Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 1 of 47 PageID #: 12703
`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 1 of 47 PagelD #: 12703
`
`EXHIBIT 13
`EXHIBIT 13
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 2 of 47 PageID #: 12704
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 1 of 46 Page ID
`#:130266
`
`The California Institute of Technology v. Broadcom Limited et al.; Case No. 2:16-cv-03714-GW-(AGRx)
`Tentative Rulings on:
`
`
`
`(1) Plaintiff’s Motion for Summary Judgment as to No Inequitable Conduct
`(Partial) (Docket No. 942 - public; Docket No. 957 - sealed; see also Docket No.
`994 (notice of errata)); Opposition (Docket No. 1070 - public; Docket No. 1104 -
`sealed); Reply (Docket No. 1153 - public; Docket No. 1180 - sealed)
`
`(2) Defendants’ Motion for Summary Judgment as to No Joint Infringement
`(Docket No. 959 - public; Docket No. 1006 - sealed); Opposition (Docket No.
`1055 - public; Docket No. 1095 - sealed); Reply (Docket No. 1137 - public;
`Docket No. 1183 - sealed)
`
`(3) Plaintiff’s Motion to Strike Certain Opinions of Defendants Experts Brendan
`Frey and Wayne Stark (Docket No. 974 - public; Docket No. 1000 - sealed);
`Opposition (Docket No. 1059 - public; Docket No. 1102 - sealed); Reply (Docket
`No. 1141 - public; Docket No. 1175 - sealed)
`
` (4) Defendants’ Motion to Exclude Infringement Opinions of Dr. Michael Tanner
`(Docket No. 964 - public; Docket No. 1007 – sealed); Opposition (Docket No.
`1057 - public; Docket No. 1094 - sealed); Reply (Docket No. 1133 - public;
`Docket No. 1182 - sealed)
`
`(5) Plaintiff’s Motion to Strike Late-Disclosed Non-Infringing Alternative
`(Docket No. 971 - public; Docket No. 996 - sealed); Opposition (Docket No. 1052
`- public; Docket No. 1101 - sealed); Reply (Docket No. 1144 - public; Docket No.
`1176 - sealed)
`
`(6) Plaintiff’s Motion to Exclude Improper Claim Construction Opinions of Dr.
`Stark and Dr. Blanksby (Docket No. 968 - public; Docket No. 998 - sealed);
`Opposition (Docket No. 1064 - public; Docket No. 1103 - sealed); Reply (Docket
`No. 1149 - public; Docket No. 1174 - sealed)
`
`(7) Broadcom’s Motion for Summary Judgment as to Non-Infringement as to
`Extraterritorial Sales (Docket No. 975 - public; Docket No. 1008 - sealed);
`Opposition (Docket No. 1050 - public; Docket No. 1093 - sealed); Reply (Docket
`No. 1154 - public; Docket No. 1184 - sealed)
`
`[Portions of the parties’ briefing related to the pending motions addressed by this Tentative Ruling were filed under
`seal. The parties will be expected to state their positions as to whether any material should remain under seal during
`the hearing on the motions, including the basis for any continued request to seal.]
`
`1
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 3 of 47 PageID #: 12705
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 2 of 46 Page ID
`#:130267
`
`I.
`
`Introduction
`
`Plaintiff The California Institute of Technology currently alleges patent infringement
`
`against Defendants Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, and
`
`Apple Inc. See First Amended Complaint (“FAC”), Docket No. 36; see also Docket No. 1.
`
`Plaintiff asserts that Defendants infringe fifteen claims from three of its patents: (1) U.S. Patent
`
`No. 7,116,710 (“the ’710 Patent”); (2) U.S. Patent No. 7,421,032 (“the ’032 Patent”); and (3) U.S.
`Patent No. 7,916,781 (“the ’781 Patent”) (collectively, the “Asserted Patents”).1 See Docket No.
`
`409 (Plaintiff’s Amended Notice of Withdrawal of Certain Asserted Claims of Asserted Patents);
`
`see also Docket No. 953 (Joint Report Regarding Pending Disputed Issues).
