ITC Issues Public Version Of Opinion In Certain Semiconductor Chips (337-TA-661)
On August 10, 2010, the ITC issued the public version of its opinion affirming ALJ Theodore R. Essex’s January 22, 2010 Initial Determination (“ID”) finding a violation of Section 337, and determining to issue a limited exclusion order (“LEO”) and cease and desist orders 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. and the Respondents are NVIDIA Corp., 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 Essex issued his 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 (“Barth I patents”). ALJ Essex further found no infringement of the asserted claims of U.S. Patent Nos. 7,177,998 and 7,210,016 (“Ware patents”). 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. After requesting briefing with respect to remedy, the public interest, bonding, and licensing issues (see our June 22, 2010 post) the Commission determined to affirm ALJ Essex’s ID.
Obviousness
In the Opinion, the ITC affirmed ALJ Essex’s determination that the Ware patents are anticipated and rendered obvious by U.S. Patent No. 6,292,903 (“the ‘903 patent”), “but provide[d] further analysis of obviousness in which it is assumed that certain limitations of the asserted claims of the Ware patent are not disclosed by the [‘903 patent].” In this regard, the ITC found that “even if the [‘903 patent] does not explicitly disclose the disputed limitations of the asserted Ware claims, its disclosure would render those limitations obvious to one of ordinary skill in the art.”
With regard to the Barth I patents, the ITC adopted ALJ Essex’s determination that the prior art relied upon by the Respondents did not anticipate these patents because it did not disclose the “strobe signal” or “signal” limitations of the asserted Barth I claims. In view of this finding, the ITC also determined that “Respondents have failed to show that it would have been obvious to one of ordinary skill in the art to modify [the prior art] to add the claimed ‘strobe signal’/‘signal’ limitations.” Similarly, with respect to the issue of obviousness-type double patenting, the ITC determined that “the asserted Barth I claims’ inclusion of the ‘strobe signal’/‘signal’ limitations renders them patentably distinct from the claims of the [particular prior art reference].”
With respect to both the Ware and Barth I patents, the ITC determined that (i) the level of ordinary skill in the art should be the same for both patents and (ii) “Rambus failed to meet its burden of establishing secondary considerations and failed to establish a nexus between the evidence and the merits of the claimed invention.”
Remedy and Bonding
In the Opinion, the ITC “determined to issue a limited exclusion order against the goods of those Respondents found to infringe the Barth I patents” and “decline[d] Rambus’s request to direct the LEO to all products incorporating NVIDIA controllers, [including] even products of non-respondents” under Kyocera Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 2008). Further, the ITC “determined to issue cease and orders against those respondents found by the ALJ to maintain a commercially significant inventory of infringing products in the United States.” Finally, the ITC found that public interest factors did not preclude the issuance of remedial orders and that the bond during the Presidential review period should be set at 2.65 percent of the entered value of the imported products.
Patent Exhaustion Doctrine
According to the Opinion, the ITC rejected the Respondents’ arguments that products using licensed memory sold by non-respondent Samsung should be exempt from any exclusion order. In this regard, the ITC found that the “Respondents have failed to demonstrate that the relevant sales of Samsung memory take place in the United States” as required under the “the exhaustion doctrine’s territoriality requirement.”
Stay of Remedial Orders
The ITC determined that the Respondents failed to demonstrate that staying its remedial orders was appropriate in view of an ongoing reexamination proceeding regarding the Barth I claims. In this regard, the ITC noted, inter alia, that (i) “the reexamination proceedings are not yet final”; (ii) the “ongoing reexamination proceedings have not resulted in a preliminary rejection by the examiner of all the asserted Barth I claims, only of some of them”; and (iii) notwithstanding the PTO’s preliminary determination of invalidity for some claims, exclusion of all the accused products would still result, because they all were found to infringe all the asserted Barth I claims.
