Fed. Cir. Sides with International Trade Commission and Intervenors in Broadcom Infringement Appeal

On Tuesday, the Federal Circuit issued a decision in favor of the U.S. International Trade Commission (ITC) and intervenor Renesas Electronics Corporation and others by affirming both an ITC decision and two rulings by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB). The case stems from Broadcom Corporation’s ITC complaint that Renesas and others infringed its patents through importation of certain products in violation of a Tariff Act provision.

In particular, the dispute concerns two Broadcom-owned patents. U.S. Patent No. 7,437,583 is directed to “reducing power consumption in computer systems by ‘gating’ clock signals with circuit elements to turn the signals ON and OFF for downstream parts of the circuit,” while U.S. Patent No. 7,512,752, directed to a “memory access unit that improves upon conventional methods of requesting data located at different addresses within a shared memory,” the opinion explained.

Broadcom’s ITC allegations were heard by an administrative law judge (ALJ) who ruled that the company failed to demonstrate a violation of the Tariff Act’s “unfair practices in import trade” provision. Broadcom reportedly failed to prove the second prong of the section’s conjunctive requirement: that an industry relating to the patent-protected article exists or is in the process of being established in the United States. The ALJ also found that one claim of the ’752 patent unpatentable as obvious over certain prior art.

The ITC then affirmed relevant portions of the ALJ’s determination. In this week’s decision, the Federal Circuit reviewed and affirmed the ITC’s finding of no Tariff Act violation because Broadcom failed to show the existence of a domestic industry. Specifically, the appellate panel said that it requires companies to show “‘that there is a domestic industry product that actually practices’ at least one claim of the asserted patent” in order to meet the provision’s “technical requirement.”

The panel ruled that Broadcom failed to identify any specific integration of its technology, firmware, or a specific location where the firmware was stored. Further, it did not challenge the ITC’s finding on that point, but instead introduced new theories that the ITC properly deemed waived. The decision also affirmed the PTAB’s two mixed patentability rulings, putting Broadcom and Renesas’ cross-appeals to bed for now.

Before the Federal Circuit, Broadcom was represented by Steptoe & Johnson LLP and Renesas by Morrison & Foerster LLP.