Broadcom Corporation v. Emulex Corporation ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
BROADCOM CORPORATION,
Plaintiff-Appellee,
v.
EMULEX CORPORATION,
Defendant-Appellant.
______________________
2012-1309
______________________
Appeal from the United States District Court for the
Central District of California in No. 09-CV-1058, Judge
James V. Selna.
______________________
Decided: October 7, 2013
______________________
DOMINIC E. MASSA, Wilmer, Cutler, Pickering, Hale
and Dorr, LLP, of Boston, Massachusetts, argued for
plaintiff-appellee. With him on the brief were WILLIAM F.
LEE, GREGORY P. TERAN, LOUIS W. TOMPROS and JASON H.
LISS. Of counsel on the brief was CRAIG E. DAVIS, of Palo
Alto, California.
JUANITA R. BROOKS, Fish & Richardson, P.C., of San
Diego, California, argued for defendant-appellant. With
her on the brief was DAVID M. BARKAN, of Redwood City,
California. Of counsel were CRAIG E. COUNTRYMAN, of
San Diego, California, REBECCA CHARNAS GRANT, and
2 BROADCOM CORPORATION v. EMULEX CORPORATION
JONATHAN J. LAMBERSON, of Redwood City, California,
and THOMAS H. REGER, II, of Dallas, Texas.
______________________
Before RADER, Chief Judge, LOURIE, and WALLACH, Circuit
Judges.
RADER, Chief Judge.
After a trial and post-trial motions, the United States
District Court for the Central District of California de-
termined that Emulex Corporation (Emulex) infringed
Broadcom Corporation’s (Broadcom) U.S. Patent No.
7,058,150 (the ’150 patent). On appeal, the only issues
remaining relate to the ’150 patent, and the district
court’s grant of a permanent injunction and modifications
to that permanent injunction. Second Amended Notice of
Appeal, Broadcom Corp. v. Emulex Corp., No. 2012-1309
(Fed. Cir. August 10, 2012) (No. 43). Upon review of the
record, this court affirms the district court’s finding that
Emulex infringed the ’150 patent. Similarly, this court
affirms the district court’s determination that the ’150
patent would not have been obvious at the time of inven-
tion and hence invalid. Finally, because the district court
properly exercised its discretion in granting a permanent
injunction with a well-crafted sunset period, this court
also affirms that determination.
I.
This case concerns digital communication systems
with data transceivers capable of receiving multiple,
analog, high-speed, serial data signals. ’150 patent Ab-
stract, col. 2 ll.17–26. Once received, the analog data
signal needs to be converted into a digital signal through
a process called “sampling.” Sampling is the process of
measuring the amplitude of the analog signal at precisely
timed intervals in order to extract the data carried in the
analog signal. To do so, the receiver needs a way to
discern the proper rate at which to sample the analog
BROADCOM CORPORATION v. EMULEX CORPORATION 3
signal and needs a means for generating a sampling
signal having the appropriate frequency. In addition,
when data is sent through cables over long distances, the
incoming signal frequency can vary over time. To com-
pensate for such variances, receiver circuits adjust the
sampling signal to match the frequency and phase of the
incoming data signal. Circuits for aligning and sampling
data in this manner are known as Clock/Data Recovery
(CDR) circuits.
The ’150 patent discusses that communication devices
with transceivers for transmitting and receiving data
signals were known in the art. ’150 patent col. 1 ll. 18–25.
And, integrating transceiver circuits on an integrated
circuit (IC) chip to reduce size and power dissipation of
the transceiver was also known in the art. ’150 patent
col. 1 ll. 26–28. The circuits typically operate in accord-
ance with timing signals, such as sampling signals, gen-
erated by oscillators. ’150 patent col. 1 ll. 26–41. Because
there are multiple transceiver circuits on an IC chip,
there are also multiple oscillators on a common IC chip.
’150 patent col. 1 ll. 26–41. However, the presence of
multiple oscillators on one IC chip can cause one oscillator
to deleteriously influence the operation of another oscilla-
tor. ’150 patent col. 1 ll. 37–47. Thus, the need to inte-
grate transceiver circuits on an IC chip and the related
need to reduce the number of oscillators on the IC chip
were long felt by those of skill in the art. ’150 patent col.
1 ll. 42–47.
To reliably process a data signal, a receiver needs to
match its operating characteristics with the characteris-
tics of the data signal. ’150 patent col. 1 ll. 48–50. To do
so, it was known in the art to employ a receiver that uses
a sampling signal to sample the data signal at sample
times to produce optimal data recovery and thus minimize
errors. ’150 patent col. 1 ll. 48–55. Such timing control
includes control of the phase and frequency of a sampling
4 BROADCOM CORPORATION v. EMULEX CORPORATION
signal used to sample the received data signal. ’150
patent col. 1 ll. 59–61.
