The central issue was a pretrial stipulation establishing U.S. nexus for 70% of Intel's global activities. The district court had granted Intel summary judgment, reasoning that geographic limitations still applied despite the stipulation. The Federal Circuit disagreed, holding that the stipulation required technical analysis "without regard to geographic considerations," which contradicted the lower court's approach.
Chief Judge Kimberly Moore, writing for the panel, held 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."
On the doctrine of equivalents issue, the panel also reversed the district court's application of prosecution disclaimer to apparatus claim 10. The lower court had imported an "upon identifying" limitation into that claim based on prosecution history. Moore held this was error, noting that unlike other independent claims, "independent claim 10 does not include an upon identifying limitation."
The Federal Circuit did affirm one portion of the district court's ruling. The court upheld the decision to strike Dr. Sullivan's net present value and value per unit damages theories, finding that VLSI's damages contentions contained "scattershot references to Intel data or documents" and failed to provide adequate notice under local patent rules.
The mixed result sends the case back to the Northern District of California. VLSI can proceed with its infringement claims on remand, though with a narrower set of damages theories. VLSI retains damages theories from another expert, Mr. Chandler.