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Case 1 :07-cv—00633-JJ F-LPS Document 57 Filed 03/26/2008 Page 1 of 4
Asn-IBY & GEDDES
ATTORNEYS AND COUNSELLORS AT LAW TELEPH¤NE
302-654-IBBB
500 DELAWARE AVENUE FACSIMILE
P. O. BOX lI5O 302-$54-2067
WILMINGTON, DELAWARE I9899
March 26, 2008
The Honorable Leonard P. Stark VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, Delaware 19801
Re: Power Integrations, Inc. v, BCD Semiconductor Corporation, et al.,
C.A. No. 07-633-JJF/LPS
Dear Judge Stark:
On behalf of the defendants ("BCD"), we write in response to the March 25, 2008 letter
in which plaintiff ("Power Integrations") complains about BCD’s responses to its requests for
discovery in the above action.
As an initial matter, we note that Power Integrations’ tactical effort to portray BCD as an
uncooperative litigant that simply has "refused" to provide discovery, and has "reneged" on its
promises, is neither a fair characterization under the circtunstances of this case nor consistent
with the content and tone of the parties’ discussions conceming discovery to date. Discovery is
still in its early stages, but the discussions between the parties have been entirely civil, and while
each party has had complaints about the other’s discovery responses, we fully expect that the
parties will continue to cooperate with each other and resolve most disputes without Court
intervention. Indeed, although Power Integrations’ letter is replete with sweeping statements that
imply a complete breakdown in the progress of discovery, the parties actually have reached an
impasse on only two specific issues — i. e., whether BCD should have to provide discovery on the
AP3706 chip, and the appropriate timing of responses to contention interrogatories.
Other than the foregoing two issues in dispute, to which we will turn momentarily, Power
Integrations knows from the pa1·ties’ discussions that BCD fully intends to respond to discovery
and has represented that it will produce documents and provide revised interrogatory responses
on April 1, which, under the circumstances, is a reasonable date. Our client is located in China
and has no prior experience with the scope and pace of discovery in U.S. litigation. A significant
number of its documents are in Chinese, substantially slowing the process of reviews for
responsiveness, relevance, and privilege. This (as well as the miscommunication that resulted in
our inability to supplement our interrogatory answers by the originally anticipated March 14th
date) was explained to Power Integrations’ counsel, and although disappointment in our
proposed timeline was expressed, no one ever suggested that we were acting in the bad faith that
Power Integrations now implies in its letter to the Court. Power Integrations first filed this case
in Califomia in June 2007. Just as discovery was commencing it unexpectedly dismissed its case
in October 2007 and started from scratch by re—f1ling its claims in this Court. Surely its strategic
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analysis in deciding to do so included the recognition that it would be adding considerable delay
to the progress of its own case, and it is unreasonable, in BCD’s view, for Power Integrations
nonetheless to insist that BCD now do everything at a break—neck pace in order to help make up
for the time that Power Integrations squandered. BCD is working in good faith and on a
reasonable schedule to gather the information to which Power Integrations is entitled.
Discovery on the AP3 706 and AP3 708 Chips
Power Integrations’ complaint about BCD’s failure to produce schematics on the AP3 706
or AP3 708 chips is baseless because none of Power Integrations’ discovery requests covers these
two products. Power Integrations cites two requests, Nos. 5 and 53, both concerning "the
Accused Products,” which it defined as "products described by BCD as ‘pu1se width modulation’
or ‘PWM’ controllers . . . that include any of what BCD refers to as a ‘Frequency Dither,’
‘Frequency Dithering,’ or ‘Vcc/Feedback Control’ feature.” See Exhibit G to Power
Integrations’ letter, Request Nos. 5 and 53 and Definition No. 8. The definition also specifically
identifies only the AP3700, AP3700A, AP3700E, and AP37l0 chips. Id. No evidence has been
cited (nor are we aware of any) showing that the AP3 706 chip or the AP3 708 chip meets Power
Integrations definition of "Accused Products."
