$2 billion verdict in Judge Albright’s Courtroom

VLSI Technology LLC v. Intel Corp. (W.D. Tex. 2021)

The jury just returned in Judge Albright’s first patent trial of 2021. The result: $2.18 Billion Dollars to VLSI for Intel’s infringement.  The patents were previously owned NPX Semiconductors, who obtained them by buying up Freescale Semiconductor and SigmaTel.  NPX will apparently still receive a cut of the revenue – if the decision withstands both the JMOL motions and appeals. [Intel Jury Verdict]

U.S. Patent Nos. 7,523,373 and 7,725,759.

37 thoughts on “$2 billion verdict in Judge Albright’s Courtroom

  1. 10

    One firm has commented that Intel waited for 10 months after getting its complaint to petition for an IPR, and that doing so sooner might have avoided discretionary PTO IPR institution denial on Fintiv factors.

    1. 10.1

      At least for the ‘759 IPR, it seems like Intel filed promptly after final contentions were exchanged, and that VLSI consistently refused to undertake any meaningful claim narrowing (presumably there’s nothing in the WDTX local rules that requires doing so), so I’m not sure what else Intel really could have done about the situation.

  2. 9

    Claim 1 of the ‘373 is shown below. The claim does not require that the “second regulated voltage” be greater than the “minimum operating voltage” (MOV). Instead, it merely requires that the “second regulated voltage” (SRV) be greater than the “first regulated voltage” (FRV), and that the SRV be provided to the memory when FRV is < MOV.

    So it seems to me that an embodiment where FRV *and* SRV are both SRV > FRV) is within the literal scope of the claims. Naturally, such an embodiment is non-functional inasmuch as the memory won’t operate below MOV.

    Is the full scope of claim 1 enabled since it ensnares embodiments that are non-functional?

    A method, comprising:
    providing an integrated circuit with a memory;
    operating the memory with an operating voltage;
    determining a value of a minimum operating voltage of the memory;
    providing a non-volatile memory (NVM) location;
    storing the value of the minimum operating voltage of the memory in the NVM location;
    providing a functional circuit on the integrated circuit exclusive of the memory;
    providing a first regulated voltage to the functional circuit;
    providing a second regulated voltage, the second regulated voltage is greater than the first regulated voltage;
    providing the first regulated voltage as the operating voltage of the memory when the first regulated voltage is at least the value of the minimum operating voltage; and
    providing the second regulated voltage as the operating voltage of the memory when the first regulated voltage is less than the value of the minimum operating voltage, wherein while the second regulated voltage is provided as the operating voltage of the memory, the first regulated voltage is provided to the functional circuit.

    1. 9.1

      A nice technical analysis is always welcome. What you say appears to be correct, but I’m having a little trouble following the logic (no pun) of the second paragraph. Did you mean that, it’s possible to have an embodiment where FRV FRV remains true, SRV FRV requirement was cited specifically to overcome a 103 rejection, but the discussion was minimal and not very illuminating. The claims were allowed after that.

      Some other odd things about the claim are (i) there is no destination for where the SRV is being provided either at Step 8 or in the event Step 9 is followed, and (ii) providing FRV to the functional circuit at the last step would seem redundant because that already happens unconditionally at Step 7.

      1. 9.1.1

        Ugh. The math notation got mistaken for HTML and garbled my first and second paragraphs and combined them into an incoherent jumble like Brundefly. That probably explains what happened to Muridae’s comment too. It’s not exactly Muphry’s Law in action, but it’s comparable.

        What I meant to say in the first paragraph was essentially: I do agree that you could seemingly have a situation where FRV -lt MOV, thus invoking the last step and using SRV, but even though SRV -gt FRV is maintained, SRV is also -lt MOV, so the embodiment is inoperable.

        Likewise, the second paragraph in essence was: I don’t see anything particularly enlightening about these aspects of the claim in the Markman order or the file history; for the latter, the SRV -gt FRV requirement was part of an amendment to overcome (successfully) a 103 rejection, but the discussion was almost nonexistent.

        Finally, in the process of “repairing” this comment, I had occasion to look at the Markman briefing too. VLSI’s brief describes the ‘373 as “providing a minimum operating voltage to a memory even when a dynamic voltage and frequency state selected by the processor calls for a voltage that is lower than that minimum operating voltage.” So I think a possible counter to the inoperability argument would be, given that MOV is established for the memory, it applies to SRV in addition to FRV, and SRV isn’t allowed to undershoot MOV either. Otherwise it seems a little pointless to have something called MOV in the first place.

  3. 8

    From what I read, Intel’s lawyer argued, , in essence, the patents were old. Really? That’s your argument? Maybe time to get new counsel.

    1. 8.1

      I’m not sure what materials you’re referring to—so feel free to share—but it seems fine to include a theme like that in the broader array of arguments.

      For noninfringement you could argue that nobody, including the accused infringer, would use the claimed technology because its obsolete and superseded by more advanced techniques. In a similar vein for NI you could argue that it wouldn’t make sense to start using the technology so many years after the fact—in other words, if the claimed invention were so critical, adoption would have happened right away. Likewise for damages you could argue that it’s not a valuable technology because it’s fallen out of favor long ago and nobody uses it.

