Free Case Transferred In - District Transfer - District Court of Delaware - Delaware

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2 AO 120 (Rev. 3/04)

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REPORT ON THE FILING OR DETERMINATION OF AN ACTION REGARDING A PATENT OR TRADEMARK
G Patents or

TO:

Mail Stop 8 Director of the U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been filed in the U.S. District Court DOCKET NO. PLAINTIFF

Marshall, Texas 4/11/2006

on the following

G Trademarks:

2:06cv151

DATE FILED

U.S. DISTRICT COURT DEFENDANT

Marshall, Texas

PATENT OR TRADEMARK NO. 1 2 3 4 5

DATE OF PATENT OR TRADEMARK

HOLDER OF PATENT OR TRADEMARK

In the above--entitled case, the following patent(s)/ trademark(s) have been included: DATE INCLUDED PATENT OR TRADEMARK NO. 1 2 3 4 5 INCLUDED BY

G Amendment DATE OF PATENT OR TRADEMARK

G Answer

G Cross Bill

G Other Pleading

HOLDER OF PATENT OR TRADEMARK

In the above--entitled case, the following decision has been rendered or judgement issued: DECISION/JUDGEMENT

CLERK

(BY) DEPUTY CLERK

DATE

Copy 1--Upon initiation of action, mail this copy to Director Copy 3--Upon termination of action, mail this copy to Director Copy 2--Upon filing document adding patent(s), mail this copy to Director Copy 4--Case file copy

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FAIRCHILD SEMICONDUCTOR, CORPORATION, a Delaware Corporation, and INTERSIL CORPORATION, a Delaware Corporation, Plaintiffs. vs. POWER INTEGRATIONS, INC. a Delaware Corporation, Defendants. § § § § § § § § § § § § §

CIVIL ACTION NO. 2-06-CV-151

NOTICE OF APPEARANCE The following designated attorney hereby enters an appearance as additional counsel of record for Plaintiffs Fairchild Semiconductor, Corporation and Intersil Corporation, and is authorized to receive service on all pleadings, notices, orders and other papers in the abovecaptioned matter on behalf of Plaintiffs. Michael C. Smith State Bar No. 18650410 THE ROTH LAW FIRM 115 N. Wellington, Suite 200 Marshall, Texas 75670 Telephone: (903) 935-1665 Facsimile: (903) 935-1797 Email: [email protected]

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Respectfully submitted,

______________________________________ Carl R. Roth, Texas Bar No. 901984225 [email protected] Michael C. Smith, Texas Bar No. 900641877 [email protected] THE ROTH LAW FIRM, P.C. 115 North Wellington, Suite 200 P.O. Box 876 Marshall, Texas 75671 Tel: (903) 935-1665 Fax: (903) 935-1797

ORRICK, HERRINGTON & SUTCLIFFE LLP G. Hopkins Guy, III (Calif. SBN 124811) Vickie Feeman (Calif. SBN 177487) Bas de Blank (Calif. SBN 191487) Brian Vander Zanden (Calif. SBN 233134) 1000 Marsh Road Menlo Park, CA 94025 (650) 614-7400 Attorneys for Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION and INTERSIL CORPORATION SHORE CHAN, L.L.P. Michael Shore, Texas Bar No. 18294915 [email protected] Jeffrey R. Bragalone, Texas Bar No. 02855775 [email protected] 325 North St. Paul, Suite 4450 Dallas, Texas 75201 Tel: (214) 593-9110 Fax: (214) 593-9111 ATTORNEYS FOR INTERSIL CORPORATION

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CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) this 12th day of April, 2006. Any other counsel of record will be served by facsimile transmission and/or first class mail. .

____________________________

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, And INTERSIL CORPORATION, a Delaware Corporation v. POWER INTEGRATIONS, INC. a Delaware Corporation § § § § § § § § §

C.A. No. 2:06cv151 (TJW) JURY

NOTICE OF APPEARANCE OF COUNSEL FOR DEFENDANT POWER INTEGRATIONS, INC. Defendant, POWER INTEGRATIONS, INC., files this Notice of Appearance of Counsel, and hereby notifies the Court that Michael E. Jones of the law firm Potter Minton, A Professional Corporation, 110 N. College, Suite 500, Tyler, Texas 75702, is appearing as counsel in the above-referenced matter. All pleadings, discovery, correspondence and other material should be served upon counsel at the address referenced above.

Respectfully submitted, /s/ Michael E. Jones Michael E. Jones State Bar No. 10929400 [email protected] POTTER MINTON A Professional Corporation 110 N. College, Suite 500 Tyler, Texas 75702 903/597-8311 903/593-0846 Facsimile ATTORNEYS FOR POWER INTEGRATIONS, INC.

NOTICE OF APPEARANCE OF COUNSEL Page 1 of 2
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CERTIFICATE OF SERVICE I hereby certify that all counsel of record who have consented to electronic service and are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV5(a)(3) on this the 21ST day of April, 2006. Any other counsel of record will be served by first class mail.

/s/ Michael E. Jones Michael E. Jones

___

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, And INTERSIL CORPORATION, a Delaware Corporation v. POWER INTEGRATIONS, INC. a Delaware Corporation § § § § § § § § §

C.A. No. 2:06cv151 (TJW) JURY

AGREED MOTION FOR EXTENSION OF TIME TO ANSWER, MOVE OR OTHERWISE RESPOND POWER INTEGRATIONS, INC. moves the Court for an extension of time to answer, move or otherwise respond to FAIRCHILD SEMICONDUCTOR CORPORATION and INTERSIL CORPORATION's Original Complaint, and would respectfully show the Court as follows: 1. Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION and INTERSIL

CORPORATION, filed their Original Complaint against POWER INTEGRATIONS on or about April 11, 2006 [Dkt. 1]. 2. The issues involved in this case are such that POWER INTEGRATIONS, INC.

requires additional time to prepare a response. 3. POWER INTEGRATIONS, INC. respectfully requests an extension of time to

answer, move or otherwise respond, in any manner whatsoever, to Plaintiffs' Original Complaint, up to and including June 1, 2006. 4. Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION and INTERSIL

CORPORATION, are not opposed to said extension of time to answer, move or otherwise respond.

