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REDACTED 1. INTRODUCTION Fairchild's post trial brief regarding inequitable conduct presents a boilerplate claim that is not supported by the requisite clear and convincing evidence. Several of Fairchild's theories are, in fact, frivolous on their face and show that Fairchild has brought them to put off still further enforcement of the jury's verdict. The Court should reject Fairchild's claims and, finally, allow Power Integrations the benefit of its statutory right to exclude, which has been intentionally flouted by Fairchild for years now. With respect to the '876 patent, Fairchild asserts that the Court should infer an allegedly material public disclosure despite the uncontroverted testimony that no such disclosure took place until long after the '876 patent was filed. Fairchild's continued assertion of inequitable conduct in the face of the actual evidence is frivolous. With respect to the '851 patent, Fairchild relies on only part of a statement by the Patent and Trademark Office ("PTO") regarding what was not shown in the art, asserting that Power Integrations' agreement with the entire, complete statement was an intentional attempt to mislead the PTO. Not only does this argument defy logic and ignore the plain meaning of the relevant statements, it further ignores that Power Integrations had already disclosed three separate references with the same conventional element (an oscillator that provides a maximum duty cycle signal) that Fairchild asserts the PTO was mislead into believing was missing from the art. Fairchild takes a similar approach with the respect to the '366 patent, relying on an alleged failure to disclose devices that either did not have a soft-start function at all or had the same conventional soft start functionality which Power Integrations had already disclosed to the PTO. Fairchild can only make these arguments by distorting the record and ignoring all of the evidence contrary to its fanciful theories of fraud. With respect to the '075 patent, Fairchild's argument likewise ignores the evidence, including (1) its own expert's concession that Dr. Eklund "certainly" described the key art in question in the background section of the '075 patent itself, and (2) that Mr. Beasom, who copied

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PWM

Moreover, Power Integrations also disclosed an article by Pelly et al. from 1983, and Figure 4 of the Pelly article also shows an oscillator with a maximum duty cycle signal. Again, Dr. Horowitz could not deny this was the case. [PX-19 at PIF08770; D.I. 561 (Trial Tr. 9/24/07) at 163:20-165:9.] The examiner initialed each of these prior art references. [See DX-106 at FCS0000410-13.] Because all three of these references showed an oscillator with a maximum duty cycle signal, disclosure of the SMP21 l's datasheet to show the same thing would have been cumulative and unnecessary. Moreover, even if Power Integrations had not disclosed the three prior art references, the examiner would have been aware of oscillators having maximum duty cycle signals because they were well known in the prior art. Dr. Horowitz, stated in cross examination that "[o]ne of skill in the art at the time knew about techniques such as what was practiced in the SMP211." [D.I. 557 (Trial Tr. 9/19/07) at 810:14-18.] And, during direct examination, Dr. Horowitz agreed that the SMP211 was nothing more than an example of something well known in the prior art. [D.I. 557 (Trial Tr. 9/19/07) at 737:15-738:9 ("[A]s a prior art example that just shows the typical way of doing them. We have the SMP211.").] Given the extensive testimony regarding the ubiquitous understanding in the prior art of oscillators that generated a maximum duty cycle signal, and the disclosure of the same in two prior Power Integrations patents as well as the Pelly article from more than fifteen years prior to the filing of the '8 51 patent, any failure to disclose the SMP211 cannot be considered material, because its disclosure would have been merely cumulative to the other art of record.

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relying on insinuations that do not rise to the clear and convincing evidence necessary to render an issued patent unenforceable.' 8 B. Dr. Eklund Described the Relevant Art in the Specification.