Sampling of high data rate signals also presented
challenges. ’150 patent col. 2 ll. 7–9. In prior art systems,
as the received data signal rate increased into the multi-
gigabit-per-second range, the difficulty in effectively
controlling sampling processes in the receiver correspond-
ingly increased. ’150 patent col. 1 ll. 62–66. At lower
rates, the sampling proceeds by making multiple copies of
the same high-speed signal and distributing those copies
to several sampling circuits operating in parallel. ’150
patent col. 29 l. 65–col. 30 l. 6.
The ’150 patent solves the problems in the prior art by
using a phase interpolator to perform high speed sam-
pling of a signal using a technique known as clock and
data recovery. Specifically, the ‘150 patent addresses the
sampling problem at high data rates by using four paral-
lel data paths, each operating at a quarter of the rate of
the incoming data signal. ’150 patent col. 31 ll. 10–37.
Further, to solve the problems related to the presence of
multiple oscillators on an IC chip, the ’150 patent elimi-
nates the need for multiple oscillators by “advantageous-
ly” using a single master oscillator “in a multiple receiver”
environment on an IC chip. ’150 patent col. 3 ll. 22–40.
The invention thus relies on a single, master oscillator
because the phase interpolator, not the oscillator, tunes
the phase and frequency of the sampling signal. ’150
patent col. 3 ll. 22–25. Instead of changing the oscillator
frequency, the ’150 patent discloses adjusting the phase of
the sampling signal forward or backward so that the
sampling rate, i.e., the number of rising edges per unit
time, matches the data rate. ’150 patent col. 23 ll. 15-41.
For a change in phase to cause the same ultimate result
as a change in frequency, the phase must be continually
“rotated” at a specific rate—otherwise the sampling signal
BROADCOM CORPORATION v. EMULEX CORPORATION 5
will not keep up with the desired sampling frequency.
’150 patent col. 23 ll. 17–55.
Claim 8, the only claim at issue, recites:
8. A COMMUNICATION DEVICE CONFIGURED TO RECEIVE
MULTIPLE SERIAL DATA SIGNALS, COMPRISING:
a master timing generator adapted to generate a
master timing signal;
multiple receive-lanes each configured to receive
an associated one of the multiple serial data sig-
nals, each receive-lane including
a phase interpolator adapted to produce a
sampling signal having an interpolated
phase, and
a data path adapted to sample and quan-
tize the associated serial data signal in ac-
cordance with the sampling signal; and
an interpolator control module coupled to each re-
ceive-lane, the interpolator control module being
adapted to cause the phase interpolator in each
receive-lane to rotate the interpolated phase of the
sampling signal in the receive-lane at a rate cor-
responding to a frequency offset between the sam-
pling signal and the serial data signal associated
with the receive-lane so as to reduce the frequency
offset between the sampling signal and the serial
data signal.
’150 patent col. 38 l. 53–col. 39 l. 5.
Thus, claim 8 recites a communication device with
“multiple receive-lanes each configured to receive an
associated one of the multiple serial data signals.” ’150
patent claim 8. Each receiving lane has a data path—a
path for the analog signal to move through the circuit so
that it may be sampled and turned into digital data—and
6 BROADCOM CORPORATION v. EMULEX CORPORATION
a phase interpolator to adjust the sampling signal to
match the incoming data in the data path. ’150 patent
claim 8. Claim 8 also recites an interpolator control
module (ICM)—a mechanism that varies outputs of the
phase interpolators in order to achieve the desired rate of
phase rotation. ’150 patent claim 8. Further the ICM
rotates the phase of the sampling signal at a rate that
corresponds to the difference in frequency between the
sampling signal and the data signal—the frequency offset.
’150 patent claim 8.
On appeal, the relevant prior art is European Patent
No. EP0909035, the Pickering reference (Pickering). J.A.
245. Pickering teaches “an apparatus for producing an
oscillating signal,” i.e., a clock, and “devices for synchro-
nising an output signal with an input signal.” J.A. 218.
Pickering also discloses “recover[ing] a corresponding
clock signal at the receiver in order to demodulate the
received signal.” J.A. 218. The record shows that Picker-
ing discloses each limitation of claim 8 except for a “data
path”—also referred to as a “receiving path.” See J.A.
245; Appellant’s Br. 34; Appellee’s Br. 37–38. In other
words, Pickering teaches recovering the clock, but not the
data; in contrast, the ’150 patent teaches recovering both
the clock and the data. See J.A. 748–49.
II.
Broadcom filed suit in the Central District of Califor-
nia in September 2009 asserting infringement of ten
patents. Broadcom then amended the complaint to add
an eleventh patent—the ’150 patent, and later, a twelfth
patent was added through consolidation of lawsuits. Six
patents, including the ’150 patent, remained in the case at
the time of a fourteen-day jury trial, which was held from
September 20, 2011–October 12, 2011. At the close of
evidence, Broadcom moved for JMOL on the issue of
infringement of the ’150 patent; Emulex similarly moved
for judgment as a matter of law (JMOL) on the issue of
BROADCOM CORPORATION v. EMULEX CORPORATION 7
non-infringement. J.A. 33. The district court granted
Broadcom’s motion and ruled, as a matter of law, that
Emulex infringes the ’150 patent. J.A. 32, 35; see J.A.
