Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Fresh off of a major courtroom victory over Hynix Semiconductor and other manufacturers, Rambus says it’s considering seeking an injunction against Hynix to keep it from making memory chips that infringe on its patents. Last Wednesday, a San Jose federal jury rejected claims by Hynix, Micron Technology and Nanya Technology that Rambus set an illegal “patent trap” by stealing – and then patenting – ideas from industry meetings in the 1990s. The win paves the way for the Los Altos memory chip licensing company to get an infringement award worth at least $133.6 million from a previous case against Hynix – and perhaps an injunction, said Thomas Lavelle, Rambus’ general counsel. “It would be great to get a resolution before that,” Lavelle told The Recorder on Friday. “But we would be crazy not to consider [seeking an injunction].” Though the threat may turn out to be gamesmanship in trying to bring Hynix to the settlement table, the possibility raises important legal questions, several intellectual property lawyers said. Ever since the 2006 Supreme Court’s eBay v. MercExchange decision that an injunction shouldn’t automatically be issued on a finding of patent infringement, such orders have been less frequent – especially for companies that don’t make products. “It’s a mixed bag,” said James Hopenfeld, a Ropes & Gray IP lawyer who has been tracking injunctions post- eBay. “If you’re competitors – almost all the time; but if not – it’s a coin toss.” Whether Rambus – which gets most of its revenue from licensing its patents, not making products – would be considered a competitor in the industry would be a central question for the courts. The specter also brings to the fore the debate over whether patent holders should be allowed to get an injunction over patents that are used in industry standards, like the ones at issue between Rambus and Hynix. Hopenfeld said that participating with a standard-setting group almost always comes with an explicit or implicit promise to license patents related to the standards at a reasonable rate. The question is whether that precludes an injunction, the Ropes lawyer said. “That is an open question in the law and that’s why Rambus could be an important test case,” Hopenfeld said. Rambus GC Lavelle said the eBay case wouldn’t necessarily stand in the way if the company decides to pursue an injunction.

Read our latest coverage of patent law and intellectual property issues, from Silicon Valley to the U.S. Supreme Court.

Rambus has felt irreparable harm by not getting licensing revenue from Hynix, Lavelle contends, one of the four factors now weighed by courts considering injunctions. He also argues that Rambus is more like semiconductor companies that outsource manufacturing and less like so-called “patent trolls” whose only business is asserting patents. “Would you say that the whole fabless semiconductor industry is not allowed to get an injunction?” Lavelle asked rhetorically. “That would seem a little a strange.” Kenneth Nissly, a Thelen Reid Brown Raysman & Steiner lawyer representing Hynix, wouldn’t comment on the merits of a possible injunction, saying only that “The law, as is widely recognized, has changed since eBay.” Of course, none of this may come to pass. Lavelle said his company is interested in a good settlement. On the other side, Nissly said Hynix would consider an appeal, as is Nanya, and Micron said it plans to appeal. The manufacturers have reason to fight. The outcome of the jury trial in San Jose allows Rambus to go after Micron and Nanya for infringement. It also allows the company to collect more than the $133 million from Hynix because the company continued to ship its products and because of accrued interest, Lavelle said. Cases are still pending against Hynix, Nanya, Micron and Samsung in the Northern District of California, and with Micron in the District of Delaware.

Want to continue reading?
Become a Free ALM Digital Reader.

Benefits of a Digital Membership:

  • Free access to 1 article* every 30 days
  • Access to the entire ALM network of websites
  • Unlimited access to the ALM suite of newsletters
  • Build custom alerts on any search topic of your choosing
  • Search by a wide range of topics

*May exclude premium content
Already have an account?

Reprints & Licensing
Mentioned in a Law.com story?

License our industry-leading legal content to extend your thought leadership and build your brand.


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.