By Eric Schweibenz
On June 23, 2010, ALJ Theodore R. Essex issued the public version of Order No. 21 (dated October 7, 2009) in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661).  In the Order, ALJ Essex granted Complainant Rambus, Inc.’s (“Rambus”) motion for summary determination that it satisfied the domestic industry requirement through its licensing activities in the U.S.

According to the Order, Rambus’s licensing activities are based in Los Altos, California, and allegedly include promoting Rambus technology, negotiating and drafting license agreements, ensuring compliance with those agreements, conducting market analysis, providing licensing and patent strategy, and providing technical licensing support.  The Order states that Rambus has multiple license agreements for its Concurrent Interface Technology and its XDR Technology, each of which includes several of the patents asserted in the investigation.  Rambus argued that it had demonstrated that the asserted patents were highlighted during actual licensing negotiations and, as such, were part of the portfolios ultimately licensed.  Accordingly, Rambus argued that the appropriate nexus exists between its licensing activities and the asserted patents and that it has therefore satisfied the domestic industry requirement.

According to the Order, Respondents opposed Rambus’s motion and argued that (1) Rambus’s dilatory production and poor testimony prevented Respondents from examining Rambus’s evidence of domestic industry and (2) Rambus failed to establish a nexus between its license agreements and the asserted patents.  The Commission Investigative Staff supported Rambus’s motion.

ALJ Essex determined that Rambus has satisfied the domestic industry requirement through its licensing activities in the U.S. and that there is a sufficient nexus between Rambus’s licensing activities and the asserted patents.  Importantly, the ALJ determined that “[t]he fact that other patents may be included in the portfolio does not detract from the fact that the asserted patents are licensed.”  ALJ Essex also rejected Respondents’ argument that Rambus’s dilatory production should prevent him from granting summary determination because “[w]hile it is clear that Respondents would have had more time to review the evidence had Rambus produced it earlier, the fact remains that Rambus did, in fact, produce evidence prior to the close of fact discovery and Respondents have had an opportunity to review the evidence.”