Case 5:16-cv-06371-BLF Document 287 Filed 08/22/19 Page 1 of 54
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`POWER INTEGRATIONS, INC.,
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`Plaintiff,
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`v.
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`ON SEMICONDUCTOR CORPORATION,
`et al.,
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`Defendants.
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`Case No. 16-cv-06371-BLF
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`
`ORDER GRANTING IN PART,
`DENYING IN PART, AND FINDING
`MOOT IN PART ON’S MOTION FOR
`SUMMARY JUDGMENT; GRANTING
`IN PART AND DENYING IN PART
`PI’S MOTION FOR SUMMARY
`JUDGMENT
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`[Re: ECF 221, 224]
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` This case is just one of many in a long line of disputes between Power Integrations, Inc.
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`(“PI”) on the one hand and ON Semiconductor Corporation and Semiconductor Components
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`Industries, LLC (collectively, “ON”) (and their subsidiaries) on the other. In this consolidated
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`action, each party sues the other for infringement of various patents. PI sues ON for infringement
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`of seven patents: U.S. Patent Nos. 6,212,079 (“the ’079 Patent”); 8,115,457 (“the ’457 Patent”);
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`7,239,119 (“the ’119 Patent”); 7,538,533 (“the ’533 Patent”); 6,297,623 (“the ’623 Patent”);
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`6,414,471 (“the ’471 Patent”); and 6,249,876 (“the ’876 Patent”) (collectively, “PI’s Asserted
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`Patents”). See PI Compl., ECF 1; PI Ans., ECF 100. ON sues PI for infringement of eight
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`patents: U.S. Patent Nos. 6,333,624 (“the ’624 Patent”); 6,429,709 (“the ’709 Patent”); RE39,933
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`(“the ’933 Patent”); RE41,908 (“the ’908 Patent”); RE45,862 (“the ’862 Patent”); 6,597,221 (“the
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`’221 Patent”); 7,944,272 (“the ’272 Patent”); and 7,447,601 (“the ’601 Patent”) (collectively,
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`“ON’s Asserted Patents”). ON Third Am. Compl., ECF 94. Each party also asserts declaratory
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`judgment claims, counterclaims, or affirmative defenses of invalidity and non-infringement as to
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`the other parties’ asserted patents. PI Ans.; ON Third Am. Compl.; ON Second Am. Ans., ECF
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`96.
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`Northern District of California
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`Case 5:16-cv-06371-BLF Document 287 Filed 08/22/19 Page 2 of 54
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`Presently before the Court are the parties’ motions for summary judgment. ON Mot., ECF
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`221; PI Mot., ECF 224. Each party seeks to summarily adjudicate several distinct issues in the
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`case. The Court held a hearing on the motions on June 6, 2019. For the reasons set forth below,
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`ON’s motion is GRANTED IN PART, DENIED IN PART, AND FOUND MOOT IN PART and
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`PI’s motion is GRANTED IN PART AND DENIED IN PART.
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`I. LEGAL STANDARD
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`Federal Rule of Civil Procedure 56 governs motions for summary judgment. Summary
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`judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions
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`on file, together with the affidavits, if any, show that there is no genuine issue as to any material
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`fact and that the moving party is entitled to a judgment as a matter of law.” Celotex Corp. v.
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`Catrett, 477 U.S. 317, 322 (1986) (citing Fed. R. Civ. P. 56(c)).
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`The moving party “bears the burden of showing there is no material factual dispute,” Hill
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`v. R+L Carriers, Inc., 690 F. Supp. 2d 1001, 1004 (N.D. Cal. 2010), by “identifying for the court
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`the portions of the materials on file that it believes demonstrate the absence of any genuine issue
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`of material fact,” T.W. Elec. Serv. Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir.
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`1987). Once the moving party has satisfied this initial burden, the non-moving party must then
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`“identify with reasonable particularity the evidence that precludes summary judgment.” Keenan v.
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`Allan, 91 F.3d 1275, 1279 (9th Cir. 1996); see also Schneider v. TRW, Inc., 938 F.3d 986, 991 (9th
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`Cir. 1990). It is not the duty of the district court to “to scour the record in search of a genuine
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`issue of triable fact.” Keenan, 91 F.3d at 1279 (quoting Richards v. Combined Ins. Co., 55 F.3d
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`247, 251 (7th Cir. 1995)). Moreover, the court makes no credibility determinations and does not
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`weigh the evidence. “The evidence of the non-movant is to be believed, and all justifiable
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`inferences are to be drawn in his favor.” Anderson, 477 U.S. at 254; see also Matsushita Elec.
