Summary
The United States Court of Appeals for the Federal Circuit reviews VLSI Technology LLC's appeal from summary judgment of noninfringement and the striking of certain damages theories in its patent litigation against Intel Corporation. The court reverses the summary judgment rulings concerning extraterritoriality and the doctrine of equivalents for specified apparatus claims, but affirms the striking of the damages theories based on net present value and value per unit. The case is remanded for further proceedings, with no costs.
Topics
Practice areas
Questions Presented
- Whether the parties' pretrial stipulation established a United States nexus for the asserted method claims notwithstanding the geographic location of the claimed measurement activities.
- Whether summary judgment of noninfringement was proper for the asserted apparatus claims based on the location of the claimed measuring function or the accused products' capability to perform that function.
- Whether prosecution history clearly and unmistakably disclaimed an interpretation of apparatus claim 10 that did not require selecting a core upon identifying a single-core processing task.
- Whether the district court abused its discretion by striking Dr. Sullivan's net-present-value and value-per-unit damages theories under Patent Local Rule 3-8.
Holdings
- The stipulation's plain and unambiguous language established that 70 percent of qualifying Intel products and activities would be treated as having a United States nexus for infringement purposes as well as for damages calculations; therefore, summary judgment of noninfringement on extraterritoriality grounds for the asserted method claims was improper.
- Summary judgment was improper because the court focused on where the claimed measuring function was practiced rather than whether an infringing act involving the accused products occurred within or into the United States. In addition, there was a genuine dispute of material fact concerning whether the accused products were reasonably capable of performing the claimed measuring function without product modification.
- The prosecution statements did not clearly and unmistakably disclaim a broader interpretation of claim 10. The district court therefore erred by importing an unrecited 'upon identifying' limitation into claim 10, and its resulting summary judgment rejecting VLSI's doctrine-of-equivalents theory for claim 10 and its dependent claims was reversed.
- The district court did not abuse its discretion by striking Dr. Sullivan's net-present-value and value-per-unit damages theories because VLSI's damages contentions did not adequately disclose the underlying data and calculations required by Patent Local Rule 3-8.
Key quotations
“Thus, the only reasonable interpretation of the stipulation is that it addresses U.S. nexus for infringement purposes as well as for damages calculations.” (6)
“The proper inquiry, therefore, is whether Intel’s accused products include a performance measurement circuit having “the structural means for performing” the claimed measuring function “without product modification.”” (8)
“In the absence of clear and unmistakable prosecution disclaimer, we conclude the district court erred in construing claim 10 to include an unrecited “upon identifying” limitation.” (12)
“We remand for further proceedings consistent with this opinion.” (14)
Factual background
VLSI asserted claims of the '836 patent, which concerns selecting a core of a multicore processor to execute a task based on measured performance parameters. The parties entered a stipulation providing that 70 percent of qualifying global Intel products and activities would be deemed to have a United States nexus for purposes of 35 U.S.C. § 271 and patent-infringement damages. VLSI also relied on evidence that Intel's accused products contained built-in performance-measurement circuitry, while Dr. Sullivan proposed net-present-value and value-per-unit damages theories that the district court found insufficiently disclosed in VLSI's damages contentions.
Procedural history
VLSI sued Intel in 2017 for infringement of eight patents, including the '836 patent. The district court construed the claims, struck certain damages theories disclosed by VLSI's damages expert Dr. Sullivan, and granted Intel summary judgment of noninfringement on extraterritoriality and doctrine-of-equivalents grounds. The Federal Circuit reversed the summary judgment rulings concerning extraterritoriality and the doctrine-of-equivalents theory for the asserted apparatus claims, affirmed the striking of Dr. Sullivan's NPV and VPU theories, and remanded.
Remand instructions
Remand for further proceedings consistent with the opinion. The district court's summary judgment of noninfringement on extraterritoriality grounds and its DOE-based summary judgment concerning apparatus claims 10, 11, 13, and 17 are reversed. The striking of Dr. Sullivan's NPV and VPU damages theories remains affirmed; VLSI may pursue damages through the unaffected theories of its other expert, Mr. Chandler. No costs.