United States Court of Appeals 

for the Federal Circuit ______________________ 

CALIFORNIA INSTITUTE OF TECHNOLOGY,

Plaintiff-Appellee

v.

BROADCOM LIMITED, NKA BROADCOM INC., 

BROADCOM CORPORATION, AVAGO 

TECHNOLOGIES LIMITED, NKA AVAGO 

TECHNOLOGIES INTERNATIONAL SALES PTE. 

LIMITED, APPLE INC.,

Defendants-Appellants

______________________ 

2020-2222, 2021-1527

______________________ 

Appeals from the United States District Court for the 

Central District of California in No. 2:16-cv-03714-GWAGR, Judge George H. Wu.

______________________ 

Decided: February 4, 2022

______________________ 

KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart & 

Sullivan, LLP, Los Angeles, CA, argued for plaintiff-appellee. Also represented by JAMES R. ASPERGER; BRIAN P.

BIDDINGER, EDWARD J. DEFRANCO, New York, NY; TODD 

MICHAEL BRIGGS, KEVIN P.B. JOHNSON, Redwood Shores, 

CA; DEREK L. SHAFFER, Washington, DC; KEVIN 

ALEXANDER SMITH, San Francisco, CA. 

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2 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

 WILLIAM F. LEE, Wilmer Cutler Pickering Hale and 

Dorr LLP, Boston, MA, argued for defendants-appellants. 

Also represented by LAUREN B. FLETCHER, MADELEINE C.

LAUPHEIMER, JOSEPH J. MUELLER; STEVEN JARED HORN,

DAVID P. YIN, Washington, DC; MARK D. SELWYN, Palo 

Alto, CA. 

 ______________________ 

Before LOURIE, LINN, and DYK, Circuit Judges. 

Opinion for the Court filed by Circuit Judge LINN. 

Opinion concurring-in-part and dissenting-in-part filed by 

Circuit Judge DYK.

LINN, Circuit Judge.

Broadcom Limited, Broadcom Corporation, and Avago 

Technologies Ltd. (collectively “Broadcom”) and Apple Inc. 

(“Apple”) appeal from the adverse decision of the District 

Court for the Central District of California in an infringement suit filed by the California Institute of Technology 

(“Caltech”) for infringement of its U.S. Patents No. 

7,116,710 (“the ’710 patent”), No. 7,421,032 (“the ’032 patent”), and No. 7,916,781 (“the ’781 patent”). 

Because the district court did not err in its construction 

of the claim limitation “repeat” and because substantial evidence supports the jury’s verdict of infringement of the asserted claims of the ’710 and ’032 patents, we affirm the 

district court’s denial of JMOL on infringement thereof. 

We also affirm the district court’s conclusion that claim 13 

of the ’781 patent is patent-eligible but vacate the jury’s 

verdict of infringement thereof because of the district 

court’s failure to instruct the jury on the construction of the 

claim term “variable number of subsets.” We thus remand 

for a new trial on infringement of claim 13 of the ’781 patent. We further affirm the district court’s summary judgment findings of no invalidity based on IPR estoppel and 

its determination of no inequitable conduct. We affirm the 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 3

district court’s decision with respect to its jury instructions 

on extraterritoriality. But because Caltech’s two-tier damages theory cannot be supported on this record, we vacate 

the jury’s damages award and remand for a new trial on 

damages. 

BACKGROUND

I. The Caltech Patents

Caltech’s ’710 and ’032 patents disclose circuits that

generate and receive irregular repeat and accumulate 

(“IRA”) codes, a type of error correction code designed to 

improve the speed and reliability of data transmissions. 

Wireless data transmissions are ordinarily susceptible to

corruption arising from noise or other forms of interference. IRA codes help to identify and correct corruption after it occurs. 

The encoding process begins with the processing of 

data before it is transmitted. The data consists of information bits in the form of 1’s and 0’s. The information bits 

are input into an encoder, a device that generates codewords comprised of parity bits and the original information 

bits. Parity bits are appended at the end of a codeword. 

Codewords are created in part by repeating information 

bits in order to increase the transmission’s reliability. 

When noise or other forms of interference introduce errors 

into the codewords during transmission, the decoder identifies these errors and relies on the codeword’s redundant 

incorporation of the original string of information bits to 

correct and eliminate the errors. 

Before Caltech’s patents, error correction codes had already incorporated repetition and irregular repetition. 

These codes, however, were less than optimally efficient because they were either encoded or decoded in quadratic 

time, which meant that the number of computations 

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4 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

required to correct a given number of bits far exceeded the 

number of bits ultimately corrected.

In the ’710 and ’032 patents, the IRA codes are lineartime encodable and decodable, rather than quadratic. ’710

patent, col. 2, ll. 6–7 (“The encoded data output from the 

inner coder may be transmitted on a channel and decoded 

in linear time.”); id. col. 2, l. 59 (“The inner coder 206 may 

be a linear rate-1 coder.”); id. col. 3, ll. 25–26 (“An IRA code 

is a linear code.”). Using a linear code means that the relationship between the bits corrected and the computations 

required is directly proportional. Minimizing the number 

of calculations that an encoder or decoder must perform 

permits smaller, more efficient chips with lower power requirements.

The claimed improvement involves encoding the information bits through a process of irregular repetition, 

scrambling, summing, and accumulation. Repeating inputted information bits is necessary to increase the reliability of data transmissions, and irregular repetition 

minimizes the number of times that information bits are 

repeated. Minimizing the number of times that an information bit is repeated is crucial to the efficiency of the 

claimed inventions because the repetitions impact the device’s coding rate or speed, as well as the code’s complexity. 

The fewer repeated bits there are, the fewer number of 

computations that an encoder must perform, which in turn 

permits smaller circuits, decreased power requirements, 

and decreased operating temperatures in devices incorporating the circuits. 

The claims and accompanying specifications of the Caltech patents make clear that each inputted information bit 

must be repeated. The parties agree that every claim at 

issue requires irregular repetition of information bits either explicitly or via the court’s construction. This is so 

even where the irregular repetition is not expressly 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 5

required by the claims. For example, the agreed-upon construction of a Tanner graph in the ’032 patent requires that 

“every message bit is repeated . . . .” J. App’x 33. Furthermore, the claims and accompanying specifications make 

clear that each bit must be repeated irregularly, stating, 

for example in the ’710 patent, “a fraction of the bits in the 

block may be repeated two times, a fraction of bits may be 

repeated three times, and the remainder of bits may be repeated four times.” ’710 patent, col. 2, ll. 53–58.

The ‘781 patent discloses and claims a method for creating codewords in which “information bits appear in a variable number of subsets.” Before trial, Apple and 

Broadcom sought summary judgment that claim 13 was 

unpatentable under 35 U.S.C. § 101. After finding that the 

claims were directed to a patent-eligible subject matter 

(step 1 of Alice1)—a method of performing error correction 

and detection encoding with the requirement of irregular 

repetition—the court declined to reach whether they contained an inventive concept (step 2 of Alice). To support 

patentability, Caltech argued that the “variable number of 

subsets” language required irregular information bit repetition. The district court agreed and adopted and relied on 

Caltech’s interpretation to deny summary judgment of unpatentability. No party on appeal challenges this claim interpretation.

II. The Accused Products

Caltech alleged infringement by certain Broadcom WiFi chips and Apple products incorporating those chips, including smartphones, tablets, and computers. The accused 

Broadcom chips were developed and supplied to Apple pursuant to Master Development and Supply Agreements 

1 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 

208 (2014). 

