Fish & Richardson obtains a $175 million cash settlement for long-time client Power Integrations, Inc. (Nasdaq: POWI) in its 15-year patent litigation battle with Fairchild Semiconductor and ON Semiconductor (Nasdaq: ON), which acquired Fairchild in 2016. Under the terms of the agreement, the companies have agreed to end all litigation between the parties, and neither company granted any licenses to the other.
Fish has represented Power Integrations against Fairchild and related entities since 2004 in many cases across multiple venues – including district courts, appellate courts, the Patent Trial and Appeal Board (PTAB), and the International Trade Commission (ITC) in the U.S., as well as courts in China and Taiwan – and obtained multiple patent infringement verdicts, several multi-million dollar damages awards, and permanent injunctions against hundreds of infringing Fairchild products. Fish has also successfully defended Power Integrations against several countersuits, and the company’s key patents survived numerous attacks on their validity and enforceability.
Power Integrations’ patents cover technology for high-voltage power conversion in chips that are used in chargers for electronic devices like cell phones and computers.
“We have prevailed at every significant turn throughout these litigations, and we are thrilled that we could help Power Integrations achieve this important victory. They are the true innovators in this market, and we have worked diligently to protect their valuable intellectual property,” said Frank Scherkenbach, the Fish & Richardson principal who has led Power Integrations’ litigation since the beginning. “We hope that the history of these cases and this large settlement will serve as a deterrent against infringement by other competitors.”
Over the past year alone, Fish won three cases for Power Integrations, including two jury verdicts in the District of Delaware (Power Integrations Inc. v. Fairchild Semiconductor Corp. et al.; D. Del. Nov. 9, 2018 and Nov. 16, 2018), obtaining damages awards totaling nearly $25 million. Fish also won a precedential appeal that made new law regarding the relationships that govern the time bar in inter partes review (IPR) proceedings. In Power Integrations Inc. v. Semiconductor Components Industries LLC (Fed. Cir. June 13, 2019; en banc petition denied Aug. 28, 2019), the Federal Circuit ruled that ON’s merger with Fairchild triggered a time bar, making ON ineligible to challenge Power Integrations’ patents at the PTAB.
While Fairchild and ON relied on multiple law firms throughout the litigation, Fish consistently led the charge in representing Power Integrations across all venues, from start to finish – including in district and appellate courts, at the PTAB, and at the ITC. For international matters in China and Taiwan, Fish worked closely with local counsel, overseeing all aspects of the litigation.
“Fish is one of a very few firms that can handle the depth and breadth of this type of global litigation,” said Fish principal Michael Headley, who co-led many of the Power Integrations cases with Scherkenbach. “We had to be strategic with the positions we took, and we had to think through all of the implications in parallel proceedings between the parties in different venues around the globe.”
“We approached this litigation the way we look at all cases, with a holistic, long-view perspective,” said Fish principal Howard Pollack, who worked closely with Power Integrations’ inventors and its expert witnesses to ensure that all of the legal and technical arguments were not only consistent, but also communicated clearly to juries and judges alike. Scherkenbach added, “We never just do what is expedient for winning the case in front of us; we plan and prepare for every possible future scenario so that we can ultimately deliver a successful result for our client across the board.”