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`Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). For a court to find that a genuine
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`dispute of material fact exists, “there must be enough doubt for a reasonable trier of fact to find for
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`the [non-moving party].” Corales v. Bennett, 567 F.3d 554, 562 (9th Cir. 2009). If the non-
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`moving party fails to make this showing, the moving party is entitled to summary judgment.
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`Celotex, 477 U.S. at 323.
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`Case 5:16-cv-06371-BLF Document 287 Filed 08/22/19 Page 3 of 54
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`II. DISCUSSION
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`The Court first addresses ON’s motion and then turns to PI’s motion. The Court provides
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`the facts relevant to each issue in the respective issue’s subsection.
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`A. ON’s Motion for Summary Judgment (ECF 221)
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`ON moves for summary judgment of six issues: (1) whether the asserted claims of PI’s
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`’623 Patent, ’533 Patent, and ’457 Patent are invalid for indefiniteness; (2) whether PI’s damages
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`period is limited to the time of filing of its claims for each asserted patent because PI failed to
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`provide ON with pre-suit notice of its claims of infringement; (3) whether in inter partes review
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`(“IPR”) PI disclaimed the claim scope of its ’079 Patent, such that ON’s accused products do not
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`infringe the asserted claims; (4) whether ON’s accused products do not infringe the ’079 Patent
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`because they do not meet the “fixed switching frequency” requirement of the asserted claims; (5)
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`whether the asserted claims of PI’s ’471 Patent are invalid as anticipated by U.S. Patent No.
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`4,413,224 (“the ’224 Patent”) to Krupka; and (6) whether PI can prove infringement of claim 1 of
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`PI’s ’876 Patent even though its infringement contentions and expert reports do not address the
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`version of the claim that was amended in reexamination during the pendency of this action. See
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`ON Mot. at 1–2.
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`The Court addresses each issue in turn.
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`1. Invalidity of PI’s ’623, ’533, and ’457 Patents for Indefiniteness
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`ON first asks the Court to enter summary judgment on the asserted claims of the ’623
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`Patent, the ’533 Patent, and the ’457 Patent because the Court held the asserted claims indefinite
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`in its claim construction order. ON Mot. at 2 (citing ECF 196 at 19–21, 27–31, and 33–36; ECF
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`198). PI does not oppose this request. PI Opp. at 1, ECF 238.
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`“A lack of definiteness renders invalid ‘the patent or any claim in suit.’” Nautilus, Inc. v.
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`Biosig Instruments, Inc., 572 U.S. 898, 902 (2014) (quoting 35 U.S.C. § 282, ¶ 2(3) (2006 ed.)).
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`Because the Court has held that all asserted claims of these three patents are indefinite, the Court
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`holds that the asserted claims are invalid and thus GRANTS ON’s motion for summary judgment
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`on this issue.
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`Case 5:16-cv-06371-BLF Document 287 Filed 08/22/19 Page 4 of 54
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`2. PI’s Damages Period and Pre-Suit Notice
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`ON asks the Court to hold that the damages periods for infringement by ON of PI’s patents
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`(the ’079, ’876, ’471, and ’119 Patents) began when PI first filed claims for infringement of each
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`asserted patent. ON argues that 35 U.S.C. § 287 dictates this result because PI neither marked its
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`products with the asserted patent numbers nor otherwise notified ON of any alleged infringement
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`prior to PI’s filing claims on each patent.
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`Section 287 requires patentees and those selling patented products in the United States to
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`mark their products in specific ways in order to provide notice that the products are patented. If a
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`patentee or seller does not comply with this requirement, Section 287(a) limits his or her rights in
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`certain ways:
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`In the event of failure so to mark, no damages shall be recovered by the patentee in
`any action for infringement, except on proof that the infringer was notified of the
`infringement and continued to infringe thereafter, in which event damages may be
`recovered only for infringement occurring after such notice. Filing of an action for
`infringement shall constitute such notice.
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`35 U.S.C. § 287(a). Under this subsection, “notice” means actual notice, which “requires the
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`affirmative communication of a specific charge of infringement by a specific accused product or
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`device.” Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994).
