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SPOTLIGHT: RAMBUS INC. V. INFINEON TECHNOLOGIES AG Memory-chip makers’ relief over a jury verdict that Rambus committed fraud in not disclosing its patents to an industry standard-setting body did not last long. On Jan. 29 in Rambus Inc. v. Infineon Technologies AG, et al., 318 F.3d 1081, the Federal Circuit said that Rambus did not commit fraud under Virginia law by failing to disclose its patents and patent applications to the industry group. The ruling gives new life to the Rambus patents. It may also change how standard-setting bodies craft their disclosure policies. Rambus owns a portfolio of patents related to memory chips used in computers and other electronic components. It asserts that technical standards adopted by the Joint Electron Devices Engineering Council (JEDEC) read on its patents. So Rambus tried to enforce the patents against memory-chip makers. In one suit against several manufacturers, a federal jury in Virginia found that Rambus had committed fraud by not disclosing its patents and applications to JEDEC. The trial judge reversed part of the verdict as a matter of law. At the Federal Circuit, Judge Randall Rader, joined by Judge William Bryson, construed the JEDEC policy as requiring members to disclose only those patents and applications that “reasonably might be necessary to practice the standard.” A patent is “reasonably necessary” if its claims would read on the final standard adopted by JEDEC. The Federal Circuit found that Rambus’ SDRAM patents required additional limitations beyond the JEDEC standard. Therefore, Rambus had no duty to disclose the SDRAM patents and applications. The court also rejected the contention that Rambus’ subjective belief that its SDRAM claims covered JEDEC’s standards required it to disclose. Rambus’ belief may have impeached its business ethics, the court said, but did not prove fraud. The Federal Circuit affirmed the District Court’s judgment as a matter of law that Rambus did not commit fraud in not disclosing its patents directed to the DDR-SDRAM technology because JEDEC did not begin formally developing those standards until after Rambus had withdrawn from the group. Judge Sharon Prost dissented regarding Rambus’ failure to disclose the SDRAM patents. In her view, the JEDEC policy imposed a broader duty, requiring members to disclose all patents and applications “that might be involved” in any JEDEC initiative. This would include nonfinal versions of standards. The Federal Circuit did not rule that a standard-setting body’s disclosure policy could never render a member liable for fraud. The court expressly noted that Rambus’ actions might be fraud under a different policy. But Judge Rader emphasized the need for clarity: “A policy that does not define clearly what, when, how, and to whom the members must disclose does not prove a firm basis for the disclosure duty necessary for a fraud verdict.” Richard Taranto of D.C.’s Farr & Taranto argued the case for Rambus. Kenneth Starr of the D.C. office of Kirkland & Ellis appeared for Infineon. THE NEXT NINE Madey v. Duke University 307 F.3d 1351 Decided Oct. 3, 2002 Reversing in part summary judgment for Duke University, the Federal Circuit held that the patent holder was improperly required to show that Duke’s use of his patents was not experimental. The experimental-use defense must be established by the defendant in an infringement suit. Further, the defense is limited and does not apply to any use with “the slightest commercial implication.” Judge Arthur Gajarsa’s opinion was joined by Judges William Bryson and Richard Linn. For appellant:Randall Roden, Tharrington Smith, Raleigh, N.C. For appellee:John Bauer, Fulbright & Jaworski, New York. Texas Digital Systems Inc. v. Telegenix Inc. 308 F.3d 1193 Decided Oct. 16, 2002 Reversing in part the judgment below that four patents for controlling pixel colors in an LED display were infringed, the Federal Circuit remanded the case on the grounds that the lower court had repeatedly erred in construing claims. The Federal Circuit emphasized that dictionary definitions may always be considered in claim construction and should be considered before the specification itself. Judge Richard Linn’s opinion was joined by Judges Paul Michel and Alvin Schall. For appellee:Richard Schwartz, Winstead Sechrest & Minick, Dallas. For appellant:Gregory Lavorgna, Drinker, Biddle & Reath, Philadelphia. Golan v. Pingel Enterprise Inc., et al. 310 F.3d 1360 Decided Nov. 7, 2002 The Federal Circuit affirmed a grant of summary judgment dismissing federal and state law unfair-competition claims against the holder of a patent on a motorcycle fuel valve known as a petcock. The appeals court held that Pingel’s reliance on an opinion from counsel regarding the expiration date of the patent, though erroneous, negated a finding that Pingel asserted the expired patent in bad faith. Judge Arthur Gajarsa’s opinion was joined by Judges Pauline Newman and Sharon Prost. For appellant:Jon Hokanson, Small