But more fundamentally, this dispute reveals the basic problem with Power Integrations’
case. So far, Power Integrations’ allegations against BCD rely solely on the importation and sale
by a third party, Samsung, of mobile-phone chargers that contain the AP3700 chip inside them.
As far as BCD knows, no one, not even a third party, has sold any product in the United States
containing an AP37l 0 chip. Since a handful of those chips have been sold in China, and more
are going to be sold, BCD decided to compromise and produce information conceming those
chips. In contrast, however, not a single AP3 706 chip has been sold anywhere in the world.
Power Integrations simply has no basis to make the AP3 706 chip part of this case.
We have been unable on such short notice to obtain information regarding the AP3708
chip. Although some of Power Integrations’ letters refer to the AP3 708, we do not recall
discussing that product in any detail during our prior conversations with Power Integrations’
counsel, and we definitely did not do so in the past few days as part of our meet and confer
process in connection with Thursday’s teleconference. We will do our best to learn more about
the AP3 708 by the time of the teleconference.
Corztention Interrogatories
There are a total of 61 claims in the three patents that were asserted in Power
Integrations’ original complaint. As of the time of the parties’ meet and confer on Monday
afternoon, March 24, Power Integrations still had not disclosed which claims it was asserting
against BCD. BCD reasonably has resisted responding to contention discovery until Power
Integrations identified the claims it would assert, since it was likely that Power Integrations
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would end up asserting only a small subset of the total universe of claims, and all of BCD’s work
on the non—asserted claims would have been a time-consuming and expensive waste of effort.
On Monday night, Power lntegrations finally identified for the first time exactly what
claims it was going to assert in this action. And, just as BCD had predicted, Power Integrations
is asserting only a handful of the claims it originally asserted in this case. Specifically, in
addition to the 11 claims it eliminated two weeks ago when it amended its complaint and
abandoned one of the three patents originally in suit, on Monday night it abandoned all but ll of
the 50 claims in the two remaining patents — thus proving BCD’s point.
Now that BCD knows what claims are involved, BCD has proposed to provide its
contentions regarding the asserted claims on or before April 25, which would be about 30 days
from the date when Power Integrations served its own contentions. Power Integrations has
rejected this proposal. However, BCD’s proposal is consistent with patent disclosure rules used
both in this district and throughout the country, which consistently allow a defendant to defer its
contentions until late in discovery or at least Lmtil some reasonable period of time cyier the
patentee discloses its contentions. See, e. g., the Honorable Sue L. Robinson’s default Case
Management Schedule for patent cases, at fj 2(b)(3) ("In the absence of agreement among the
parties, contention interrogatories, if filed, shall first be addressed by the party with the burden of
proof no later than the date established for the completion of document production, with the
responsive answers due within thirty (30) days thereo£"); N.D.Cal. Local Patent Rule 3.3
(invalidity contentions due 45 days after the patentee serves its "Disclosure of Asserted Claims
and Iniiingement Contentions"); E.D.Tex. Local Patent Rule 3.3 (same); N.D.Ga. Local Patent
Rule 4.4 (b) ("A defendant opposing a claim of patent infringement shall first make its
Disclosure of Invalidity Contentions and its Response to Infringement within thirty (30) days
after the plaintiffs Disclosure of Infringement Contentions"). Moreover, during the upcoming
weeks, the parties are briefing and arguing a motion to dismiss and a preliminary injrmction
motion. Even meeting BCD’s proposed schedule will tax BCD’s resources.
In sum, BCD respectfully requests that Power Integrations’ request for discovery into the
AP3706 and AP3 708 chips be denied, and the Court provide an orderly schedule for invalidity
and non—infringement contention responses, making BCD’s responses due on or before April 25,
2008.
Respectfhlly,
/s/ Steven JC Balick
Steven J. Balick
SJ B/dmf
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March 26, 2008
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c: Kyle Wagner Compton, Esquire (by hand and via electronic mail)
William J. Marsden, Jr., Esquire (via electronic mail)
Frank E. Scherkenbach, Esquire (via electronic mail)
Howard G. Pollack, Esquire (via electronic mail)
Erik R. Puknys, Esquire (via electronic mail)
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