By John Presper

On March 9, 2022, the Federal Circuit issued its opinion affirming the ITC’s determination that Complainant Broadcom Corporation of San Jose, California (“Broadcom”) failed to show the existence of a domestic industry in Certain Infotainment Systems, Component Thereof, and Automobiles Containing the Same (Inv. No. 337-TA-1119).

By way of background, this investigation was based on a 2018 complaint filed by Broadcom alleging violations of section 337 by Respondents Toyota Motor Corporation of Japan; Toyota Motor North America, Inc. of Plano, Texas; Toyota Motor Sales, U.S.A., Inc. of Plano, Texas; Toyota Motor Engineering & Manufacturing North America, Inc. of Plano, Texas; Toyota Motor Manufacturing, Indiana, Inc. of Princeton, Indiana; Toyota Motor Manufacturing, Kentucky, Inc. of Erlanger, Kentucky; Toyota Motor Manufacturing, Mississippi, Inc. of Tupelo, Mississippi; Toyota Motor Manufacturing, Texas, Inc. of San Antonio, Texas; Panasonic Corporation of Japan; Panasonic Corporation of North America of Newark, New Jersey; Denso Ten Limited of Japan; Denso Ten America Limited of Torrance, California; Renesas Electronics Corporation of Japan; Renesas Electronics America, Inc. of Milpitas, California; and Japan Radio Corporation of Japan based on the importation/sale of certain infotainment systems and automobiles containing same that infringe one or more claims of U.S. Patent No. 6,937,187; U.S. Patent No. 8,902,104; U.S. Patent No. 7,512,752 (“the ’752 patent”); U.S. Patent No. 7,530,027; U.S. Patent No. 8,284,844; and U.S. Patent No. 7,437,583 (“the ’583 patent”).  The asserted patents relate to technology used in infotainment systems for vehicles and are generally directed to Global Navigation Satellite System processing, video and graphics processing, and power and memory management.  See our May 7, 2018 and June 7, 2018 posts for more details on the complaint and Notice of Investigation.

Only the ’583 and ’752 patents remained in the investigation.  ALJ Dee Lord’s initial determination (“ID”) held that Broadcom failed to demonstrate that its system-on-a-chip (“SoC”) satisfied the technical prong of the domestic industry requirement with respect to the ’583 patent because the SoC did not include a “clock tree driver” required by the claims.  The ALJ also held that Broadcom failed to demonstrate infringement of claims 25 and 26 of the ’583 patent because it “could not identify any specific source code in the accused product where [the claimed] sequence of events ‘actually happened.’”  The Commission affirmed both holdings.  The ID also held that claim 5 of the ’752 patent was obvious over the Sih and Foster prior art references.  The Commission affirmed this holding as well.

On appeal, Broadcom argued that the Commission erred in finding no domestic industry for the ’583 patent, no infringement of claim 25 of the ’583 patent, and that claim 5 of the ’752 patent is invalid as obvious.  Regarding the ’583 patent, the court found that the Commission’s determination that Broadcom failed to satisfy the technical prong is supported by substantial evidence.  In particular, the court faulted Broadcom for failing to identify any specific integration of the domestic industry SoC and the required “clock tree driver” firmware, or a specific location where the firmware was stored in external memory.  The court noted that “Broadcom does not challenge this finding, and instead introduces new theories that the Commission properly deemed waived” because they were not raised before the ALJ.  In light of its affirmance of no domestic industry, the court did not address the Commission’s finding of no infringement regarding claim 25.

Broadcom’s appeal of the ITC decision was consolidated with Renesas’ appeal in parallel IPR proceedings of the PTAB’s decision finding claims 17, 18, and 20-24 of the ’583 patent not obvious, and Broadcom’s cross-appeal of the PTAB’s decision finding claims 25 and 26 obvious.  The court agreed with Broadcom that the PTAB’s obviousness analysis was not “improperly truncated” solely because the PTAB found a difference between claim 17 and the prior art Van Hook reference, as argued by Renesas, and affirmed the holding of non-obviousness of claims 17, 18, and 20-24.  The court also agreed with Renesas that the PTAB was thorough in its analysis of a motivation to combine the Alben and Fallah references to find claims 25 and 26 obvious, and that the PTAB did not engage in impermissible hindsight.  Thus, the court affirmed the PTAB’s holding that claims 25 and 26 are unpatentable as obvious.

Regarding the ’752 patent, Broadcom’s appeal of the ITC decision was likewise consolidated with its appeal in parallel IPR proceedings of the PTAB’s decision that all of the challenged claims are obvious over Foster, and that—as the ITC also determined—claim 5 is obvious over Foster and Sih.  The court affirmed the PTAB’s holdings, and therefore did not address the ITC’s decision with respect to claim 5.