Broadcom Corporation v. Emulex Corporation
732 F.3d 1325
| Fed. Cir. | 2013Background
- Broadcom sued Emulex asserting infringement of U.S. Patent No. 7,058,150 (the ’150 patent); after a jury trial the district court entered JMOL of infringement, a jury found nonobviousness and awarded damages, and the court entered a permanent injunction with an 18‑month sunset.
- Claim 8 at issue: a multi‑lane communication device with per‑lane phase interpolators and an interpolator control module (ICM) that causes each interpolator to rotate phase at a rate "corresponding to" the frequency offset so as to reduce that offset.
- Emulex’s accused devices use half‑rate (two parallel data paths) architectures; Emulex argued "corresponding to" required full‑rate architecture and that its devices did not meet the "at a rate . . . so as to reduce" limitation all the time.
- Prior art focal to obviousness was European Patent EP0909035 (Pickering), which discloses clock recovery/phase synchronization but not a data path or data recovery.
- The jury found (and the district court and Federal Circuit held) substantial objective indicia of nonobviousness (commercial success, long‑felt need, failed attempts by others) and that Pickering did not give a person of ordinary skill a reason or reasonable expectation to add a working data path.
- The district court applied the eBay four‑factor test, found irreparable harm in the "design‑wins" OEM market and incumbency effects, and tailored a permanent injunction with an eighteen‑month sunset protecting specified existing customer qualifications and certain emergency/public‑safety sales.
Issues
| Issue | Broadcom's Argument | Emulex's Argument | Held |
|---|---|---|---|
| JMOL/infringement (claim 8) — "corresponding to" scope | Claim language and specification cover quarter/half/full‑rate; half‑rate meets "corresponding to" | "Corresponding to" requires full‑rate (not half‑rate) and thus accused products do not meet claim | Court: "corresponding to" is broad; specification discloses quarter‑rate; half‑rate meets limitation — JMOL of infringement affirmed |
| JMOL/infringement — "at a rate . . . so as to reduce" (part‑time operation) | Evidence (and admissions) showed accused devices reduced offset at least some of the time; part‑time practice still infringes | Devices must reduce offset all the time; expert testimony insufficient | Court: admission that device reduced offset some of the time suffices; part‑time infringement is infringement — JMOL affirmed |
| Obviousness (invalidity) | Pickering + routine modifications would render claim obvious | Pickering addresses different problem (clock recovery), lacks data path; no motivation/expectation of success; objective indicia support nonobviousness | Court: substantial evidence supports jury and district court; no clear and convincing proof of obviousness — patent nonobvious and valid affirmed |
| Permanent injunction and sunset | Injunction appropriate: irreparable harm, inadequate remedies, balance favors Broadcom; sunset tailored to market needs | Apple precedent requires causal nexus; feature is minor and not demand‑driving; injunction abuse of discretion | Court: design‑win market and incumbency effects create causal nexus; adjudicated infringement strengthens remedy; injunction with 18‑month, tailored sunset not an abuse of discretion — affirmed |
Key Cases Cited
- eBay Inc. v. MercExchange LLC, 547 U.S. 388 (establishes four‑factor test for permanent injunctions)
- Apple, Inc. v. Samsung Electronics Co., 678 F.3d 1314 (requires causal nexus between infringement and harm in certain markets)
- Presidio Components, Inc. v. American Tech. Ceramics Corp., 702 F.3d 1351 (patent owner entitled to exclusion as protection of property rights; equitable discretion applies)
- Douglas Dynamics, LLC v. Buyers Products Co., 717 F.3d 1336 (competitor forced to compete against infringing products can show irreparable harm)
- Power‑One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343 (obviousness review: legal question with factual findings reviewed for clear error; need for reasonable expectation of success)
- Phillips v. AWH Corp., 415 F.3d 1303 (claim construction principles; disclosed embodiments inform claim scope)
- Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059 (admissions by party witnesses can justify JMOL)
- Lucent Technologies, Inc. v. Gateway, Inc., 543 F.3d 710 (Ninth Circuit standard: district court JMOL reviewed de novo)