Free Letter - District Court of Delaware - Delaware

Case 1 :04-cv-01371-JJF Document 359 Filed O9/06/2006 Page 1 of 4
Ast-1BY 8. GEDDES
ATTORNEYS AND COUNSELLORS AT LAW TELEPHONE
222 DELAWARE AVENUE °°2`°°4"°°°
P. 0. Box 1150 Scgiglilgjs,
WILMINGTON, DELAWARE 19899
September 6, 2006
The Honorable Joseph J. Faman, Jr. VIA ELECTRONIC FILING
United States District Court
844 King Street, Lockbox 27
Wihnington, DE 19801
Re: Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al.,
C.A. No. 04-1371-JJF
Dear Judge Faman:
We write to respond to Power Integrations’ letter of yesterday afternoon concerning
Fairchild’s Motions in Limine (D.I. 358). We respectfully submit that Fairchild’s motions are
proper, and that adjudication of the issues raised will simplify and streamline the trial.1
Fairchild’s Motions in Limine ("MILs") do not reargue F airchild’s motions for summary
judgment. Instead, Fairchild’s MlLs properly seek to preclude Power Integrations from
introducing specific evidence or advancing arguments that are unsupported by the evidence or
are contrary to the law. In contrast, as the Court noted, Faircl1ild’s motions for summary
judgment raised questions concerning "the structure and operation of the accused devices and the
understanding of those skilled in the art on such issues as the nature of the accused devices and
the teachings of the prior art. D.I. 266, p. 3. The topics raised in Fairchild’s MILs are proper
and appropriate.
Fairchild needed to tile 19 motions in limine because Power Integrations reiuses to agree
to even the most common points of law or evidence. For instance, as the Court has already held,
"Power Integrations had no evidence prior to April 18, 2006, that Fairchild’s accused devices
I Fairchild sincerely apologizes for that fact that its motions were filed 3 hours and 44 minutes after
the midnight Friday deadline. However, it is difficult to believe that on Labor Day weekend Power
Integrations would have been working on its responses to Fairchild’s motions between midnight Friday
and 4:40 a.m. Saturday when they were served, so it seems unlikely that Power Integrations was
prejudiced by the delay about which it felt compelled to write. Moreover, although Fairchild served its
motions on six of Power Integrations’ trial counsel via e-mail within an hour of tiling, Fairchild’s lead
counsel did not receive Power Integrations’ motions in limine until hours later, because Power
Integrations did not honor the parties’ agreement to serve Fairchild electronically. Notwithstanding the
irony of that umnentioned fact, if Power Integrations now feels it needs an extra day to respond, Fairchild
has no objection.

Case 1 :04-cv-01371-JJF Document 359 Filed O9/06/2006 Page 2 of 4
The Honorable Joseph J. Faman, Jr.
September 6, 2006
Page 2
were imported into the United States." (DI 334, p. 3). Despite this, Power Integrations continues
to make an $8.5 million damages demand based almost entirely on speculation that some
percentage of Fairchild products are imported into the United States. Critically, Power
Integrations recently admitted that it has no evidence that anyone actu.ally imports these
products:
Q Are you aware of any direct evidence that any of the accused Fairchild’s
devices have been imported into the United States between October 20, 2004
and April 18, 2006? . . .
A It’s not an area that I looked into at all. I have no evidence that there was
or wasn ’t.
[de Blank Decl., Ex. 3 at 358:15-23; 362:2-4 ("Nobody has asked me to verify whether they have
or have not imported them and I do not intend to do so.")]. Even more fundamentally, Power
Integrations persists in demanding an additional $32.7 million in damages for devices which are
never made, used, offered for sale or sold within the United States, and wl1ich Power Integrations
concedes are never imported into the United States, even by third parties:
Q. That difference, the $32,690,973 are damages that Power Integrations claims that
were not related to parts that were manufactured in the United States, is that correct?
A. That is correct.
Q. And that difference, the $32,690,973, are damages that Power Integrations claims that
are not related to parts that are used in the United States by Fairchild?
A. That is correct.
Q. And that difference, the $32,690,973, are damages that Power Integrations claims that
are not related to parts that are sold in the United States by Fairchild?
A. That is correct.
Q. And that difference, the $32,690,973, are damages that Power Integrations claims that
are not related to parts that were imported ir1to the United States by Fairchild?
A. Yes, that’s correct.
>l< * >l=
Q. That difference, the $32,690,973, are damages that Power Integrations claims that are
not related to parts that have been imported into the United States by any company?
A. That’s valid, that’s correct.
[de Blank Decl., Ex. 3 at 41 1 :21-413:6 (emphasis added)]
These two issues are raised by Fairchild’s Motion in Limine Nos. 1 and 2, which seek to exclude
this speculation and to prevent the clear prejudice that Fairchild would suffer were such
unsupported and unsupportable arguments made.

