Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 1 of 50
`
`Roger Fulghum (Pro hac vice /
`roger.fulghum@bakerbotts.com)
`BAKER BOTTS L.L.P.
`910 Louisiana Street
`Houston, TX 77002
`Telephone: (713) 229-1234
`Facsimile: (713) 229-1522
`
`John M. Neukom (CA BAR 275887)
`johnneukom@quinnemanuel.com
`QUINN EMMANUEL URQUHART &
`SULLIVAN LLP
`50 California Street, 22nd Floor
`San Francisco, California 94111
`Telephone: (415) 875-6600
`Facsimile: (415) 875-6700
`
`Attorneys for
`ON SEMICONDUCTOR CORP. and
`SEMICONDUCTOR COMPONENTS
`INDUSTRIES, LLC
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`(SAN JOSE DIVISION)
`
`POWER INTEGRATIONS, INC.,
`
`Case No. 16-cv-06371-BLF
`
`Plaintiff,
`
`v.
`
`ON SEMICONDUCTOR CORP. AND
`SEMICONDUCTOR COMPONENTS
`INDUSTRIES, LLC,
`
`Defendants.
`
`ON SEMICONDUCTOR CORP. AND
`SEMICONDUCTOR COMPONENTS
`INDUSTRIES, LLC,
`
`Plaintiff,
`
`v.
`
`POWER INTEGRATIONS, INC.,
`
`Defendants.
`
`THIRD AMENDED COMPLAINT OF ON
`SEMICONDUCTOR CORP. AND
`SEMICONDUCTOR COMPONENTS
`INDUSTRIES, LLC FOR PATENT
`INFRINGEMENT AND DECLARATORY
`JUDGMENT
`
`(DEMAND FOR TRIAL BY JURY)
`
`Case No. 17-cv-03189-BLF
`
`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR CORP.
`AND SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 2 of 50
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`ON Semiconductor Corporation and Semiconductor Components Industries, LLC
`
`(collectively, “ON”) brings this civil action against Power Integrations, Inc. (“Power Integrations”)
`
`and hereby avers and complains as follows:
`
`THE PARTIES
`
`1.
`
`ON Semiconductor Corporation is a Delaware corporation with its principal place of
`
`business at 5005 East McDowell Road, Phoenix, Arizona, 85008.
`
`2.
`
`Semiconductor Components Industries, LLC is a Delaware limited liability company
`
`with its principal place of business at 5005 East McDowell Road, Phoenix, Arizona, 85008.
`
`Semiconductor Components Industries, LLC is the principal domestic operating subsidiary of ON
`
`Semiconductor Corporation and does business under the name of ON Semiconductor. ON
`
`Semiconductor designs, manufactures, and markets a comprehensive portfolio of semiconductor
`
`products, including AC-DC controllers and regulators.
`
`3.
`
`Power Integrations, Inc. (“Power Integrations”) is incorporated under the laws of the
`
`state of Delaware, and has a regular and established place of business at 5245 Hellyer Avenue, San
`
`Jose, California, 95138. Power Integrations may be served through its registered agent at 5245
`
`Hellyer Avenue, San Jose, California, 95138.
`
`JURISDICTION AND VENUE
`
`4.
`
`This is action arises under the United States patent laws, 35 U.S.C. §§ 101, et seq.,
`
`and includes a request for declaratory relief under 28 U.S.C. §§ 2201 and 2202.
`
`5.
`
`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338, and 2201,
`
`and 35 U.S.C. § 1, et seq.
`
`6.
`
`Power Integrations is subject to general personal jurisdiction in this judicial district.
`
`This Court has personal jurisdiction over Power Integrations because Power Integrations has
`
`purposely availed themselves of the privilege of conducting activities within this State and judicial
`
`District. For example, Power Integrations maintains continuous and systematic contacts with this
`
`District, including maintaining its principal place of business in San Jose, California.
`
`2
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`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 3 of 50
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`7.
`
`Power Integrations is subject to specific personal jurisdiction in this judicial district
`
`for its infringement of U.S. Patent No. 6,333,624, U.S. Patent No. 6,429,709, U.S. Patent No.
