Carnegie Mellon University v. Marvell Technology Group, Ltd.
807 F.3d 1283
| Fed. Cir. | 2015Background
- CMU owns U.S. patents 6,201,839 and 6,438,180 on correlation-sensitive adaptive sequence detection for hard-disk drives; CMU sued Marvell for infringement.
- Jury found Marvell infringed and the patents were valid, awarding CMU roughly $1.17 billion as a 50-cent royalty per Marvell chip sold for use in HDDs; the district court extended pre-judgment damages to judgment date and added a 23% enhancement for willfulness, totaling about $1.54 billion.
- Marvell designs and outsources manufacturing abroad; CMU showed Marvell copied Kavcic’s work and internal references acknowledge Kavcic’s contribution; hundreds of millions to billions of chips involved.
- Marvell challenged validity (primarily Worstell anticipation/obviousness), infringement (post-processor and NLD chips; simulator testing), and damages (laches, willful enhancement, and extraterritorial reach).
- The court affirmed infringement and validity, affirmed laches rejection, reversed the willful enhancement, and remanded on extraterritoriality issues to determine sale location for foreign-made chips.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of CMU claims vis-à-vis Worstell | CMU’s claims are not anticipated by Worstell; Worstell discloses only one signal-dependent function, not a set. | Worstell discloses a signal-dependent function set applicable to the claims. | No clear and convincing evidence of anticipation/obviousness; Worstell does not disclose a set of functions as required. |
| Infringement by Marvell’s post-processor and NLD chips | Marvell’s MNP/EMNP post-processors and NLD chips perform each claim step, including time-varying branch metrics using multiple samples. | Post-processors may not be in a trellis or may only compute some branches; district construction governs. | Infringement supported; CMU showed post-processors perform required branch-metric calculations and use multiple samples. |
| Laches defense to pre-suit damages | Laches did not bar pre-suit damages given copying and equities. | Laches should bar pre-suit damages due to delay. | Affirm denial of laches; delays were unreasonable but equities favored CMU; no reversible error. |
| Damages enhancement for willfulness | Willful enhancement appropriate due to Marvell’s knowledge and recklessness. | Invalidity defenses were objectively reasonable and thus negate willfulness. | Willful enhancement reversed; invalidity defense was objectively reasonable; de novo review on objective reasonableness.},{ |
| Extraterritoriality in damages base (imported vs foreign-made chips) | Damages may include imported chips used domestically; 271(a) theory supports US-based sales. | Damages cannot reach foreign-made, non-imported chips; extrapolation violates extraterritoriality. | Partial remand to determine domestic sale of foreign-made chips; imported chips sustain royalties; other chips require remand for sale-location analysis. |
Key Cases Cited
- Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238 (2011) (clear-and-convincing invalidity standard remains applicable)
- A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (entirely governs laches under en banc framework)
- Halo Electronics, Inc. v. Pulse Electronics, Inc., 769 F.3d 1371 (Fed. Cir. 2014) (objective-unclear defenses impact on willfulness depending on reasonable defenses)
- Seagate Tech., LLC v. Lockheed Martin Corp., 497 F.3d 1360 (Fed. Cir. 2007) (establishes the standard for willful infringement and enhancement)
- Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013) (extraterritoriality considerations in damages)
- Morrison v. National Australia Bank Ltd., 130 S. Ct. 2455 (2010) (presumption against extraterritoriality in statute application)
- Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008) (exhaustion and domestic-use considerations in patent damages)