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6 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 

negotiated and entered into in the United States. Caltech 

specifically identified as infringing products two encode1·s 

contained in the Broadcom chips-a Richardson-Urbanke 

("RU") encoder and a low-area ("LA") encoder. In the accused encoders, incoming information bits are provided to 

AND gates in the RU encoder or multiplexers in the LA 

encodei·. 

Throughout the ti·ial and on appeal, the parties treated 

AND gates and multiplexers as functionally identical for 

all relevant issues. It thus suffices to describe in detail the 

RU encoder only. In the RU encoder, each information bit 

is simultaneously fed as one input to 972 separate AND 

gates. Each AND gate receives a second input-a "paritycheck" or "enable" bit of 0 or I-derived from a low-density 

parity check matrix. This matrix is an anay of l 's and O's. 

A low-density parity check matrix is one in which the number of l's in the matrix is significantly fewer than the number of O's. 

In its brief, Broadcom presents the following table, using the example of the functioning of a single AND gate, to 

show how outputs ai·e determined by the two inputs: 

Input 1 Input 2 AND Gate 

(Information Bit) (Parity-Check Bit) Output 

0 0 0 

0 1 0 

1 0 0 

1 1 1 

For each AND gate, the output of the gate is 1 if both 

inputs (the information bit and the parity-check bit) are l ; 

otherwise, the output is 0. One consequence of this logic is 

that if the parity-check bit is 1 (as shown in rows two and 

four), then the output is identical to the information-bit input. If the parity-check bit is 0, the output is 0, regardless 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 7

of the value of the input (rows one and three). Throughout 

trial, the parties referred to parity-check bits and enable 

bits interchangeably. Parity-check bits determine the action of the AND gates, which are open/on when the paritycheck bit is 1 and closed/off when the parity-check bit is 0.

Caltech sued Broadcom and Apple on May 26, 2016, alleging infringement under 35 U.S.C. § 271 by Broadcom 

wireless chips and Apple products incorporating those 

chips. Both defendants denied that any of the accused devices infringed Caltech’s patents, and in turn asserted 

counterclaims for declaratory judgment of non-infringement, invalidity under 35 U.S.C. §§ 101, 102, 103, and/or 

112, and unenforceability due to inequitable conduct. 

III. Pre-Trial Proceedings

Before trial, Apple filed multiple IPR petitions challenging the validity of the claims at issue, relying on various prior art references. The Patent Trial and Appeal 

Board (“PTAB” or “Board”) issued a number of written decisions, which concluded that Apple failed to show the challenged claims were unpatentable as obvious. Before the 

district court, Apple and Broadcom argued that the asserted claims would have been obvious over new combinations of prior art not asserted in the IPR proceedings. 

The district court granted summary judgment of no invalidity, interpreting 35 U.S.C. § 315(e)(2) as precluding

parties from raising invalidity arguments at trial that they 

reasonably could have raised in their IPR petitions. It also 

denied the motion filed by Apple and Broadcom for summary judgment of invalidity under 35 U.S.C. § 101 for the 

’781 patent. The district court granted Caltech’s summary 

judgment motion as to inequitable conduct, finding no inequitable conduct with respect to Caltech’s failure to disclose Richardson99 during prosecution. The district court 

reasoned that this prior art reference was not but-for material to the PTO’s grant of Caltech’s patents. 

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8 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

The district court also conducted a Markman hearing 

and initially construed the claim limitation “repeat.” That 

construction is germane to all of the asserted claims. At 

the conclusion of the Markman hearing, the district court 

construed “repeat” to have its plain and ordinary meaning. 

The district court noted that the repeated bits “are a construct distinct from the original bits from which they are 

created,” but that they need not be generated by storing 

new copied bits in memory. 

IV Trial Proceedings

A. Infringement of the ’710 and ’032 Patents

At trial, Caltech argued that the accused chips infringed claims 20 and 22 of the ’710 patent and claims 11 

and 18 of the ’032 patent. Both groups of claims explicitly 

require irregular repetition; i.e., repetition of groups of information bits an irregular number of times. Claims 20 

and 22 of the ’710 patent depend from claim 15, which 

claims: 

15. A coder comprising: a first coder having an input configured to receive a stream of bits, said first 

coder operative to repeat said stream of bits irregularly and scramble the repeated bits; and a second 

coder operative to further encode bits output from 

the first coder at a rate within 10% of one. 

’710 patent, col. 8, ll. 1–6. Claims 11 and 18 of the ’032

patent cover devices for encoding and decoding pursuant to 

a Tanner graph:2 

2 During claim construction, the parties agreed that 

a Tanner graph is a visual representation of the “constraints that determine the parity bits” created by an IRA 

code. J. App’x 33. 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 9

11. A device comprising: an encoder configured to 

receive a collection of message bits and encode the 

message bits to generate a collection of parity bits 

in accordance with the following Tanner graph:

18. A device comprising: a message passing decoder configured to decode a received data stream 

that includes a collection of parity bits, the message 

passing decoder comprising two or more check/variable nodes operating in parallel to receive messages from neighboring check/variable nodes and 

send updated messages to the neighboring variable/check nodes, wherein the message passing decoder is configured to decode the received data 

stream that has been encoded in accordance with 

the following Tanner graph:

·········/P\ 

•········\p): ·~ ... ~·· 

·········•18r I 

\c} I ·~ .... • 

•······---r3\: 

.... ... \:8L <n ..... . ~ ...... . 

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10 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

’032 patent, col. 8, l. 63–col. 9, l. 34; col. 9, l. 57–col. 10, l. 

42. The district court’s claim construction ruling required 

that the Tanner graphs in claims 11 and 18 also perform

repetition. J. App’x 33 (defining Tanner graph as a depiction of “an IRA code as a set of parity checks where every 

message bit is repeated, at least two different subsets of 

message bits are repeated a different number of times”). 

No party challenges this construction on appeal. 

During trial, the district court revisited and clarified 

its earlier claim construction ruling of the term “repeat”

and instructed the jury that repeat means “generation of 

additional bits, where generation can include, for example, 

duplication or reuse of bits.” Apple and Broadcom then argued that the chips did not infringe the ’710 and ’032 patents because they did not repeat information bits at all, 

much less irregularly. The jury ultimately found infringement of all the asserted claims. Broadcom and Apple filed 

post-trial motions for JMOL and a new trial, challenging 

the jury’s infringement verdict. The district court denied 

JMOL, finding no error in its claim construction ruling and 

~ 

•········/8f I 

......... \o.L I ... ':' .. , 

•······•18\~ 

•·······.\bi~ .. ,._ .. : 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 11

concluding that the verdict was supported by substantial 

evidence. 

B. Infringement of the ’781 Patent

At trial, Caltech also argued that the accused chips infringed claim 13 of the ’781 patent. That patent discloses 

and claims a method for creating codewords in which “information bits appear in a variable number of subsets.” 

Claim 13 recites:

A method of encoding a signal, comprising: 

receiving a block of data in the signal to be encoded, 

the block of data including information bits; and 

performing an encoding operation using the information bits as an input, the encoding operation including an accumulation of mod-2 or exclusive-OR 

sums of bits in subsets of the information bits, the 

encoding operation generating at least a portion of 

a codeword, 

wherein the information bits appear in a variable 

number of subsets.

’781 patent, col. 8, ll. 7–16. 

Despite its construction at the summary judgment 

stage that the claim term “variable number of subsets” requires irregular information bit repetition, the district 

court declined to provide the jury with an instruction of 

that claim construction determination and the jury determined that Apple and Broadcom infringed claim 13 of the 

’781 patent. Broadcom and Apple filed JMOL and new trial 

motions arguing that the district court erred in refusing 

their requested instruction and that JMOL of noninfringement was appropriate because the irregular repetition requirement was not satisfied. In denying these post-trial

motions, the district court concluded that it was “within its 

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12 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

discretion” not to issue this instruction so as not to “confuse 

the record on this issue.” 

