In an appeal arising out of an investigation before the International Trade Commission (ITC), the U.S. Court of Appeals for the Federal Circuit upheld a decision that the respondent did not induce infringement of petitioner’s patent, rejecting the petitioner’s argument that a chip complying with the involved wireless communications standard necessarily infringed the petitioner’s ’311 patent. The case was remanded for a further determination as to whether one of respondent’s chips, held not to infringe a second of the petitioner’s patent (the ’675 patent), in fact did not infringe. Broadcom Corp. v. International Trade Commission, Case No. 07-1164 (Fed. Cir., Sept. 18, 2008) (Bryson, J.).

As a jurisdictional matter, the Federal Circuit held that jurisdiction was proper even though the appeal was filed after the Commission’s order, but without presidential review, because an order of non-infringement does not lead to an exclusion order and can only be reviewed by the Federal Circuit.

The Federal Circuit agreed with the Administrative Law Judge and the Commission that petitioner, Broadcom, could not prove direct infringement because it lacked sufficient evidence to prove that respondent Qualcomm’s chips operated in a “power saving mode” as required by the claims of Broadcom's ’311 patent. Further, the Court rejected Broadcom’s argument, which relied on expert testimony and language in the technical standard, that Qualcomm induced infringement, finding it was based on mere “general testimony.” In contrast, the Court found that specific evidence provided by Qualcomm weighed heavily against a finding of inducement. For example, Qualcomm presented evidence that even if third-party networks might directly infringe the ’311 patent, Qualcomm’s technical standard did not require handsets to operate in a power saving made.

Broadcom’s efforts to prove inducement were further thwarted by its failure to raise certain arguments pertaining to Qualcomm’s promotional material before the ITC. The Court held that Broadcom also waived two other arguments, made for the first time on appeal, because Broadcom did not raise those arguments with the Commission: “[a] party seeking review in this court of a determination by the Commission must ‘specifically assert’ the error made by the ALJ in its petition for review to the Commission.”

As to the ’675 patent, the Court affirmed that seven out of eight of Qualcomm’s chips did not infringe the asserted claim of the patent because the transistors in the accused device were not “current sources” as required by the claim. However, as for one other Qualcomm chip, the Court determined that the Administrative Law Judge misinterpreted witness testimony and remanded the case for further determinations of fact.

Practice Note: Optional protocols contained in a technical standard may be insufficient to prove inducement to infringe. Also, when practicing before the ITC, any arguments not made to the Administrative Law Judge and the Commission are likely to be considered waived in any later appeal to the Federal Circuit.