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WHEREFORE, PREMISES CONSIDERED, POWER INTEGRATIONS, INC. prays that the Court grant this Agreed Motion for Extension of Time by extending the time period for POWER INTEGRATIONS, INC. to answer or otherwise respond to Plaintiff's Complaint until June 1, 2006. Respectfully submitted,

/s/ Michael E. Jones MICHAEL E. JONES State Bar No. 10929400 POTTER MINTON A Professional Corporation 110 N. College, Suite 500 (75702) P. O. Box 359 Tyler, Texas 75710 (903) 597 8311 (903) 593 0846 (Facsimile) [email protected] ATTORNEYS FOR DEFENDANT POWER INTEGRATIONS, INC. CERTIFICATE OF CONFERENCE I certify that Michael Headley, counsel for Power Integrations, has conferred with Guy Hopkins, counsel for plaintiffs, and that Guy Hopkins states that plaintiffs are unopposed to the relief sought in this motion. /s/ Michael E. Jones Michael E. Jones CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on May 1, 2006. Any other counsel of record will be served by facsimile transmission and first class mail. /s/ Michael E. Jones Michael E. Jones

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, And INTERSIL CORPORATION, a Delaware Corporation v. POWER INTEGRATIONS, INC. a Delaware Corporation § § § § § § § § §

C.A. No. 2:06cv151 (TJW) JURY

ORDER GRANTING POWER INTEGRATION'S AGREED MOTION FOR EXTENSION OF TIME TO ANSWER, MOVE OR OTHERWISE RESPOND ON THIS DAY, came on to be considered the Agreed Motion for Extension of Time to Answer, Move or Otherwise Respond to the Original Complaint of Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION and INTERSIL CORPORATION in the above-styled and numbered cause up to and including June 1, 2006. After considering said motion, the Court is of the opinion that said motion should be GRANTED. IT IS THEREFORE ORDERED that POWER INTEGRATION shall have up to and including June 1, 2006 to answer, move or otherwise respond in any manner whatsoever to Plaintiffs', FAIRCHILD SEMICONDUCTOR CORPORATION and INTERSIL

CORPORATION's Original Complaint [Dkt. 1].

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, And INTERSIL CORPORATION, a Delaware Corporation v. POWER INTEGRATIONS, INC. a Delaware Corporation § § § § § § § § §

C.A. No. 2:06cv151 (TJW) JURY

ORDER GRANTING POWER INTEGRATION'S AGREED MOTION FOR EXTENSION OF TIME TO ANSWER, MOVE OR OTHERWISE RESPOND ON THIS DAY, came on to be considered the Agreed Motion for Extension of Time to Answer, Move or Otherwise Respond to the Original Complaint of Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION and INTERSIL CORPORATION in the above-styled and numbered cause up to and including June 1, 2006. After considering said motion, the Court is of the opinion that said motion should be GRANTED. IT IS THEREFORE ORDERED that POWER INTEGRATION shall have up to and including June 1, 2006 to answer, move or otherwise respond in any manner whatsoever to Plaintiffs', FAIRCHILD SEMICONDUCTOR CORPORATION and INTERSIL

CORPORATION's Original Complaint [Dkt. 1]. SIGNED this 2nd day of May, 2006.

__________________________________________ T. JOHN WARD UNITED STATES DISTRICT JUDGE

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS

FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, INTERSIL AMERICAS, INC., a Delaware corporation and INTERSIL CORPORATION, a Delaware corporation Plaintiff, v. POWER INTEGRATIONS, INC., a Delaware corporation, Defendants.

JURY CIVIL ACTION NO. 2:06-cv-151

PLAINTIFFS' AMENDED COMPLAINT Plaintiffs FAIRCHILD SEMICONDUCTOR CORPORATION (hereinafter, "Fairchild"), INTERSIL AMERICAS, INC. and INTERSIL CORPORATION, (Intersil Americas, Inc. and Intersil Corp. are collectively "Intersil") by and through their undersigned counsel, hereby alleges as follows: THE PARTIES 1. Fairchild Semiconductor Corporation is a Delaware corporation with its principal

place of business in South Portland, Maine. 2. Intersil Corporation is a Delaware corporation with its principal place of business

in Milpitas, California. 3. Intersil Americas, Inc. is a Delaware corporation with its principal place of

business in Milpitas, California. 4. Power Integrations, Inc. is a Delaware is a Delaware corporation with its principal

place of business in San Jose, California.

US_WEST:23083832.3

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JURISDICTION AND VENUE 5. This is an action arising under the patent laws of the United States, Title 35 of the

United States Code. This court has jurisdiction over the subject matter of this action pursuant to 28 U.S.C. §§ 1331 and 1338(a). 6. Upon information and belief, this Court has personal jurisdiction over the

defendant because Power Integrations sells the accused devices within this district. 7. Upon information and belief, venue is proper in the Court pursuant to 28 U.S.C.