Dr. Eklund explained the state of the art and summarized it in the background section of the patent. Dr. Eklund does not dispute that he knew about and had copies of the art Fairchild now relies upon when he invented the technology of the '075 patent, including the Wakaumi and Ludikhuize references Fairchild emphasizes so heavily. As Dr. Eklund explained, though, he disclosed the relevant teachings of the art, including those two references, in the background section of the specification to his patent. Specifically, at column 1, lines 15-50, Dr. Eklund's patent explains the prior art and its significant limitations. As Dr. Eklund testified at trial, this description included an averaging of the performance characteristics of the art in his possession at that time, which provided a base line against which to demonstrate the significant improvements of the claimed invention. [D.I. 560 (Trial Tr. 9/21/07) at 5:21-6:1, 7:14-21, 13:12-20, 16:13-17:5, 18:2-9, 19:8-14, 25:19-26:15.] The Court need not take Power Integrations' or Dr. Eklund's word that this background section was sufficient to disclose the prior art structures in question-Fairchild's expert Dr. Peter Gwozdz admitted that Dr. Eklund's description "certainly" disclosed the structure of conventional high voltage MOS transistors like the kind on which Fairchild now bases its argument. [D.I. 556 (Trial Tr. 9/18/07) at 542:13-21.] Thus, though it may not be apparent to the untrained eye that Dr. Eklund's description in the background discloses the structures now at issue, that fact is not truly in dispute. The disclosure also belies any inference that Dr. Eklund intended to deceived the patent office by withholding these references. See Ruiz, 234 F.3d at 670; see also Vandenberg, 740 F.2d at 1568-69.

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Fairchild suggests in one of its argument subheadings that the Wakaumi reference provides a basis for finding that Dr. Eklund made an affirmative misrepresentation during prosecution, see D.I. 585 at 12, subheading III(D)(3), but, as explained below, Fairchild's own expert concedes that Dr. Eklund "certainly" disclosed conventional devices with extended drain regions in the specification of the '075 patent. The Court should therefore reject Fairchild's insinuation that Dr. Eklund made any misrepresentations on this issue during prosecution. 30

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Perhaps most importantly, but overlooked entirely in Fairchild's brief, is the fact that James Beasom-who copied Dr. Eklund's claim into a later patent application verbatim-knew about the same art Fairchild relies on here, but did not cite it during prosecution of his own patent - not even by describing it, as Dr. Eklund did, in his patent specification - and does not believe it taught his invention. There is no dispute that Mr. Beasom knew about the art in question during the prosecution of his patents-Mr. Beasom presented at the IEDM conferences during the very sessions when the Wakaumi and Ludikhuize papers were presented in 1982 and 1983. [D.I. 556 (Trial Tr. 9/18/07) at 298:8-304:19.] Nevertheless, Mr. Beasom did not submit the Wakaumi or Ludikhuize articles (or any articles, IEDM or otherwise) to the patent office during the prosecution of his patents. [Id.] When asked about these references at trial, Mr. Beasom admitted the references did not disclose his invention [id.], and Mr. Beasom also confirmed that an extended drain region going both ways from the drain, as described in the references in question, was "quite common" in the art. [Id. at 304:20-306:4.] Mr. Beasom also admitted that he would not submit references disclosing such common structures when applying for patents. [Id. at 306:5-16.] Because Fairchild offered Mr. Beasom as a witness and relied heavily on his testimony at trial, Mr. Beasom's testimony-and Fairchild's complete silence as to his evaluation of the art as conventional-is perhaps most telling of the fact that the references Fairchild accuses Dr. Eklund of hiding were not material and had no bearing on the '075 patent. Mr. Beasom's and Dr. Gwozdz's admissions regarding the conventional nature of the art and the disclosure in the background of the '075 patent should have ended the inquiry, and it certainly disposes of the bulk of Fairchild's arguments. But Fairchild has plowed ahead with its conspiracy theories and insinuations of fraudulent intent, so Power Integrations must debunk those regrettable accusations below. Before addressing the details of those arguments, though, it is worth reiterating that Fairchild must both (1) ignore the disclosure in the specification and (2) dissect Dr. Eklund's invention out of existence, to suggest the patented technology was in fact disclosed in the art. As the Court is well aware, though, the jury rejected Fairchild's efforts to separate the whole of Dr. Eklund's invention from its parts. Despite Fairchild's efforts to slice 31

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and dice the prior art, Fairchild could not find a single anticipatory public reference, and the jury rejected Fairchild's claim that the '075 patent was obvious in view of the prior art. C. The Art Fairchild Relies on Was Conventional.