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`PI does not dispute that it did not mark its products. See PI Opp. at 1–4; ON Mot., Ex. B at
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`241, ECF 221-3 (testimony by PI’s president and CEO stating that he does not believe PI marked
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`its products). And PI does not present any evidence with respect to any other notice of ON’s
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`infringement of the ’119 Patent. As such ON’s motion is GRANTED with respect to the notice
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`date of the ’119 Patent, which is the first date on which PI filed a claim for infringement of this
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`patent against ON.1
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`However, PI argues that the damages periods for the ’079, ’876, and ’471 Patents are not
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`limited to the date of filing of the relevant claims. PI’s arguments as to the ’079 and ’876 Patents
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`differ from its arguments as to the ’471 Patent. The Court discusses each set of arguments in turn.
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`1 Neither ON nor PI provides the relevant date to the Court, but the Court believes this date is
`November 1, 2016, when PI filed its Complaint in this case. See ON Mot., Ex. C at 10, ECF 221-
`4 (PI’s October 24, 2018 interrogatory responses).
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`Case 5:16-cv-06371-BLF Document 287 Filed 08/22/19 Page 5 of 54
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`a. ’079 and ’876 Patents
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`PI argues that the damages periods for the ’079 and ’876 Patents began on June 16, 2014
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`(before PI’s filing of the relevant claims). On June 16, 2014, PI’s CEO Balu Balakrishnan sent an
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`email to ON’s CEO Keith Jackson which stated in relevant part that PI’s “initial review of [ON’s
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`product] NCP1246 data sheet indicates that patent numbers ending in 079, 457 and[] 851 and/or
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`876 are infringed.” ON Mot., Ex. D, ECF 221-5; see PI. Opp. at 1–4.
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`ON makes two arguments as to why the June 2014 email, as well as other similar
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`communications in 2014, do not constitute actual notice under Section 287: (1) PI’s own
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`employees “affirmatively disclaimed” that the communications constitute actual notice; and (2)
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`the communications are settlement communications protected by Federal Rule of Evidence 408
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`and thus “not usable for any purpose in this litigation.” ON Mot. at 3. Neither argument is
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`persuasive.
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`First, genuine disputes of material fact exist as to ON’s affirmative disclaimer argument.
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`ON presents evidence that PI’s 30(b)(6) witness Mr. Clifford Walker testified in his deposition
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`that it is PI’s position that the communications in 2014 do not constitute actual notice because at
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`the time of the communications and on the day of his deposition (on April 16, 2019) he intended
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`that the communications would be protected settlement communications under Rule 408. See ON
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`Mot. at 4 (citing Ex. G at 263:12–17; 267:24–268:10, ECF 221-8). But PI cites additional
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`testimony from Mr. Walker in that same deposition which shows that his intent is not so definite.
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`See PI Opp. at 2–3. When Mr. Walker was asked whether it was PI’s position that the 2014
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`communications were not actual notice, he responded saying, “[w]ell, that was our original intent.
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`I’m not sure exactly how it has developed, but that was our intent that it not [sic] to be notice but
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`maybe it actually was depending on if someone says, [w]ell, those were not settlement discussions
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`and, therefore, not protected and, therefore, obviously the communications were notice.” ON
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`Mot., Ex. G at 262:24–263:6. He also clarified that his “answer is qualified to the extent that ON
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`agrees that these were settlement discussions,” saying, “To me, it goes both ways. If we say it’s
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`settlement, then I agree that neither party received notice. If we decide, well, it actually wasn’t
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`settlement discussions, protected discussions despite the parties’ intent and there was a
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`Case 5:16-cv-06371-BLF Document 287 Filed 08/22/19 Page 6 of 54
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`misunderstanding, then maybe they were notices. So I don’t know the answer.” Id. at 267:11–13,
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`17–23.
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`ON argues that this contradictory evidence is not material because Mr. Walker’s disclaimer
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`hinges on ON’s willingness to agree that the discussions were settlement communications, and
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`ON, in its motion, does agree that they were settlement communications, thus triggering Mr.
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`Walker’s disclaimer. See ON Reply at 2, 7, ECF 245. But again PI presents evidence that puts in
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`dispute whether Mr. Walker would disclaim that the communications serve as notice in this case.
