The Patent Trial and Appeal Board has sided with Intel Corp. on claims that a Tela Innovations Inc. circuit layout patent was already disclosed in the prior art, handing the computing giant a win that follows favorable rulings in district court and at the U.S. International Trade Commission.
In a final written decision that was unsealed Monday, the PTAB ruled that Intel had successfully proven that five claims in California-based Tela's patent were rendered obvious by a 2009 patent.
The decision was unsealed almost a year after the board granted Intel's petition for inter partes review. In 2018, Intel also hit Tela in California federal court with a declaratory suit, and last month U.S. District Judge William H. Orrick ruled that Intel's products do not infringe Tela's patent.
Earlier in 2020, the ITC also backed an administrative law judge's finding that Intel, along with Acer, Lenovo, Asus and Micro-Star, did not violate trade laws as they related to a portfolio of Tela patents, including the one at issue at the PTAB.
In the decision unsealed Monday, the board agreed with Intel's argument that a patent registered to Miwa Ichiryu and two other inventors had already disclosed the five claims Intel had challenged.
"A person of ordinary skill would have understood that Ichiryu discloses every limitation of the challenged claims," the board wrote.
The board also found that Tela failed to provide enough evidence that the majority of Intel's products were manufactured using Intel's line of 14-nanometer microprocessors, which are accused of infringing Tela's patent. These microprocessors are used in fin field-effect transistor devices to improve performance in semiconductors and lower power consumption.
"Although patent owner asserts that petitioner's products embody the 14nm processors and generate billions of dollars, patent owner does not provide sufficient evidence regarding the 14nm processors' market share," the ruling said.
Tela hadn't provided enough of a road map to connect the patented circuit technology it allegedly owned to the rest of Intel's microprocessor products, according to the board.
"From the evidence submitted in this case, we are aware of no way to determine how much commercial success stems from the 14nm processors, as opposed to the other features of petitioner's products, or other, unrelated factors," the board held.
Representatives for both parties did not respond to a request for comment on Wednesday.
The patent-in-suit is U.S. Patent No. 7,943,966.
Intel is represented by Todd Friedman, Gregory Arovas, Christopher Mizzo and Bao Nguyen of Kirkland & Ellis LLP.
Tela is represented by Gunnar Leinberg, Bryan Smith, Edwin Merkel and Andrew Zappia of Pepper Hamilton LLP.
The case is Intel Corp. v. Tela Innovations Inc., case number IPR 2019-01228, at the U.S. Patent Trial and Appeal Board.