`
`The parties have filed this first “round” of motions for summary judgment and motions to
`exclude.2 Those motions have been fully briefed.
`
`For the reasons stated in this Order, the Court would rule as follows:
`
`Broadcom’s Motion for Summary Judgment as
`
`to Non-Infringement as to
`
`Extraterritorial Sales (Docket No. 975) would be GRANTED-IN-PART and
`
`DENIED-IN-PART as stated herein.
`
`Defendants’ Motion for Summary Judgment as to No Joint Infringement (Docket No.
`
`959) would be GRANTED.
`
`The Court would DENY-IN-PART, GRANT-IN-PART, and DEFER-IN-PART
`
`1 The fifteen remaining claims in this case are: Claims 20, 22, and 23 of the ’710 Patent; Claims 3, 11, 13,
`17, and 18 of the ’032 Patent; and Claims 5, 6, 9, 10, 13, 19, and 22 of the ’781 Patent. Docket No. 409. Of those
`claims, eleven were selected as representative claims for purposes of adjudication in this lawsuit: Claims 20, 22, and
`23 of the ’710 Patent; Claims 3, 11, 17, and 18 of the ’032 Patent; and Claims 6, 9, 13, and 22 of the ’781 Patent. See
`id.; see also Docket No. 487, 488. On March 22, 2019, in a joint report filed by the parties, Plaintiff stated that it
`intended to file a “formal notice of withdrawal” on the basis that it has “withdrawn its infringement allegations with
`respect to claims 5, 6, 9, and 10 of the ’781 patent and claim 13 of the ’032 patent.” Docket No. 953 at 2; see also
`Docket No. 998 at 2 (Plaintiff’s memorandum in support of motion to exclude improper claim construction opinions,
`stating that it alleges that Defendants infringe Claims 20, 22, and 23 of the ’710 Patent, Claims 3, 11, 17, and 18 of
`the ’032 Patent, and Claims 9, 13 and 22 of the ’781 Patent). Plaintiff has not yet filed such a notice, which, once
`filed, will be understood to remove those five claims from the case entirely given that Plaintiff does not represent that
`any of the claims “[s]elected for adjudication” are representative of any of the withdrawn claims.
`
` 2
`
` Specifically, the following seven motions have been filed: (1) Plaintiff’s Motion for Summary Judgment as
`to No Inequitable Conduct (Partial) (Docket No. 942); (2) Defendants’ Motion for Summary Judgment as to No Joint
`Infringement (Docket No. 959); (3) Plaintiff’s Motion to Strike Certain Opinions of Defendants’ Experts Brendan
`Frey and Wayne Stark (Docket No. 974); (4) Defendants’ Motion to Exclude Infringement Opinions of Dr. Michael
`Tanner (Docket No. 964); (5) Plaintiff’s Motion to Strike Late-Disclosed Non-Infringing Alternative (Docket No.
`971); (6) Plaintiff’s Motion to Exclude Improper Claim Construction Opinions of Dr. Stark and Dr. Blanksby (Docket
`No. 968); (7) Broadcom’s Motion for Summary Judgment as to Non-Infringement as to Extraterritorial Sales (Docket
`No. 975).
`
`2
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 4 of 47 PageID #: 12706
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 3 of 46 Page ID
`#:130268
`
`Plaintiff’s Motion to Exclude Improper Claim Construction Opinions of Dr. Stark and
`
`Dr. Blanksby (Docket No. 968) as stated herein.
`
`As stated herein, Plaintiff’s Motion to Strike Certain Opinions of Defendants’ Experts
`
`Brendan Frey and Wayne Stark (Docket No. 974) would be GRANTED-IN-PART
`
`and DEFERRED-IN-PART pending discussion at the hearing.
`
`Plaintiff’s Motion to Strike Late-Disclosed Non-Infringing Alternative (Docket No.
`
`971) would be DENIED.
`
`The Court would GRANT-IN-PART and DENY-IN-PART Defendants’ Motion to
`
`Exclude Infringement Opinions of Dr. Michael Tanner (Docket No. 964) as stated
`
`herein.