C. Damages

To compensate for Broadcom and Apple’s infringement, 

Caltech proposed a two-tier damages theory, which sought 

different royalty rates from each of the infringers despite 

the fact that liability arose from the same accused technology in the same chips. Even though the district court 

voiced its discomfort with the two-tier theory, it allowed 

Caltech to present the theory to the jury, which relied on it

to award Caltech $270,241,171 for Broadcom’s infringement and $837,801,178 for Apple’s infringement. The 

jury’s damages award was based on Caltech’s experts’ testimony, admitted over Broadcom and Apple’s objection. 

Appellants challenged the damages award in their posttrial motions, which the district court denied. The district 

court entered judgment against Broadcom totaling 

$288,246,156, and against Apple totaling $885,441,828. 

These awards included pre-judgment interest, as well as 

post-judgment interest and an ongoing royalty at the rate 

set by the jury’s verdict. 

Broadcom and Apple appeal. We have jurisdiction pursuant to 28 U.S.C. §1295(a)(1). 

DISCUSSION

I. Standard of Review

Claim construction is reviewed de novo when relying 

on intrinsic evidence. Teva Pharms. USA, Inc. v. Sandoz, 

Inc., 574 U.S. 318, 333 (2015). Infringement and damages 

are reviewed for substantial evidence. Lucent Techs., Inc. 

v. Gateway, Inc., 580 F.3d 1301, 1309, 1324 (Fed. Cir. 

2009). Statutory interpretation is reviewed de novo. Power 

Integrations v. Semiconductor Components Indus., LLC, 

926 F.3d 1306, 1313 (Fed. Cir. 2019). Patent-eligibility under 35 U.S.C. § 101 is reviewed de novo. Recognicorp, LLC 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 13

v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017). We 

review patent jury instructions on patent law issues de 

novo, asking if the instructions were legally erroneous and 

prejudicial. Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 

F.3d 629, 638-39 (Fed. Cir. 2011). 

We review a district court’s order denying JMOL under 

the standard applied by the regional circuit. Apple, Inc. v. 

Samsung Electronics Co., Ltd., 839 F.3d 1034, 1040 (Fed. 

Cir. 2016). In the Ninth Circuit, JMOL “is proper when the 

evidence permits only one reasonable conclusion and the 

conclusion is contrary to that of the jury.” See Monroe v. 

City of Phoenix, 248 F.3d 851, 861 (9th Cir. 2001). The 

Ninth Circuit explains that “[t]he evidence must be viewed 

in the light most favorable to the nonmoving party, and all 

reasonable inferences must be drawn in favor of that 

party.” Id. The Ninth Circuit reviews a district court’s decision to deny JMOL de novo. Id. 

II. Infringement

A. The ’710 and ’032 Patents

Broadcom and Apple argue that the district court erroneously construed “repeat,” contending that the accused 

AND gates and multiplexers do not “repeat” information 

bits in the manner claimed, but instead combine the information bits with bits from a parity-check matrix to output 

new bits reflecting that combination. Broadcom and Apple 

further argue that the AND gates and multiplexers also do 

not generate bits “irregularly,” asserting that they output 

the same number of bits for every information bit. Caltech 

argues in response that expert testimony throughout the 

record establishes that every information bit is repeated an 

irregular number of times. According to Caltech, the jury 

heard testimony explaining that in the RU devices every bit 

in the stream of information bits is fed by wire simultaneously to the information inputs of all 972 AND gates and 

that at any time, at least 3 and up to 12 of those AND gates 

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14 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

will be enabled to repeat that bit at the output of the AND 

gates. We find no error in the district court’s construction 

of the term “repeat” and agree with Caltech that substantial evidence in the record supports the jury’s verdict on infringement.

1. Claim Construction of “repeat”

The district court construed “repeat” to mean “generation of additional bits, where generation can include, for 

example, duplication or reuse of bits” (emphasis added). J. 

App’x 171. Broadcom and Apple argue that that construction is inconsistent with the claim language, the specification and the construction given by another judge in a 

different case.3 Caltech argues in response that the plain 

claim language requiring repeating information bits does 

not require generating new, distinct bits and that the district court was correct in construing the term to not exclude 

the reuse of bits. We agree with Caltech.

The district court correctly observed that the claims require repeating but do not specify how the repeating is to 

occur: “The claims simply require bits to be repeated, without limiting how specifically the duplicate bits are created 

or stored in the memory.” J. App’x 10. The specifications 

confirm that construction and describe two embodiments, 

neither of which require duplication of bits. The district 

court carefully and fully considered both the language of 

the claims and that of the written description and faithfully 

applied our precedent to reach the construction made during the trial and presented to the jury. We are not 

3 Broadcom and Apple misplace reliance on the construction of the term “repeat” made on an undeveloped record in the context of a summary judgment motion. See 

California Institute of Technology v. Hughes Communications Inc., 35 F. Supp. 3d 1176 (C.D. Cal. 2014). 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 15

persuaded that the district court erred in construing the 

term “repeat” and, therefore, affirm the same. 

2. JMOL on Infringement

Broadcom and Apple argue that the evidence before the 

jury on infringement permitted only one verdict, namely no 

infringement, and that the district court erred in denying 

JMOL. Broadcom and Apple put forth two rationales for 

noninfringement of the “irregular repeat” requirement, Appellant’s Br. 27–31. First, looking at each gate alone and 

commenting on the “repeat” requirement, they argue that

the AND gate does not “repeat” the inputted information 

bit “because the AND gate’s output depends on not only the 

information bit but also the parity-check-matrix bit.” Appellant’s Br. 29. Second, focusing on the “irregular” half of 

“irregular repeat,” they argue that “even if the outputted 

bits could be deemed ‘repeats’ of the information bits,” “any 

repetition is not ‘irregular’ because each information bit 

leads to the same number of outputted bits.” Appellant’s 

Br. 30.

Caltech argues in response that the jury was provided 

with substantial evidence to support the verdict of infringement and that the district court correctly denied JMOL. 

Caltech asserts that the fact that an AND gate doesn’t have 

an information-bit/output match for every information bit 

hardly means that it isn’t repeating any information bit. 

Appellee’s Br. 21–22 (citing J. App’x 3036–38). All that 

matters, according to Caltech, is that sometimes there is 

such a match that qualifies as a “repeat,” so long as each

and every bit is repeated at least once. Caltech argues that 

Broadcom ignores ample expert testimony, which the jury 

could credit, that sometimes an AND gate repeats an information bit and that, taking the 972 AND gates together, 

the carefully designed parity-bit table/matrix meant that 

“the products output and store information bits between 

two and twelve times.” Appellee’s Br. 22. Caltech asserts 

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16 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

that, considering the system as a whole, each information 

bit is in fact repeated, and they are not all repeated the 

same number of times. We agree with Caltech.

Caltech’s expert, Dr. Matthew Shoemake began his testimony with reference to the exemplary table reproduced 

above. See J. App’x 3036–38. He explained that in the parity-check-bit-equals-1 situation (second and fourth rows of 

the table), the output bit is a “repeat” of the informationbit input. Where the parity-check bit is 1, the gate affirmatively enables the information bit to be duplicated as the 

output bit. That is a “repeat.” That is so, he explained, 

because the information bit in that situation “flows 

through” to appear again in the output. He also addressed 

the one other situation where the output bit is identical to 

the information bit, namely, in the first row of the above 

table, where both the information bit and the parity-check 

bit are 0, and so is the output. Despite the identity of the 

information bit and the output bit, he explained, that situation does not involve a “repeat.” A 0 parity-check bit turns 

every information bit (0 or 1) into a 0 output, so the output 

bit in that situation tells one nothing about the information 

bit. Since the whole point of this encoding scheme is to use 

outputs that give information about the information bits, a 

0 parity-check bit does not produce a “repeat” even when 

the information-bit input and the output are the same. 