§ 1391(b) and (c) and § 1400 as the defendant is subject to personal jurisdiction in this district. FIRST CAUSE OF ACTION INFRINGEMENT OF U.S. PATENT NO. 5,264,719 8. herein. 9. U.S. Patent No. 5,264,719 (the "`719 Patent"), entitled High Voltage Lateral The allegations of paragraphs 1-7 are incorporated as though fully set forth

Semiconductor Device, duly and lawfully issued on November 23, 1993 and was assigned to Harris Corporation. A true and correct copy of the `719 Patent is attached hereto as Exhibit A. 10. Upon information and belief, on or about September 27, 1999 the `719 Patent was A true and correct copy of that

assigned by Harris Corporation to Intersil Corporation. assignment is attached as Exhibit B. 11.

Upon information and belief, on or about April 14, 2006, Intersil Corporation

changed its name to Intersil Communications, Inc. A true and correct copy of the restated certificate of incorporation is attached as Exhibit C. 12. Upon information and belief, on or about April 14, 2006 the `719 Patent was

assigned by Intersil Communications, Inc. to Intersil Americas, Inc. A true and correct copy of that assignment is attached as Exhibit D. 13. On or about March 30, 2006, Fairchild Semiconductor Corporation and Intersil

Corporation entered into a Patent License Agreement that gave Fairchild the right to assert the

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`719 Patent against Power Integrations. A redacted copy of that Patent License Agreement is attached as Exhibit E. 14. On or about May 17, 2006, Fairchild Semiconductor Corporation, Intersil

Corporation, and Intersil Americas, Inc. entered into a Supplemental Agreement effective March 30, 2006 that gave Fairchild the right to assert the `719 Patent against Power Integrations. A true and correct copy of that Supplemental Agreement is attached as Exhibit F. 15. Upon information and belief, Power Integrations has been and is now infringing

the `719 Patent, both literally and under the doctrine of equivalents, by making, using, selling, offering for sale, and importing devices and products in the United States covered by one ore more claims of the `719 Patent. 16. Upon information and belief, Power Integrations has been and is now inducing

infringement and contributing to the infringement of the `719 Patent, both literally and under the doctrine of equivalents, by inducing or contributing to the making, using, selling, offering for sale, and importing by others devices and products in the United States covered by one or more claims of the `719 Patent. 17. Power Integrations' infringement has caused irreparable injury to Fairchild and

Intersil and will continue to cause irreparable injury until Power Integrations is enjoined from further infringement by the Court. PRAYER FOR RELIEF WHEREFORE, FAIRCHILD and INTERSIL pray for the following relief: A. Judgment by the Court that Power Integrations directly infringes the `719 Patent; B. Judgment by the Court that Power Integrations induces or contributes to others' infringement of the `719 Patent; C. Preliminary and permanent injunctive relief pursuant to 35 U.S.C. § 283 enjoining Power Integrations, its officers, agents, servants, employees, successors, assigns and all other persons or entities acting in concert or participation with Power Integrations or on Power Integrations' behalf from further infringement of the `719 Patent; -3US_WEST:23083832.3

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D. Money damages sustained as a result of Power Integrations' infringement of the `719 Patent; E. Costs and reasonable attorneys' fees incurred in connection with this action pursuant to 35 U.S.C. § 285; and, F. Such other relief as the Court finds just and proper.

DEMAND FOR JURY TRIAL Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Fairchild Semiconductor Corporation and Intersil Corporation hereby demand a trial by jury on this action.

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Respectfully submitted by,

________________________________ ORRICK, HERRINGTON & SUTCLIFFE LLP G. Hopkins Guy, III (SBN 124811) Bas de Blank (SBN 191487) 1000 Marsh Road Menlo Park, CA 94025 (650) 614-7400 Carl R. Roth, Texas Bar No. 901984225 [email protected] Michael C. Smith, Texas Bar No. 900641877 [email protected] THE ROTH LAW FIRM, P.C. 115 North Wellington, Suite 200 P.O. Box 876 Marshall, Texas 75671 Tel: (903) 935-1665 Fax: (903) 935-1797 Attorneys for Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION, INTERSIL CORPORATION, and INTERSIL AMERICAS, INC. SHORE CHAN, L.L.P. Michael Shore, Texas Bar No. 18294915 [email protected] Jeffrey R. Bragalone, Texas Bar No. 02855775 [email protected] 325 North St. Paul, Suite 4450 Dallas, Texas 75201 Tel: (214) 593-9110 Fax: (214) 593-9111 Attorneys for Plaintiffs, INTERSIL CORPORATION, and INTERSIL AMERICAS, INC.

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CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) this 19th day of May, 2006. Any other counsel of record will be served by facsimile transmission and/or first class mail.

____________________________________ Michael C. Smith

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, INTERSIL CORPORATION, a Delaware Corporation, and INTERSIL AMERICAS, INC., a Delaware Corporation v. POWER INTEGRATIONS, INC. a Delaware Corporation § § § § § C.A. No. 2:06cv151 (TJW) § JURY § § § §

UNOPPOSED MOTION FOR EXTENSION OF TIME TO ANSWER, MOVE OR OTHERWISE RESPOND TO PLAINTIFFS' AMENDED COMPLAINT POWER INTEGRATIONS, INC. moves the Court for an extension of time to answer, move or otherwise respond to FAIRCHILD SEMICONDUCTOR CORPORATION, INTERSIL CORPORATION, and INTERSIL AMERICAS, INC.'s Amended Complaint, and would respectfully show the Court as follows: 1. Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION and INTERSIL

CORPORATION, filed their Original Complaint against POWER INTEGRATIONS on or about April 11, 2006 [Dkt. 1]. 2. Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION, INTERSIL

CORPORATION and INTERSIL AMERICAS, INC. filed their Amended Complaint against POWER INTEGRATIONS on or about May 19, 2006 [Dkt. 8]. 3. The issues involved in this case are such that POWER INTEGRATIONS, INC.