`
`Plaintiff’s Motion for Summary Judgment as to No Inequitable Conduct (Partial)
`
`(Docket No. 942) would be GRANTED.
`
`II.
`
`Legal Standard
`
`A.
`
`Summary Judgment
`
`Under Federal Rule of Civil Procedure (“Rule”) 56, a party may move for summary
`
`judgment, identifying each claim or defense
`
` or the part of each claim or defense
`
` on which
`
`summary judgment is sought, and the court shall grant it when the pleadings, the discovery and
`
`disclosure materials on file, and any affidavits show that “there is no genuine issue as to any
`
`material fact and that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a);
`
`see also Miranda v. City of Cornelius, 429 F.3d 858, 860 n.1 (9th Cir. 2005). As to materiality,
`
`“[o]nly disputes over facts that might affect the outcome of the suit under the governing law will
`
`properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S.
`
`242, 248 (1986). A dispute as to a material fact is “genuine” if there is sufficient evidence for a
`
`reasonable jury to return a verdict for the nonmoving party. Id.
`
`To satisfy its burden at summary judgment, a moving party with the burden of persuasion
`
`must establish “beyond controversy every essential element of its [claim or defense].” S. Cal. Gas
`
`Co. v. City of Santa Ana, 336 F.3d 885, 888 (9th Cir. 2003); O’Connell & Stevenson, Rutter Group
`
`Prac. Guide: Fed. Civ. Proc. Before Trial (“Federal Practice Guide”) § 14:126 (2016). By
`
`contrast, a moving party without the burden of persuasion “must either produce evidence negating
`
`an essential element of the nonmoving party’s claim or defense or show that the nonmoving party
`
`does not have enough evidence of an essential element to carry its ultimate burden of persuasion
`
`3
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 5 of 47 PageID #: 12707
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 4 of 46 Page ID
`#:130269
`
`at trial.” Nissan Fire & Marine Ins. Co., Ltd. v. Fritz Cos., Inc., 210 F.3d 1099, 1102 (9th Cir.
`
`2000); see also Devereaux v. Abbey, 263 F.3d 1070, 1076 (9th Cir. 2001) (en banc) (“When the
`
`nonmoving party has the burden of proof at trial, the moving party need only point out ‘that there
`
`is an absence of evidence to support the nonmoving party’s case.’”) (quoting Celotex Corp. v.
`
`Catrett, 477 U.S. 317, 325 (1986), and citing Fairbank v. Wunderman Cato Johnson, 212 F.3d
`
`528, 532 (9th Cir. 2000) (holding that the Celotex “showing” can be made by “pointing out through
`
`argument . . . the absence of evidence to support plaintiff’s claim”)).
`
`If the party moving for summary judgment meets its initial burden of
`identifying for the court the portions of the materials on file that it believes
`demonstrate the absence of any genuine issue of material fact, the nonmoving
`party may not rely on the mere allegations in the pleadings in order to
`preclude summary judgment[, but instead] must set forth, by affidavit or as
`otherwise provided in Rule 56, specific facts showing that there is a genuine
`issue for trial.
`
`
`T.W. Elec. Serv., Inc., v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987) (internal
`
`citations and quotation marks omitted) (citing, among other cases, Celotex, 477 U.S. at 323). “A
`
`non-movant’s bald assertions or a mere scintilla of evidence in his favor are both insufficient to
`
`withstand summary judgment.” See FTC v. Stefanchik, 559 F.3d 924, 929 (9th Cir. 2009). In
`
`addition, the evidence presented by the parties must be admissible. See Fed. R. Civ. P. 56(e).