Broadcom’s expert, Dr. Wayne Stark, expressly recognized 

that this was exactly what Dr. Shoemake said in his testimony. J. App’x 3956 (“He said it’s a repeat only if the enable [parity-check] signal is a one and it’s not a repeat if an 

enable [parity-check] symbol is a zero.”).

Dr. Shoemake also explained to the jury that “flow 

through” means that the information bit is repeated at the 

output gate. See, e.g., J. App’x 2810, 2812, 3017–19. When 

the information bit “flows through” to the output gate because the parity-check bit is 1, that’s a repeat, both according to the expert’s usage and a plain understanding of the 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 17

word “repeat.” See, e.g., J. App’x 3038. When the information bit is not allowed to flow through (because the parity-check bit is 0), that’s not a repeat (even though both the 

information bit and the output bit are 0).4

In explaining the operation of the RU encoder itself, Dr. 

Shoemake testified that it contains “972 mac_reg modules

[AND gates], and the information bits are connected to 

every single one of them.” J. App’x 2831. He further testified that: “[D]epending on which information bit it is, 3 to 

12 of these gates are enabled which then allows 3 to 12 ... 

[information bits] to flow through 3 to 12 times and since 

that number varies, there’s irregular repetition,” J. App’x 

3034-35; “[W]hat really happens in the accused products, 

the tables tell you how many times should information bit 

number one be repeated. And the tables I've mentioned 

several times that they allow information bits, and I should 

force information bits to be repeated between 3 and 12 

times,” J. App’x 3080; and “[T]he information bit starts off 

in one location in the chip, and then it’s connected to 972 

distinct locations so it can be irregularly repeated in this 

architecture.” J. App’x 3018.

Dr. Shoemake’s position was consistent throughout his 

testimony: the physical connection of the first inputs of all 

972 AND gates for simultaneous receipt of the information 

bit stream and the connection of the parity-bit system to 

the other inputs of the AND gates to selectively enable 3 to 

12 of those gates at any time together implement irregular 

4 Caltech’s Red Brief incorrectly cited this example 

as representing a repeat. Red. Br. 21. This was evidently 

error, given that it directly contracted the directly cited 

pages of Dr. Shoemake’s testimony. This error does not, 

however, change the fact that Caltech correctly identified 

the substantial trial testimony on which the jury could base 

its decision.

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18 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

repetition. Dr. Shoemake explained that this is exactly 

what one sees when one looks at the “overall architecture” 

(“whole architecture”), not each gate alone. J. App’x 3031, 

3035, 3038. As he specifically testified:

Q: Your position, your opinion . . . is that that 

branch wire creates 972 repeat bits within the 

meaning of the claims in the Caltech patents; correct?

A: So based on my analysis, this wire going 

to the Mac rag modules and the AND gates 

under control of the tables that are stored 

in the RU encoder actually allows the information bits to flow through [a] different 

number of times. It’s always 3 to 12 times 

for a particular information bit. And so [i]n 

my analysis, this is exactly how the RU encoder is implementing irregular repetition 

of information bits.

J. App’x 3019 (emphasis added).

For the foregoing reasons, substantial evidence supports the jury’s verdict of infringement of the ’710 and ’032

patents. We are not persuaded that the record before the 

jury permits only a verdict of no infringement. We therefore affirm the district court’s denial of JMOL. 

B. The ‘781 Patent

1. Patent Eligibility

Broadcom and Apple contend that claim 13 is not patent eligible under 35 U.S.C. § 101. Broadcom and Apple’s 

briefing on this issue was cursory and relied solely on an 

argument that claim 13 is ineligible because it depends on 

mathematical operations. Caltech contends that the ’781 

patent is directed to a patent-eligible method of performing 

error correction and detection encoding with the requirement of irregular repetition. It asserts that the claim 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 19

limitation “variable number of subsets” requires irregular 

information bit repetition. 

The mere fact that Caltech’s claim employs a mathematical formula does not demonstrate that it is patent ineligible. See Diamond v. Diehr, 450 U.S. 175, 187 (1981) 

(“[A] claim drawn to subject matter otherwise statutory 

does not become nonstatutory simply because it uses a 

mathematical formula, computer program, or digital computer.”). Claim 13 does not claim a mathematical formula 

as such. It claims more than a mathematical formula because it is directed to an efficient, improved method of encoding data that relies in part on irregular repetition. This 

alleged improvement is not patent ineligible simply because it employs a mathematical formula.

2. Infringement

Broadcom and Apple argue that even if claim 13 is directed to patent eligible subject matter, the infringement 

verdict as to claim 13 cannot stand. As discussed above, 

the parties agree that claim 13 requires irregular repetition, but dispute whether the district court erred in refusing to instruct the jury that the ’781 patent’s “variable 

number of subsets” limitation requires irregular repetition. 

The district court’s sole ground for refusing to instruct the 

jury of the interpretation the parties and the court reached

during summary judgment was to avoid “confus[ing] the 

record on this issue.” J. App’x 207. This was error and 

requires remand for a new trial on infringement. Sulzer 

Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 

2004) (“[I]t is the duty of trial courts in patent cases in 

which claim construction rulings on disputed claim terms 

are made . . . to inform jurors both of the court's claim construction rulings on all disputed claim terms and of the jury's obligation to adopt and apply the court's determined 

meanings[.]”). On remand, the district court must instruct 

the jury as to the proper construction of the claim limitation “variable number of subsets.”

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20 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

III. Validity and IPR Estoppel

Apple and Broadcom contend that the district court 

erred in granting summary judgment of no invalidity, barring them from presenting an invalidity case at trial on the 

ground of statutory estoppel. In the district court proceedings, the parties challenged the patents’ invalidity, relying 

on grounds the PTAB did not address in its earlier instituted IPR decisions. The district court nonetheless held 

that these challenges were barred by estoppel because Apple and Broadcom were aware of the prior art references at 

the time they filed their IPR petitions and reasonably could 

have raised them in those petitions even if they could not

have been raised in the proceedings post-institution. 

Before the district court, Broadcom and Apple brought 

counterclaims seeking declaratory judgment of invalidity 

under § 103. The district court’s summary judgment orders disposed of the parties’ affirmative defenses as well as 

their counterclaims. We therefore consider whether this 

ruling was erroneous and review the grant of summary 

judgment de novo. Synopsys, Inc. v. Mentor Graphics 

Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016).

When IPR proceedings result in a final written decision, 35 U.S.C. § 315(e)(2) precludes petitioners from raising invalidity grounds in a civil action that they “raised or 

reasonably could have raised during that inter partes review.” Shaw Industries Group, Inc. v. Automated Creel 

Systems, Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016) (emphasis added). In Shaw, this court held that IPR “does not 

begin until it is instituted.” Id. If IPR “does not begin until 

it is instituted,” grounds raised in a petition (or that reasonably could have been raised in a petition) were necessarily not raised “during the IPR.” Id. Only the grounds 

actually at issue in the IPR were raised, or reasonably 

could have been raised in the IPR. Thus, estoppel did not 

bar the petitioner in Shaw from presenting a petitionedCase: 20-2222 Document: 63 Page: 20 Filed: 02/04/2022
THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 21

for, non-instituted ground in future proceedings because 

the petitioner could not reasonably have raised the ground 

during IPR. Id. Shaw was followed in HP Inc. v. MPHJ 

Technology Investments, LLC, 817 F.3d 1339, 1347–48 

(Fed. Cir. 2016). At the time Shaw was decided, the PTAB 

often instituted review on less than all the grounds raised 

in a petition, which left some grounds unadjudicated on the 

merits. Before Shaw, we had held in Synopsys, Inc v. Mentor Graphics Corp., 814 F.3d 1309, 1314–15 (Fed. Cir. 

