NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

OPTICURRENT, LLC,

Plaintiff-Appellee

v.

POWER INTEGRATIONS, INC.,

Defendant-Appellant

MOUSER ELECTRONICS,

Defendant

______________________ 

2021-1712

______________________ 

Appeal from the United States District Court for the 

Northern District of California in No. 3:17-cv-03597-EMC, 

Judge Edward M. Chen.

______________________ 

Decided: February 23, 2022

______________________ 

DAVE R. GUNTER, Friedman, Suder & Cooke, Fort 

Worth, TX, argued for plaintiff-appellee. Also represented 

by JONATHAN TAD SUDER; ROBERT GREENSPOON, Dunlap 

Bennett & Ludwig PLLC, Chicago, IL. 

 FRANK SCHERKENBACH, Fish & Richardson, PC, Boston, MA, argued for defendant-appellant. Also represented 

Case: 21-1712 Document: 57 Page: 1 Filed: 02/23/2022
2 OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 

by MICHAEL R. HEADLEY, HOWARD G. POLLACK, Redwood 

City, CA; JOHN WINSTON THORNBURGH, San Diego, CA. 

 ______________________ 

Before DYK, O’MALLEY, and HUGHES, Circuit Judges. 

Opinion for the court filed by Circuit Judge HUGHES. 

Opinion concurring-in-part and dissenting-in-part filed by 

Circuit Judge DYK. 

HUGHES, Circuit Judge. 

Opticurrent, LLC brought suit against Power Integrations, Inc., alleging infringement of claim 1 of U.S. Patent 

No. 6,958,623. Following a jury trial, the district court entered final judgment against Power Integrations. Power Integrations then challenged the patent’s validity, seeking

reexamination before the United States Patent and Trademark Office, and Opticurrent successfully overcame the 

challenge. Power Integrations contended that Opticurrent 

set forth arguments limiting the scope of its claimed matter

such that, under the claim’s narrower meaning disclosed 

during reexamination, Power Integrations’s accused products no longer infringe the ’623 patent. Premised on this 

contention, Power Integrations moved for relief from judgment pursuant to Federal Rule of Civil Procedure 60(b)(2), 

(3), (5), and (6). But the district court disagreed with Power 

Integrations’s characterization of Opticurrent’s reexamination arguments and instead found the validity arguments Opticurrent made during reexamination consistent 

with its infringement arguments presented at trial. The 

district court denied the motion. 

Taking issue with the district court’s interpretation of 

Opticurrent’s reexamination arguments, Power Integrations appeals the district court’s Rule 60(b) denial. We affirm. 

Case: 21-1712 Document: 57 Page: 2 Filed: 02/23/2022
OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 3

I 

A 

Opticurrent is the owner of the ’623 patent, which 

teaches: 

[a] noninverting transistor switch having only 

three terminals, said terminals being a first terminal, a second terminal and a third terminal, said 

noninverting transistor switch comprising:

(a) a transistor connected to the second and 

third terminals, said transistor having an 

on switching state in which current is able 

[to] pass between the second and third terminals and an off switching state in which 

current is interrupted from passing between the second and third terminals,

(b) a voltage stabilizer connected to the second and third terminals, and

(c) a complementary metal oxide semiconductor (CMOS) inverter connected to the 

first terminal, the second terminal, said 

transistor and said voltage stabilizer, said 

CMOS inverter interrupting the passing of 

current between said voltage stabilizer and 

the second terminal when said transistor is 

in its off switching state.

’623 patent, 14:52–15:2. 

The ’623 switch claims an improvement over the three 

terminal noninverting transistor switch taught by U.S. Patent No. 5,134,323 (the ’323 switch). See ’623 patent, 

2:13–20, 7:45–58. The ’323 switch is one type of transistor 

switch “well-known [in the art] and widely used in commerce.” Id. 4:13–18, 4:62–63. This switch is itself an improvement over a four terminal transistor, which is not 

“capable of deriving its operating power from its own 

Case: 21-1712 Document: 57 Page: 3 Filed: 02/23/2022
4 OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 

output terminal” like the ’323 switch and must instead 

source its operating power from “an additional terminal 

connected to [a] power supply.” Appx420–21; see also 

’323 patent, 2:16–29. Although the ’323 switch is a notable 

improvement over a four terminal transistor, Opticurrent 

discovered that the ’323 switch “experiences a considerable 

amount of [undesirable] current leakage” between its third

(drain) terminal and its second (ground) terminal (collectively, the output terminals) when a high voltage is applied 

to the switch. ’623 patent, 4:67–5:10, 5:29–36. To solve this 

problem, Opticurrent replaced the ’323 switch’s bipolar 

junction transistor with a CMOS inverter. Opticurrent implemented the CMOS inverter in an unconventional manner, attaching the PMOS transistor, or “the ‘top’ half of a 

CMOS inverter,” Appx427, to the switch’s depletion mode 

transistor as opposed to a “positive voltage supply.” 