The art Fairchild raises in its brief does not come close to teaching the invention of the '075 patent, and Fairchild's arguments do not demonstrate a case for rendering the '075 patent unenforceable. Contrary to Fairchild's assertion, the art in question teaches only that which was well-known as set forth in the patent's background section, and the articles would not have changed the examiner's evaluation of Dr. Eklund's claims. The heart of Dr. Eklund's invention lies in its novel combination of elements-in particular the extended drain extending laterally each way from the drain to surface adjoining positions, in conjunction with the surface adjoining later on top of the extended drain region on each side of the drain (the latter of which is often referred to as the "PTOP"). These elements together allowed a combination of high and low voltage MOS devices on the same chip with at least a 2-3X improvement over the prior technologies. There is no dispute that the notion of a top layer, or an extended drain region, or efforts to integrate high and low voltage MOS devices were present in the prior art to varying degrees, but nobody thought of the way to combine the key elements as claimed-much less suggested such a combination-before Dr. Eklund's invention. The only way for Fairchild to argue that the invention was taught in the prior art in any material way-a contention the jury rejected-is to misrepresent the claimed invention, the art, or both. The Court should reject Fairchild's efforts to rewrite history in this manner. First, Fairchild relies heavily on the suggestion that the Wakaumi reference was material to patentability and renders the '075 patent unenforceable, but Fairchild's own expert conceded at trial that Wakaumi showed a typical example of prior art MOS transistors. [D.I. 556 (Trial Tr. 9/18/07) at 541:16-542:21.] Indeed, as noted above, when asked about the specific disclosure in the background section of the '075 patent in the context of Wakaumi, Fairchild's expert conceded that Dr. Eklund "certainly" told the Patent Office about a structure like Wakaumi. [Id. at 542:13-21.] This alone establishes that Wakaumi provides no basis for a finding of 32