2016), that the PTAB’s final decision need not address 

every claim raised in a petition. Under such circumstances, we concluded that Congress could not have intended to bar later litigation of the issues that the PTAB 

declined to consider.

After Shaw, several district courts concluded that 

Shaw does not allow a petitioner to avoid estoppel as to all 

arguments that could have been raised in the petition. See,

e.g., SiOnyx, LLC v. Hamamatsu Photonics K.K., 330 F. 

Supp. 3d 574, 602 (D. Mass. 2018) (determining that estoppel applies to grounds not included in a petition that the 

petitioner reasonably could have raised); Cobalt Boats, 

LLC v. Sea Ray Boats, Inc., Case No. 15-cv-21, 2017 WL 

2605977, at *3 (E.D. Va. June 5, 2017) (same); Biscotti Inc. 

v. Microsoft Corp., Case No. 13-cv-1015, 2017 WL 2526231, 

at *7 (E.D. Tex. May 11, 2017) (same); Douglas Dynamics, 

LLC v. Meyer Prods. LLC, Case No. 14-cv-886, 2017 WL 

1382556, at *5 (W.D. Wis. Apr. 18, 2017) (same); Parallel 

Networks Licensing, LLC v. IBM Corp., Case No. 13-cv2072, 2017 WL 1045912, at *12 (D. Del. Feb. 22, 2017) 

(same); Oil-Dri Corp. of Am. v. Nestle Purina Petcare Co., 

Case No. 15-cv-1067, 2017 WL 3278915, at *8 (N.D. Ill. 

Aug. 2, 2017) (“[W]hile it makes sense that noninstituted 

grounds do not give rise to estoppel because a petitioner 

cannot—to no fault of its own—raise those grounds after 

the institution decision, when a petitioner simply does not 

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22 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

raise invalidity grounds it reasonably could have raised in 

an IPR petition, the situation is different.”). 

Other district courts read Shaw differently, focusing on 

Shaw’s discussion of the “during the IPR” language in 

§ 315(e)(2). See, e.g., Koninklijke Philips N.V. v. Wangs All. 

Corp., Case No. 14-cv-12298, 2018 WL 283893, at *4 (D. 

Mass. Jan. 2, 2018) (“It would seem, then, that the phrase 

“inter partes review” . . . refers only to the period of time 

after review is instituted, and, therefore, the estoppel provision does not apply to arguments that the petitioner only 

‘raised or reasonably could have raised’ in its petition rather than after institution of review.”); Verinata Health, 

Inc. v. Ariosa Diagnostics, Inc., Case No. 12-cv-5501, 2017 

WL 235048, at *3 (N.D. Cal. Jan 19, 2017) (“The [Shaw] 

court chose instead to interpret the IPR estoppel language 

literally, plainly stating that only arguments raised or that 

reasonably could have been raised during IPR are subject 

to estoppel.”); Intellectual Ventures I LLC v. Toshiba Corp., 

221 F. Supp. 3d 534, 553–54 (D. Del. 2016) (holding that 

although exempting nonpetitioned grounds from estoppel 

“confounds the very purpose of this parallel administrative 

proceeding, the court cannot divine a reasoned way around

the Federal Circuit’s interpretation in Shaw”). 

After Shaw, in SAS Institute, Inc. v. Iancu, 138 S. Ct. 

1348 (2018), the Supreme Court made clear both that there 

is no partial institution authority conferred on the Board 

by the America Invents Act and that it is the petition, not 

the institution decision, that defines the scope of the IPR. 

See id. at 1357–58 (“[T]he statute tells us that the petitioner’s contentions, not the Director’s discretion, define 

the scope of the litigation . . . There is no room in this 

scheme for a wholly unmentioned ‘partial institution’ 

power that lets the Director select only some challenged 

claims for decision.”). Given the statutory interpretation 

in SAS, any ground that could have been raised in a petition is a ground that could have been reasonably raised 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 23

“during inter partes review.” Thus, the Supreme Court’s 

later decision in SAS makes clear that Shaw, while perhaps correct at the time in light of our pre-SAS interpretation of the statute cannot be sustained under the Supreme 

Court’s interpretation of related statutory provisions in 

SAS. 

The panel here has the authority to overrule Shaw in 

light of SAS, without en banc action. To be sure, SAS did 

not explicitly overrule Shaw or address the scope of statutory estoppel under § 315(e)(2). But the reasoning of Shaw

rests on the assumption that the Board need not institute 

on all grounds, an assumption that SAS rejected. Even in 

the Ninth Circuit, which has one of the stricter approaches 

to panel overruling, see Henry J. Dickman, Conflicts of 

Precedent, 106 Va. L. Rev. 1345, 1350–51 (2020), “the issues decided by the higher court need not be identical in 

order to be controlling. Rather, the relevant court of last 

resort must have undercut the theory or reasoning underlying the prior circuit precedent in such a way that the 

cases are clearly irreconcilable,” Miller v. Gammie, 335 

F.3d 889, 900 (9th Cir. 2003) (en banc). We approved that 

higher standard in Troy v. Samson Manufacturing Corp., 

758 F.3d 1322, 1326 (Fed. Cir. 2014), and conclude that 

that standard is satisfied in this case. 

Accordingly, we take this opportunity to overrule Shaw

and clarify that estoppel applies not just to claims and 

grounds asserted in the petition and instituted for consideration by the Board, but to all claims and grounds not in 

the IPR but which reasonably could have been included in 

the petition.5 In a regime in which the Board must 

5 In this case, SAS was decided while IPR proceedings remained pending before the Board. Accordingly, we 

need not decide the scope of preclusion in cases in which 

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24 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

institute on all grounds asserted and the petition defines 

the IPR litigation, this interpretation is the only plausible 

reading of “reasonably could have been raised” and “in the 

IPR” that gives any meaning to those words. 

It is undisputed that Apple and Broadcom were aware 

of the prior art references that they sought to raise in the 

district court when Apple filed its IPR petitions. Despite 

not being included in any of Apple’s IPR petitions, the contested grounds reasonably could have been included in the 

petitions, and thus in the IPR. We affirm the district 

court’s decision barring Apple and Broadcom from raising

invalidity challenges based on these prior art references.

IV. Inequitable Conduct 

We turn next to the district court’s grant of Caltech’s

summary judgment motion of no inequitable conduct. 

Generally, inequitable conduct requires a showing that undisclosed prior art was but-for material to the PTO’s decision of patentability. Therasense, Inc. v. Becton, Dickinson 

and Co., 649 F.3d 1276, 1291 (Fed. Cir. 2011). Prior art is 

but-for material if the PTO would have denied a claim had 

it known of the undisclosed prior art. Id. Prior art is not 

but-for material if it is merely cumulative. Regeneron 

Pharms., Inc. v. Merus N.V., 864 F.3d 1343, 1350 (Fed. Cir. 

2017) (citing Dig. Control Inc. v. Charles Mach. Works, 437 

F.3d 1309, 1319 (Fed. Cir. 2006)). 