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`Specifically, PI notes that on several occasions throughout this lawsuit ON itself has used the 2014
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`communications for its own purposes, such as when it attached the June 2014 email to its Third
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`Amended Complaint as a basis for declaratory judgment jurisdiction (ECF 94 ¶ 24; ECF 94-5) and
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`when it cited the 2014 communications in its infringement contentions as a basis for alleging
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`indirect and willful infringement of its own patents (see, e.g., ECF 224-58 at 11). See PI Opp. at
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`1–2. Given ON’s use of the communications in this suit and the reliance of Mr. Walker’s alleged
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`disclaimer on ON’s actions with respect to the communications, a reasonable jury could conclude
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`that PI did not, in light of ON’s actions, affirmatively disclaim or waive its right to argue that the
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`communications constitute actual notice. Thus, genuine disputes of material fact bar summary
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`judgment based on ON’s first argument for affirmative disclaimer.
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`As to ON’s second argument, as a matter of law Federal Rule of Evidence 408 does not bar
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`PI’s use of the 2014 communications, including the June 2014 email, in this litigation. Rule 408
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`provides that settlement communications are not admissible as evidence “either to prove or
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`disprove the validity or amount of a disputed claim or to impeach by a prior inconsistent statement
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`or a contradiction.” F.R.E. 408(a). Such evidence is admissible, however, “for another purpose,
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`such as proving a witness’s bias or prejudice, negating a contention of undue delay, or proving an
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`effort to obstruct a criminal investigation or prosecution.” F.R.E. 408(b). As PI notes (PI Opp. at
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`3), the Advisory Committee Notes to the 2006 Amendments to Rule 408 make abundantly clear
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`that such evidence is admissible to prove notice, stating that “[t]he amendment does not affect the
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`case law providing that Rule 408 is inapplicable when evidence of the compromise is offered to
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`prove notice.”
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`The case law confirms that Rule 408 does not bar the introduction of such evidence for
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`notice purposes. See Microsoft Corp. v. Motorola, Inc., 795 F.3d 1024, 1055 (9th Cir. 2015)
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`(recognizing that Rule 408 does not bar evidence submitted to prove “notice or knowledge” and
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`holding admission of previous consent decree with FTC was allowed under Rule 408 to “show
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`[the defendant] was aware the FTC (and [plaintiff]) found its conduct questionable enough to
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`merit investigation”); United States v. Austin, 54 F.3d 394 (7th Cir. 1995) (upholding admission of
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`evidence relating to FTC settlement because it was used in part to “show[] that [the defendant]
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`was on notice when he subsequently sold prints that those prints were forgeries”); Samsung
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`Electronics Co., Ltd. v. Quanta Computer, Inc., No. 00-CV-04524, 2006 WL 2850028, at *5
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`(N.D. Cal. Oct. 4, 2006) (holding Rule 408 would not bar admission of pre-litigation settlement
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`negotiations introduced “to demonstrate [the defendant] had actual notice of the ’273 patent and
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`[the plaintiff]’s assertion of infringement”); cf. Breuer Elec. Mfg. Co. v. Toronado Sys. of Am.,
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`Inc., 687 F.2d 182, 185 (7th Cir. 1982) (“In this case, the ‘settlement’ evidence was properly
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`presented below to rebut defendants’ assertion that they had not been aware of the issues until the
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`suit was filed.”).
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`ON asserts without citation that PI’s introduction of this evidence for notice is
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`impermissible under Rule 408 because PI is improperly using the evidence to prove the “amount
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`of a disputed claim.” ON. Mot. at 3–4. ON argues that because the evidence would increase the
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`length of the damages period, it necessarily would increase the potential damages, and in turn the
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`amount of the claim. Not only does this unsupported argument directly contradict the Advisory
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`Committee Notes and the case law above, but also it is not convincing in its own right. The same
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`argument could be made with respect to evidence introduced to “negat[e] a contention of undue
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`delay,” which is explicitly excepted from Rule 408. A contention of undue delay could limit a
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`damages period or indeed preclude a claim entirely (such as in the case of, say, laches), but the
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`Rule makes clear that proving undue delay is not akin to proving the amount of a disputed claim.
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`The Court sees no meaningful distinction on this front between proving undue delay and proving
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`notice. Thus, the Court concludes as a matter of law that Rule 408 does not bar PI’s use of the
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`2014 communications as notice here.
