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Samsung Pushes ITC To Affirm Patents, Nvidia Fires Back

 Samsung urged the U.S. International Trade Commission Monday to affirm the validity of memory and data patents the agency found that Nvidia had violated, in light of the commission's decision to review its ruling.

In response to the commission's Feb. 24 notice saying it would review ITC Administrative Law Judge David P. Shaw’s initial determination, which found that Nvidia infringed Samsung Electronics Co. Ltd.’s U.S. Patent Numbers 6,147,385; 6,173,349; and 7,804,734 and violated Section 337 of the Tariff Act, Samsung argued to the commission that the claims in question were properly constructed in the initial ruling.

The South Korean tech giant urged the ITC to affirm that the ‘734 patent is valid, was infringed and has a domestic industry, and that the products in question were not within the scope of the investigation. It also pushed the commission to issue a limited exclusion order and a cease and desist order against Nvidia. Complainants must establish the existence of a domestic industry relating to the products in question, among other things, in order to prove a violation of Section 337 of the Tariff Act.

The ITC has said it would review at least six questions pertaining to the ‘734 patent, as well as whether certain products were within the scope of the investigation and whether Samsung proved that the ‘349 patent was infringed.

Samsung had alleged that Nvidia and a dozen associated companies manufactured, imported and sold products such as tablets and computer video cards that infringed several of its patents pertaining to various aspects of memory technology and data-transfer arrays.

California-based Nvidia filed its own brief on Monday, countering that the accused products do not infringe the ‘734 patent, that the asserted claims of that patent are invalid and that there is no domestic industry for that patent. It also said that the products in question by the ITC fell within the scope of the investigation and do not infringe the ‘385 patent. Additionally, the computer graphics firm argued that another category of accused products does not infringe the ‘349 patent.

Nvidia also said a cease and desist order was not appropriate and any limited exclusion order should include a standard service and repair exception so that the company could continue its service and repair of any products sold before the limited exclusion order’s date of issuance.

“There is no reason U.S. consumers who currently own accused products under existing service and warranty contracts should be penalized by the commission’s prospective relief excluding future importations,” Nvidia said.

Judge Shaw issued the final initial determination that Nvidia infringed three patents belonging to Samsung on Dec. 22. Nvidia said at the time that it planned to seek a review, saying the case was a retaliation to Nvidia’s own suit against Samsung before the ITC.

Samsung filed its ITC complaint in November 2014, and the commission agreed to institute an investigation about a month later.

The complaint came about two weeks after the company filed a separate suit in Virginia federal court against Nvidia over another set of video and memory patents and about two months after the ITC agreed to investigate Nvidia’s complaint that Samsung’s tablets and smartphones infringed on its own, different set of graphics processing patents.

The ITC cleared Samsung and Qualcomm Inc. in December of violating two Nvidia graphics patents, upholding an administrative law judge's decision.

Samsung's Virginia suit against Nvidia is still in progress. The judge granted Nvidia’s unopposed motion to dismiss Samsung’s U.S. subsidiary as a plaintiff in the case earlier this month.

Attorneys for the two companies and company representatives for Nvidida and Samsung declined to comment.

The patents-in-suit are U.S. Patent Numbers 6,147,385; 6,173,349; and 7,804,734.

Samsung is represented by D. Sean Trainor, Gregory S. Arovas, James E. Marina, Jon R. Carter, Edward C. Donovan and Bao Nguyen of Kirkland & Ellis LLP.

Nvidia and associated entities are represented by Bert C. Reiser, Maximilian A. Grant, Jonathan D. Link, Matthew D. Aichele, Ron E. Shulman, Rick G. Frenkel, Clement Naples, Michael A. David and Julie M. Holloway of Latham & Watkins LLP.

The case In the Matter of Certain Graphics Processing Chips, Systems on a Chip and Products Containing the Same, investigation number 337-TA-941, before the U.S. International Trade Commission.