Free Declaration - District Court of Delaware - Delaware

Case 1 :04-cv-01371-JJF Document 209 Filed 03/17/2006 Page 1 of 4
FR04 :HnR0nRD PHYSICS DEPT Fnx No. z _ Mer. 17 20136 12:20PM P3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
POWER INTEGRATIONS, INC., :1 Delaware
corporation, -
Plaintiff,
v` c.A. Ne. 04-1371
FAIRCHILD SEMICONDUCTOR
INTERNATIONAL, INC., 21 Delaware
corporation, and FAIRCH FLD
SEMICONDUCTOR CORPORATION, _
a Delaware corporation,
Defendants. __
- DEC · ‘ · . ON O DR. P- UL I-IOR0 I TZ IN SUPPORT OF
• J r 'l` TION O SUM · JUDGME T F
mv . m A 110.6249 svc
I, Paul Horowitz, thc undersigned, declare as follows:
1. I am s Professor of Physics and of Electrical Engineering at Harvard University,
where I teach courses in Physics and in Electronics, and where I perform and supervise
experimental research. I have been asked tp give expert opinions and testimony concerning
Power Integrutions’ U.S. Patent No. 6,249,l%76 (the ***876 Patent").
2. As I stated in my Initial Exp%rt Report, U.S. Pat. No. 4,638,417 ("Mat“tiu")
includes all the elements of Claim l of the E876 patent, which it anticipates. The figure in Martin
shows exactly the configuration described Claim 1 of the *876 patent: a voltagecontrolled
l
oscillator ("VCO") driving a counter, who output is coupled to a digital—to-analog converter
("DAC") (via n ROM), thence to the VCO' control input. The Martin circuit provides the
oscillator for a DC- DC switching power s ply.
3. As I indicated in my earlier icports, the presence of the EPROM element between
the counter and thc DAC does not prevent ll/Iartin from anticipating Claim l of the *876 patent.
One of ordinary skill in the nrt would undeistand that the term "coupled“ of Claim 1 docs not
1

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mom :HnRut=tRD PHYSICS DEPT FQX No. : Mer. 17 zooe 12: ZGPM P4
require a direct connection between the counter and the DAC. The EPROM element merely
functions as a lookup table, using thc signal provided by the counter to look up tt Sl¤f¢d Signal-
That stored signal is then provided to the DAC.
4. As I stated in my Initial Expert Report, the article by Wang and Sanders.
“Pr0gra1nmed Pulsewidth Modulated Wavcforms for Electromagnetic Interference Mitigation in
DC-DC Converters," IEEE Transactions on Power Electronics, Vol. 8, N0. 4, October 1993
("Wan.g") includes all the elements of Claim 1 ofthe *876 patent, which it anticipates. Figure 20
of Wang shows a eoniiguration consisting of an oscillator whose frequency can be varied by the
output of a DAC, the oscillator’s output clocking a counter whose output is coupled (via a ROM)
to the DAC. _
5. The ROM element in Wang functions in the same way as the EPROM element in
the Martin patent. For the same reasons the EPROM does not prevent Martin from anticipating
Claim 1 ofthe *876 patent, the presence ofthe ROM element does not prevent Wang from
anticipating it.
6. As T stated in my Initial Expert Report, the article by Thomas G. Habetler entitled
“Aeoustie Noise Reduction in Sinusoidal PWM Drivers Using a Randomly Modulated Carrier,"
IEEE Transactions on Power Electronics, Vol. 6, No. 3, July 1991, p. 356 ("Habetlei“’)inc1udes
all the elements of Claim 1 ofthe *876 patent, which it anticipates. Habetler deals with
switching AC power supplies. Its Figure 5 illustrates a voltage-controlled oscillator whose
output clocks a counter, the output of which is coupled (via a ROM) to a DAC whose output
drives the VCO's control input.
7. The ROM element in Habetler functions in the same way as the EPROM element
in the Martin patent. For the same reasons the EPROM does not prevent Martin from
anticipating Claim I ofthe *876 patent, the presence ofthe ROM element does not prevent
Hnbetler from anticipating it. A
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Case 1 :04-cv-01371-JJF Document 209 Filed 03/17/2006 Page 3 of 4
FROM :HnRUeRD PHYSICS DEPT FRX N0. : Mar. 17 2BBE 12: ZBPM P5
8. l. understand from Fairchild’s attorneys that the preamble of Claim 1 is not a
limitation. If, however, it were to be construed as a limitation, one of ordinary skill in the art
would understand that each ol` thc Martin, Wang, and Habetler references expressly disclose it.
I declare the foregoing is true and correct under penalty of pcxj ury under the laws of the
United States of America.
Executed on March 17, 2006 in Cambridge, Massachusetts.
7 Guo!
t Dr. Paul H witz
DOCSSVl:45206l.l
. 3 -

Case 1 :04-cv-01371-JJF Document 209 Filed 03/17/2006 Page 4 of 4
CERTIFICATE OF SERVICE
I hereby certify that on the 17th day of March, 2006, the attached DECLARATION OF
DR. PAUL HOROWITZ IN SUPPORT OF DEFENDANTS’ MOTION FOR SUMMARY
JUDGMENT OF INVALIDITY OF CLAIM 1 OF U.S. PATENT NO. 6,249,876 was served
upon the below—named counsel of record at the address and in the manner indicated:
William J. Marsden, Jr., Esquire HAND DELIVERY
Fish & Richardson, P.C.
919 N. Market Street
Suite 1100
P.O. Box 11 14
Wilmington, DE 19899
Frank E. Scherkenbach, Esquire VIA FEDERAL EXPRESS
Fish & Richardson P.C.
225 Franklin Street
Boston, MA 02110—2804
Michael Kane, Esquire VIA FEDERAL EXPRESS
Fish & Richardson P.C.
60 South Sixth Street `
3300 Dain Rauscher Plaza
Minneapolis, MN 55402
Howard G. Pollack, Esquire VIA FEDERAL EXPRESS
Fish & Richardson P.C.
· 500 Arguello Street, Suite 500
Redwood City, CA 94063
Andre G. Bouchard, Esquire HAND DELIVERY
Bouchard Margules & Friedlander, P.A.
222 Delaware Avenue, Suite 1400
Wilmington, DE 19801
/s/ John G. Day
John G. Day