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`Case 5:16-cv-06371-BLF Document 287 Filed 08/22/19 Page 8 of 54
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`Having determined that the June 2014 email is not excluded, the Court concludes that ON
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`has failed to meet its initial burden to demonstrate that PI has no evidence of actual notice of ON’s
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`alleged infringement of the ’079 and ’876 Patents prior to filing the relevant claims.
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`However, ON also argues that even if the June 2014 emails are not excluded, PI has no
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`evidence that it provided actual notice on any accused product other than NCP1246, the sole
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`product discussed in the June 2014 email. See ON Mot. at 6–7 (citing Amsted, 24 F.3d 186; Gart
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`v. Logitech, Inc., 254 F.3d 1334, 1347 (Fed. Cir. 2001)). But as PI notes, the Federal Circuit has
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`held that “when the threshold specificity [for actual notice] is met, the ensuing discovery of other
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`models and related products may bring those products within the scope of the notice.” Funai Elec.
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`Co., Ltd. v. Daewoo Electronics Corp., 616 F.3d 1357, 1373 (Fed. Cir. 2010); accord K-TEC, Inc.
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`v. Vita-Mix Corp., 696 F.3d 1364, 1379 (Fed. Cir. 2012). ON has not pointed to any evidence or
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`the absence thereof to prove that ON’s accused products are not sufficiently similar to NCP1246
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`to be covered by the notice. See ON Mot. at 6–7. Thus, on this issue as well, ON fails to meet its
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`burden on summary judgment of pointing to evidence or the absence thereof that demonstrates that
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`there is no genuine dispute as to any material fact entitling it to judgment as a matter of law. See
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`T.W. Elec. Serv. Inc., 809 F.2d at 630.
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`For these reasons, ON’s motion is DENIED as to the ’079 and ’876 Patents.
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`b. ’471 Patent
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`As to the ’471 Patent, PI argues that Section 287 does not apply because PI asserts only
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`method claims of the ’471 Patent in this suit, and Section 287 does not apply to method claims.
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`See PI Opp. at 4. ON does not refute that PI asserts only method claims here or that Section 287
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`does not cover method claims. Rightly so because “[t]he law is clear that the notice provisions of
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`§ 287 do not apply where the patent is directed to a process or method” or when the patentee
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`“assert[s] only the method claims of a patent.” Crown Packaging Tech., Inc. v. Rexam Beverage
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`Can Co., 559 F.3d 1308, 1316 (Fed. Cir. 2009) (citing Hanson v. Alpine Valley Ski Area, Inc., 718
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`F.2d 1075 (Fed. Cir. 1983)).
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`Despite the inapplicability of Section 287, ON argues in reply that PI is barred from
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`asserting an earlier damages period for the ’471 Patent because “PI cannot show that ON knew of
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`Case 5:16-cv-06371-BLF Document 287 Filed 08/22/19 Page 9 of 54
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`the ’471 Patent and expressly intended that its customers use the patent in an infringing way,”
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`which in turn means that PI cannot prove that ON is liable for induced infringement. ON Reply at
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`4–5. This is a different theory for limiting the damages period than ON asserted in its opening
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`brief. In its opening brief, ON argued that PI cannot prove that it provided ON “actual notice”
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`under Section 287. See ON Mot. at 2–3, 7–8. As ON recognizes, “subjective knowledge of an
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`accused infringer is irrelevant to the determination of whether actual notice has been provided.”
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`Id. at 8 (citing Amsted, 24 F.3d at 187). By contrast, in its reply brief, ON argues that PI cannot
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`prove that “ON knew of the ’471 Patent and expressly intended that its customers use the patent in
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`an infringing way”—that is, that ON, as the accused infringer, had subjective knowledge of the
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`patent. See ON Reply at 5 (citing Commil USA, LLC v. Cisco Sys., Inc., 125 S. Ct. 1920, 1926–28
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`(2015)). Thus, ON argued in its opening brief that ON’s subjective knowledge was irrelevant but
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`argued in its reply brief that PI is required to and cannot prove ON’s subjective knowledge.
