Free Memorandum and Order - District Court of Delaware - Delaware

Case 1:04-cv-01371-JJF O- Document 446 Filed 11/30/2006 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
POWER INTEGRATIONS, INC., a :
Delaware corporation, :
Plaintiff, :
v. : C.A. No. 04—l37l—JJF
O FAIRCHILD SEMICONDUCTOR :
INTERNATIONAL, INC., a Delaware:
corporation, and FAIRCHILD :
SEMICONDUCTOR CORPORATION, a :
Delaware corporation, :
Defendants. : p
MEMORANDUM ORDER
On Thursday, November 30, 2006, the Court conducted a
teleconference with the parties in the above—captioned action.
At the Court's request, the parties previously submitted letters
addressing the possible impact on this case of KSR Intern. Co. v.
Teleflex, Inc., S. Ct. , 2006 WL 3257l50 (Meml, U.S.,
which is currently before the United States Supreme Court. Also
relevant to the issues discussed by the Court during the
teleconference is Defendants’ request to use eleven prior art
references during the validity phase of the trial.1
After reviewing the parties' submissions and their .
respective arguments regarding both Defendants’ Motion and the
KSR case, the Court concludes that an approximate five month stay
I Defendants’ request was conveyed to the Court in the
context of an Opening Brief that was not linked to any motion
pending on the Court's docket. For purposes of this decision,
the Court will refer to the Opening Brief (D.I. 423) as the
Motion.

Case 1:04-cv-01371-JJF Document 446 Filed 11/30/2006 Page 2 of 4
of the validity trial is warranted in the interests of achieving
an efficient and effective resolution of this case. In the
Court’s view, this stay will not work any undue prejudice to
Plaintiff. The Court is further persuaded that the stay will
provide the parties and the Court with the opportunity to have
the benefit of a decision from the Supreme Court on the issue of
obviousness, which permeates the validity contentions in this
case. However, if the Supreme Court has not reached its decision
in the gg; case by the time of the rescheduled trial date, the
Court will move forward with the rescheduled trial using modified
jury interrogatories and/or instructions, as well as other
appropriate measures intended to minimize any post—trial or
appellate impact of the Supreme Court’s decision in 353 on the
issues in this case.
As for Defendants' request to use additional prior art
references during the validity trial in this matter, the Court
concludes that Defendants may rely on eleven (11) prior art
references to support its invalidity contentions. In reaching
this conclusion, the Court finds that Plaintiff had some notice
of the prior art upon which Defendants intend to rely either
through Dr. Horowitz’s reports or through interrogatories and
other submissions by Defendants. However, the Court agrees with
Plaintiff that Dr. Horowitz’s expert report lacks a detailed
discussion and/or application of that prior art in light of the
2

Case 1:04-cv-01371-JJF Document 446 Filed 11/30/2006 Page 3 of 4
factors to be considered in an obviousness inquiry. To cure this
deficiency and prevent any undue prejudice to Plaintiff, the
Court will require Defendants.to submit a supplemental expert
report by Dr. Horowitz detailing his obviousness analysis in
light of the prior art references by December 29, 2006. In
addition, Dr. Horowitz will be subject to further deposition by
Plaintiff, and Plaintiff will be permitted the opportunity to
submit a rebuttal expert report followed by Defendants'
deposition of Plaintiff's expert. To the extent that this
additional discovery is ordered, the Court finds that the stay of
the trial will remove any prejudice to Plaintiff by providing it
with full notice and an opportunity to prepare for the invalidity
contentions raised by Defendants.
NOW THEREFORE, IT IS HEREBY ORDERED that:
I. The trial scheduled for Monday, December 4, 2006, is
CANCELED.
2. Trial is rescheduled to commence on Monday, May 7, 2007
at 9:30 a.m. The Trial Management Order dated November 21, 2006,
remains in effect.
3. Defendants request (D.I. 423) to use additional prior
art references during the validity trial in this matter is
GRANTED.
4. Defendants shall submit a supplemental report of their
expert witness, Dr. Horowitz, no later than Friday, December 29,
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Case 1:04-cv-01371-JJF Document 446 Filed 11/30/2006 Page 4 of 4
2006.
5. Depositions of Dr. Horowitz and the expert selected by
Plaintiff for rebuttal shall be completed by Friday, March 23,
2007.
November 3C? 2006 { I ZPVL~?»
Date ITED ST ES DISTRIC UDGE
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