A federal jury in Austin, Texas, has ruled that Intel may hold a valid licence to patents asserted by VLSI Technology. The decision stems from Intel’s 2012 licensing agreement with cybersecurity firm Finjan, which the former argued extends to VLSI due to both companies being under the control of Fortress Investment Group. The jury accepted Intel’s interpretation, determining that the “common control” condition in the contract applies, potentially limiting VLSI’s ability to enforce certain patents in litigation.
VLSI had filed a series of lawsuits against Intel in various US jurisdictions, alleging infringement of semiconductor-related patents, particularly related to CPU design and power efficiency technologies. In March 2021, a jury in Waco, Texas awarded VLSI $2.18bn in damages, citing infringement of two patents. However, that verdict was overturned by the US Court of Appeals for the Federal Circuit, which called for further proceedings. In a separate November 2022 trial, another jury awarded VLSI $949m. Intel has continued to contest that decision, again raising its 2012 agreement with Finjan as a defence.
Multiple lawsuits have targeted Intel’s chip designs
The latest trial, presided over by US District Judge Alan Albright, focused on whether Fortress Investment Group exerts the type of corporate control over both Finjan and VLSI that would trigger licensing protections. Fortress Investment Group is known for its strategy of acquiring and managing patent portfolios through dedicated entities. The jury was tasked with interpreting “common control” as it relates to contractual licensing language, and it concluded that Fortress’s management structure satisfies this clause.
VLSI has maintained that it was not a party to the 2012 licensing agreement and that its patents are not covered by that deal. The company, created as a special-purpose entity by Fortress Investment Group to enforce patent rights, argued that it was formed years after the Finjan agreement was executed and therefore operates independently. Intel argued that the timing of VLSI’s creation was not relevant under the language of the contract, which applies to entities later brought under common control.
Fortress Investment Group acquired Finjan in 2020 and manages VLSI as part of its intellectual property monetisation strategy. In 2024, Fortress Investment Group itself was sold by SoftBank Group to a consortium led by Mubadala Investment of Abu Dhabi.
Following the jury’s decision, a spokesperson for VLSI confirmed the outcome as per a report in Reuters but offered no further remarks. Intel did not release a formal statement. While the verdict does not automatically invalidate previous jury awards, it provides Intel with a stronger legal basis for requesting dismissal or reduction of those judgments.
The court will now consider how the finding of common control affects the enforceability of earlier rulings. Additional motions and hearings are expected in the Waco and Austin jurisdictions as Intel seeks to apply the jury’s conclusion to ongoing appellate and district court reviews.
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