The Federal Circuit has reversed a district court’s grant of summary judgement of noninfringement by Intel of VLSI’s patent claim on the ground of extraterritoriality with respect to the asserted method claims.
In 2017, VLSI sued Intel for infringement of eight patents, including the ’836 patent at issue in this appeal.
As the Federal Circuit explained,
The ’836 patent relates to choosing one or more cores of a multicore processor to execute a particular task, for example, based on whether the task must be executed on a single core or can be executed across multiple cores. …Claims 1 and 10 are respectively representative of the asserted method and apparatus claims.
Claim 1 reads:
1. A method for operating a multi-core processing device, comprising:
measuring a processing speed parameter for each of a plurality of cores;
storing each measured processing speed parameter for each of the plurality of cores in a storage device; and
upon identifying a processing task that can not be run across the plurality of cores, selecting a core from the plurality of cores having a fastest measured processing speed parameter at a given voltage to run the processing task.
(Emphasis added by court.)
Claim 10 reads:
10. A multi-core system on chip (SOC), comprising:
a plurality of cores, each core comprising a performance measurement circuit for measuring a performance parameter value for said core; and
at least a first storage device for storing the performance parameter values for the plurality of cores for use in selecting a core having maximized or minimized performance parameter value at a specified voltage to run a processing task that can not be run across the plurality of cores.
(Emphasis added by court.)
VLSI argued on appeal that this contradicted a pre-trial stipulation that
[o]f the total, global number of Intel products and associated activities (without regard to geographic considerations) to meet the technical requirements of any asserted VLSI patent claim not proven invalid by Intel, as well as any actual or projected revenues or profits associated therewith seventy percent (70%) thereof will be deemed to have a United States nexus as required by each subsection of 35 U.S.C. § 271 and for determining any patent infringement damages in this case. . .
The Federal Circuit agreed that the stipulation was “plain and unambiguous” and thus that the district court erred.
Intel argued that the stipulation was only meant to address the calculation of damages, but the Federal Circuit found that the only “reasonable interpretation” of the stipulation was that “it addresses U.S. nexus for infringement purposes as well as for damages calculations.”
Intel contended this interpretation was “absurd” because it contradicts the stipulation’s statement that
[b]y entering into this agreement, neither party makes any admission about patent infringement or noninfringement, validity or invalidity, or damages.
Said the court:
…[S]tipulating to a fact relevant to infringement, such as U.S. nexus, is not tantamount to an admission about infringement itself. To prove infringement, VLSI still had to show Intel’s accused products and activities met the claims’ non-geographic, technical requirements. We see no absurdity in such an attempt to simplify litigation given the stipulation was entered into early in the case when there were eight patents at issue and scores (if not hundreds) of accused products with varying levels of U.S. nexus… Even if this strategic choice proved unwise in retrospect, we decline to look past the clear language of the stipulation to ‘rescue’ Intel from its decision to ‘freely enter[]’ an agreement ‘which it later finds to be imprudently made.’
Bottom line: Be careful what you stipulate to, as it can come back to bite you!
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