Larkin, Los Angeles. For appellees:Kenneth Axe, Lathrop & Clark, Madison, Wis. Middleton Inc. v. Minnesota Mining and Manufacturing Co. 311 F.3d 1384 Decided Nov. 27, 2002 Reversing a summary judgment that a patent for a floor finishing material and method was not infringed, the Federal Circuit held that the lower court had erred in its construction of the term “uniform.” In remanding the case, the appeals court noted that a term’s meaning is not altered by any subsequent contract between the patent holder and its suppliers, but instead depends on the term’s use at the time of the patent application. Judge Randall Rader’s opinion was joined by Judges Raymond Clevenger III and Richard Linn. For appellant:George Summerfield, Stadheim & Grear, Chicago. For appellee:William Streff, Kirkland & Ellis, Chicago. Amgen Inc. v. Hoechst Marion Roussel Inc., et al. 314 F.3d 1313 Decided Jan. 6, 2003 The Federal Circuit affirmed in part, vacated in part, and remanded a declaratory judgment action claiming that the plaintiff’s patents for the production of erythropoietin — a hormone that controls the formation of red blood cells — had been infringed by a defendant’s “Investigational New Drug Application.” The appeals court held, inter alia,that to defeat unclaimed disclosures in a prior-art patent asserted as an anticipatory reference, the patent holder bears the burden of proving that such disclosures are not enabled. Judge Paul Michel’s opinion was joined by Judge Alvin Schall. Judge Raymond Clevenger III dissented in part. For cross-appellant:Lloyd Day, Day Casebeer Madrid & Batchelder, Cupertino, Calif. For appellants:Herbert Schwartz, Fish & Neave, New York. Oakley Inc. v. Sunglass Hut International, et al. 2003 U.S. App. LEXIS 249 Decided Jan. 9, 2003 Affirming a preliminary injunction granted to a patent holder who claimed that his patent for sunglass lenses had been infringed, the Federal Circuit held that the lower court had not erred when it balanced the hardships and found that the patent holder would suffer the greater harm if a preliminary injunction were not granted. Oakley made a “strong showing” to invoke the presumption of irreparable harm by demonstrating that, even if the issues are close, they “favor” the patent holder. Judge Alan Lourie’s opinion was joined by Judge Pauline Newman. Judge Timothy Dyk concurred. For appellee:Joseph Jennings, Knobbe, Martens, Olson & Bear, Newport Beach, Calif. For appellants:John Benassi, Brobeck, Phleger & Harrison, San Diego. Precision Specialty Metals Inc. v. United States 315 F.3d 1346 Decided Jan. 13, 2003 Affirming the U.S. Court of International Trade’s reprimand of a Justice Department attorney, the Federal Circuit held that a reprimand under the trade court’s own Rule 11 was appropriate for the attorney’s distortion of cited authority, misleading cropping of quotes, and failure to show that she had supplied the emphasis in one quote. The Federal Circuit noted that Court of International Trade Rule 11 is identical to Federal Rule of Civil Procedure Rule 11. Senior Judge Daniel Friedman’s opinion was joined by Judges Raymond Clevenger III and Sharon Prost. For sanctioned party-appellant:Mikki Walser, pro se,Brooklyn, N.Y. Warner-Lambert Co. v. Apotex Corp., et al. 316 F.3d 1348 Decided Jan. 16, 2003 Affirming a summary judgment of noninfringement, the Federal Circuit held that a possible off-label use of a drug was not actionable as infringement in “Abbreviated New Drug Application” litigation. Warner-Lambert’s patent on the drug as a treatment for epilepsy had expired, but it argued that Apotex’s generic would infringe another patent on the drug as a treatment for neurodegenerative diseases. Only the epilepsy use has been approved by the Food and Drug Administration. Judge Alan Lourie’s opinion was joined by Senior Judge S. Jay Plager and Judge Paul Michel. For appellant:Hugh Barrett, Fitzpatrick, Cella, Harper & Scinto, New York. For appellees:William Rakoczy, Lord, Bissell & Brook, Chicago. Micro Chemical Inc. v. Lextron Inc., et al. 317 F.3d 1387 Decided Jan. 24, 2003 Affirming a jury award in a patent infringement case over computerized medical records systems for cattle feedlots, the Federal Circuit held that the lower court had not abused its discretion in allowing the plaintiff’s damages expert to testify. The Supreme Court’s decision in Daubert v. Merrell Dow Pharmaceuticals Inc.(1993) does not require excluding expert testimony, said the appeals court, simply because it is based on one party’s version of contested facts. Senior Judge S. Jay Plager’s opinion was joined by Judges Paul Michel and Alan Lourie. For appellee:Gregory Castanias, Jones, Day, Reavis & Pogue, Washington, D.C. For appellants:Dennis Mondolino, Morgan, Lewis & Bockius, New York. Robert A. Matthews Jr. and Vincent P. Kovalick are partners at D.C.’s Finnegan, Henderson, Farabow, Garrett & Dunner, where they specialize in patent law. They can be reached at [email protected]and [email protected].

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