Broadcom and Apple on appeal have limited their argument to the district court’s conclusion that Richardson99 

was not shown to be but-for material to patentability. The 

district court found that Richardson99 was merely cumulative of Luby97 and Luby98—references the PTAB considered in IPR proceedings upholding the patents’ validity—

the Board declined to institute on all grounds and issued 

its final written decision pre-SAS. 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 25

noting Apple and Broadcom’s pleadings, interrogatory responses, and briefs failed to distinguish Luby’s disclosed irregular repetition from Richardson99’s. Apple and 

Broadcom did not argue at the summary judgment stage

that Richardson99 was different from Luby such that it 

was not merely cumulative. The district court rejected the 

arguments as to Richardson99 because the Appellants 

failed to put Caltech on notice of an independent inequitable conduct theory based on alleged differences between 

Richardson99 and Luby. 

The district court’s decision was not an abuse of discretion. We therefore affirm the grant of summary judgment

of no inequitable conduct.

V. Damages

Caltech presented to the jury a two-tier reasonable royalty model based on simultaneous hypothetical negotiations with Broadcom and Apple in December 2009. 

Broadcom and Apple generally argue that the damages 

judgement cannot be sustained because Caltech’s damages 

model impermissibly applied two separate hypothetical negotiations for Broadcom and Apple for sales of the same 

chips; because Caltech’s royalty rates were derived from 

non-comparable settlements—without apportionment and 

based on improperly excluded expert opinions and unrelated “black box” calculations; and because Caltech’s damage model improperly included extraterritorial sales.

Caltech argues in response that the damages judgment 

properly rests on separate running-royalty rates for each 

defendant, that the district court’s rulings on admissibility 

and exclusion of evidence were not an abuse of discretion 

and that the damages were based entirely on United States 

sales.

We find no error in the district court’s jury instructions 

relating to extraterritoriality. But because Caltech’s twotier damages theory is legally unsupportable on this 

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26 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

record, the damages award is vacated and the case is remanded for a new trial on damages.

A. Extraterritoriality

Apple and Broadcom argue that the damages verdict 

improperly included extraterritorial sales from Broadcom’s 

international affiliates. They argue that the district court 

erroneously instructed the jury on extraterritoriality for 

two reasons. First, they argue that the district court erroneously declined to instruct the jury of a presumption 

against extraterritorial application of United States laws. 

We see no error. The relevant presumption is whether a 

law applies extraterritorially. See WesternGeco LLC v. 

ION Geophysical Corp., 138 S.Ct. 2129, 2134, 2136 (2018). 

But the dispute here is not whether infringement laws apply domestically or extraterritorially—there is no dispute 

that the laws apply only domestically. Rather, the dispute 

between the parties is whether the relevant transactions 

here were domestic or extraterritorial in nature. The presumption against extraterritorial application is thus inapplicable. As Caltech correctly argues, the district court 

expressly instructed the jury that Caltech had the burden 

of proving that infringement occurred in the United States. 

J. App’x 184–85 (instructing the jury that “An allaged infringer is liable for direct infringement of a claim if the patent holder proves by a preponderance of the evidence that 

the infringer, without the patent holder’s authorization, 

imports, offers to sell, sells, or uses [the accused products] 

within the United States,” and explaining the factors for determining whether a sale occurs in the United States). 

This was a proper and sufficient jury instruction with respect to the applicable burdens on the territoriality of the 

sales at issue.

Second, Apple and Broadcom argue that the district 

court erroneously instructed the jury that the “sales cycle 

leading to design wins” could trigger a United States sale. 

Apple and Broadcom argue that Halo recognized a 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 27

categorical prohibition against treating such a sales cycle 

as a domestic sale. See Halo Elecs., Inc. v. Pulse Elecs., 

Inc., 831 F.3d 1369, 1378 (Fed. Cir. 2016), on remand from 

579 U.S. 93 (2016). Halo held that “pricing and contracting 

negotiations in the United States alone do not constitute or 

transform those extraterritorial activities into a sale 

within the United States for purposes of § 271(a).” Id. It 

held that this was so “when substantial activities of a sales 

transaction, including the final formation of a contract for 

sales encompassing all essential terms as well as the delivery and performance under that contract, occur entirely 

outside the United States.” Id. This is not a blanket holding that design wins arising out of a sales cycle can never 

be domestic transactions. Indeed, the district court noted 

that a design win meeting these criteria, such that “substantial activities of a sales transaction . . . occurs entirely 

outside the United States” would not constitute a sale 

within the United States. J. App’x 185. The district court’s 

jury instruction emphasized the key question of whether 

there were such substantial activities in the United States, 

an instruction that Apple and Broadcom do not contest. 

See also Carnegie Mellon U. v. Marvell Tech. Grp., Ltd., 807 

F.3d 1283, 1308 (Fed. Cir. 2015). There is no error in the

district court’s permissive instruction.

B. Caltech’s Two-Tier Damage Model

Caltech presented its damage theory to the jury 

through two experts, Dr. Catherine Lawton and Dr. David 

Teece. They opined that Caltech would have engaged in 

two simultaneous hypothetical negotiations, one with 

Broadcom at the “chip level” and one with Apple at the “device level.” Those negotiations would have excluded from 

Broadcom’s hypothetical chip license any Broadcom chips 

incorporated into Apple products sold in the United States 

and treated those identical chips as being subject to Apple’s 

separate hypothetical device license at a vastly different 

royalty rate. Both of Caltech’s experts testified that separate chip-level and device-level negotiations would have 

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28 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

been proper, rather than a single hypothetical negotiation 

for all of the accused chips, because both defendants were 

separate infringers and there would be no “cross-talk” between them as they each engaged in their own hypothetical 

negotiation. 

The district court considered the opinions of Caltech’s 

experts and, over Broadcom and Apple’s objection, permitted Caltech to present that theory to the jury. In doing so, 

the district court observed that “[p]atent owners will sometimes seek damages from accused infringers at different 

levels in the supply chain, and so long as they do not attempt to obtain a double recovery to violate other legal 

principles like patent exhaustion, they are free to do so.” J. 

App’x 225. In ruling in Caltech’s favor, the district court 

saw no concern over double recovery because Broadcom 

and Apple were different companies and because the experts’ opinions carved out of the Broadcom hypothetical negotiation chips sold to Apple. But in the absence of some 

evidence that companies in the positions of Broadcom and 

Apple would engage in such separate negotiations and in 

the absence of additional facts that might justify separate 

and different treatment of the same chips at different levels of the supply chain, the mere fact that Broadcom and 

Apple are separate infringers alone does not support treating the same chips differently at different stages in the supply chain and does not justify submitting such a two-tier 

damage theory to the jury. It is generally recognized that 

in the usual case, “a direct infringer or someone who induced infringement should pay the same reasonable royalty based on a single hypothetical negotiation analysis.” 

LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 

76 (Fed. Cir. 2012).

Caltech argued that separate royalty rates at different 

levels of the supply chain are proper because the reasonable royalty inquiry focuses on the amount of value that the 

patent technology adds to a product, citing Ericsson, Inc. v. 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 29

D-Link Sys., 773 F.3d 1201, 1226 (Fed. Cir. 2014). The district court concluded that Broadcom and Apple’s products 

were different and therefore possessed different values 

simply because Broadcom and Apple were “different companies at different levels in the supply chain.” J. App’x 226. 

But to reach that conclusion without more ignores established precedent to the effect that, in the absence of a compelling showing otherwise, a higher royalty is not available 

for the same device at a different point in the supply chain. 

As we previously held, “a reasonable royalty is not to be 

separately calculated against each successive infringer. 

