2:11-cv-00233
Greenlight Research Labs LLC v. Fairchild Semiconductor Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Greenlight Research Labs, LLC (Texas)
- Defendant: Fairchild Semiconductor Corporation (Delaware)
- Plaintiff’s Counsel: Stevens Love
- Case Identification: 2:11-cv-00233, E.D. Tex., 04/26/2011
- Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the district.
- Core Dispute: Plaintiff, as a relator on behalf of the United States, alleges that Defendant engaged in false patent marking and false advertising by marking and advertising its semiconductor products with a list of 39 U.S. patents that had already expired.
- Technical Context: The case involves power semiconductor devices, specifically high-voltage switching transistors (MOSFETs), which are fundamental components in power supplies, motor controls, and other electronics.
- Key Procedural History: The complaint alleges that Defendant acquired the 39 patents at issue from Intersil Corporation in March 2001, at which time at least one of the patents had already expired. The central allegation is that Defendant continued to represent products as being "covered by" these patents in product datasheets published as late as 2009 and 2011, well after all 39 had expired.
Case Timeline
| Date | Event |
|---|---|
| 1980-03-25 | U.S. Patent No. 4,364,073 Priority Date |
| 1982-12-14 | U.S. Patent No. 4,364,073 Issue Date |
| 1999-12-14 | U.S. Patent No. 4,364,073 Expiration Date (Calculated) |
| 2001-03-01 | Fairchild acquires the 39 patents from Intersil |
| 2008-12-31 | All 39 patents at issue are expired |
| 2009-01-01 | Date of product description for Device II |
| 2009-02-01 | Date of product description for Device I |
| 2009-12-27 | Date referenced in Fairchild's 2009 Annual Report |
| 2011-04-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
As this is a false marking case concerning 39 expired patents, the complaint focuses on one representative patent to establish Defendant's alleged knowledge.
U.S. Patent No. 4,364,073 - “POWER MOSFET WITH AN ANODE REGION,” issued December 14, 1982
The Invention Explained
- Problem Addressed: The patent describes conventional vertical power MOSFETs (metal-oxide-semiconductor field-effect transistors) as three-layer semiconductor devices (source, body, drain) used in power applications (col. 1:11-37). A challenge in such devices is managing the trade-off between breakdown voltage, on-state resistance, and switching speed.
- The Patented Solution: The invention introduces a fourth layer, an "anode region," in series with the drain region, creating a four-layer structure (col. 1:37-41; Fig. 2). This anode provides "minority carrier injection into the drain region," which is described as enhancing device performance by reducing on-resistance without creating an undesirable "thyristor action" (col. 1:44-48, 1:59-65). The geometry and conductivity of the layers are specifically configured to ensure the device still operates as a field-effect transistor rather than a latching thyristor (col. 5:19-29).
- Technical Importance: This design aimed to improve the efficiency and performance of high-voltage switching transistors, which are critical components for power conversion and control, by lowering electrical losses during operation.
Key Claims at a Glance
The complaint does not assert specific claims for infringement, as the patent is alleged to be expired. The technology of the patent is relevant to the context of the products being marked. The primary independent claim, Claim 1, recites the core features of the invention:
- A vertical MOSFET device comprising: a semiconductor substrate, including in series, adjacent source, body, drain and anode regions of alternate conductivity type;
- the body region being adjacent to a surface of the substrate;
- the source and drain regions being spaced so as to define a channel portion in the body region at said surface;
- the source, body and drain regions having a first forward current gain and the anode, drain and body regions having a second forward current gain, such that their sum is less than unity, and no thyristor action occurs.
III. The Accused Instrumentality
Product Identification
The complaint identifies two accused products: “Device I,” an HGTG20N60A4D MOS gated high voltage switching device, and “Device II,” an HGTG30N60C3D MOS gated high voltage switching device (Compl. ¶6).
Functionality and Market Context
The complaint describes these as high voltage switching devices manufactured and distributed by Fairchild (Compl. ¶6). The core of the action is not the functionality of these devices but rather the advertising and product documentation associated with them. The complaint alleges that Fairchild advertised and provided product datasheets for these devices that claimed they were "covered by one or more" of the 39 expired U.S. patents (Compl. ¶¶ 7-10). This marking is alleged to provide a "competitive advantage" (Compl. ¶21). No probative visual evidence provided in complaint.
