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NOV 17 g009

nIOHARD W WI Ex U ' giN0

uL T CT OF cALIFOtA UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

VOLTERRA SEMICONDUCTOR

CORPOIATION,

CaseNo. C-08-05129 JCS

Plaintiff,

V.

PRIMARION, INC., ETAL.,

Defendants.

ORDER DENYING MOTION FOR

ENTRY OF PRELIMINARY

INJUNCTION [Docket No. 113],

DENYING WITHOUT PREJUDICE

MOTION FOR PARTIAL SUMMARY

JUDGMENT OF INFRINGEMENT AS

TO CLAIM 34 OF THE '264 PATENT

AND CLAIMS 18 AND 19 OF THE '522

PATENT [Docket No. 112], GRANTING

PLAINTIFF'S ADMINISTRATIVE

MOTION FOR LEAVE TO FILE

RESPONSES TO DEFENDANTS'

EVIDENTIARY OBJECTIONS [Docket

No. 336] AND GRANTING IN PART AND

DENYING IN PART MOTION FOR

LEAVE TO FILE SUPPLEMENTAL

EXIIlBITS [Docket No. 415]

FILED UNDER SEAL

I, INTRODUCTION

On November 12, 2008, PlaimiffVolten'a Semiconductor Corporation ("Volterra") filed a

complaint alleging infl'ingement and contributory infringement by Defendants of the fol!owing

patents: 1) U.S. Patent No. 6,278,264 (the "'264 patent"); 2) U.S. Patent No. 6,462,522 (the "'522

patent"); 3) U.S. Patent No: 6,713,823 (the "'823 lSatent',); 4) u.s. Patent No. 6,020,729 (the "'729

patent"); and 5) U.S. Patent No. 6,225,795 (the "'795 patent',). The '264, '522 and '823 patents

(collectively, "the Power Stage Patents") are aimed at teclmiques for integrating high power

switches, and other circuitry, on a single integrated circuit ("IC") chip and relate to aspects of

integrated power stage products. The '729 and '795 patents (collectively, "the.Controller Patents")

cover controller products that use a sampling circuit to make and capture a measurement of an

electrical characteristic of the voltage regulator at a discrete moment in time.

REDACTED

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Two motions are presently before the Court: 1) Volten:a's Motion for Entry of Preliminary

Injunction ("the Preliminary Injunction Motion"); and 2) Plaintiff's Motion for Partial Summary

Judgmem as to Claim 34 of the '264 Patent and Claims 18 and 19 of the '522 Patent ("the Summary

Judgment Motion"). In the Preliminary Injunction Motion, Volterra asks the Court to enjoin

Defendants fi'om making, using, hnporting, offering for sale, marketing, attempthag to sell, or selling

their flip-chip intega'ated power stage products, including the PX4640 and the PX4650. In the

Summary Judgment Motion, Volterm asks the Court to hold, as a matter of htw, that these same

products infringe the '264 and '522 patents.' The parties have consented to the jurisdiction of a

United States magistrate judge pursuanto 28 U.S.C. § 636(e).

On September 30, 2009, the Court held a 21⁄2 hour hearing on the Motions. At the hearing,

the Court mmouneed its intention to grant the preliminary injunction motion. Following the hearing,

the parties submitted briefs addressing the appropriate scope of the preliminary injunction and the

amount of the bond Volterra would be required to post as a condition of entering the preliminary

1The parties also filed objections to evidence. In particular, when Volterra filed its Reply brief

on the motions, on August 27, 2009, it filed objections to some evidence submitted by Defendants in

support of their Opposition briefs. See PlaintiffVolten'a Semiconductor Corporatloii's Objections to

Evidence Submitted in Support of Defendants' Opposition to Motion for Entry of Preliminary Inj traction

mid Opposition to Motion for Partial Summary Judgment ("Volten'a's Objections"), Docket No. 346.

Tt ee weeks later, Defendants, requested leave to file a response to Volten'a's objections, as well as

objections to Vottel:ra's evidence, which the Court granted. Se'e Defendants' Response to Plaintiff's

Objections ("Defendants' Response"), Docket No. 394; Defendants' Objections to Plaintiff's Evidence

("Defendants' Objections"), Docket No. 395. Defendants filed their objections to Plaintiff's evidence

on September 16, 2009. Volterra then filed an Administrative Motion for Conditional Leave to File

Response to Defendants' Evidence ("Administrative Motion"), Docket No. 336. In the Administrative

Motion, Volterra argued that Defendants' objections were untimely to the extent they were aimed at

evidence submitted in support of Volterra's motions, which were filed in July 2009. Volterra also

rgued that the objections should not be considered because they contained improper ar umm]t. If the

hurt was going to consider Defendants' objections, Volten'a argued, it should be given t}ie opporttmity

to fild a response. The Court's clerk informed Plaintiffthat it would be permitted to file a response and

the on that basis, the Court foiTnalty GRANTS Plaintiff's Administrative Motion in this Order. Finally,

Volterra filed a Response to Defendants' Objections to Plaintiff's Evidence ("Plaintiff's Response"),

Docket No, 337..

The Court rules on the parties' objections only to the extent that it relies on the evidence to which

the objections relate, except that it overrules as untimely all of Defendants' objections to evidence

submitted by Volten'a wifla its opening papers in support of the motions. This evidence was submitted

on July 10, 2009, yet Defendants failed to object to any of Plaintiff's evidence when they filed their

Opposition briefs, on August 12, 2009, instead waiting almost two months to raise these objections,

Mlieh were filed on September 16, 2009. Nonetheless, in light of the extreme nature of the remedy

requested by Plaintiff, the Co,art will address Defendants' untimely objections on the merits, as well, to

the extent that it relies in any significant manner on such evidence.

Case 3:08-cv-05129-JCS Document 767 Filed 04/14/10 Page 2 of 50
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injunction. In addition, Defendants requested permission to file a supplemental brief ("Supplemental

Brief'), to address a number of specific arguments on the question of invalidity that had been raised

for the first time in Volterra's Preliminary Injunction Reply blief. Defendants also pointed to

evidence cited in Volten'a's Reply brief that they asserted had not been provided to them until after

their Opposition brief had been filed. Based on its review ot:the proposed Supplemental Brief, the

Court granted Defendants' request. In addition, the Court held a supplemental hearing on October

26, 2009 to address the question of invalidity.

Having considered the entire record, and the arguments made at both hearings, the Court

DENIES the preliminm7 injunction motion and DENIES the Summary Jud nent Motion without

.prejudice.

II, BACKGROUND

A. The Parties

I. Volterra

Volterra was founded as a start-up company in 1996 by a group of graduate students in U.C.

Berkeley's electrical engineering department. Declaration of Craig Teuseher in Support of

Volterra's Motion for Entry of Prellminary Injunction ("Teuscher P.I. Motion Deel."), I[ 2. VoltelTa

is based in Fremont, Califomia. Id., 112. Its core business is "the development and sale of small and

efficient voltage regulator componems, referred to as 'flip chip imegraied power products.'" M., 3.

According to Volterra, its success in developing and maNeting fllese products has "transformed

Volterra from a small start-up company such that it has achieved net revenues of $15.7 million in

2002, $25.1 million in 2003, $43.9 million in 2004, $53.9 million in 2005, $74.6 million in 2006,

$74.7 million in 2007, and $104,2 million in 2008." Iv?., I[ 9.

2. Primarion

Primarion was formed in 1999 as a semiconductor manufacturer, in Tempe Arizona.

Declaration of Kenneth Ostrom in Support of Defendants' Opposition to Motion for Preliminary

Injunction ("Ostrom Deel."), I[ 3. Subsequently, Primafion sold off its manufacturing operations and

centralized its design operations in Torrance, California. Id. Primarion now operates as a "fabless"

semiconductor manufacturer, that is, a company.that designs its chips and has third party companies

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manufacture the cl{ips, M.

According to Defendants.

Id., { 5.2 In April 2008, Primarion was

acquired by Infineon Technologies North America Corporation. Id., I[ 6. At that time, Primarion

was completing the development of the two accused products, the PX4640 and PX4650, which are

fully integrated power stage products. Id., 11 6. These products first shipped in September 2008. M.,

118.

Primarlon currently has fifll-time employees. Id., 11 4.

Declaration of John Zielinski

in Support of Defendants' Opposition to Plalntiff'sMotion for Preliminary Injtmetion ("Zielinsld

Decl."), 11 7. According to JoJml Zielinski, Infineon's Vice President,

3. Inflneon

Infineon. Technologies North America Corporation is a wholly-owned subsidiary of Infineon

Technologies AG, a Oerman company) Zielinski Decl., 3. Infineon is a "worldwide company that

sells semiconductors and system solutions for automotive and industrial electronics, chip card and

security applications, as well as applications for communications." ld., 11 2.

B. Background of the Technology

The instant motions are based on two patents of which Volterra is the assignee: the '264

patent and the '522 patent (collectively, the "Burstein patents"), See Combined Declaration of

Plaintiff objects to Ostrom's testhnony relating to

on the grounds that this testimony lacks foundation under l<.ule OO2 o the l 'ederal g.ules ot

Evidence and is prejudicial under Rule 403, Plaintiff's Objections at 3. In pmlicular, Plainfiffpoints

to statements by Defendants' counsel that Ostrom was not involved in :. The

Court overrules this objection. Ostrom's employment with Primarion e.ornrgenced in "20t)O and he xs

Primarion's Vice President of Engineering. Fullher, Defendants state that Ostrom, in his capacity as

Vice President of Engineering, could and did authenticate the internal design documents of the company.

Therefore, the Court finds that this testimony meets the requirements of Rule 602. Nor does the Court

find this testimony to be so prejudicial as to warrant its exclusion under Rule 403.

aHereinaffer, the Couli: refers to the parent and the subsidiary collectively as "Infineon."

4

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Jeffi:ey M. Fisher in Support of Yolterra's Motion for Summal3' Judgment of Infl'ingement and

Preliminm3, Injunction Motion ("Fisher Motion DecI."), Ex. C ('264 patent) & Ex. D ('522 patent).

The '264 patent, entitled "Flip-Chip Switching Regulator," issued August 21,2001 and lists as

inventors Andrew Burstein and Charles Nickel. Id., Ex. C. The '522 patent, entitled "Transistor

Pattern for Voltage Regulators," is a continuation of the '264'patent and lists the same inventors, ]d.,

Ex. D. The '522 patent issued October 8, 2002. Because the '522 patent is a continuation of the

'264 patent, the specifications for the two patents are identical (though the claims differ).

The Burstein patents relate "generally to voltage regulators, and more particularly to a

switching voltage regulator at least partially implememed with flip-clfip packaging." '522 patent,

1:11-12. The patent specification explains that voltage regulators are used to provide a stable

voltage that is "particularly needed for battery management in lower power devices, such as laptop

notebooks md cellular phones." '522 patent, 1:14-18, The specification describes switching

voltage regulators as follows;

A switching regulator generates an output voltage by converting an input DC voltage into a

high frequency voltage, and filtering the high fi'equency voltage to generate t! e output DC

voltage. Specifically, the smtching regulator includes a switch for alternately coupling and

decoupling an input DC voltage souxce, such as a battery, to a load, such as an integrated

circuit.. An output filter, typically including an inductor and a capacitor, between the input

voltage source and the load filters the output of the switch and thus provides the output DIs

voltage. The switch is typically controlled by a pulse modulator, such as a pulse width

modulator or a pulse frequency modulator, which controls the switch.

'522 patent, 1: 20-32.

One way in wtfich switching voltage regulators can convert the input DC voltage to the

output DC voltage is through use of two switches, referred to as high-side and low-side switches.

Fisher Motion Deel., Ex. E (Expert Report of PlaintiffVolterra Corporation'.s Expert: Dr. Thomas

Szepesi ("Szepesi Expert Report")), ! 27.4 These switches are shown in Figure 1 of the '522 and

4Defendants oNect to 1[ 12-47 of the Szepesi Expert Report, that is, to the entirety of the section

of the report entitled, ' Teclmology Overview." Defendants' Objections at 1. Defendants argue that

these paragraphs were not rendered from the standpoint of the hypothetical person of ordinm'y skill in

the art and therefore, that they are Irrelevant under Rule 402 of the Federal Rules of Evidence.

Defendants fllrther assert that Dr. 8zepesi provides no opinion as to the correct level of ordinary skill

in the relevant art. As noted above, this objection is overruled on the basis that it is untimely. In

addition, Defendmlts' argument fails on the merits for several reasons. First, the challenged testimony

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'264 patents, in which 30 is the high-side switch and 32 is the low-side switch. &e Declaration of

Vanessa Lefort in Support of Defendants' Opposition to Plaintiffs' Motion for Partial Summary

Judgment on Infringement ("Lefort SJ Opposition Decl,"), Ex. 1 (Expert Report of R. Jacob Baker

Ph.D., P.E. on the Issues of Claim Construction, Indefiniteness, and Noninfringement as to U.S.

Patent Nos. 6,278,264 and 6,462,522 ("Baker Expert Report")), { 26. The switches altelauately

couple and decouple an input voltage source (such as a battery) to a load (such as a microprocessor)

through 'm output filter. '522 patent, 1 : 24-30. The output filter typically contains inductors and

capacitors, which are energy storage elements. Fisher Motion Decl., Ex. E (Szepesi Expert Report),

27. In particular, inductors can store magnetic energy in the form of flux and capacitors era1 store

charge. Id.

