CAFC Affirms ITC Denial of Broadcom’s Request for Ban on Renesas Products Under Section 337

“The CAFC agreed with the ITC that ‘an actual article protected by the patent is needed to meet the industry requirement.’ Without an actual article, Broadcom posited only a ‘hypothetical device.’”

ITC - https://depositphotos.com/229492118/stock-photo-word-phrase-affirm-dictionary-highlighted.htmlOn March 8, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed decisions by the International Trade Commission (ITC or the Commission) and the Patent Trial and Appeal Board (the Board or PTAB) 1) declining to ban Renesas Electronics Corporation and other companies from importing into the United States products alleged to infringe upon Broadcom Corporation’s two patents; and 2) finding certain claims of Broadcom’s patents obvious.

Broadcom filed a complaint at the Commission alleging a violation of 19 U.S.C. § 1337 (Section 337) based on the importation of products by Renesas and other companies that are asserted to infringe U.S. Patents 7,437,583 and 7,512,752.

Broadcom’s ’583 patent is “directed to reducing power consumption in computer systems by ‘gating’ clock signals with circuit elements to turn the signals ON and OFF for downstream parts of the circuit.” The ’752 patent is “directed to a memory access unit that improves upon conventional methods of requesting data located at different addresses within a shared memory.”

Procedural History

In a final initial determination, the administrative law judge (the ALJ) held that Broadcom failed to demonstrate a violation of Section 337 with respect to the ’583 patent because it failed to satisfy the technical prong of the domestic industry requirement and because there was no infringement of claim 25. For the ’752 patent, the ALJ held that claim 5 would have been unpatentable as obvious over certain prior art. The parties then filed petitions seeking Commission review, and the Commission affirmed the relevant portions of the final initial determination. (Decision I)

Renesas also petitioned for inter partes review of the ’583 and ’752 patents. In two decisions, the Board held that claims 25 and 26 of the ’583 patent and claims 1, 2, 5, 7, and 8 of the ’752 patent would have been obvious over the prior art, but that Renesas failed to demonstrate by a preponderance of the evidence that claims 17 and 18 and 20–24 of the ’583 patent would have been obvious. (Decision II and Decision III)

Consolidated Appeals

Broadcom and Renesas filed separate appeals to decisions by the Commission and the Board related to the ’583 and ’752 patents. The CAFC then consolidated the appeals because of the overlap in subject matter and legal arguments.

Regarding the ’583 Patent, the CAFC:

  • affirmed the entirety of the Board’s holding; and
  • affirmed the Commission’s holding that there was no Section 337 violation because there was no domestic industry and did not address the infringement portion of the Commission’s opinion as it is moot in light of its domestic industry affirmance.

Regarding the ’752 Patent, the CAFC:

  • affirmed the entirety of the Board’s holding and did not address the portion of the Commission’s opinion addressing claim 5, as it is moot in light of its affirmance of the Board’s determination of obviousness of claim 5 of the ’752 patent.

A chart showing the claims that the PTAB and the Commission and the subsequent CAFC decisions is shown below.

The ’583 Patent

The ITC Section 337 Decision

On appeal, Broadcom asserted the Commission erred in finding that there was no Section 337 violation because Broadcom failed to satisfy the technical prong of the domestic industry requirement.

The ALJ held, and the Commission agreed, that Broadcom failed to demonstrate that its system-on-a-chip (SoC) satisfied the technical prong of the domestic industry requirement in Section 337 because the SoC did not include a “clock tree driver,” which is required by claim 25. It found that the driver must be stored on an external memory, separate from the SoC. Broadcom responded and argued that it satisfied the technical prong of the domestic industry requirement because “it collaborates with its customers to integrate its SoC with external memory to enable retrieval and execution of the ‘clock tree driver’ firmware. However, the ALJ faulted Broadcom for failing to identify any specific external memory that contained the ‘clock tree driver,’ and noted that an actual article protected by the patent is needed to meet the industry requirement.” Without an actual article, Broadcom posited only a “hypothetical device.”

The CAFC agreed with the Commission and added that “a complainant must ‘show that there is a domestic industry product that actually practices’ at least one claim of the asserted patent.” The CAFC held 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. Instead, it introduced new theories that the Commission properly deemed waived because Broadcom did not raise these theories in the ALJ proceedings. Therefore, the CAFC affirmed the Commission’s finding of no domestic industry.

The Board Decision

Claim 17 requires software control of a clock gate. The CAFC agreed with the Board’s decision that the combined teachings of Kiuchi and Van Hook do not render obvious a “processor that determines a status of at least one [clock] gate.” Kiuchi describes a system that controls clock gates and discloses a device with multiple clock gate circuits used to control the flow of clock signals. Van Hook discloses a system with a main processor that halts a signal processor via a status register.

The CAFC found Kiuchi does not teach a “processor that determines a status of at least one [clock] gate” and thus, this limitation in claim 17 must be taught by Van Hook or the combination of the prior art sources.

However, the CAFC ruled that Van Hook does not disclose stopping a gate clock, and the halting discussed in Van Hook is related to checking or setting a processor’s operational status. Additionally, the CAFC stated that a skilled artisan’s field of endeavor is “power management and processor clock control,” but Van Hook relates instead to processor performance, so a skilled artisan would not have been motivated to combine the references. Thus, the CAFC affirmed the Board’s holding of nonobviousness of claim 17 and its dependent claims.

Claim 25 requires “a hybrid of hardware and software control in which the software overwrites the status of a gate set by the hardware.” The CAFC found that the plain text of Alben and Fallah discusses clock gating for power management and each of the elements of claims 25 and 26. Specifically, “(1) Alben discloses a hybrid approach to power management in which a hardware control unit directly controls clock gates and software running on a processor and at least indirectly overwrites clock gates’ status to OFF or ON; [and] (2) Fallah teaches that it was well known that hardware and software could directly control power management, including through clock gating, and describes well-known tradeoffs of hardware and software approaches.”

Additionally, Alben and Fallah are directed to the same field of art and Fallah discusses the tradeoffs in power management between software and hardware. Thus, a skilled artisan would have been motivated to combine these references.

Although Broadcom argued on appeal that the Board erred in not discussing a reasonable expectation of success, Broadcom never raised that issue before the Board. Now, it cannot show that the Board erred on that issue because the Board’s scheduling order stated that “any arguments not raised in the response may be deemed waived,” said the CAFC.

The ’752 Patent

Independent claim 1 relates to a memory access unit for accessing data for a module. The Board found claim 1 obvious over Foster. On appeal, Broadcom argued that the Board improperly combined Foster’s embodiments “disclosing an external memory controller with those disclosing an internal memory controller.” The CAFC agreed with the Board that Foster’s disclosure of “an output port” and “a queue” are directed to the same invention, shown by its figures and corresponding texts.

The CAFC also upheld the Board’s finding that dependent claim 5 is obvious over Foster. Foster discloses “a memory access system that reorders and optimizes received requests based on characteristics of the requests, including the requested data size.”  In addition, the CAFC agreed Board did not confuse Foster’s input and output requests. The Board found that “Foster discloses generating access requests based on the sizes of the requests for blocks of pixels.” There is no dispute that “requests for blocks of pixels” means input requests because these requests are received at the input port. Thus, in light of the substantial evidence, the CAFC affirmed the Board’s decision of obviousness.

Image Source: Deposit Photos
Image ID:229492118
Copyright:sharafmaksumov 

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