requires additional time to prepare a response. 4. POWER INTEGRATIONS, INC. respectfully requests an extension of time to

answer, move or otherwise respond, in any manner whatsoever, to Plaintiffs' Amended

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Complaint, up to and including June 19, 2006, and POWER INTERGRATIONS, INC. agrees not to seek any further extension of time to respond to the Amended Complaint. 5. Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION, INTERSIL

CORPORATION and INTERSIL AMERICAS, INC. are not opposed to said extension of time to answer, move or otherwise respond. WHEREFORE, PREMISES CONSIDERED, POWER INTEGRATIONS, INC. prays that the Court grant this Unopposed Motion for Extension of Time by extending the time period for POWER INTEGRATIONS, INC. to answer or otherwise respond to Plaintiff's Amended Complaint until June 19, 2006. Respectfully submitted,

/s/ Michael E. Jones MICHAEL E. JONES State Bar No. 10929400 POTTER MINTON A Professional Corporation 110 N. College, Suite 500 (75702) P. O. Box 359 Tyler, Texas 75710 (903) 597 8311 (903) 593 0846 (Facsimile) [email protected] ATTORNEYS FOR DEFENDANT POWER INTEGRATIONS, INC. CERTIFICATE OF CONFERENCE I certify that Michael Headley, counsel for Power Integrations, has conferred with Guy Hopkins and Bas de Blank, counsel for Plaintiffs, and that Bas de Blank states that Plaintiffs are unopposed to the relief sought in this motion. /s/ Michael E. Jones

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CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on June 2, 2006. Any other counsel of record will be served by facsimile transmission and first class mail.

/s/ Michael E. Jones Michael E. Jones

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, INTERSIL CORPORATION, a Delaware Corporation, and INTERSIL AMERICAS, INC., a Delaware Corporation v. POWER INTEGRATIONS, INC. a Delaware Corporation § § § § § § C.A. No. 2:06cv151 (TJW) § JURY § § §

ORDER GRANTING POWER INTEGRATIONS' UNOPPOSED MOTION FOR EXTENSION OF TIME TO ANSWER, MOVE OR OTHERWISE RESPOND TO PLAINTIFFS' AMENDED COMPLAINT ON THIS DAY, came on to be considered the Unopposed Motion for Extension of Time to Answer, Move or Otherwise Respond to the Amended Complaint of Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION, INTERSIL CORPORATION and INTERSIL

AMERICAS, INC. in the above-styled and numbered cause up to and including June 19, 2006. After considering said motion, the Court is of the opinion that said motion should be GRANTED. IT IS THEREFORE ORDERED that POWER INTEGRATIONS shall have up to and including June 19, 2006 to answer, move or otherwise respond in any manner whatsoever to Plaintiffs', FAIRCHILD SEMICONDUCTOR CORPORATION, INTERSIL CORPORATION and INTERSIL AMERICAS, INC.'S Amended Complaint [Dkt. 8].

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, INTERSIL CORPORATION, a Delaware Corporation, and INTERSIL AMERICAS, INC., a Delaware Corporation v. POWER INTEGRATIONS, INC. a Delaware Corporation § § § § § § C.A. No. 2:06cv151 (TJW) § JURY § § §

ORDER GRANTING POWER INTEGRATIONS' UNOPPOSED MOTION FOR EXTENSION OF TIME TO ANSWER, MOVE OR OTHERWISE RESPOND TO PLAINTIFFS' AMENDED COMPLAINT ON THIS DAY, came on to be considered the Unopposed Motion for Extension of Time to Answer, Move or Otherwise Respond to the Amended Complaint of Plaintiffs, FAIRCHILD SEMICONDUCTOR CORPORATION, INTERSIL CORPORATION and INTERSIL

AMERICAS, INC. in the above-styled and numbered cause up to and including June 19, 2006. After considering said motion, the Court is of the opinion that said motion should be GRANTED. IT IS THEREFORE ORDERED that POWER INTEGRATIONS shall have up to and including June 19, 2006 to answer, move or otherwise respond in any manner whatsoever to Plaintiffs', FAIRCHILD SEMICONDUCTOR CORPORATION, INTERSIL CORPORATION and INTERSIL AMERICAS, INC.'S Amended Complaint [Dkt. 8]. SIGNED this 9th day of June, 2006.

__________________________________________ T. JOHN WARD UNITED STATES DISTRICT JUDGE

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS

FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, INTERSIL AMERICAS, INC., a Delaware corporation and INTERSIL CORPORATION, a Delaware corporation Plaintiffs, v. POWER INTEGRATIONS, INC., a Delaware corporation. Defendant

§ § § § § § § § § § § § § §

2:06cv-151 (TJW) POWER INTEGRATIONS, INC.'S ANSWER JURY TRIAL DEMANDED

POWER INTEGRATIONS, INC.'S ANSWER TO PLAINTIFFS' FIRST AMENDED COMPLAINT Pursuant to Rule 8 of the Federal Rules of Civil Procedure, Defendant Power Integrations, Inc. ("Power Integrations") hereby responds to the Amended Complaint of Fairchild Semiconductor Corporation (hereinafter, "Fairchild"), Intersil Americas, Inc. (hereinafter, "Intersil Americas") and Intersil Corporation, (hereinafter, "Intersil") (collectively, "Plaintiffs"). Power Integrations denies each and every allegation contained in the Amended Complaint that is not expressly admitted below. Any factual allegation admitted below is admitted only as to the specific admitted facts, not as to any purported conclusions, characterizations, implications, or speculations that arguably follow from the admitted facts. Power Integrations denies that Plaintiffs are entitled to the relief requested or any other. THE PARTIES 1. On information and belief, Power Integrations admits the allegations of Paragraph

1 of the Amended Complaint.

POWER INTEGRATIONS INC.'S ANSWER ­ PAGE 1

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2.

