Thursday, August 5, 2021

Intel points Judge Albright to developments in Delaware: does the chipmaker have a license defense to the $2.2B patent damages verdict?

VLSI Technologies won a patent infringement trial against Intel in the Western District of Texas in March, and lost (because it failed to establish infringement) another one in April. A third VLSI v. Intel trial has been pushed back from the summer to December.

Judge Alan Albright has not yet entered a final judgment further to the March and April jury verdicts. In the first case (the one with the $2.2B record verdict), Intel is fighting hard and has raised a number of issues in its post-trial motions, demonstrating to the trial court that it can easily be reversed on appeal if it doesn't order a retrial or make similarly impactful decisions now. In the second case, VLSI would like another chance to prevail.

In both cases, Intel filed a "notice of subsequent developments" on Monday (this post continues below the document):

21-08-02 Intel Notice of Su... by Florian Mueller

Intel's legal position is that final judgment cannot enter while a motion to amend its answers and defenses is pending. The critical part appears to be a license defense.

As Intel's notice says, the Silicon Valley company "filed a Complaint in the Delaware Court of Chancery against VLSI Technology LLC ('VLSI'), among others, for equitable and other relief relating to its license rights." That happened in January. VLSI brought a motion to dismiss in March, which was heard in May, with no decision having been entered yet by the Delaware state court.

But there is also some VLSI v. Intel patent infringement litigation pending in Delaware--in the District of Delaware, as patent law is federal law. Like in Texas, Intel also filed a motion to amend its answer and defenses in the Delaware patent infringement case. A United States Magistrate Judge held a motion hearing on July 6, 2021, and what Intel wanted to show to Judge Albright is that the Delaware judge "found that Intel's license defense is not futile."

Here's the relevant excerpt from the hearing transcript (this post continues below the document):

21-08-02 Intel Exh1 Hearing... by Florian Mueller

This here is the key passage from what Magistrate Judge Hall said:

"VLSI argues that Intel should not be granted leave to amend under Rule 15 because Intel's license defense is futile and because VLSI would be prejudiced if Intel is allowed to amend.

"Let's talk about futility first. If a proposed amendment is frivolous or advances a claim or defense that is legally insufficient on its face, the Court may deny a leave to amend.

"VLSI makes two arguments about futility. VLSI's first argument has multiple parts, but essentially it argues that Intel could not possibly have obtained a license to the asserted patents under the Finjan settlement.

"At its core of its argument VLSI points to a number of facts that according to VLSI demonstrate that the agreement did not grant Intel a license.

"However, at this stage and without the benefit of a full factual record, I'm not prepared to say as a matter of law that there was no way that Intel could have obtained a license to VLSI's patents pursuant to that agreement.

"VLSI is free to reraise its challenge to Intel's license defense at the summary judgment stage.

"Turning to VLSI's second argument about futility, it argues that Intel's license defense is futile because Intel has conceded that this Court lacks subject-matter jurisdiction over the license defense.

"I don't see a concession. Intel has maintained that it wants to litigate the license issue in the Court of Chancery, but I don't read that as a concession that this Court lacks subject-matter jurisdiction over Intel's license defense.

"In sum, VLSI has not shown that Intel's defense is frivolous or otherwise legally insufficient on its face. I therefore find that it is not futile at this stage."

If Judge Albright ordered a retrial, the license defense might be adjudicated in Delaware in the meantime. If he decides to enter final judgment, however, he will have to somehow rule on Intel's motion to amend its answer and defenses.

Since Apple's $1B trial win in 2012, which even went up to the Supreme Court (disgorgement of profits for design patent infringement), I can't remember a damages verdict having been challenged like Intel is fighting to get VLSI's $2.2B win vacated. Intel leaves no stone unturned. Meanwhile, the busiest patent court in the world (which gets about 20% of all U.S. patent infringement cases) barely finds the time to enter final judgment.

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