Patent office rules in favour of Intel in VLSI patent case

Patent office rules in favour of Intel in VLSI patent case

15. June 2023 by Andrew Williams

The US Patent Office recently ruled in favour of Intel in a case involving VLSI patents. VLSI claims that Intel infringed several patents that were actually filed by other companies. The case has been going on for quite a while, but Intel has taken another step forward.

The U.S. Patent Trial and Appeal Board, or PTAB, ruled in Intel’s favour this week, invalidating one of VLSI’s patents at the heart of the $2.18 billion patent infringement verdict from 2021. The important decision follows the invalidation of another VLSI patent that was part of the same ruling in May.

Patent infringement?

Two years ago, a district judge in Texas, sided with VLSI and awarded a $2.18 billion payment for patent infringement: $1.5 billion for a patent that SigmaTel holds and is about frequency management (“759”) and $675 million for a memory voltage reduction patent originating from Freescale (“373”).

Intel appealed the decision, but was unable to overturn it in August 2021, so Intel turned to the PTAB to have both patents declared invalid. “We hold that [Intel] has demonstrated by a preponderance of the evidence that the challenged claims are unpatentable,” a decision by the U.S. Patent Trial and Appeal Board said.

VLSI and Intel in litigation over 19 patents.

The Patent Trial and Appeal Board’s decisions may relieve Intel from paying VLSI for alleged infringement of its ‘759 and ‘373 patents. Meanwhile, VLSI, which has brought numerous patent infringement cases against Intel, has the right to appeal the PTAB’s decisions to the U.S. Court of Appeals for the Federal Circuit. VLSI and Intel are currently engaged in extensive litigation in numerous courts in the U.S. and abroad. VLSI claims that Intel has infringed 19 patents originally held by SigmaTel, NXP and Freescale.

While some of these claims have been rejected by jury verdicts, some of these cases remain unresolved. In December 2022, the two companies agreed to settle their $4 billion patent dispute in Delaware. However, in November 2022, a Texas federal court ruled that Intel must pay VLSI nearly $949 million in damages for infringing its patent 7,242,552, which covers a technique for mitigating problems caused by bond pad loading. Although it looks like Intel is winning its legal battle with VLSI, the fight is not over.