The power switches described in the Burstein patents are Metal Oxide Semiconductor Field

Effect Transistors, or MOSFETs. Lefort SJ Opposition Decl., Ex. 1 (Baker Expert Report), { 33.

The specification describes two types of MOSFETs, the PMOS transistor and the NMOS transistor.

Id.; see also Fisher Combined Motion Decl., Ex. E (Szepesi Expert Report), ¶ 23 (noting that PMOS

transistors also may be referred to as p-channel MOSFETs and NMOS transistors may be referred to

as n-Channel MOSFETs). Id. Defendants' expert describes the operation of these transistors as

follows:

These transistors have three terminals, kaown as a drain, source and gate. The gate terminal

is like a light switch in a home. When the gate of the PMOS transistor is grounded, the drain

and the som'ce of the PMOS ta'ansistor are connected together, allowing current to flow.

addresses the background of the technology at issue iI1 this case and therefore is relevant. Second, in

his rebuttal expert reports, Dr. Szepesi makes Clear that lfis ophfions regarding claim construction are

rendered fi'om the perspective of a hypothetical person of ordinary skill in the art at the time of the

invention, that is, in the 1998-2000 time frame, See Reply Declaration of Jeffrey M. Fisher in Support

of Volterra Semiconductor Corporation's Motion for Partial Summary Judgment of Infringement as to

claim 34 of the '264 Patent and claims 18 and 19 of the '522 Patent ("Fisher Reply Decl."), Ex. A

(Expert Report of Plmntiff Volterra Semiconductor Corporation's Expert: Dr. Thomas Szepesi's

Rebuttal on Infringement ("Szepezl Rebuttal Report (Infringement)"), 12, Reply Declaration of Janles

W. Morando in Support of Volterra Semiconductor Coll oration's Motmn for Entry of Preliminary

Injunction ("Morando Reply Decl?'), Ex. F (Rebuttal Expert Report of PlaintiffVolterra Semiconductor

Corporation's Expert Dr. Thomas Szepesi Regarding Validity ("Szepesi Rebuttal Report (Validity)"),

.2 Moreover,_ in his rebuttal reports, Dr. Sze esi sets forth fl e qualifications that such a hypothetical

person would have. Id. Finally, Defendants 

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not contend that any specific fact set forth m [ 12-47

is inconsistent with the understanding of a hypothetical person of ordinary skill in the art between 1998

and 2000. Accordingly, DefeJdants' objection fails on the merits.

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When the gate of the PMOS transistor is driven to a higher voltage, the drain and source are

disconnected md virtually no current flows. Similarly, when the gate of the NMOS transistor

is driven above ground, the drain and the source are connected together, allowing current to

flow. When the gate of the NMOS transistor is at ground, the drain mid source m'e

disconnected and vh-tually no current flows. This is why these trmasistors are sometimes

referred to in the literature as switches.

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Lefort SJ Opposition Decl., Ex. 1 (Baker Expert Report), ]] 33-34; see also Fisher Motion Decl.,

Exo E (Szepesi Expert Report), ] 21 (describing operation of MOSFETs).

The switching voltage regulator architecture described in the Burstein patents can be

fabricated, in part, as an integrated circuit chip. Lefort SJ Opposition Decl., Ex, 1 (Baker Expert

Report), 129. According to Dr. Baker, "an integrated circuit (also known as a chip, die or IC) is a

miniaturized electronic circuit consisting mainly of semiconductor devices and passive components

(e.g., transistors and resistors) that have been manufactured in, mid on, the surface of a thin substrate.

of semiconducting material." Id. The substrate is made from a thin slice of semiconductor material,

such as a silicon crystal, known as a "wafer." Id., 31. The wafer undergoes "many

rnicrofabrieation process steps such as doping, ion implantati6n, etching, deposition of various

materials, mid photolithographic patterning." Id. Doping is "the process of intentionally introducing

impurities into an extremely pare (also referredto as intrinsic) semiconductor to change the

semiconductor's electrical properties." Id., 132. After the microfabrication process is complete, the

ndividual IC chip, or die,.is removed fi'om the wafer. Id., " 3 I.

Toward the end of the production process, IC chips are "packaged." Lefort SJ Opposition

Decl., Ex. 1 (Baker Expert Report), ¶ 35. One of the earliest methods of attaching the chip to a

package was through the use of wire bond packaging. Id. N this type ofpackaghag, wires are

connected from the IC chip to a lead frame, both of which are then encapsulated in plastic. Id.

Sometimes, multiple el'tips are bonded directly to a substrate (called a multi-chip module, or MCM

substrate), whichis then attached to the metal frame. Id. This entire structure is then encapsulated

in plastic, ld. Typically, these packaged parts are then soldered onto a printed circuit board. Id.

A problem associated with use of wire bond packaging is the large parasitic inductance and

resistance of clfips that used such packaging. '522 patent, 1: 39-40. In the specification of the

Burstein patents, the problem of parasitic inductance is described as follows:

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The pat'asitic inductance can result in large voltage transients on the integrated circuit.

Specifically, although there is an abrupt chmlge in the supply ctm'ent when switching from

the high to low voltage inputs, the current flowing tba'ough the parasitic inductor cannot

change instantaneously, Thus, some cuu'ent will continue to flow, causing the voltage on the

voltage supply lines to "bounce." If the voltage transients exceed the process limitations of

the integrated circuit, there can be damage due to voltage overstress. In addition, if the

voltages on the voltage supply lines come too close together or cross, tile digital and analog

circuitry in the voltage regulator will fail. Furthetwnore, large voltage transients create noise

which can interfere with fl e normal operation of analog components of the power regulator,

Compensating for this noise requires additional circuitry, at the expense of design time,

silicon area m d power consumption.

'522 patent, 1: 42-57. The patents describe the problem of parasitic resistance as follows:

The parasitic resistance of the packaging increases energy dissipation, which astes energy

and creates excess heat. This excess heat can degrade circuit performance, ana in omer to

avoid the degraded circuit performance, it is necessary to use expensive heat sinks or cooling

systems, or limit the current flowing tln'ough the device.

/d., h59-64.

A method of packaging that reduces these problems, and which is used in the inventions of

the Burstein patents,uses solder balls and flip-chip bonding technology rather than wire bonding.

Fisher Motion Decl., Ex. E (Szepesi Expert Report), ¶ 43, This approach uses metal bumps or balls

to attach the chip to a substrate can'ier or directly to a printed circuit board. Lefort SJ Opposition

Decl., Ex. 1 (Baker Expert Report), l 36. This is accomplished ttu'ough use 6f arrays, of metalized

pads with solder balls distributed over the active area on the die. Fisher Motion Decl., Ex. E

(Szepesi Expert Report), ' 43. The chip is then flipped and attached to a printed circuit board

("PCB") such fl at the solder balls are situated under the active area. Id. "BY allowing the placement

of arrays of solder balls positioned across the die area of the switching transistor, the parasitic

resistance and inductance between fl e drain/source diffusions of the MOSFET switch and the PCB

pads and traces are significantly reduced due to the distributed nature of the connection which

reduces both the current carried by each solder ball and file distance between the MOSFET dells and

the PCB pads." Id., ¶ 44.

C. The Accused Products

The PX4640 and PX4650 are power stage products that are integrated circuit packages that

contain an integrated circuit chip. Lefort SJ Opposition Decl., Ex. 1 (Baker Expert Report), 1 149;

see also, id., Ex. 37 (Szepesi Depo.) at 215-216 (testifying that PX4650 is an "integrated circuit chip

Case 3:08-cv-05129-JCS Document 767 Filed 04/14/10 Page 8 of 50
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in a package with a lead frame"). They are components that m'e designed to be used in certain

voltage regulator applications but they are not, by themselves, entire voltage regulators. Lgfort SJ

Opposition Dec!., Ex. 1 (Baker Expert Report), 11149.

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D. The Preliminal2,, Injunction Motion

In the Preliminary Injunction Motion, Volterra asserts that it should be afforded injunctive

Mief because: 1) it is reasonably likely to prevail on the merits with. respect to its claims that

Defendants have directly and indirectly infringed claim 34 of the °264 patent and claims 18 and 19 of

the '522 patent; 2) Volterra wil! suffer in'eparable harm if a preliminary injtmctlon is not entered

against Defendants; 3) the balance of the hea'dships weighs in favor of Volterra; 4) the public interest

favors granting a preliminary injunction against Defendants; and 5) the evidence shows that

Defendants copied Plaintiff's invention.

With respect to likelihood of success on the merits, Volterra points out that it need only

demonstrate a likelihood of success as to one of the three claims as to which it seeks surmnaD,

judgment of infringement. Further, Volterra argues, the asserted claims are presumed valid unless

Defendants can come forward with clear and convincing evidence that they are invalid. Volterra's

substantive arguments relating to infringement are set forth in its Summary Judgment Motion

(discussed below).

In support of its assertion that it will suffer irreparable harm if it is not granted hajunciive

relief, ¥olterra cites evidence that the inventions taught in the Burstein patents are its core products,

developed through the ingenuity and hard work of its engineers over man), years, that Volterra has

never licensed its products, and that until Defendants began selling the accused products, Volterra

was the only company that had ever successfully developed and offered a flip-chip integrated power

product. Volterra further cites evidence that there is only a small number of potential purchasers of

flip-chip integrated power products. According to Volterra, the largest markets for its products are

the industa3, standard server market and the high-end graphics card market. The target companies in

the former market are while file target companies in the latter are

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According to Volten'a, all of these companies are currently Volterra customers, but

Defendants are actively marketing their competing products to these companies.

Although Defendants have, so far, only had small design wins (ate), the parties are

currently competing for a number of large deals that will be awarded in the near future. These design

decisions, Volterra asserts, are crucial to its continued success not only because of the magnitude of

the deals (close to.million in lost revenue over the next two years, according to Volterra) but

also, as to at least one of the deals, for a new server platform, because a new generation of server

platforms is introduced only every two years, Thus, Voltcrra will not be able to bid on the next

server platform for two ),ears, during which time it will lose substantial revenue and market share, as

well as the oppo1 nity to deepen its relationships with its existing key customers. Further, because

Defendants have offered the accused products at Nices flat are tess than Volterra's, Plaintiff

asserts that it also faces thefl reat of price erosion and loss of goodwill on the part of existil?g

customers. Finally, Volterra asserts that loss of these deals will damage its reputation as a market-

.cadet and technology innovator,

Volterra argues that the balance of the hardships tips in its favor because Volterra's future

revenue is ahnost entirely dependem on sales of its flip-chip integrated power products whereas

Defendants are part of a large, diversified business that will not be harmed significantly by an

injtmction prohibiting the sale of the PX4640 and PX4650,

Defendants argue that a preliminary injunction should not be entered because Volten'a has

not demonstrated a reasonable likelihood of success on the merits. Defendants argue, in particular,

that there are substantial questions as to infringement of the asserted claims and the validity of those

claims. Wifl respect to non-infi'ingement, Defendants argue that the accused products fail to meet

certain limitations of the asserted claims (discussed further below), Defendants argue further that

there are substantial questions as to the validity of the asserted claims, First, they argue that the

asserted claims are invalid'because the term "power switch," which is used in all of the asserted

claims, is indefinite under 35 U.S,C. § 112(2). Second, they cite to prior art that Defendants argue

renders Plaintiff's invention either anticipated or obvious, Third, Defendants argue that the asserted

claims are invalid on the basis of evidence of a public use of the invention more than one year before

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the earliest priority date, making the invention unpatentable uMer 35 U.S.C. § 102(b).

Even if the Court finds that there is a reasonable likelihood of success on the merits,

Defendants argue, the evidence shows that Volterra will not, in fact, suffer irreparable hmm if sales

of Defendants' accused prodi cts are not enjoined. In partieulm', Defendants cite a report by their

expert, James Malackowski, concluding that

According to Defendants, ,any hm'm that

might result fi'om Defendants' actions is measurable ,'ud therefore not in'eparable. Moreover,

Defendants argue, fl e balance of the hardships tips in Defendants' favor because an injunction woukl

be an "in-ecoverable blow" to their business and would also deprive customers of a second source for

IPS products.

E. The Summary Judgment Molion

hi the Su'mmary Judgment Motion, Volterra argues that Defendants' PX4640 and PX4650

meet every element, and therefore infringe, claim 34 of the '264 patent and claims 18 and 19 of the

' 522 patent.

