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Texas Instruments, Inc. v. United States International Trade Commission

988 F.2d 1165, 26 U.S.P.Q.2d 1018 (1993)

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Texas Instruments, Inc. v. United States International Trade Commission

United States Court of Appeals for the Federal Circuit
988 F.2d 1165, 26 U.S.P.Q.2d 1018 (1993)

Facts

The United States Patent and Trademark Office (PTO) examiner determined that the claims of a patent application covered three distinct inventions: a semiconductor device, injection-molding processes for semiconductor devices, and a lead frame for the devices. The examiner created a group for each invention and restricted each claim to one of the groups. Each group of claims later resulted in a separate patent. The patent claiming the lead-frame invention (the ‘764 patent) included a claim associated with the injection-molding invention, despite the injection-molding claims being the subject of their own patent (the ‘027 patent). The holder of the ‘027 patent, Texas Instruments, Inc. (TI), filed a complaint with the United States International Trade Commission (the commission) alleging infringement by various companies (the respondents). The respondents challenged the validity of the ‘027 patent, arguing that the failure to maintain consonance with the PTO’s restriction requirement resulted in overlapping claims with the ‘764 patent. The commission determined that the ‘027 patent was valid and infringed. The respondents appealed to the United States Court of Appeals for the Federal Circuit.

Rule of Law

Issue

Holding and Reasoning (Clevenger, J.)

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