For those of you who have followed my analyses in other fora in the Rambus litigations, welcome!
As many of you know, Rambus recently won a victory against Hynix in Federal Court in San Jose, and that trial is now winding down. Judge Whyte is considering whether an injunction is warranted against Hynix's commodity DRAM parts. That fight should last another...2 years with any CAFC review, unless Hynix pulls a surprise and decides to settle.
But the above case is just the tip of the iceberg. Rambus has filed a number of other cases against other DRAM makers. In short Rambus is in a "patent" holy war right now.
To even the odds, one DRAM maker, Samsung, has decided to take another route to try and eviscerate the Rambus patents: through the PTO reexamination procedures. Samsung files reexams
Reexamination is a procedure that grants the PTO the chance to re-review patents after they are already issued. Generally speaking the goal of the requester is to convince the PTO that the patent is too broad, and thus should be invalidated or at least narrowed in scope. If the requester is successful, this can have multiple unpleasant effects for the patent owner, including: a) losing past infringement damages (due to intervening rights); b) losing future damages (due to the claims being narrowed).
Defendants prefer the PTO because the latter is typically much more savvy and circumspect in examining patents. Furthermore, the patent owner does not enjoy the presumption of validity, so the doors are thrown open for the Examiner to review the patent anew.
The use of reexamination procedures is controversial because the patent owner would obviously prefer to keep the case in federal court in front of the Judge. By asking the PTO to intervene, it throws a wrench into into such plans.
Moreover unless the patent owner is willing to go the distance, the odds of succeeding in a reexamination against a stubborn Examiner are extremely low. In an informal survey I conducted of BPAI decisions over the past 2/3 years, I counted almost 100 appeals in reexams (both interparte and ex parte) and discovered that the patent owner won less than 10% of the time. These are horrendous odds and should give anyone facing such situation great pause.
Of course it is true that one has recourse to the CAFC, but there is no study that suggests one's odds improve there. In fact, last year the CAFC handed down the Translogic case, one of the more significant decisions in some time, to little fanfare.
What was special about Translogic is that the CAFC for the first time had an opportunity to simultaneously review both a judgement in favor of the patent owner from a jury award (from an Oregon District Court) and decision by the BPAI against the same patent resulting from an adverse reexamination. For the first time - that I can recall - the CAFC upheld the killing of the BPAI, and then turned around and vacated the jury award as well. Double bonus for defendant Hitachi! Patent dead, jury award (in excess of $100m) also gone!
What this shows is that reexams are more important than ever. This fact is not lost on the investing community either, as several companies in the past year have seen their stocks tank as a result of an unfavorable PTO decision in reexamination. Tessera Takes Hit Reexams tend to have other unfriendly side effects as well, such as causing Courts to suspend case progress until the PTO sorts things out. ED Texas Judge Stays Case
It is quite apparent therefore why Samsung has decided to file for reexamination of eight (8) separate Rambus patents. They (rightly) perceive that their chances of success are much greater with the PTO.
Of the 8 pending cases, at least one (95/001008 for US Patent No. 6,715,020) is at a reasonably advanced stage that it is possible to glean some insights and understandings about the relative strength of the parties' positions. This first case is also key because many of the arguments raised by Samsung to the PTO have broader applicability to many, many more of the Rambus patents. More specifically, Samsung has challenged the sufficiency of the Rambus disclosures (a theme that has been repeated several times with the district courts) but this time they appear to have a more receptive ear with the PTO. If Samsung is successful with this line of attack, it will have a strong ripple effect and likely compromise numerous other Rambus patents having the same claim "DNA" so to speak. Samsung has also succeeded in getting the Examiner to believe their position that the claims are also invalid in light of prior art not originally considered in the patent's original prosecution.
Samsung clearly is going for the fences here.. but will they succeed?
I've now looked the main primary filings by Rambus, Samsung, and the Examiner in charge of the case. All in all, there are approximately 25! main issues that the Examiner needs to resolve. First and foremost he needs to decide whether Rambus is entitled to the original 1990 filing date. There are no less than seven (7) separate "written description" challenges presented on this front. In my opinion, this aspect of the Examiner's opinion is the most critical, since anything he determines here will have broad impact on many other Rambus cases.
Over the next few weeks I plan to reveal my thinking and analysis for how I think this grand saga is going to play out in front of the PTO for each of these challenges. I will give specific predictions on what I think the Examiner will consider, and where I think the parties will win, and where they will lose.
I begin tomorrow with the written description challenges, because, as I indicated, they are very crucial to the other Rambus cases. Later, as time permits, I will address the prior art arguments as well. To a large extent I consider the latter secondary since Rambus can likely afford to lose a few claims in one patent. But they cannot afford a determination from the PTO that throws several dozen other patents into chaos.
Please note I am not employed by either party in the reexams, nor do I represent anyone involved in any of the other ongoing litigation proceedings. This exercise is purely for intellectual sport since I practice in this field and make a living making these types of judgement calls every day. No one should take anything in these posts as constituting legal and/or investing advice of any kind.