Free Proposed Jury Instructions - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE POWER INTEGRATIONS, INC., Plaintiff, v. FAIRCHILD SEMICONDUCTOR INTERNATIONAL, INC., and FAIRCHILD SEMICONDUCTOR CORPORATION, Defendants. ) ) ) ) ) ) ) ) ) ) )

C.A. No. 04-1371-JJF

DEFENDANTS' PROPOSED JURY INSTRUCTIONS

ASHBY & GEDDES Steven J. Balick (I.D. #2114) John G. Day (I.D. #2403) Tiffany Geyer Lydon (I.D. #3950) 222 Delaware Avenue, 17th Floor P.O. Box 1150 Wilmington, DE 19899 302-654-1888 [email protected] [email protected] [email protected] Attorneys for Defendants Of Counsel: G. Hopkins Guy, III Vickie L. Feeman Bas de Blank Brian H. VanderZanden Orrick, Herrington & Sutcliffe LLP 1000 Marsh Road Menlo Park, CA 94025 (650) 614-7400 Dated: September 1, 2006

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE POWER INTEGRATIONS, INC., Plaintiff, v. FAIRCHILD SEMICONDUCTOR INTERNATIONAL, INC., and FAIRCHILD SEMICONDUCTOR CORPORATION, Defendants. ) ) ) ) ) ) ) ) ) ) )

C.A. No. 04-1371-JJF

PRELIMINARY JURY INSTRUCTIONS

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INTRODUCTION Ladies and gentlemen, you have been selected as jurors in this case. What I will now say is intended to introduce you to the trial and the law that you will apply to the evidence that you will hear. I will give you more detailed instructions on the law at the end of the trial. All of my instructions are important, and you should consider them together as a whole. Please listen carefully to everything I say. This is a case about patent infringement. The parties are Power Integrations, the plaintiff, and Fairchild Semiconductor Corporation and Fairchild Semiconductor International, Inc., the defendants. Power Integrations owns United States Patent Numbers 6,249,876, 6,107,851, 6,229,366, and 4,811,075, which you may hear called by the lawyers and witnesses in the case by their last three numbers, the `876, `851, `366, and `075 patents, or by the last name of the lead inventors, here, Klas Eklund or Balu Balakrishnan. Power Integrations contends that Fairchild infringes the `876, `851, `366, and `075 patents. Fairchild contends that it did not infringe the `876, `851, `366, and `075 patents. Fairchild also contends that the `876, `851, `366, and `075 patents are invalid. Source: Uniform Jury Instr. For Patent Cases in the D. Del

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PATENT LAW ­ GENERAL The Federal Judicial Center video will be shown at this time. Source: Uniform Jury Instr. For Patent Cases in the D. Del

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DUTIES AS JURORS Now a word about your duties as jurors. Trial by jury is one of the cornerstones of our free society. Faithful performance by you of your duties is vital to the administration of justice. You have two main duties as jurors. The first is to decide what the facts are from the evidence that you will see and hear in court. Deciding what the facts are is your job, not mine, and nothing that I will say or do should influence your view of the facts in any way. In deciding what the facts are, you must not engage in guesswork or speculation. You must not be influenced in any way by any personal feeling of sympathy for, or prejudice against, either side in this case. Each side is entitled to the same fair and impartial consideration. Your second duty is to take the law that I give you and apply it to the facts. It is my job to instruct you about the law, and you are bound by the oath you just took to follow my instructions, even if you personally disagree with them. That includes these instructions and the instructions that I will give you during and after the trial. All of my instructions are important, and you should consider them together as a whole. Perform these duties fairly. Do not let any bias, sympathy or prejudice that you may feel toward one side or the other influence your decision in any way. Source: Uniform Jury Instr. For Patent Cases in the D. Del

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BURDEN OF PROOF Power Integrations has the burden to prove patent infringement by what is called a preponderance of the evidence. That means Power Integrations has to produce evidence that, when considered in light of all of the facts, leads you to believe that what Power Integrations claims is more likely true than not. To put it differently, if you were to put the Power Integrations' and Fairchild's evidence on the opposite sides of a scale, the evidence supporting the plaintiff's claims would have to make the scales tip somewhat on his side. In this case, Fairchild is urging that Power Integrations' patents are not valid. A patent, however, is presumed to be valid. Accordingly, Fairchild has the burden to prove a patent is not valid by clear and convincing evidence. Clear and convincing evidence is evidence that produces an abiding conviction that the truth of a fact is highly probable. Some of you may have heard the phrase " proof beyond a reasonable doubt." That burden of proof applies only in criminal cases and has nothing to do with a civil case like this one. You should therefore not consider it in this case. Source: Uniform Jury Instr. For Patent Cases in the D. Del

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EVIDENCE The evidence you will consider consists of the sworn testimony of witnesses, the exhibits admitted into evidence, and any facts the parties admit or agree to. Nothing else is evidence. The lawyers' statements and arguments are not evidence; their questions and objections are not evidence. My comments or questions are not evidence. Nothing you see or hear outside the courtroom is evidence. From time to time it may be the duty of the attorneys to make objections to evidence that should not be presented at this trial under the rules of evidence. It is my duty as the judge to rule on those objections and decide whether you can consider the evidence in question. My decisions about the admission of evidence are governed by rules of law. You must not be influenced by any objection or by my reasons for making an evidentiary ruling. If I sustain an objection or order evidence stricken from the trial, do not speculate about what a witness might have said or what an exhibit might have shown. You must not consider that evidence. Use your common sense in weighing the evidence. Consider it in light of your everyday experience with people and events and give it whatever weight you believe it deserves. If your experience tells you that certain evidence reasonably leads to a conclusion, you are free to reach that conclusion. Make your decisions about the trial based only on the evidence, as I have defined it here, and nothing else. Source: Uniform Jury Instr. For Patent Cases in the D. Del

