## Facts

- Intel owned multiple U.S. patents covering EPROM devices and manufacturing processes.
- Intel filed a complaint at the U.S. International Trade Commission (ITC) alleging that Atmel and other respondents imported and sold EPROMs that infringed Intel’s patents, constituting unfair acts under § 337 of the Tariff Act of 1930.
- The ITC instituted an investigation and ultimately found certain infringements, found other asserted patents/claims not infringed or invalid/unenforceable, and issued a limited exclusion order and cease-and-desist orders directed principally at Atmel and GI/M.
- A central dispute involved a cross-license between Intel and Sanyo: Atmel argued that EPROMs it designed but had manufactured by Sanyo were protected by Sanyo’s license from Intel.
- Intel and the ITC took the position that the license covered Sanyo’s own products, not third-party products made by Sanyo as a contract manufacturer.

## Issues

1. Whether the Intel–Sanyo cross-license authorized Sanyo to manufacture Atmel-designed EPROMs for Atmel such that Atmel’s imports were insulated from Intel’s patent rights.
2. Whether the ITC’s infringement determinations for particular patents, claims, and accused EPROMs were legally correct and supported by substantial evidence.
3. Whether the ITC correctly determined validity and enforceability issues for the asserted Intel patents.
4. Whether the scope of the ITC’s limited exclusion order and cease-and-desist orders properly tracked the violations sustained on appeal.

## Decision

- The Federal Circuit affirmed in part, reversed in part, and vacated in part the ITC’s determinations and remedial orders, and remanded.
- The court agreed with the ITC that the Intel–Sanyo license did not permit Sanyo to act as a foundry for Atmel-designed EPROMs in a way that would defeat Intel’s infringement claims.
- The court sustained key infringement findings, but reversed or vacated particular infringement/validity rulings where claim interpretation or evidentiary support was deficient.
- Because liability findings changed in part, the court required the ITC to modify the exclusionary and cease-and-desist relief to conform to the violations that remained.

## Legal Principles

- License interpretation is a question of law reviewed de novo; ITC factual findings (including infringement and some validity determinations) are reviewed for substantial evidence.
- A patent license granting rights to “make, use, and sell” may be construed to cover only the licensee’s own products when the agreement’s structure and limiting language indicate that third-party manufacturing-for-others is not authorized.
- Express contractual language disclaiming implied rights can support a narrow construction and limit any implied “have-made” or third-party sheltering effect.
- In § 337 cases, remedial relief must be tailored to the specific patents, claims, and product configurations actually found to violate § 337 as sustained on appeal; changes to underlying liability require corresponding adjustment of ITC orders.

## Conclusion

The Federal Circuit largely sustained the ITC’s § 337 enforcement against infringing EPROM imports, rejected an attempt to extend a cross-license to cover third-party products manufactured by the licensee, and required the ITC’s exclusion and cease-and-desist orders to be narrowed or revised to match the infringement and validity determinations that survived appellate review.


Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821 (Fed. Cir. 1991)