By Ryan Davis
After multiple positive COVID-19 tests among participants, US District Judge Alan Albright of the Western District of Texas on Tuesday canceled the trial in VLSI’s billion-dollar computer chip patent suit against Intel, and said it would be rescheduled later.
On the second day of the trial, which kicked off on Monday in Austin, the judge told the jurors there had been positive COVID tests among people working on the case for one of the parties, according to a source close to the matter.
Judge Albright then said that out of concern for everyone’s safety, he was ending the trial. He said it would start over later in the year with a different jury.
The jurors were informed of the positive tests as soon as they arrived for the day, and the courtroom had been cleared of everyone except for courtroom staff and two lawyers for each side.
Judge Albright’s COVID safety protocol for the trial consisted of a questionnaire asking anyone entering the courthouse if they had been diagnosed with COVID in the past three weeks, and if they were experiencing symptoms of the disease. People who answered yes were advised not to enter the building.
US Magistrate Judge Derek Gilliland, who oversaw jury selection, told the parties at a hearing before the trial that nothing was known about the vaccination status of the potential jurors, and that no questions about that subject would be permitted, due to the possibility of potential violations of the Health Insurance Portability and Accountability Act.
The issue came up when one of the attorneys asked if they would know if the jurors were vaccinated or not, and Judge Gilliland responded that information was not available, said Tim Dewberry of Folio Law Group PLLC, an Austin-based patent attorney who is following the case and listened to the audio of the hearing.
The judge then instructed the attorneys that the court “did not want the parties to question the jurors about that during voir dire, and the reasoning for that was that the court thought there could be a HIPAA violation in doing so,” Dewberry said, adding that “there was no further pushback from the parties at that point.”
The US Department of Health and Human Services website states that HIPAA’s privacy rule “does not prohibit any person … from asking whether an individual has received a particular vaccine, including COVID-19 vaccines.”
The HHS site explains that the rule only regulates how entities like health plans and health care providers can use or disclose protected health information, and does not apply when an individual is asked about vaccination status by employers, stores or other individuals.
Laura Carroll of Burns & Levinson LLP, an IP attorney following the case, said that HIPAA wouldn’t apply to asking jurors if they are vaccinated, and that “one gets tired of hearing, ‘That’s a HIPAA violation!’ tossed around routinely, and inaccurately.”
The trial is the third in a series of high-stakes disputes between the companies, each involving different patents. It got underway Monday with opening statements and witness testimony. VLSI is seeking around US$1 billion in damages from Intel.
VLSI, a patent licensing company backed by hedge fund Fortress Investment Group, accuses Intel of infringing a patent originally issued to semiconductor maker NXP BV.
In the first trial in March 2021, a Waco jury returned one of the largest patent verdicts in history, finding that Intel infringed two VLSI patents — rejecting an argument that one of them is invalid as anticipated — and awarding US$2.17 billion in damages.
In the second trial, another Waco jury concluded last April that Intel did not infringe either of the two patents in that case, and rejected VLSI’s bid for US$3 billion in damages. Post-trial motions are pending in both of those cases.
Intel said in a statement after the trial was canceled that “this case demonstrates that the US patent system is in urgent need of reform.”
Intel sought inter partes review of the patent at issue in the case at the Patent Trial and Appeal Board. The board refused to review the patent in 2020, citing the so-called Fintiv rule that it can exercise its discretion to deny an IPR petition if its decision would be due after a trial in district court is over.
After that ruling, the Texas trial was postponed multiple times, and Tuesday’s cancellation will delay it even further. Intel said that “this case is not alone” and that “nearly all future trial dates relied on by the board to deny IPRs ultimately changed.”
“Reform is needed to restore the IPR process to its full strength so that meritless claims, like the ones brought by VLSI, can be resolved by impartial expert patent judges without requiring expensive litigation or extorted settlements,” Intel said.
Intel noted that the Fintiv rule was put in place by former US Patent and Trademark Office Director Andrei Iancu, who is now a partner at Irell & Manella LLP, the firm that represents VLSI.
Counsel for VLSI did not respond to a request for comment about the trial’s cancellation.
On Monday, Intel attorney William Lee of WilmerHale told jurors they would learn from the evidence Intel plans to present that its allegedly infringing technology “is different from what’s described in the … patent.”
VLSI attorney Morgan Chu of Irell & Manella LLP told the jury that NXP is focused on developing chips, and leaves licensing of its patents to VLSI.
The patent at issue in the latest trial is US Patent No. 7,606,983.
VLSI is represented by Morgan Chu, Benjamin Hattenbach, Iian Jablon, Alan Heinrich, Christopher Abernethy, Ian Washburn, Amy Proctor, Elizabeth Tuan, Dominik Slusarczyk, Charlotte Wen, Benjamin Monnin, Jordan Nafekh and Babak Redjaian of Irell & Manella LLP, Andy Tindel, J. Mark Mann and G. Blake Thompson of Mann Tindel Thompson, and Craig Cherry of Steckler Wayne Cochran Cherry PLLC.
Intel is represented by William Lee, Louis Tompros, Kate Saxton, Gregory Lantier and Amanda Major of WilmerHale, J. Stephen Ravel and Kelly Ransom of Kelly Hart & Hallman LLP, Harry Gillam Jr. of Gillam & Smith LLP, and James Wren of Baylor Law School.
The case is VLSI Technology LLC v. Intel Corp., case number 1:19-cv-00977, in the US District Court for the Western District of Texas.
–Editing by Robert Rudinger.
* Editor’s Note: This story has been updated with more information about HIPAA and a comment from Intel.