Defendants argue fllat Volterra is not entitled to smmnary judgment because the following

claim limitations are not met by the accused products: 1) the "metalized pads" limitation of claim 34

of the '264 patent; 2) the limitation of claim 34 of the '264 that the metalized pads must be

"fabricated on the surface of the substrate"; 3) the "mounted on" limitation of claims 18 mad 19 of

the '522 patent; 4) the limitations of claims 18 and 19 of the '522 patent requ'iring "a substantially

DC voltage at the output terminal" and "to maintain the DC voltage substantially constant"; 5) the

"alternating pattern" of doped regions limitation of all tlu'ee asserted claims. As to the "alternating

pattern" limitation, Defendants argue further tlhat Volterra is barred by prosecution history estoppel

from asserting infringement under the doctrine of equivalents. Finally, Defendants assert that

Volterra's summary judgment motion fails because the term "power switch," which is used in all

three claims, is indefinite as a matter of law,

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IlL LEGAL STANDARDS

A. Preliminary Injmlction Standard

Volterra seeks a preliminary injunction pursu,'mt to 35 U.S.C. § 283, which allows a federal

district court to "grant injunctions in accordance with the principles of equity to prevent the violation

of m y right secured by patent, on such temas as the court deems reasonable." Because issuance of a

preliminary injunction pursuant to § 283 involves substantive matters unique to patent law, the law

of the Federal 

"Circuit 

governs, except where the isstfes involved are purely procedural. Hybritech,

Jnc. v. Abbott Laboratories, 849 F.2d 1446, 1451 n.!2 (Fed. Cir. 1988). The grant or denial of a

preliminary injunction under § 283 is within the sound discretion of the district corn1. Amazon.corn,

Inc. v. Barnesandnoble.com, bTc., 239 F.3d 1343, 1350 (Fed. Cir. 2001) (citation omitted). It is,

however, a "drastic and extraordinary remedy that is not to be routinely granted." Intel Corp, v.

ULSt System Technology, 995 F.2d I566, 1568 (Fed. Cir. 1993).

As the moving party, Volterra is entitled to a preliminary injunction if it succeeds in showing

that: 1) there is a reasonable likelihood of success on the merits; 2) Volterra will suffer irreparable

harm if an injunction is not granted; 3) the balance of hm'dships tips in Volterra's favor; and 4) entry

of an injunction will have a favorable impact on the public interest. 1d. "These factors, taken

individually, are not dispositive; rather, the district court must weigh and measure each factor against

the other factors and against the form and magaaitude of the relief requested." Amazon, corn, 1no., 239

F.3d at 1350 (quoting Hybritech, 849 F,2d at 1451). 'Ittemoving party must demonstrate both of the

first two factors, that is, likelihood of success on the merits and irreparable harm. Id. (citation

omitted); see also PHG Technologies v. St. John Companies, Inc., 469 F.3d 1361, 1369 (Fed. Cir.

O

2007) (holding that where there was a substantial question as to invalidity, district court abused

discretion in granting preliminary injunction motion because plaintiff had not demonstrated

likelihood of success on the merits).

In order to demonstrate a likelihood of success on the merits, the patentee must show, in light

of the burdens and presumptions that will inhere at trial, that it will likely prove that: 1) the

defendant infringes lhe asserted claims; and 2) the patentee's infrhagement claims will likely

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withstand flae defendants' challenges to the validity and enforceability of the patents. Amazon.corn,

blc., 239 F.3d at 1350. ]n cases involving nmltiple asserted claims, a party seeking a preliminary

injunction must show that it will likely succeed in demonstrating infringement of at least one of the

claims of the patent-in-suit mad that at least one of those same claims will likely withstand the

validity challenges of the accused infringer. Id.

If the accused infringer raises "a substantial question concerning either infi'ingemeni or

validity, i. e,, asserts an infi'ingement or invalidity defense that the patentee cam ot prove 'lacks

mbstantial merit,' the preliminm3, injunction should not issue." Id. Thus, although lhe statutory

presumption that a patent is valid places the ultimate burden on the accused infringer to prdve

invalidity at trial, because of the extraordinary nature of the relief sought at the preliminary

injunction stage, thepatentee ean'ies the burden of showing likelihood of success not only as to

infringement but also with respect to validity. See Nutrition 21 v, KS., 930 F.2d 867, 869 (Fed. Cir.

] 991). In considering whether a patentee has established a likelihood of success on validity at the

preliminary injunction stage, the court must take into account the fact that at trial, an accused

infringer m)st establish invalidity by clear and convincing evidence. See Computrol, I w. v.

Lm rance Electronics, Inc., 893 F. Supp. 1440, 1446 (D. Idaho 1994). Nevertheless, % showing of a

substantial question of invalidity requires less proof than the clear and convincing standard to show

actual invalidity." Erico Intern. Corp. v, Vutec Co1 ., 516 F.3d 1350, 1356 (Fed. Cir. 2008),

In determining whether a patentee has established a likelihood of success, both as to

ilffringement and validity, the court nmst peffoma a claim-by-claim analysis to determine the

meaning and scope of each claim. Amazon.corn, 239 F.3d at 1351 (quoting Marlonan v. Westaieu,

Instruments, Inc., 52 F.3d 967, 996 n. 7, stating that "[a] claim must be construed before determining

its validity just as it is first construed before deciding infringement"), However, the court has no

obligation to construe claims "conclusively and finally'' during a preliminary injunction proceeding.

Sofamor Dcmek Group, Inc. v. DePuy-Motech, Inc., 74 F.3d 1216, 1221 (Fed. Cir, i996)(holding that

2vIarbnan does not obligate the trial judge to conclusively interpret claims at an early stage in the

ease"). Rather, the Federal Circuit has explained that the trial court may engage in a "rolling claim

construction" as the case proceeds:

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District courts may engage in a rolling claim construction, in which the court revisits and

alters its interpretation of the claim terms as its undergtanding of the techno!ogy evolves.

S@mor Danek Group, Inc. v. DePuy-Motech, Inc., 74 F.3d 1216, 1221, 37 USPQ 2d 1529,

1532 (Fed. Cir. 1996). This is particularly true where issues involved are complex, either due

to file nature of the technology or because the memaing of the claims is unclear from the

intrinsic evidence. Indeed, these difficulties may be even more acute in the preliminm7

injunction context than at later stages in fl e litigation because.,, motions for a preliminary

injunction may come for decision before significant discovery has occurred, Hence, in

reviewhg a district court's decision on a motion for a preliminary injunction, we remain

"mindful that all findings of fact mad conclusions of law at the preliminm7 injunction stage

are subject to change upon the ultimate trial on the merits."

Jack G dtman, Inc. V. Kopykake Enterprises, Inc., 302 F.3d 1352, 1361 (Fed, Cir, 2002). Thus, the

court's claim constructions at the preliminary injunction stage are not binding on the cotwt at

summary judgment. See Mue!Ier Sports Medlcite Inc. v. Beveridge Marketing LLC, 369 F. Supp, 2d

1028, 1034 (W.D. Wis. 2005),

Prior to the Supreme Court's decision in eBay Inc. v. MereExehange, LLC, 547 U.S. 388

(2006), irreparable harm was presumed when a clear showing of patent validity and infringement had

been made. See, e.g, id. Subsequent to the eBay decision, however, there is a split of opinion as

to whether this presumption still arises in patent cases. See Hologic, Inc. v. SenoRx, Inc., 2008 U.S.

Dist. LEXIS 36693 (N.D. Cal. April 25, 2008) (discussing split following eBay and holding in

context of preliminary injunction motion that raider the reasoning of eBay, presumption no longer

exists). In e.Bay, the Supreme Court found that the Federal Circuit had erred in holding that in patent

eases, file "general rule" provides that a permmaent injunction wiI1 issue once infringemen, t and

validity have been adjudged. 547 U.S. at 393-394. The Court reasoned that nothing in the Patent

Act indicates that Congress intended that courts depart fi'om traditional equitable principles in

determining whether injunctive relief is warranted in cases involving patent infringement. Id. This

conclusion applies equally to preliminary injunctions, Therefore, this Court, like the court in

Hologic, finds that the existence ofin'eparable harm in eormection with a motion for a preliminary

inunction in a patent case should be determined by applying, the traditional principles of equity and

not on the basis of a presumption arising from a showing that there is a likelihood of success on

infi'ingement and validity.

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B. Summary Judgment Standard

Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories,

and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to

any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Cir.

P. 56(c). In order to prevail, a party moving for smmnary judgment must show the absence of a

genuine issue of material Net with respect to an essential element of the non-moving party's claim,

or to a defense oll M ich the non-moving party will bear the burden of persuasion at trial. Celotex

Corp. v. Catrett, 477 U.S. 317, 323 (1986). Fttrther, "Cetotex requires that for issues on which the

movant would bear the burden of proof at trial, that part?, must show affilrnatively the absence of a

genuine issue of material fact," that is, "that, on all the essential elements of its case on which it

bears the burden of proof at trial, no reasonable jury could find for the non-moving party."

Fitzpatrick v. City of Atlanta, 2 F.3d 1112, 1116 (11 th Cir. 1993). Once the movant has made this

showing, the burden then shifts to the party opposing surmnary judgment to designate "specific facts

showing there is a genuine issue for trial." Id. at 323. On sunnnary judgment, the court draws all

reasonable factual inferences in favor of the non-movant. Anderson v. Liberty Lobby Inc., 477 U.S0

242, 255 (1986).

C, Infringement Standards

A determination of infringement is a two-step process. Wright Med. Tech., Inc. v. Osteonics

Corp., 122 F.3d 1440, 1443 (Fed. Cir. 1997). The first step is claim construction, which is a

question of law to be determined by the court. Id. The second step is an analysis of infi'ingement, in

which it must be determined whether a particular device infringes a properly construed claim, Id,

This analysis is a question of fact. Id. A device literally iIffringes if each of the elements of the

asserted claims is found in the accused device. M. In the alternative, a device may infringe under

the doctrine of equivalents "if every limitation of the asserted claim, or its 'equivalent,' is found in

the accused subject matter, where an 'equivalent' differs from the claimed limitation only

insubstantially." Ethicon Endo.gurgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1315

(Fed. Cir. 1998).

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Application of the doctrine of equivalents may be limited as a result of the prosecution

history of the patent. In particular, "a narrowing amendment made [during patent prosecution] to

satisfy any requirement of the Patent Act may give rise to an estoppel." Festo Corp. v. Shoketsu

Kinzoku Kogyo Kabushiki Co. 535 U.S. 722, 736 (2002). "A patentee who narrows a claim as a

condition for obtaining a patent disavows his claim tO the broader subject matter, whether the

amendment was made to avoid the prior art or to comply with § t 127' Id. at 737; see also Felix v.

American Honda Motor Co., Ine., 562 F.3d 1167, 1182-1183 (Fed. Cir. 2009) (emphasizing that "tilt

is the patentee's response to a rejection - not the examiner's ultimate allowance of a claim-that gives

rise to prosecution history estoppel'). Thus, where a nm'rowing amendment was adopted during

prosecution to secure a!lowance of a elaim, a presumption of estoppel arises. Festo Corp., 535 U.S.

at 736. This presumption arises "M en a patentee cancels an independent claim and rewrites a

dependent claim in independent form for reasons related to patentabilib,, even if the amendment

alone does not succeed in placing the claim in.condition for allowmlce," Felix, 562 F.3d at 1183.

"The presumption of surrender applies to all claims containing the added limitation, regardless of

whether the claim was, or was not, amended during prosecution." /d. (citations omitted). Once a

presumption of surrender has been established, the but'den of production and persuasion then shifts

to the patentee to rebut the presmnption by showing that the particular equivalent was not

disclaimed. Festo Corp., 535 U.S, at 736.

Infringement may be direct or indirect. See BMC Resources, Inc. v. Paymente.ch, L.P., 498

F.3d 1373, 1378 (Fed. Cir. 2007); see also 35 U.S.C. § 271. "Direct infringement requires a party to

perform or use each and every step or element of a claimed method or product." Id. A deI ndant

may be liable for indirect infringement !f it "participates in or encourages infringement" by another

and fl ere is "a finding that some part,,, amongst the accused actors has colnmitted the entire act of

direct infringement,'.' Id. One form of indirect infringemeilt is contributory infringement. See

PharmaStem Therapeutics, Inc. v. ViaCetl, Inc., 491 F.3d 1342, 1357-1358 (Fed. Cir. 2007)

(explaining that the 1952 Patent Act codified the judicially created doctrine of contributory

infringement). Under the Patent Act, contributoi3, infringement is defined as follows:

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Whoever offers to sell or sells within the United States or imports into the United States a

component of a patented machine, manufacture, combination or composition, or a material or

apparatus for use in practicing a patented process, constituting a material part of the

invention, knowing the same to be especially made or especially adapted for use in an

infringement of such patent, and not a staple article or commodity o con nerce suitable for

substantial noninfringing use, shall be liable as a contributory infringer.

35 u.s,c, § 271(c).

D, Clainl Construction Standards

"It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to

which the patentee is entitled the right to exclude.'" Phillips v. A WH Corp., 415 F.3 d 13 03, 1312

(Fed. Cir. 2005) (quoting Innova/Pure Wateh Inc. v. Safiwi Water Filtration Sys., Inc., 381 F.3d

111 I, 1115 (Fed. Cir, 2004)).. Generally, claim teians are given the ordinary mad customat3, metaling

that would be ascribed to them by a person of ordinary skill in the field of the invention. /d. at 1313.

The most "significant source of the legally operative meaning of disputed claim language" is the

intrinsic evidence of record, that is, the claims, the specification and the prosecution histo13'.

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). This is because "the

person of ordinary skill in the art is deemed to read the claim term not only in the context of the

particular claim in which the disputed term appears, but in the context of the entire patent, including

the specification." Phillips, 415 F.3d at 1312. In some eases, the specification may reveal a "specia!

definition" given by the inventor that differs fi'om the meaning the term might otherwise possess. !d.

at t316, A specification may also reveal "an intentional disclaimer, or disavowal, of claim scope by

the inventor." !d. A person of ordinary skill in the art also looks to the prosecution history of a

patent to understand how the patent appficant and the Patent Office understood the claim terms. !at.

at 1313, 1317. in particular, argtunents and amendments made during patent prosecution limit the

interpretation of claim terms to exclude interpretations that were disclaimed to obtain allowance of a

claim. Southwatl Technologies, Inc. v, CardinallG Co., 54 F.3d 1570, 1576 (Fed, Cir. 1995).

