The US Court of Appeals for the Federal Circuit (CAFC) has overturned a jury verdict that had placed chipmaker Intel in a position to pay $2.18 billion in damages to patent holding company VLSI for violating two of its patents, marking one of the most substantial patent damages awards ever. The decision, delivered on December 4 by circuit judges Alan Lourie, Timothy Dyk, and Richard Taranto, did acknowledge some aspects of the jury verdict from the US District Court for the Western District of Texas in March 2021. It affirmed the infringement of one patent (the ‘373 patent), which pertains to the memory and processing of integrated circuits. However, the judges reversed the jury’s determination of infringement for the second patent (‘759).
The CAFC also annulled the damages award for the ‘373 patent and sent it back for a new trial specifically focused on damages. In rejecting the finding of infringement for the ‘759 patent, the appeals court sided with Intel’s argument that VLSI’s doctrine of equivalents theory, used to establish infringement, was “legally insufficient.”
In the United States, the doctrine is occasionally invoked in infringement cases when the accused product doesn’t literally infringe a patent invention but does so under the doctrine of equivalents.
Back in May, the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) had already deemed the ‘759 patent invalid due to obviousness. The PTAB-initiated trial found all seven challenged claims to be unpatentable because of obviousness and rejected the patent owner’s motion to exclude.
VLSI was legally represented by MoloLamken’s Jeffrey A. Lamken, Rayiner Hashem, and Michael Gregory Pattillo Jr., as well as Irell & Manella’s Morgan Chu, Benjamin W. Hattenbach, Alan J. Heinrich, Amy E. Proctor, Dominik Slusarczyk, Charlotte J. Wen, and Babak Redjaian.
Intel was represented by Wilmer Cutler Pickering Hale and Dorr’s William F. Lee, Alison Burton, Lauren B. Fletcher, Joseph J. Mueller, Steven Jared Horn, Amanda L. Major, and Mary Virginia Sooter.
