July 13, 2024


Advocacy. Mediation. Success.

Domestic Industry and Hindsight Bias

by Dennis Crouch

Broadcom Corp. v. ITC (Fed. Cir. 2022)

Broadcom petitioned the ITC to halt imports by Renesas Electronics (and many others) simply because they infringe two Broadcom patents:

  • US7512752, claims 1, 2, 5, 7, 8: memory accessibility device with strengthen access to shared memory.
  • US7437583, claims 17–18, 25–26: gating clock alerts to decrease energy use.

But, the ITC sided completely with Renesas:

  • For the &#8216583 patent, the ITC discovered no &#8220domestic sector&#8221 to secure &#8211 a prerequisite for USITC action. In particular, Broadcom was unable to present any accredited domestic use of the creation as claimed. In addition, the ITC identified no infringement of statements 25-26.
  • For the &#8216752 patent, the ITC uncovered infringement of claim 5, but concluded that claim 5 was invalid as evident. (In a parallel IPR proceeding, the PTAB also located assert 5 apparent).

On attraction, the Federal Circuit consolidated the ITC case with the IPR appeals and has affirmed in favor of Renesas.

Domestic Marketplace: The International Trade Commission (ITC) is a branch of the U.S. authorities whose part is the protection of domestic sector against overseas overreach.  As component of its part, a patentee can complain to the ITC about infringing imports.  A prerequisite for these Part 337 instances is the existence of a domestic sector to guard.

[ITC powers over infringing imports] use only if an field in the United States, relating to the articles or blog posts guarded by the patent, copyright, trademark, mask do the job, or structure concerned, exists or is in the course of action of currently being founded.

19 U.S.C. § 1337(a)(2).  Consequently, the statute needs &#8220an market in the United States, relating to the content shielded by the patent&#8221 getting asserted.  The patentee can confirm that the domestic business previously exists by pointing to precise goods in the US industry that apply at minimum one particular claim of the asserted patent.  Of system, small domestic gross sales do not equate to &#8220an field.&#8221 Instead, the regulation also requires a showing that the patentee has made significant/sizeable expenditure in equipment, labor, engineering, analysis and enhancement, and/or licensing. 19 U.S.C. § 1337(a)(3).

Right here, Broadcom pointed to its system-on-a-chip (SoC) in serving the domestic market for the &#8216583.  Nevertheless, Broadcom&#8217s chips do not contain a &#8220clock tree driver&#8221 expected by all statements of the patent, and the ITC found no domestic sector.  Broadcom generally argued that facet of the patent was integrated by shoppers. Nevertheless Broadcom did not point to any precise scenarios of these types of integration.  But, generalities regarding the domestic business are inadequate. The court defined:

As in Microsoft, Broadcom failed to detect any precise integration of the domestic business SoC and the “clock tree driver” firmware, or a distinct locale wherever the firmware was stored. [And therfore] the Commission’s acquiring that Broadcom failed to fulfill the domestic marketplace necessity of Section 337 was supported by significant proof.

Slip Op.  Immediately after dropping ahead of the ALJ, Broadcom extra even further proof pointing to a certain procedure.  Even so, the ITC and CAFed both of those concluded that new argument had been waived.

Broadcom was able to demonstrate a domestic field for the &#8216752 patent, but the court also affirmed the PTAB results that the asserted statements were invalid.  The court&#8217s only serious quibble was with regard to grammar. In a footnote, the court explained:

The Board and Commission decisions refer to what “is” evident. Since § 103 addresses what “would have been” clear, we suggest utilization of the statutory language that appears back again to the previous in purchase to steer clear of the appearance of hindsight bias.

Slip Op. at Observe 2. I examine by means of the ITC determination and discovered the adhering to line that seems to have lifted Choose Lourie&#8217s ire: &#8220[T]he document proof thoroughly supports the FID’s finding that assert 8 is apparent around Foster alone.&#8221 [ITC Decision – 711340-1540697].   I also read by the PTAB decisions, but could not obtain any parallel offensive statements.  Fairly, the PTAB was very careful to frequently recite the line &#8220would have been evident.&#8221  The PTAB did conclude that every single problematic declare &#8220is unpatentable below 35 U.S.C. § 103(a) as obvious.&#8221  Having said that, that statement does not show up problematic to me.

As with most grammar, Choose Lourie&#8217s feeling has some rational foundation but will have the main consequence of preserving self-glad insiders. The Supreme Court docket as a non-patent court doesn&#8217t appear to treatment. Guess what the Court docket wrote in the major obviousness case of the earlier 50 many years: &#8220THE Mix IS Obvious.&#8221 KSR (2007)