1179. The jury subsequently found that Emulex had not
shown the invention of the patent would have been obvi-
ous, that Broadcom should receive $387,922 in damages
for the infringement, and that Emulex’s infringement was
not willful. J.A. 1178–81.
At a post-trial hearing, the district court denied
Emulex’s renewed motion for JMOL on the issue of in-
fringement which turned on whether the accused products
“reduced the offset between the sampling signal and the
data signal all of the time or only some of the time.” J.A.
35. The district court found that Emulex’s expert, Dr.
Nikolic, had conceded that the accused device “reduced
the offset at least some of the time.” J.A. 35. The district
court also determined that Broadcom presented sufficient
evidence that the accused device met all other claim
limitations. J.A. 36. The district court also rejected
Emulex’s motion for reconsideration of JMOL of infringe-
ment based on Emulex’s challenge of the “at a rate corre-
sponding to” limitation which was raised for the first time
during oral argument. J.A. 37–39. Accordingly, because
“part-time infringement . . . is sufficient to establish
infringement,” the district court denied Emulex’s motion
and sustained its earlier conclusion that Emulex infringed
claim 8 of the ’150 patent. J.A. 35, 39.
After trial, both parties moved for JMOL on the issue
of obviousness of the ’150 patent. J.A. 235. The jury trial
produced factual findings on obviousness, as well as the
jury’s verdict that the ’150 patent would not have been
obvious at the time of invention. J.A. 235, 243; see J.A.
1179–81. Specifically, the jury found that (1) the claimed
invention was not independently invented by others in the
same time frame; (2) the products incorporating the
claimed invention experienced commercial success; (3) the
claimed invention met a long-felt need for a smaller, more
8 BROADCOM CORPORATION v. EMULEX CORPORATION
efficient CDR circuit; and (4) the invention occurred after
unsuccessful attempts by others to find the novel solution.
J.A. 238–39, 243–44, 1179–81. The jury also found copy-
ing and unexpected results, but the district court held
that the record did not support these findings with sub-
stantial evidence. J.A. 244. Finally, the jury concluded
that the level of ordinary skill was “[a]n electrical engi-
neer with at least a bachelor’s degree in electrical engi-
neering and several years of post-graduate experience
with CDR circuits, implemented in complementary metal-
oxide-semiconductor (CMOS) integrated circuit devices, or
the equivalent.” J.A. 243, 1179.
Though Emulex challenged some of the jury’s factual
findings on nonobviousness, the primary dispute was over
the teachings of Pickering. J.A. 243–45. As noted earlier,
the record shows that Pickering teaches each limitation of
Claim 8 except for a “data path.” See J.A. 245. By con-
trast, the ’150 patent claims recovering both the clock and
the data. J.A. 748–749. And the district court found that
Pickering addressed a different problem than the ’150
patent. J.A. 247–48. Emulex argued that a person of
ordinary skill in the art would have been able to adapt
Pickering to recover data in the same fashion as the ’150
patent. J.A. 247. The district court, however, determined
that Emulex had not proved this invalidity theory by clear
and convincing evidence. J.A. 247. Thus, the district
court held that claim 8 would not have been obvious at
the time of invention. J.A. 248.
The district court also made several factual findings
leading up to the entry of an injunction on April 3, 2012
against Emulex. J.A. 1–9. The district court applied the
four-factor test in eBay Inc. v. MercExchange LLC, 547
U.S. 388, 391 (2006). First, the district court concluded
that Broadcom suffered irreparable harm and was likely
to continue to do so because of evidence that Emulex
achieved design wins and market share gains at Broad-
com’s expense. J.A. 16–20. Second, the district court
BROADCOM CORPORATION v. EMULEX CORPORATION 9
concluded that money damages would be inadequate to
compensate Broadcom because of evidence that Emulex’s
design wins caused unquantifiable secondary benefits to
Emulex. J.A. 20. Third, the district court found that the
balance of hardships favors an injunction because
Emulex’s sales of infringing products amounted to only a
small portion of its revenues. J.A. 20–22. Fourth, the
district court concluded that, to balance the public inter-
est and equitable factors, the permanent injunction
should include a sunset period to protect certain of
Emulex’s customers from supply disruptions. J.A. 22–29.
The district court determined that an eighteen-month
sunset period starting on October 12, 2011, was reasona-
ble. J.A. 26–27. The district court made allowances for
“the needs of Emulex customers.” J.A. 26–27. Specifical-
ly, Emulex was allowed to sell infringing products to
customers who had “qualified an infringing product” in a
specific device and “placed a firm order for production
quantities” of the infringing product prior to the start of
the sunset period. J.A. 27. And, Emulex was permitted
to make sales “for the specific customer device(s) for
which the infringing product has been qualified” prior to
the start of the sunset period. J.A. 27. Finally, the dis-
trict court permitted sales to meet “the emergency needs
of an end user affecting health of the public . . . , public
safety, . . . and governmental agencies engaged in nation-
al defense.” J.A. 5888–89.
