An Accused Device That Infringes Sometimes, But Not Always, Nonetheless Infringes

This article was written by Joseph M.Schaffner*

In Broadcom Corp. v. Emulex Corp., No. 12-1309 (Fed. Cir. Oct. 7, 2013), the Federal Circuit affirmed the district court's findings of infringement, nonobviousness, and granting of a permanent injunction with accompanying sunset provision.

Broadcom Corporation ("Broadcom") owns U.S. Patent No. 7,058,150 ("the '150 patent"), generally relating to systems and methods of signal sampling. The '150 patent discloses a signal receiver equipped with a phase interpolator to perform clock and data recovery. Crucially, the '150 patent claims using multiple phase interpolators, each operating at a fraction of the rate of an incoming signal, to facilitate high-speed sampling.

In 2009, Broadcom brought suit against Emulex Corporation ("Emulex") alleging infringement of the '150 patent. Broadcom averred that Emulex sold a device employing multiple data paths, reducing the frequency offset of the incoming signal "at least some of the time." Slip op. at 7 (citation omitted). At the close of evidence, both parties moved for JMOL on the issue of infringement. The district court granted Broadcom's motion, ruling that Emulex infringed the '150 patent as a matter of law. The district court rejected Emulex's claim that the accused device infringed the '150 patent "only some of the time," instead reasoning that "part-time infringement . . . is sufficient to establish infringement." Id. (citations omitted).

After trial, both parties moved for JMOL on the issue of obviousness. Emulex argued that the '150 patent was obvious in light of European Patent No. EP0909035 ("Pickering"), which teaches clock recovery but not data recovery. The district court again ruled in favor of Broadcom, finding Emulex's prior art failed to teach both clock recovery and data recovery. Lastly, the district court entered an injunction against Emulex prohibiting the sale of infringing devices. Using the analytical framework of eBay, Inc. v. MercExchange LLC, 547 U.S. 388, 391 (2006), the district court reasoned that an eighteen-month sunset period satisfied the interests of both parties and protected Emulex's customers from supply disruptions. Emulex appealed the district court's finding of infringement and nonobviousness.

"It is well settled that an accused device that 'sometimes, but not always, embodies a claim[] nonetheless infringes.'" Slip op. at 12 (alteration in original) (quoting Bell Commc'n Research, Inc. v. Vitalink Commc'n Corp...