On Wednesday, a San Jose, Calif., 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, Calif., 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.

By: DocMemory
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