Issue 206 | May 27, 2004
Int’l Rectifier Corp. v. IXYS Corp.

In Int’l Rectifier Corp. v. IXYS Corp., No. 02-1414, -1554, (Fed. Cir. March 18, 2004), the federal circuit (1) affirmed a district court’s derivation order because IXYS’s allegations of derivation and inequitable conduct were insufficient as a matter of law; (2) vacated and remanded an equitable defenses order for consideration of non-privileged evidence in support of those defenses; (3) reversed the denial of IXYS’s motion for summary judgment of non-infringement of certain claims of the ’699 patent; (4) reversed-in-part the construction of the term “adjoining”; and (5) vacated-in-part and remanded the judgment relating to the construction of the claim terms “polygonal” and “annular.”

IXYS appealed from a judgment that it infringed various claims of the ’699, ’725, and ’767 patents, owned by International Rectifier Corporation (“IR”), relating to transistor devices. The district court dismissed IXYS’ affirmative defenses of equitable estoppel and laches based on the history of licensing negotiations and merger discussions between IR and IXYS, as well as its defenses of derivation and inequitable conduct.

On appeal, the federal circuit, analyzing the claims, held that “polygonal” referred to “a closed plane figure bounded by straight lines,” consistent with the ordinary dictionary definition of the word. The district court’s construction of the term as allowing round corners and not straight edges was held to be erroneous. Unlike the interpretation of “polygonal,” the inventor deviated from the ordinary and customary meaning of “annular” by broadening the word to describe structures that are not circular or curved; as a consequence, the federal circuit held that the term “annular” means “a surface area defined by two concentric polygons.” Finally, the ordinary and customary meaning of “adjoining” was “touching or bounding at a point or a line.” The district court’s adoption of the dictionary definition of “adjacent” to define “adjoining” was improper given the distinctions which exist between the two words as defined in the dictionary.

Because factual issues remained as to whether IXYS’s devices included the “polygonal” and “annular” limitations of the claims as properly construed, the court vacated-in-part the district court’s partial summary judgment grant that IXYS’s devices infringed certain claims of the ’699 and ’767 patents. However, based on the court’s construction of “adjoining,” the court concluded that the IXYS devices did not infringe certain claims of the ’699 patent.

Finally, the court agreed with IXYS that it was entitled to present its claims of laches and estoppel based on the non-privileged evidence, vacating the grant of summary judgment in IR’s favor on these defenses. Affirming the district court’s determination on derivation, the court reasoned IXYS’s inequitable conduct challenge must fail, and affirmed the grant of summary judgment thereupon.

To view the full decision visit http://www.aplf.org/mailer/Issue206.doc

To discuss this topic further, please feel free to contact the author Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC., USA.

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