Parallel Actions Fail to Efficiently Resolve Patent Dispute

Patent owner faces another hurdle to relief after an ITC proceeding, PTAB trials, and an appeal to the Federal Circuit

Broadcom Corp. became involved in a patent dispute after suing Renesas Electronics Corp. and others for infringement of patents in the Eastern District of Texas and at the U.S. International Trade Commission (ITC). Renesas responded with petitions to the U.S. Patent Trial and Appeal Board.

The ITC and PTAB issued final written decisions, and both sides appealed three decisions to the Federal Circuit. The Federal Circuit affirmed all of the decisions (to the extent that issues were still live in view of other affirmances).

The net result is that two claims of one of Broadcom’s patents (claims 17 and 18 of U.S. Patent 7,437,583) were found valid. In an inefficient duplication of effort, the ITC and PTAB both agreed that the two claims were non-obvious. The Federal Circuit looked at both validity decisions and did not disturb those holdings.

Renesas did not challenge the ALJ’s findings before the ITC that its products infringe those two claims. But Broadcom was denied relief at the ITC because it failed to identify a “domestic industry product” properly. Broadcom identified one of its own chips as a relevant domestic industry product but that chip needed firmware loaded onto a companion chip in a system to operate in the manner claimed. Because Broadcom only belatedly identified a system with those capabilities, it failed to prove it a protectable domestic industry relating to the infringed patent.

Thus, after all of these proceedings, Broadcom will have to proceed before the district court, a case which appears to have been stayed pending resolution of the ITC case. As the district court action does not require a domestic industry to obtain relief, Broadcom may continue to press its infringement case of claims found to be valid.