On information and belief, Power Integrations admits the allegations of Paragraph

2 of the Amended Complaint. 3. On information and belief, Power Integrations admits the allegations of Paragraph

3 of the Amended Complaint. 4. Power Integrations admits that it is a Delaware corporation having a principal

place of business in San Jose, California. JURISDICTION AND VENUE 5. In response to Paragraph 5 of the Amended Complaint, Power Integrations admits

that the Amended Complaint purports to state a cause of action under the patent laws of the United States, Title 35 U.S.C. § 1 et seq., and that this Court has subject matter jurisdiction over patent cases pursuant to 28 U.S.C. §§ 1331 and 1338(a). Power Integrations denies the remaining allegations of Paragraph 5 of the Amended Complaint. 6. Power Integrations admits this Court has personal jurisdiction over Power

Integrations. As Plaintiffs have yet to identify any accused devices, though, Power Integrations lacks sufficient knowledge to admit or deny the remaining allegations of Paragraph 6 of the Amended Complaint, and therefore denies those allegations. 7. Power Integrations denies the allegations of Paragraph 7 of the Amended

Complaint; Fairchild lacks standing to sue Power Integrations, and venue is not proper in this District because the parties are already litigating the technology raised in the Amended Complaint in another case in the District of Delaware, C.A. No. 04-1371 JJF. Plaintiffs did not comply with Local Rule SV-42(a) when they failed to identify the Delaware litigation as a related case on the Civil Cover Sheet filed in this matter, but Power Integrations is moving concurrently to dismiss or transfer this matter to Delaware. CAUSES OF ACTION 8. In reply to paragraph 8 of the Amended Complaint, Power Integrations realleges

Paragraphs 1 through 7 above, as though fully set forth herein.

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9.

Power Integrations admits that U.S. Patent No. 5,264,719 (the "'719 Patent") is

entitled "High Voltage Lateral Semiconductor Device," that the '719 patent indicates on its face that it issued on November 23, 1993, and that the '719 patent indicates on its face that it was assigned to Harris Corporation. Otherwise, Power Integrations lacks sufficient knowledge to admit or deny the allegations of Paragraph 9 of the Amended Complaint, and therefore denies those allegations. 10. Power Integrations lacks sufficient knowledge to admit or deny the allegations of

Paragraph 10 of the Amended Complaint, and therefore denies those allegations. 11. Power Integrations lacks sufficient knowledge to admit or deny the allegations of

Paragraph 11 of the Amended Complaint, and therefore denies those allegations. 12. Power Integrations lacks sufficient knowledge to admit or deny the allegations of

Paragraph 12 of the Amended Complaint, and therefore denies those allegations. 13. Power Integrations specifically denies that Fairchild has the right to assert the

'719 patent against Power Integrations. Otherwise, Power Integrations lacks sufficient knowledge to admit or deny the allegations of Paragraph 13 of the Amended Complaint, and therefore denies those allegations. 14. Power Integrations specifically denies that Fairchild has the right to assert the

'719 patent against Power Integrations. Otherwise, Power Integrations lacks sufficient knowledge to admit or deny the allegations of Paragraph 14 of the Amended Complaint, and therefore denies those allegations. 15. Complaint. Power Integrations denies the allegations in Paragraph 15 of the Amended

POWER INTEGRATIONS INC.'S ANSWER ­ PAGE 3

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16. Complaint. 17. Complaint.

Power Integrations denies the allegations in Paragraph 16 of the Amended

Power Integrations denies the allegations in Paragraph 17 of the Amended

AFFIRMATIVE DEFENSES 18. In addition to any affirmative defenses described below, Power Integrations

specifically reserves the right to allege any additional affirmative defenses as they become known through the course of discovery. First Affirmative Defense (Non-Infringement) 19. Power Integrations does not infringe and has not infringed (literally, under the

doctrine of equivalents, contributorily, or by inducement) any valid and enforceable claim of the '719 patent. Second Affirmative Defense (Invalidity) 20. The '719 Patent is invalid because each fails to satisfy the conditions for

patentability specified in Title 35 of the United States Code, including but not limited to sections 102, 103 and 112. Third Affirmative Defense (Unenforceability-Estoppel) 21. Plaintiffs are barred by the doctrine of equitable estoppel from enforcing the '719

Patent against Power Integrations. Fourth Affirmative Defense (Unenforceability-Unclean Hands)

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22.

Plaintiffs are barred by Plaintiffs' unclean hands from enforcing the '719 Patent

against Power Integrations. Fifth Affirmative Defense (Unenforceability-Laches) 23. Plaintiffs are barred by the doctrine of laches from enforcing the '719 Patent

against Power Integrations. Sixth Affirmative Defense (Unenforceability-Patent Misuse) 24. misuse. WHEREFORE, Power Integrations prays for judgment as follows: 1. 2. 3. That Plaintiffs' Amended Complaint be dismissed with prejudice; That Plaintiffs take nothing by reason of their Amended Complaint; That the '719 Patent, and all of its claims, be adjudged and declared invalid, Plaintiffs' claims against Power Integrations are barred by Plaintiffs' patent

unenforceable, and not infringed by Power Integrations; 4. That Plaintiffs, and all persons acting on their behalf or in concert with them, be

permanently enjoined and restrained from charging, orally, or in writing that the '719 Patent is infringed by Power Integrations, directly or indirectly; 5. That the Court find this action exceptional under 35 U.S.C. § 285 and award

Power Integrations its costs, expenses and reasonable attorney fees incurred as a result of this action; and 6. That Power Integrations be awarded such other and further relief as the Court may

deem appropriate. JURY DEMAND Power Integrations demands a trial by jury of any issues triable of right by a jury.