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WITNESSES - CONFLICTS IN TESTIMONY You are the sole judges of the credibility of the witnesses and the weight their testimony deserves. For example, you may be guided by the appearance and demeanor of the witnesses as they testified and the witnesses' apparent fairness in giving their testimony. Other factors may include evidence to the contrary of the testimony given or evidence that at some other time the witness said or did something (or failed to say or do something) that was different from the testimony the witness gave at trial. You may also consider any bias or interest the witness may have in the outcome of these proceedings. You should remember that a simple mistake does not necessarily mean that the witness is not telling the truth. People may tend to forget some things or remember other things inaccurately. If a witness makes a misstatement, you must consider whether it is simply an innocent lapse of memory or an intentional falsehood, and that may depend upon whether it concerns an important fact or an unimportant detail. If you find the testimony in this case to be in conflict, it will be your duty at the end of the case to reconcile the conflicts if you can. If you cannot do so, it is your duty to disregard that portion of the testimony that you, in your judgment, deem not worthy of credit. Lastly, the number of witnesses presented is not important; concentrate on how believable the witnesses are and how much weight you believe their testimony deserves. Source: Uniform Jury Instr. For Patent Cases in the D. Del

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DIRECT AND CIRCUMSTANTIAL EVIDENCE In this trial, the parties may present "direct evidence" and "circumstantial evidence." Direct evidence is simply evidence like the testimony of an eyewitness that, if you believe the testimony, directly proves a fact. For example, if a witness testified that she saw it raining outside, and you believed her, that would be direct evidence that it was raining. Circumstantial evidence is simply a chain of facts and circumstances that indirectly proves a fact. If someone walked into the courtroom wearing a raincoat covered with drops of water and carrying a wet umbrella, that would be circumstantial evidence from which you could conclude that it was raining. The law makes no distinction between direct or circumstantial evidence. Nor is a greater degree of certainty required of circumstantial evidence. You should consider all the evidence, both direct and circumstantial, and give it whatever weight you believe it deserves. Source: Uniform Jury Instr. For Patent Cases in the D. Del

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EXPERT WITNESSES When knowledge of technical subject matter may be helpful to the jury, a person who has special training or experience in that technical field, called an expert witness, is permitted to state an opinion on those technical matters. The value of this kind of testimony depends upon the qualifications and skill of the witness, the sources of the witness's information, and the reasons supplied for any opinions given. You should consider this kind of testimony like all other testimony you hear and weigh it by the same tests. However, as with any other witness, you are not required to accept any expert's opinions. It will be up to you to decide whether to rely upon them. Source: Uniform Jury Instr. For Patent Cases in the D. Del

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GENERAL INSTRUCTION Until this case is submitted to you for your deliberation, you are to keep an open mind and not decide any issue in this case. You also must not discuss this case with anyone, remain within hearing of anyone discussing it, or read, watch, or listen to any discussion of the case in any news or entertainment media. After this case has been submitted to you, you must discuss this case only in the jury room when all members of the jury are present. It is important that you wait until all the evidence is received and you have heard my instructions on the applicable rules of law before you deliberate among yourselves. The only evidence you may consider will be the evidence presented at trial. Because of this, you should not attempt to gather any information on your own that you think might be helpful. Do not do any outside reading on this case and do not in any other way try to learn about the case outside the courtroom. The reason for these rules, as I am certain you will understand, is that you must decide this case solely on the evidence presented at the trial. Source: Uniform Jury Instr. For Patent Cases in the D. Del

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COURSE OF THE TRIAL The case will now begin. First, Power Integrations may make an opening statement outlining its case. Then Fairchild may make an opening statement outlining its case. Neither side is required to make an opening statement. Opening statements are not evidence; their only purpose is to help you understand what the evidence will be. Next, the parties will present their evidence. Power Integrations will first introduce the evidence that it believes will support its claims. When Power Integrations is finished, Fairchild will introduce evidence to defend against Power Integrations' claims. Power Integrations then has the opportunity to offer rebuttal evidence. After you have heard all of the evidence, I will instruct you on the law that you must apply in this case. Then each side may make a closing argument, although no one is required to do so. The closing arguments are not evidence; their only purpose is to give each side the opportunity to summarize its case and to help you understand the evidence it has presented. Finally, after the closing arguments, you will deliberate and arrive at your verdict. Source: Uniform Jury Instr. For Patent Cases in the D. Del

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GLOSSARY OF PATENT TERMS

Assignment Claims

Transfer of ownership rights in a patent or patent application from one person or company to another. That part of a patent which defines the metes and bounds of the invention. These are found at the end of the patent specification in the form of numbered paragraphs. That part of the patent specification which explains how the invention works and usually includes a drawing. The written record of proceedings in the Patent Office including the original patent application and subsequent communications between the Patent Office and applicant. The initial papers filed in the United States Patent and Trademark Office (patent Office or PTO) by an applicant. These typically include a specification, drawings and the oath (Declaration) of applicant. Personnel employed by the Patent Office having expertise in various technical areas who review (examine) patent applications to determine whether the claims of a patent application are patentable and the disclosure adequately describes the invention. Any information which is used to describe public, technical knowledge prior to the invention by applicant or more than a year prior to his/her application. Any item of prior art (publication or patent) used to determine patentability. That part of the patent application or patent which describes the invention and concludes with one or more claims.

Disclosure of description File wrapper/File history

Patent Application

Patent Examiners

Prior Art

References Specification Source:

Uniform Jury Instr. For Patent Cases in the D. Del

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

POWER INTEGRATIONS, INC., a Delaware corporation, Plaintiff, v. C.A. No. 04-1371 JJF FAIRCHILD SEMICONDUCTOR INTERNATIONAL, INC., a Delaware corporation, and FAIRCHILD SEMICONDUCTOR CORPORATION, a Delaware corporation, Defendants. FINAL JURY INSTRUCTIONS

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I

GENERAL INSTRUCTIONS

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I.2.2

INTRODUCTION Members of the jury, now it is time for me to instruct you about the law that you must

follow in deciding this case. I will start by explaining your duties and the general rules that apply in every civil case. Then I will explain some rules that you must use in evaluating particular testimony and evidence. Then I will explain the positions of the parties and the law you will apply in this case. And last, I will explain the rules that you must follow during your deliberations in the jury room, and the possible verdicts that you may return. Please listen very carefully to everything I say. You will have a written copy of these instructions with you in the jury room for your reference during your deliberations. You will also have a verdict form, which will list the interrogatories, or questions, that you must answer to decide this case. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 1.1