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`Because ON expressly disclaimed the relevancy of its subjective knowledge in its opening
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`brief, PI did not have a meaningful opportunity to present evidence to prove ON’s subjective
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`knowledge. Because ON did not raise this argument in its opening brief, it has waived the
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`argument. See Pension Plan for Pension Tr. Fund for Operating Engineers v. ACME Concrete,
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`No. C 12-04410 JSW, 2013 WL 12149703, at *2 n.1 (N.D. Cal. Jan. 11, 2013); Cf. Murphy v.
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`DirecTV, Inc., 724 F.3d 1218, 1225 n.4 (9th Cir. 2013).
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`As such, ON has not demonstrated that summary judgment is appropriate on this issue, and
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`its motion is DENIED as to the ’471 Patent’s damages period.
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`* * *
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`Based on the foregoing, the Court GRANTS ON’s motion on this issue as to the ’119
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`Patent and DENIES it as to the ’079, ’876, and ’471 Patents.
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`3. Non-Infringement of PI’s ’079 Patent Based on PI’s Disclaimer of Claim
`Scope During IPR
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`ON next argues that PI disclaimed the claim scope of the asserted claims of the ’079 Patent
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`during IPR of the ’079 Patent, such that the asserted claims do not cover ON’s products. ON Mot.
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`at 8–14. ON argues only prosecution disclaimer here; it “does not argue that PI is bound by
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`judicial estoppel or prosecution history estoppel.” ON Reply at 5. The Court first discusses the
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`relevant facts, then prosecution-disclaimer law, and then the parties’ arguments here.
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`a. Relevant Facts
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`In 2016, ON filed an IPR petition challenging the patentability of certain claims of PI’s
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`’079 Patent, including all of the asserted claims in this action. See ON Semiconductor Corp. v.
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`Power Integrations Inc., Case No. IPR2016-00809. The PTAB instituted the IPR (“’079 IPR”)
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`and issued a Final Written Decision finding all of the asserted claims here unpatentable. See ON
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`Mot., Ex. H (“’079 FWD”) at 71, ECF 221-9. The Federal Circuit vacated the Final Written
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`Decision as time-barred and remanded with instructions to dismiss the IPR. See Power
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`Integrations Inc. v. Semiconductor Components Industries, LLC, No. 18-1607, ECF 88 at 2 (Fed.
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`Cir. June 13, 2019) (“’079 Appeal”), ECF 268-1.
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`One of the primary references at issue in the’079 IPR was Japanese Unexamined Patent
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`Application Publication JP H10-323028 by Seiji Oda, et al. (“Oda”) (Translation at ON Mot., Ex.
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`J (“Oda”), ECF 221-11). See ’079 FWD at 2. The Court need not recite the technical details of
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`Oda and the ’079 Patent to resolve this issue. In oversimplified and relevant part, “Oda discloses a
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`switched power supply converter switching structure that controls pulse width and pulse
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`frequency.” See ’079 FWD at 38 (citing Oda). Oda’s disclosed circuit uses a switch to regulate
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`output voltage. The length of time that the switch is on is called the “on-time” of the switch. In
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`Oda, the on-time of the switch is a “‘function of’ two variables”: one tied to the output voltage
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`(i.e., a feedback signal) and one tied to the input voltage. Id. at 41 (citing Oda).
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`During the course of the IPR, PI sought to distinguish Oda from the ’079 claims.
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`Specifically, it argued that the ’079 Patent “describes and claims using only a feedback signal
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`responsive to power supply output to vary on-time. The ’079 Patent does not disclose or suggest
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`also using a signal from the power supply input.” ON Mot., Ex. L at 50, ECF 221-13 (citations
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`omitted). That is, PI argued that the ’079 claims were valid because Oda disclosed using both a
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`feedback signal and a signal based on input voltage whereas the asserted claims disclosed using
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`only a feedback signal. PI’s argument was based on its interpretation of the term “correspond” in
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`asserted claims 31 and 38 and the term “function of” in claims 34 and 42. See id. at 48–52 (citing
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`Case 5:16-cv-06371-BLF Document 287 Filed 08/22/19 Page 11 of 54
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`’079 Patent).
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`The PTAB ultimately rejected PI’s arguments, construing the claims to be broader than PI
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`had argued and declining to dismiss the petition based on Oda’s requirement that the switch
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`function in part based on the input voltage. ’079 FWD at 23–27, 59–60.