`
`Conclusory, speculative testimony in affidavits and moving papers is insufficient to raise genuine
`
`issues of fact and defeat summary judgment. See Thornhill Publ’g Co., Inc. v. GTE Corp., 594
`
`F.2d 730, 738 (9th Cir. 1979). Relatedly, “[a]ny objections to declarations or other evidence must
`
`be made at or (preferably) before the hearing, and should be ruled upon by the court before ruling
`
`on the motion itself.” Federal Practice Guide § 14:333 (citing Hollingsworth Solderless Terminal
`
`Co. v. Turley, 622 F.2d 1324, 1335 n.9 (9th Cir. 1980); Sigler v. American Honda Motor Co., 532
`
`F3d 469, 480 (6th Cir. 2008)). In judging evidence at the summary judgment stage, however,
`
`courts do not make credibility determinations or weigh conflicting evidence at the summary
`
`judgment stage, and must view all evidence and draw all inferences in the light most favorable to
`
`the non-moving party. See T.W. Elec., 809 F.2d at 630-31 (citing Matsushita Elec. Indus. Co., Ltd.
`
`v. Zenith Radio Corp., 475 U.S. 574 (1986)); Anderson, 477 U.S. at 255 (“The evidence of the
`
`non-movant is to be believed and all justifiable inferences are to be drawn in [the non-movant’s]
`
`favor.”).
`
`“If the court does not grant all the relief requested by the motion, it may enter an order
`
`4
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 6 of 47 PageID #: 12708
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 5 of 46 Page ID
`#:130270
`
`stating any material fact – including an item of damages or other relief – that is not genuinely in
`
`dispute and treating the fact as established in the case.” Fed. R. Civ. P. 56(g); see also Federal
`
`Practice Guide § 14:352 (“A partial summary judgment may be granted on motion of either party
`
`for adjudication of particular claims or defenses.”) (citing id. § 14:33).
`
`B.
`
`Motions to Exclude/Strike
`
`1.
`
`Rule 37(c) and Timely Disclosure of Information
`
`Under Rule 37(c)(1), “[i]f a party fails to provide information or identify a witness as
`
`required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply
`
`evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is
`
`harmless.” Fed. R. Civ. P. 37(c)(1). The burden is on the party facing the sanction to show that
`
`the failure to disclose is substantially justified or harmless. Yeti by Molly, Ltd. v. Deckers Outdoor
`
`Corp., 259 F.3d 1101, 1107 (9th Cir. 2001). “Among the factors that may properly guide a district
`
`court in determining whether a violation of a discovery deadline is justified or harmless are: (1)
`
`prejudice or surprise to the party against whom the evidence is offered; (2) the ability of that party
`
`to cure the prejudice; (3) the likelihood of disruption of the trial; and (4) bad faith or willfulness
`
`involved in not timely disclosing the evidence.” Lanard Toys Ltd. v. Novelty, Inc., 375 Fed. App’x.
`
`705, 713 (9th Cir. 2010) (citing David v. Caterpillar, Inc., 324 F.3d 851, 857 (7th Cir. 2003))
`
`(emphasis added).
`
`Generally, “the district court’s discretion to issue sanctions under Rule 37(c)(1)” is given
`
`“particularly wide latitude.” Yeti by Molly, 259 F.3d at 1107. However, discretion may be limited
`
`when the sanction amounts to dismissal of a claim. R & R Sails, Inc. v. Ins. Co. of Pa., 673 F.3d
`
`1240, 1247 (9th Cir. 2012). In such a case, the district court is “required to consider whether the
`
`claimed noncompliance involved willfulness, fault, or bad faith, and also to consider the
`
`availability of lesser sanctions.” Id.
`
`2.
`
`Experts and Daubert
`
`Daubert’s “gatekeeping obligation” requires “that all admitted expert testimony is both
`
`relevant and reliable.” Wendell v. GlaxoSmithKline LLC, 858 F.3d 1227, 1232 (9th Cir. 2017). In
`
`addition, expert testimony must “relate to scientific, technical, or other specialized knowledge,
`
`which does not include unsupported speculation and subjective beliefs.” Guidroz-Brault v.
`
`Missouri Pac. R.R. Co., 254 F.3d 825, 829 (9th Cir. 2001). “The test for reliability, however, is
`
`not the correctness of the expert’s conclusions but the soundness of his methodology.” Stilwell v.
