Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01371-JJF Document 443 Filed 1 1/28/2006 Page 1 of 2
FISH 8L RICHARDSON P.C.
I’.O. Box 1114
Wilmington, Delaware
19899-1114
Frederick P. Fish @0} Marker Srrw
1855-1930 v§llFIIl1II>g&Ol], D€lHW3[€
WK. Richardson 19801
18s9-1951
November 28, 2006 O
The Honorable Joseph J. Faman, Jr. Facsimllc
United States District Court 302 652-0607
for the District of Delaware Web sire
844 King Street W`”W‘&‘°°m
Wilmington, DE 19801
Re: Power lntegrations, Inc. v. Fairchild Semiconductor International, [nc., et al.
® USDC—D. Del., C.A. No. 04-1371 JJF
BOSTON Dear Judge Faman:
DALLAS We write in response to the Cou1t's request to address the possible impact on this case
errsiz rrrrerrr. ce. V. reiejiex, nre., _ s. cr. _, 2006 wt 3257150 (Mem), us.,
NEW YORK which is currently before the U.S. Supreme Court and which involves the question of
SAN ¤¤¤¤<> whether a motivation to combine references is a prerequisite to an obviousness
errreerr writer determination. Power lntegrations does not believe the KSR outcome will have any
TWIN mms impact on the issues to be tried in the upcoming trial.
WASHINGTON, DC For three of the four patents at issue (`876, `851 and `366), Power lntegrations does
not believe Fairchild has properly raised or identified in its expert reports any of the
obviousness contentions it suggests it intends to assert at trial. See our November 13
and November 27 briefing on the subject (D.l. Nos. 425, 426, 437 and 438).
Therefore, obviousness is not an issue for those three patents. Power lntegrations does
agree, however, that obviousness has fairly been raised with regard to the ‘075 patent
and, thus, is an issue that will be tried.
To the extent Fairchild presents obviousness contentions at trial, Power lntegrations’
understanding is that the KSR case deals with the issue of whether the "motivation to
combine" rubric of Federal Circuit case law properly requires a predicate showing of
such a motivation in order to support a conclusion that a patent claim is obvious.
Power lntegrations believes the asserted combinations of prior art presently put forth
by Fairchild -- even those contentions for the patents other than the ‘075, which
Power lntegrations believes are untimely and therefore should not be allowed in the
validity trial —— do not disclose all of the limitations of any asserted claim even when a
motivation to combine them is presumed. Accordingly, Power lntegrations does not
intend to make motivation to combine an issue at trial, regardless of which specific
obviousness contentions Fairchild is allowed to raise. Because of this, even if the
outcome of the KSR case modifies the Section 103 analysis with regard to the
motivation to combine "requirement," it would have no impact on the specific
obviousness issues in this case.

Case 1 :04-cv-01371-JJF Document 443 Filed 1 1/28/2006 Page 2 of 2
Fisrr 8c R1cHARDsoN 1>.c.
The Honorable Joseph J. Faman, Jr.
November 28, 2006
Page 2
Moreover, to the extent that evidence concerning motivation to combine is raised (by
Fairchild) during the trial at all, and the Court believes it raises some concem, a
properly worded jury interrogatory can be used to determine if such evidence was
considered determinative to the jury on any particular patent claim, thus avoiding the
need for any subsequent proceedings should KSR work a change in the law. To make
such a possibility even less likely, Power lntegrations would agree to the Court
removing the jury instruction regarding motivation to combine from the proposed
jury instructions altogether, as it plays no role in this particular case.
Finally, even if the standard for obviousness under Section 103 were modified by the
Supreme Court in its KSR decision, it is unclear whether such a modification would
be given retroactive effect to cases pending before the decision was made. Thus,
even by its own terms, the decision may have no impact on the present dispute.
Respectfully,
it
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Enclosure
cc: Clerk of Court (via ECF and hand delivery)
G. Hopkins Guy, Esq. (via e-mail and first class mail)
Steven J. Balick, Esq. (via ECF and hand delivery)
80039479.doc