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`b. Prosecution Disclaimer Law
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`Prosecution disclaimer “preclud[es] patentees from recapturing through claim
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`interpretation specific meanings disclaimed during prosecution.” Omega Eng’g, Inc. v. Raytek
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`Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). Under this doctrine, “when the patentee
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`unequivocally and unambiguously disavows a certain meaning to obtain a patent, the doctrine of
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`prosecution history disclaimer narrows the meaning of the claim consistent with the scope of the
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`claim surrendered.” Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir.
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`2013). Put another way, “when a patentee, on the rejection of his application, inserts in his
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`specification, in consequence, limitations and restrictions for the purpose of obtaining his patent,
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`he cannot after he has obtained it, claim that it shall be construed as it would have been construed
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`if such limitations and restrictions were not contained in it.” Roemer v. Peddie, 132 U.S. 313,
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`317; accord Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1359 (Fed. Cir. 2017); see also
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`Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220–21 (1940) (“It is a rule of patent
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`construction consistently observed that a claim in a patent as allowed must be read and interpreted
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`with reference to claims that have been cancelled or rejected, and the claims allowed cannot by
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`construction be read to cover what was thus eliminated from the patent.”). Such disclaimer can
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`occur through amendment or argument. Id. at 1359. And though the doctrine originates in the
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`context of pre-issuance prosecution, the Federal Circuit has applied the doctrine to post-issuance
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`proceedings before the Patent and Trademark Office, including IPR proceedings. Id.
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`The Federal Circuit has described prosecution disclaimer as “a fundamental precept in []
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`claim construction jurisprudence.” Aylus, 856 F.3d at 1359. The doctrine “promotes the public
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`notice function of the intrinsic evidence and protects the public’s reliance on definitive statements
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`made during prosecution” and is “rooted in the understanding that [c]ompetitors are entitled to rely
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`on those representations when determining a course of lawful conduct.” Id. (alteration in original)
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`(citations omitted). Ultimately, the doctrine “ensures that claims are not ‘construed one way in
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`order to obtain their allowance and in a different way against accused infringers.’” Id. at 1360
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`(quoting Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995)).
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`c. Analysis
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`ON asks the Court to hold that through prosecution disclaimer PI waived its right to argue
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`that the ’079 asserted claims cover products that depend on both a feedback signal and an input
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`voltage signal, and ON’s products indisputably depend on both signal types. ON Mot. at 8–14.
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`The Court holds that PI is not barred by prosecution disclaimer from arguing that the
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`asserted claims cover more than a single signal, and thus from arguing that ON’s products infringe
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`the claims.
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`Prosecution disclaimer does not apply here for two independent reasons. First, and most
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`importantly, ON failed to make this argument during claim construction and does not provide
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`evidence to support such a construction here. As the case law makes clear, ON’s argument is
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`appropriately classified as a claim construction argument. See, e.g., Omega Eng’g, 334 F.3d at
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`1323 (stating rule that prosecution disclaimer “preclud[es] patentees from recapturing through
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`claim interpretation specific meanings disclaimed during prosecution” (emphasis added));
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`Schriber-Schroth, 311 U.S. at 220–21 (1940) (“It is a rule of patent construction consistently
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`observed that a claim in a patent as allowed must be read and interpreted with reference to claims
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`that have been cancelled or rejected . . . .”). Indeed, ON’s argument recognizes that PI’s alleged
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`disclaimer stems from PI’s claim construction arguments to the PTAB. That is, ON, through its
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`motion, wants to bind PI to the claim construction PI proposed to the PTAB. See ON Mot. 10–11.
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`But ON never argued for this limited construction during claim construction in this action. At that
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`time, ON argued that the relevant claim terms (“correspond” and “function of”) should be given
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`their “[p]lain and ordinary meaning; no construction necessary.” ECF 97-1 at 7. ON has never
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`offered an alternative construction of these claims. Nor does it seek in its motion to prove that the
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`plain and ordinary meanings of the terms should incorporate the disclaimer it seeks to impose on
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`PI here. Indeed, it rejects PI’s construction as an incorrect construction of the terms. See ON Mot.
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`at 12. Thus, ON seeks a construction of the terms here that differs from its previously proposed
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`Case 5:16-cv-06371-BLF Document 287 Filed 08/22/19 Page 13 of 54
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`construction.
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`Moreover, based on its proposed “p