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I.2.2

JURORS' DUTIES You have two main duties as jurors. The first one is to decide what the facts are from the

evidence you saw and heard here in court. Deciding what the facts are is your job, not mine, and nothing that I have said or done during this trial was meant to influence your decision about the facts in any way. Do not guess or speculate, and do not be influenced in any way by any personal feeling of sympathy for, or prejudice against, either side in this case. Your second duty is to take the law that I give you, apply it to the facts, and decide under the appropriate burden of proof, which party should prevail on any given issue. It is my job to instruct you about the law, and you are bound by the oath that you took at the beginning of the trial to follow the instructions that I give you, even if you personally disagree with them. This includes the instructions that I gave you before and during the trial, and these instructions. All of the instructions are important, and you should consider them together as a whole. Perform these duties fairly. Do not let any bias, sympathy or prejudice that you may feel toward one side or the other influence your decision in any way. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 1.2

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I.2.2

BURDEN OF PROOF This is a civil case in which Power Integrations, Inc. is charging Fairchild Semiconductor

International, Inc. and Fairchild Semiconductor Corporation, which are collectively referred to as "Fairchild," with patent infringement. Power Integrations has the burden of proving patent infringement and its claims of damages by what is called a preponderance of the evidence. That means Power Integrations has to produce evidence which, when considered in light of all of the facts, leads you to believe that what Power Integrations claims is more likely true than not. To put it differently, if you were to put Power Integrations' and Fairchild's evidence on the opposite sides of a scale, the evidence supporting Power Integrations' claims would have to make the scales tip somewhat on Power Integrations' side. If Power Integrations fails to meet this burden, your verdict must be for Fairchild. In this case, Fairchild is urging that Power Integrations' patents are not valid. A patent, however, is presumed to be valid. Accordingly, Fairchild has the burden to prove the patent-insuit is not valid by clear and convincing evidence. Clear and convincing evidence is evidence that produces an abiding conviction that the truth of a fact is highly probable. Power Integrations must also prove its claims of willful infringement by clear and convincing evidence rather than preponderance of the evidence, the standard that applies to Power Integrations' other claims in this case. Those of you who are familiar with criminal cases will have heard the term "proof beyond a reasonable doubt." That burden does not apply in a civil case and does not play any part in this case. Therefore, you should not consider it at all in your deliberations. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 1.3

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I.2.2

EVIDENCE DEFINED You must make your decision based only on the evidence that you saw and heard here in

court. Do not let rumors, suspicions, or anything else that you may have seen or heard outside of court influence your decision in any way. Do not let any witness' nationality or ethnic heritage, or failure to speak the English language, influence your decision in any way. The evidence in this case includes only what the witnesses said while they were testifying under oath, deposition transcript testimony that has been played or read to you, the exhibits that I allowed into evidence, the stipulations that the lawyers agreed to, and the facts that I have judicially noticed. Nothing else is evidence. The lawyers' statements and arguments are not evidence. Their questions and objections are not evidence. My legal rulings are not evidence. Any of my comments and questions are not evidence. Similarly, no inferences should be drawn from an attorney's objections or my rulings on those objections. Remember that it is the attorney's duty to object to evidence that the attorney thinks is not admissible. My rulings do not indicate any opinion I may hold about the credibility of the evidence that was objected to. During the trial I may have not let you hear the answers to some of the questions that the lawyers asked. I also may have ruled that you could not see some of the exhibits that the lawyers wanted you to see. And, sometimes I may have ordered you to disregard things that you saw or heard, or I struck things from the record. You must completely ignore all of these things. Do not speculate about what a witness might have said or what an exhibit might have shown. These things are not evidence, and you are bound by your oath not to let them influence your decision in any way. Make your decision based only on the evidence, as I have defined it here, and nothing else.

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Source: Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del.

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I.2.2

CONSIDERATION OF EVIDENCE You should use your common sense in weighing the evidence. Consider it in light of your

everyday experience with people and events, and give it whatever weight you believe it deserves. If your experience tells you that certain evidence reasonably leads to a conclusion, you are free to reach that conclusion. Source: Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del. I.5.1 USE OF NOTES You may use notes taken during trial to assist your memory. However, you should use caution in consulting your notes. There is always a tendency to attach undue importance to matters that you have written down. Some testimony that is considered unimportant at the time presented, and thus not written down, takes on greater importance later on in the trial in light of all the evidence presented. Therefore, you are instructed that your notes are only a tool to aid your own individual memory and you should not compare notes with other jurors in determining the content of any testimony or in evaluating the importance of any evidence. Your notes are not evidence, and are by no means a complete outline of the proceedings or a list of the highlights of the trial. Above all, your memory should be the greatest asset when it comes time to deliberate and render a decision in this case. Source: Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del.

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I.2.2

DIRECT AND CIRCUMSTANTIAL EVIDENCE Now, some of you may have heard the terms "direct evidence" and "circumstantial

evidence." Direct evidence is simply evidence like the testimony of an eyewitness which, if you believe it, directly proves a fact. If a witness testified that he saw it raining outside, and you believe him, that would be direct evidence that it was raining. Circumstantial evidence is simply a chain of circumstances that indirectly proves a fact. If someone walked into the courtroom wearing a raincoat covered with drops of water and carrying a wet umbrella, that would be circumstantial evidence from which you could conclude that it was raining. It is your job to decide how much weight to give the direct and circumstantial evidence. The law makes no distinction between the weight that you should give to either one, nor does it say that one is any better evidence than the other. You should consider all the evidence, both direct and circumstantial, and give it whatever weight you believe it deserves. Source: Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del.

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I.2.2

CREDIBILITY OF WITNESSES In determining the weight to give to the testimony of a witness, you should ask yourself

whether there was evidence tending to prove that the witness testified falsely about some important fact, or, whether there was evidence that at some other time the witness said or did something, or failed to say or do something, that was different from the testimony the witness gave at the trial. You should remember that a simple mistake by a witness does not necessarily mean that the witness was not telling the truth. People may tend to forget some things or remember other things inaccurately. If a witness has made a misstatement, you must consider whether it was simply an innocent lapse of memory or an intentional falsehood, and that may depend upon whether it concerns an important fact or an unimportant detail. Source: Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del.

