Intel Corp. v. Via Technologies, Inc.

• Decision Date: 14 February 2003
• Docket Number: No. 02-1213.,No. 02-1212.,02-1212.,02-1213.
• Citation: 319 F.3d 1357
• Parties: INTEL CORPORATION, Plaintiff-Appellant, v. VIA TECHNOLOGIES, INC., a California Corporation, VIA Technologies, Inc., a Taiwan Corporation, Defendants-Cross Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1357

319 F.3d 1357

INTEL CORPORATION, Plaintiff-Appellant, v. VIA TECHNOLOGIES, INC., a California Corporation, VIA Technologies, Inc., a Taiwan Corporation, Defendants-Cross Appellants.

No. 02-1212.

No. 02-1213.

United States Court of Appeals, Federal Circuit.

February 14, 2003.

Matthew D. Powers, Weil, Gotshal & Manges, LLP, of Redwood Shores, CA, argued for plaintiff-appellant. With him on the brief were Jared Bobrow and Perry R. Clark. Of counsel on the brief was James F. Valentine, Howrey, Simon, Arnold & White, LLP, of Menlo Park, CA.

Robert P. Feldman, Wilson, Sonsini, Goodrich & Rosati, of Palo Alto, CA, argued for defendants-cross appellants. With him on the brief were Rodney G. Strickland, Jr. and Maura L. Rees.

Before MAYER, Chief Judge, MICHEL, and CLEVENGER, Circuit Judges.

MICHEL, Circuit Judge.

Intel Corporation ("Intel") appeals the December 13, 2001, decision of the United States District Court for the Northern District of California, Intel Corp. v. VIA Techs., Inc., C-99-03062 (N.D.Cal. Dec. 13, 2001), entering summary judgment of noninfringement for the accused infringers, VIA Technologies, Inc., California and Taiwan (collectively "VIA"), on the ground that VIA was licensed to practice Intel's U.S. Patent No. 6,006,291 ("the '291 patent"). VIA cross-appeals the final judgment of the district court denying VIA's counterclaim for a declaratory judgment of invalidity for indefiniteness of the '291 patent. As to infringement, because the license agreement is ambiguous, as the district court held in the alternative, and under Delaware law ambiguity has to be resolved against Intel as the sole drafter, we affirm the district court's judgment of non-infringement. As to invalidity, because the district court properly determined the structures corresponding to the functions recited in claim 1 of the '291 patent and that such structure is sufficiently specific, we conclude that the claim, which contains means-plus-function limitations, is not indefinite and therefore affirm the district court's judgment of no invalidity.

BACKGROUND

Intel promulgated a new industry standard for certain computer-chip specifications. Standardization among various chip manufacturers promotes component inter-operability and benefits customers. Intel thus grants a royalty-free cross-license to all those interested in complying with its new standard.

The new standard relates to the electronic interface and signal protocols by which devices in a computer system communicate with each other. In 1996, Intel published the Accelerated Graphic Port ("AGP") Interface Specification, Revision 1.0 ("AGP 1.0"), describing how AGP allows graphics devices to communicate with the core logic (also called a "chipset") without using the traditional Peripheral Component Interface ("PCI") bus. Use of the PCI bus slows communication.

In 1998, Intel published Revision 2.0 of the AGP Specification, AGP 2.0. Other than refinements to the pre-existing AGP 1.0, two major improvements disclosed in AGP 2.0 are two new protocols known as date transfers at 4x ("4x") and Fast Write. Both 4x and Fast Write, however, are optional protocols of AGP 2.0. AGP 2.0 Interface Specification, at 33. Thus, one can comply with AGP 2.0 if one includes the other basic features whether or not one includes 4x and Fast Write.

Intel licenses both AGP 1.0 and 2.0 to interested parties on a reciprocal, royalty-free basis. The license agreement provides for

a nonexclusive, royalty-free, nontransferable, non-sublicenseable, worldwide license under its Interface Claims to make, have made, use, import, offer to sell and sell products which comply with the AGP Interfaces; provided that such license shall not extend to features of a product which are not required to comply with the AGP Interfaces or to which there was a feasible alternative to infringing a given claim.

AGP Interface Specifications Agreement (emphases added). The license in turn defines "Interface Claims" as:

"Interface Claims" means claims of a patent or patent application, which are owned or controlled by a party, that must be infringed in order to comply with the AGP Interfaces. "Interface Claims" does not include claims relating to manufacturing technology, claims not required to be infringed in complying with the AGP Interfaces (even if in the same patent as Interface Claims), or claims which, if licensed, would require a payment of royalties to unaffiliated third parties.