"[U]nless compelled to do otherwise, a eom't will give a claim term' the full range of its

ordinary meaning as understood by an artisan of ordinary skill." Rexnord Corp. v. Laitram Corp.,

274 F.3d 1336, 1342 (Fed. Cir. 2001) (holding that district court erred in giving claim language

narrow interpretation rather than broader interpretation that was also supported by claim language on

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tile basis that narrow interpretation was consistent with preJrred embodiments). Thus, while claims

are to be construed in light of the specification, courts must be careful not to read limitations fi'om

the specification into the claim. Phillips, 415 F.3d at 1323. If a patent specification describes only a

single embodiment, that does not mean the claims of the patent necessarily nmst be construed as

lhnited to that embodiment, Id. Rather, it is to be tmderstood that the purpose of the specification

"is to teach and enable those of skill in the art to make and use the invention" and that sometimes,

the best way to do that is to provide an example. )'d. Similarly, the Federal Circuit has cautioned

that "patent coverage is not necessarily limited to h ventions that look like the ones in the figures,"

noting that talcing such an approach to claim construction would amormt to "import[ing] limitations

onto the claim from the specification, which is fraught with danger." MBO Laboratories, Inc. v.

Beclon, DicMnson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007).

* * " Courts may alsouse extrmsm evlden Ce in construing claim terms if it is necessary, so long as

such evidence is not t!s.ed to "vary or contradict the terms of the claims." Markman, 52 F.3d at 980.

The Federal Circuit tias warned, however, that such evidence is generally "less reliable than the

patent and its prosecution history." Phillips, 415 F.3d at 1318, Courts may eonsider expert

testimony, the testimony of the inventor, and prior art, whether or not it is referenced in the

specification or prosecution history. Vitronies, 90 F.3d at 1584. Courts ,are also free to consult

dictionaries and teebmical treatises so long as they are careful not to elevate them "to such

prominence that it focuses file inquiry on the abstract meaning of the words rather than on the

meaning of the claim terms w thin the contexi of the patent." Phillips, 415 F.3d at 1321-22. As the

court explained in Markman, "[extrinsic] evidence may be helpful to explain scientific principles, the

meaning of te.clmical terms, and terms of art that appear in the patent and prosecution history." 52

F.3d at 980,

E, Invalidity Standards

1, Indefiniteness

The requirement that claims be sufficiently "definite" is set forth in 35 U.S.C. § 112, 112,

which provides that, "[t]he specification shall conclude with one or more claims particularly pointing

out and distinctly claiming the subject matter which file applican.t regards as his invention." "The

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definiteness inquiry focuses on whether those skilled in the ,'ut would undersl md tile scope of the

claim when the claim is read in light of the rest of the specification." Union Pacific Resources Co, v.

Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir. 2001). In order to "accord respect to the

statutory presumption of patent validity," a claim should be tbund indefinite "only if reasonable

efforts at claim construction prove futile." Exxon Research and Engineering Co. v. United States,

265 F.3d 1371, 1375 (Fed. Cir. 2001). Thus, a claim is not indefinite simply because its meaning is

not ascertainable from the face of the claims. Amgen, h 'c. v. Hoechst Marion Rmtssel, Inc., 314 F.3d

1313, 1342 (Fed. Cir. 2003). Further, where a claim is fairly susceptible of two constructions,

corals should attempt to preserve its validity, reading the claim in light of the specification. See

Process Control Corp. v. HydReclaim Coqz, 190 F,3d 1350, 1357 (Fed. Cir. 1999). A claim is.

indefinite, however, if it is "insolubly ambiguous, and no narrowing construction can properly be

adopted." Id. (citations omitted).

2. Obviousness and Anticipation

A patent may be invalid because the invei:tion is not literally new (in which case, it may be

anticipated) or because, although the invention is literally new, it is an obvious variation or

modification of old products, processes, and technology. See Donald S. Chisum, Sources of Prior

Art, in Patent Lmv, 52 Wash. L. Rev. 1, 2 (1976). The standards governing these two doctrines are

set forth ,below.

a. Anticipation

A patent is anticipated under 35 U.S.C. § 10'2 if"(a) the invention was known or used by

others in this count:y, or patented or described in a printed publication in this or a foreign country,

before the invention thereof by the applicant for patent, or (b). the invention was patented or

described in a printed publication in this or a foreign country or in public use or on sale in this

country, more than one year prior to the date of the application for patent in the United States .... "

The general rule for determining priority of invention is set forth in § 102(g), which provides, in part,

as follows:

h detemaining priority of invention under this subsection, there shall be considered not only

the respective dates of conception atd reduction to practice of the invention, but also the

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reasonable diligelice of one who was first to conceive and last to reduce to practice, from a

time prior to conception by the other.

35 U.S.C. § 102(g). In other words, "priority of invention 'goes to the first party to reduce an

invention to practice unless the other party can show that it was the first to conceive the invention

md that it exercised reasonable diligence in later reducing that invention to practice.'" Mahurkar v.

CR. Bard., Inc., 79 F.3d' 1572, 1577 (Fed. Cir. 1996) (quoting Price v. Symsek, 988 F.2d 1187, 1190

(Fed. Cir. 1993)).

"To have conceived of ma invention, an inventor must have formed in his or her mind 'a

definite and permanent idea of the complete m d operative invention as it is hereafter to be applied in

practice,'" M. (quoting Burroughs Wellcome Co. v. Barr Labs, Inc., 40 F.3d 1223, 1228 (1996)),

Where a party seeks to establish conception through the oral testimony of the inventor, corroboration

of the inventor's story must be presented, ht, In assessing corroboration of oral testimony, a "role of

reason" is applied whereby all pertinent evidence is analyzed to'determine whether the inventor's

sto13' is credible, Id, To show reduction to practice, "an inventor must demonstrate that the

invention is suitable for its intended purpose." Id. at 1578,

In order for prior art to be "known" trader § 102(a), it must be publically accessible and it

must be sufficient to enable one with ordinary skill in the art to practice the invention. Minnesota

Mining & Mfg. Co, v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002), "Public use under 35

U.S.C. § 102(b) includes any use of the claimed invention by a person other than the inventor who is

under no limitation, restxiction or obligation of frequency." Id. Alternatively, a patent may be

invalid under the "on-sale-bar" codified in § 102(b) if there was a "deNfite sale or offer to sell more

than one year before the application for the patent and.., the product sold or offered for sale

anticipated the claimed invention or rendered it obvious." /d. The on-sale-bar is usually triggered by

the actions of the inventor. See Chisum, Sources of Prior Art in Patent Law, 52 Wash. L. Rev. at 7,

As Chisum notes, "most things 'in public use or on sale' witlfin the meaning of Section 102(b)

would also be 'known or used' within the meaning of Section 102(a)," /d.

In order to establish anticipation under § 102(a) on the basis of a printed publication, a

defendant must demonstrate in the publication "each and eve T limitation of the claimed invention."

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Novo Nordisk Pharms., Inc. v. Bio-Techn. Gen. ColT., 424 F,3d 1327, 1354 (Fed, Cir. 2005). Thus,

"each and every limitation [must be] found either expressly or M erently in a single prior m-t

reference." Oakley Inc. v. Sunglass Hut htt 7, 316 F.3d 1331, 1339 (Fed. Cir. 2003) (quotations

omitted). A limitation is "iNaerent" if it is "necessarily present" in the prior art invention.

SmithKline Beecham Corp, v. Apotex Corp., 403 F.3d t331, 1343 (Fed. Cir. 2005).

Shnilarty, under § t02(b), a device that is used in public or sold may render a patent invalid

on the basis of anticipation only if the device includes every limitation of the later claimed invention.

See Netseape Commc'ns Corp. v. Konrad, 295 F,3d 1315, 1321 (Fed, Cir. 2002).

b, Obviousness

The standard regarding obviousness is set forth in 35 U,S.C. § 103(a), which provides, in

relevant part, as follows:

A patent may not be obtained though the invention is not identically

disclosed or described as set forth in section 102 of this title, ff the

differences between the subject matter sought to be patented and the

prior art are such that the subject matter as a whole would have been at

the time the invention was made to a person having ordinary skill in

the a to which said subject matter pertains.

35 U.S,C. § 103(a). In Graham v. John Deere Co,, the Supreme Court instructed courts to address

the question of obviousness against the "background" of three inquiries: 1) the scope and content of

the prior art; 2) differences between the prior art and fl e claims at issue; and 3) the level of ordinary"

kill in rite pertinent art. 383 U.S. 1, 17 (1966). In addition, under Graham courts are to consider

"secondary considerations" that may be relevant to obviousness, such as "colmnereial success" and

"long felt but unsolved needs." Id.

In Great Atl. & Pae. Tea Co. v. Supermarket Equip., the Court explained fl e policy on which

the nonobviousness requirement is based:

The function of a patent is to add io the stun of useful knowledge, Patents cannot be

sustained when, on the contrary, their effect is to subtract from former resources

freely available to sldlled artisans, A patent for a combination which only unites old

elements with no change in their respective functions,., obviously withdraws what

already is known into the field of its monopoly and diminishes the resources available

to skillN1 men,

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340 U.S+ 147, 152-153 (1952). On the other hand, % patent composed of several elements is not

proved obvious merely by demonstrating that each of its elements was, independently, known in the

prior art. KSR Int 'I Co. v. Teleflex Inc., 550 U.So 398, 4t8 (2007). For example, "when the prior art

teaches away from combining certain known elements, discovery of a successful means of

combining them is more likely to be nonobvious." Id. at 416. It may also be "helpful" to ask

whether there was a "teaching, suggestion, or motivation to combine knoxsm elements" that would

have rendered an invention obvious ("the TSM test"). ]d at 418.

h KSR, the Supreme Court decided that the Federal Circuit had applied the TSM test too

rigidly by holding that the patent examiner should look only to the question the patentee was'hying

to resolve in determining whether there was a motivation to combine elements found in prior art. ]d.

at 1742. The Court explained, "It]he question is not whether the combination was obvious to the

atentee but whether the combination was obvious to a person with ordinm-y skill in the art." Id.

Therefore, "any need or problem known in the field of the endeavor at the time of the invention and

addressed by the patent can provide a reason for combining the elements in the manner claimed." ld.

While the ultimate conclusion of obviousness is a legal question, it is based upon tmderlying

facts, h7 re Icon Health & Fitness, 496 F. 3d 1374, 1378 (Fed. Cir. 2007). "Underlying facts

include the scope and content of the prior art, the level of ordinary skill in the art at the time of the

invention, objective evidence ofnonobviousness, and differences between the prior art and the

claimed subject matter2' Id. (citing Graham, 383 U.S. at 17-18). The presence or absence era

motivation to combine is also a question of fact, see In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.

2000), as are the "secondary considerations" discussed in Graham. See PharmaStem Therapeutics v.

ViaCell, Ine,, 491 F.3d 1352, 1359 (Fed. Cir. 2007):

IV. THE PRELIMINARY INJUNCTION MOTION

A, Likelihood of Success on the Merits

1. Infringement

Volterra asserts that it is entitled to a preliminary injunction on the basis of three asserted

claims that it alleges are infringed: claim 34 of the '264 patent, and claims 18 and 19 of the '522

patent. Below, the Court tentatively construes the disputed terms of these claims, then looks to the '

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evidence presented by fl:e parlies wid: respect to tl e accused devices to delermine whether Volterra

is likely to succeed in demonstrating infi-ingement of any or all of the three claims.

a, Claim 34

i, Background

Volterra asserts that the PX4640 and PX4650 meet eve:3' element of claim 34 of the '264

patent) claim 34 depends fiom claim 26, which provides as follows:

An integ?aied circuit chip with a power switch for a voltage regulator thbricaled thereon,

comprising:

a substrate, havin ,g a first plurality of doped regions, md• a :second plurality .°f doped regions,

the firsl and second pluralities of doped regions arranged m a first alternating pattern; and

an array Of metalized pads fabricated on a surface of the substrale, the array including a first

plurality of pads and a second plurality of pads, with the first and second pluralities of pads

arranged in a second alternating pattern;

wherein, the first t)hlrality of pads. are electrically connected, to the, first phn'alib, of doped

regions and the second plurahty of pads are electrically connected to lhe second plurality of

doped regions, and wherein the first plurality of' pads are com ected to a first tenninal of the

voltage regulator and the second plurality of pads are corn:coted to a second terminal in the

voltage regulator.

'264 patent, claim 26. Claim 34 provides:

The chip of claim 26, wherein the first plurality of pads m'e connected to a first plurality of

solder balls and the second plurality of pads are connected to a second plurality of solder

balls interleaved with the first plurality of solder balls across a surface on the chip.

'264 patent, claim 34,

Volterra cites the following evidence in support of its assertion thai Defendants' accused

prodtlcts meet all of the elements listed above:

"An integrated circuit chip with a power switch for a voltage regulator fabricated

thereon" (Claim 26): In his expert report, Dr. Szepesi reliei on the datasheet l:br the

PX4650 in sut-oort of his conclusion that the accused products are integrated circuit clfips

with a power switch for a voltage regulator. See i;':sher Motmn Dect,, Ex. E (Szepesl Expert

Rel?ort), I1 66. In I?articular , he points to .Figure 2 of the datasheet,, wtfich, shows,

Id. According to Dr. Szepesh I

is the power switch that is called for under claims 26 md 34.

ld.