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I.2.2

NUMBER OF WITNESSES One more point about the witnesses. Sometimes jurors wonder if the number of witnesses

who testified makes any difference. Do not make any decisions based only on the number of witnesses who testified. What is more important is how believable the witnesses were, and how much weight you think their testimony deserves. Concentrate on that, not the numbers. Source: Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del.

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I.2.2

EXPERT WITNESSES When knowledge of technical subject matter may be helpful to the jury, a person who has

special training or experience in that technical field ­ a person called an expert witness ­ is permitted to state his opinion on those technical matters. However, you are not required to accept that opinion. As with any other witness, it is up to you to decide whether to rely upon it. In addition, you should consider whether the information upon which the expert bases his opinion is reliable and you should consider any question of reliability of that information when you evaluate the experts' testimony. Source: Uniform Jury Instr. For Patent Cases in the D. Del.; Jury Instructions for Kyphon Inc. v. DiscO-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204JJF, D. Del.

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I.2.2

DEPOSITION TESTIMONY During the trial, certain testimony was presented to you by the reading of a deposition

transcript or the playing of video tape excerpts from a deposition. This testimony is entitled to the same consideration you would give it had the witnesses personally appeared in court. Source: Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del.

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I.2.2

DEMONSTRATIVE EXHIBITS During the course of the trial, you have seen many exhibits. Many of these exhibits were

admitted as evidence. You will have these admitted exhibits in the jury room for your deliberations. The remainder of the exhibits (including charts and animations) were offered to help illustrate the testimony of the various witnesses. These illustrative exhibits, called "demonstrative exhibits," have not been admitted, are not evidence, and should not be considered as evidence. Rather, it is the underlying testimony of the witness that you heard when you saw the demonstrative exhibits that is the evidence in this case. Source: Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del.

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II II.2.2 THE PARTIES

THE PARTIES AND THEIR CONTENTIONS

The plaintiff in this case is Power Integrations, Inc. The defendants are Fairchild Semiconductor International, Inc. and Fairchild Semiconductor Corporation. I will refer to plaintiff as "Power Integrations." I will refer to defendants as "Fairchild."

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II.2.2 POWER INTEGRATIONS' CONTENTIONS Power Integrations contends that Fairchild has infringed, and continues to infringe, various claims of Power Integrations' patents by making, using, and selling within the United States certain integrated circuits, or "chips," for use in power supplies. Specifically, Power Integrations charges that Fairchild has infringed, and continues to infringe, claims 1, 17, and 19 of U.S. Patent 6,249,876; claims 1, 2, 4, 10, 11, 13, and 16 of U.S. Patent 6,107,851; claims 1, 2, 9, 10, 14, and 16 of U.S. Patent 6,229,366; and claims 1 and 5 of U.S. Patent 4,811,075. I will refer to these four patents collectively as the "patents-in-suit," or individually by the last three numbers of the patents. [POWER INTEGRATIONS NEEDS TO REDUCE THE NUMBER OF ASSERTED CLAIMS AS IT HAS AGREED.]

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II.2.2 FAIRCHILD'S CONTENTIONS Fairchild contends that its products do not infringe, literally or under the doctrine of equivalents, any of the asserted claims of the patents-in-suit. Fairchild also contends that the Power Integrations patents-in-suit are not valid.

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II.2.2 SUMMARY OF PATENT ISSUES In this case, you must decide the issues according to the instructions I give you. In general these issues are: 1. Whether Power Integrations has proven by a preponderance of the evidence that

Fairchild has infringed any of the asserted claims of the patents-in-suit. 2. If you find any of the asserted claims of the patents-in-suit are infringed, whether

Power Integrations has proven by clear and convincing evidence that Fairchild's infringement was willful. 3. Whether Fairchild has proven by clear and convincing evidence that any of the

asserted claims of the patents-in-suit are invalid. 4. If you find any of the asserted claims of the patents-in-suit are valid and infringed,

the amount of damages that Power Integrations has proven by a preponderance of the evidence is due to it.

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III

THE PATENT CLAIMS

III.2.2 PATENT CLAIMS GENERALLY Deciding whether a claim has been directly infringed is a two-step process. First, the meaning of the patent claim is determined as a matter of law. That job is for the Court, and I will tell you shortly what the key terms of the asserted claims mean as a matter of law. In the second step, you must compare each claim as I have interpreted it to each of the accused products to determine whether every element of the claim can be found in that accused product. This elementby-element comparison is your responsibility as the jury for this case. Before you can decide whether or not Fairchild has infringed any of Power Integrations' patents, you will have to understand the patent "claims." Patent claims are the numbered paragraphs at the end of a patent. The patent claims involved here are claims 1, 17, and 19 of U.S. Patent 6,249,876; claims 1, 2, 4, 10, 11, 13, and 16 of U.S. Patent 6,107,851; claims 1, 2, 9, 10, 14, and 16 of U.S. Patent 6,229,366; and claims 1 and 5 of U.S. Patent 4,811,075. [POWER INTEGRATIONS NEEDS TO REDUCE THE NUMBER OF ASSERTED CLAIMS AS IT HAS AGREED.] The claims are "word pictures" intended to define, in words, the boundaries of the invention described and illustrated in the patent. Only the claims of a patent can be infringed. Neither the specification, which is the written description of the invention, nor the drawings of a patent can be infringed. Claims may be directed to products, such as machines or chemicals, or they may be directed to methods for making or using a product. Claims are typically divided into parts called "elements." For example, a claim that covers the invention of a table may recite the tabletop, four legs and the glue that secures the legs to the tabletop. The tabletop, legs and glue are each a separate element of the claim. When making your decision regarding infringement, you should not compare Fairchild's products with any specific example set out in the patents-in-suit, or with any product manufactured by Power Integrations. Rather, you must only compare Fairchild's products with

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the asserted claims of the patents-in-suit. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 3.2.1; Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del.

