Federal Circuit IP

VLSI Tech. LLC v. Intel Corp.

By Samuel Thacker Published January 10, 2024

CAFC Opinion No. 2022-1906, Decided December 4, 2023

(Lourie, Dyk, Taranto)


Overview: $2.2 billion jury verdict overturned: jury’s infringement finding reversed for one of the two asserted patents, jury’s damage award vacated and remanded for the other asserted patent.

Facts/Procedural Posture:

  • VLSI (an NPE) sues Intel in W.D. Texas for infringing two patents: the ’759 and ’373 patents.
  • Jury finds that Intel infringes both patents; awards $1.5 billion in damages for the ’373 patent, $675 million for the ’759 patent.
  • Judge Albright denies Intel’s motions for a new trial based on a flawed damages analysis.
  • Intel appeals.

Issues on Appeal:

  1. Whether the jury’s infringement findings were supported by substantial evidence; and
  2. Whether it was an abuse of discretion for Judge Albright to deny Intel’s motions for new trial based on the flawed damages analysis.

Holdings & Orders[1]:

  • ’373 patent: Panel remands for new trial on damages. Panel affirms jury’s infringement finding but finds Judge’s Albright’s denials of Intel’s motions for new trial were an abuse of discretion because the error in the underlying damage analysis was not harmless.[2]
  • ’759 patent: Panel reverses jury’s infringement finding because VLSI’s DOE theory fails as a matter of law.

Fed. Cir. Analysis:

  • ’373 patent:
    • Jury’s damage award based on comparable-license analysis, which requires identifying the incremental value of the patented technology over non-infringing alternatives.
    • VLSI’s expert, however, calculated the damage award based on both infringing and non-infringing functionality in the accused devices.
    • This error was not harmless at least because there was evidence that the non-infringing functionality had a significant impact on the accused product’s value (speed).
  • ’759 patent:
    • Jury had found infringement only under DOE, no literal infringement.
    • VLSI failed to provide a sufficient showing under DOE’s function-way-result test.
      • Specifically, VLSI’s expert failed to explain the “way” portion of the test.
        • Claims require one hardware component perform a request function and a different component performs receipt and output functions, i.e., separate hardware components for separate functions.
        • In Intel’s accused product, the request function is performed by two hardware components, one of which also performs the receipt and output functions, i.e., one hardware component performs all three functions.
        • VLSI’s expert did not explain why Intel’s approach performed the claimed actions in substantially the same way, instead alleging only that it was a “design choice.”


  • For defendants:
    • Always move for new trial when there might be a flaw in the damage analysis.
  • For plaintiffs:
    • Make sure damage analyses are based on aspects of the accused device that actually infringe.
    • Be sure to fully explain the function-way-result analysis when relying on DOE; don’t shortcut the analysis using “design choice” arguments.

[1] Also at issue was whether the D. Ct. erred in denying Intel’s motion to add a license defense. The panel held the D. Ct.’s denial to be an abuse of discretion and remanded for further litigation on this license defense.

[2] See Summit 6, LLC v. Samsung Electronics Co., 802 F.3d 1283, 1295–96 (Fed. Cir. 2015); VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1328 (Fed. Cir. 2014).