Once full recovery is obtained from one infringer with respect to a particular infringing device, at most nominal additional damages may be awarded against another with 

respect to the same device.” Stickle v. Heublein, Inc., 716 

F.2d 1550, 1562 (Fed. Cir. 1983). Moreover, “[a] party is 

precluded from suing to collect damages from direct infringement by a buyer and user of a product when actual 

damages covering that very use have already been collected from the maker and seller of that product.” Glenayre 

Elecs., Inc. v. Jackson, 443 F.3d 851, 864 (Fed. Cir. 2006). 

The district court cited but distinguished those cases 

as only applying to damages calculations against two defendants involving overlapping royalty bases, a situation 

not existing here based on Caltech’s expert’s exclusion of 

chips sold to Apple from the royalty base considered for 

Broadcom. But that exclusion in this case is wholly contrived, lacks any basis of fact and is contrary to the customary way patent infringement disputes are ordinarily 

resolved. It is well settled that a reasonable royalty is what 

a willing licensor and a willing licensee would have agreed 

to at a hypothetical negotiation just before infringement 

began. See Carnegie Mellon Univ. v. Marvell Tech. Grp., 

807 F.3d 1283, 1303-1304 (Fed. Cir. 2015). Here, there is 

nothing in the record to suggest that Broadcom and Apple 

would have been willing to negotiate in this artificial way 

rather than to more conventionally negotiate a single 

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30 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

license at a single rate for the same chips. Neither of Caltech’s experts offered any factual basis to conclude that 

Broadcom and Apple would have been willing to engage in 

separate negotiations leading to vastly different royalty 

rates for the same chips. The district court’s views to the 

contrary and its limiting of the Stickle and Glenayre cases 

to situations involving double recovery were misplaced and 

erroneous. Caltech’s two-tier damages theory is legally unsupportable on this record.

* * *

We need not and do not address Broadcom and Apple’s 

indemnification argument, or their argument that the hypothetical negotiations would have been held not with Caltech but by its exclusive licensee, Inforon. Nor do we 

address Broadcom and Apple’s argument based on smallest-saleable-patent-practicing-unit, or the sufficiency of 

the evidence as to the domestic or extraterritorial character of Broadcom’s sales.

CONCLUSION

For the foregoing reasons, we affirm the district court’s 

construction of the claim limitation “repeat.” We affirm the 

district court’s denial of JMOL on infringement of the asserted claims of the ’710 and ’032 patents. We affirm the 

district court’s conclusion that claim 13 of the ’781 patent 

is patent-eligible but vacate the jury’s verdict of infringement thereof and remand for a new trial. We affirm the 

district court’s summary judgment findings of no invalidity 

based on IPR estoppel and no inequitable conduct. We affirm the district court’s jury instructions relating to extraterritoriality, but vacate the jury’s damage award and 

remand for a new trial on damages. 

AFFIRMED IN PART, VACATED IN PART, AND 

REMANDED. 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 31

COSTS

Each party shall bear its own costs.

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United States Court of Appeals 

for the Federal Circuit ______________________ 

CALIFORNIA INSTITUTE OF TECHNOLOGY,

Plaintiff-Appellee

v.

BROADCOM LIMITED, NKA BROADCOM INC., 

BROADCOM CORPORATION, AVAGO 

TECHNOLOGIES LIMITED, NKA AVAGO 

TECHNOLOGIES INTERNATIONAL SALES PTE. 

LIMITED, APPLE INC.,

Defendants-Appellants

______________________ 

2020-2222, 2021-1527

______________________ 

Appeals from the United States District Court for the 

Central District of California in No. 2:16-cv-03714-GWAGR, Judge George H. Wu.

______________________ 

DYK, Circuit Judge, concurring-in-part and dissenting-inpart.

While I join Discussion sections II.B.1, III, and IV of 

the majority opinion, I respectfully disagree with the majority’s holding that substantial evidence supports the 

jury’s verdict of infringement of the asserted claims of the 

’710 and ’032 patents and would reverse the district court’s 

denial of JMOL of no literal infringement. I would similarly reverse the denial of JMOL rather than remand for a 

Case: 20-2222 Document: 63 Page: 32 Filed: 02/04/2022
2 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

new trial with respect to the infringement of the ’781 patent. 

I 

No matter how novel an invention is, it is the patent’s 

claims that “determine what the invention is,” as well as 

the bounds of the patent owner’s rights to that invention’s 

“exclusive use.” Motion Picture Patents Co. v. Universal 

Film Mfg. Co., 243 U.S. 502, 510 (1917). Patent owners are 

limited by the language in the claims, and “can claim nothing beyond them.” Id. (quoting Keystone Bridge Co. v. 

Phoenix Iron Co., 95 U.S. 274, 278 (1877)). It is the patent 

owner’s burden to show that “the properly construed claim 

reads on the accused device exactly.” CommScope Techs. 

LLC v. Dali Wireless Inc., 10 F.4th 1289, 1295 (Fed. Cir. 

2021) (quoting Engel Indus., Inc. v. Lockformer Co., 96 F.3d 

1398, 1405 (Fed. Cir. 1996)). Denial of JMOL of no literal 

infringement must be reversed when plaintiffs “fail[] to 

present evidence proving that the [accused device] meets 

the district court’s construction of [a] claim term.” 

CommScope, 10 F.4th at 1295. Such a failure occurs when 

expert testimony “points to the result . . . rather than the 

specific mechanism claimed to achieve that result,” id. at 

1297, or when expert testimony is merely “cursory,” 

Alexsam, Inc. v. IDT Corp., 715 F.3d 1336, 1341–42 (Fed. 

Cir. 2013). Here, no showing of literal infringement has 

been made that can support the jury’s infringement verdict 

under the district court’s claim construction, which is not 

challenged by Caltech. 

II

Before trial, the district court held a Markman hearing 

to construe the term “repeat,” an essential limitation in all 

of the asserted claims of the three patents. Caltech advocated for the term’s plain and ordinary meaning. Apple 

and Broadcom proposed a narrower construction, contending that “repeat” should be construed as “creating a new bit 

that corresponds to the value of an original bit (i.e., a new 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 3

copy) by storing the new copied bit in memory. A reuse of 

a bit is not a repeat of a bit.” J.A. 9. The district court 

rejected this construction because reusing bits by “selecting 

the bits for use without necessarily storing them at a specific location in computer memory” could satisfy the claim 

limitation. J.A. 10. The district court nonetheless noted 

that the “claim language . . . makes clear that ‘repeated 

bits’ are a construct distinct from the original bits from 

which they are created.” Id. Ultimately, the district court 

adopted the term’s plain and ordinary meaning, concluding 

that no further construction was required. 

Following the Markman hearing, the parties continued 

to dispute what exactly the plain and ordinary meaning of 

“repeat” entailed. As a result, at trial, as permitted by 

precedent,1 the district court revisited and clarified its earlier claim construction ruling, instructing the jury that the 

’710 and ’032 patents’ claimed repetition requires the “generation of additional bits, where generation can include, for 

example, duplication or reuse of bits.” J.A. 171. The critical question, therefore, is whether there is substantial evidence that the accused devices cause “generation of 

additional bits.” Unfortunately, in denying the appellants’ 

post-trial JMOL motion, the district court provided no 

analysis of how Caltech established infringement, relegating this question to a footnote which said only that 

1 It is within the district court’s discretion to “engage 

in a rolling claim construction, in which the court revisits 

and alters its interpretation of the claim terms as its understanding of the technology evolves.” See, e.g., Jack 

Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352, 1361 

(Fed. Cir. 2002) (citing Sofamor Danek Grp., Inc. v. DePuy–

Motech, Inc., 74 F.3d 1216, 1221 (Fed. Cir. 1996)); CollegeNet, Inc v. ApplyYourself, Inc., 418 F.3d 1225, 1233–34 

(Fed. Cir. 2005). 

