米国 最高裁 Samsung appeal を棄却

Press Release (by Rambus)
Supreme Court denies Samsung appeal(7 Oct 2008)
The Supreme Court has refused to consider appeals from Samsung Electronics in a case against Rambus, a memory design and patent licensing company, closing a saga that began in 2005 over alleged patent infringement. The court's decision to stay out of the case leaves in place an April appeals court ruling (PDF) that a district court had no jurisdiction to grant an order that--while technically in favor of Rambus--included negative opinions about the company. (from CNET)

以下は少し古いですがThe New York Timesの記事です。Rambus社にはバラ色の未来が待っているのか? 世の中はきっとそんなに甘くないでしょう。

(Published: September 28, 2008)

But the victories have not helped much. “Every day we’re amazed at how victories in court don’t necessarily lead to settlements,” said Sharon Holt, Rambus’s senior vice president for worldwide sales, licensing and marketing. “We really need the courts to help force these parties into settlement talks. We’re not having as much momentum in signing new business as we’ve liked.”
Jared Bobrow, a partner with Weil Gotshal & Manges, represents Micron, a chip maker that has tangled with Rambus. “This isn’t about the industry making payment. In my view, this is nothing short of patent troll activity.” Patent troll is a derogatory term used to describe companies or individuals who make their money suing companies for patent infringement.



University of Iowa - College of Law(May 2008)
Herbert J. Hovenkamp


Misrepresentation and Subsequent Assertion of Continuation Claims.

While it is lawful to write patent continuations on the existing technology of rivals, the standard-setting misrepresentation cases add an additional element that can implicate the antitrust laws. To take the simplest example, suppose that a firm has written a patent application that is subject to further continuations or divisional applications. During this period its application is unpublished. It then participates in a standard setting organization that is developing new technological standards. While participating in this fashion it also surreptitiously writes continuation claims that are calculated to cover the technology that the standard setting organization is developing. After the participants have committed themselves to the standardized technology it exposes its new patents, whose priority dates back to the original patent, and insists on royalties from all participants. Given the extent of their investment they have little choice but to pay.

The Rambus case involved a research company that was in the business of patenting designs for computer memory technology and licensing these to memory chip manufacturers. In 1990 Rambus had filed a single patent application, which the PTO found to describe multiple inventions, thus permitting Rambus to file numerous "divisional" applications derived from the original application. During the next decade the PTO granted some one dozen different patents based on these divisional applications. These applications, which ran through 1999, were given a 1990 priority date based on the original patent application. In an extremely fast moving technology market such as that for computer memory this created at least an opportunity that subsequent divisionals could have included claims for technology not reasonably contemplated in the 1990 application. However, as noted previously, continuation applications of this sort are completely proper under patent policy even if the applicant writes the subsequent divisional applications expressly to cover inventions developed subsequent to the original application. The relation back doctrine means that the patent will cover them. Any antitrust violation must consist not in writing the subsequent divisional applications in order to cover the technology developed by others, but in the misrepresentations to and participation in the standard-setting process.

One significant feature of computer memory chips is that they must be compatible with a variety of computers. This requires that chip producers develop a common set of standards for performance and interoperability. The Electronic Industries Association, a trade association including memory chip manufacturers, developed the Joint Electron Devices Engineering Council (JEDEC) whose assignment was continuously to develop and maintain interchangeability standards for such chips. Rambus was a member of JEDEC during the early 1990s, after it had filed its original patent application, and when the standards for SDRAM ("synchronous dynamic random access memory"). During that period the members of JEDEC knew about original 1990s patent application, and also knew that one divisional patent under that application had been injured. However, Rambus did not disclose that it had additional divisional applications in process. According to the FTC Rambus also took advantage of its membership in JEDEC to formulate additional divisional applications written on the very technology that JEDEC was in the process of developing, all of which would obtain the original 1990 priority date under PTO continuance rules.

In 1995 members of JEDEC began to become suspicious that Rambus had undisclosed patent claims or was in the process of perfecting new ones. Rambus refused to respond to a request to disclose these rights and then withdrew from JEDEC in 1996.

In a subsequent patent infringement lawsuit that Rambus brought against a JEDEC chip maker the Federal Circuit found the patents in question to be valid and infringed. While Rambus may or may not have acted fraudulently, computer chip makers who applied the JEDEC standards would not necessarily have to infringe any of Rambus' patents. The court also faulted JEDEC for failing to have an unambiguous standard about disclosure of pending patent applications:

In this case there is a staggering lack of defining details in the EIA/JEDEC patent policy. When direct competitors participate in an open standards committee, their work necessitates a written patent policy with clear guidance on the committee's intellectual property position. A policy that does not define clearly what, when, how, and to whom the members must disclose does not provide a firm basis for the disclosure duty necessary for a fraud verdict. Without a clear policy, members form vaguely defined expectations as to what they believe the policy requires-whether the policy in fact so requires or not. JEDEC could have drafted a patent policy with a broader disclosure duty. It could have drafted a policy broad enough to capture a member's failed attempts to mine a disclosed specification for broader undisclosed claims. It could have. It simply did not.

While the decision raised no antitrust issues, the court did opine that a rule creating a fiduciary duty on the part of JEDEC participants to disclose their patent applications would raise a risk of collusion.

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