POWER INTEGRATIONS INC.'S ANSWER ­ PAGE 5

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Dated: June 19, 2006

Respectfully submitted, FISH & RICHARDSON P.C.

By: /s/ Michael E. Jones Michael E. Jones State Bar No. 10929400 mikejones@potterminton POTTER MINTON A Professional Corporation 110 N. College, Suite 500 Tyler, TX 75702 Telephone: (903) 597-8311 Facsimile: (903) 593-0846 OF COUNSEL Frank E. Scherkenbach [email protected] FISH & RICHARDSON 225 Franklin Street Boston, MA 02110-2804 Tel: 617-542-5070 Fax: 617-542-8906 Attorneys for Defendant POWER INTEGRATIONS, INC.

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CERTIFICATE OF SERVICE The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on June 19, 2006. Any other counsel of record will be served by facsimile transmission and first class mail. /s/ Michael E. Jones Michael E. Jones

POWER INTEGRATIONS INC.'S ANSWER ­ PAGE 7

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, and INTERSIL CORPORATION, a Delaware corporation, Plaintiffs, v. POWER INTEGRATIONS, INC., a Delaware corporation, Defendants.

C.A. No. 2:06-CV-151 (TJW)

POWER INTEGRATIONS' MOTION TO DISMISS OR, IN THE ALTERNATIVE, TO TRANSFER THIS CASE TO DELAWARE Fairchild does not have standing to prosecute this case because it does not own U.S. Patent No. 5,264,719 ("the '719 patent") and is not the exclusive licensee of the patent. Fairchild's recent efforts to buy a cause of action on the '719 patent from Intersil are insufficient as a matter of law, and no amount of hand-waving on the part of the plaintiffs can cure that fatal defect. Therefore, pursuant to Rule 12(b)(1) of the Federal Rules of Civil Procedure, Power Integrations hereby moves to dismiss this case for lack of standing. In the alternative, Power Integrations asks that the Court transfer this action to the District of Delaware, where the parties are already engaged in a dispute regarding the '719 patent. Specifically, the parties are seeking to determine whether the '719 patent was conceived before a Power Integrations patent asserted in the Delaware action. The Delaware case is set for trial this year, and all parties in the present suit are involved in the Delaware matter--Power

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Integrations is the Delaware plaintiff, Fairchild Semiconductor is the defendant, and Intersil is a third party alleging prior inventorship and working with Fairchild to attempt to prove prior inventorship. As a result, this District is not the proper venue in which to address the '719 patent. I. FACTUAL BACKGROUND On October 20, 2004, Power Integrations, Inc. ("Power Integrations") filed suit against Fairchild Semiconductor International, Inc. and Fairchild Semiconductor Corporation (collectively "Fairchild") in the District Court for the District of Delaware, alleging infringement of four U.S. patents. [See Declaration of Mike Jones ("Jones Decl.") Ex. A.1] Fairchild claims that one of the four patents, U.S. Patent No. 4,811,075 ("the '075 patent"), is invalid in view of the '719 patent, the only patent asserted in this case. Fairchild and Power Integrations have taken extensive discovery with respect to the '719 patent in the Delaware action, and the dispute in Delaware turns on who was the first to invent the technology in the '075 and '719 patents. A Delaware jury will resolve this critical issue later this year, as the trial on validity issues is set to begin on December 4. [Ex. B (Pretrial Conference Tr.) at 30-31.] During the course of the Delaware litigation, Fairchild bought a license "to enforce" the '719 patent against a single entity: Power Integrations. [See Fairchild's Amended Complaint ("Amended Complaint") Ex. E.] By the terms of the March 30, 2006 agreement, Intersil granted Fairchild "the sole and exclusive right . . . to assert, litigate and prosecute claims of [i]nfringement under the ['719] patent[] against [Power Integrations]." [Amended Complaint Ex. E (Patent License Agreement of Mar. 30, 2006 ("PLA")) at §§ 1.2, 3.1.] However, Fairchild's hunting license does not provide any underlying right beyond the right to sue--it
1

All citations are to the accompanying Declaration of Mike Jones, unless noted otherwise.

2

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does not grant Fairchild the exclusive right to make, use, or sell the alleged invention of the '719 patent.2 On April 11, 2006, Fairchild issued a press release announcing the license and the institution of this suit, noting that Fairchild "recently secured exclusive rights to assert the ['719] patent against Power Integrations." [Ex. C (April 11, 2006 Press Release ­ Fairchild Semiconductor Files Patent Infringement Lawsuit Against Power Integrations, Inc.).] On May 18, 2006, Intersil and Fairchild executed a Supplemental Agreement attempting to modify the PLA to make yet another entity, Intersil Americas, the original party to the PLA. [Amended Complaint Ex. F (Agreement of May 18, 2006).] None of these actions conferred standing on Fairchild. II. LEGAL AUTHORITY To have standing to assert patent infringement, "the plaintiff must demonstrate that it held enforceable title to the patent at the inception of the lawsuit." Paradise Creations, Inc. v. U V Sales, Inc., 315 F.3d 1304, 1308 (Fed. Cir. 2003). Where the plaintiff lacks a cognizable injury at the time it filed suit, such defect in standing cannot be cured after the inception of the lawsuit. Id. at 1310. In order to bring an action for damages resulting from infringement, the patentee must not only have legal title to the patent, but must have been its owner at the time of the infringement. Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 49 (1923); Arachnid, Inc. v. Merits Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991) ("[O]ne seeking to recover money damages for infringement of a United States patent . . . must have held legal title to the patent during the time of the infringement."); Heidelberg Harris, Inc. v. Loebach, 145 F.3d 1454, 1458 (Fed. Cir. 1998) ("[A] plaintiff cannot sue for patent infringement occurring prior to
2

