R2 Semiconductor Inc. v Intel Corporation (UK) Ltd & Anor
[2023] EWHC 1550 (Ch)
R2 Semiconductor, Inc v Intel Corporation (UK) Limited & Anor
31 July 2024
[2024] EWHC 1974 (Pat)
High Court
R2 sued Intel for copying their chip design. The judge decided R2's design wasn't new enough to be patented because a similar design already existed. But, if it *had* been patentable, Intel would have been guilty of copying because their chips had a similar protective feature.
Key Facts
- •R2 Semiconductor, Inc. (R2) claimed that Intel Corporation (Intel) infringed its European Patent No. 3 376 653 (the Patent) relating to over-voltage protection of a switching converter.
- •Intel counterclaimed that the Patent was invalid for lack of novelty and inventive step, added matter, and insufficiency.
- •R2 conditionally applied to amend the Patent claims.
- •The dispute centered on the interpretation of claim 1, particularly the meaning of "voltage spike protection circuitry" and "interleaved between."
- •The case involved complex technical evidence concerning integrated circuit design, voltage regulators, and voltage spike protection.
Legal Principles
Anticipation: A prior inventor's publication must contain clear and unmistakable directions to do what the patentee claims to have invented; a signpost will not suffice.
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457, at 463 (approved by the House of Lords in Synthon BV v SmithKline Beecham plc [2005] UKHL 59, at [22])
Inventive Step: Whether, having carefully read the prior art, the skilled person at the priority date would have considered a variation on the design to achieve the claimed invention.
Implicit in the judgment's assessment of inventive step.
Claim Construction: Claim language should be construed purposively, considering the patent's description and the common general knowledge.
Implicit in the judgment's claim construction analysis.
Claim Construction: Limitations not present in the claim language are not to be read in by reference to examples in the specification.
Supponor Limited v AIM Sport Development AG [2024] EWCA Civ 396
Experimental Evidence: A party seeking to establish facts by experimental proof must serve a notice stating the facts to be established. Changing the case may require permission to amend the notice.
Electromagnetic Geoservices ASA v Petroleum Geo-Services ASA [2016] EWHC 27 (Pat), at [21]
Outcomes
The Patent was found invalid for lack of inventive step over the Sun prior art.
The skilled person at the priority date would have considered adding voltage spike protection circuitry (e.g., a decoupling capacitor) to the Sun design as an obvious modification. The need for such protection, while perhaps not explicitly stated in Sun, would have been apparent from general engineering principles and known risks associated with high-frequency switching.
If the Patent had been valid, it would have been infringed by Intel.
Intel's 10nm FIVRs incorporate MIM capacitors that provide significant, albeit modest, voltage spike protection. This protection satisfies the requirements of claim 1, as construed by the court.