`
`5
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 7 of 47 PageID #: 12709
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 6 of 46 Page ID
`#:130271
`
`Smith & Nephew, Inc., 482 F.3d 1187, 1192 (9th Cir. 2007).
`
`That being said, “far from requiring trial judges to mechanically apply the Daubert factors
`
`- or something like them - to both scientific and non-scientific testimony, Kumho Tire heavily
`
`emphasizes that judges are entitled to broad discretion when discharging their gatekeeping
`
`function.” Hangarter v. Provident Life & Accident Ins. Co., 373 F.3d 998, 1017 (9th Cir. 2004).
`
`Exclusion of expert testimony is proper only when such testimony is irrelevant or unreliable
`
`because “[v]igorous cross-examination, presentation of contrary evidence, and careful instruction
`
`on the burden of proof are the traditional and appropriate means of attacking shaky but admissible
`
`evidence.” Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 596 (1993) (citing Rock v.
`
`Arkansas, 483 U.S. 44, 61 (1987)).
`
`III.
`
`Analysis
`
`A.
`
`Summary Judgment Motion Regarding Extraterritorial Sales
`
`Defendant Broadcom moves for a summary judgment determination that acts relating to a
`
`certain subset of the accused products in this case cannot constitute acts of infringement in the
`United States as a matter of law.3 Docket No. 975. Specifically, Broadcom argues that “almost
`
`
`
` of the accused Broadcom chips – the vast majority of the accused Broadcom chips in
`
`this case – were made, sold, and delivered outside the United States pursuant to contracts formed
`
`outside the United States.” Docket No. 1008-1 at 1.
`
`Section 271(a) of the Patent Act states, “whoever without authority makes, uses, offers to
`
`sell, or sells any patented invention, within the United States or imports into the United States any
`
`patented invention during the term of the patent therefor, infringes the patent.” 35 U.S.C. § 271(a).
`
`The core disputes between the parties relate to: (1) what constitutes a “sale” or “offer for
`
`sale” under 35 U.S.C. § 271(a), and (2) whether, in this case, there are facts to support the
`
`conclusion that sales or offers for sale occurred within the United States.
`
`1.
`
` Offer for Sale
`
`Regarding an “offer for sale,” the Federal Circuit has stated:
`
`“the location of the contemplated sale controls whether there is an offer to sell
`within the United States.” [Transocean Offshore Deepwater Drilling, Inc. v.
`Maersk Contractors USA, Inc., 617 F.3d 1296, 1309 (Fed. Cir. 2010)]
`
`3 See Broadcom’s Motion for Summary Judgment as to Non-Infringement as to Extraterritorial Sales, Docket
`No. 975 (public), Docket No. 1008 (sealed); Plaintiff’s Opposition, Docket No. 1050 (public), Docket No. 1093
`(sealed); Broadcom’s Reply, Docket No. 1154 (public), Docket No. 1184 (sealed).
`
`6
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 8 of 47 PageID #: 12710
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 7 of 46 Page ID
`#:130272
`
`(emphasis added). “In order for an offer to sell to constitute infringement, the
`offer must be to sell a patented invention within the United States.” Id. In
`Transocean, contract negotiations occurred outside the United States for
`delivery and performance in the United States. This court held that the
`location of the contemplated sale controlled and that the offer to sell infringed
`the patent at issue.
`
`The case now before us involves the opposite situation, where the negotiations
`occurred in the United States, but the contemplated sale occurred outside the
`United States. We adopt the reasoning of Transocean and conclude here that
`Pulse did not directly infringe the Halo patents under the “offer to sell”
`provision by offering to sell in the United States the products at issue, because
`the locations of the contemplated sales were outside the United States. Cisco
`outsourced all of its manufacturing activities to foreign countries, and it is
`undisputed that the locations of the contemplated sales were outside the
`United States. Likewise, with respect to other Pulse customers, there is no
`evidence that the products at issue were contemplated to be sold within the
`United States.
`
`An offer to sell, in order to be an infringement, must be an offer contemplating
`sale
`in
`the United States.