`
`RE39,933, U.S. Patent No. RE41,908, U.S. Patent No. RE45,862, U.S. Patent No. 6,597,221, U.S.
`
`Patent No. 7,944,272, and U.S. Patent No. 7,447,601 at least because Power Integrations has placed
`
`and continues to place the accused products into the stream of commerce that are sold in this
`
`district, and has therefore purposefully availed itself of the privilege of conducting business in this
`
`judicial district.
`
`8.
`
`Power Integrations is also subject to specific personal jurisdiction in this judicial
`
`district for ON’s declaratory judgment claims concerning U.S. Patent No. 6,249,876, at least
`
`because of Power Integrations’s patent enforcement contacts with the jurisdiction, demonstrating
`
`that Power Integrations has purposefully availed itself of the privilege of conducting business in this
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`judicial district.
`
`9.
`
`Venue is proper in this district under each of 28 U.S.C. §§ 1391(b), 1391(c), and
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`1400(b). Power Integrations has its principal place of business in this district and has committed
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`acts of infringement in this district.
`
`INFRINGEMENT OF ON’s PATENTS
`
`10.
`
`11.
`
`ON re-alleges and incorporates by reference each of Paragraphs 1-9 above.
`
`After a full and fair examination, the United States Patent and Trademark Office
`
`duly and legally issued U.S. Patent No. 6,333,624, entitled “Circuit and Method for a Switching
`
`Power Supply with Primary Side Transformer Sensing” (hereinafter, “the ’624 patent”) on
`
`December 25, 2001. A true and correct copy of the ’624 patent is attached as Exhibit A.
`
`12.
`
`After a full and fair examination, the United States Patent and Trademark Office
`
`duly and legally issued U.S. Patent No. 6,429,709, entitled “Power Converter and Method for
`
`Controlling” (hereinafter, “the ’709 patent”) on August 6, 2002. A true and correct copy of the 709
`
`patent is attached as Exhibit B.
`
`13.
`
`After a full and fair examination, the United States Patent and Trademark Office
`
`duly and legally issued U.S. Patent No. RE39,933, entitled “Power Conversion Integrated Circuit
`
`3
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`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 4 of 50
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`and Method for Programming” (hereinafter, “the ’933 patent”) on December 4, 2007. A true and
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`correct copy of the ’933 patent is attached as Exhibit C. The ’933 patent is a reissue of U.S. Patent
`
`No. 5,859,768 (“the ’768 patent”) and claims 1-20 of the ’768 patent also appear in claims 1-20 of
`
`the ’933 patent.
`
`14.
`
`After a full and fair examination, the United States Patent and Trademark Office
`
`duly and legally issued U.S. Patent No. RE41,908, entitled “Power Conversion Integrated Circuit
`
`and Method for Programming” (hereinafter, “the ’908 patent”) on November 2, 2010. A true and
`
`correct copy of the ’908 patent is attached as Exhibit D.
`
`15.
`
`After a full and fair examination, the United States Patent and Trademark Office
`
`duly and legally issued U.S. Patent No. RE45,862, entitled “Power Conversion Integrated Circuit
`
`and Method for Programming” (hereinafter, “the ’862 patent”) on January 19, 2016. A true and
`
`correct copy of the ’862 patent is attached as Exhibit E.
`
`16.
`
`After a full and fair examination, the United States Patent and Trademark Office
`
`duly and legally issued U.S. Patent No. 6,597,221, entitled “Power Converter Circuit and Method
`
`for Controlling” (hereinafter, “the ’221 patent”) on July 22, 2003. A true and correct copy of the
`
`’221 patent is attached as Exhibit F.
`
`17.
`
`After a full and fair examination, the United States Patent and Trademark Office
`
`duly and legally issued U.S. Patent No. 7,944,272, entitled “Constant Current Circuit” (hereinafter,
`
`“the ‘272 patent”) on May 17, 2011. A true and correct copy of the 272 patent is attached as
`
`Exhibit G.
`
`18.