Further, the parties ha;e not distinguished between the PX4650 mad 4640 with respect to any of the

issues raised in the motions. Accordingly, the Co u't lreats the two devices as being the same in ruling

on the Prelimimu3, I@metio : Motion,

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"A substrate having a first plurality.., and a second plurality of doped regions..

.arranged in a first alternating pattern" (Claim 26): in his expert report, Dr. Szepesi relies

on layout plots of the PX4650 provided to Volterra by Defendants, ill support of his

conclusion that this limitation is met. Fisher Motion Decl., Ex. E (Szepesi Expert Report),

67; see also id, Ex. O (CD with color copies of layout plots produced by Defendants'). In

pm'ticular, he points

Motion Deck, Ex. E (Szepesi Expert Report.), ¶ 67. Accordin to Dr, Szepesi, the first

plurality of doped regions are __ while the second

plurality of doved re,ions

"An array of metalized pads fabricated on a surface of the substrate.., including a

first o!uralih'.., and a second plurality of pads.., arranged in a second alternating

pattern (Claml 2@ Dr. SzepesJ explains that pads m an IC are connnonly understood

in the art to mem openings in the top passlvation layer that allow com cction to the top metal

layer to enable the l:ormation of connections between the integrated circuit and external

circuit elements." Fisher Motion Decl., Ex. E (Szepesi Expert Report), ¶ 62 n. 2. tie

construes "metalized pads" as "pads that include an under-bump metalization layer (UMB)

that forms ,an interface between the top metal layer of the integrated circuit and the solder

balls (bumps) that are often,used in fllp-ch!p, type integrated circuits." Id., ¶ 62 (citing' 

' 

264

patent, 7: 4-7, which states, as shown in Fig. 4A, each pad includes a final metal layer 80,

such as aluminum, a nitride pasfivation layer 82, and an under-bump metalization (UBM)

layer 40 ). He relies on a die photograph of the PX4650 to show tti nitation uoted

above is met. Id, ¶ 69. According to Dr. Szepea, the photo shows

Id, Further, Dr. Szepesi concludes that the pads are " sisofthe testimony

of Defendants' 30@)(6) witness, Laura Carpenter, that

("UBM"). Id (citing Fis-her Motion Decl., Ex.

F (Carpenter Depo.) at ! 73-174).o

"The first plurality of pads are electrically emmected to the first plurMity of doped

regions and the second plurality of pads are electrically connected to the seconu

plurality of doped regions and wherein tile first plurality of pads are connected to a

first terminal in the voltage regulator and the second plurality of pads ark connected to

a second terminal in the voltage regulator" (Claim 26): In his expert report, Dr, Szep2si

points to die photos, as well as.an x-ray of the PX4650, to show that the first plurality of

metalized pads and the second plur ted to.l) the fil:st and

second pluralities of doped regions (

It, respectively; and 2) the firs aria cconu t mna,s u m vonage regmator,

respectively. Fisher Motion D 70. According to Dr.

Szepesi, the photos show that

M, Further, the datasheets that show

• 6In her deposition, Carpenter testified that a"pad" is "an opening in thepassivation layer ttu'ough

which you make contact to the chip metalization." Fisher Motion Decl., Ex, F (Camenter DeDo.) at 173,

She fi rther testified that in the PX4640,

Id,

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. ld,

"[T]he first plurality of pads are connected to a first plurality of solder balls and the

second plurality of pads are connected to a second plurality of solder balls interleaved

with the first plurality of solder balls across a surface on the chip" (Claim 34): Relying

....... ld.;I172"

ha their Opposition, Defendants assert that the accused products do not infringe claim 34

because: 1) they do not include "metalized pads"; 2) even if they did, flae metalized pads are not

"fabricated on a surface of the substrate;" and 3) the accused products do not meet the limitation

requiring an "alternating pattern" of doped regions.

ii. "metalized pad"

A. A 'guments

Defendants argue that the "metalized pad" requirement of claim 26 is not met by the accused

products. Defendants' position is based on its expert's construction of the term "metalized pad." In

particular, Dr. Baker, construes the term "metalized pads" as "an array of 'metalized pads' wherein

each pad in the an-ay consists of: (i) an individual mad distinct raised island of metal separated a fixed

distance from the other metalized pads; (ii) a passivation layer that lies partially over the island of

metal; and (iii) an under-bump metal (UBM) that partially overlays both the island of metal and the

passivation layers." Lefort SJ Opposition Decl., Ex, 1 (Baker Expert Report), 1 110.

Dr. Baker points to the specification in support of his proposed construction, noting that

"metalized pads" was not a common term of art in 1998] Id., I[ 111; First, Dr. Baker asserts that

Figure 2 of the patents shows raised islands of metal just above the solder bmnps 56, Id., ¶ 113.

Second, Dr, Baker argues that Figure 3A shows an array of metalized pads with a spacing between

the metalized pads of 295 microns in the horizontal direction and 250 microns in the vertical

7Dr. Baker looks to 1998 rather thanthe application date of the earlier of the two patents based

on his belief that Volterra "may be taking the position that the claims of the '264 and '522 patents were

first conceived of on April 3, 1998," Lefort SJ Opposition Deck, Ex. 1 (Baker Expert Report), ¶ 13.

He notes, however, that he believes the "understanding of the claim terms in the asserted claims to one

of skill in the art wouldnot have changed between 1998 and 2000. !?./,

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direction, indicating that the m'etalized pads must be a fixed distance fi'om one another. ]at., 1[ 114.

Third, Dr, Baker points to Figures 4A and B of the patents, as well as the accompanying description

in the specification, ld., 111t 115-116. Figure 4A is described in the specification as a "schematic

;ide view of a pad fi'om the flip-chip of Fig. 3A," ('522 patent: 4: 33-35), while Figure 4B is a top

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view of the metalized pad. The description of Figures 4A and B in the specification states as

follows:

Each row of drain or source pads 70, 72, 74, 76 may contain a number of individual alLaYs,

e.g., four pads (as shown in FIG. 3A) to six pads (as shown in FIG. 3B). The center-to-center

distance between each row of pads in a row may be about 300 microns, and the center-tocenter distance between each row of pads may be about 250 microns. As shown in FIG. 4A,

each pad includes a final metal layer 80, such as aluminum a nilride passivation layer

.82, and an under-bump metalization (IIBM) layer 84. As shown in FIG. 4B, although the

pads are illustrated in FIG, 3 as square, each pad may be octagonal, or some other shape that

is appropriate to maximize circuit performance for a particular application. The .UBM layer

84 can have an edge-to-edge distance of about 200 microns, and the final meta! Ira, or 80 can

have an edge-to-edge distance of about 115 microns.

'264 patent, 6:66 - 7:13 (emphasis added in Baker Expert Report). Dr. Baker acknowledges that the

specification does not require that the pads be rectangular or octagonal, see '264 patent, 9:11-14

(stating that the pads can be shapes "other than rectangular or octagonal"), but asserts that in all of

the embodiments, the pads are "distinct raised islands of metal separated fi'om each other by some

fixed distance." Id., II 116. Finally, Defendants point to Dr. Szepesi's testimony, in'his deposition,

that Figure 5 of U.S, Patent No. 6,713,823 (the "Nickel Patent") is the same as Figure 4 of the '264

patent, and that in both figures, the "final metal layer" described in the specification is a ':separate

structure that sits on top of [metal layer three]." Id., I[ 117 (citing Lefort SJ Opposition Decl., Ex, 37

(Szepesi Depo.i at 185-191 & Ex. 6 (Nickel Patent)).

Looking to file accused products, Dr, Baker points to layer plots showing that the accused

product do not have , the "final metal layer 80"

described in the '264 and '522 specification and shown in Figure 4A. Id., I[ 157) Instead, thel

6Volterra objects to the colorized figures found in I[ 157 of Dr. Baker's Expert Report, nmnely,

a modified version of Figure 4A and a figure depicting a corresponding side view of the accused devices,

on the basis that Defendants have shown element 80 in a different color than

As a result, Volterra asserts, the fiaures are misleadinz and prejudicial because they suggest

that final metal layer 80 eammt be , The objection is oven'uled. The

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Id. Dr.

Baker also points to a magnified photo of a cross-section of PX4650

to illustrate his argument. Id.

Volterra argues in response that Defendants' proposed construction reads into the claim

limitations that are not in the claim lmguage md are not supported by the specification? In

particular, V01ten'a points out that the claim itself does not require that the pads be distinct raised

islmds ofmeta!, and the specification requires only three structures: a final metal layer, a passivation

layer and au under-bump moralization, See Fisher Reply Decl., Ex. A (Szepesi Rebuttal Expert

Report (Infringement)), ! 73 (oiling '264 patent, 7: 5-7). According to VoltetTa, Dei ndants' expert

is attempting to add a fourth stnlctnre that is not required under claim 34. !d. In fact, Volterra

asserts, it is undisputed that the accused products have

and therefore, those products infringe claim

34. Id., 11 74, 79 (citing Declaration of Laura Carpenter in Support of Defendants' Opposition to

Plaintiff's Motion for Partial Summary Judgment of Infringement ("Carpenter Opposition Decl."), 11

ll)J°

In support of his conclusion, Dr. Szepesi quotes an excerpt of Dr. Baker's own textbook

showing that it was well-known in the art that the external cormections to an integrated circuit are

provided through pad openings that colmect to the exposed top - or final - level of metal, Milch is

labeled in accordance with the number of layers of metal used in the circuit. Id. (quoting CMOS

Court understands that the colors used by Defendants in these diagrams reflect their position regarding

the construction ofterrn "metalized pad" and does find these figm'es to be prejudicial or misleading. 

"

Volterra's proposed construction of"pads" and"metalized pads" is found in the Szepesi Expert

Report at 32 and is quoted above.

1°Defendants object to paragraphs 69 and 74 of Dr, Szepesi's rebuttal expert report on the basis

that these paragraphs include statements that are not based on the understanding of a person of ordinary

skill in the art at the time of the invention and therefore, are m'elevmat. The Court finds this evidence

to be relevant, hi determining M ether a device infringes, the Court is not limited to the understanding

of aperson of ordinary skill in the art at the time of the invention. In addition, the quotations from Dr.

Baker's 2005 textbook that appeal' to contradict his opinion in his expert report are relevant to his

reliability. The objection is overruled.

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Circuit Design, Layout and Simulation, IEEE 2005, second edition). Thus, the "final metal layer" in

the accused product is . lcl. Volterra also

cites to the testimony of Primarion's program manager, Laura Cm-penter, who states that a crosssectional photograph of the PX4650 shows

Id., 179 (citing Declaration of Laura Cm'penter in Support of

Defendants' Opposition to Plaintiff's Motion for Partial Surmnary Judgment of Infringement

("Carpemer SJ Opposition Decl.'), 1t 11).

Dr. Szepesi rejects Dr. Baker's assertion that Ngure 2 of the patents depicts "distinct raised

islands of metal" just above the solder bumps 56. Id., 176 (citing Baker Expert Report at 51).

Rather, Dr. Szepesi finds that tl:ese structures are the under-bump metal, which provides the

interface between the top level (final) metal layer of the integrated circuit and the solder ball. Id. As

to Defendants' reliance on Figure 4 of the '264 patent, Volterra argues that even if that figure does

depict "an individual and raised island of metal," this is merely one possible embodiment and this

limitation should not be imported into the claim. Volterra finlher notes that Defendants themselves

contend that U.S. Patent No, 5,945,730 ("Sicard") meets the "metalized pad" requirement of claim

26 even though the invention disclosed in that patent does not include distil!et raised islands of metal

separated by fixed distances. Id., ¶ 78.

B. AIialysis

Based on its consideration offl:e evidence cited by the parties, the Court tentatively

concludes that Defendants' construction of"metalized pads" includes limitations that are not

supported by the evidence and further, that when the term is construed properly, the limitation is met

by the accused devices.

As noted above, "unless compelled to do otherwise, a court will give a claim term the fuU

range of its ordinary meaning as understood by an artisan of ordinary skill." Rexnord Corp. v.

Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). Here, Defendants' expert has offered a

constrdcti0n of"metalized pads" that includes a limitation that is not found in the claims or the

specification of the patents, nmnely, the requirement that the metalized pads must be "distinct islands

of metal," The specification, however, describes the various eoilfigurations of pads in language that

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conveys that these are merely embodiments that are not intended to limit the scope of the tema, See,

e.g., 522 patent, 9:11-13 ("The pads can be shapes other than rectangular or octagonal. Other

configurations m'e possible for the distributed ,'m'ay of tr,'msistors, and other patterns are possible for

he contact pads"); 7:3-6 ("The center-to-center distances between each pad in a row may be about

300 microns, and the center-to-center distance between each row of pads may be about 250

microns") (emphasis added). Nor does the Comt find persuasive Defendants' reliance on Figure 2 or

Figtn'e 4 of the '264 patent. Even assuming these figures show pads that are "distinct island[s] of

metal," they represent embodiments of the invention only. The fact that the accused devices may not

look like these figures does not mean they fall outside the scope of the claims. Mt?O Laboratories,

Inc. v. Becton, Dickinson Co., 474 F.3d 1323, i333 (Fed. Cir. 2007). Indeed, the Federal Circuit

has warned against taking such an approach to claim construction, which raises the risk of importing

limitations from the specification into the claims, ld. Furthermore, as to Figure 2, the Court is

persuaded that the structures Dr. Baker identifies as the metalizedpads in that :figure are, in fact, the

under-bump metalization. Therefore, the Court tentatively construes the term "metalized pads" as

follows:

openings in the top passivation layer that allow connection to the top metal layer, to enable

the formation of cmmections between the integrated circuit and external circuit elements,

wherein the interface between the top metal layer of the integrated circuit and the solder balls " is formed using ml under-bump metalization layer

Applying this construction, the Court finds that Volterra will likely prevail in establishing that the

accl:lsed devices satisfy this limitation.n

iii. "fabricated on a surface of the substrate"

A. Arguments

Defendants argue that even if the accused products include "metalized pads," these pads are

not "fabricated on a surface of a substrate." In particular, Defendants assert that the phrase,

"fabricated on a surface of a substrate" means "formed directly upon the base layer of the integrated

The Court notes that the parties agree that the dispute regm'ding the "metalized pad" limitation

turns entirely on the Court's construction of the tenu and that there are no factual disputes as to the

structure of the accused devices in this respect.

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circuit chip." Summary Judgment Opposition Brief at 10.

the accused products do

not meet this limitation.

Defendants' position is based, in part, on Dr. Baker's construction of the term "substrate"

when used in the patents in connection with the IC chip (rather than the packaging of the chip). In

particular, Dr. Baker construes "substrate" as "the base layer of ,an integrated circuit chip that

contains the doped regions, and above which are deposited additional layers, such as metal and

insulators, to form the whole integrated circuit chip. Lefort SJ Opposition Decl., Ex. 1 (Baker

Expert Report), I] 61. Thus, under Defendants' proposed construction, the "substrate," as used in

claim 26, "is not the sum of all of the layers of the integrated circuit chip, but is only the base or

bottom layer of the chip that contains the doped regions." Id., 11 63.

In suppolX of his construction of"substrate," Dr. Baker points to the language of claim 26,

which expressly provides that the "substrate" has "doped regions," as well as several references in

the specification in which the "substrate" is described as the layer containing the doped region, id.

(citing '522 patent, 3: 3-8, 6: 3-8). Dr. Baker als0 points out that the patent specification

distinguishes between the "surface of the chip" and the "surface of the substrate" in several places.

,Tee id., 164 (citing '264 patent, 6: 9-13, 6: 22 25, 6: 26-2,8)) Based on this language, he asserts

that "where the specification uses the term substrate in the context of the hltegrated circuit chip...,

it is discussing the doped regions (n or p regions) which are either implanted or diffused into the base

layer of the chip. Id., I[ 65. He continues, "when the specification is referring to 'pads,' it describes

them as residing 'on the surface of the chip,' which in my opinion is correct." Id. He acknowledges

that there is one statement in the Summary that does not support his construction, refen-ing to "an

array ofmetalized pads fabricated on a sm'face of the substrate." '264 patent, 2: 54-55. He argues;

12In their Opposition brief, Defendants also cite to claim 34 of the '264 patentin support of their

proposed eonstruciibn. In particular, they note that claim 34, which depends on Claim 26, refers .to

solder balls across a surface of the chip, reflecting that the inventors knew the difference between the

"surface of the substrate" and the "surface of the chip." Summm3r Judgment Opposition at 12. In his

Expert Report, however, Dr. Baker does not cite to claim 34 in support of his proposed construction ot

the claim tern{ "fabricated on a surface of the substrate."

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however, that one of ordinm3skill in the art would read on to the Detailed Description of the patent

specification mad on that basis conclude that the "substrate" of the IC referred to in claim 26 is the

base layer of the chip.

Dr. Baker also points to extrinsic evidence in support his construction. First, he cites to the

[EEE Standard Dictionary of Electrical and Electronics Terms" (1996), which defines "substrate" in

several ways, including "(1) the supporting material upon or within which an integrated circuit is

fabricated o1" to which an integrated circuit is attached,'; and "(4) the base material upon which or in

M ieh a transistor or integrated circuit is fabricated or to which an integrated circuit is attached." Id.,

67 (citing Lefort SJ Opposition Decl., Ex. 34). Second, he cites to his own textbook, "CMOS

Circuit Design, Layout, and Simulation," published in October 1997, in which a subslrate is depicted

as "the base layer of an integrated circuit drip, where additional insulator and metal layers are

deposited to form the whole integrated circuit chip," Id., ! 68 (citing Lefort SJ Opposition Decl, Ex.

22),

¥olterra argues that Defendants are, again, adding a limitation that is not found in the claim

language or the specification, noting that neither refer to the pads being fabricated directly on the

base layer of the IC chip. In particular, Volten'a asserts that the use of the phrase "a surface" in the

claim implies that there can be more them one surface of the substrate upon which the metalized pad

can be fabricated. In its support, Volterra cites to a line of case law holding that "the article 'a'

receives a singular interpretation only in rare circumstances when the pate tee evinces a clear intent

to so lhnit the article." See KCJCorp. vo I netie Coneepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir.

2000) (citing.glkay Mfg. Co. v, Ebco Mfg. Co., 192 F.3d 973,977 (Fed. Cir. 1999);Abtox, Inc. ,.

ExiO'on Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997); North Am. Vaccine, Inc. v, American

Cyanamid Co., 7 F.3d 1571, 1575-76 (Fed.Cir.1993)). Thus, according to Volterra's expert, the

N ase "fabricated on a surface of the substrate" means "formed above the metal conductive layer of

the integrated circuit." See Fisher Reply Decl., Ex. A (8zepesi Rebuttal t xpert Report

(hffringement)), ¶ 89.

Volterra argues further that Defendmlts' proposed construction is contrary to law because it

reads out the prefen'ed embodiments, citing Chimie v. I PG IndusO'ies, Inc., 402 F.3d 1371, 1377

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(Fed. Cir. 2005) ("a construction that would not read on the preferred embodimem would rarely if

ever be correct and would require highly persuasive evidentiary support "). Id. 188, Specifically,

Dr. Szepesi asserts that the portions of the specification on which Defendants rely actually describe

netalized pads layered on top of metalization layers and not placed directly on the base surface of

the substrate, thus suppolting Volterra's position. Id., I[ 87. See '264 patent, 6:9-13 ("the IC chip

can include two or more metalization layers, e,g., three layers, formed over the semiconductor

ubstrate to carq current from the doped regions to the electrode pads on the sarface of the chip"); 6:

22-25 ("[u]nillustrated metalization layers formed ove ' the semiconductor substrate can carry current

from the doped regions to the electrode pads on the surface of the chip;'). In thct, Dr. Szepesi

concludes that Defendants' proposed construction would "read every integrated circuit out of the

claim language because even if an integrated circuit was manuPactured using a single metal layer,

and the pads were formed using that single metal layer, this pad would not meet Defendants'

proposed construction," Id. (emphasis added). He explains:

The pad would be located over thick field oxide, not "directly" on the substrate (the thick

field oxide layer would be between the single (top) metal layer and the surface of the

substate). Locating the pad over thick field oxide is mandated by every semiconductor

process I have seen, for reliability reasons and to make sure that the bonding process does not

damage underlying circuitry (if any).

M. Finally, Volterra argues that when the limitation is properly construed, it is undisputed that the

accused products meet this limitation.

B, Analysis

As noted above, courts geflerally give claim terms their ftfll range of meanings, unless

compelled to do otherwise, Further, a clahn construction that reads out a preferred embodiment - let

alone all of them - is rarely conect and must be supported by strong evidence. See Chtmie v. PPG

Industries, Inc., 402 F.3d 1371, 1377 (Fed. Cir. 2005). Here, Defendants have proposed a

construction that reads out the preferred embodiments and have not provided the strong evidentiary

basis that is necessary to support such a construction. First, the specification does not state anywhere

that ihe metalized pads must be fabricated "directly" on the base layer of the chip and indeed, the

Smnmary contradicts Defendants' proposed construction. Second, the claim language supports

Volterra's broader construction of the claim term, particularly the use of the indefinite "a" modifying

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"surface of the substrate," indicating that there may be more thm one such surface. Further, in the

absence of strong intrinsic evidence in support of Defendants' proposed construction, the Court

declines to adopt that construction on tile basis of the extrinsic evidence cited by Defendants' expert.

'llmrefore, the Court tentatively adopts Volten'a's proposed construction of the phrase "fabricated on

a surface of the substrate" as meaning "fornaed above the metal conductive layers of the integrated

ckcuit." It is undisputed that under this consmmtion, the accused devices meet this limitation.

Therefore, Volterra is likely to succeed on this question.

iv. "alternating pattern"

A. Arguments

Defendants argue that the "alternating pattern" of doped regions required under claim 26 of

the '264 patent (as well as claims 18 and 19 of the '522 patent) is not tnet by the accused products.

According to Dr. Baker, a doped region is a "region of the semiconductor substa'ate that contains

either a p-type or n-type impurity that changes the electrical characteristics of the substrate." Lefort

SJ Opposition Deel,, Ex, 1 (Baker Expert Report), [ 77. Further, he opines that one of ordinary skill

in the art would understand that % first plm'ality of doped regions" means "a set of identical,

repeated doped regions that collectively fbrm a terminal of a device, e.g., the drain," while "a second

plurality of doped regions" means % set of identical, repeated doped regions that-collectively form

another terminal of a device, e,g., the source." Ido, 78-79, Finally, he asserts that "alternating

pattern" would be understood by one sldlled in the art to mean "either (i) an "a" "b" %" %" pattern

of parallel stripes, or (ii) a checkerboard pattern ofreetmlgles." Id., 1 84. Volterra does not assert

that the accused products have a checkerboard pattern, and'therefore, Defendmats argue, file accused

products must. have a pattern ofpar'allel stripes to satisfy this claim requirement. Defendants argue

that they do not.

According to Defendants' expert, the "a" "b" "a" "b" pattern of parallel stripes

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Id, Defendants further

assert that Plaintiff is barred under the doctrine of prosecution history estoppel fl'om asserting that

the "alternating pattern" is anything other than the "a .... b" "a" "b" pattern of alternating stripes

because the claims were specifically allowed on the basis of the alternating pattern of drains md

sources. Id., t 199-108, 189-191.

Volterra argues that Defendmlts have construed the claim language associated with the

"alternating pattern" limitation too nm'rowly, importing limitations from the preferred embodiments

described in the specification, Dr. Szepesi is prepm'ed to accept, for the purposes of his infringement

analysis, that the term "alternating pattern" should be construed as "either (i) ml "a" '%" "a" '%"

pattern of parallel stripes, or (ii) a checkerboard pattern of rectangles." Fisher Reply Dec]., Ex, A

(Szepesi Rebuttal Expert Report (Infringement)), ¶56, He rejects, however, Dr. Baker's

construction of"a first plurality of doped regions" and "a second plurality of doped regions" for two

reasons. Id., 1 54. First, he disagrees with Dr. Baker that fllese pllrases require that the doped

regions form a terminal of the device, although they may do so. ]d. Second, he finds no basis for

the requirement that the doped regions must be identical, though they may be. Id. While Dr. Szepesi

acknowledges that these features are found in the preferred embodiment, he finds no basis for

importing these limitations h to the construction of these claim terms, Id.

To the extent that claim 26 was never amended during prosecution, however, Dr. Szepesi concludes

flaat claim 26 requires only an "alternating pattern of doped regions." Id. Volterra cites to Fiskar

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h e. v. Hunt Mam£acturing Co., 221 F.3d 1318, 1322 (Fed. Cir. 2000) (affirming district court

holding fl at where a claim was not anaended during prosecution, doctrine of prosecution history

estoppel did not apply, even though other claims were amended to gain allowance).

B. Prosecution History

The prosecution history of the '264 patent is as follows. There were 45 claims in the original

'264 application. Lefort SJ Opposition Decl., Ex. 4 ('264 file history) at PRIM 4172-4178. Original

claim 1 claimed a 'ivoltage regulator having m input mad an output terminal, comprising': various

elements, including "a first-flip-chip type integrated circuit chip mom ted on the substrate, the first

integrated circuit chip including a first power switch fabricated thereon to alternately couple and

decouple the inpm terminal to file output terminal?' M, at PILIM 4172. Original claim 1 did not

include a limitation calling for metalized pads or requiring that the first and second pluralities of

pads be arranged in a first and second "alternating pattern." The next 25 claims depended from

Original claim 1. The second independent claim in the application was Original claim 27, which

issued, unamended, as claim 26. In contrast to Original claim 1, that claim calls for metalized pads

arranged in alternating patterns (see above).

The Patent Examiner rejected all of the original claims, finding that claims 1-7 were obvious,

m der 35 U.S.C. § t 03(a), in light of U.S. Patent No. 5,959,442 ("Hallberg") and U,S. Patent No.

5,777,383 ("Stager"), The Examiner rejected the remaining claims, including Original claim 27, as

bvious "over Hallberg et al. ha combination with Stager et al. and further in combination with" U.S.