Emulex appeals the district court’s grant of JMOL
that Emulex infringed the ’150 patent and that the ’150
patent was not invalid as obvious. Emulex also appeals
the district court’s grant of a permanent injunction. This
court has jurisdiction under 28 U.S.C. §§ 1292(a)(1), (c)(1)
and 1295.
III.
Rule 50(a)(1) permits a grant of JMOL “[i]f a party
has been fully heard on an issue during a jury trial and
10 BROADCOM CORPORATION v. EMULEX CORPORATION
the court finds that a reasonable jury would not have a
legally sufficient evidentiary basis to find for the party on
that issue.” Fed. R. Civ. P. 50(a)(1). “[A]n admission
made by a plaintiff’s witness can be sufficient to support
entry of a JMOL in favor of a defendant . . . even where
the defendant bears the burden of proof on the decided
issue.” Nobelpharma AB v. Implant Innovations, Inc., 141
F.3d 1059, 1065 (Fed. Cir. 1998).
This court reviews the grant or denial of a motion for
JMOL under the law of the regional circuit—here, the
United States Court of Appeals for the Ninth Circuit. See
ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d
1340, 1343 (Fed. Cir. 2012). In the Ninth Circuit, a
district court’s grant of JMOL receives no deference. See
Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 717
(Fed. Cir. 2008) (citing City Solutions, Inc. v. Clear Chan-
nel Commc’ns, 365 F.3d 835, 839 (9th Cir. 2004)).
At trial, the district court granted Broadcom’s motion
for JMOL that Emulex infringed the ’150 patent. J.A. 33
(the district court used the term directed verdict instead
of JMOL). Then, at a post-trial hearing, the district court
denied Emulex’s renewed motion for JMOL of nonin-
fringement. J.A. 35.
The issue of infringement turns on the following lan-
guage of claim 8:
the interpolator control module being adapted to
cause the phase interpolator in each receive-lane
to rotate the interpolated phase of the sampling
signal in the receive-lane at a rate corresponding
to a frequency offset between the sampling signal
and the serial data signal associated with the re-
ceive-lane so as to reduce the frequency offset be-
tween the sampling signal and the serial data
signal
’150 patent claim 8 (emphases added).
BROADCOM CORPORATION v. EMULEX CORPORATION 11
The first infringement question is whether the “rate”
in Emulex’s half-rate architecture “correspond[s] to a
frequency offset” as required by claim 8. The accused
devices’ “half-rate” architecture uses two parallel data
paths that take turns sampling the same data signal.
J.A. 638. By using two data paths, each data path only
needs to sample at half the frequency of the incoming
data signal. J.A. 638. Emulex argues that “corresponding
to” in claim 8 limits it to full rate architecture and would
not cover half-rate architecture. Appellant’s Br. 32.
The record, especially the intrinsic evidence of the pa-
tent’s meaning, does not support Emulex’s argument.
The claim language itself does not necessitate that “corre-
sponding to” limits claim 8 to full rate architecture.
Indeed the claim does not use language of equation but of
correspondence, a much broader concept. Moreover the
record does not contain evidence that the patentee acted
as his own lexicographer to define “corresponding to” as
“equal to.”
The specification even more definitively addresses
this issue. The specification states that the “sampling
frequency [] and serial data signal frequency [] need to be
related to one another, but not necessarily equal to one
another.” ’150 patent col. 26 ll. 4–13 (emphases added).
Also, the specification teaches, as one example, a quarter-
rate architecture. ’150 patent col. 31 ll. 19–41. Conse-
quently, limiting claim 8 to full rate architecture, as
suggested by Emulex, would improperly exclude a dis-
closed embodiment, i.e., the quarter-rate architecture.
This court has clarified that an interpretation which
“excludes a [disclosed] embodiment from the scope of the
claim is rarely, if ever, correct.” Accent Pkg., Inc. v.
Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013);
see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed.
Cir. 2005) (en banc). Thus, the specification shows that
the “corresponding to” claim term does not limit the
invention to full rate architecture.
12 BROADCOM CORPORATION v. EMULEX CORPORATION
Thus, because Emulex’s argument rests on the incor-
rect notion that the “corresponding to” language limits
claim 8 to full rate architecture, this court confirms the
district court’s ruling that the record shows that Emulex
meets this limitation by employing half-rate architecture
in its accused products. See J.A. 39.
Emulex also contests the sufficiency of evidence to
support the trial court’s grant of JMOL of infringement
based on the “at a rate . . . so as to reduce” limitation of
claim 8. Appellant’s Br. 30. In the first place, this court
notes that Emulex did not specifically argue at trial that
it did not practice the “at a rate” limitation. Rather,
Emulex’s references at trial to “at a rate” were limited to
blanket statements by Emulex’s expert about large por-
tions of the claim or general explanations about reasons
that certain accused products did not practice claim 8.
