Patent Law Practice Center

Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations

The following post comes from Scott Daniels, a partner at Westerman, Hattori, Daniels & Adrian LLP, Practice Center Contributor and author of Reexamination Alert.

Traditionally, District Court judges have issued permanent injunctions to stop infringement of valid patents, regardless of any pending reexamination of the patent in question.  Only if the rejection of the patent claims in reexamination is “final,” would the courts refuse to enjoin the accused infringer.  A few judges – notably Judge James Cohn of the Southern District of Florida and Judge Sue Robinson of Delaware – have recently shown a willingness to defer a decision on injunctive relief even where the rejection of the patent in reexamination is not final.

The Rambus/NVIDA investigation raises the question of the extent to which the ITC is willing to order relief on the basis of patents that are in reexamination at the PTO.  Unfortunately for NVIDIA, its argument to the ITC that it stay relief against NVIDIA was weak because its attack the Rambus patents by reexamination has been “an incomplete success” (to borrow a phrase from President Carter).

That weakness may account, in part, for NVIDIA’s agreeing at the end of last week to a license to the Rambus patents, effectively concluding the dispute between the parties.  Still, the ITC’s analysis in the Rambus/NVIDA investigation remains of great interest to the IP community, as it suggests that the ITC will be extremely reluctant to withhold relief against infringing imports on the basis of an uncompleted reexamination. (more…)