Patent No. 4,074,342 ("Honn"). Id. at PRIM 4207-4208. In response to the rejection, the

applicants amended Original claim I of the '264 patent to overcome the prior art by, inter alia,

adding the following limitation:

wherein the flip-chip type integrated circuit chip includes a p-type region and an n-type

region,.and the first power switch includes a plurality of p+ regions fabricated in the n-type

region in a first array, and a plurality of n+ regions fabricated in the p-type region m a second

array, and wherein alternating p+ regions are colmected to the input terminal and to an

intermediate terminal, and alternating n+ regions chip are connected to the intermediate

temainal and to ground,

/d. at PRIM 4212. They also canceled Original claims 5 and 45. 1d. The applicants argued flaat

with these changes, all the remaining claims should be allowed because the prior art dkt not "teach

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or suggest the various limitations relating to the layout of the doped regions and pads and their

com ections to the tetminals." td. at 4214.. The applicants continue, "For example, Hallberg, Stager

and Hom do not teach doped regions in an array with alternating regions of the an'ay co mected to

different terminals, an array of pads with two pluralities of pads arranged in ,an alternating pattern

and electricaily comaeeted to two doped regions, or two electrodes having interdigited fingers." M.

In response, the Examiner allowed the claims, providing the following "Reasons for

Allowance:"

Applicants['] invention claims that a voltage regulator with input and output terminals has a

printed circuit board[,] a substrate mounted on printed circuit born'd, a first flip-flop type

integrated circuit chip motmted on the substrate. T!ae first integrated circuit chips includes a

first power switch fabricated therein to alternately couple decouple the input terminal to the

output terminal. A filter disposed to provide a substantially DC voltage at the output

terminfl, and a control eirctit controls the power switch to maintain the DC voltage

substantially constant. Where in the flip chip type integrhted circuit chip includes a p-type

i'egion and an n-type region, mad a plurality ofp= [sic] regions fabricated in the n-type region

in a first array and a plurality ofn= [sic] regions fabricated in the p-type region in a second

array wherein alternating p= [sic] regions m'e connected to the input terminal, md alternating

n=[si¢] regions connected to intermediate terminal and to ground. None of the cited art

overcomes the limitation explained, since the claims are allowed.

ld. at 4217.

C. Analysis

The Court concludes that Defendants' proposed construction adds limitations to the claim

that are not supported by the language of the claim or the specification, In particular, neither the

claim nor the specification require flaat the doped regions mn'st be identical. Nor do they support

Defendants' assertion that one set of doped regions must be a drain region and the other a source

region of a MOSFET. Rather, the claim merely calls for an alternating pattern .of doped regions.

Plaintiffs have pointed to evidence showing that

. 

. 

This is sufficient evidence to establish direct

infringement,

Nor does the Court find persuasive Defendants' assertion that under the doctrine of

prosecution history estoppel, flae inventor's amendment to claim 1 of the '264 patent limits the

"alternating pattern" of doped regions called for in claim 26 of the '264 patent and claims 18 and 19

of the'522 piatento a device in which the alternating pattern meets the limitation of claim 1, that is,

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that the p+ regions must be fabricated in the n-t3,pe region and the n+ regiol s must be fabricated in

the p-type region. Defendants reb' heavily on Felix v. American Hot da Motor cO., Inc., 562 F.3 d

! 167, 1182-1183 (Fed. Cir. 2009), in which the Federal Circuit emphasized that "It]he presumption

of smTender applies to all claims containing the added limitation, regardless of whether the claim

was, or was not, amended during prosecution." ]d. Here, however, claim 26 not only was not

mnended but also does not contain the limitation of claim 1 requiring ttat the p+ regions must be

fabricated in the n-type region and the n+ regions must be fabricated in the p-type region. Rather,

claim 26 claims more broadly an "alternating pattern" of doped regions.

Further, the arguments of the applicants in obtaining allowance of the rejected claims do not

reflect an intent to disclaim an interpretation of claim 26 that would cover embodiments in which the

+ mid n+ regions are not bounded by the opposite type of doping. See. id. (noting that it is the intent

of the applicants, not the Examiner, that detelTnines whether an estoppel arises). Instead, the

applicants argued generally that the rejected claims should be allowed based on "the vm'ious

limitations relating to the layout of the doped regions," Given that claim 26 is an independent claim,

this statement suggests that tt e inventors intended to frame the limitations relating to layout of the

doped regions contained in the different claim with varying degrees of nm:rowness, thus preserving

the broader interpretation in claim 26 while frmning Claim 1 more narrowly. Therefore, the Com't

rejects Defendants' assertion that claim 26 does not encompass the accused devices,

The Corn1 concludes fllat Volterra is likely to succeed on the merits oll the question of

whether the accused device meets this claim lhnitation.

v. Conclusion

For the reasons stated above, the Court concludes that Volterra has shown a likelihood of

success as to infi'ingement of claim 34 of the '264 patent,

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b, Claims 18 :rod 19

i. Background

Volterra asserts that the undisputed evidence shows that Defendants' devices infringe claims

18 and 19 of the '522 patent, Claim 19 depends fi'om claim 18, which in turn depends from claims 9

and 17.. Claim 9 requires the following:

A voltage regulator having an input terminal and an output terminal, comprising:

a printed circuit board;

a first flip-chip type intega'ated circuit chip mounted on the printed circuit board, the first

integrated circuit chip including a first power switch fabricated therein to alternately couple

and decouple the input terminal to the output temlinal, wherein the power switch includes

a chip substrate having a first plurality of doped regions and a second plurality of doped

regions, the first plurality of doped regions and the second plurality of doped regions being

arranged in an alternating pattern, the first phu'ality of doped regions coupled to the input

terminal, the second plurality of doped regions coupled to the output terminal, and

a gate region on the chip substrate separating flae first plurality of doped regions and ll e

second plurality of doped regions;

a filter disposed to provide a substantially DC voltage at the output terminal; and

a control circuit connected to the gate region to control the power switch to maintain the DC

voltage substantially constmat.

Claim9, '522 patent.

Claim 17 states as follows:

The voltage regulator of claim 9, Mlerein the first power switch intermittently couples ml

intermediate terminal to the input terrninal,

Claim

• Claim

17,'522 patent.

Claim 18 states as follows:

The voltage regulator of claim 17, wherein the first flip-chip type integrated circuit chip has a

second power switch fabricated therein to alternately couple and decouple the intermediate

terminal to ground.

18, '522 patefit,

Claim 19 states as follows:

The voltage regulator of claim 18, wherein the filter is electrically coupled between the

output teiminal and the intermediate terminal.

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Claim 19, '522 patent.

Volterra's expert finds that the PX4650, "when used in the manner intended by Defendants..

., as Defendants themsetx, es must have previously used it..., and as their customers may have used

it in evaluating it for design-in in accordance with instructions provided by Defendants in their

Datasheet and customer presentations, infringes claims 18 and 19 of the '522 Patent. Fisher Motion

Decl., Ex, E (Szepesi Expert Report), 1173 & Ex. 5 (PX4650 Datasheet). In particular, Volterra

points to the following features ofthe accused devices (or intended applications of the accused

devices) to show that all of the claim limitations of claims 18 and 19, as well as the claims upon

which they depend (claims 9 and 17) are met:

• "Voltage regulator havin an input terminal and an cutout termina!" (Claim 9): Dr.

Szepesi points

. "a Printed circuit board" (Claim 9):Dr, Szepesi points to l

M., I[ 77 & Ex. 5 (PX4650 Datasheet) at 9.

'a first fhi -cMp type mtegrated elrcmt ch p mounted on the printed circuit board, the

fii'st integr'ated-circ-uit chip including a first power switch fabricated therein to

alternately couple and decouple the input terminal to the outlmt terminal" (Claim 9):

A cording to Dr, Szepesi, this limitation is. met bedause:

• :d., '111178-79.

"wherein t!le power switc!l includes a chip substrate having a first plurality of doped

regions and a'second plurality of doped regions, the first plurality of doped regions and

the second plurality of doped regions beiugarranged in an alternating pattern, the first

plurality of doped re,ions coupled to the input terminal, the second plurality of doped

regions coupled to the output terminal" (Cl- to Dr. Szepesi, these

hmitations are met for the following reasons:

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"a gate region on.the chip substrate separating the first plurality of doped re,ions and

the second plurality of doped regions" (Claim 9): Dr. Szepesi relies on

"a filter disposed to provide a substantially DC voltage at the output terminai"(Claim

9"k Dr. Szeoes points to

a control clremt connected to the gate region to control the power switch to maintain

the DC voltage substantially constant" (Claim 9): Dr. Szepesi points to

27

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"Tile voltage regulator of claim 9, wherein the first power switch

an intermediate terminal to the input terminal (Claim 17). Dr.

couples

oints ,

"The voltage regulator of claim 17, wherein the first flip-chip type integrated circuit

chip has a second power switch fabricated therein to alternately couple and decoul le

the intermediate terminal to round (Claim 18). Dr. Szeoesi points to

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"The voltage regulator of claim 18, wherein the filter is electrically coupled between the

output terminal and the intermediate terminal" (Claim 19). Dr. Szepesi points to

Iri their Opposition, Defendants assert that the accused products do not infringe claims 18 md

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19 of the '522 patent because they do not meet: !) the "mounted on" limitation founcl in Claim 9,

upon which claims 18 and 19 depend; 2) the limitations in claim 9 requiring "a substantially DC

voltage at the output terminal" and "to maintain the DC voltage substantially constant;" and 3) the

"alternating pattern" of doped regions limitation in claim 9, for the same reasons discussed above.

ii. "mounted on"

A, Aa'guments

Defendants argue that the limitation of claim 9 requiring "a first flip-chip type integrated

circuit chip mounted on the printed circuit board" is not met by the accused products because

Lefort SJ Opposition Decl. Ex.

1 (Baker Expert Report), 166,

In support of their construction of the claim term "mounted on," Defendants points to the

claims of the '264 patent, arguing ttat they describe two mounting options - a prefelTed embodiment

in which the chip'is mounted onto a substrate, which is then mounted onto the printed circuit board

(depicted in Figure 2) (hereinafter, "Option 1"), and an alternative embodiment in Milch the chip is

mounted directly on a printed circuit board (depicted in Figure 9) (hereinafter, "ONion 2"). Id. , ¶

126-137, According to Dr, Baker, the two mounting options can be seen in claims 18, 19, 21 and 22

of the 264 patent. Those claims provide as follows:

Claim 18: The voltage regulator of claim 17, wherein the inductor is mounted on the

substrate.

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Claim 19: The voltage regulatorof claim 17, wherein tim inductor is mounted o11 the printed

circuit board.

Claim 21: The voltage regulator or claim 20, wherein the capacitor is mounted on the

substrate.

Claim 22: The voltage regulator or claim 20, wherein the capacitor is mounted on the printed

circuit board.

Dr. Baker reasons that claims 18 and 21 correspond to Option 1, while claims 19 and 22 con'espond

to Option 2. Id., 129. He asserts that if the term "mountect on" encompassed both direct and

indirect mounting, claims 19 and 22 would be superfluous. !d., [ 130.

Dr. Baker also cites to the specificalion of the patents in support of his construction, noting

that the Abstract, as well as the majority of the specification, describes the preferred embodiment

depicted in Figure 2, in which the chip is mounted on a substrate and the substrate is then mounted

on the printed cirmit board, td., 1 131, According to Dr. Baker, when the applicants meant to refer

to lhe combinatiorr of the integrated circuit drip and the substrate, they referred to it as a "package."

ld., ! 133 (quoting '264 patent, 5: 47-50, stating in reference to Figure 2 tlat "fl e switching circuit

16 em be fabricated in a flip-chip package 40 that includes an integrated circuit chip 42 and a

substrate 44. The flip-chip package 40 is attached to a printed circuit board (PCB) 46... "). Dr.

Baker further notes that when the applicmts described mounting Option 2, used in the alternative

embodiment, they explained tllat the chip was to be mounted "directly on" the printed circuit board.

Id., 1 134. In particular, he points out that ONion 2 is depicted in Figures 8A-G, which are described

as follows: :

In another implementation, file integrated circuit chip 42" may be mounted directly on a

printed circuit board. As shown in FIGs. 8A-8G, the printed circuit board may have an input

voltage electrode '90, a ground electrode 92', and an intermediate voltage electrode 94'.

Id. (quoting '264 patent, 8:15-19) (emphasis added in Baker Expert Report). Elsewhere in the

specification, Figures 8A-8G are described as follows:

FIGS, 8A-8G are schematic plan views of several configurations for the drain and source

ads and fl e overlying electrodes to enable direct mounting of a flip chip to a printed circuit

card.

Id, (quoting '264 patent, 4: 43-46). Thus, based on the claims and specification of the two patents,

Dr, Baker concludes that one of ordinary skill in the art would have tmderstood that "claim 9 of the

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'522 patent claims this alternate embodimentdescribed and illustrated in the specification whereby

the flip chip type integrated circuit is directly placed and soldered onto the printed circuit born'd, ie.,

without any intervening packaging, such as a substrate)." ld., I[ 137.

Turning to the accused devices, Dr, Baker states that

Id; see also Declaration ofKermeth Ostrom in Support of

Defendmts' Opposition to Plaintifls Motion for Partial Summary Judgment of Infringement

("Ostrom SJ Opposition Decl."), . 20.