See J.A. 602–604. Further, Emulex elected not to cross-
examine Broadcom’s expert on this issue. See generally
J.A. 496–501.
At trial, the district court found that, at bottom, in-
fringement turned on whether the accused products
“reduced the offset between the sampling signal and the
data signal all of the time or only some of the time.” J.A.
35. Importantly, the district court found that Emulex’s
expert, Dr. Nikolic, conceded that the accused device
“reduced the offset at least some of the time.” J.A. 640;
see Oral Argument at 1:19–1:48, Broadcom Corp. v.
Emulex Corp., No. 2012-1309, available at http://
www.cafc.uscourts.gov/oral-argument-recordings/12-1309/
all. It is well settled that an accused device that “some-
times, but not always, embodies a claim[] nonetheless
infringes.” Bell Commc’n Research, Inc. v. Vitalink
Commc’n Corp., 55 F.3d 615, 622–23 (Fed. Cir. 1995).
Accordingly, this court affirms the district court’s grant of
JMOL that Emulex’s accused products infringed the ’150
patent and denial of Emulex’s JMOL of noninfringement.
BROADCOM CORPORATION v. EMULEX CORPORATION 13
IV.
Obviousness is a question of law based on under-
lying findings of fact. An analysis of obviousness
must be based on several factual inquiries: (1) the
scope and content of the prior art; (2) the differ-
ences between the prior art and the claims at is-
sue; (3) the level of ordinary skill in the art at the
time the invention was made; and (4) objective ev-
idence of nonobviousness, if any.
In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009); see also
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Based on the underlying fact findings, whether a claimed
invention would have been obvious under 35 U.S.C.
§ 103(a) is a question of law reviewed de novo. Power-
One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed.
Cir. 2010). Underlying factual findings by the judge are
reviewed for clear error. Id. Factual findings by the jury
receive substantial evidence review. W. Union Co. v.
MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1369 (Fed.
Cir. 2010). Because the ’150 patent is presumed valid, to
prevail on its motion for JMOL, Emulex needed to prove
that the ’150 patent would have been obvious at the time
of invention by clear and convincing evidence. Power-One,
599 F.3d at 1351.
The obviousness analysis here asks whether a person
of ordinary skill in the art at the time of the invention—
an electrical engineer with at least a bachelor’s degree
and several years of CDR experience—would have had a
reason to modify Pickering to include a “data path.”
Pickering teaches recovering clock signals and phase
synchronization. J.A. 245. However, Pickering neither
teaches a data path nor teaches adjusting the phase for
data recovery. Based on the evidence presented at trial,
the district court concluded that Pickering and the ’150
patent addressed two different problems—clock recovery
versus clock and data recovery, respectively. J.A. 245.
14 BROADCOM CORPORATION v. EMULEX CORPORATION
While a prior art reference may support any finding
apparent to a person of ordinary skill in the art, prior art
references that address different problems may not,
depending on the art and circumstances, support an
inference that the skilled artisan would consult both of
them simultaneously. See Kinetic Concepts, Inc. v. Smith
& Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012)
(finding invention nonobvious when none of the “refer-
ence[s] relate to the [problem] described in the patents”
and no evidence was proffered “indicating why a person
having ordinary skill in the art would combine the refer-
ences”).
Specifically, at trial the expert testimony indicated
that there was no “motive or reason [for Pickering] to seek
a data path in order to broaden its function.” J.A. 751.
Pickering’s system was described as a “self-contained”
system. J.A. 751. Its task and purpose was to recover the
clock data and to phase synchronize the signal—
Pickering’s system accomplished its objective and provid-
ed no suggestion to broaden that objective. J.A. 751.
In addition to solving a different problem than the
’150 patent, Pickering does not address the ’150 patent’s
critical “data path,” i.e., the data recovery function. As
the district court found, the record does not support
Emulex’s contention that Pickering implicitly requires a
data path. Pickering’s device is designed to match transi-
tion points, or cross-over points, on a waveform. At the
cross-over points there is no data to recover, so Pickering
cannot inherently require recovering data. J.A. 245–46.
Moreover, contrary to Emulex’s suggestion, Pickering’s
Figure 16 shows only clock recovery, not data recovery.
J.A. 246. Further, Pickering does not teach data outputs
or recovered data.
