VLSI Technology LLC v. Intel Corporation

Background

VLSI sued Intel for allegedly infringing eight patents. By the time of this order, four patents remained relevant: U.S. Patent Nos. 8,566,836, 8,004,922, 7,675,806, and 8,268,672.

On December 7, 2023, the court granted Intel summary judgment—judgment without a trial when the court finds no genuine dispute requiring a trial—on non-infringement of the asserted claims of the ’836 and ’922 Patents. The court also found the ’922 Patent invalid. It denied Intel’s motion for summary judgment on non-infringement of the ’806 and ’672 Patents.

The court had previously denied both parties’ motions for summary judgment on Intel’s license defense and had determined that the defense should be decided at trial based on whether VLSI and certain Finjan entities were under common control of Fortress Investment Group. VLSI later gave Intel an unconditional covenant not to sue concerning the ’806 and ’672 Patents and dismissed all claims relating to those patents.

Intel’s Request and the Mootness Issue

Intel asked to proceed to trial on its affirmative defense that it was licensed to use the Asserted Patents. An affirmative defense is a defense that avoids liability even if the plaintiff proves its claim. Intel did not assert the license theory as a counterclaim.

Intel argued that the court retained jurisdiction because its summary-judgment ruling was interlocutory, meaning it was not yet a final judgment ending the entire case. Intel also relied on cases allowing courts to consider alternative grounds, argued that VLSI intended to continue asserting the ’836 and ’922 Patents on appeal, and argued that the court retained jurisdiction to decide a possible attorney-fee request under 35 U.S.C. § 285.

VLSI argued that the license defense was moot. Mootness means that no live dispute or legally meaningful interest remains for the court to decide. VLSI also argued that the court lacked jurisdiction over the defense after the summary-judgment rulings and the covenant not to sue and dismissals concerning the other two patents.

Court’s Reasoning

The court agreed with VLSI that findings of non-infringement generally moot affirmative defenses, including license defenses. After the court’s rulings and VLSI’s covenant not to sue and dismissals, the ’836 and ’922 claims had been resolved, while the ’806 and ’672 claims had been dismissed. The court concluded that no live claims remained in this case.

The court rejected Intel’s argument that ongoing related litigation or a possible appeal required a trial now. If the Federal Circuit later sent either patent back to the district court and the license defense remained unresolved, the district court could address it then. The court also rejected relying on the possibility of reconsidering its summary-judgment ruling because no reconsideration motion was pending. It further concluded that jurisdiction to consider attorney fees did not create jurisdiction over the moot license defense.

The court distinguished cases involving counterclaims, alternative grounds decided while a case remained live, or circumstances in which no non-infringement order had yet been entered. The court also disagreed with VLSI’s separate argument that Intel could not seek to amend its answer, explaining that Intel could seek to amend the scheduling order upon a showing of good cause and with the judge’s consent.

Disposition

The court held that Intel’s license defense concerning the ’836 and ’922 Patents was moot. It ordered that Intel’s request to proceed to trial on its affirmative defense that it was licensed to use the Asserted Patents was DENIED.