during examination of inventors because His Honor found this to be “an issue best address in specific circumstances as they arise during trial.” Id. at 2. Judge Stark also precluded testimony from the defendant’s prior expert from the prior litigation between the parties, testimony that may be “an attempt to back door infringement or validity contentions” that the Court had previously stricken, and testimony regarding a prior jury’s finding of direct infringement of a patent of which defendant was accused of inducing infringement. Id. at 3-5.
Finally, Judge Stark granted a motion to preclude testimony that the accused products in this case are the same as those found to infringe in earlier litigation because the risk of unfair prejudice was too high. As explained above, the Court granted summary judgment of no willfulness, and the evidence was therefore not necessary for willfulness. His Honor also explained that the probative value was minimal with respect to inducement because the evidence related to a “different product used at a different time” and was “substantially outweighed by the risk of unfair prejudice arising from the inflammatory nature of PI’ s ‘copying’ evidence.” Finally, the evidence was not relevant to secondary considerations of obviousness because there was no obviousness defense with respect to the patent at issue. Id. at 2-3.