Power Integrations Inc. v. Fairchild Semiconductor International Inc. et al

Filing 982

MEMORANDUM ORDER re Proposed Pretrial Order. Signed by Judge Leonard P. Stark on 10/25/2018. (etg)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

POAVER INTEGRATIONS,INC.
Plaintiff,
C.A. No.08-309-LPS

V.

FAIRCHILD SEMICONDUCTOR

INTERNATIONAL INC., FAIRCHILD
SEMICONDUCTOR CORPORATION,

and FAIRCHILD(TAIWAN)CORPORATION,
Defendants.

MEMORANDUM ORDER

At Wilmington this 25th day of October,2018:

Having reviewed the proposed pretrial order submitted by PlaintiffPower Integrations,

Inc.("PI" or "Plaintiff") and Defendants Fairchild Semiconductor International Inc., Fairchild
Semiconductor Corporation, and Fairchild (Taiwan)Corporation ("Fairchild" or "Defendants")

(D.I. 968,969)("PTO"), and subsequent submissions(D.I. 977,978,979,980),IT IS HEREBY
ORDERED that:

1.

Pi's motion in limine("MIL")No. 1, to preclude Fairchild from introducing

evidence or argument regarding patents no longer at issue in this case, is GRANTED. Whether
PI continued to manufacture, market, and sell its products after they were found at one point to

infringe a Fairchild patent is not relevant to whether Fairchild's actions with respect to its
products after they were found to infringe Pi's patents qualify as willful infnngement. Even were
such evidence to be at all probative of whether Fairchild willfully infringes, the risk of unfair

prejudice to PI and ofjuror confusion- by introducing the jury to prior litigation between the

parties, prior jury infringement findings, and the existence and outcome ofappellate proceedings
- substantially outweigh any relevance.

Fairchild makes the following assertion:

PI argues that a responsible company should

automatically cease selling accused products upon receipt of a complaint, during the pendency of
the litigation, or after an infringement verdict. Pi's parallel conduct is relevant and properly
admissible under Rules 402 and 403 to support the assertion that Fairchild's continued sales do
not demonstrate a reckless disregard or willfulness." (PTO Ex. 12A Fairchild's 0pp. at 1)

(emphasis added) IfPI does so, Fairchild will have an opportunity to seek appropriate relief.
Both sides should understand that the Court's pretrial rulings are subject to reevaluation should a

party open the door and materially alter the considerations the Court had before it prior to trial.
2.

Pi's MIL No. 2,to preclude Fairchild from relying upon any advice ofcounsel or

theoretical defenses, will be argued at the pretrial conference("PTC")tomorrow.

3.

Pi's MIL No. 3,to preclude Fairchild from relying on Pi's license agreements

with its Cayman Islands subsidiaries and from introducing evidence that these licenses were part
ofa tax strategy, will be argued at the PTC.

4.

Fairchild's MIL No. 1, to preclude PI from referring to the existence of, outcomes

in, and alleged bad acts specific to other litigations between the parties, will be argued at the
PTC.

5.

Fairchild's MIL No. 2,to preclude PI from using the term "infringing product," is

GRANTED. The parties agree that the accused products at issue in this case have been found to
infringe Pi's asserted United States patents if and when they are used or sold in the U.S. {See,

e.g., PTO Ex. 13B Fairchild's Mot. at 3("Defendants agree that the jury should be instructed that
products-at-issue infringe they enter the United States."); id. Power's 0pp. at 1 ("Power agrees
that the jury can and must be instructed that infringement only occurs when the products are

imported, sold, or used in the United States.")) While the Court does not intend to micromanage
counsel's and witnesses' language at trial, the Court concludes that terms such as "relevant

products" or "products-at-issue" will eliminate any risk ofconfusing or inflaming the jury. The
jury will be instructed (including during preliminary instructions) as to what is in dispute(and
which PI must prove; i.e.,"whether, when,and how much product entered the United States, who
brought it to the United States, and whether Defendants induced any infidnging activity by those
parties")(PTO Ex. 13B Fairchild's Mot. at 1)(see also Proposed Preliminary Jury Instructions,
D.I. 975 at 11-12) and what is not disputed in this trial (that the products-at-issue do infringe if
they enter the U.S.).

6.

Fairchild's MIL No. 3,to preclude PI from introducing prior testimony, is

DENIED AS MOOT. (See D.I. 977 H 3)

The Court has identified other disputes in the PTO and, with respect to them, orders as
follows:

1.

The Court sees no need to decide which party's proposed ^ 3 more appropriately

states aspects ofthe prior history ofthis litigation. Should either party feel that this dispute
requires resolution, that party should raise the issue at the PTC.
2.

The Court ADOPTS Fairchild's proposal for ^ 12: the list of uncontested facts

will not be admitted as an exhibit but either party may, with notice to the other party, read some
or all ofthe uncontested facts to the jury, and will be charged time for doing so.

3.

The Court ADOPTS FTs proposal for ^ 23.

4.

The Court ADOPTS Pi's proposal for ^ 24.

5.

The Court STRIKES proposed

28-29, as the dispute referenced there has been

mooted in connection with Fairchild's MIL No. 3.

6.

The parties shall be prepared to address the dispute in KH 31-32, regarding whether

deposition designations will be read or played by video, at the PTC.
7.

The Court STRIKES proposed H 33. The parties are jointly responsible for

providing the Court with the percentage allocations of any deposition testimony presented at trial.
The Court will apply those percentages to the amount oftime it takes to present the witness'
designated testimony.

8.

The Court ADOPTS Pi's proposal for 139: with respect to objections to expert

testimony as beyond the scope ofprior expert disclosures, the party losing on such an objection
will be charged for all time spent(by the parties and the Court)on such objection.
9.

The Court ADOPTS Pi's proposal for H 44, which is consistent with the Court's

standard procedures.
10.

The Court ADOPTS Fairchild's proposal for H 58.

11.

Among Fairchild's "Other Unresolved Evidentiary Issues," the following items on

Fairchild's list will be addressed, if at all, at trial(as Fairchild chose not to use any ofits three

MTT.S on them):(a),(b),(c),(e), and (f). The other disputes listed by Fairchild are either moot or
may be raised at the PTC tomorrow,if Fairchild wishes to do so.

12.
(PTC 1165)

The parties shall be prepared to discuss at the PTC their "Discovery" disputes.

13.

The parties shall also be prepared to address at the PTC their request for 13 hours

per side for trial. Whatever number of hours the Court allocates, it intends to reserve one(1)
hour ofthat time for closing argument. A party may request to "draw" on some portion ofthat

reserved hour by making a specific request during trial and acknowledging that it is leaving itself
relatively little time for closing argument. Subject to whatever overall allocation oftime the
Court provides, a party may use more than one hour for closing argument. Nor is any party
required to use all ofthe time the Court allocates to it.

14.

The parties shall also be prepared to discuss at the PTC their disputes regarding a

stipulation relating to the testimony of Kelley and Baker and their positions with respect to
admission of what,if any, evidence of prior litigations (including reexaminations) should be
permitted at the forthcoming trial.

HONORksLE LEONA^ P. STARI^
UNITED STATES DISTRICT COURT