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inequitable conduct. And, as noted above, Mr. Beasom concurred with the view that Wakaumi was conventional, and he did not disclose it to the PTO when seeking his own patent on the same high-voltage structure. [Id. at 299:20-302:9; DX-67 ('719 patent).] Moreover, the evidence shows that Wakaumi is significantly different from the '075 invention technically, and it therefore would not have added to the examiner's evaluation of Dr. Eklund's invention. As Power Integrations' expert explained at trial, Take the Wakaumi references here, it doesn't have a top drain. It doesn't have a top layer with extended drain. It's not a - it doesn't show symmetrical drain, it doesn't have optimized high voltage and low voltage MOS transistors, high voltage transistors is very, very poor. In fact, you may have seen earlier where Dr. Eklund used this to show how superior his invention was with respect to this. This does have an extra shield in the process . In fact, the whole paper has got nothing to do with Dr. Eklund' s ideas. [D.I. 559 (Trial Tr. 9/21/07) at 1387:24-1388:12.] Even Fairchild now admits that Wakaumi is missing two of the key parts of Dr. Eklund's invention-"the `P-TOP' and extension of the drain `each way' (as opposed to one way) from the drain contact pocket." [D.I. 585 at 11.] Fairchild cannot credibly argue that Wakaumi-showing a device its own expert concedes was disclosed in the background of the '075 patentrenders the patent unenforceable. Fairchild's focus on the Ludikhuize reference is equally unavailing. First and foremost, Ludikhuize was among the prior art summarized and disclosed in the background section of the patent, as addressed above with respect to the Wakaumi reference. [D.I. 560 (Trial Tr. 9/21/07) at 17:22-18:9 and 30:4-11.] Moreover, Fairchild's own expert conceded that Ludikhuize describes fundamentally different bipolar process technology than that of the '075 patent (and that of Wakaumi and Beasom). [D.I. 557 (Trial Tr. 9/19/07) at 563:22-564:6.] When asked about Dr. Eklund's invention, Fairchild' s fact witnesses also conceded it did not involve bipolar technology. [D.I. 556 (Trial Tr. 9/18/07) at 340:8-19.]19 These points are significant, and they
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belie Fairchild's efforts to paint the Ludikhuize reference as being virtually identical to the '075 invention but for the extended drain region going both ways to surface adjoining positions. Beyond the fundamental difference from the process technology of the '075 patent, Ludikhuize also lacks the claimed extended drain region extending laterally both ways to surface adjoining positions, and Fairchild can only suggest that Ludikhuize teaches the limitation by misquoting Ludikhuize or the '075 patent. Fairchild also ignores the fact that Ludikhuize has a deep isolation diffusion at one end, which is shown at the right side of the diagram copied into Fairchild's brief at page 7. That additional diffusion not only reflects a fundamentally different structural composition from the '075 technology, it also precludes an extended drain region extending each way to surface adjoining positions. Dr. Eklund explained that the structural difference was "key." [D.I. 560 (Trial Tr. 9/21/07) at 46:20-48:10.] Fairchild also asserts without support that Dr. Eklund "got the idea" for a PTOP from Ludikhuize and that Dr. Eklund admitted that Ludikhuize disclosed the claimed extended drain region extending laterally both ways to surface adjoining positions, but Fairchild can only rely on its own proposed findings of fact to support these overreaching statements. [D.I. 585 at 8.] The truth of the matter is that not even Fairchild's own expert would opine that Ludikhuize taught the claimed invention of the '075 patent; indeed, as noted above, Fairchild's expert admitted on cross-examination that Ludikhuize related to fundamentally different process technology (the older bipolar technology). Power Integrations' expert Mr. Michael Shields summed up the differences between Dr. Eklund's work and Ludikhuize succinctly: [Ludikhuize] does have a P-TOP region in one area. Is it is not symmetrical. The extended drain does not have a surface in multiple positions. It doesn't have low voltage MOS devices at all. In fact, it says the low voltage transistors are bipolar transistors which are nothing like MOS transistors. It's a very expensive bipolar process. It's a very different process.

In fact, both Ludikhuize and the later '298 patent were explicitly directed to specific DMOS implementations, as noted in the titles of both. The fact that Ludikhuize was considered relevant to a different invention is totally beside the point and has no bearing on the '075 patent, an invention that was itself distinguished in the text of the later '298 patent. 34

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[D.I. 559 (Trial Tr. 9/21/07) at 1388:13-23.] And, as explained above, Mr. Beasom concurred with the understanding that Ludikhuize did not disclose the '075 invention; in fact, he did not think it relevant enough to disclose during prosecution of his own patents. [D.I. 596 (Trial Tr. 9/18/07) at 298:8-306:16.] Given this evidence, to the extent the Court finds it was not already disclosed in the background of the '075 patent, Ludikhuize is also not material to the patentability of the '075 patent. In addition to the Wakaumi and Ludikhuize references, Fairchild takes general issue with a market survey Dr. Eklund did to evaluate the commercial landscape before investing the time necessary to develop his invention. [D.I. 585 at 6-7, 11-12.] Fairchild's efforts to parse the invention out of existence with those references are unpersuasive, though, as they instead show that the features in question were either already disclosed in the background section or well known in the art, as explained above in the context of Wakaumi and Ludikhuize. For example, Fairchild focuses on a number of references that showed an extended drain [D.I. 585 at 11-12], but there was nothing special about a reference with an extended drain per se. Indeed, Fairchild's expert conceded at trial that Dr. Eklund certainly disclosed structures with an extended drain like that of Wakaumi and other conventional MOS devices. [D.I. 556 (Trial Tr. 9/18/07) at 542:13-21.] It defies logic for Fairchild to suggest that everyone in the industry knew about extended drains but that Dr. Eklund committed inequitable conduct by not explaining this well known feature to the PTO examiner. Fairchild's reliance on statements in the prosecution history regarding the claimed extended drain region extending each way to surface adjoining positions is equally misleading and overreaching. Fairchild suggests that Dr. Eklund's response to rejections during prosecution in light of the Colak reference somehow mislead the patent office regarding the claimed extended drain region [D.I. 585 at 8-10], but the charge makes no sense. First, as noted above, Fairchild's expert concedes that Dr. Eklund "certainly" disclosed the structure of the Wakaumi reference, and other conventional MOS references with an extended drain region, in the

