28 F.4th 240
Fed. Cir.2022Background
- Broadcom sued at the ITC under 19 U.S.C. § 1337, alleging Renesas and others imported products infringing U.S. Patents No. 7,437,583 (’583) and 7,512,752 (’752).
- The ALJ found Broadcom failed the technical prong of the Section 337 domestic‑industry requirement for the ’583 patent (SoC did not include the claimed "clock tree driver") and found claim 5 of the ’752 patent unpatentable as obvious over prior art; the Commission affirmed those rulings.
- Renesas also pursued IPRs: the PTAB held claims 25–26 of the ’583 and claims 1,2,5,7,8 of the ’752 would have been obvious, but declined to show claims 17,18,20–24 of the ’583 unpatentable.
- Appeals were consolidated: Broadcom appealed the Commission’s domestic‑industry and invalidity conclusions; Renesas and Broadcom cross‑appealed various PTAB obviousness determinations.
- The Federal Circuit affirmed the PTAB decisions in full, affirmed the Commission’s finding that Broadcom failed to show a domestic industry (mooting infringement analysis), and affirmed PTAB’s obviousness findings for the challenged claims of the ’752 patent.
Issues
| Issue | Plaintiff's Argument (Broadcom) | Defendant's Argument (Renesas/Respondents) | Held |
|---|---|---|---|
| Whether Broadcom met the technical prong of Section 337 for the ’583 patent (domestic industry) | Broadcom: its SoC together with customer integration/firmware (clock tree driver) practices the claim; it manufactured/tested systems with SoC+firmware | Renesas: Broadcom never identified any specific article (memory or integration) that actually practices claim 25; arguments about systems not raised below are waived | Affirmed Commission: Broadcom failed to identify an actual article practicing claim 25; no domestic industry (technical prong) shown; new theories waived |
| Obviousness of ’583 claim 17 (and dependents) over Kiuchi + Van Hook | Renesas: Kiuchi teaches clock‑gate control; Van Hook teaches halting via status registers; a skilled artisan would combine them to yield the claimed processor determining gate status | Broadcom: Van Hook is non‑analogous (different field) and does not disclose stopping clock gates; Board correctly found no motivation to combine | Affirmed PTAB: nonobvious — Van Hook does not teach the claimed "processor determining gate status" and is non‑analogous, so combination fails |
| Obviousness of ’583 claims 25–26 over Alben + Fallah (and Benini for motivation) | Broadcom: Board relied on hindsight to reconstruct claim 25[d] and failed to show reasonable expectation of success | Renesas: Alben discloses hybrid hardware/software gating; Fallah and Benini teach software power‑management and motivate adding direct software control; reasonable expectation implicit and not contested before PTAB | Affirmed PTAB: claims 25–26 obvious; substantial evidence supports combination and motivation to combine; Broadcom’s expectation‑of‑success challenge was not preserved |
| Obviousness of ’752 claims (1,2,5 in dispute), especially claim 5, over Foster (and Sih) | Broadcom: PTAB improperly mixed embodiments, conflated input/output requests, and misread block/line request structure (one‑to‑one mapping required) | Renesas: Foster (and Sih) disclose the claimed output port, queue, input requests for blocks (or multiple line requests equating to blocks), and logic that generates access requests based on sizes; testimony supports these findings | Affirmed PTAB: claims 1,2,5 are obvious over Foster (and claim 5 also obvious over Foster+Sih); factual findings supported by substantial evidence |
Key Cases Cited
- Honeywell Int’l, Inc. v. ITC, 341 F.3d 1332 (Fed. Cir.) (standards for reviewing ITC factual findings and agency decisions)
- Alloc, Inc. v. ITC, 342 F.3d 1361 (Fed. Cir.) (domestic industry has economic and technical prongs)
- Microsoft Corp. v. ITC, 731 F.3d 1354 (Fed. Cir.) (must show an actual domestic article that practices the asserted claim)
- Spansion, Inc. v. ITC, 629 F.3d 1331 (Fed. Cir.) (substantial evidence standard; agency determinations reasonable if supported by record)
- In re Elsner, 381 F.3d 1125 (Fed. Cir.) (standard of review for PTAB legal determinations)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (review of factual findings underlying PTAB obviousness determinations)
- Graham v. John Deere Co., 383 U.S. 1 (U.S.) (Graham factors for obviousness analysis)
- Affinity Lab’ys of Tex., LLC v. DIRECTV LLC, 838 F.3d 1253 (Fed. Cir.) (parties must raise disputed issues; PTAB may treat unchallenged issues as undisputed)