`
`After a full and fair examination, the United States Patent and Trademark Office
`
`duly and legally issued U.S. Patent No. 7,447,601, entitled “Power Supply Controller Method and
`
`Structure” (hereinafter, “the ‘601 patent”) on November 4, 2008. A true and correct copy of the
`
`‘601 patent is attached as Exhibit H.
`
`19.
`
`Semiconductor Components Industries, LLC owns title and all rights to the ’624,
`
`’709, ’933, ’768, ’908,’862, ’221, ‘272, and ‘601 patents, including the right to prevent others from
`
`making, having made, using, offering for sale, importing, or selling products and services covered
`
`4
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`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 5 of 50
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`by those patents; the right to enforce those patents against Power Integrations; and the right to
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`collect damages for all relevant times.
`
`20.
`
`Power Integrations has offered and continues to offer infringing semiconductors,
`
`including but not limited to the LinkZero-LP series of integrated circuits, including those having
`
`product name LNK574/576, TOPSwitch-HX series of integrated circuits, LYTSwitch-4 integrated
`
`circuit, InnoSwitch-CE integrated circuit, and LYTSwitch-3 integrated circuit for sale, through
`
`intermediaries (including distributors, retailers, and others), in this district and elsewhere.
`
`EXISTENCE OF AN ACTUAL CONTROVERSY
`
`21.
`
`22.
`
`ON re-alleges and incorporates by reference each of Paragraphs 1-20 above.
`
`An actual controversy exists within the jurisdiction of this Court under 28
`
`U.S.C. §§ 2201 and 2202.
`
`23.
`
`On information and belief, Power Integrations is the owner of U.S. Patent
`
`No. 6,249,876, entitled “Frequency Jittering Control for Varying the Switching Frequency of a
`
`Power Supply” (“the ’876 patent”), by assignment from named inventors Balu Balakrishnan, Alex
`
`Djenguerian, and Leif Lund. The ’876 patent bears an issuance date of June 19, 2001. A copy of
`
`the ’876 patent is attached to this Complaint as Exhibit I.
`
`24.
`
`Power Integrations has accused ON of infringing the ’876 patent. Specifically, Balu
`
`Balakrishnan, President and CEO of Power Integrations and named inventor on the ‘876 patent, sent
`
`an e-mail to Keith Jackson, President and Chief Executive Officer of ON, alleging that ON infringes
`
`the ’876 patent in connection with its manufacture, sale, and/or offers to sell ON’s AC-DC
`
`controller with the model number NCP1246. A copy of the text of the e-mail (with e-mail
`
`addresses redacted) is attached to this Complaint as Exhibit J.
`
`25.
`
`Power Integrations has a history of asserting the ‘876 patent. See, e.g., Power
`
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., Case No. 1:04-CV-1371 (D. Del. filed Oct.
`
`20, 2004) (asserting the ’876 patent); Power Integrations, Inc. v. Fairchild Semiconductor, Int’l
`
`Inc., Case No. 1:08-CV-0309 (D. Del. filed May 23, 2008) (asserting the ’876 patent); and Power
`
`5
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`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 6 of 50
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`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc. et al., Case No. 3:15-CV-04854 (N.D. Cal.
`
`filed October 21, 2015) (asserting the ’079 and ’876 patents).
`
`26.
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`In light of the specific allegation of infringement in Mr. Balakrishnan’s e-mail, and
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`Power Integrations’s history of filing suit for patent infringement on the ‘876 patent against other
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`semiconductor companies, the circumstances show a substantial controversy between parties with
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`adverse legal interests of sufficient immediacy and reality to warrant the issuance of a declaratory
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`judgment. Therefore, an actual controversy within this Court’s jurisdiction exists under
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`28 U.S.C. § 2201.
`
`COUNT ONE
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`INFRINGEMENT OF U.S. PATENT NO. 6,333,624
`
`27.
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`ON re-alleges and incorporates by reference each and every allegation of paragraphs
`
`1-26 as though fully set forth herein.
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`The ’624 patent is valid and enforceable.
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`Power Integrations has at no time, expressly or impliedly, been licensed under the
`
`28.