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III.2.2 DEPENDENT AND INDEPENDENT CLAIMS There are two different types of claims in the patents. The first type is called an independent claim. An independent claim does not refer to any other claim of the patent. An independent claim is read separately to determine its scope. On the other hand, a dependent claim refers to and depends upon at least one other claim in the patent and thus incorporates whatever that other claim says. Accordingly, to determine what a dependent claim covers, you must read both the dependent claim and the claim or claims to which it refers. For example, Claims 1 and 17 of the `876 patent are independent claims. You know this because each of these claims mentions no other claims. Accordingly, the words of each of these claims are read by themselves in order to determine what each of the claims covers. Claim 19 of the `876 patent, on the other hand, is a dependent claim. It refers to claim 17. For a Fairchild product to infringe a dependent claim 19, the Fairchild product must have all the elements of both claim 17 and claim 19. Therefore, if you find that an independent claim is not infringed, you must also find that all claims depending on that claim are not infringed. The other independent claims are claim 1 and 11 of the `851 Patent, Claims 1 and 9 of the `366 Patent, and Claim 1 of the `075 Patent. The other dependent claims are Claims 2, 4, 10, 13 and 16 of the `851 Patent, Claims 2, 10, 14, and 16 of the `366 Patent, and Claim 5 of the `075 Patent. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 3.2.2

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III.2.2 CONSTRUCTION OF CLAIMS It is the Court's duty under the law to define what the patent claims mean. I have made my determinations and I will now instruct you on the meaning of claim. You must apply the meaning that I give in each patent claim to decide if such claim is valid and infringed. You must ignore any different interpretations given to these terms by the witnesses or the attorneys. It may be helpful to refer to the copy of the patents-in-suit that you have been given as I discuss the claims at issue here. The claims of the patents are toward the end of each patent. You are advised that the following definitions for the following terms must be applied: [insert claim constructions] Source: Uniform Jury Instr. For Patent Cases in the D. Del. 3.3.2

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III.2.2 MEANS-PLUS-FUNCTION CLAIMS Claims 1 and 10 of the `366 Patent and claims 4 and 16 of the `851 Patent have what are known as a "means-plus-function" element ­ specifically, the "soft start circuit" element. The claim defines this element as a means for performing a specified function. For example, a table could be claimed in a patent as being a tabletop, legs and glue; or an inventor could discuss in the patent the use of glue for attaching legs and then claim a table as being a tabletop, legs and means for attaching the legs to the tabletop. The means-plus-function element would cover glue and any equivalent structure that performed the required function of "attaching the legs to the tabletop." I will now explain the four special rules that apply to this type of claim language. First, the accused device must perform the function as specified in the claim. If not, the claim containing that means-plus-function element is not infringed. Second, if Fairchild's accused product does perform the required function, you must identify the structure in Defendant's accused product that actually performs this function. Third, you must decide whether the technology of this structure in Defendant's accused product was known as of the date the `366 and `851 patents issued. Finally, you must determine whether that accused structure is the same as or equivalent to the following structure identified in the patent for performing the required function. If the structure of the accused device is the same as, or equivalent to, the structure in the patent that I have described, then the means-plus-function element is present. Two structures are equivalent if a person of ordinary skill in the art would consider the differences between them to be insubstantial. One way to determine this is to look at whether or not the accused structure performs the identical function in substantially the same way to achieve substantially the same result. Another way is to consider whether or not people of ordinary skill would have believed that the structure of the accused product and the structure in the patent were interchangeable as of the date the patent issued.

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Source: Uniform Jury Instr. For Patent Cases in the D. Del. 3.3.7

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IV

PATENT INFRINGEMENT

IV.2.2 PATENT INFRINGEMENT GENERALLY A patent owner may enforce its right to stop others from making, using, importing, selling, or offering to sell the patented invention within the United States by filing a lawsuit for patent infringement. Here, Power Integrations, the patent owner, has sued Fairchild, the accused infringer, and has alleged that certain Fairchild products infringe one or more claims of Power Integrations' patents-in-suit. Patent law provides that any person or business entity which makes, uses, sells, offers to sell, or imports, within the United States without the patent owner's permission, any product or method legally protected by at least one claim of a patent before the patent expires, infringes the patent. There are several ways to infringe a patent. One may directly infringe a patent, either literally or under the doctrine of equivalents. Alternatively, one may indirectly infringe a patent, by inducing others to infringe a patent, in which case both the inducer and the direct infringer are liable for infringement. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 3.3; Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del.

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IV.2.2 INFRINGEMENT ­ IMPORTATION BY FAIRCHILD I just told you that one of the ways that a patent may be infringed is if a person imports into the United States, without the patent owner's permission, a product, apparatus or method legally protected by at least one claim of a patent, before the patent expires. To "import" simply means to bring goods into the United States from another country. Fairchild can be liable for infringement by importation only if Fairchild itself brings infringing products into the United States. You cannot find that Fairchild has committed infringement by importation based on another person or company bringing products into the United States, even if those products were manufactured by Fairchild. Sources & Comments: Bristol-Myers Co. v. Erbamont Inc., 723 F. Supp. 1038, 1044 (D. Del. 1989); International Rectifier Corp. v. Samsung Electronics, Ltd., 361 F.3d 1355, 1360-61 (Fed. Cir. 2004).

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IV.2.2 INFRINGEMENT ­ OFFER FOR SALE I just told you that one of the ways that a patent may be infringed is if a person offers to sell in the United States, without the patent owner's permission, a product, apparatus or method legally protected by at least one claim of a patent, before the patent expires. Power Integrations has agreed that no part of its case is based on "offers to sell" infringing products, as distinguished from actual sales. Therefore you should not consider the issue of whether there were infringing "offers to sell" in this case.

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IV.2.2 DIRECT INFRINGEMENT ­ LITERAL INFRINGEMENT For Fairchild's product to literally infringe any one of Power Integrations' patent claims, Fairchild's product or use of its product must include each and every element in that claim. If Fairchild's product or use of its product omits any single component recited in Power Integrations' patent claim, Fairchild does not literally infringe that claim. If you find, with respect to any claim, that Power Integrations disclaimed a particular scope or feature, then the presence of that scope or feature in Fairchild's products cannot be the basis for a finding of literal infringement. For instance, if you find that PI disclaimed DMOS devices during the prosecution of the `075 Patent and if you find that the accused FC devises are DMOS devices, then the accused FC devices cannot infringe the `075 patent. You must determine literal infringement with respect to each patent claim and each accused product individually. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 3.3.1; Jury Instructions for Kyphon Inc. v. Disc-O-Tech Medical Technologies Ltd., and DISC Orthopaedic Technologies, Inc., C.A. No. 04-204-JJF, D. Del.; Ballard Medical Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1359 (Fed. Cir. 1991) (claim scope disclaimed during prosecution cannot be asserted as a basis for literal infringement).

