The U.S. Court of Appeals for the Federal Circuit has vacated a summary judgment of non-infringement previously granted to Intel, reviving a multi-billion dollar litigation involving U.S. Patent No. 8,566,836. According to the appellate filing, first reported by Reuters, the panel ruled that the district court erred in its extraterritoriality analysis by disregarding a critical pre-trial stipulation regarding the "U.S. nexus" of the accused products. The reversal centers on a 2017 dispute where VLSI alleged that Intel’s multi-core processors infringed on methods for core selection, with the appellate court holding that the lower court's findings conflicted with a parties' stipulation that 70% of the accused products satisfy the domestic nexus for infringement purposes.
Furthermore, the appellate court reinstated VLSI’s doctrine of equivalents theory, finding that the district court improperly invoked prosecution disclaimer to narrow the claim scope. The Federal Circuit determined that the prosecution history did not meet the "clear and unmistakable disavowal" standard required to limit the claim. By reversing the summary judgment, the court ensures that factual disputes regarding domestic manufacturing and claim equivalence return to a jury for determination.
While Intel successfully upheld the exclusion of VLSI’s primary damages expert due to inadequate disclosure under local patent rules, the case returns to the Northern District of California with VLSI’s alternative damages theories intact. This remand follows the acquisition of a controlling stake in VLSI’s parent, Fortress Investment Group, by Mubadala Investment Company. The proceedings will continue to address whether a 2012 license agreement with Finjan provides Intel with a valid defense against the asserted portfolio.