Case 1 :04-cv-01371-JJF Document 359 Filed O9/06/2006 Page 3 of 4
The Honorable Joseph J. Faman, Jr.
September 6, 2006
Page 3
In addition, these motions in limine address new and different legal issues from those raised
during the summary judgment briefing. While claiming a triable issue of fact existed as recently
as March, 2006, through the recent August, 2006 deposition and expert report of PI’s expert, Mr.
Troxel, Power Integrations finally admits no such evidence exists.
Q. I see. The 18 percent that you assume is imported into the United States, is that
importation done by Fairchild?
A. No.
* * *
Q. And are those cell phone chargers into which the Fairchild part has been
integrated being imported by Fairchild into the United States?
A. No.
[Id, Ex. 3 at 408:11-14, 409:15-18]
Therefore, Fairchild has moved in limine to preclude Power Integrations from making this
factually unsupported and legally incorrect argument - MIL Nos. 1 and 2. Similarly, Power
Integrations continues to base its damages calculations on data prior to the filing of the
complaint. The Court has repeatedly ruled that this is improper in light of Power Integrations’
failure to mark its products, but Power Integrations persists nonetheless. Therefore, Fairchild has
no choice but to move in limine on this issue — MIL No. 5.
Power Integrations specifically complains that MILS Nos. 9 and 18 are duplicative of
other Fairchild briefs. This is perplexing and untrue. MIL No. 9 seeks to preclude Power
Integrations from adding new accused devices — specifically, the FSD2l0HD — in the few
remaining weeks before trial. This was never raised on summary judgment because Power
Integrations did not accuse this device before July, 2006. Indeed, Power Integrations moved in
limine on this same topic — obviously indicating that Power Integrations agrees that it is
appropriate for the Court to decide the issue in limine. MIL No. 18 simply seeks to preclude
Power Inte grations from offering uncorroborated testimony concerning the conception and
reduction to practice of the ‘075 patent. If Power Integrations can offer independent
corroboration (as required by law), the testimony should be permitted. Since Power Integrations
has no independent corroboration, however, such testimony should be excluded since it is
irrelevant as a matter of law.
Each motion in limine is a direct result of Power Integrations’ insistence that it may argue
a position that is legally wrong and/or unsupported by admissible evidence. While there is no
support for Power Integrations° positions, in many cases the prejudice to Fairchild could not be
undone were such improper arguments to be made to the jury.
Fairchild met and conferred with Power Integrations and identified each of these motions
in limine days before the motions were filed. Fairchild hoped that Power Integrations would

Case 1 :04-cv-01371-JJF Document 359 Filed O9/06/2006 Page 4 of 4
The Honorable Joseph J. Farnan, Jr.
September 6, 2006
Page 4
stipulate to some or many of these issues and that Fairchild would not be forced to prepare and
tile so many motions in limine. It is Power lntegrations’ conduct — not any misconduct by
Fairchild — that made these motions necessary.2
Thus, Fairchild respectfully requests that the Court consider each of the motions in limine
raised by Fairchild.
Respectfully,
/s/ Steven J Balick
Steven J. Balick
SJB/drnf
172841.1
c: William J. Marsden, Jr. Esquire (by hand)
Frank E. Scherkenbach, Esquire (by electronic mail)
Howard G. Pollack, Esquire (by electronic mail)
G. Hopkins Guy, III, Esquire (by electronic mail)
2 While Power Integrations mentions three times in its 14-1ine letter that Fairchild’s submission is
60 pages long — presumably because it sounds facially violative ofthe local rules’ 40—page limit for
opening briefs — in fairness, Fairchild’s tiling is not a 60-page brief at all. It is 60 pages of support for
19 motions, combined into a single document in the belief that such a document would be more
convenient for the Court than 19 separate filings (every one of which would have been far
shorter than the 40-page limit).