Even assuming that a person of ordinary skill might
have some motivation to add a data path to Pickering, the
record does not show any reasonable expectation that this
BROADCOM CORPORATION v. EMULEX CORPORATION 15
significant change would be successful. An invention is
not obvious just “because all of the elements that com-
prise the invention were known in the prior art;” rather a
finding of obviousness at the time of invention requires a
“plausible rational [sic] as to why the prior art references
would have worked together.” Power-One, 599 F.3d at
1351; Amgen Inc. v. F. Hoffman-LA Roche Ltd., 580 F.3d
1340, 1362 (Fed. Cir. 2009) (“An obviousness determina-
tion requires that a skilled artisan would have perceived a
reasonable expectation of success in making the invention
in light of the prior art.”). Indeed, expert testimony
indicated that the proposed combination of Pickering with
a data path would not have resulted in the invention of
the ’150 patent’s claim 8 and would not have worked for
its intended purpose. Broadcom’s expert, Dr. Stojanovic,
testified that combining Pickering with a data path
function would result in an “unfunctional circuit.” J.A.
749–51. The combination of Pickering with a data path
would have caused sampling in undefined zones resulting
in undefined values. J.A. 750–51. In other words, adding
data recovery functionality to Pickering would have
defeated the ability to recover data. J.A. 750–51.
Further, the record contains evidence of objective in-
dicia of nonobviousness. Objective indicia of nonobvious-
ness are “not just a cumulative or confirmatory part of the
obviousness calculus but constitute independent evidence
of nonobviousness . . . [and] enable the court to avert the
trap of hindsight.” Leo Pharm. Prods., Ltd. v. Rea, No.
2012-1520, 2013 WL 4054937, at *11 (Fed. Cir. Aug. 12,
2013) (internal citations and quotation marks omitted).
Here the district court averted the trap of hindsight by
considering the evidence of the objective indicia as part of
the obviousness analysis, and not just as an afterthought.
See id. (citing In re Cyclobenzaprine Hydrochloride Ex-
tended-Release Capsule Patent Litigation, 676 F.3d 1063,
1073 (Fed. Cir. 2012)).
16 BROADCOM CORPORATION v. EMULEX CORPORATION
Substantial evidence supports the jury’s finding of
commercial success. The products embodying the ’150
patent enjoyed acknowledged commercial success. But
more important, the record contains unrebutted testimo-
ny establishing a nexus between the claimed technological
advance of claim 8 and the success of the products. J.A.
243. In fact, Broadcom continues to claim technological
advance in products even eleven years after this initial
invention. J.A. 477. Further, the technological advance
claimed in the ’150 patent’s claim 8 was critical in solving
the demand for a chip that operates reliably at low cost
and higher throughput. J.A. 752.
The jury’s finding of long-felt, but unsolved need is al-
so supported by substantial evidence. The testimony
reflected that others had tried and failed to develop a
clock and data recovery circuit for use in a multi-lane
product. One of the biggest obstacles identified by the
expert testimony was noise-coupling issues. J.A. 751.
Even Broadcom’s own attempts and resultant failures
support the jury’s findings. J.A. 473.
Taken in sum, the district court found that the objec-
tive indicia of nonobviousness “strongly support[ed]” a
conclusion that the claimed invention would not have
been obvious at the time of invention. J.A. 245 n. 6. This
court agrees and affirms the district court’s denial of
Emulex’s JMOL regarding the validity of the ’150 patent
on the basis of obviousness.
V.
This court reviews a decision to grant or deny an in-
junction for an abuse of discretion. Innogenetics, N.V. v.
Abbott Labs., 512 F.3d 1363, 1379 (Fed. Cir. 2008).
Similarly, the scope of an injunction is reviewed for abuse
of discretion. Streck, Inc. v. Research & Diagnostic Sys.,
Inc., 665 F.3d 1269, 1293 (Fed. Cir. 2012). An abuse of
discretion occurs when a district court exercises its discre-
tion “based upon an error of law or clearly erroneous
BROADCOM CORPORATION v. EMULEX CORPORATION 17
factual findings” or commits “a clear error of judgment in
weighing relevant factors.” Innogenetics, 512 F.3d at
1379.
Before assessing irreparable harm and public interest,
the district court reviewed the characteristics of the
market place. The district court found that Emulex and
Broadcom competed in a market characterized by “design
win” scenarios. J.A. 13. Their customers were original
equipment manufacturers (OEMs)—Dell, HP, IBM,
Cisco—who integrated various component parts into
finished products like servers for data centers. J.A. 13.
OEMs hold competitions to determine which supplier will
provide a given chip or component for each generation of a
product. These design competitions often occur well in
advance because integrating various component parts
together into the OEM’s final product can take extensive
planning and modification. Once an OEM designs a
supplier’s component part into the OEM’s final product, it
is very difficult to alter the design of the OEM product.
The district court noted that “[in] this kind of market, the
exclusion has an effect on firms even if they do not have
an immediately available product.” J.A. 13. The OEM
essentially commits itself to a single supplier until the
next design cycle.
The district court further found that suppliers who
prevail in design-win competitions enjoy two benefits
beyond merely making sales. First, a design-win effec-
tively locks the OEM into using the winner’s component
part and thus temporarily immunizes the winner from
competition. J.A. 14. Second, winners enjoy an “incum-
bency effect” making them more likely to win subsequent
design competitions because the OEM’s familiarity with
the winning supplier creates goodwill. J.A. 14.