` Otherwise,
`the presumption against
`extraterritoriality would be breached. If a sale outside the United States is not
`an infringement of a U.S. patent, an offer to sell, even if made in the United
`States, when the sale would occur outside the United States, similarly would
`not be an infringement of a U.S. patent. We therefore hold that Pulse did not
`offer to sell the products at issue within the United States for purposes of §
`271(a).
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc., 831 F.3d 1369, 1380 (Fed. Cir. 2016).4
`
`
`
`Plaintiff states that Halo’s holding relating to offers for sale should be rejected as abrogated
`
`by the Supreme Court’s determination in a recent case, WesternGeco LLC v. ION Geophysical
`
`Corp., 138 S. Ct. 2129 (2018). In WesternGeco, the Court considered whether Section 284 of the
`
`Patent Act permitted a patent owner to recover lost foreign profits for infringement pursuant to
`
`4 The Federal Circuit originally reached the same determination, relying on the same analysis, in Halo Elecs.,
`Inc. v. Pulse Elecs., Inc., 769 F.3d 1371, 1377 (Fed. Cir. 2014). The Supreme Court subsequently vacated and
`remanded with respect to the proper test for evaluating enhanced damages under 35 U.S.C. § 284. Halo Elecs., Inc.
`v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016). On remand, the Federal Circuit reinstated the portion of its opinion that
`was not addressed by the Supreme Court, which included this excerpt. Halo, 831 F.3d at 1373 (“Because the Supreme
`Court’s review was limited to the issue of enhanced damages and left undisturbed the judgments on other issues, we
`reaffirm the summary judgment of no direct infringement of the Halo patents by the accused products that Pulse
`manufactured, shipped, and delivered outside the United States, and we also reaffirm all aspects of the cross-appeal.
`On those issues, we restate herein the reasoning stated in our earlier opinion.”). This Order refers to the remanded
`opinion, Halo, 831 F.3d 1369, unless otherwise noted.
`
`7
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 9 of 47 PageID #: 12711
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 8 of 46 Page ID
`#:130273
`
`Section 271(f)(2). See 35 U.S.C. § 271(f)(2).5 The Court found that “Section 271(f)(2) focuses
`
`on domestic conduct . . . . The conduct that § 271(f)(2) regulates - i.e., its focus - is the domestic
`
`act of ‘suppl[ying] in or from the United States.’” WesternGeco, 138 S. Ct. at 2137-38. The Court
`
`went on to state:
`
`[Defendant] ION is mistaken to assert that this case involves an
`extraterritorial application of § 284 simply because “lost-profits damages
`occurred extraterritorially, and foreign conduct subsequent to [ION’s]
`infringement was necessary to give rise to the injury.” Those overseas events
`were merely incidental to the infringement. In other words, they do not have
`“primacy” for purposes of the extraterritoriality analysis. [Morrison v. Nat’l
`Australia Bank Ltd., 561 U.S. 247, 267 (2010)].
`
`Id. at 2138 (citation omitted).
`
`Plaintiff’s argument regarding WesternGeco’s impact on the Federal Circuit’s ruling
`
`relating to offers for sale in Halo is unpersuasive. WesternGeco was limited to considering
`
`whether the case involved a domestic application of the provisions in Sections 284 and 271(f)(2)
`
`of the Patent Act. WesternGeco did not consider the focus of Section 271(a). It is not this Court’s
`
`place to say that WesternGeco abrogated Halo’s holding under these circumstances. This is
`
`particularly true when, since the time WesternGeco was issued, the Federal Circuit has referred to
`
`and appeared to cite with approval the determinations in Halo. See Texas Advanced
`
`Optoelectronic Sols., Inc. v. Renesas Elecs. Am., Inc., 895 F.3d 1304, 1330 (Fed. Cir. 2018)
`
`(“TAOS”) petition for cert. docketed, No. 18-600 (Nov. 7, 2018) (describing facts presented in
`
`Halo and stating, “[u]nder those undisputed facts, this court affirmed the district court’s conclusion
`on summary judgment that there was no sale or offer to sell in the United States.”).6
`
`5 Section 271(f)(2) states,
`
`Whoever without authority supplies or causes to be supplied in or from the United States any
`component of a patented invention that is especially made or especially adapted for use in the
`invention and not a staple article or commodity of commerce suitable for substantial
`noninfringing use, where such component is uncombined in whole or in part, knowing that
`such component is so made or adapted and intending that such component will be combined
`outside of the United States in a manner that would infringe the patent if such combination
`occurred within the United States, shall be liable as an infringer.