’623 patent, 6:1–17, 6:26–29, 14:64–15:2; see also 

Appx420–21. Opticurrent also shifted down the connection 

to the gate of the output transistor from the depletion mode 

transistor to the PMOS transistor. ’623 patent, 5:59–61, 

6:1–17, 6:26–29, 6:46–50. 

These novel circuit alterations turned the depletion 

mode transistor into “a low input current voltage stabilizer” that “is dedicated primarily to supply[ing] the voltage 

. . . passed from” the third terminal to the CMOS inverter. 

Id. 6:37–42. And this resulted in “a significantly lower 

amount of current leakage between” the two output terminals. Id. 7:38–58. 

B 

On April 1, 2016, Opticurrent filed suit against Power 

Integrations, alleging infringement of claim 1 of the 

’623 patent. The parties primarily disputed whether the accused products qualify as three terminal switches, with the 

trial “focused in large part on whether [Power Integrations’s] accused product[s] [were] in fact connected to a 

‘power supply.’” Appx2; see also Appellant’s Br. 26 

Case: 21-1712 Document: 57 Page: 4 Filed: 02/23/2022
OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 5

(admitting the same). Power Integrations asserted that

there was no infringement because “its accused products 

cannot be used unless the fourth pin is attached to an external capacitor that is necessary to supply power to the 

chip.” Appx92. In other words, Power Integrations claimed 

that the external bypass capacitor attached to the switch’s 

internal supply voltage node is a power supply connected 

to a fourth terminal, with the power supply being necessary for the operation of the accused products. 

Opticurrent countered that the capacitor neither connects to a fourth terminal nor supplies power to the circuit. 

Rather, it asserted that the capacitor simply helps regulate 

the stabilized voltage. Opticurrent’s technical expert, Dr. 

Regan Zane, testified that the bypass capacitor is “connected at the output of the voltage stabilizer, and only to 

the voltage stabilizer,” “[w]hich is an internal node.” 

Appx1052–53. Having only a connection “to the output of 

the voltage stabilizer,” Dr. Zane opined that the capacitor

simply “help[s] stabilize that voltage, the output of the regulation.” Appx1053. And utilizing Power Integrations’s

schematics and data sheets with illustrations of the accused products, Dr. Zane conveyed how the accused products derive their power from the third terminal (drain pin)

through the voltage stabilizer and supply this power (voltage) to the CMOS inverter. See Appx780–81, 1046–64.

After a four-day trial, the jury rendered its verdict finding that the accused products infringed, both literally and 

under the doctrine of equivalents, apparently agreeing 

with Opticurrent’s infringement arguments. The district 

court entered final judgment consistent with the jury’s verdict, ordering Power Integrations to pay $1.2 million in 

damages for direct infringement occurring through 

March 31, 2018 and “an ongoing royalty of 3.5% of revenues for ongoing sales made by [Power Integrations] directly into the United States of the infringing products.” 

Appx11–12.

Case: 21-1712 Document: 57 Page: 5 Filed: 02/23/2022
6 OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 

C 

Two months after trial, Power Integrations requested 

ex parte reexamination of the ’623 patent, contending that 

claim 1 was rendered obvious by the ’323 patent in combination with U.S. Patent No. 5,304,867 (Morris) or U.S. Patent No. 4,471,242 (Noufer). Its request was granted and 

led the PTO to issue an office action on November 1, 2019, 

finding the challenged claim obvious in view of the same. 

The Examiner determined that the ’323 switch includes a 

voltage stabilizer since (1) the ’323 switch contains a depletion mode transistor; (2) its depletion mode transistor is interchangeable with the depletion mode transistor in the 

’623 switch; (3) the depletion mode transistor in the 

’623 switch acts as a voltage stabilizer; and thus (4) the depletion mode transistor in the ’323 switch must also be able 

to perform as a voltage stabilizer. Appx326–27. The Examiner accordingly found that the ’323 patent discloses every 

limitation of the ’623 patent’s challenged claim, except the 

CMOS inverter. But the Examiner concluded that it would 

have been obvious to one of ordinary skill in the art to substitute the single transistor used in the ’323 switch with a 

CMOS inverter because the inverters are functionally 

equivalent and it would have been obvious to a POSA to 

substitute “one well known inverter for another.” Appx327.