The district court then analyzed the eBay factors
through the lens of these market conditions. First, the
district court found that the parties were direct competi-
18 BROADCOM CORPORATION v. EMULEX CORPORATION
tors in the relevant product market. J.A. 14. The district
court noted that Emulex alleged as much in a related
antitrust lawsuit, and that Emulex’s senior executives
had admitted competition at trial. J.A. 14.
The record showed conclusively that Broadcom had
lost market share to Emulex. J.A. 17. The trial court also
noted that requiring a “precise product-by-product re-
placement is too narrow and ignores th[e] true scope of
competition in the market place.” J.A. 17. Finally, the
district court emphasized that Broadcom had never
licensed the ’150 patent individually; and Broadcom only
licensed the ’150 patent where some pressing reason to do
so existed, such as avoiding litigation by completing a
cross-licensing deal. J.A. 18–19.
In light of these findings, the district court concluded
that Broadcom received an irreparable harm from the
infringement. The district court also determined that
money damages were inadequate to compensate Broad-
com largely due to incumbency effects from the design-
win market conditions. J.A. 20. Accordingly, the district
court entered an injunction, but provided an eighteen-
month sunset period ending in April 2013 for certain
existing accused products, including BE2 and BE3. J.A.
24–28. Emulex had already “won” these products, so
immediately enjoining their sale would have penalized
the OEMs and disrupted the supply of servers with no
corresponding benefit to Broadcom. J.A. 27–28.
Relying primarily on Apple, Inc. v. Samsung Electron-
ics Co., 678 F.3d 1314 (Fed. Cir. 2012), Emulex argues
that the district court abused its discretion in granting
the injunction. Emulex argues a lack of irreparable harm
because there was no link between Emulex’s and Broad-
com’s market share changes and there was no causal
nexus “show[ing] that the infringement caused harm in
the first place.” Appellant’s Reply Br. 28 (quoting Apple,
678 F.3d at 1324). Specifically, Emulex contends that
BROADCOM CORPORATION v. EMULEX CORPORATION 19
Broadcom has shown no evidence of demand for the
features claimed in the ’150 patent and the patented
feature is only a “small” component of the infringing
products. Id. at 28–29.
In Apple, the district court found that there was con-
siderable evidence that the patented feature was not a
determinative factor in sales and that the alleged in-
fringement “at most” caused an “insignificant amount of
lost sales.” Apple, 678 F.3d at 1324. Consequently, in
those specific circumstances, this court affirmed the
district court and agreed that a showing of a causal nexus
between infringement and the alleged harm was required:
To show irreparable harm, it is necessary to
show that the infringement caused harm in the
first place. Sales lost to an infringing product
cannot irreparably harm a patentee if consumers
buy that product for reasons other than the pa-
tented feature. If the patented feature does not
drive the demand for the product, sales would be
lost even if the offending feature were absent
from the accused product.
Id.
However, contrary to Emulex’s assertions, the evi-
dence here shows that the infringement did cause the
harm. Emulex and Broadcom were competitors in a
“design wins” market, which is fundamentally different
from the market in Apple. In a design wins market, the
sales are “design wins,” not a steady flow of discrete
product sales as in Apple. Further, this market has a
limited set of customers, e.g., the four “tier one” OEMs.
J.A. 2436. And once a supplier is chosen to meet the
needs of a new product line, the supplier’s component is
essentially designed into the OEM product for its life
cycle. J.A. 2438–39. Finally, in a design wins market,
there is an incumbency effect which enhances a winning
supplier’s ability to successfully compete in successive
20 BROADCOM CORPORATION v. EMULEX CORPORATION
design competitions. J.A. 2439–40. All of these charac-
teristics contrast the market in Apple where there were
discrete sales to numerous consumers.
Because of these market characteristics, the district
court properly concluded that Broadcom’s “exclusion from
a fair opportunity to compete for design wins constitutes
irreparable harm.” J.A. 16. The evidence showed that
Broadcom lost market share as a result of Emulex’s
competition—a clear measure of competition and harm.
J.A. 2625–26. Moreover, the incumbency effect com-
pounded these ramifications because Broadcom and
Emulex competed for design wins from a limited number
of tier one OEMs. J.A. 2436, 2590. Further, the undis-
puted evidence at trial linked the claimed invention of the
’150 patent to the success of the products incorporating it.
J.A. 752. As direct competitors in a limited market,
Broadcom’s harm was clearly linked to Emulex’s in-
fringement of Broadcom’s patent property rights. Douglas
Dynamics, LLC v. Buyers Prods. Co., 717 F.3d 1336, 1345
(Fed. Cir. 2013) (“Where two companies are in competi-
tion against one another, the patentee suffers the harm—
often irreparable—of being forced to compete against
products that incorporate and infringe its own patented
inventions.”)
