ITC Clears Intel, Computer Makers in Chip Patent Case

Kirkland is mentioned in Law360 regarding the Firm’s representation of Intel and Lenovo in an intellectual property matter.

The U.S. International Trade Commission has backed a judge's finding that Intel, Acer, Lenovo, Asus and Micro-Star did not violate trade laws in a case in which California-based Tela Innovations Inc. accused them of patent infringement.

Tela Innovations had claimed that desktop computers, laptops, tablets and other products that contain certain Intel microprocessors infringe its five chip patents and sought an import ban.

Administrative Law Judge Cameron Elliot found in May that the accused products do infringe two patents, but Tela did not show that it has a domestic industry in the U.S. for those patents, which is a requirement to prevail at the ITC. The judge also found that the asserted claims of one of the patents are invalid.

The ITC agreed with a vast majority of the May finding and voted on Wednesday to terminate the investigation.

Tela filed a complaint with the ITC in December 2018 and amended it in February 2019, contending that the various products that contain the Intel microprocessors with process nodes of 14 nanometers or less infringe its five patents that cover related microprocessor technology.

"Tela has obtained integrated circuits and products containing the same that Acer, Asus, Intel, Lenovo and MSI imported, sold for importation and/or sold after importation into the United States," Tela said in the amended complaint. "These integrated circuits and products containing the same infringe directly, literally or under the doctrine of equivalents, at least one of the asserted claims of at least one of the asserted patents."

The ITC agreed in March 2019 to probe whether the products should be barred from entering the U.S. as a result of a violation of Section 337 of the Tariff Act of 1930, selecting as mandatory respondents Acer Inc., AsusTek Computer Inc., Intel Corp., Lenovo Group Ltd., Micro-Star International Co. Ltd., MSI Computer Corp. and several related companies.

In October, the commission terminated its investigation as to three of the patents in their entirety and some claims in the remaining two — U.S. Patent Nos. 10,141,334 and 10,186,523.

In May, Judge Elliot issued an initial determination that "there is no violation of section 337 in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain integrated circuits and products containing the same, in connection with the asserted claims of the '334 and '523 patents, and that a domestic industry in the United States that practices or exploits the asserted patents does not exist."

The judge found that the products did directly infringe three claims of the '334 patent but that all three claims are invalid. The products infringe more than a dozen claims of the '523 patent, none of which are invalid, the judge said.

Representatives for the parties did not immediately respond to requests for comment 

The patents-in-suit are U.S. Patent Nos. 7,943,966; 7,948,012; 10,141,334; 10,141,335; and 10,186,523.

Tela Innovations Inc. was represented by Tuhin Ganguly, William D. Belanger, Alison L. McCarthy, Gwendolyn Tawresey and Griffin Mesmer of Troutman Pepper.

Intel Corp. and Lenovo Group Ltd. were represented by Todd M. Friedman of Kirkland & Ellis LLP. Lenovo is also represented in-house by Anup M. Shah.

The case is In the Matter of Certain Integrated Circuits and Products Containing the Same, investigation number 337-TA-1148, in the U.S. International Trade Commission.