¢

Volterra argues that Defendants are attempting Io read into claim 9 a limitation that does not

exist in arguing that the reign "mounted on" requires a direct connection to the PCB, Fisher Reply

Decl., Ex. A (Szepesi Rebuttal Expert Repmt (Infringement)), I 81. Rather, its expert asserts, the

patents clearly envision two embodiments, one in which the chip is mounted to a substrate and one in

which it is mounted to the printed circuit board, and the words "mounted on" can cover either. Id.,

l[ 81-82. Voiterra argues that when the applicants described in the specification embodiments that

required that the chip be mounted 

"directly 

on the PCB, they were limiting what they were describing

to this type of embodiment, ld. They also point out that one of the original claims in the application,

Original claim 45, claimed a "first flip-chip type integrated circuit chip mounted directly on the

printed circuit board," indicating that they used this ptu'ase when they wanted to limit the term

"mounted on" to an embodhnent in wlfich the chip is mounted directly on the PCB. See Summary

Judgment Reply at 5 (citing Lefort SJ Opposition Decl., Ex. 4 ('264 prosecution history) at PRIM

4177). In addition, Volterra argues that Defendants' proposed construction should be rejected

because it excludes the preferred embodiment, which is rarely con-cot. Id., 1 83.

Volterra rejects the argument of Defendants' expert that claims 19 mad 22 would be

superfluous unless Defendants' construction is adopted. Id., [ 84-85. Rather, Volterra asserts,

claims 18 and 21 require that the chips be mortared to a substrate in order to mount them to printed

circuit boards whereas claims 19 and 22 do not require that a substrate be used. Id. In other words,

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Volterra asserts, the claims simply differ in scope. Id. Volten'a also asserts that Defendants have

implicitly conceded that the term "mounted on" does not require that the chip be "directly placed mad

soldered onto" by arguing that U.S. Patent No. 5,945,730 ("Sicard") meets the "mounted on"

limitation even though the flip-chip integrated circuit is not directly mounted on the PCB. Id., 86.

B. Analysis

The Court finds Volierra's position to be persuasive. In particular, neither the claims nor the

specification require that the term "mounted on" be construed to impose a requirement that the chip

be "directly placed and soldered onto" the PCB. Nor does the Court find that claims 19 and 22 are

superfluous without such a limitation. Rather, the claims simply have a broader scope than the

clahns that inmaediately precede them. Therefore, the fact that the accused devices are

does not place them outside flae

scope of claims 18 and t 9 of the"522 patent, Rather, the Court concludes that Volterra will likely

prevail on this question.

iii. "a substantially DC voltage at the output terminal" and "to

maintain the DC voltage substantially constant"

A. Arguments

Defendants argue that the accused devices do not meet the requirements of claim 9 calling for

"a filter disposed to provide a substantially DC voltage at the output terminal" and "a control circuit

comaected to the gate region to control flae power switch to maintain the DC voltage substantially

constant." In particular, Defendants' expert argues that a person of ordinat7 skill in the art would

have understood that this claim language referred to

Lefort SJ

13It is undisputed that the accused devices are not, themselves, voltage regulators but rather, are

used with other components that, together with the accused devices, make up the voltage regulator.

Therefore, to establish infringement, Plaintiff will be required to show flaat Defendants have tested the

accused devices in applications that meet all of the claim limitations. Alternatively, Plaintiff can

establish contributory infringement by showing that the accused devices were designed in order to be

used in applications that infi'inge and that Defendants' customers have, in fact, used the devices in an

infringing mariner.

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Opposition Decl., Ex. 1 (Baker Expert Report), ] 142. Dr. Baker notes that the distinction between

these two types of voltage regulators was highlighted in the dissertation of Volterra's founder, Dr.

Anthony Stratakos, in which Dr, Stratakos states as follows:

To dynamically trade performance for decreased energy consmnption at system run-time, a

new type of DC-DC converter, called a dynamic DC-DC converter or tracldng converter, is

required. A dynamic DC-DC converter is quite different from a conventional static DC-DC

converter. Whereas a static DC-DC converter must maintain a substantially DC output, a

dynamic DC-DC converter must be capable of rapidly slewing itsoutput.

]d., ¶ 146 (quoting Letbrt SJ Opposition Dect., Ex. 33 (High-Efficiency Lm -Voltage DC-DC

Conversion for Portable Applicatiom', Anthony Stratakos, University of California, Berkeley, Fall

1998) ("Stratakos Dissertation") at PRIM 1387).

In support of his opinion regarding infringement, Dr. Baker construes the ptu'ase "a

substantially DC voltage at the output tei:minal" in claim 9 as meafing'"a fixed and stable output

voltage." Id., 1141. He construes the phrase "to maintain the DC voltage substantially constant" as

meaning "to maintain a fixed and stable output voltage," !d. He cites to the specification in support

of his construction, pointing to instances in which the applicants referred to "a substantially DC

output voltage," or stated that the output voltage is "maintained at a substantially constant level."

ld., 144 (quoting '264 patent, 5:20-33 & 38-36). He also cites to extrinsic evidence. First, he

points to Dr. Szepesi's deposition testimony that a person of oMinary skill in the at-t would

understand flaat a substantially constant output voltage for a switching voltage regulator would stay

witlfin 5% of the (nominal) target output voltage. Id., ¶ 171 (citing Lefort SJ Opposition Decl., Ex.

37 at 234:10-20). Second, he cites the McGraw-Hill Electromc Dictionary, Fifth Edition (1994),

wlfich defines a voltage regulator as follows:

A circuit that includes a sensor capable of monitoring the load and restoring the output

voltage to close tolerance limits despite changes in both the load and input voltage. This

circuitry is now available in low-cost integrated circuits capable of holding DC output

voltage le tels of 3 to 30 V constant within +2%.

ld,, ¶ 145 (quoting Lefort SJ Opposition Decl,, Ex. 35 at PRIMC202).

Turning to the accused products, Dr. Baker notes that

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Expert Report), 169; see also SJ Opposition at 19 (citing Dynacore Holdings Corp. v. El,& Philips

Corp., 363 F.3d 1263 (Fed. Cir. 2004) for the proposition that where the accused products do not

necessm'ily h fi'hge, the patent holder must point to a specific instance of direct infringement and

restrict its suit to liability stemming from that specific instance). Dr, Baker argues that because the

evidence shows that

Dr. Baker relies on a declaration by Prhnarion's Vice President of Engineering, Keimeth

Ostrom, as the basis for his opinions regarding

See Declaration of Kenneth Ostrom in Support of Defendants' Opposition to PlaintifP s

Motion for Partial 8ummm3" Judgment of Infringement ("Ostrom SJ Opposition Deo!.").

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Volterra's expert rejects Dr. Baker's construction of thesephrases, asserting that there is no

basis for the requirement that the DC current be "fixed," either in the patent or in the extrinsic

evidence. Fisher Reply Decl., Ex. A (Szepesi Rebuttal Expert Report (Infringement)), 1 5.

According to Dr. Szepsi, it was well-known in the prior art that voltage regulators, including

switching voltage regulators; were divided into fixed and adjustable types, ld., ' 7. For example, die

MAX749, mmmfactured by Maxim Integrated Products, Inc., with a datasheet date of 1995, allowed

the output voltage of the regulator to be digitally adjusted in a wide range, providing a regulated

substantially constant outpm voltage, before and after their output voltage was changed by digita!

command. Id.; I 11 ?4 Given that such switching voltage regulators were known, Dr, Szepesi argues,

there would have been no reason to exclude this type of voltage regulator from the scope of the

Burstein patents. Id. Further, Dr. Szepesi argues, the intrinsic evidence does not suggest that the

appIicmts limited the scope of their invention in this way. Id. Therefore, he asserts, Defendants'

contention that claim 9 of the '522 patent requires a "fixed" output is incorrect. Id. 5. Dr. Szepesi

notes that although Defendemts' expert takes the position that the reference to a "voltage regulator"

in the preamble of claim 26 of the '264 patent is a claim limitation- a point on which the parties are

m agreement -Dr. Baker did not include the "voltage regulator" as one of the missing claim

limitations in connection with the alleged infringement of claim 34. Id., l 14-18.

4Defendants object to Dr. Szepesi's statemetats regarding the MAX749 on the basis that the

datasheet was not included as an exhibit to his report. Volterra produced the datasheet prior to the

hearing on the instant motions, however, and has attached it as an exhibit to its responses to Defendants'

objections. Therefore, the objection is overruled.

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(Infringement)), I[ 27. Defendants also cite to Dr. Baker's testimony, in his deposition, that

Fisher Reply Decl., Ex. B (Baker Depo.) at 42-43.

B. Analysis

The Court rejects Defendants' position that the phrases "substantially DC voltage at the '

output terminal" and "to maintain the DC voltage substantially constant" requires a "fixed" voltage

wherein the target ,oltage cannotbe changed. Neither the claims nor the specification suggest that

lSDefendants object to Dr. Szepesi's opinions relating to in

paragraphs 11,25-27, 29-30 and 34-35 of his' rebuttal report on iiffringement, asserting. ,, that the opinions

stated therein are "conclusory and unsupported by any facts, evidence, or analysis mad erefore fail to

satisfy the requirements of Rule 702 of the Federal Ru les of Evidence ' . Defendants further assert that

these opimons should be excluded under Rule 403 on the basis of prejudice. The objection is overruled.

The Cottrt finds flaathe opinions stated in these paragraphs are supported by specific facts. Nor have

Defendants established that Dr. Szepesi's opinions give rise to undue prejudice under Rule 403.

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the invention is limited to such a voltage regulator. Further, to flae extent that both of the types of

regulators described by Dr. Baker - the so-called "static" and "dynamic" regulators - were known by

those of ordinary skill in the art at the time of the invention, the Com;t concludes that these claim

terms would have been understood to encompass both, 6 Therefore, the Court finds unpersuasive

Defendants' assertion that

Therefore, the Court concludes that Volterra

is likely to prevail o11 the merits in showing that this limitation is met by the accused devices for the

purposes of showing both direct and contributory infringement.

iv. Conclusion

For the reasons stated above, the Court concludes that Volterra is likely to succeed on the

merits on file question of infringement of claims 18 and 19 oft he '522 Patent.

2. Invalidity

a. Whether the term "power switch" is indefinite

i. Arguments

Defendants argue that all of the asserted claims are invalid because the term "power switch"

is indefinite. In particular, according to Defendants' expert, the term is used in two inconsistent

ways in the patents. Lefort SJ Opposition Decl., Ex. 1 (Baker Expert Report), 46. ha particular, in

some places in the patents, the term "power switch" refers to a combination of both the high-side

switch and the low-side switch, whereas in other places the term refers to only a single switch, either

16At the September 30 hearing, Defendants raised - for the first time - an enablement defense

in response to Plaintiff's argument that claims 18 and 19 cover both static and dynamic voltage

regulators, asserting that the specification does not disclose how a dynamic embodnnent would work.

Given that Defendants failed to raise this defense in may of their briefs, they have waived this argument

for the purposes of the instant motions. In any event, the Court finds that Plaintiff's response at oral

argument is persuasive. In particular, ¥olterra responded that the specification shows how to connect

the switches to the control circuitry and to use the control circuitry to open and close the high and lowside switches, pointing to Figure 1 of the '264 patent as one example of this. Volterra also noted that

Dr. Szepesl testified in his deposition that one of ordinary skill in the art would understand how to use

this control circuitry to set or change the target voltage. Therefore, the Court finds that Volterra is likely

to prevail on this issue.

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the high-side switch or the low-side switch. M. As a result, Defendants assel, one of ordinary skill

in the art could not conclusively determine the meaning and scope of the asserted claims. Id, [ 52.

In support of his assertion that the term "power switch" is used inconsistently in the patent,

Dr. Baker points to what he asserts are inconsistent uses of the term in the claims. First, he argues

that "power switch" as used in claim l of the '264 Patent is internally inconsistent with dependent

claims 12 and 14. ld., 53. Claim I includes the following limitation:

wherein the flip-chip type integrated oh'cult chip includes a p-type region and an n-type

region, and the first power switch includes a plurality of p+ regions fabricated in the ntype region in a first array, and a plurality of n+ regions fabricated in the p-type region

in a second array, and wherein alternating p+ regions are connected to the input terminal

and to a.n intennediate terminal; and alternating n+ regions chip are comaected to the

intermediate terminal and to ground.

'264 patent, claim 1 (excerpt) (emphasis added). Dr. Baker takes the position that one of ordinary

skill in the art would understand that the "first power switch" includes both the "plurality of p+

regions fabricated in the n-type region in a first ma'ay" and the "plurality of n+ regions fabricated in

the p-type region in a second array" and therefore, that the term "power switch" means the

combination of the high-side switch and the low side switch, ld, 7 However dependent claim 12 is

Dr. Baker also points to claims 35 and 43 of the '264 patent as examples of claims in which

the term p'ower switch" means the combination of the high-side switch and the low-side switch, ld. ¶

47, Claim 35 states, in part, as follows:

A power switch for a voltage regulator having an input terminal and an output ternfinal,

comprising:

a PMOS switch fabricated on a chip with a first alternating pattern of source pads and drainpads;

an NMOS switch fabricated on the chip with a second alternating pattern of source pads and

drain pads;

'264 patent, claim 35 (excerpt). Claim 43 provides as follows:

A power switch for a voltage regulator, comprising:

a chip having an at'ray of pads formed thereon, each pad colmected to a plurality of doped regions

to create a distributed array of transistors; and

a substrate having a signal layer formed tlaereon, the signal layer having a first electrode and a

second electrode, the first electrode having a body and a plurality of fingers that extend from the

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