`
`35 U.S.C. § 271(f)(2).
`
`6 In a footnote of its opposition, Plaintiff states:
`
`Summary judgment is all the more inappropriate at this time because the Supreme Court is
`considering whether to grant certiorari in TAOS on whether, under 35 U.S.C. § 271(a), “an
`‘offer[ ] to sell’ occurs where the offer is actually made or where the offer contemplates that
`
`8
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 10 of 47 PageID #: 12712
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 9 of 46 Page ID
`#:130274
`
`It is undisputed that the accused products that are the subject of Broadcom’s motion are
`
`manufactured outside of the United States and shipped to other entities outside of the United
`
`States.7 See Defendants’ Statement of Undisputed Facts Regarding Summary Judgment as to Non-
`
`Infringement as to Extraterritorial Sales, Docket No. 1184-1 § I, ¶¶ 1-10. Under controlling
`
`Federal Circuit authority, Plaintiff cannot show that these chips are offered for sale within the
`
`United States.
`
`2.
`
` Sale
`
`Federal Circuit authority is not so clear-cut insofar as what constitutes a sale in the United
`
`States under Section 271(a). The issue was also addressed in Halo, where the Federal Circuit
`
`found that “the district court did not err in granting summary judgment of no direct infringement
`
`with respect to those products that Pulse manufactured, shipped, and delivered outside the United
`
`States” because the products were not sold (or offered for sale) in the United States. Halo, 831
`
`F.3d at 1376. The Federal Circuit found that:
`
`[a]lthough Pulse and Cisco had a general business agreement, that agreement
`did not refer to, and was not a contract to sell, any specific product. While
`Pulse and Cisco engaged in quarterly pricing negotiations for specific
`products, the negotiated price and projected demand did not constitute a firm
`agreement to buy and sell, binding on both Cisco and Pulse. Instead, Pulse
`received purchase orders from Cisco’s foreign contract manufacturers, which
`then firmly established the essential terms including price and quantity of
`
`the proposed sale will take place.” Supreme Court Docket 18-600, Petition for a writ of
`certiorari, “Question Presented” (Nov. 5, 2018). The Supreme Court recently invited the
`Solicitor General to weigh in with the views of the US. Docket 18-600 (Jan. 7, 2019).
`
`Docket No. 1093 at 22-23 n.9. Unless and until the petition for a writ of certiorari is granted in TAOS, this Court
`declines to consider waiting to make its determinations based on currently-applicable Federal Circuit precedent. The
`Court expects that the parties will keep it apprised of developments with the TAOS petition.
`
`7 Some underlying “undisputed” facts referenced in this Order, including this one, are technically disputed
`
`by Plaintiff or Defendants. The Court has reviewed said disputes and identifies a fact as “undisputed” when supported
`by the cited evidence, altering the proffered facts if necessary to accurately reflect the uncontroverted evidence. To
`the extent that the cited underlying “undisputed” facts have been disputed, the Court finds that the stated disputes: (1)
`fail to controvert the proffered “undisputed” facts, (2) dispute the facts on grounds not germane to the below
`statements, and/or (3) fail to cite evidence in support of the disputing party’s position. As such, the Court treats such
`facts as undisputed. Any proffered facts not included in this tentative ruling were found to be: (1) improper opinions
`or conclusions rather than facts, (2) were unsupported by admissible evidence, (3) were deemed irrelevant to the
`Court’s present analysis, or (4) some combination thereof. To the extent the Court uses any facts in this tentative
`ruling, and does not note that they are disputed, it has determined that they are undisputed.