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IV.2.2 DOCTRINE OF EQUIVALENTS If you do not find literal infringement, you may consider infringement under the doctrine of equivalents. The doctrine of equivalents does not apply to your analysis of the `075 Patent, as Power Integrations has agreed that Fairchild does not infringe the `075 Patent under the doctrine of equivalents. I have referred to the "doctrine of equivalents" before. Now it is time to explain this term. As I have noted, to infringe a patent, every claim element must be present in the accused product. A claim element may be present in an accused product in one of two ways, either literally or under the doctrine of equivalents. A claim element is literally present if it exists in the accused product just as it is described in the claim, either as I have explained that language to you or, if I did not explain it, as you understand it from the evidence presented during trial. A claim element is present in an accused product under the doctrine of equivalents if the differences between the claim element and a corresponding aspect of the accused product are insubstantial. One way to determine this is to look at whether or not the accused structure performs substantially the same function, in substantially the same way, to achieve substantially the same result as the element in the claimed invention. Application of the doctrine of equivalents is on an element-by-element basis, meaning that for Fairchild's product or use of its product to infringe any one of Power Integrations' asserted claims under the doctrine of equivalents, the element of a patent claim which is not literally found in a Fairchild product must be present by equivalence. Therefore, the question is whether the accused product contains an equivalent for each element of the claim that is not literally present in the accused product. The question is not whether the accused product or method as a whole is equivalent to the claimed invention as a whole. It is not a requirement under doctrine of equivalents infringement that those of ordinary skill in the art knew of the equivalent when the patent application was filed or when the patent issued. The question of whether Fairchild's product and its components are equivalent to what is defined in Power Integrations' claims is to be determined as of the time of the alleged

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infringement. Application of the doctrine of equivalents is the exception, however, not the rule. Patent claims must be clear enough so that the public has fair notice of what was patented. Notice permits other parties to avoid actions which infringe the patent and to design around the patent. On the other hand, the patent owner should not be deprived of the benefits of his patent by competitors who appropriate the essence of an invention while barely avoiding the literal language of the patent claims. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 3.4

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IV.4(a)

SITUATIONS WHERE RESORT TO DOCTRINE OF EQUIVALENTS IS NOT PERMITTED

There are three situations wherein resort to the doctrine of equivalents to find infringement is not permitted. First, resort to the doctrine of equivalents to find infringement is not permitted if you find that the Fairchild is merely practicing what was in the prior art prior to the patented invention or that which would have been obvious in light of what was in the prior art. This is because a patent owner should not obtain, under the doctrine of equivalents, coverage which he could not have lawfully obtained from the Patent Office. Accordingly, to find infringement under the doctrine of equivalents you must find that the patent owner has proven that he could have obtained from the Patent Office a hypothetical patent claim, similar to the asserted claim, but broad enough to literally cover the accused product or method. Second, resort to the doctrine of equivalents to find infringement is not permitted if you find that the patent owner is trying to recapture that which he gave up in the Patent Office to distinguish the invention from what was in the public domain prior to his invention. As you have already heard, during prosecution of the patent, arguments and amendments are often made in an attempt to convince the Patent Examiner and the Patent Office that the claimed invention is entitled to a patent in view of the prior art before the Examiner. The applicant, in other words, may amend his patent claims or submit arguments in order to define or narrow the meaning of the claims so that they are distinguished from the prior art. If the inventor, when he was in the process of obtaining one of the Power Integrations patents, limited a claim in some way in order to argue that it was different from what was in the public domain, then he is not now free to assert a broader view of his invention by broadening the claims through the doctrine of equivalents in an effort to recapture that which he surrendered. Sometimes patent claims, however, are amended, not to avoid what was in the public domain, but to clarify indefinite or ambiguous terms. If you find that an amendment was made to clarify a claim for that sort of reason and not in an effort to avoid what was in the public domain, the doctrine of equivalents can still be applied. 42

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Third, you may not find infringement under the doctrine of equivalents if even one limitation of a claim or its equivalent is missing from the accused device. Thus, if you determine that a finding of infringement under the doctrine of equivalents would entirely eliminate a particular claimed element, then you should not find infringement under the doctrine of equivalents. Sources & Comments: Instruction 3.10, 1993 District of Delaware Patent Instructions (first two exceptions); Instruction 3.5, Proposed Uniform Jury Instructions For Patent Cases In The United States District Court For The District Of Delaware (2004) (third exception); Prosecution History Estoppel Instruction, American Intellectual Property Law Association Model Jury Instructions (1998); Wilson Sporting Goods v. David Geoffrey & Assocs., 904 F.2d 677, 685, 14 U.S.P.Q.2d 1942, 1948-9 (Fed. Cir.), cert. denied, 111 S. Ct. 537 (1990) (first exception); Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1362-63, 219 U.S.P.Q. 473 (Fed. Cir. 1983); Bayer Aktiengesellschaft v. Duphar International Research B.V., 738 F.2d 1237, 1243, 222 U.S.P.Q. 649 (Fed. Cir. 1984); Moeller v. Ionetics, 794 F.2d 653, 229 U.S.P.Q. 992, 996 (Fed. Cir. 1986); Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 230 U.S.P.Q. 45, 48 (Fed. Cir. 1986); Graham v. John Deere Co., 383 U.S. 1, 33-34, 148 U.S.P.Q. 459 (1966); McGill, Inc. v. John Zink Co., 736 F.2d 666, 673 (Fed. Cir.), cert. denied, 469 U.S. 1037 (1984); Kinzenbaw v. Deere & Co., 741 F.2d 383, 389, 222 U.S.P.Q. 929 (Fed. Cir. 1984), cert. denied, 470 U.S. 1004 (1985); Coleco Industries, Inc. v. ITC, 573 F.2d 1247, 197 U.S.P.Q. 472 (C.C.P.A. 1978); Caterpillar Tractor Co. v. Berco, S.p.A., 714 F.2d 1110, 1115, 219 U.S.P.Q. 185 (Fed. Cir. 1983) (second exception); Corning Inc. v. SRU Biosystems, 400 F. Supp. 2d 653, 658-59 (D. Del. 2005) (Farnan, J.) (third exception).