In response, Opticurrent challenged the Examiner’s 

determination that the ’323 patent discloses a voltage stabilizer. Opticurrent explained that the Examiner’s determination was erroneously premised on “the similarity of a 

component”—the depletion mode transistor—“without regard to how that component changes behavior” when connected to switches having different circuit configurations. 

Appx383. Opticurrent also challenged the Examiner’s obviousness determination. It asserted that a POSA would 

not have been motivated to combine a CMOS inverter with 

the ’323 switch because the voltage derived at the source 

node of the ’323 switch’s depletion mode transistor “toggles 

between 0.2 V and 0.7 V,” which “is nowhere near within 

Case: 21-1712 Document: 57 Page: 6 Filed: 02/23/2022
OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 7

the acceptable range or behavior of a power supply voltage 

VDD for traditional use of a CMOS inverter at that node.” 

Appx425–26 (explaining that “the CMOS inverter will not 

operate properly with a power supply voltage VDD below 

+3.0 V”); see also Appx391 (“[T]he existing configuration of 

[the ’323 switch] had nowhere to place a CMOS inverter, 

based on perceptions of persons of skill in the art.”). 

Opticurrent explained that “[i]t was the inventor’s contribution (with the ’623 [p]atent) to recognize that changing several things about the [’323 switch]”—i.e., (1) adding 

PMOS transistor 121, which formed new node 141 “that is 

essential in forming the voltage stabilizer and eliminating 

current leakage”; and (2) “moving down the junction that 

drives the power transistor so that it is no longer coming 

from the source of a depletion mode [transistor]”—“could 

allow inclusion of [a] CMOS” inverter. Appx392. And by 

virtue of these circuit alterations, the depletion mode transistor changes its function radically from acting as a current source to operating as a voltage stabilizer. Appx384, 

437; see also Appx392 (“Whereas the depletion mode element of the ’323 [p]atent acts as a current source, the depletion mode element of the ’623 [p]atent acts as a voltage 

stabilizer. This happened because using a CMOS as configured and claimed, instead of a bipolar junction transistor, 

changed the behavior of the previous circuit components.”). 

Thus, it is the “combined impact on the operation of the 

circuit”—following from the CMOS inverter’s creation of 

and connection to a voltage stabilizer—that “represents a 

significant innovative step over prior three terminal designs.” Appx428. According to Opticurrent, this innovative 

step is conveyed through claim 1’s limitations, which “recite[] that the CMOS [inverter] is connected to four things” 

including the voltage stabilizer, but “none of which is the 

power rail (the conventional way).” Appx390.

The Examiner found Opticurrent’s arguments persuasive and issued its decision confirming the patentability of 

the challenged claim on February 12, 2020. 

Case: 21-1712 Document: 57 Page: 7 Filed: 02/23/2022
8 OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 

D 

On June 25, 2020, Power Integrations moved to set 

aside the district court’s final judgment pursuant to 

Rule 60(b). Power Integrations asserted that Opticurrent 

failed to disclose its understanding of its claim scope, i.e., 

the meaning of “unconventional” use of CMOS, during litigation “and in fact relied upon the opposite to obtain an infringement verdict.” Appx144, 148. Power Integrations

claimed that “the CMOS inverter is ‘conventionally’ attached to the power rail VDD” in the accused products, “just 

like the prior art that Opticurrent distinguished during 

reexam.” Appx144. This, according to Power Integrations, 

represents newly discovered evidence and entitles it to relief under Rule 60(b)(2). Power Integrations characterized 

Opticurrent’s disclosure as “nothing short of fraudulent,” 

and claimed that its requested relief could therefore also be 

granted under Rule 60(b)(3). Appx155. Power Integrations

further asserted that it was entitled to relief under 

Rule 60(b)(5) because “requiring the ongoing payment of 

royalties is no longer equitable given how Opticurrent has 

undermined the very basis for the infringement verdict 

that it obtained.” Appx155. Lastly, Power Integrations

claimed “extraordinary circumstances” exist that warrant 

Power Integrations’s relief from judgment under 

Rule 60(b)(6). Appx156.

The district court disagreed with Power Integrations, 

finding that Opticurrent’s representations at trial and during reexamination were consistent. The court pointed out

that Opticurrent’s representations “must be read in context.” Appx5. Doing so, the court determined that “Opticurrent ha[d] consistently argued that the ’623 patent was 

inventive because it was a three-terminal switch that did 

not require the CMOS inverter to be powered by a direct 

connection to a positive supply voltage such as that provided by an external power supply.” Appx5–6. 

