IP Law Daily, PATENT—Fed. Cir.: Licensing entity’s infringement claims against Intel partially revived on appeal; noninfringement ruling reversed, (Apr 15, 2026)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

The district court erred in its application of extraterritoriality principles and claim construction but properly excluded certain damages theories for inadequate disclosure.

The U.S. Court of Appeals for the Federal Circuit has reversed in part, affirmed in part, and remanded a federal district court’s ruling granting summary judgment of noninfringement in favor of Intel Corporation, holding that the district court erred in its extraterritoriality analysis and in rejecting infringement under the doctrine of equivalents for certain claims. The appellate court found that a binding pretrial stipulation established a U.S. nexus for infringement purposes and that the lower court improperly imported a claim limitation through prosecution disclaimer. However, it affirmed the district court’s decision to strike portions of the patentee’s damages expert testimony for failure to comply with disclosure requirements (VLSI Technology LLC v. Intel Corp., No. 24-1772 (Fed. Cir. Apr. 14, 2026)).

Background. The plaintiff/ appellant, VLSI Technology LLC, is a patent licensing entity. The defendant/appellee, Intel Corporation, is a leading semiconductor manufacturer. VLSI’s asserted U.S. Patent No. 8,566,836 (the ’836 patent) relates to multi-core processor task allocation technology. The patent generally covers methods and systems for selecting an optimal processor core to execute a task based on measured performance parameters, particularly where tasks cannot be distributed across multiple cores.

VLSI filed this lawsuit in 2017, alleging infringement of eight patents, including the ’836 patent. The district court construed the claims and later granted Intel summary judgment of noninfringement on two independent grounds: extraterritoriality and failure of VLSI’s doctrine of equivalents theory. The court also struck certain damages theories advanced by VLSI’s expert. VLSI appealed all three rulings, arguing that the district court misapplied the law governing U.S. nexus, claim construction, and expert disclosures.

Extraterritoriality and pretrial stipulation. The Federal Circuit first addressed the district court’s conclusion that the asserted method claims were not infringed because certain steps occurred outside the United States. The appellate court reversed, holding that the district court failed to give effect to a binding pretrial stipulation between the parties. The stipulation provided that 70% of Intel’s accused products and activities meeting the technical requirements of the claims would be deemed to have a U.S. nexus “without regard to geographic considerations.” The district court nevertheless required proof that each claim limitation was practiced domestically, effectively disregarding the stipulation.

Citing Kearns v. Chrysler Corp., 32 F.3d 1541 (Fed. Cir. 1994), the Federal Circuit treated the stipulation as a contract and interpreted it according to its plain language. It held that the stipulation unambiguously established a U.S. nexus for infringement purposes and rejected Intel’s argument that it applied only to damages calculations. The court emphasized that 35 U.S.C. § 271 governs infringement, not damages, and that the stipulation expressly referenced that provision.

The appellate court concluded that the district court’s reasoning directly contradicted the stipulation’s terms and warranted reversal of summary judgment on extraterritoriality grounds for the asserted method claims.

Apparatus claims and capability of accused products. Turning to the asserted apparatus claims, the Federal Circuit again reversed the grant of summary judgment. The district court had found that VLSI failed to show that Intel’s products were capable of performing the claimed “measuring” function within the United States.

The appellate court held that this analysis improperly focused on the testing location rather than on whether the accused products were made, sold, or imported in the United States. Citing Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371 (Fed. Cir. 2009), the court reiterated that infringement turns on domestic acts such as making, using, or selling, not on where internal testing occurs.

The court also found that, even under Intel’s interpretation, genuine disputes of material fact precluded summary judgment. VLSI presented evidence that Intel’s processors contained built-in circuitry capable of performing the claimed measurement functions without modification. Relying on Silicon Graphics, Inc. v. ATI Technologies, Inc., 607 F.3d 784 (Fed. Cir. 2010), the court held that a product may infringe if it includes structural means capable of performing the claimed function, even if external tools are used during operation.

Accordingly, the court reversed summary judgment of noninfringement for the apparatus claims as well.

Doctrine of equivalents and claim construction error. The Federal Circuit next addressed the district court’s rejection of VLSI’s doctrine of equivalents (DOE) theory for apparatus claim 10 and its dependent claims. The district court had construed claim 10 to include an “upon identifying” limitation based on prosecution disclaimer and concluded that VLSI’s DOE theory would improperly vitiate that limitation.

The appellate court disagreed, holding that the prosecution history did not contain a “clear and unmistakable” disclaimer sufficient to narrow the claim. Citing Tech. Properties Ltd. LLC v. Huawei Technologies Co., 849 F.3d 1349 (Fed. Cir. 2017), the court emphasized that ambiguous or equivocal statements cannot support a disclaimer.

It observed that claim 10 did not expressly include the “upon identifying” language found in other claims and that the cited prosecution statements were, at most, ambiguous. Relying on Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the court reiterated that claim construction must be grounded in intrinsic evidence and cannot import limitations absent a clear disavowal. Because the district court’s construction improperly narrowed the claim, its rejection of the DOE theory was also erroneous. The Federal Circuit therefore reversed summary judgment as to claim 10 and its dependent claims under the doctrine of equivalents.

Striking of damages expert theories. On the issue of damages, however, the Federal Circuit affirmed the district court’s decision to strike certain theories advanced by VLSI’s expert, Dr. Sullivan. The lower court had excluded damages theories based on net present value (NPV) and value-per-unit (VPU) methodologies, finding that VLSI failed to adequately disclose them in its damages contentions under local patent rules.

Reviewing for abuse of discretion, the Federal Circuit upheld the ruling. Citing Keranos, LLC v. Silicon Storage Technology, Inc., 797 F.3d 1025 (Fed. Cir. 2015), the court found that the district court reasonably concluded that VLSI’s disclosures were insufficiently specific and failed to provide adequate notice to Intel.

The court noted that VLSI’s contentions relied on vague references and scattered citations, requiring inferential guesswork, which local patent rules are designed to prevent. It also observed that the district court had previously warned VLSI to provide detailed disclosures of its damages theories. Importantly, the court clarified that other damages theories remained intact, allowing VLSI to pursue damages on remand through alternative expert testimony.

Conclusion. Finally, the Federal Circuit ultimately reversed the district court’s grant of summary judgment of noninfringement on both extraterritoriality and doctrine of equivalents grounds for certain claims, affirmed the exclusion of specific damages theories, and remanded the case for further proceedings.

The Case is No. 24-1772.

Judge: Moore, K.

Attorneys: Morgan Chu (Irell & Manella LLP) for VLSI Technology LLC. Dominic E. Massa (Wilmer Cutler Pickering Hale and Dorr LLP) for Intel Corp.

Companies: VLSI Technology LLC; Intel Corp.

Cases: Patent FedCirNews TechnologyInternet