Federal Circuit Revives VLSI Patent Claims Against Intel, Reverses Summary Judgment

Chief Judge Kimberly Moore, writing for the panel, held that U.S. District Judge Beth Labson Freeman erred in granting Intel summary judgment on extraterritoriality grounds. The dispute centered on a pretrial stipulation in which the parties agreed that 70% of Intel products meeting technical requirements "without regard to geographic considerations" would be deemed to have U.S. nexus "as required by each subsection of 35 U.S.C. § 271 and for determining any patent infringement damages."

Intel argued the stipulation should be read narrowly. The Federal Circuit rejected that position. Chief Judge Moore called Intel's reading "absurd" and wrote that the court would "decline to look past the clear language of the stipulation to rescue Intel from its decision to freely enter an agreement which it later finds to be imprudently made."

VLSI Technology LLC sued Intel in 2017 for infringement of eight patents, including U.S. Patent No. 8,566,836. The '836 patent relates to choosing cores of a multicore processor to execute tasks based on whether the task must be executed on a single core or across multiple cores. VLSI asserted infringement of claims 1, 9-11, 13, 17, and 20-21.

The panel also reversed Judge Freeman's claim construction of apparatus claim 10, finding she incorrectly imported an "upon identifying" limitation through prosecution disclaimer. Chief Judge Moore wrote that "none of these statements amounts to a clear and unmistakable disclaimer that claim 10 includes an upon identifying limitation."

Intel did not lose on every front. The Federal Circuit affirmed the district court's decision to strike damages theories from VLSI's expert Dr. Sullivan, finding no abuse of discretion in applying the Northern District of California's Patent Local Rule 3-8. The struck theories involved net present value and value-per-unit methods.

The case was remanded for further proceedings. The panel noted that while Dr. Sullivan's damages theories were properly excluded, VLSI retains another damages expert, Mr. Chandler, whose theories remain available for trial.