Power Integrations, Inc. v. On Semiconductor Corp.

396 F.Supp.3d 851

POWER INTEGRATIONS, INC., Plaintiff,

v.ON SEMICONDUCTOR CORPORATION, et al., Defendants.

Case No. 16-cv-06371-BLF

United States District Court, N.D. California, San Jose Division.

Signed August 7, 2019

Filed August 22, 2019

Howard Glenn Pollack, Michael Richard Headley, Fish & Richardson P.C., Redwood City, CA, Brian Patrick Boyd, Pro Hac Vice, Sabrina Dawn Wilson, Pro Hac Vice, Fish and Richardson P.C., Atlanta, GA, Frank Everett Scherkenbach, Whitney Allyse Reichel, Pro Hac Vice, Fish & Richardson P.C., Boston, MA, Warren Keith Mabey, Jr., Pro Hac Vice, Fish and Richardson P.C., Wilmington, DE, for Plaintiff.

Brett Jason Thompsen, Pro Hac Vice, Nicholas Alfred Schuneman, Pro Hac Vice, Roger Fulghum, Pro Hac Vice, Baker Botts L.L.P., Seth Adam Lindner, Pro Hac Vice, Vinson and Elkins LLP, Austin, TX, Bryan Joseph Wilson, Colette Reiner Mayer, Morrison & Foerster LLP, Jon Vensel Swenson, Baker Botts L.L.P., Palo Alto, CA, Joshua D Engel, Pro Hac Vice, Phoenix, AZ, for Defendants.

ORDER GRANTING IN PART, DENYING IN PART, AND FINDING MOOT IN PART ON'S MOTION FOR SUMMARY JUDGMENT; GRANTING IN PART AND DENYING IN PART PI'S MOTION FOR SUMMARY JUDGMENT

[Re: ECF 221, 224]

BETH LABSON FREEMAN, United States District Judge This case is just one of many in a long line of disputes between Power Integrations, Inc. ("PI") on the one hand and ON Semiconductor Corporation and Semiconductor Components Industries, LLC (collectively, "ON") (and their subsidiaries) on the other. In this consolidated action, each party sues the other for infringement of various patents. PI sues ON for infringement of seven patents: U.S. Patent Nos. 6,212,079 ("the '079 Patent") ; 8,115,457 ("the '457 Patent") ; 7,239,119 ("the '119 Patent") ; 7,538,533 ("the '533 Patent") ; 6,297,623 ("the '623 Patent") ; 6,414,471 ("the '471 Patent") ; and 6,249,876 ("the '876 Patent") (collectively, "PI's Asserted Patents"). See PI Compl., ECF 1; PI Ans., ECF 100. ON sues PI for infringement of eight patents: U.S. Patent Nos. 6,333,624 ("the '624 Patent") ; 6,429,709 ("the '709 Patent") ; RE39,933 ("the '933 Patent") ; RE41,908 ("the '908 Patent") ; RE45,862 ("the '862 Patent") ; 6,597,221 ("the '221 Patent") ; 7,944,272 ("the '272 Patent") ; and 7,447,601 ("the '601 Patent") (collectively, "ON's Asserted Patents"). ON Third Am. Compl., ECF 94. Each party also asserts declaratory judgment claims, counterclaims, or affirmative defenses of invalidity and non-infringement as to the other parties' asserted patents. PI Ans.; ON Third Am. Compl.; ON Second Am. Ans., ECF 96.

Presently before the Court are the parties' motions for summary judgment. ON Mot., ECF 221; PI Mot., ECF 224. Each party seeks to summarily adjudicate several distinct issues in the case. The Court held a hearing on the motions on June 6, 2019. For the reasons set forth below, ON's motion is GRANTED IN PART, DENIED IN PART, AND FOUND MOOT IN PART and PI's motion is GRANTED IN PART AND DENIED IN PART.

I. LEGAL STANDARD

Federal Rule of Civil Procedure 56 governs motions for summary judgment. Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (citing Fed. R. Civ. P. 56(c) ).

The moving party "bears the burden of showing there is no material factual dispute," Hill v. R+L Carriers, Inc. , 690 F. Supp. 2d 1001, 1004 (N.D. Cal. 2010), by "identifying for the court the portions of the materials on file that it believes demonstrate the absence of any genuine issue of material fact," T.W. Elec. Serv. Inc. v. Pac. Elec. Contractors Ass'n , 809 F.2d 626, 630 (9th Cir. 1987). Once the moving party has satisfied this initial burden, the non-moving party must then "identify with reasonable particularity the evidence that precludes summary judgment." Keenan v. Allan , 91 F.3d 1275, 1279 (9th Cir. 1996) ; see also Schneider v. TRW, Inc. , 938 F.2d 986, 991 (9th Cir. 1991). It is not the duty of the district court to "to scour the record in search of a genuine issue of triable fact." Keenan , 91 F.3d at 1279 (quoting Richards v. Combined Ins. Co. , 55 F.3d 247, 251 (7th Cir. 1995) ). Moreover, the court makes no credibility determinations and does not weigh the evidence. "The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 254, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ; see also Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). For a court to find that a genuine dispute of material fact exists, "there must be enough doubt for a reasonable trier of fact to find for the [non-moving party]." Corales v. Bennett , 567 F.3d 554, 562 (9th Cir. 2009). If the non-moving party fails to make this showing, the moving party is entitled to summary judgment. Celotex , 477 U.S. at 323, 106 S.Ct. 2548.