Id. (emphasis added). "AGP Interfaces" is defined as:

The "AGP Interfaces" are the electrical interfaces and bus control protocols disclosed in, and required by, the Accelerated Graphics Port Interface Specifications.

Id. (emphasis added). The "Accelerated Graphics Port Interface Specifications" is in turn defined as:

The "Accelerated Graphics Port Interface Specifications" are the specifications described in the documents entitled Accelerated Graphics Port Interface Specification, Revisions 1.0 and 2.0, published by Intel.

Id. Thus, after this chain of definitions is untangled, the license covers any patent claims that "must be infringed in order to comply with" "the electrical interfaces and bus control protocols disclosed in, and required by," "the specifications described in the documents entitled Accelerated Graphics Port Interface Specification, Revisions 1.0 and 2.0, published by Intel."

The license agreement was drafted by Intel and is "legally binding" to anyone whose authorized representative signs and delivers the agreement to Intel at the address listed on the one-page agreement. Id. In 1996, after AGP 1.0 was published, VIA signed a license agreement for AGP 1.0. After the release of AGP 2.0, VIA started making chipsets that supported Fast Write and 4x. VIA signed the AGP 2.0 license in 2000. The AGP 2.0 license is the subject of this case.

Intel owns the '291 patent, which teaches the technology of Fast Write. In 2000, after VIA signed the AGP license agreement, Intel sued VIA for infringing the '291 patent. VIA concedes that its products practice at least claims 1, 4, 6, and 7 of the '291 patent; however, VIA argues, it is licensed to practice the '291 patent under the AGP 2.0 cross-license agreement. The issue becomes whether VIA's chipset products that perform Fast Write are within the scope of the AGP license, more specifically, whether Fast Write is "required" within the meaning of the license. After construing the contract language and applying contra proferentum, the district court held, in an order dated November 20, 2001, that Fast Write was covered by the AGP license and, therefore, VIA was licensed to make products performing Fast Write and could not be liable for infringing the '291 patent. Intel Corp. v. VIA Techs., 174 F.Supp.2d 1038, 1055 (N.D.Cal.2001). The court also discussed extrinsic evidence provided by both parties but was not persuaded by the evidence provided by Intel to so construe the scope of the license as to decline a summary judgment of noninfringement for VIA. Id. at 1052-55.

VIA cross-claimed for a declaratory judgment of invalidity of the '291 patent. VIA alleged, inter alia, that claim 1 of the '291 patent, the only independent claim of the patent, was indefinite. In an order dated November 20, 2001, the district court denied VIA's motion for summary judgment of invalidity. Intel Corp. v. VIA Techs., 174 F.Supp.2d 1038 (N.D.Cal.2001) (order denying VIA's motion for summary judgment of invalidity of the '291 patent). In this order, the court also denied-in-part and granted-in-part Intel's cross-motion for summary judgment of validity. Id. at 1050. It was denied as to claim indefiniteness.

On December 12, 2001, Intel and VIA submitted a joint stipulation to dispose of the entire case between the parties. According to the stipulation, a final judgment was to be entered in favor of VIA on Intel's claim of infringement of the '291 patent, pursuant to the district court's November 20, 2001 order granting VIA's motion for summary judgment of noninfringement. Additionally, the parties stipulated that a final judgment was to be entered against VIA on its counterclaim for a declaratory judgment of invalidity of the '291 patent, pursuant to the court's November 20, 2001 order denying VIA's motion for summary judgment of invalidity. The district court entered the final judgment as stipulated by the parties and closed the file on December 13, 2001.

Intel appeals the district court's grant of summary judgment that VIA does not infringe the '291 patent due to an express license. VIA cross-appeals the court's decision on validity. The parties also dispute whether this court has jurisdiction over VIA's cross-appeal.

DISCUSSION

We review a district court's grant of summary judgment de novo, Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir.1998), and its denial of summary judgment for abuse of discretion, Elekta Instrument S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1306 (Fed.Cir.2000). We review a district court's legal conclusions, such as claim and contract construction, de novo.

I

Intel asks this court to reverse the district court's non-infringement decision because, Intel asserts, the district court (A) erred in its interpretation of the AGP license agreement to include the '291 patent, which claims Fast Write; (B) erred by applying the contra proferentum doctrine; and (C) misused extrinsic evidence. After considering each of Intel's arguments, for the reasons set forth below, we hold that, although Intel's interpretation of the AGP license is not unreasonable, the district court did not err in concluding that the license covers Fast Write and granting summary judgment of noninfringement for VIA.

A

The license agreement expressly provides that it is governed by Delaware law. Under Delaware law, "[c]ontract terms themselves will be controlling when they establish the parties' common meaning so that a reasonable person in the...