by Dennis Crouch
Broadcom Corp. v. ITC (Fed. Cir. 2022)
Broadcom petitioned the ITC to halt imports by Renesas Electronics (and others) because they infringe two Broadcom patents:
- US7512752, claims 1, 2, 5, 7, 8: memory access unit with improve access to shared memory.
- US7437583, claims 17–18, 25–26: gating clock signals to reduce power consumption.
But, the ITC sided fully with Renesas:
- For the ‘583 patent, the ITC found no “domestic industry” to protect – a prerequisite for USITC action. In particular, Broadcom was unable to show any licensed domestic use of the invention as claimed. In addition, the ITC found no infringement of claims 25-26.
- For the ‘752 patent, the ITC found infringement of claim 5, but concluded that claim 5 was invalid as obvious. (In a parallel IPR proceeding, the PTAB also found claim 5 obvious).
On appeal, the Federal Circuit consolidated the ITC case with the IPR appeals and has affirmed in favor of Renesas.
Domestic Industry: The International Trade Commission (ITC) is a branch of the U.S. government whose role is the protection of domestic industry against foreign overreach. As part of its role, a patentee can complain to the ITC about infringing imports. A prerequisite for these Section 337 cases is the existence of a domestic industry to protect.
[ITC powers over infringing imports] apply only if an industry in the United States, relating to the articles protected by the patent, copyright, trademark, mask work, or design concerned, exists or is in the process of being established.
19 U.S.C. § 1337(a)(2). Thus, the statute requires “an industry in the United States, relating to the articles protected by the patent” being asserted. The patentee can prove that the domestic industry already exists by pointing to actual products in the US market that practice at least one claim of the asserted patent. Of course, minimal domestic sales do not equate to “an industry.” Rather, the law also requires a showing that the patentee has made significant/substantial investment in equipment, labor, engineering, research and development, and/or licensing. 19 U.S.C. § 1337(a)(3).
Here, Broadcom pointed to its system-on-a-chip (SoC) in serving the domestic industry for the ‘583. However, Broadcom’s chips do not include a “clock tree driver” required by all claims of the patent, and the ITC found no domestic industry. Broadcom generally argued that aspect of the patent was integrated by clients. However Broadcom did not point to any actual instances of such integration. But, generalities regarding the domestic industry are insufficient. The court explained:
As in Microsoft, Broadcom failed to identify any specific integration of the domestic industry SoC and the “clock tree driver” firmware, or a specific location where the firmware was stored. [And therfore] the Commission’s finding that Broadcom failed to satisfy the domestic industry requirement of Section 337 was supported by substantial evidence.
Slip Op. After losing before the ALJ, Broadcom added further evidence pointing to a particular system. However, the ITC and CAFed both concluded that new argument had been waived.
Broadcom was able to show a domestic industry for the ‘752 patent, but the court also affirmed the PTAB findings that the asserted claims were invalid. The court’s only real quibble was with regard to grammar. In a footnote, the court explained:
The Board and Commission decisions refer to what “is” obvious. Because § 103 addresses what “would have been” obvious, we recommend usage of the statutory language that looks back to the past in order to avoid the appearance of hindsight bias.
Slip Op. at Note 2. I read through the ITC decision and found the following line that appears to have raised Judge Lourie’s ire: “[T]he record evidence fully supports the FID’s finding that claim 8 is obvious over Foster alone.” [ITC Decision – 711340-1540697]. I also read through the PTAB decisions, but could not find any parallel offensive statements. Rather, the PTAB was careful to repeatedly recite the line “would have been obvious.” The PTAB did conclude that each problematic claim “is unpatentable under 35 U.S.C. § 103(a) as obvious.” However, that statement does not appear problematic to me.