      Of course there are counterarguments. For example, the technology is so foundational and important that people have to keep relying on it many years after the invention. And certainly having “old” patents would seem helpful on the validity front.

      1. 8.1.1

        Another counter could be that any advances merely stand on the shoulders of the noted advance (and do not excuse infringement of that older advance).

        Advances (and patent protection thereof) do NOT provide a positive right to practice, especially in view of a pre-existing negative right.

        An advance of a better mousetrap that still relies on a (negatively) protected older mousetrap is not a license to disregard any affects of positively practicing the advanced mousetrap.


          That’s another very fine counterargument. I’m sure additional ones are available too. But again, the main point is that there’s nothing inherently wrong that I can see with including such a theme among the array of arguments a defendant might make. I would imagine that happens on a fairly regular basis. But maybe allison can fill us all in with some important details of this case that we’re overlooking.

  4. 7

    VLSI is owned by Fortress, which in turn is part of the SoftBank Group.

    Intel and Apple separately have an antitrust case going against Fortress in NDCal.

  5. 6

    It’s amazing what happens when the a judge with no black robe fever allows a case actually go to a jury.

    1. 6.1

      Is your “black robe fever” related to the malaise of “asserting patents must be bad?”


          Well, to play off the naysayers then, that does sound like some pretty good “advertisement.”

  6. 4

    IPR’s were denied based on discretionary factors due to WDTX proceedings between the same two parties.

    If I were to file the exact same IPR petition intel filed, how much do you think VLSI would pay me to settle and go away, considering it would be few billion $$ at risk?

    1. 4.1

      Sounds like a good business plan to me, and I don’t see any illegality challenge, assuming you are doing it yourself and paying your own IPR costs and fees [clearly independent RPI]. But, will a PTAB panel apply its now-unrestricted and widely-applied discretionary institution denial power to block your IPR for the same reason – that validity has already to be D.C. decided [even though that validity decision is not binding on you]?

      1. 4.1.1

        I was not being entirely serious ksksksks [by assuming this was about claims to complex VLSI chip construction, and hard to challenge]. But per a quick look, the oldest of these two patents is about comprehensible chip voltage supply regulation.


          By the way ksksksk, for your IPR, rather than just using prior art from the litigation, check the possible relevance for the first patent of descriptions that came with, e.g., the Radio Shack alarm clock I bought many, many years ago. It runs off house power unless that voltage input drops for any reason, and then the time circuit memory part of it is automatically powered by an alternate voltage supply from a battery.

    2. 4.2

      To Paul’s point, “exact same” may not bring you the fruit that you think it might.

    1. 2.1

      Indeed Ben, the rush of patent suit filings in the Waco West TX should further increase.
      BTW, Dennis indicates this is “Judge Albright’s first patent trial of 2021.” I wonder if it is not one of his first completed [not settled] patent trials period? [He was not appointed all that long ago by Trump, and Covid-19 has delayed many trials.] Does anyone know of others?
      This case, with that judgment, will surely get full attention from the Fed. Cir., especially after their two recent mandamus decisions against this same one-judge court.
      If sustained it should set a new record for infringement damages recovery. Polaroid v. Kodak was a mere one Billion, and in a suit on 12 patents.

      1. 2.2.1

        In case you forgot, this is the judge who “has been explicitly advertising his district—through presentations to patent lawyers, comments to the media, procedures in his courtroom, and decisions in patent cases—as the place to file your patent infringement lawsuit”, according to a prior Patently-O post.

        link to patentlyo.com

    2. 2.3

      Also, “advertisement” implies commercial gain and motivation.

      It may be that the judge is merely treating the patent owner fairly.

      1. 2.3.1

        In of the thread linked to in this post’s 2.2.1, you said:

        “a judge that isn’t a crim like most of the judges now has to advertise that they are honest.”

        Does that “advertise” imply commercial gain?


          Not in the context with which I used “advertise” but the context with which you used “advertisement” to imply more.

          Unless you want to directly refute that.


            I did not mean to imply commercial gain on the judge’s part. We don’t all engage in evidenceless accusations against federal judges (for example, asserting that they have personality disorders).


                Ben is FOS. He is constantly making accusations with little inferences and then denies it.

                He is like dealing with MM. A constant irritant that constantly puts out there false statements that you have to refute or risk some newbie believing.

                1. +1

                  He has denied it, but there is every reason to believe that he is the very same Ben that upvoted everything that Malcolm posted back in the days when this blog experimented with the format that provided the ability to upvote and downvote (as well as the ability to co-locate posts by the same person).


              Ben >>evidenceless accusations against federal judges (for example, asserting that they have personality disorders).

              You are just filled with little innuendos and accusations.

              The judge to whom I refer to as having a “personality disorder” is one with which I have had personal experiences one-on-one with. So it is not “evidenceless”. And, I know lots of people that have worked with her that have all pretty much said the same thing.

  7. 1

    I think you mean NXP, but this verdict is still wild. Morgan Chu delivering another win.

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