`
`Although certain documents are listed on the electronic docket as “Objection/Opposition” to particular
`pending motions (see, e.g., Docket No. 1104), based on the Court’s review of such entries, it does not appear that
`either party has submitted evidentiary objections to the other side’s proffered evidence.
`
`9
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 11 of 47 PageID #: 12713
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 10 of 46 Page ID
`#:130275
`
`binding contracts to buy and sell. Moreover, Pulse was paid abroad by those
`contract manufacturers, not by Cisco, upon fulfillment of the purchase orders.
`Thus, substantial activities of the sales transactions at issue, in addition to
`manufacturing and delivery, occurred outside the United States. Although
`Halo did present evidence that pricing negotiations and certain contracting
`and marketing activities took place in the United States, which purportedly
`resulted in the purchase orders and sales overseas, as indicated, such pricing
`and contracting negotiations alone are insufficient to constitute a “sale”
`within the United States.
`
`Halo, 831 F.3d at 1378.
`
`In comparison, in another decision, the Federal Circuit vacated a portion a jury’s damages
`
`award, finding that although the defendant had not met its burden of showing that judgment as a
`
`matter of law was warranted as to certain of its accused semiconductor microchips, a new trial was
`
`necessary on the issue of whether the chips that were not made or used in, or imported into, the
`
`United States could be considered “sold” in the United States under the particular facts of the case.
`
`Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1311 (Fed. Cir. 2015)
`
`(“CMU”). The Federal Circuit stated:
`
` [t]he standards for determining where a sale may be said to occur do not
`pinpoint a single, universally applicable fact that determines the answer, and
`it is not even settled whether a sale can have more than one location. See
`Halo, 769 F.3d at 1378-79 (collecting cases; relying in part on N. Am. Philips
`Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576, 1579 (Fed. Cir. 1994)).
`Places of seeming relevance include a place of inking the legal commitment
`to buy and sell and a place of delivery, see id.; Transocean, 617 F.3d at 1311;
`cf. Norfolk & W. Ry. Co. v. Sims, 191 U.S. 441, 447, 24 S.Ct. 151, 48 L.Ed.
`254 (1903), and perhaps also a place where other “substantial activities of the
`sales transactions” occurred, Halo, 769 F.3d at 1379 & n. 1 (focusing on
`where “substantial activities of the sales transactions” occurred, but declining
`to decide whether the location of contract formation on the facts of that case
`would have established a sales location). At this point, we do not settle on a
`legal definition or even to say whether any sale has a unique location. The
`governing legal standards have not been the subject of meaningful briefing
`here. Identifying those standards, along with relevant factual development,
`is better undertaken in the remand we order, in part because further factual
`development may narrow the legal issues actually requiring decision. At
`present, we do not have a full understanding of, among other things, what a
`“design win” meant legally and practically, how such a “design win” in the
`United States in this case compares with the activities that occurred in the
`United States in Halo (which were insufficient), and where specific chip
`orders were negotiated and made final. Until fuller exploration of factual and
`legal issues occurs on remand, it is premature to rule on whether sales
`
`10
`
`

`

`Case 1:22-cv-00252-MSG Document 193-13 Filed 01/16/24 Page 12 of 47 PageID #: 12714
`Case 2:16-cv-03714-GW-AGR Document 1932-2 Filed 06/06/19 Page 11 of 46 Page ID
`#:130276
`
`occurred in the United States for the chips at issue.
`
` *
`
` *
`
`*
`Chip designers like [Defendant] Marvell sell customized chips with designs
`specifically tailored for incorporating into customers’ products. J.A. 42,123-
`24 (Marvell VP of sales: “[E]very chip that Marvell designs for a customer is
`specifically aimed for that particular customer. It’s not, cannot be sold to the,
`you know, in the general market.”). Because of the customized nature of the
`chips, designers and potential customers put themselves through a lengthy
`“sales cycle,” involving extensive joint work over several years, before any
`sale