By Eric Schweibenz
On June 22, 2010, the International Trade Commission (the “Commission”) issued a notice determining to request further briefing on the issue of patent exhaustion in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661).

By way of background, the Complainant in this investigation is Rambus Inc. (“Rambus”) and the Respondents are NVIDIA Corp. (“NVIDIA”); Asustek Computer Inc.; ASUS Computer International, Inc.; BFG Technologies, Inc.; Biostar Microtech (U.S.A.) Corp.; Biostar Microtech International Corp.; Diablotek Inc.; EVGA Corp.; G.B.T. Inc.; Giga-byte Technology Co., Ltd.; Hewlett-Packard Co.; MSI Computer Corp.; Micro-star International Co., Ltd.; Palit Multimedia Inc.; Palit Microsystems Ltd.; Pine Technology Holdings, Ltd.; and Sparkle Computer Co., Ltd (collectively, “Respondents”).  On January 22, 2010, ALJ Theodore R. Essex issued an Initial Determination (“ID”) finding a violation of Section 337 through the importation, sale for importation, or sale within the U.S. after importation of certain semiconductor chips having synchronous dynamic random access memory controllers and products containing same that infringe one or more claims of U.S. Patent Nos. 6,470,405; 6,591,353 and 7,287,109.  The ALJ further found no infringement of the asserted claims of U.S. Patent Nos. 7,177,998 and 7,210,016.  See our May 4, 2010 post for more details.

On March 25, 2010, the Commission issued a notice determining to review the ID in part.  See our March 26, 2010 post for more details.  On May 26, 2010, the Commission issued an additional notice requesting further briefing on the impact of a license between Rambus and Samsung on the ALJ’s finding and conclusions.  In particular, in the May 26 notice, the Commission stated that it “is particularly interested in briefing on the issue of patent exhaustion that Respondents raised in their petition for review and remedy submissions as it relates to the license.”

In the June 22 notice, the Commission notes that it received the additional briefing requested in the May 26 notice, but that in that additional briefing, “no party includes a discussion or citation to Fujifilm Corp. v. Benum [(2009-1487)], which was issued by the United States Court of Appeals for the Federal Circuit on May 27, 2010, which includes a discussion of patent exhaustion.”  Accordingly, the Commission determined “to allow additional briefing to discuss the relevance and effect of the Fujifilm case, if any, on the arguments and analysis provided in the briefing on patent exhaustion.”

The notice states that the briefing shall be limited to a single brief per party, shall be no more than 8 pages in length, and that “[a]ny briefing responsive to this notice shall be submitted by Friday, June 25, 2010.”