Free Motion for Leave to File - District Court of Delaware - Delaware

Case 1 :04-cv-01371-JJF Document 389 Filed O9/26/2006 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
POWER INTEGRATIONS, INC., )
Plaintiff, )
v. ) C.A. No. 04-1371-JJF
FAIRCHILD SEMICONDUCTOR )
INTERNATIONAL, INC., and FAIRCHILD )
SEMICONDUCTOR CORPORATION,, )
Defendants. j
DEFENDANTS’ MOTION FOR LEAVE TO FILE A MOTION
FOR RECONSIDERATION AND CLARIFICATION
Defendants Fairchild Semiconductor International, Inc. and Fairchild Semiconductor
Corporation (referred to collectively herein as “Fairchi1d”) respectfully move forleave to file a
motion for reconsideration and clarification in the above action. The grounds for this motion are
as follows:
1. At the pretrial conference, the Court stated that the parties could file a motion for
leave to file one more motion in this action if “there is something that, you know, you get one of
those 3:00 in the morning wake—ups and you jump out of bed and it is that important". (9/14/06
Pretrial Conference Tr. (draft), p. 3, lns. 6-11). The motion which the Defendants are seeking
leave to tile is just such a motion.
2. In its Memorandum Opinion (D.I. 384), the Court limited Fairchild to 7 prior art
references. Because the issue of limiting Fairchild’s use of prior art arose for the first time in
Power Integrations’ Opposition to Fairchi1d’s Motions in Limine, for which the filing of reply

Case 1 :04-cv-01371-JJF Document 389 Filed O9/26/2006 Page 2 of 4
briefs was not permitted, Fairchild has not had the opportunity to be heard on this issue. It
wishes to file the attached letter brief (Tab 1) in order to have that opportunity.
3. Fairchild is not seeking unlimited use of prior art for purposes of trial. It is
seeking instead a reasonable and workable limitation on prior art that will not "gut" its case.
4. Fairchild respectfully considers the attached request for reconsideration and
clarification to be an urgent matter as: (i) it would be a "clear error of law" to exclude prior art
without considering whether the exclusion prejudices Fairchild’s substantive rights;
(ii) exclusion of all but 7 pieces of prior art from Fairchild’s invalidity case is prejudicial because
it severely limits Fai.rchild’s obviousness defense; (iii) exclusion of all but 7 pieces of prior art
from Fairchild’s invalidity case is prejudicial because it effectively dismisses two of Fairchild’s
counterclaims without a basis to warrant such an extreme sanction; (iv) exclusion of all but 7
pieces of prior art from Fairchild’s non-infringement case is prejudicial because it conflates the
prior art relied on to construe claims for the purposes of non-infringement with the prior art
relied upon for proving invalidity; and (v) it introduces prejudicial jury confusion into Fairchild’s
defense of reliance upon opinion of counsel.
5. In a related issue, Fairchild’s proposed request also respectfully seeks clarification
of the need for librarian testimony to authenticate the prior art that it intends to rely on in its
invalidity case. Fairchild is of the view that no such authentication is required, but given the risk
that it would not be able to introduce this evidence if it is mistaken, it urgently needs clarification
on this matter. Although this would seem to be only a housekeeping matter, in light of the
shortness of time to trial, and the magnitude of the task of obtaining such testimony, Fairchild
respectiiilly seeks clarification on this issue.
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Case 1 :04-cv-01371-JJF Document 339 Filed O9/26/2006 Page 3 of 4
5. Accordingly, Fairchild respectfully requests that the Court enter its proposed
order granting it leave to tile the attached request reconsideration and clarification.
ASHBY & GEDDES
/s/ John G. Day
Steven J. Balick (I.D. #2114)
John G. Day (I.D. #2403)
Tiffany Geyer Lydon (LD. #3 950)
222 Delaware Avenue, 17th Floor
P.O. Box 1 150
Wilmington, Delaware 19899-1150
Telephone: (302) 654-1888
[email protected]
j [email protected]
[email protected]
j Attorneys for Dekndants Fairchild Semiconductor
International, Inc. and Fairchild Semiconductor,
Corp.
Of Counsel:
G. Hopkins Guy, III
Vickie L. Feeman
Bas de Blank
Brian H. VanderZanden
Orrick, Herrington & Sutcliffe LLP
1000 Marsh Road
Menlo Park
(650) 614-7400
Dated: September 26, 2006
172586.1
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Case 1 :04-cv-01371-JJF Document 389 Filed O9/26/2006 Page 4 of 4
CERTIFICATE OF SERVICE
I hereby certify that on the 26m day of September, 2006, the attached DEFENDANTS’
MOTION FOR LEAVE TO FILE A MOTION FOR RECONSIDERATION AND
CLARIFICATION was served upon the below-named counsel of record at the address and in
the manner indicated:
William J. Marsden, Jr., Esquire HAND DELIVERY
Fish & Richardson, P.C.
919 N. Market Street
Suite 1100
Wilmington, DE 19801
Frank E. Scherkenbach, Esquire VLA. FEDERAL EXPRESS
Fish & Richardson P.C.
225 Franklin Street
Boston, MA 02110-2804
Howard G. Pollack, Esquire VIA FEDERAL EXPRESS
Fish & Richardson P.C.
500 Arguello Street, Suite 500
Redwood City, CA 94063
/s/John G. Day
John G. Day