Case: 21-1712 Document: 57 Page: 8 Filed: 02/23/2022
OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 9

The district court described the “core of Opticurrent’s 

argument” during reexamination to be “that the design of 

the ’623 [switch] changed the function and operation of the 

’323 [switch]”—first, by converting the depletion mode 

transistor from a current source to a voltage stabilizer and, 

second, by explaining that a POSA would not have been 

motivated to combine a CMOS inverter and the ’323 switch 

since the switch’s power supply voltage is insufficient to 

power a CMOS inverter. Appx7–8. That is, “[t]he absence 

of a connection to a positive voltage supply ha[d] been central to Opticurrent’s position both at trial and before the 

PTO.” Appx6. Because the district court found Opticurrent’s statements consistent at trial and during reexamination, it denied Power Integrations’s Rule 60(b) motion. 

Power Integrations timely appealed. We have jurisdiction under 28 U.S.C. § 1292(a)(1) and (c)(1). 

II

Power Integrations appeals the district court’s decision 

denying its Rule 60(b) motion. We generally “defer to the 

law of the regional circuit” in which the district court sits, 

here the Ninth Circuit, because that rule is procedural in 

nature and “unrelated to patent law issues.” Fiskars, Inc. 

v. Hunt Mfg. Co., 279 F.3d 1378, 1381 (Fed. Cir. 2002). The 

Ninth Circuit reviews a district court’s Rule 60(b) ruling for 

abuse of discretion, Casey v. Albertson’s Inc., 362 F.3d 

1254, 1257 (9th Cir. 2004), which occurs when its decision 

rests on an error of law or its “application of the law to the 

facts was ‘illogical, implausible, or without support in inferences that may be drawn from the facts in the record,’” 

Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d 1316, 1321 

(Fed. Cir. 2016) (citation omitted). 

Power Integrations challenges the district court’s 

Rule 60(b) denial, contending that the court’s “dispositive 

error” was its interpretation of Opticurrent’s arguments

made to overcome a rejection during reexamination. Appellant’s Br. 23, 26. According to Power Integrations, 

Case: 21-1712 Document: 57 Page: 9 Filed: 02/23/2022
10 OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 

“Opticurrent obtained its infringement verdict by offering 

evidence that [Power Integrations’s] accused CMOS inverter is connected to a Vdd power rail,” but it then preserved the validity of the asserted claim on reexamination 

by disclaiming the very same connection. Id. at 23. Thus, 

in Power Integrations’s view, Opticurrent advocated a narrow claim scope during reexamination that is directly at 

odds with what it represented to the jury and district court

at trial in order to secure judgment in its favor. As a result, 

Power Integrations asserts, these inconsistent arguments 

entitle it to relief under Rule 60(b). Power Integrations also 

asserts that Opticurrent’s “clear disclaimer necessitates

new claim construction,” thereby providing a second basis 

that “separately[] justifies relief” under Rule 60(b). Appellant’s Reply Br. 2. Power Integrations accordingly claims 

entitlement to Rule 60(b) relief “on multiple grounds—

newly discovered evidence, misrepresentation or misconduct, changed circumstances affecting prospective relief, 

and extraordinary circumstances.” Appellant’s Br. 23.

A 

The doctrine of prosecution disclaimer precludes a patentee “from recapturing through claim interpretation specific meanings disclaimed during prosecution,” Omega 

Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 

2003), including “statements made in reexamination proceedings,” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 

1353, 1360 (Fed. Cir. 2017). To invoke the doctrine, the patentee’s disavowal of claim scope must “be both clear and 

unmistakable.” Omega Eng’g, 334 F.3d at 1326. “An ambiguous disclaimer” will not “limit a claim term’s ordinary 

meaning.” SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 

1278, 1287 (Fed. Cir. 2005). That is, if a reexamination “argument is subject to more than one reasonable interpretation, one of which is consistent with a proffered meaning of 

the disputed term,” then there is no “clear and unmistakable” disclaimer. Id. Thus, only “[w]hen the patentee makes 

clear and unmistakable prosecution arguments limiting 

Case: 21-1712 Document: 57 Page: 10 Filed: 02/23/2022
OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 11

the meaning of a claim term in order to overcome a rejection” will “the courts limit the relevant claim term to exclude the disclaimed matter.” 01 Communique Lab’y, Inc. 

v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 2012) (citation omitted). 