As part of a broader cross-license with Intersil, Fairchild took a license to practice the '719 patent in certain limited capacities several years ago. But that license is not exclusive and, as Fairchild has implicitly acknowledged by entering into at least two later agreements specific to the '719 and Power

3

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the time the plaintiff actually obtained legal title to the asserted patent."); Mas-Hamilton Group v. Lagard, Inc., 156 F. 3d 1206, 1210 (Fed. Cir. 1998) (only the holder of legal title to a patent at the time of the infringement can bring an action for damages resulting from that infringement) (dictum). A patentee may divide its "bundle of rights" and convey, or share, the right to sue infringers. The patentee may, by instrument in writing, assign, grant, convey (1) the entire patent, (2) an undivided part or share of the entire patent, or (3) all rights under the patent in a specified geographical region. Waterman v. Mackenzie, 138 U.S. 252, 255 (1891). Such transfers constitute an assignment, and they vest the assignee with title in the patent and a right to sue infringers, either as sole plaintiff or as co-plaintiff depending on the nature and extent of the rights conferred. Id. However, a transfer of less than one of these three interests is a mere license, giving the licensee no title in the patent, and no right to sue for infringement in the licensee's own name. Id. Fairchild has none of these three interests. A narrow exception to the rule that only patentees and successors in interest may sue for infringement applies when a party obtains an exclusive license to a patent and holds "all substantial rights" under the patent. See Textile Mead Productions, Inc. v. Mead Corp., 134 F.3d 1481, 1483-85 (Fed. Cir. 1998); Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 875 (Fed. Cir. 1991). To establish independent standing as an exclusive licensee, though, a party must have received both the right to exclude others from making, using or selling the patented technology and the patent holder's promise that no other party may practice the patented technology. Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1552 (Fed. Cir. 1995).

Integrations, has no bearing on the instant dispute. Plaintiffs have not asserted--and cannot assert-- that the earlier Fairchild-Intersil license in any way confers standing in this case.

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However, this narrow exception does not apply to non-exclusive licensees; even if the patent holder is a party to the suit, a non-exclusive licensee does not have independent standing to sue for infringement. Kalman v. Berlyn Corp., 914 F.2d 1473, 1481-82 (Fed. Cir. 1990) (stating a non-exclusive licensee lacks standing to sue for infringement even if joined with the patent holder and further noting that no "licensee who joins the patentee [has] standing to sue an infringer"). Furthermore, a non-exclusive licensee who has not been granted the right to exclude others has no legally recognized interest that would entitle it to bring or join an infringement action. Abbott Lab. v. Diamedix Corp., 47 F.3d 1128, 1131 (Fed. Cir. 1995). A licensee may only bring an infringement suit to protect a property interest it received from the patentee. See Ortho Pharmaceutical Corp. v. Genetics Institute, Inc., 52 F.3d 1026, 1034 (1995) ("[I]t is the licensee's beneficial ownership of a right to prevent others from making, using, or selling the patented technology that provides the foundation for co-plaintiff standing."). Thus, a contract clause cannot by itself grant standing to a licensee if the licensee would otherwise not have standing to bring the suit. Id. ("[A] right to sue clause cannot negate the requirement that . . . a licensee must have beneficial ownership of some of the patentee's proprietary rights."). II. ARGUMENT A. Fairchild Does Not Have Standing and Cannot Sue Power Integrations on the '719 Patent.

Fairchild has no standing to sue for infringement because Fairchild is not, and never was, the patentee or successor in interest to the '719 patent, and at no time has Fairchild held all substantial rights to the patent. Patent standing rules are strict: a party seeking to recover for alleged patent infringement must either have held legal title to the patent at the time of the alleged infringement, or have been assigned the right to recover for that infringement by the legal 5
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title holder together with an assignment of all substantial rights under the patent. Crown Die & Tool Co., 261 U.S. at 49; Ortho Pharm., 52 F.3d at 1034. Only a patentee may bring an action for patent infringement, and Fairchild is not the patentee. Legal title appears to have been held at all times by Intersil, making Intersil the only party with any right to recover for alleged patent infringement, regardless of Fairchild's purported "license to enforce" the patent against Power Integrations. To overcome the rule that only patentees and successors in interest may sue for infringement, Fairchild would need an exclusive license and to demonstrate a sufficient proprietary injury to one of the rights that flows from the patent. Rite-Hite, 56 F.3d at 1552. In essence, though, Fairchild has a "bare license," because it has no exclusive right to keep others from making, using, or selling products making use of the patented technology, and Fairchild suffers no legally cognizable harm when a third-party makes, uses, or sells the patented technology. See Abbott, 47 F.3d at 1131. As noted above, a bare licensee has no standing at all. See Rite-Hite, 56 F.3d at 1552; Ortho Pharm., 52 F.3d at 1034. Fairchild therefore has no legally recognized interest that entitles it to bring or join an infringement action. Intersil's contractual grant of the "exclusive right to sue" is not sufficient to confer standing to Fairchild. "A patentee may not give a right to sue to a party who has no proprietary interest in the patent." Ortho Pharm., 52 F.3d at 1034 (collecting cases describing non-exclusive licensees lack standing to enforce a patent); Rite-Hite, 56 F.3d at 1553. See also Phila. Brief Case Co. v. Specialty Leather Prods. Co., 145 F. Supp. 425, 429-30 (D.N.J. 1956), aff'd, 242 F.2d 511 (3rd Cir. 1957) (contract clause cannot give right to sue where licensee would otherwise have no such right). The Patent License Agreement attempts to convey to Fairchild "the sole and exclusive right . . . to assert, litigate and prosecute claims of [i]nfringement under 6
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the ['173 and '719] patents against [Power Integrations]" [Amended Complaint Ex. E (Patent License Agreement of Mar. 30, 2006) at §§ 1.2, 3.1], but the license agreement simply cannot supersede the legal requirement that the licensee have all substantial rights in order to have standing to sue for infringement. Moreover, Intersil's presence in this suit does not overcome Fairchild's lack of independent standing. Adding the patent holder as a co-plaintiff would only defeat a challenge on the grounds of standing if Fairchild had the exclusive rights to make, use and sell the patented technology, Abbott, 47 F.3d at 1131, but as Fairchild does not have such exclusive rights, it lacks standing to bring a cause of action for infringement. The Court should therefore dismiss this action for lack of standing. B. If the Court Does Not Dismiss This Action, It Should Transfer the Case to Delaware to Be Resolved In The Court Which is Already Addressing the Patent-in-Suit.

