Intel Corporation v. Tela Innovations, Inc.

Background

In an earlier order, the court granted Intel summary judgment that three products did not literally infringe asserted claims of five Tela patents: U.S. Patent Nos. 7,943,966, 7,948,012, 10,141,334, 10,141,335, and 10,186,523. The court found that the products lacked required diffusion regions and also did not literally infringe claims requiring contact structures or gate contact structures. The court did not address infringement under the doctrine of equivalents because Tela had not timely obtained permission to add that theory.

The court also granted Intel summary judgment that the ’334 and ’335 patents were invalid for inadequate written description and failure to enable. It granted Tela summary judgment on Intel’s claims based on a covenant not to sue. The court did not resolve the parties’ evidence-dependent inventorship dispute on summary judgment.

Four days before the earlier summary-judgment order, Tela filed a new complaint at the International Trade Commission alleging violations involving Intel’s products and one of the patents. The Commission instituted an investigation and directed its administrative law judge to quickly determine whether the new allegations were barred by claim preclusion, issue preclusion, or the patent-specific Kessler doctrine.

Injunctive Relief

Intel sought a preliminary or permanent injunction barring Tela from asserting that the products infringed the patents, including in the new Commission investigation. The court treated the request as one for a permanent injunction because the noninfringement ruling had been resolved and was being entered as a judgment under Federal Rule of Civil Procedure 54(b).

The court held that it had authority, in appropriate circumstances, to bar later patent-infringement assertions after a finding of noninfringement. But it denied Intel’s injunction motion. The court reasoned that preclusion issues are generally decided by the second tribunal, and the Commission had already directed its administrative law judge to address those issues promptly. Intel did not show sufficient irreparable injury, and the balance of hardships and public interest did not favor interrupting the Commission’s process. The court found that Intel’s concerns about litigation and a possible exclusion order were insufficient on these facts and premature in light of the Commission’s planned preclusion analysis.

The court clarified that its earlier statement that the doctrine of equivalents was not at issue meant Tela had failed to timely add that theory in this case. The court did not decide whether the new Commission proceeding was precluded; it left that issue for the Commission’s process.

Certification for Appeal

The court granted the parties’ requests to certify the summary-judgment determinations under Rule 54(b), which permits entry of judgment on fewer than all claims when there is no just reason for delay. The certified matters were: (1) Intel’s declaratory-judgment claims for noninfringement; (2) Tela’s infringement claims; (3) Intel’s claims based on the covenant not to sue; and (4) Intel’s claims concerning invalidity or unenforceability of the ’334 and ’335 patents.

The court found those determinations final because they conclusively resolved the claims involved. It concluded that immediate certification would promote efficiency by allowing the Federal Circuit to address infringement and related issues before the remaining claims were tried.

Stay of Remaining Claims

The court granted Tela’s motion to stay the remaining unsettled claims pending appeal. The court specifically found that staying the nondisclosure-agreement claims was efficient because they substantially overlapped factually with the patent issues. It also stayed the inventorship claims because resolving them before the appeal would be wasteful and would involve factual overlap with issues that might be tried if the Federal Circuit reversed the noninfringement rulings.

The stay applies until the Federal Circuit’s mandate issues, although either party may seek to end it sooner for good cause based on changed circumstances. After the mandate, the parties must request a case-management conference and propose a new pretrial and trial schedule within 21 days.

Sealing and Moot Motions

The court granted the parties’ motions to seal or redact specified confidential business, financial, licensing, and medical information. It found the requests narrowly tailored and concluded that disclosure could cause competitive or personal harm. The court dismissed as moot the parties’ motions in limine and Intel’s motion for leave to file a supplemental motion in limine. The remainder of Intel’s motion was denied as moot in light of the certification and stay.

Disposition

Tela’s motion for certification and a stay was granted. The claims that were not certified were stayed. Intel’s motion for injunctive relief was denied, and the remainder of Intel’s motion was denied as moot. The classification here concerns this order’s rulings on injunctive relief, appeal certification, stays, sealing, and moot motions—not the merits rulings made in the earlier summary-judgment order.