Free Order - District Court of Delaware - Delaware

Case 1:04-cv-01371-JJF Document 553 Filed O9/20/2007 Page 1 of 3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
POWER INTEGRATIONS, INC., a :
Delaware corporation, :
Plaintiff, :
v. : C.A. No. 04-1371-JJF
FAIRCHILD SEMICONDUCTOR :
INTERNATIONAL, INC., a Delaware :
corporation, and FAIRCHILD :
SEMICONDUCTOR CORPORATION, a z
Delaware corporation, :
Defendants. :
MEMORANDUM ORDER
At the Pretrial Conference in the above—captioned matter,
the Court requested the parties to submit letter briefs regarding
jury instructions. Specifically, the Court asked the parties to
address whether the statutory presumption of validity is weakened
as a result of the Supreme Court’s decision in KSR v. Teleflex, a
127 S. Ct. 1727 (2007), and whether the jury should be instructed
that Fairchild has been found to infringe the patents in suit. i
The Court has considered the Supreme Court’s decision in KSR k
i
in light of the parties' arguments (D.I. 540, 542, 549l), and -
concludes that it does not alter the statutory presumption of
‘ Fairchild filed a second letter regarding jury
instructions reiterating all the arguments made in the first §
letter and adding additional arguments concerning the jury g
instructions related to obviousnessness, differences over the ‘
prior art, the level of ordinary skill, reason to combine, and
hindsight. Power Integrations has responded to this letter. The
Court will resolve issues related to the remaining jury
instructions at the Prayer Conference.

Case 1:04-cv-01371-JJF Document 553 Filed O9/20/2007 Page 2 of 3
validity. Indeed, the Supreme Court expressly stated that it was
not addressing the question of whether a failure to disclose
prior art during the prosecution voids the presumption of
validity given to issued patents. 127 S. Ct. at 1745 (“We need
not reach the question whether the failure to disclose Asano
during the prosecution of Engelgau voids the presumption of
validity given to the issued patents, for claim 4 is obvious
despite the presumption.”). In dicta following that statement,
the Supreme Court noted that the “rationale underlying the
presumption — that the PTO, in its expertise, has approved the
claim — seems much diminished hgre." IQ; (emphasis added). The
Supreme Court's statement makes it plain that its comments were
limited to the facts of the case before it, and thus, were not
intended to affect the state of the presumption as a whole.
To the extent that Fairchild wishes to make an argument to
the jury that, on the facts of this case, the prior art was not -
disclosed, and therefore, the presumption of validity is more ”
easily overcome, the Court concludes that such argument would be A
appropriate. Indeed, Power Integrations acknowledged the §
propriety of such an argument at the Pretrial Conference in light 5
of existing Federal Circuit precedent. (D.I. 538 at 6-20.) E
However, the Court will not provide the jury with any instruction '
altering the presumption of validity or the burden of proof,
because the Court does not read KS3 to have changed the state of
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Case 1:04-cv-01371-JJF Document 553 Filed O9/20/2007 Page 3 of 3
the existing law in that regard.
As for the question of what, if anything, the jury should be
instructed regarding infringement, the Court has previously
concluded in the context of the parties' motions in limine that
the jury should not be informed of the first trial or its
outcome. Accordingly, the Court will offer no instruction on
infringement.
It is SO ORDERED.
. ,. " . . . Q ,. ..
S@ CE:m.b@I` 2 O 07 3 ,· .
DATE DISTRICT gum E

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