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IV.2.2 INDIRECT INFRINGEMENT ­ GENERALLY In addition to stopping infringement by those who are directly infringing, a patent owner also has the right to stop those who are known as "indirect infringers." A holder of a patent that describes a process or method in its claims often must rely on claims of indirect infringement to protect his or her rights. That is, without liability for indirect infringement, a company could manufacture a machine to perform a process described in a patent claim and then sell the machine without fear of recourse by the patent holder. Encouraging or inducing others to infringe a patent is known as "inducing infringement." I will explain to you in a moment the precise requirements for finding someone has induced infringement by another person. In this case, Plaintiff accuses Defendant of inducing infringement of ___ claims of the ___ patent. It is your job to determine whether Power Integrations has proven inducement by a preponderance of the evidence. Keep in mind that there can be no indirect infringement unless someone is directly infringing the patent. Thus, to prove that Fairchild is inducing another person to infringe, Power Integrations must prove by a preponderance of the evidence that another person is directly infringing a claim of the patent. Such proof may be based on circumstantial evidence you have heard in this case, rather than direct evidence of infringement. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 3.7

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IV.5.1 INDUCING PATENT INFRINGEMENT In this case, selling products outside the United States is not enough to make Fairchild an infringer, even if someone else later imports those products into the United States. Anonly of importation, such as directed to the United States ; International Rectifier Corp. v. Samsung Electronics, Ltd., 361 F.3d 1355, 1360-61 (Fed. Cir. 2004); Agere Systems, Inc. v. Atmel Corp., 2004 WL 945162, at *11-*12 (E.D.Pa. Apr 30, 2004). We cannot determine whether an instruction on inducement is appropriate and what that instruction should be until Power Integrations identifies the alleged direct infringer and specifies how it contends Fairchild induced that infringement.

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IV.2.2 WILLFUL INFRINGEMENT Power Integrations contends that Fairchild has willfully infringed the patent claims. When a person becomes aware that a patent may have relevance to their activities, that person has a duty to exercise due care and investigate whether or not their activities infringe any valid claim of the patent. If that person does not do so and infringes the patent claims, then the infringement is willful. Although Power Integrations must prove infringement by a preponderance of the evidence, Power Integrations must prove that Fairchild willfully infringed by the higher burden of clear and convincing evidence. To establish willful infringement, Power Integrations must prove two things with clear and convincing evidence: 1. 2. Fairchild was aware of the patent. Fairchild acted without having a reasonable good faith belief that the patent

was invalid or that the patent was not infringed. To determine whether Fairchild acted with a reasonable good faith belief or whether Fairchild willfully infringed the patent, you must consider all of the facts, including the strength of the defenses raised by Fairchild in this trial and the following factors: 1. In designing the product accused of infringement, whether Fairchild

intentionally copied Power Integrations's invention or a product made by Power Integrations that is covered by the patent, or whether Fairchild instead tried to "design around" the patent by designing a product that Fairchild believed did not infringe the patent claims. Evidence of copying is evidence of willful infringement; on the other hand, evidence of a good faith effort to "design around" the claims is evidence that the infringement was not willful. 2. When Fairchild became aware of the patent, whether Fairchild formed a

good faith belief that the patent was invalid or that the patent was not infringed, including whether Fairchild obtained and followed the advice of a competent lawyer. Although the absence of an opinion of counsel does not require you to find willfulness, the obtaining and following of counsel's advice may be evidence that infringement was not willful.

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Keep in mind that a determination by you that Fairchild has infringed the patent does not automatically mean that the infringement was willful. As I have explained, the infringement is not willful if Fairchild had a good faith belief that it did not infringe or that the patent was invalid, and if its belief was reasonable under all the circumstances. Sources & Comments: Instruction 3.13, Proposed Uniform Jury Instructions For Patent Cases In The United States District Court For The District Of Delaware (2004), slightly modified from Tristrata Technology, Inc. v. ICN Pharma., Inc., C.A. No. 01-150-JJF, D.I. 165 (D. Del. Nov. 21, 2003) (Farnan, J.); Eaton Corp. v. Parker-Hannifin Corp., 292 F. Supp. 2d 555, 569 (D. Del. 2003); Johns Hopkins Univ. v. CellPro, 894 F. Supp. 819, 843 (D. Del. 1995).

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V

VALIDITY Fairchild contends that several claims of the patents-in-suit are invalid for failure to

satisfy the legal requirements of patentability. In particular, Fairchild contends that the asserted claims are invalid for lack of enablement, anticipation by prior public knowledge, prior public use, prior invention by another, prior publication, and prior sale, and obviousness,. I will now instruct you on each of these defenses.

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V.2.2 PRESUMPTION OF VALIDITY The granting of a patent by the Patent Office carries with it the presumption that the patent's subject matter is new, useful and constitutes an advance that was not, at the time the invention was made, obvious to one of ordinary skill in the art. The law presumes, in the absence of clear and convincing evidence to the contrary, that the Patent Office acted correctly in issuing the patent. Nevertheless, once the validity of a patent has been put at issue, it is the responsibility of the jury to review what the Patent Office has done consistent with these instructions on the law. Fairchild has the burden of proving invalidity of each claim by clear and convincing evidence. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 4.1.