`
`29.
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`’624 patent.
`
`30.
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`Upon information and belief, Power Integrations has been and is now directly
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`infringing, literally or under the doctrine of equivalents, one or more claims of the ’624 patent
`
`through at least the acts of making, using, selling, offering for sale, and/or importing in the United
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`States infringing power supply controllers that include the features of one or more claims of the
`
`’624 patent. More particularly, and without limitation, Power Integrations’s LinkZero-LP series of
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`integrated circuits, including those having product name LNK574/576, infringe at least claim 6 of
`
`the ’624 patent. Upon information and belief, Power Integrations’s LinkZero-LP series of
`
`integrated circuits, including those having product name LNK574/576, include a switching
`
`regulator coupled for receiving a first feedback signal and a variable reference signal to provide the
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`switching transistor drive signal. Upon information and belief, Power Integrations’s LinkZero-LP
`
`series of integrated circuits, including those having product name LNK574/576, include a
`
`6
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`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 7 of 50
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`compensation circuit coupled for receiving a current reference signal representative of the inductor
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`current for generating the variable reference signal.
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`31.
`
`Upon information and belief, Power Integrations has been and is now actively
`
`inducing infringement of one or more claims of the ’624 patent, either literally or under the doctrine
`
`of equivalents.
`
`32.
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`33.
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`Power Integrations has known of the ’624 patent since at least September 25, 2014.
`
`On information and belief, Power Integrations has intended, and continues to intend,
`
`to induce patent infringement by third parties and has knowledge that the inducing acts would cause
`
`infringement or has been willfully blind to the possibility that its inducing acts would cause
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`infringing acts. For example, Power Integrations is aware that the features claimed in the ’624
`
`patent are features of the power supply controller products and are necessarily used by purchasers of
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`the power supply controller products and, therefore, that Power Integrations’s customers will
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`infringe the ’624 patent by using the power supply controller products or incorporating the power
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`supply controller products in other products, and that subsequent sales of such products would also
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`be a direct infringement. More particularly, and without limitation, Power Integrations is aware that
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`the features claimed in the ’624 patent are present in the LinkZero-LP series of integrated circuits,
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`including those having product name LNK574/576, and that such features are necessarily used by
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`purchasers of the LinkZero-LP series of integrated circuits and, therefore, that Power Integrations’s
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`customers will infringe the ’624 patent by using the LinkZero-LP series of integrated circuits or
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`incorporating the LinkZero-LP series of integrated circuits in other products, and that subsequent
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`sales of such products would also be a direct infringement.
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`34.
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`On information and belief, Power Integrations’s intentional actions induce others to
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`directly infringe, and those actions are undertaken with the specific intent that they will, in fact, induce
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`direct infringement and with full knowledge that Power Integrations’s products infringe one or more
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`claims of the ‘624 patent both literally and under the doctrine of equivalents. By way of example only,
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`Power Integrations sells and delivers the infringing LinkZero-LP series of integrated circuits,
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`including those having product name LNK574/576 devices to U.S. distributors including Mouser
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`7
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`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 8 of 50
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`Electronics located in Mansfield, TX and thereafter induce Mouser Electronics to sell and offer for sale
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`the infringing products to customers in the United States, thereby directly infringing the ‘624 patent.
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`Power Integrations maintains a website in which it promotes the sale of and identifies that LinkZero-LP
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`series of integrated circuits, including those having product name LNK574/576, are available for sale
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`in the United States by Mouser Electronics (https://ac-dc.power.com/sales/distributors/mouser/), thereby
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`inducing acts of direct infringement. Power Integrations further induces third parties to design the
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`accused products into power supplies and other products to be used in the United States, by, for
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`example, providing datasheets, application notes, design notes, and other collateral on their Internet
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`website available to customers and instructing those customers how to incorporate the LinkZero-LP
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`series of integrated circuits, including those having product name LNK574/576, into a power supply.