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background section of the specification. [D.I. 556 (Trial Tr. 9/18/07) at 542:8-21.] Second, the Colak reference was fundamentally different from the invention of the '075 patent, and Dr. Eklund's claim was allowed when he made clear he was not claiming the structure of Colak. Moreover, as also noted above, the suggestion that the patentability of Dr. Eklund's invention turned on the disclosure of any form of extended drain with a surface adjoining position is implausible, particularly given that others in the field (including Mr. Beasom) did not believe such art to be an impediment to patentability. D. Fairchild Has Put Forth No Evidence that Dr. Eklund Intended to Deceive the Patent Office.

Given the lack of any showing of material omissions or misrepresentations, the Court need not reach the issue of intent. If it does, the Court will see that Fairchild also fails on the issue of intent, because all the evidence suggests Dr. Eklund prosecuted the '075 patent-his very first U.S. Patent-in good faith. As a predicate matter, the Court should reject Fairchild's efforts to collapse the two-part inquiry by relying solely on the materiality of the alleged omissions, an approach the Federal Circuit has repeatedly rejected. See Allen Eng g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352 (Fed. Cir. 2002) ("[M]ateriality does not presume intent, which is a separate and essential component of inequitable conduct."); Allied Colloids Inc., 64 F.3d at 1578 ("It was to mitigate the plague whereby every patentee's imperfections were promoted to `inequitable conduct' that this court reaffirmed that both materiality and culpable intent must be established."); Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1262-63 (Fed. Cir. 2001) ("Stoughton, in effect argues that, on this evidence, the finder of fact was required to infer deceptive intent. We cannot agree." (emphasis in original)). Here, Dr. Eklund provided the PTO with information concerning the art he was aware of, and Fairchild's expert confirmed that the disclosure "certainly" disclosed the conventional structures of the art. [D.I. 556 (Trial Tr. 9/18/07) at 541:16-542:13-21.] Fairchild fails to identify any misstatement to support a finding of intent to deceive the patent office, and Fairchild

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can point to no other evidence that clearly and convincingly demonstrates an intent to deceive. Instead, Fairchild makes a number of unsupported charges on unrelated issues such as Dr. Eklund's compensation, or by selectively quoting testimony and mischaracterizing a number of events entirely unrelated to prosecution. For example, Fairchild relies on a letter from Tom Schatzel to potential investors concerning the lack of a "patent search," but it identifies nothing misleading about the letter. Instead, Fairchild takes exception to the letter's failure to explicitly address prior art articles, but those articles (and the fact that those in the technical community believed Dr. Eklund's invention presented a 2-3X improvement over the conventional technology of the articles) have already been addressed above in detail. These unrelated issues, including the charges regarding Dr. Eklund's compensation for the years of work he put into building Power Integrations and Dr. Eklund's work with Mr. Schatzel to attract investors and prosecute the patents, are in no way indicative of deceptive intent. Fairchild also suggests that Dr. Eklund lied during his deposition in a way that supports a finding of inequitable conduct, but the contention is both absurd and irrelevant.20 First, Fairchild's argument that Dr. Eklund tried to hide his knowledge of Wakaumi and Ludikhuize during prosecution is belied by that fact that Dr. Eklund has always admitted he had the references and discussed them in the earliest invention notes and review of the art. Fairchild also ignores the fact that Dr. Eklund's initial survey of the art had been misfiled with other nonrelated work papers at the time of his initial deposition, was turned over as soon as it surfaced, and, as explained during a further deposition and at trial, its contents were included with the materials described in the background section of the patent. This "evidence" simply does not support a finding that Dr. Eklund intended to deceive the patent office. Further evidence of the lack of credibility in Fairchild's assertion of inequitable conduct rests with Mr. Beasom, the person who independently developed the same technology shortly
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Fairchild provides no citation for the proposition that a single statement taken out of context in a deposition provides support for a finding of inequitable conduct, as it asserts at page 15 of its brief. Although Fairchild is incorrect in its characterization of Dr. Eklund's position based on the few lines of testimony it quotes from one of the multiple days he testified during this case, the lack of authority also undercuts Fairchild's argument on this point. 37