Here, Power Integrations asserts that “Opticurrent 

told the Examiner that the claimed invention requires ‘unconventional use’ of its ‘CMOS inverter,’ such that the 

CMOS inverter is not connected to ‘the power rail.’” Appellant’s Br. 6 (quoting Appx390–91). Power Integrations contends that this representation served as a disclaimer to 

overcome the Examiner’s rejection. Power Integrations further argues that “what Opticurrent disclaimed . . . was not 

a fourth terminal connected externally to a power supply, 

but a CMOS inverter connected to a Vdd power rail,” where 

a “Vdd power rail” is “an internal circuit structure that provides a known, reference voltage level for use by all the internal elements of the chip, including the CMOS 

[inverter].” Id. at 22, 28. Said differently, Power Integrations claims that Opticurrent disclaimed a CMOS inverter 

connected to an internal component that provides a constant voltage throughout the circuit. Power Integrations’s 

articulation of this “conventional” use of a CMOS inverter, 

however, strips Opticurrent’s statements from their context, providing an incomplete and ultimately inaccurate 

characterization of this disclaimed, “conventional” way. 

Power Integrations hangs its hat on Opticurrent’s assertion that “[n]o power rail connection exists.” Id. at 38 

(quoting Appx391). Ignoring the surrounding arguments 

Opticurrent made on reexamination, Power Integrations

would have us define “Vdd” as “an internal circuit structure 

that provides a known, reference voltage level for use by all 

the internal elements of the chip, including the CMOS [inverter].” Id. at 22. But adopting Power Integrations’s proposed definition would undermine the significance that 

Opticurrent attributed to the voltage stabilizer as the particular internal circuit structure that maintains a high 

Case: 21-1712 Document: 57 Page: 11 Filed: 02/23/2022
12 OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 

enough voltage to power a CMOS inverter, even in a three

terminal switch. Appx383–86, 391–92; see ’623 patent, 

6:38–42. We accordingly reject Power Integrations’s contention that the “conventional” CMOS connection disclaimed by Opticurrent is “a CMOS inverter internally 

connected to a Vdd power rail.” Appellant’s Br. 23. 

Rather, context makes clear that this disclaimed, “conventional” way refers to a CMOS inverter that is connected 

to an external power supply via a fourth terminal. The unconventional use of a CMOS inverter disclosed in the 

’623 patent is the novel configuration in which a three terminal switch can now derive enough voltage from its own 

output terminal to provide the necessary operating power 

for the switch to use a CMOS inverter, instead of a bipolar 

junction transistor. Appx391–92; see also Appx411 (“That 

nontraditional and unconventional use has the CMOS inverter connected in a specific way in a three terminal 

switch as required by Claim 1, but not connected to a power 

supply (VDD) via a fourth terminal (referred to in the [specification] as ‘positive supply voltage (+V)’).” (referring to 

’623 patent, 6:1–17)); Appx414 (“The CMOS inverter does 

not require a fourth terminal connected to VDD, as was the 

traditional use of a CMOS inverter.”)

Power Integrations contends that Opticurrent’s disclaimer “does not relate to whether the chip has a fourth 

terminal connected to a power supply.” Appellant’s Br. 29. 

But we cannot divorce the three-versus-four terminal argument from Opticurrent’s statements about the source of 

the CMOS inverter’s operating power. Power Integrations’s strained interpretation of Opticurrent’s reexamination arguments ignores Opticurrent’s unequivocal 

description of the circuit’s novel configuration that allows

for successful operation of a CMOS inverter connected to a 

three terminal switch. Appx384–86, 391–93. Under a 

proper construction, we conclude that Opticurrent disclaimed a CMOS inverter connected to an external power 

supply. 

Case: 21-1712 Document: 57 Page: 12 Filed: 02/23/2022
OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 13

B 

Power Integrations also argues that “Opticurrent obtained its infringement verdict by offering evidence that 

[Power Integrations’s] accused CMOS inverter is connected 

to a Vdd power rail,” Appellant’s Br. 23, while preserving 

the validity of the asserted claim on reexamination by disclaiming the very same connection. Pointing to the “vdd!” 

label Power Integrations uses to designate the internal 

supply voltage node in its own schematics, it contends that 

this “vdd!” node is equivalent to the “Vdd power rail” discussed during reexamination. Once again, however, Power 

Integrations improperly strips Opticurrent’s statements 

from their context and overlooks the fact that Power Integrations’s “vdd!” label refers to the same node that Opticurrent describes as a voltage stabilizer. The trial record 

makes clear that “vdd!” refers to “the internally-generated 

power supply derived from the third drain terminal.” 

Appx781. 

Moreover, Power Integrations’s own data sheets establish that the accused products obtain power from the voltage stabilizer, which “charges the bypass capacitor . . . by 

drawing a current from the voltage on the DRAIN [or third 

terminal], whenever the [depletion mode transistor] is off.” 

