Tessera, Inc. v. International Trade Commission
646 F.3d 1357
| Fed. Cir. | 2011Background
- Tessera filed ITC 337 complaint alleging infringement of four Tessera patents by eighteen respondents in semiconductor chip packaging technology.
- The key accused product category is wBGA and µBGA packages, with a shielded encapsulation area to protect exposed terminals from encapsulant.
- The asserted '106 patent' claims focus on a method using an encapsulation barrier and a protective barrier to prevent encapsulant from contacting terminals.
- Tessera licenses its patents via Tessera Communications Common License (TCC Licenses); licensees may sell licensed products and owe royalties later, with an Exclusion from License provision.
- The ITC, after review, affirmed no violation for the '106 patent with respect to wBGA products, found infringement only for µBGA products (which were exhausted), and found no violation for the '977 and '627 patents which have since expired.
- Tessera appeals the ITC's claim construction, infringement finding for wBGA, patent exhaustion ruling, and seeks vacatur regarding the expired patents; the court has jurisdiction and portions of the appeal are moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim construction deference | Tessera contends ITC misapplied its construction of 'top layer' midway in analysis. | Intervenors and ITC argue Tessera is challenging infringement, not the governing claim construction. | Infringement review evaluated under substantial evidence; no reversal for construction error. |
| Infringement of wBGA products | Tessera argues the solder mask layer is part of the 'top layer' and thus the wBGA infringe. | ITC and intervenors identify laminate substrate as the 'top layer' carrying terminals; solder mask is separate. | Substantial evidence supports laminate substrate as the 'top layer'; wBGA noninfringing. |
| Patent exhaustion | Tessera asserts licensee royalties conditions render sales unauthorised and not exhausted. | Exhaustion arises from authorized sales; royalty payment timing does not nullify exhaustion. | Court affirms exhaustion for all products sold by Tessera licensees; Elpida's 100% from licensees excludes further relief. |
| Jurisdiction over exhaustion issue | Tessera argues ITC exhaustion ruling was timely appealable under 1337(c) despite partial final determinations. | ITC and Elpida contend exhaustion finality and lack of review allow no appeal. | Court holds jurisdiction; Notice to Review did not render exhaustion final; timely appeal lies. |
| Mootness and vacatur for expired patents | Tessera seeks vacatur of '977' and '627' patent determinations as moot after expiration. | Intervenors urge dismissal only; vacatur unnecessary. | The portion concerning '977' and '627' vacated and remanded to dismiss as moot. |
Key Cases Cited
- Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361 (Fed. Cir. 2003) (standard of review: legal de novo, factual substantial evidence)
- Nippon Steel Corp. v. United States, 458 F.3d 1345 (Fed. Cir. 2006) (substantial evidence standard)
- Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350 (Fed. Cir. 2005) (claim construction and infringement assessment framework)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (claim construction reviewed de novo)
- Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008) (anticipation standards; clear and convincing evidence)
- Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (Supreme Court 2008) (patent exhaustion doctrine post-sale rights)
- Allied Corp. v. Int'l Trade Comm'n, 782 F.2d 982 (Fed. Cir. 1986) (finality of ITC determinations and review timing)
- Broadcom Corp. v. Int'l Trade Comm'n, 542 F.3d 896 (Fed. Cir. 2008) (premature appeals and review timing under ITC)