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`See, e.g., https://ac-dc.power.com/sites/default/files/product-docs/linkzero-lp_family_datasheet.pdf. In
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`addition, Power Integrations employs sales representatives and field applications engineers that interact
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`with and work directly with customers to assist them in designing complete power supplies or other
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`products that, upon information and belief, Power Integrations knows or has reason to believe are
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`intended to be sold worldwide, including in the United States.
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`35.
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`On information and belief, Power Integrations has been and is now contributing to
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`the infringement of the ’624 patent, either literally or under the doctrine of equivalents.
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`36.
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`On information and belief, Power Integrations has been aware, since first learning of
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`the ’624 patent, that its power supply controllers that include the claimed features of the ’624 patent
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`are a material part of the patented invention, are not a staple article or commodity of commerce
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`suitable for substantial non-infringing use, and are especially made and/or adapted for use in
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`infringing the ’624 patent, at least because the claimed features of the ’624 patent are necessarily
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`used by purchasers of its power supply controllers. More particularly, and without limitation,
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`Power Integrations is aware that the LinkZero-LP series of integrated circuits, including those
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`having product name LNK574/576, are a material part of the patented invention, are not a staple
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`article or commodity of commerce suitable for substantial non-infringing use, and are especially
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`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 9 of 50
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`made and/or adapted for use in infringing the ’624 patent, at least because the claimed features of
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`the ’624 patent are necessarily used by purchasers of its power supply controllers.
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`37.
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`On information and belief, Power Integrations’s customers have in fact directly
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`infringed the ’624 patent by making, using, offering to sell, selling, and importing in the United
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`States infringing devices that incorporate a Power Integrations power supply controller chip that
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`includes the claimed features of the ’624 patent. These devices meet each and every limitation of at
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`least one claim of the ’624 patent either literally or equivalently. Power Integrations has knowledge
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`of these infringing uses by its customers. Specifically, and without limitation, Power Integrations’s
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`customers have directly infringed the ’624 patent by making, using, offering to sell, selling, and
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`importing in the United States the LinkZero-LP series of integrated circuits, including those having
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`product name LNK574/576.
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`38.
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`ON has been irreparably harmed by Power Integrations’s infringement of the ’624
`
`patent and will continue to be harmed unless and until Power Integrations’s infringement is
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`enjoined by this Court.
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`39.
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`Power Integrations’s infringement of the ’624 has been willful as Power Integrations
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`has had knowledge of the ’624 since at least September 2014. Upon information and belief, Power
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`Integrations’s decision to continue to knowingly infringe the ’624 patent is willful, deliberate, and
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`consciously wrongful, and Power Integrations has no good reason to believe its infringing conduct
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`is defensible. Upon information and belief, Power Integrations’s acts of infringement have been,
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`and continue to be, willful so as to warrant the enhancement of damages awarded as a result of their
`
`infringement. In particular, despite knowing of ON Semiconductor’s patent rights, Power
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`Integrations continue to infringe the ’624 patent by making, using, selling, offering for sale and/or
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`importing at least LinkZero-LP series of integrated circuits, including those having product name
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`LNK574/576, and contributing to and inducing others to do the same, knowing the products contain
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`infringing circuitry.
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`40.
`
`As a result of Power Integrations’s infringement, ON has suffered and will continue
`
`to suffer damages in an amount to be proved at trial.
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`9
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`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
`
`1 2 3 4 5 6 7 8 9
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 10 of 50
`
`COUNT TWO
`
`INFRINGEMENT OF U.S. PATENT NO. 6,429,709
`
`41.
`
`ON re-alleges and incorporates by reference each and every allegation of paragraphs
`
`1-40 as though fully set forth herein.
`
`The ’709 patent is valid and enforceable.
`
`Power Integrations has at no time, expressly or impliedly, been licensed under the
`
`42.
`
`43.
`
`’709 patent.
`
`44.