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after Dr. Eklund and who claimed an invention identical to claim 1 of the '075 patent in claim 8 of his '719 patent. Despite having full knowledge of Mr. Beasom's view of these references' lack of bearing on the invention and not having submitted them to the patent office during the prosecution of his own patent, Fairchild accuses Dr. Eklund of gross misconduct-intentionally deceiving the patent office-for not submitting these self-same articles. Fairchild has also sued Power Integrations for infringement of claim 8 of Mr. Beasom's '719 patent-the claim copied verbatim from Dr. Eklund's '075 patent. Fairchild must therefore believe Mr. Beasom was justified in not disclosing the prior art, or its assertion of Mr. Beasom's patent is in bad faith. This glaring inconsistency confirms that Fairchild's charge of inequitable conduct is mere posturing, is contradicted by the relevant evidence, and must be rejected. Because the references Fairchild complains of describe nothing but conventional process technologies, are at best cumulative, and were adequately disclosed by Dr. Eklund in the specification of the '075 patent, and because Dr. Eklund had no intent to deceive the PTO, the '075 patent is not unenforceable due to inequitable conduct. VII. CONCLUSION For all the above reasons, Power Integrations requests that the Court enter judgment for Power Integrations and against Fairchild on the claims of inequitable conduct.

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Dated: November 28, 2007

FISH & RICHARDSON P.C.

By: William J. Marsden, Jr. 2247) Kyle Wagne Compton (Y4693) 919 N. Market ite 1100 P.O. Box 1114 Wilmington, DE 19899-1114 Telephone: (302) 652-5070 Email: marsdenna,fr.com Email: kcompton a-,fr.com Frank E. Scherkenbach 225 Franklin Street Boston, MA 02110-2804 Telephone: (617) 542-5070 Howard G. Pollack Michael Headley 500 Arguello Street, Suite 500 Redwood City, CA 94063 Telephone: (650) 839-5070
ATTORNEYS FOR PLAINTIFF POWER INTEGRATIONS, INC.

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CERTIFICATE OF SERVICE I hereby certify that on December 10, 2007, I electronically filed with the Clerk of Court the PUBLIC VERSION of POWER INTEGRATION'S ANSWERING BRIEF IN OPPOSITION TO FAIRCHILD'S POST-TRIAL BRIEF ASSERTING INEQUITABLE CONDUCT using CM/ECF which will send electronic notification of such filing(s) to the following counsel.

BY HAND DELIVERY Steven J. Balick John G. Day Ashby & Geddes 500 Delaware Avenue, 8th Floor P. O. Box 1150 Wilmington, DE 19899

Attorneys for Defendants FAIRCHILD SEMICONDUCTOR INTERNATIONAL, INC. and FAIRCHILD SEMICONDUCTOR CORPORATION, and third party INTERSIL CORPORATION

BY E-MAIL AND FEDERAL EXPRESS G. Hopkins Guy, III Bas de Blank Orrick, Herrington & Sutcliffe, LLP 1000 Marsh Road Menlo Park, CA 94025

Attorneys for Defendants FAIRCHILD SEMICONDUCTOR INTERNATIONAL, INC. and FAIRCHILD SEMICONDUCTOR CORPORATION

/s/ William J. Marsden, Jr. William J. Marsden, Jr.