Appx1006.1 The data sheets identify the bypass pin as “the 

internal supply voltage node,” with the bypass capacitor 

acting as storage for the energy that powers the device 

when MOSFET is on. Appx1006. And Power Integrations

further touts that the accused product can “operate continuously from the current drawn from the [drain] pin.” 

1 See also Appx1005 (explaining that the drain “pin 

is the power MOSFET drain connection,” which “provides 

internal operating current for both start-up and steadystate operation”; explaining that the bypass pin “is the connection point for an external bypass capacitor for the internally generated 6 V supply”).

Case: 21-1712 Document: 57 Page: 13 Filed: 02/23/2022
14 OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 

Appx1006. This is consistent with Opticurrent’s reexamination arguments since both describe a CMOS inverter

connected to an internal node that supplies voltage sufficient to power the switch (through the inverter), the voltage being derived from the third terminal (or drain pin)

and passed through the voltage stabilizer. 

C 

Power Integrations asserts that “the sole basis of the 

district court’s denial was its erroneous interpretation of 

the reexamination record, leading to the incorrect finding 

that there was no inconsistency.” Appellant’s Br. 31. According to Power Integrations, “[o]nce this error is resolved,” it becomes evident that Opticurrent’s arguments 

at trial and during reexamination are contradictory and 

that Opticurrent “conceal[ed] its view of the true claim 

scope from both the jury and [Power Integrations].” Id. 

at 23. Power Integrations contends that relief under 

Rule 60(b) is therefore “warranted on multiple grounds—

newly discovered evidence, misrepresentation or misconduct, changed circumstances affecting prospective relief, 

and extraordinary circumstances.” Id. 

Under Rule 60(b), the court has discretion to “relieve a 

party . . . from a final judgment, order, or proceeding for 

the following reasons”:

. . . 

(2) newly discovered evidence that, with reasonable diligence, could not have been discovered in 

time to move for a new trial under Rule 59(b);

(3) fraud (whether previously call intrinsic or extrinsic), misrepresentation, or misconduct by an 

opposing party;

. . . 

(5) the judgment has been satisfied, released, or 

discharged; it is based on an earlier judgment that 

Case: 21-1712 Document: 57 Page: 14 Filed: 02/23/2022
OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 15

has been reversed or vacated; or applying it prospectively is no longer equitable; or 

(6) any other reason that justifies relief.” 

Fed. R. Civ. P. 60(b). Because we interpret Opticurrent’s 

reexamination arguments substantially the same way that 

the district court did, we conclude that the district court 

did not abuse its discretion in denying Power Integrations’s 

request for Rule 60(b) relief.

First, because Opticurrent’s disclaimer is already established by the claim language as it was construed at trial, 

the disclaimer does not constitute “new evidence.” See 

Appx981–86 (construing “a noninverting transistor switch 

having only three terminals” to mean “a noninverting transistor switch with three terminals that does not have a 

fourth terminal,” i.e., “an external connection point,” that 

is “connected to a power supply”). Therefore, Power Integrations cannot demonstrate entitlement to relief under 

Rule 60(b)(2).

Second, because Opticurrent’s reexamination arguments are consistent with the record evidence and infringement arguments it presented at trial, Power Integrations

cannot meet its burden under Rule 60(b)(3). See Casey, 362 

F.3d at 1260 (“To prevail, the moving party must prove by 

clear and convincing evidence that the verdict was obtained through fraud, misrepresentation, or other misconduct and the conduct complained of prevented the losing 

party from fully and fairly presenting the defense.” (citation omitted)).

Third, we find no abuse of discretion in the district 

court’s denial under Rule 60(b)(5). The Ninth Circuit requires the moving party, when seeking relief under 

Rule 60(b)(5), to show “that there has been a significant 

change in factual conditions such that it is no longer equitable that the judgment have prospective application.” 

F.T.C. v. Enforma Nat. Prods., Inc., 31 F. App’x 349, 349–

Case: 21-1712 Document: 57 Page: 15 Filed: 02/23/2022
16 OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 

50 (9th Cir. 2002) (citing Rufo v. Inmates of Suffolk Cnty. 

Jail, 502 U.S. 367, 383–84 (1992)). Here, we see none. At 

most, Opticurrent expressly disclaimed during reexamination what it implicitly disclaimed in the specification of the 

’623 patent. That change alone, however, is not significant 

and has no impact on the infringing nature of Power Integrations’s accused products. Because Power Integrations

has not shown “that there has been a significant change in 

factual conditions such that it is no longer equitable that 

the judgment have prospective application,” it cannot meet 

its burden of establishing that changed circumstances warrant relief. Id. 

