Fairchild Semiconductor Corporation et al v. Power Integrations Inc.

Filing 614

MEMORANDUM ORDER regarding motions in limine and other disputes in the PTO. Signed by Judge Leonard P. Stark on 10/31/18. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
______________________________________________________________________________
FAIRCHILD SEMICONDUCTOR
:
INTERNATIONAL INC. and
:
FAIRCHILD (TAIWAN) CORPORATION,
:
:
Plaintiffs,
:
:
v.
:
C.A. No. 12-540-LPS
:
POWER INTEGRATIONS INC.
:
:
Defendants.
:
__________________________________________:___________________________________
MEMORANDUM ORDER
At Wilmington this 31st day of October, 2018:
Having reviewed the proposed pretrial order submitted by Fairchild Semiconductor
International Inc. and Fairchild (Taiwan) Corporation (“Fairchild” or “Defendants”) and Power
Integrations, Inc. (“PI” or “Plaintiff”) (D.I. 606, 607) (“PTO”), 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 induced infringement. Even
were such evidence to be at all probative of whether Fairchild induced customers to infringe, the
risk of unfair prejudice to PI and of juror confusion – by introducing the jury to prior litigation
between the parties, prior jury infringement findings, and the existence and outcome of appellate
proceedings – substantially outweigh any relevance.
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Fairchild makes the following assertion: “If 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 rebut any assertion that Fairchild’s continued sales are
somehow improper and/or inherently inducing.” (PTO Ex. 12A Fairchild’s Opp. at 1-2)
(emphasis added) If PI 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 exclude argument, testimony, and other evidence concerning

the reasons for this retrial, is GRANTED. The parties agree that “the procedural history
precipitating this trial, including the previous jury instruction on inducement, the appeal in the
parties’ related case, and the Court’s order vacating the prior jury verdict,” should be excluded.
(Id. Ex. 12B PI Mot. at 1; see also Ex. 12B Fairchild Opp. at 1) The parties further agree that the
jury should be instructed that certain facts have been established. (See id. Ex. 12B Fairchild
Opp. at 1-2 & PI Reply at 1) Accordingly, the parties shall be prepared to discuss at the pretrial
conference (“PTC”) tomorrow the pertinent instruction and facts they propose should be read to
the jury.
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
of a tax strategy, is DENIED for the reasons stated at the pretrial conference in the related case.
(See C.A. No. 08-309 D.I. 983 at 38-40) The Court adopts and incorporates by reference its
analysis in denying the motion in the related case. The balance of competing considerations

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under Federal Rule of Evidence 403 does not substantially favor exclusion.
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, is GRANTED. Both
parties agree that they will not introduce argument or evidence regarding the existence or
outcomes of other cases, and further agree that they may use testimony from other cases without
mentioning the existence or outcomes of other litigations. (See PTO Ex. 13A Fairchild Mot. at
1, PI Opp. at 1, & Fairchild Reply at 1)
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 patent if and when they are used or sold in the U.S. (See,
e.g., PTO Ex. 13B Fairchild’s Mot. at 3 (“[Fairchild] agree[s] that the jury should be instructed
that products-at-issue infringe if they enter the United States.”); id. Power’s Opp. at 1 (“PI
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 of confusing 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 [Fairchild] induced any
infringing activity by those parties”) (PTO Ex. 13B Fairchild’s Mot. at 1) (see also Proposed
Preliminary Jury Instructions, D.I. 609 at 11-12) and what is not disputed in this trial (that the
products-at-issue do infringe if they enter the U.S.).

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6.

Fairchild’s MIL No. 3, to preclude PI from relying on any evidence or argument

regarding an award of royalties based on worldwide sales, is DENIED AS MOOT, based on PI’s
recent representations. (See D.I. 612)
The Court has identified other disputes in the PTO and, with respect to them, orders as
follows:
1.

The Court STRIKES both parties’ proposed ¶ 3. To the extent there is a dispute

as to what type of damages are being tried at the forthcoming trial, the parties shall be prepared
to address the issue at the PTC.
2.

The Court ADOPTS PI’s proposal for ¶ 23.

3.

The Court ADOPTS Fairchild’s proposal for ¶ 27.

4.

The proposed ¶ 28 is SUPPLEMENTED as follows: 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 of time it takes to
present the witness’ designated testimony.
5.

The Court ADOPTS PI’s proposal for ¶ 32: with respect to objections to expert

testimony as beyond the scope of prior 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.
6.

The Court ADOPTS PI’s proposal for ¶ 37.

7.

Each side will be allocated a total of six (6) hours for its trial presentation, an

amount the Court deems to be reasonable and appropriate given the disputes to be resolved at
this trial. The Court will reserve thirty (30) minutes of that time for closing argument. A party
may request to “draw” on some portion of that reserved time by making a specific request during

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trial and acknowledging that it is leaving itself relatively little time for closing argument. A
party may use more than thirty minutes for closing argument, provided it has such time
remaining. No party is required to use all of the time the Court allocates to it.

________________________________
HONORABLE LEONARD P. STARK
UNITED STATES DISTRICT COURT

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