Furthermore, Emulex is more than just a likely in-
fringer, as was the accused infringer in Apple—Emulex is
an adjudicated infringer. See Apple, 678 F.3d at 1323
(citing Winter v. Natural Res. Def. Council, Inc., 555 U.S.
7, 20 (2008) (“A plaintiff seeking a preliminary injunction
must establish that he is likely to succeed on the merits,
that he is likely to suffer irreparable harm . . . .”)). Broad-
com has shown—not that it is likely to succeed on the
merits and likely to suffer irreparable harm—but that it
in fact has succeeded on the merits and has suffered
irreparable harm. Thus, the balancing in Apple was done
in the context of a preliminary injunction, not a perma-
nent injunction. In this case, the district court properly
BROADCOM CORPORATION v. EMULEX CORPORATION 21
acknowledged the import of an adjudicated harm and
Broadcom’s entitlement to a permanent injunction. J.A.
32, 35.
The courts have a long history of remedying trespass
on property rights—including patent rights—by removing
the trespasser. See, e.g., Presidio Components, Inc. v. Am.
Tech. Ceramics Corp., 702 F.3d 1351, 1362 (Fed. Cir.
2012). This history of removal stems from a constitution-
al and statutory grant to exclude others from one’s prop-
erty. U.S. Const. art. I, § 8, cl. 8 (“by securing for limited
times to . . . inventors the exclusive right to their respec-
tive . . . discoveries”) (emphasis added); 35 U.S.C.
§ 154(a)(1) (“Every patent shall contain . . . a grant to the
patentee . . . of the right to exclude others from making,
using, offering for sale, or selling the invention . . . .”)
(emphasis added).
However, in the interest of equity and with an eye to-
wards protecting the public interest, the decision to grant
or deny a permanent injunction remains within the
equitable discretion of the district courts. Presidio, 702
F.3d at 1362. Equity dictates a four-factor test that a
district court uses when removing a trespasser from
infringed intellectual property. Id. (citing eBay, 547 U.S.
at 391). And the analysis by the district court proceeds
under the “long tradition of equity practice” granting
“injunctive relief upon a finding of infringement in the
vast majority of patent cases.” eBay, 547 U.S. at 395
(Roberts, C.J., concurring). Patent property rights are
especially difficult to protect with solely monetary relief
because “a calculating infringer may thus decide to risk a
delayed payment to obtain use of valuable property”
without the owner’s permission. Presidio, 702 F.3d at
1362–1363.
To protect Broadcom’s property rights, the district
court did not abuse its discretion in granting a permanent
injunction. The district court determined that Broadcom
22 BROADCOM CORPORATION v. EMULEX CORPORATION
and Emulex were competitors and that Broadcom lost
market share while Emulex gained it—thus Broadcom
established irreparable harm. See Douglas Dynamics,
LLC v. Buyers Prods. Co., 717 F.3d 1336, 1345 (Fed. Cir.
2013). The district court also determined that monetary
damages were insufficient, that the balance of hardships
tipped in Broadcom’s favor, and that the public interest
was served by a tailored injunction. J.A. 22. Thus, this
court affirms the district court’s analysis of the factors
and exercise of its discretion in granting a permanent
injunction.
And in exercising its discretion for equitable reme-
dies, the district court formed a well-crafted sunset peri-
od. The terms of the sunset period permit continued sales
for any combination of “specific customer device” and
infringing products already on the market as of October
12, 2011. J.A. 27. The district court selected the October
date because, by then, “a reasonably prudent firm accused
of infringement would have either ceased infringement
and/or begun design-around efforts.” J.A. 27.
Further, the district court’s selection of an eighteen
month sunset period was not an abuse of discretion. The
eighteen months allowed for time to remove the infringing
product from the market without causing significant
downstream disturbance for OEMs and consumers. And
the eighteen-month period is a compromise between the
wide range of time estimates in the record relating to the
design process and product qualification. J.A. 25 (30
month product redesign period); J.A. 26 (14–16 month
product development period); J.A. 27 (4–6 month qualifi-
cation period).
The “district courts are in the best position to fashion
an injunction tailored to prevent or remedy infringement.”
Edwards Lifesciences AG v. CoreValue, Inc., 699 F.3d
1305, 1315 (Fed. Cir. 2012) (quoting TiVo Inc. v. EchoStar
Corp., 646 F.3d 869, 890 n. 9 (Fed. Cir. 2011) (en banc)).
BROADCOM CORPORATION v. EMULEX CORPORATION 23
The district court did just that—it tailored a permanent
injunction to meet unique market concerns with a well-
crafted sunset period. This court finds no abuse of discre-
tion; in fact, this is an exemplary exercise of discretion in
crafting a tailored equitable remedy. Therefore, this court
affirms the district court’s grant of a permanent injunc-
tion with the sunset period.
VI.
For the foregoing reasons, this court affirms the dis-
trict court’s finding that the ’150 patent was infringed and
nonobvious, and the grant of a permanent injunction with
a sunset period.
AFFIRMED