Finally, while “Rule 60(b)(6) does allow the district 

court to vacate its judgment based on ‘any other reason justifying relief from the operation of the judgment,’” Lyon v. 

Agusta S.P.A., 252 F.3d 1078, 1088 (9th Cir. 2001), Power 

Integrations only claims entitlement to relief under 

clause (6) because “[t]elling the Patent Office that the asserted claim excludes exactly what Opticurrent accused of 

infringement is outrageous,” Appellant’s Br. 36 (emphasis 

omitted). “The fatal flaw in [Power Integrations’s] argument centers on the phrase ‘any other reason.’ The reason 

[Power Integrations] state[s] is not another reason at all,” 

but is instead already contained in Rule 60(b)(2) or 

Rule 60(b)(3). Lyon, 252 F.3d at 1088. “The long-standing 

rule . . . is that ‘clause (6) and the preceding clauses are 

mutually exclusive; a motion brought under clause (6) 

must be for some reason other than the five reasons preceding it under the rule.’” Id. at 1088–89 (citation omitted). 

And describing Opticurrent’s “fraudulent infringement 

theory” as “outrageous” does not suffice. The district court 

did not abuse its discretion.

III

Power Integrations has not established a cognizable 

basis to justify relief from judgment. We accordingly 

Case: 21-1712 Document: 57 Page: 16 Filed: 02/23/2022
OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 17

conclude that the district court did not abuse its discretion 

in denying the Rule 60(b) motion. 

AFFIRMED

COSTS

No costs. 

Case: 21-1712 Document: 57 Page: 17 Filed: 02/23/2022
NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

OPTICURRENT, LLC,

Plaintiff-Appellee

v.

POWER INTEGRATIONS, INC.,

Defendant-Appellant

MOUSER ELECTRONICS,

Defendant

______________________ 

2021-1712

______________________ 

Appeal from the United States District Court for the 

Northern District of California in No. 3:17-cv-03597-EMC, 

Judge Edward M. Chen.

______________________ 

DYK, Circuit Judge, concurring-in-part and dissenting-inpart.

While I agree that there is no basis for reopening the 

judgment as to past infringement through the mechanism 

of a Rule 60(b) motion, I respectfully disagree with the majority’s holding as to prosecution disclaimer and ongoing 

royalties. In my view, Opticurrent made a “clear and unmistakable” disclaimer of patent scope. Omega Eng’g, Inc. 

v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir. 2003). The 

Case: 21-1712 Document: 57 Page: 18 Filed: 02/23/2022
2 OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 

ongoing royalties award to Opticurrent cannot be sustained since it is based on disclaimed claim scope. 

I 

Here, after the district court found infringement of 

claim 1, which requires “a complementary metal oxide semiconductor (CMOS) inverter connected to the first terminal, 

the second terminal, said transistor and said voltage stabilizer,” Power Integrations (“PI”) requested ex parte reexamination with the PTO. The PTO granted PI’s request and 

adopted two grounds in initially rejecting claim 1 of the 

’623 patent: U.S. Pat. 5,134,323 to Congdon (“the ’323 patent”) in view of U.S. Pat. 5,304,867 to Morris (“Morris”) 

and the ’323 patent in view of U.S. Pat. 4,471,242 to Noufer 

(“Noufer”). Both the ’323 patent and the ’623 patent cover 

three-terminal switches without a fourth terminal coupled 

to an external power supply.

During reexamination and seeking to overcome the rejection, Opticurrent disclaimed the connection from a 

CMOS inverter either to any power rail (a broad disclaimer) or only to a power rail “connected to an external 

power supply via a fourth terminal” (a narrow disclaimer). 

Maj. Op. 12. I think the reexamination prosecution history 

shows that the former is correct. The specification of the 

’623 patent is clear that the invention does not include a 

connection to a power rail.

To overcome the rejections in reexamination, Opticurrent argued,

This unconventional use of CMOS exists as claim 

limitations. Claim 1 recites that the CMOS is connected to four things, none of which is the power 

rail (the conventional way). . . . No power rail connection exists. Hence, the claims positively recite 

this unconventional use of CMOS technology.

Undisputed evidence shows that the claimed connection was indeed an unconventional CMOS 

Case: 21-1712 Document: 57 Page: 19 Filed: 02/23/2022
OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 3

connection. Dr. Zane confirms this is so. The [cited 

prior art] corroborates the inventor’s description of 

the traditional and conventional way of connecting 

a CMOS, since it shows connection of the source 

terminal to the power rail, VDD. Dr. Zane provides 

numerous additional contemporaneous examples 

corroborating the traditional connection, which 

again, is to the power rail VDD or its equivalent. 