In the alternative, Power Integrations asks the Court to transfer this action to the United States District Court for the District of Delaware, where a previously filed case involving the same parties and an identical dispute regarding who was first to invent the technology is already pending. As noted above, the parties are already involved in a case pending in the District of Delaware regarding the same patent and technology as the present lawsuit. There is a substantial overlap between this action and the Delaware case set for trial this December, as the outcome of both suits depends on the Delaware case's inventorship findings. Both the Fifth Circuit and the Federal Circuit both follow a first-to-file rule for cases having substantial overlap. Further, the interest of justice suggests transfer under the federal venue statute. Therefore, if the Court does not dismiss this case outright, it should transfer to the matter to Delaware.

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1.

The Key Issue With Respect to the Sole Patent-in-Suit, an Inventorship Dispute, is Already Before the Delaware Court.

In support of its invalidity claim with respect to the '075 patent in Delaware, Fairchild asserted that the '719 patent, the only patent in this case, is key invalidating prior art to the '075 patent. [Ex. D (Fairchild Rog response).] Fairchild and Power Integrations have taken extensive discovery with respect to the '719 patent, and the dispute in Delaware turns on who was the first to invent the technology in the '075 and '719 patents. The Delaware Jury will resolve this critical issue later this year. The '719 Patent was filed on May 24, 1991, over four years after the '075 Patent's April 1987 filing date. During prosecution of the '719 patent, the Applicant copied large portions of the claims of the '075 patent into the '719 patent. [Ex. E ("[A]lthough not identically copied, [the claim] is considered to be generic to the invention defined in claim 1 of U.S. Patent No. 4,811,075 to Eklund." (underlining in original)).] A brief comparison of claim 8 of the '719 Patent to claim 1 of the '075 Patent demonstrates this copying of the '075 patent claim language. [Appendix 1; Ex. F-G.] Thus, the same questions regarding conception and inventorship that are central to the Delaware trial would also arise in this suit. 2. The First-To-File Rule Compels the Transfer of This Case.

In patent cases, "the forum of the first-filed case is favored, unless considerations of judicial and litigant economy, and the just and effective disposition of disputes, require otherwise." Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993), overruled on other grounds, Wilton v. Seven Falls, Inc., 515 U.S. 277 (1995); accord Save Power Ltd. v. Syntek Fin. Corp., 121 F.3d 947, 950 (5th Cir. 1997) ("The Fifth Circuit adheres to the general rule that the court in which an action is first filed is the appropriate court to determine whether 8
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subsequently filed cases involving substantially similar issues should proceed.") The Federal Circuit regards the application of the first-to-file rule as an issue that "is important to national uniformity in patent practice." Genentech, 998 F.2d at 937. Application of the rule requires a three-part analysis by the court in a later-filed action: 1. The court must confirm that the case before it was filed later than an earlier case in another district. Genentech, 998 F.2d at 937; accord Syntek, 121 F.3d at 950-51. The court must then determine whether the earlier-filed case is likely to raise issues that substantially overlap with the case on its own docket. Syntek, 121 F.3d at 950-51. If so, the court must transfer the action before it to the first-filed court unless it finds that it would be "unjust or inefficient" to do so. Genentech, 998 F.2d at 938; accord Mann Mfg., Inc. v. Hortex, Inc., 439 F.2d 403 (5th Cir. 1971) (transfer required absent "compelling" reasons to favor later action).

2.

3.

After the second case is transferred, the first-filed court decides whether that later action "must be dismissed, stayed, or transferred and consolidated." Sutter Corp. v. P&P Indus., Inc., 125 F.3d 914, 920 (5th Cir. 1997). In favoring transfer of related cases, the rule is designed to avoid the waste and duplication that would result from piecemeal resolution of similar issues. West Gulf Maritime Assoc. v. ILA Deep Sea Local 24, 751 F.2d 721, 728-29 (5th Cir. 1985); cf. Optical Recording Corp. v. Capitol-EMI Music, Inc., 803 F. Supp. 971 (D. Del. 1992) (proceeding with later-filed case because the Delaware court was already familiar with the technology and patents at issue in both cases). a. The Delaware Action Is The First-Filed Action

Power Integrations filed suit against Fairchild on October 20, 2004, in Delaware, over 17 months before the current action was brought. Fairchild has not only answered the complaint in the Delaware case, but the parties have already conducted extensive discovery, are finished with 9
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claim construction, and have completed technical expert discovery. In fact, the parties recently had a pre-trial conference, and the Delaware Court provided trial dates for later this year (September for some issues and December for others). [Ex. B at 30-31.] b. There Is Substantial Overlap in the Subject Matter of the Patents at Issue.

Cases do not need to have exactly the same subject matter to meet the "substantial overlap" test. "[R]egardless of whether or not the suits . . . are identical, if they overlap on the substantive issues, the cases would be required to be consolidated in . . . the jurisdictio