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4 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

“Defendants’ arguments that the verdict was not supported 

by substantial evidence also remain unpersuasive.” J.A. 

206. 

The panel majority does not identify or rely on a reuse 

theory to uphold the jury’s verdict. Rather, the majority 

concludes that infringement of the repeat limitation was 

supported by expert testimony that “the [AND] gate affirmatively enables the information bit to be duplicated as the 

output bit. That is a ‘repeat’ . . . because the information 

bit in that situation ‘flows through’ to appear again in the 

output.” Maj. Op. at 16 (emphasis added). But there is in 

fact no such expert testimony. To the contrary—consistent 

with its claim construction position, Caltech’s expert testified that the claims do not “require that the repeat has to 

be done by duplicating information bits,” J.A. 2858, and 

Caltech argued to this court on appeal that “repetition does 

not require duplication,” Appellee’s Br. 18. 

To be sure, Caltech is correct that duplication is not required to satisfy the repeat limitation. But the problem for 

Caltech (and for the majority) is that Caltech never established that the accused devices generate “additional bits,” 

as required by the district court’s claim construction. The 

infringement theory presented at trial explained that the 

accused devices work as follows: information bits are input 

into the accused devices, those bits travel down branched 

wires to the inputs of 972 AND gates, and three to twelve 

of those AND gates will be open for each information bit, 

thus outputting the bits a different number of times. For 

this theory to satisfy Caltech’s burden, Caltech was required to establish where, when, and how additional bits 

were generated. 

One possibility—presented by Caltech’s counsel—was 

that additional bits were generated by branching at the inputs. During closing arguments, Caltech told the jury 

“That’s how you repeat bits, with a voltage along wires . . . 

how else would you repeat bits? How else would you do it?” 

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THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED 5

1/28 Tr. 90:20–91:9. But the record does not support a theory that the branched wires generate additional bits. Caltech’s experts testified merely that the bits are “connected 

to” the AND gates by branched wires, without explaining 

whether or how that connection generated additional bits. 

J.A. 2831. Apple and Broadcom presented unrefuted expert testimony that the branched wire connection involves 

simultaneously sending the same bit—not an additional 

bit—to the inputs of AND gates. Caltech’s expert did not 

testify to the contrary, and in fact declined to testify that 

branching generates additional bits. 

Q. Branch wire creates repeat bits? 

. . . 

THE COURT: I’ll allow him to answer the question 

if he understands it. 

THE WITNESS: That question I did not understand. I didn’t think it was well formed. 

BY MR. MUELLER: Q. The branch wire in the 

Broadcom chips in your view creates repeat bits 

within the meaning of the claims; correct?

. . . 

THE WITNESS: In my analysis the branch wire is 

being used in conjunction with the tables and these 

and gates to implement irregular repetition.

J.A. 3019–20. There is no substantial evidence supporting 

an infringement verdict based on branching. 

Caltech’s separate theory to establish that the accused 

devices generate additional bits was the “flow through” 

theory, supported, according to the majority, by expert testimony that “the information bit ‘flows through’ to the output gate [when] the parity-check bit is 1,” and that the flow 

through bit constitutes “a repeat, both according to the expert’s usage and a plain understanding of the word.” Maj. 

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6 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

Op. at 16–17. The majority identifies record evidence 

where Caltech’s expert summarily testified that the AND 

gates repeated information bits when the gates are enabled, J.A. 2842; J.A. 3080, and where the expert concluded 

that the AND gates were “generating additional bits at 

their output,” J.A. 4162. This cursory and conclusory testimony cannot satisfy Caltech’s burden.

Caltech’s own expert testimony as to how an AND gate 

functions forecloses concluding that the AND gates generate additional bits. Throughout trial, Caltech’s expert consistently testified that an AND gate “act[s] like a switch . . . 

allowing the information bits to flow through . . . or not.” 

J.A. 3016–17; see also J.A. 3031 (“[E]nable one allows the 

AND gate to act like a switch. So enable would close the 

switch and allow the one to come out.”); J.A. 3030 (“[T]he 

AND gate has two inputs. One of them is the enable that 

allows the switch to open or close.”); J.A. 3031 (“Enable zero 

is like the switch not allowing the information bit to flow 

through.”). If an enabled AND gate merely allows the same 

information bit that already exists at the input of an AND 

gate “to come out,” J.A. 3031, or to “flow through,” this does 

not remotely establish how the AND gate output generates 

additional information bits. Under the explanation that 

Caltech repeatedly presented, one information bit comes in 

and one information bit comes out—no additional bit appears anywhere. Flow through, with a 1:1 ratio of input 

bits to output bits as described by Caltech’s experts, cannot 

satisfy the generation of additional bits limitation required 

by the district court’s claim construction. 

Caltech’s remaining theory submits that the accused 

devices generate additional bits when the branched wires 

are combined with the AND gates. The majority believes 

that “the physical connection of the first inputs of all 972 

AND gates . . . and the connection of the parity-bit system 

to the other inputs of the AND gates to selectively enable 3 

to 12 of those gates . . . together implement irregular repetition.” Maj. Op. at 17. Neither the majority’s opinion, 

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Caltech’s briefs, and most importantly, Caltech’s experts, 

explain why the combination of these two non-infringing 

components results in infringement. The district court 

therefore erred in denying JMOL of no literal infringement. 

III

At trial, Caltech also presented a doctrine of equivalents case to the jury. In a footnote to its JMOL decision, 

the district court found that it was “not necessary” to analyze Apple and Broadcom’s challenge to the doctrine of 

equivalents arguments, J.A. 206, and the majority here 

similarly does not address such a theory. There is no basis 

to sustain the verdict on a doctrine of equivalents theory.

To prevail, Caltech had the burden of proving equivalence “between the elements of the accused product or process and the claimed elements of the patented invention,” 

Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 

17, 21 (1997), by showing that “the accused device contains 

an element that is not ‘substantially different’ from any 

claim element that is literally lacking,” Kraft Foods, Inc. v. 

Int’l Trading Co., 203 F.3d 1362, 1371 (Fed. Cir. 2000) (citing Warner-Jenkinson, 520 U.S. at 40). 

Caltech’s appellate brief devoted only one and a half 

pages to this issue, citing to eight pages of trial testimony 

in which its expert asserted that the differences between 

the accused chips and the claim limitations were insubstantial. At trial, Dr. Shoemake testified that because the 

claims do not “require repeating with any type of specific 

circuitry,” any differences in the method Broadcom’s chips 

used to accomplish the “overall goal” of the claims were insubstantial. J.A. 2856–58. 

But even if no specific circuitry is required, Dr. Shoemake never explained why a bit flowing through to the output of an AND gate is substantially similar to the claimed 

device that generates additional bits. This is reminiscent 

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8 THE CALIFORNIA INSTITUTE v. BROADCOM LIMITED

of the insufficient, “[g]eneralized testimony” proscribed by 

Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 

F.3d 1558, 1567 (Fed. Cir. 1996), and it cannot satisfy Caltech’s burden to provide “particularized testimony and 

linking argument as to the ‘insubstantiality of the differences’ between the claimed invention and the accused device or process . . . on a limitation-by-limitation basis,” id. 

There was no basis for the jury to find infringement under 

the doctrine of equivalents. 

I would reverse the district court’s denial of JMOL and 

enter judgment of non-infringement for Broadcom and Apple. 

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