Even the cited Noufer and Morris references 

merely show a variant on this traditional and conventional way—a connection derived from VDD. 

Nothing in the record shows that a person of ordinary skill was even aware that a CMOS inverter (a 

digital circuit) could be connected in the manner 

eventually claimed in claim 1[, i.e., with connections that did not involve a power rail]. 

Beyond the ’623 Patent’s inventive contribution of 

connecting a CMOS inverter in an unconventional 

and nontraditional way, the existing configuration 

of Congdon ’323 had nowhere to place a CMOS inverter, based on perceptions of persons of skill in 

the art.

J.A. 390–91 (citations omitted) (emphases added). 

The majority concludes the disclaimer only excludes a 

CMOS inverter “connected to an external power supply via 

a fourth terminal.” Maj. Op. 12. But on its face, Opticurrent’s argument disclaimed a CMOS inverter connected to 

any power rail. To be sure, the prior art in question discloses an “external power supply” connected to a fourth terminal. But the language in the disclaimer is broader, and 

we have held that the “fact that the [patent] applicant may 

have given up more than was necessary does not render 

the disclaimer ambiguous” because the focus is “on what 

the applicant said, not on whether the representation was 

necessary[.]” Uship Intell. Props., LLC v. United States, 

714 F.3d 1311, 1315 (Fed. Cir. 2013). Thus, I conclude that 

Case: 21-1712 Document: 57 Page: 20 Filed: 02/23/2022
4 OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 

Opticurrent disclaimed any power rail connection, and 

thereby materially altered the scope of the claim.

II

Despite my view as to the scope of the disclaimer, I 

would not disturb the final judgment of damages for past 

infringement. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 

721 F.3d 1330, 1340 (Fed. Cir. 2013) (“[C]ancellation of a 

patent’s claims cannot be used to reopen a final damages 

judgment.”); see also WesternGeco L.L.C. v. ION Geophysical Corp., 913 F.3d 1067, 1071 (Fed. Cir. 2019) (“Fresenius only applies where a judgment is not final. . . . [I]t does 

not allow reopening of a satisfied and unappealable final 

judgment.” (citations omitted)); Moffitt v. Garr, 66 U.S. 

273, 283 (1861) (noting money damages cannot be recovered back when a patent is surrendered because title to the 

damages depends on the judgment of the court rather than 

the patent). 

I reach a different conclusion as to ongoing royalties. 

As to ongoing royalties, there are several established principles that govern here:

First, ongoing royalty orders are, for all practical purposes, similar to injunctions—both are prospective, equitable remedies. See 35 U.S.C. § 283; Edwards Lifesciences 

AG v. CoreValve, Inc., 699 F.3d 1305, 1315 (Fed. Cir. 2012); 

i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 862 (Fed. 

Cir. 2010), aff’d, 564 U.S. 91 (2011); Paice LLC v. Toyota 

Motor Corp., 504 F.3d 1293, 1313–14 nn.13–14 (Fed. Cir. 

2007).

Second, an injunction, and hence an ongoing royalty order, cannot continue if the “legal basis” for the injunction 

ceases to exist. ePlus, Inc. v. Lawson Software, Inc., 789 

F.3d 1349, 1355–56 (Fed. Cir. 2015); see also Pennsylvania 

v. Wheeling & Belmont Bridge Co., 59 U.S. 421, 422 (1855)

(holding that an injunction should be dissolved when the 

Case: 21-1712 Document: 57 Page: 21 Filed: 02/23/2022
OPTICURRENT, LLC v. POWER INTEGRATIONS, INC. 5

right forming the basis of the injunction was later modified). 

Third, in the case of a reexamination, an existing claim 

ceases to exist if the claim is canceled or materially 

amended. Fresenius, 721 F.3d at 1340 (“[I]f the original 

claim is cancelled or amended to cure invalidity, the patentee’s cause of action is extinguished and the suit fails.”); 

ePlus, 789 F.3d at 1356 (“[P]reviously conferred” rights in 

a patent claim “have ceased to exist” when the claim is canceled through reexamination). 

Fourth, a disclaimer has the same effect as an amendment. Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 

(Fed. Cir. 1999) (“Arguments made during the prosecution 

of a patent application are given the same weight as claim

amendments.”). 

Under these circumstances, the disclaimer here is material and has the effect of eliminating the claim. The elimination of the claim requires vacating the ongoing royalty 

order.

Case: 21-1712 Document: 57 Page: 22 Filed: 02/23/2022