II. DISCUSSION

The Court first addresses ON's motion and then turns to PI's motion. The Court provides the facts relevant to each issue in the respective issue's subsection.

A. ON's Motion for Summary Judgment (ECF 221)

ON moves for summary judgment of six issues: (1) whether the asserted claims of PI's '623 Patent, '533 Patent, and '457 Patent are invalid for indefiniteness; (2) whether PI's damages period is limited to the time of filing of its claims for each asserted patent because PI failed to provide ON with pre-suit notice of its claims of infringement; (3) whether in inter partes review ("IPR") PI disclaimed the claim scope of its '079 Patent, such that ON's accused products do not infringe the asserted claims; (4) whether ON's accused products do not infringe the '079 Patent because they do not meet the "fixed switching frequency" requirement of the asserted claims; (5) whether the asserted claims of PI's '471 Patent are invalid as anticipated by U.S. Patent No. 4,413,224 ("the '224 Patent") to Krupka; and (6) whether PI can prove infringement of claim 1 of PI's '876 Patent even though its infringement contentions and expert reports do not address the version of the claim that was amended in reexamination during the pendency of this action. See ON Mot. at 1–2.

The Court addresses each issue in turn.

1. Invalidity of PI's '623, '533, and '457 Patents for Indefiniteness

ON first asks the Court to enter summary judgment on the asserted claims of the '623 Patent, the '533 Patent, and the '457 Patent because the Court held the asserted claims indefinite in its claim construction order. ON Mot. at 2 (citing ECF 196 at 19–21, 27–31, and 33–36; ECF 198). PI does not oppose this request. PI Opp. at 1, ECF 238.

"A lack of definiteness renders invalid ‘the patent or any claim in suit.’ " Nautilus, Inc. v. Biosig Instruments, Inc. , 572 U.S. 898, 902, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014) (quoting 35 U.S.C. § 282, ¶ 2(3) (2006 ed.)). Because the Court has held that all asserted claims of these three patents are indefinite, the Court holds that the asserted claims are invalid and thus GRANTS ON's motion for summary judgment on this issue.

2. PI's Damages Period and Pre-Suit Notice

ON asks the Court to hold that the damages periods for infringement by ON of PI's patents (the '079, '876, '471, and '119 Patents ) began when PI first filed claims for infringement of each asserted patent. ON argues that 35 U.S.C. § 287 dictates this result because PI neither marked its products with the asserted patent numbers nor otherwise notified ON of any alleged infringement prior to PI's filing claims on each patent.

Section 287 requires patentees and those selling patented products in the United States to mark their products in specific ways in order to provide notice that the products are patented. If a patentee or seller does not comply with this requirement, Section 287(a) limits his or her rights in certain ways:

In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.

35 U.S.C. § 287(a). Under this subsection, "notice" means actual notice, which "requires the affirmative communication of a specific charge of infringement by a specific accused product or device." Amsted Indus. Inc. v. Buckeye Steel Castings Co. , 24 F.3d 178, 187 (Fed. Cir. 1994).

PI does not dispute that it did not mark its products. See PI Opp. at 1–4; ON Mot., Ex. B at 241, ECF 221-3 (testimony by PI's president and CEO stating that he does not believe PI marked its products). And PI does not present any evidence with respect to any other notice of ON's infringement of the '119 Patent. As such ON's motion is GRANTED with respect to the notice date of the '119 Patent, which is the first date on which PI filed a claim for infringement of this patent against ON.¹

However, PI argues that the damages periods for the '079, '876, and '471 Patents are not limited to the date of filing of the relevant claims. PI's arguments as to the '079 and '876 Patents differ from its arguments as to the '471 Patent. The Court discusses each set of arguments in turn.

a. '079 and '876 Patents

PI argues that the damages periods for the '079 and '876 Patents began on June 16, 2014 (before PI's filing of the relevant claims). On June 16, 2014, PI's CEO Balu Balakrishnan sent an email to ON's CEO Keith Jackson which stated in relevant part that PI's "initial review of [ON's product] NCP1246 data sheet indicates that patent numbers ending in 079, 457 and[ ] 851 and/or 876 are infringed." ON Mot., Ex. D, ECF 221-5; ...