Subject: Federal Circuit rules in favor of Rambus

From: James Love <[email-masked]>
Date: Wed, 29 Jan 2003 18:56:36 -0500

I thinks this is relevant to the IETF process.

jamie

-------- Original Message --------
Subject: [AT-IP] Federal Circuit rules in favor of Rambus
Date: Wed, 29 Jan 2003 12:18:54 -0800
From: Henry Su <[email-masked]>
Reply-To: Henry Su <[email-masked]>
To: [email-masked]

All--

Attached is a link to today's decision from the Federal Circuit in the 
Rambus v. Infineon appeal.  The court reversed the trial court (1) on 
claim construction, thereby vacating the JMOL of noninfringement in 
Infineon's favor, and (2) on the denial of JMOL that allowed the jury 
verdict of fraud in connection with the SDRAM standard-setting process 
to stand.

http://www.fedcir.gov/opinions/01-1449.doc

Regarding the fraud issue, the Federal Circuit reviewed the evidence of 
record and held that a reasonable jury would conclude that Rambus's duty 
of disclosure as a JEDEC participant (1) applies only to patents 
containing claims that might reasonably be necessary to practice the 
proposed standard, and (2) arises only when work formally begins on the 
proposed standard.  It further held that the duty of disclosure did not 
cover a participant's future plans or intentions (i.e., to file or amend 
patent applications).  The court criticized JEDEC's patent policy for 
its "staggering lack of defining details," thereby leaving members with 
"vaguely defined expectations as to what they believe the policy 
requires" in the way of a duty of disclosure.  Having framed the duty of 
disclosure in the above terms, the court concluded that Rambus did not 
breach its duty as to the SDRAM standard because none of the claims in 
its patents and pending patent applications reads on that standard.

The Federal Circuit affirmed the grant of JMOL setting aside the verdict 
of fraud as to the DDR-SDRAM standard-setting process.  Importantly, 
Rambus had withdrawn from participation before any proposals directed to 
the DDR-SDRAM standard had been submitted, and before formal 
consideration of the standard had begun.  No duty of disclosure 
therefore had yet arisen.

*  *  *

For Committee materials on Rambus and standard setting generally, see:

Resources Relating to Antitrust and Standards Setting, 
http://www.abanet.org/antitrust/committees/intell_property/standardsettingresources.html
"Standards Development Organization Advancement Act of 2002" by William 
E. Wallace III, 
http://www.abanet.org/antitrust/committees/intell_property/71902.html
"International Roundtable on Antitrust & Intellectual Property in 
Standard Setting" by Charles T. (Chris) Compton, 
http://www.abanet.org/antitrust/committees/intell_property/july3.html
"FTC Charges Rambus With Abuse of Standard Setting Process" by David T. 
Beddow and Gregg H. Vicinanza of O'Melveny & Myers LLP, 
http://www.abanet.org/antitrust/committees/intell_property/june21.html
"Rambus v. Infineon-The Latest Standard Setting Patent Disclosure 
Guidance" by Veronica S. Lewis, 
http://www.abanet.org/antitrust/committees/intell_property/sep24report.html
"Rambus' Limited Patent Disclosure To A Standard Setting Body Was Found 
To Be Fraudulent But Not An Antitrust Violation" by Veronica S. Lewis, 
http://www.abanet.org/antitrust/committees/intell_property/rambus.html

--Henry Su

Henry C. Su

FENWICK & WEST LLP
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direct: 650.335.7651
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e-mail: [email-masked]
url: www.fenwick.com

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James Love, Director, Consumer Project on Technlogy
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