IV. Analysis of False Marking Allegations
This case does not allege patent infringement; it alleges false marking under 35 U.S.C. § 292. The central dispute is whether Defendant knowingly marked products with expired patents with an intent to deceive the public. The analysis therefore centers on the alleged false statements, not on a technical comparison of claim elements to product features.
False Marking Allegations (for '073 Patent and others)
| Alleged False Statement | Evidence of Statement (per Complaint) | Allegation of Falsity and Deception | Complaint Citation |
|---|---|---|---|
| Device I and Device II are "covered by one or more" of 39 listed U.S. Patents. | Product descriptions and datasheets for Device I and Device II available on Defendant's website. | All 39 patents, including the '073 patent, expired prior to 2009, making the statement of coverage false. | ¶¶ 7-10 |
| The '073 patent covers the accused devices. | Listing of U.S. Patent No. 4,364,073 on product description documents. | The '073 patent was already expired in March 2001 when Defendant acquired it, demonstrating Defendant's knowledge of its expiration. | ¶12 |
| The product descriptions are current. | Product descriptions for Device I and II bear copyright dates of 2009 and the web pages bear a copyright date of 2011. | Defendant updated copyright information but failed to remove the known-expired patents, suggesting an intent to continue the false marking. | ¶¶ 8, 10, 14 |
- Identified Points of Contention:
- Factual Question: Can Plaintiff produce sufficient evidence to demonstrate that Defendant marked, affixed, or used in advertising the expired patent numbers in connection with the specific accused products as alleged?
- Intent Question: The central issue will be whether Plaintiff can prove that Defendant's marking with expired patents was done with an "intent to deceive the public." The complaint alleges this intent can be inferred from Defendant's knowledge of expiration, its failure to remove the markings when updating other information, and its corporate philosophy of using patents for a competitive advantage (Compl. ¶21). Defendant may argue that any such marking was an inadvertent oversight or mistake, lacking the requisite intent.
V. Other Allegations
- Allegations of Knowledge and Intent to Deceive:
The complaint builds its case for deceptive intent, a required element of a § 292 claim, on a collection of factual allegations.- Knowledge of Expiration: The complaint alleges direct or constructive knowledge of the patents' expired status. It points to the fact that the '073 patent was already expired when Fairchild acquired it in 2001, an event that would have been discovered during due diligence (Compl. ¶12). It also cites Fairchild’s 2009 Annual Report, which quantified its portfolio of unexpired patents, implicitly demonstrating knowledge of which patents had expired (Compl. ¶11).
- Inferred Intent: Intent to deceive is alleged to be inferred from several actions. The complaint notes that Fairchild updated copyright notices on its product literature to "© 2009" but did not remove the expired patent listings, suggesting the omission was not an oversight (Compl. ¶14). The complaint further argues that intent can be inferred from Fairchild's "stated corporate philosophy of using patents to a competitive advantage" and its history of patent litigation, suggesting a sophisticated understanding of patent law (Compl. ¶¶ 15-17, 21). Finally, it notes that Fairchild is represented by large law firms that issue alerts on the topic of false marking (Compl. ¶20).
VI. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the court's determination of two primary issues:
A central question of statutory intent: Can the plaintiff marshal sufficient evidence to prove, by a preponderance of the evidence, that Fairchild acted with an "intent to deceive" the public? The case will test whether the collection of circumstantial evidence—such as performing due diligence on an already-expired patent, updating copyrights while leaving expired patent numbers, and having a general corporate policy of leveraging IP—is sufficient to meet this standard, or if such actions can be explained as administrative oversight.
An evidentiary question of causation and materiality: Although not an element of the claim itself, the context of the dispute revolves around whether the marking could confer a "competitive advantage" (Compl. ¶21). A key underlying question is whether the listing of decades-old, expired patents on a technical datasheet for a modern semiconductor product would actually deceive or influence a purchasing decision by a sophisticated engineer, which may bear on the court's overall assessment of deceptive intent.