Chief Judge Kimberly Moore wrote for the panel that U.S. District Judge Beth Labson Freeman misinterpreted a key pretrial stipulation when she granted Intel summary judgment on extraterritoriality grounds. The stipulation stated 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."
The court criticized the district court's analysis, writing that Intel's argument for a narrow reading of the stipulation was "absurd" and that the Federal Circuit 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, which 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 of the '836 patent.
The Federal Circuit also reversed the district court's claim construction regarding apparatus claim 10, finding that Judge Freeman 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."
However, the panel affirmed the district court's decision to strike Dr. Sullivan's damages theories based on net present value and value per unit methods, finding no abuse of discretion in applying the Northern District of California's Patent Local Rule 3-8.
The Federal Circuit remanded the case for further proceedings, noting that while Dr. Sullivan's damages theories were properly struck, VLSI maintains another damages expert, Mr. Chandler, whose theories remain available for trial.