`
`Upon information and belief, Power Integrations has been and is now directly
`
`infringing, literally or under the doctrine of equivalents, one or more claims of the ’709 patent
`
`through at least the acts of making, using, selling, offering for sale, and/or importing in the United
`
`States infringing power supply controllers that include the features of one or more claims of the
`
`’709 patent. More particularly, and without limitation, the use of Power Integrations’s LinkZero-LP
`
`series of integrated circuits, including those having product name LNK574/576, infringe at least
`
`claim 12 of the ’709 patent. Upon information and belief, the use of Power Integrations’s
`
`LinkZero-LP series of integrated circuits, including those having product name LNK574/576,
`
`includes performing the steps of comparing an input voltage to a first reference signal to provide a
`
`first compare signal. Upon information and belief, the use of Power Integrations’s LinkZero-LP
`
`series of integrated circuits, including those having product name LNK574/576, includes
`
`performing the steps of comparing the input voltage to a second reference signal after receiving the
`
`first compare signal to provide a second compare signal, and passing the control signal from the
`
`first node to the second node after receiving the second compare signal.
`
`45.
`
`Upon information and belief, Power Integrations has been and is now actively
`
`inducing infringement of one or more claims of the ’709 patent, either literally or under the doctrine
`
`of equivalents.
`
`46.
`
`47.
`
`Power Integrations has known of the ’709 patent since at least September 25, 2014.
`
`On information and belief, Power Integrations has intended, and continues to intend,
`
`to induce patent infringement by third parties and has knowledge that the inducing acts would cause
`
`10
`
`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
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`1 2 3 4 5 6 7 8 9
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 11 of 50
`
`infringement or has been willfully blind to the possibility that its inducing acts would cause
`
`infringing acts. For example, Power Integrations is aware that the features claimed in the ’709
`
`patent are features of the power supply controller products and are necessarily used by purchasers of
`
`the power supply controller products and, therefore, that Power Integrations’s customers will
`
`infringe the ’709 patent by using the power supply controller products or incorporating the power
`
`supply controller products in other products, and that subsequent sales of such products would also
`
`be a direct infringement. More particularly, and without limitation, Power Integrations is aware that
`
`the features claimed in the ’709 patent are present in the LinkZero-LP series of integrated circuits,
`
`including those having product name LNK574/576, and that such features are necessarily used by
`
`purchasers of the LinkZero-LP series of integrated circuits and, therefore, that Power Integrations’s
`
`customers will infringe the ’709 patent by using the LinkZero-LP series of integrated circuits or
`
`incorporating the LinkZero-LP series of integrated circuits in other products, and that subsequent
`
`sales of such products would also be a direct infringement.
`
`48.
`
`On information and belief, Power Integrations’s intentional actions induce others to
`
`directly infringe, and those actions are undertaken with the specific intent that they will, in fact, induce
`
`direct infringement and with full knowledge that Power Integrations’s products infringe one or more
`
`claims of the ‘709 patent both literally and under the doctrine of equivalents. By way of example only,
`
`Power Integrations sells and delivers the infringing LinkZero-LP series of integrated circuits,
`
`including those having product name LNK574/576 devices to U.S. distributors including Mouser
`
`Electronics located in Mansfield, TX and thereafter induce Mouser Electronics to sell and offer for sale
`
`the infringing products to customers in the United States, thereby directly infringing the ‘709 patent.
`
`Power Integrations maintains a website in which it promotes the sale of and identifies that LinkZero-LP
`
`series of integrated circuits, including those having product name LNK574/576, are available for sale
`
`in the United States by Mouser Electronics (https://ac-dc.power.com/sales/distributors/mouser/), thereby
`
`inducing acts of direct infringement. Power Integrations further induces third parties to design the
`
`accused products into power supplies and other products to be used in the United States, by, for
`
`example, providing datasheets, application notes, design notes, and other collateral on their Internet
`
`11
`
`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
`
`1 2 3 4 5 6 7 8 9
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 12 of 50
`
`website available to customers and instructing those customers how to incorporate the LinkZero-LP
`
`series of integrated circuits, including those having product name LNK574/576, into a power supply.
`
`See, e.g., https://ac-dc.power.com/sites/default/files/product-docs/linkzero-lp_family_datasheet.pdf. In
`
`addition, Power Integrations employs sales representatives and field applications engineers that interact
`
`with and work directly with customers to assist them in designing complete power supplies or other
`
`products that, upon information and belief, Power Integrations knows or has reason to believe are
`
`intended to be sold worldwide, including in the United States.
