Scott Daniels | September 2, 2011
Yesterday the PTO Board handed NVIDIA victories (here, here) against two DRAM patents: the Board affirmed the examiner’s rejection of claims 1-25 of U.S. Patent No. 7,287,109 and reversed the examiner’s refusal to adopt proposed rejections of claims 1-37 of U.S. Patent No. 6,470,405, the so-called “Barth I Patents.” Rambus may now appeal the rejection of the ‘109 claims to the CAFC. Since the Board’s reversal of the examiner regarding the ‘405 herepatent constitutes a new ground of rejection, Rambus may argue that rejection with the examiner.
The ‘109 and ‘405 patents were the subject of an ITC investigation that concluded last August with a determination that the patents were valid and infringed. On the basis of that determination, the ITC issued a limited exclusion order prohibiting NVIDIA, HP and a host of other companies from importing infringing DRAMs into the United States. It also issued separate cease & desist orders against the individual respondents forbidding them from selling infringing DRAMs already in the United States. NVIDIA was reported to have taken a license under the Barth I Patents, thereby exempting it from the ITC’s remedial orders.
Yesterday’s ruling by the PTO Board raises the question of whether the ITC should rescind its exclusion and cease & desist orders which do not expire until 2015. We have previously questioned whether the ITC should issue or maintain such remedial orders on the basis of patents that the PTO has found in reexamination to be invalid.
The ITC’s orders additionally prohibit infringement of a third Rambus patent – U.S. Patent No. 6,591,353 – which is also in reexamination. The PTO Board is likely to render a decision on the ‘353 claims in early 2012.