By Eric Schweibenz
On May 3, 2012, the International Trade Commission (the “Commission”) issued a notice determining to review in its entirety a Final Initial Determination (“ID”) issued by ALJ Theodore R. Essex on March 2, 2012 finding no violation of Section 337 in Certain Semiconductor Chips and Products Containing Same (Inv. No. 337-TA-753).

By way of background, the Complainant in this investigation is Rambus Inc. of Sunnyvale, California (“Rambus”).  Rambus accused respondents of infringing certain claims of U.S. Patent Nos. 6,470,405, 6,591,353, and 7,287,109 (collectively, “the Barth patents”), and Nos. 7,602,857 and 7,715,494 (collectively, “the Dally patents”).  Although the Notice of Investigation named numerous respondents, many were terminated due to settlement.  In particular, Mediatek Inc., Audio Partnership PLC, and Oppo Digital, Inc. settled with Rambus following the ALJ’s issuance of the ID.  The two remaining respondents are LSI Corporation of Milpitas, California (“LSI”) and STMicroelectronics N.V. of Switzerland and STMicroelectronics Inc. of Carrollton, Texas (collectively, “STMicro”).  With LSI and STMicro as respondents are seven of their customers.

According to the May 3 notice, ALJ Essex’s ID found no violation of Section 337 because “[a]ll of the asserted claims were found to be invalid or obvious in view of certain prior art under 35 U.S.C. §§ 102 and 103.  The Barth patents were found to be unenforceable under the doctrine of unclean hands by virtue of Rambus’s destruction of documents.  The ID also found that Rambus had exhausted its rights under the Barth patents as to certain products of one respondent.  The ID found that all of the asserted patent claims were infringed, and rejected numerous affirmative defenses raised by the respondents.”  See our March 7, 2012 post for more details.  On March 16, 2012, Rambus, the respondents, and the Commission investigative attorney filed petitions for review of the ID.

After examining the record of the investigation, the Commission determined to review the ID in its entirety.  Specifically, the Commission requested briefing with respect to the following eight issues, in addition to issues on remedy, the public interest, and bonding:

  1. Claim construction of the term “output frequency” as used in the Dally patents.

  2. Validity of both the Barth and Dally patents in light of certain specified evidence and prior art.

  3. Infringement of the asserted Dally claims in light of certain specified evidence and case law.

  4. Unenforceability of the Barth patents under the doctrine of unclean hands.

  5. Unenforceability of the Barth patents under the doctrine of inequitable conduct. 

  6. Whether, given the particular scope of the licensed field of each Rambus license, Rambus should nonetheless be required to allocate licensing expenses on a patent-by-patent basis.

  7. Whether Rambus had exhausted its rights under the Barth patents in view of certain “Samsung memory products.”

  8. Whether Rambus has standing to sue for infringement of the Dally patents.

Written submissions are due by May 18, 2012, with reply submissions due by June 1, 2012.