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Fashioning New and Improved Weapons?
Rambus® has been on quite a roll recently, successfully navigating countless legal challenges to their DRAM patent portfolio in the federal courts. In widely publicized patent based disputes with Infineon, Hynix, Samsung and others, Rambus,® after years of legal wrangling, was successful in securing license fees. At the same time, Rambus® overcame allegations of fraud in relation to their conduct in the JEDEC standard setting organization. In recent years, Rambus® became subject of antitrust and anti-competitive behavior investigations of the Federal Trade Commission, all of which were concluded favorably to the company.
More recently, in the continuing campaign to license the industry for their patented technology, Rambus® has taken on Nvidia® in the ITC. In a decision issued January 22, 2010, Administrative Law Judge Essex issued an initial determination finding that three of the Rambus® patents were infringed, and determined not to be invalid. These patents are 7,287,109; 6,591,353; and 6,470,405. Interestingly, the USPTO is concurrently reviewing the same patents in inter partes reexamination responsive to Nvidia’s requests of April of 2009. To the USPTO’s credit these patent reexaminations have proceeded swiftly, reaching a preliminary conclusion (ACP, close of prosecution) in less than 12 months time (finding the claims of these patents obvious over certain prior art i.e., invalid).
Why the inconsistency between the two government bodies?
In short, the standards of proof are different, as are the rules of claim interpretation. In the ITC and federal district courts, a patent may be invalidated by clear and convincing evidence only, and claims of an issued patent are presumed valid, and construed to preserve their validity. In the USPTO, the standard of evidence is a preponderance of the evidence, and there is no presumption of validity, hence the attractiveness of patent reexamination to defendants.
So, with things going well in the ITC, and not so well at the USPTO, how do the ongoing reexaminations impact the ITC?
It is difficult to predict whether or not the ITC, or, later, the almost certain Nvidia appeal to the Federal Circuit will be in any way impeded by the reexamination status. If past cases offer any guidance, the ITC is largely unconcerned with concurrent reexamination proceedings, especially at this late stage of the ITC proceeding. If Judge Newman’s dissent in the recent Fresenius Medical case is to be given weight, the Federal Circuit is likewise inclined to go about its business at least until there is a decision by the USPTO Board of Patent Appeals & Interferences (BPAI); in this regard, the race is clearly on. However, even assuming the patent reexamination status could be leveraged on appeal, closely watching the situation leads me to believe that Rambus® is very close to unveiling a new weapon in the fight against Nvidia®.
To understand the new weapon, a brief overview of the patent reexaminations is necessary.
In the patent reexaminations, a large part of the disagreement between the USPTO is over the claimed feature “receiving a signal.” The USPTO and, Nvidia® have taken the position that the lack of a clock signal is equivalent to the “receiving a signal” under a broadest reasonable interpretation. On the other side, Rambus® insists that such a reading is unreasonable as a clock signal is quite different from the strobe signal they are claiming, in view of their supporting patent specification. This difference in opinion, once finally decided, will ultimately decide the outcomes of the patent reexaminations.
On January 29, 2010, a Rambus® continuation application (11/876,567) was forwarded to the USPTO’s Office of Publications for printing. This application will now issue as a new patent to Rambus®. Interestingly, this newly anticipated patent is directly related to the 7,287,109 patent of the ITC case. As you may have guessed, the claims of the new patent explicitly recite “strobe signal,” and all prior art of the reexaminations has been considered and blessed by the USPTO in terms of their patentability.
By keeping a continuation patent application pending dating back to their original filing, Rambus® is able to adapt to changes in the DRAM market, as well as the invalidity attacks of their competitors by fashioning new and improved claims. For newly issued patents, unlike already issued patents there are no past damages to lose; hence new claims are adapted as needed. Therefore, by keeping continuation applications pending at the USPTO, Rambus® can add a new and improved weapon to the stockplie without surrendering anything in their current dispute.
In roughly two-three months time the USPTO will officially grant and print this new patent. Once printed, one can expect that this new weapon will be immediately asserted against Nvidia in a new lawsuit. Likewise, Nvidia will try to invalidate the new patent and the battle will rage on.
Clearly, the ongoing Rambus® patent reexaminations are not the end game, just one significant battle in a growing war.
 Of course appeal to the Board of Patent Appeals & Interferences (BPAI), and perhaps later to the Federal Circuit is anticipated.
 The reason for the differing standards is that claims can be amended at the USPTO, but not in court.
 While Rambus® could at least in theory amend the claims to recite “receiving a strobe signal” such a change would adversely impact their ability to collect past damages in court. Thus, the reexaminations will not conclude until all appeals are exhausted, conservatively speaking, some 2-3 years from now.