Court Sides With Wilmer, Kenyon & Kenyon in Intel Chip Patent Row

Court Sides With Wilmer, Kenyon & Kenyon in Intel Chip Patent Row Bill Lee of Wilmer Cutler Pickering Hale and Dorr.

The U.S. Court of Appeals for the Federal Circuit has ruled that Intel Corporation’s computer chips don’t infringe on tiny X2Y Attenuators’ patents, dealing a final blow to X2Y’s unlikely bid to block sales of Apple Inc. and Hewlett-Packard Company computers that use the Intel chips.

In a decision issued Monday, the Federal Circuit upheld the U.S. International Trade Commission’s narrow view of the scope of two X2Y patents relating to microprocessor technology. The ruling is game over for the Erie, Pa.-based company, because it already conceded that the trade commission’s claim construction order doomed its patent infringement claims against Intel, Apple and HP. (Apple and HP were roped into the case on a theory that they infringed by incorporating the Intel chips in their computers.)

The ruling is a win for Wilmer Cutler Pickering Hale and Dorr, which represented Intel and HP, and Kenyon & Kenyon, which represented Apple. Wilmer partner William Lee argued the case at the Federal Circuit, squaring off against X2Y counsel John Haynes of Alston & Bird.

X2Y, which has fewer than 10 employees and doesn’t sell its own products, brought the International Trade Commission (ITC) case in 2011. It alleged that Intel’s Core i3, Core i5 and Core i7 chips infringe five of its patents relating to a microprocessor structure that reduces electromagnetic interference. When the ITC heard arguments in the case in 2012, Wilmer partner James Quarles III argued that X2Y’s patent strategy was based on trolling Intel for licensing fees. “The patents are the result of an effort to target Intel … funded by investors who have a stake in the outcome,” Quarles told the ITC in August 2012, according to our affiliate The National Law Journal.

Haynes dismissed that talk as “conspiracy theories” intended to put his client in an unfair light. X2Y has a licensing deal with Samsung Electronics Co., the world’s biggest chip-maker.

Members of Congress from Arizona, New Mexico and Oregon—all states where Intel is a major employer—submitted letters to the ITC urging it not to award X2Y injunctive relief. They argued that an ITC import ban on the Intel chips wouldn’t be in the public interest because U.S. jobs would be affected.

The ITC ended up not needing to reach the public interest debate. It took a narrow view of X2Y’s patents, ruling that the broad reading X2Y was proposing in court conflicted with the written descriptions, or specifications, included in the underlying patent applications.

By affirming the ITC, the Federal Circuit has “provided yet another good example for patent drafters of a reason to refrain from characterization of an invention in the specification,” Hal Wegner of Foley & Lardner wrote in a blog post.

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