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V.2.2 ANTICIPATION Fairchild contends that the inventions covered by claims of the patent-in-suit are invalid because they are not new. A person cannot obtain a patent on an invention if someone else has already made the same invention. If the invention is not new, we say that it was "anticipated" by prior art. Prior art is the legal term used to describe what others had done in the field before the invention was made, and may include things such as articles and other patents. It is not necessary that the prior art has been available to every member of the public. It must have been available, without restriction, to that segment of the public most likely to avail itself of the prior art's contents. An invention that is "anticipated" by the prior art is not entitled to patent protection. In order to prove that an invention is "anticipated," Fairchild must prove by clear and convincing evidence that a single piece of prior art describes or discloses all of the elements of the claimed invention. However, if the claimed invention was formed only accidentally or under unusual conditions, it is not an invalidating anticipation. Source: Uniform Jury Instr. For Patent Cases in the D. Del. 4.5

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4.5.1 PRIOR PUBLIC KNOWLEDGE Fairchild contends that some claims of the patents in suit were anticipated because the invention defined in those claims was publicly known or used by others in the United States before the date of invention, which is presumed to be the date the patent application was filed, but that date is to be determined by you, the jury, and there is a separate instruction providing guidance on that date. A patent claim is invalid if the invention recited in that claim was publicly known or used by others in the United States before the patent applicant invented it. If this is true, you must find the patent invalid. Sources & Comments: Instruction 4.5.1, Proposed Uniform Jury Instructions For Patent Cases In The United States District Court For The District Of Delaware (2004); Tristrata Technology, Inc. v. ICN Pharma., Inc., C.A. No. 01-150-JJF, D.I. 165 (D. Del. Nov. 21, 2003) (Farnan, J.); 35 U.S.C. § 102; Kistler Instrumente AG. v. United States, 628 F.2d 1303, 1308 (Fed. Cir. 1980); Eaton v. Rockwell, C.A. No. 97-421-JJF (June 30, 1998) (Farnan, J.).

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4.5.2 PRIOR PUBLIC USE Fairchild contends that some claims of the patents-in-suit were anticipated because the invention defined in those claims was publicly used one year prior to the filing date of the patent. A public use by any person, who is under no limitation, restriction or obligation of secrecy by the inventor, may invalidate the patents-in-suit if it occurred one year or more prior to the filing date of the patent. An invention is publicly used by another when it is made accessible to any member of the public other than the inventor or a person under an obligation of secrecy imposed by the inventor. Sources & Comments: Instruction 4.4, St. Clair Intellectual Property Consultants, Inc. v. Fuji Photo Film Co. Ltd., et al., C.A. No. 03-241 (D. Del. 2004) (Farnan, J.).

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4.5.4 PRIOR PUBLICATION Fairchild contends that some claims of the patents-in-suit were anticipated because the invention defined in each such claim was described in a prior publication, such as an article or another patent. A patent claim may be anticipated and invalid if the entire invention defined by that claim was described in a printed publication either: (i) before the patentee made his invention; or (ii) more than one year before the effective filing date of the patentee's patent application. For a printed publication to anticipate the claims of the patent, Fairchild must show that the printed publication, when read by a person of ordinary skill in the art, expressly or inherently embodies or discloses each element of the patent claim. The disclosure must be complete enough to enable one of ordinary skill in the art to practice the invention, without undue experimentation. In determining whether the disclosure is enabling, you should take into account what would have been within the knowledge of a person of ordinary skill in the art at the time, and you may consider expert testimony and other publications that shed light on the knowledge such a person would have had at that time. In deciding whether a single item of prior art anticipates a patent claim you should consider both what is expressly disclosed or embodied in the particular item of prior art, and also what is inherently present. Sources & Comments: Instruction 4.6, St. Clair Intellectual Property Consultants, Inc. v. Fuji Photo Film Co. Ltd., et al., C.A. No. 03-241 (D. Del. 2004) (Farnan, J.); Instruction 4.5.4, Proposed Uniform Jury Instructions For Patent Cases In The United States District Court For The District Of Delaware (2004); Tristrata Technology, Inc. v. ICN Pharma., Inc., C.A. No. 01-150-JJF, D.I. 165 (D. Del. Nov. 21, 2003); 35 U.S.C. § 102; Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 936-37 (Fed. Cir. 1990); Honeywell International, Inc. v. Hamilton Sundstrand Corp., C.A. No. 99-309GMS (Feb. 15, 2001); Baxter International, Inc. v. Cobe Laboratories, Inc., 88 F.3d 1054 (Fed. Cir. 1996).

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4.5.5

PRIOR UNITED STATES PATENT APPLICATION Fairchild contends that Claim 1 of the `075 Patent, was anticipated because the invention

defined in that claim was embodied in the prior patent application that issued as the Beasom `173 Patent. A patent may be found invalid if the claimed invention was described in a patent granted on an application as filed by another in the United States before the date the invention was made by Power Integrations in the United States. The application for the Beasom `173 Patent was filed on January 7, 1986, approximately 15 months before the application for the Eklund `075 Patent was filed, on April 24, 1987. In order for the `075 Patent to be anticipated by the application that issued as the Beasom `173 Patent, Fairchild must prove that the Beasom `173 Patent describes or discloses to one of ordinary skill in the art the elements of Claim 1 of the `075 Patent. Fairchild contends that the Beasom `173 Patent expressly discloses contacts to the source and drain regions because it incorporates by reference Figure 7 of U.S. Patent 4,283,236, which shows such contacts. A patent incorporates material by reference if it identifies the material with detailed particularity, clearly indicates where that material is found in the source, and cites to and specifically identifies the content of the material in a way that demonstrates the intent to make the content part of the specification. To incorporate by reference, a patent need not use the words "incorporate by reference." Power Integrations admits that all other elements of Claim 1 of the `075 Patent are present in the Beasom `173 Patent. Even if you find that contacts to the source and drain regions are not expressly present, Fairchild contends that contacts to the source and drain regions are inherently present in the Beasom `173 Patent. Something is inherent in an item of prior art if it is necessarily present in what is described in the prior art reference and it would be recognized by persons of ordinary skill in the art. A gap in a prior art reference may be filled by referring to other evidence that describes the missing descriptive matter that is necessarily present in the reference, and to show that the missing matter would be so recognized by persons of ordinary skill in the art.

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Sources & Comments: Instruction 4.6, Proposed Uniform Jury Instructions For Patent Cases In The United States District Court For The District Of Delaware (2004); 35 U.S.C. § 102; Baxter International, Inc. v. Cobe Laboratories, Inc., 88 F.3d 1054 (Fed. Cir. 1996); Glaxo Wellcome v. Genentech, C