`
`49.
`
`On information and belief, Power Integrations has been and is now contributing to
`
`the infringement of the ’709 patent, either literally or under the doctrine of equivalents.
`
`50.
`
`On information and belief, Power Integrations has been aware, since first learning of
`
`the ’709 patent, that its power supply controllers that include the claimed features of the ’709 patent
`
`are a material part of the patented invention, are not a staple article or commodity of commerce
`
`suitable for substantial non-infringing use, and are especially made and/or adapted for use in
`
`infringing the ’709 patent, at least because the claimed features of the ’709 patent are necessarily
`
`used by purchasers of its power supply controllers. More particularly, and without limitation,
`
`Power Integrations is aware that the LinkZero-LP series of integrated circuits, including those
`
`having product name LNK574/576, are a material part of the patented invention, are not a staple
`
`article or commodity of commerce suitable for substantial non-infringing use, and are especially
`
`made and/or adapted for use in infringing the ’709 patent, at least because the claimed features of
`
`the ’709 patent are necessarily used by purchasers of its power supply controllers.
`
`51.
`
`On information and belief, Power Integrations’s customers have in fact directly
`
`infringed the ’709 patent by making, using, offering to sell, selling, and importing in the United
`
`States infringing devices that incorporate a Power Integrations power supply controller chip that
`
`includes the claimed features of the ’709 patent. These devices meet each and every limitation of at
`
`least one claim of the ’709 patent either literally or equivalently. Power Integrations has knowledge
`
`of these infringing uses by its customers. Specifically, and without limitation, Power Integrations’s
`
`customers have directly infringed the ’709 patent by making, using, offering to sell, selling, and
`
`12
`
`THIRD AMENDED COMPLAINT OF ON SEMICONDUCTOR
`CORP. AND SEMICONDUCTOR COMPONENTS INDUSTRIES
` Case Nos. 16-cv-06371-BLF and 17-cv-03189-BLF
`
`1 2 3 4 5 6 7 8 9
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`10
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`11
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`Case 5:16-cv-06371-BLF Document 94 Filed 02/05/18 Page 13 of 50
`
`importing in the United States the LinkZero-LP series of integrated circuits, including those having
`
`product name LNK574/576.
`
`52.
`
`ON has been irreparably harmed by Power Integrations’s infringement of the ’709
`
`patent and will continue to be harmed unless and until Power Integrations’s infringement is
`
`enjoined by this Court.
`
`53.
`
`Power Integrations’s infringement of the ’709 has been willful as Power Integrations
`
`has had knowledge of the ’709 since at least September 2014. Upon information and belief, Power
`
`Integrations’s decision to continue to knowingly infringe the ’709 patent is willful, deliberate, and
`
`consciously wrongful, and Power Integrations has no good reason to believe its infringing conduct
`
`is defensible. Upon information and belief, Power Integrations’s acts of infringement have been,
`
`and continue to be, willful so as to warrant the enhancement of damages awarded as a result of their
`
`infringement. In particular, despite knowing of ON Semiconductor’s patent rights, Power
`
`Integrations continues to infringe the ’709 patent by making, using, selling, offering for sale and/or
`
`importing at least LinkZero-LP series of integrated circuits, including those having product name
`
`LNK574/576, and contributing to and inducing others to do the same, knowing the products contain
`
`infringing circuitry.
`
`54.
`
`As a result of Power Integrations’s infringement, ON has suffered and will continue
`
`to suffer damages in an amount to be proved at trial.
`
`COUNT THREE
`
`INFRINGEMENT OF U.S. PATENT NO. RE39,933
`
`55.
`
`ON re-alleges and incorporates by reference each and every allegation of paragraphs
`
`1-54 as though fully set forth herein.
`
`The ’933 patent is valid and enforceable.
`
`Power Integrations has at no time, expressly or impliedly, been licensed under the
`
`56.
`
`57.
`
`’933 patent.
`
`58.
`
`Upon information and belief, Power Integrations has been and is now