87 F.4th 1332
Fed. Cir.2023Background
- VLSI sued Intel for infringement of U.S. Patent Nos. 7,523,373 (ʼ373) and 7,725,759 (ʼ759); asserted claims included method and circuit claims for managing memory operating voltage (ʼ373) and claims for a programmable clock-controller system (ʼ759).
- Accused products: Haswell and Broadwell microprocessors (ʼ373) where C6 SRAM retention involves two regulators (VCCR and VCCIO) and a power-selector; various “Lake” microprocessors (ʼ759) where a Power Control Unit (PCU) running p-code mediates clock changes.
- Jury verdict: literal infringement of all asserted claims of the ʼ373 patent; no literal infringement of the ʼ759 patent but infringement found under the doctrine of equivalents; damages awarded as lump sums: $1.5 billion (ʼ373) and $675 million (ʼ759).
- District court denied Intel’s post-trial motions (infringement/damages) and denied Intel leave to amend to assert a license defense based on a 2012 Intel–Finjan license and a 2020 Fortress acquisition.
- Federal Circuit: affirmed infringement of the ʼ373 patent; reversed judgment of infringement of the ʼ759 patent (DOE insufficient); vacated ʼ373 damages and remanded for a new damages trial; reversed denial of leave to amend to add the license defense and remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument (VLSI) | Defendant's Argument (Intel) | Held |
|---|---|---|---|
| Whether accused Haswell/Broadwell products infringe ʼ373 (minimum operating voltage + switching) | RINGRETENTIONVOLTAGE is the claimed minimum operating voltage; the C6 SRAM switches to VCCIO when VCCR falls below that value | RINGRETENTIONVOLTAGE is not the true minimum; switching is not triggered by falling below the minimum | Affirmed: substantial evidence supports that RINGRETENTIONVOLTAGE is the minimum and that switching occurs “when” VCCR is below it (no contrary claim construction sought) |
| Whether accused Lake processors infringe ʼ759 under doctrine of equivalents (DOE) | Even if literal claim elements map to different physical modules, the combination of core + p-code in PCU is equivalent to the claimed "first master device" and PCU decision module is equivalent to the programmable clock controller | The claimed arrangement requires separate physical components performing request vs. receipt/output; Intel’s arrangement places key functions in PCU software modules, so differences are substantial | Reversed: VLSI’s DOE proof was legally insufficient—no particularized testimony showing the "way" was substantially the same |
| Whether the damages award for ʼ373 is supported | VLSI’s experts quantified power savings (5.45%), translated to speed, used regression to map speed to price, and apportioned incremental revenue to compute a lump-sum royalty (~$1.6B proposed; $1.5B awarded) | Intel challenged damages methodology and inputs (notably that power-savings calculation relied on improper residency inputs mixing Core C7 and Package C7 states) | Vacated and remanded for new damages trial: expert used improper inputs (Core C7 residency) that could materially affect the award, so error not harmless |
| Whether Intel should have been allowed to amend to add a license defense based on the 2012 Intel–Finjan license and Fortress’s 2020 acquisition | Intel timely pursued contractual procedures and moved to add the defense after following contract dispute steps; the license could bind VLSI as an affiliate under its terms | District court: delay, prejudice, and futility (non-party VLSI not bound by Finjan license under Delaware law) | Reversed: denial was an abuse of discretion. The license-defense futility was not established as a matter of law; further litigation/discovery required |
Key Cases Cited
- Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (substantial-evidence review and hypothetical negotiation framework for reasonable royalties)
- Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (U.S. 1997) (function-way-result test and limits on the doctrine of equivalents)
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (U.S. 2002) (limits on equivalents and prosecution-history estoppel principles)
- Aqua Shield v. Inter Pool Cover Team, 774 F.3d 766 (Fed. Cir. 2014) (value-of-what-was-taken principle for reasonable royalties)
- DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005 (Fed. Cir. 2006) (limitation-specific equivalence analysis guidance)
- Akzo Nobel Coatings, Inc. v. Dow Chemical Co., 811 F.3d 1334 (Fed. Cir. 2016) (need for particularized testimony and linking argument to prove equivalence)
- Meaux Surface Protection, Inc. v. Fogleman, 607 F.3d 161 (5th Cir. 2010) (factors for evaluating motions to amend pleadings)
- Alliance Data Systems Corp. v. Blackstone Capital Partners V L.P., 963 A.2d 746 (Del. Ch. 2009) (ordinary rule that nonparties are not bound by contracts, subject to exceptions)
- In re Shorenstein Hays-Nederlander Theatres LLC Appeals, 213 A.3d 39 (Del. 2019) (contracts may impose obligations on affiliates in appropriate circumstances)
- Cooter & Gell v. Hartmarx Corp., 496 U.S. 384 (U.S. 1990) (standard for abuse of discretion review)