On July 27, 2012, ALJ E. James Gildea issued the public version of Order No. 57 (dated June 28, 2012) requesting a sworn affidavit to support the joint motion to terminate Respondents Nanya Technology Corporation and Nanya Technology Corporation, USA (collectively, “Nanya”) in Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-803).

By way of background, this investigation is based on a July 12, 2011 complaint filed on behalf of Intellectual Ventures Management, LLC, Invention Investment Fund I, L.P., Invention Investment Fund II, LLC, Intellectual Ventures I LLC, and Intellectual Ventures II LLC (collectively, “IV”), against several manufacturers, distributors, and retailers of DRAM and NAND Flash memory devices for alleged infringement of various patents.  See our September 3, 2011 post for more details.

Because of the delay in issuing this public order, we previously reported that the ALJ granted the motion to terminate Nanya.  We now provide additional details.

As explained in our July 13, 2011 post, Nanya and IV executed several license and settlement agreements resolving the dispute between the parties and filed a joint motion to terminate Nanya.  However, ALJ Gildea denied the motion on public interest grounds and because Nanya and IV failed to sufficiently explain the circumstances surrounding their unusual settlement agreement.  Nanya and IV filed a renewed motion and additional briefs in response to a request from the ALJ.

In Order No. 57, ALJ Gildea explained that the additional submission did “little to provide the requested clarification” and requested that “the parties should provide a sworn affidavit or declaration from the individual(s) involved in the execution of the rights transfers.”  Specifically, the ALJ wanted “some form of sworn affirmation that at the time the Nanya settlement was entered into, the nonparty affiliate of Complainants…had the legal right to enter into a settlement with Nanya with respect to the licensing patents” (emphasis in original).  ALJ Gildea noted his concern that “there may have been some attempt made after the fact to facially rectify discontinuities apparent in the underlying agreements.”  An appropriate affidavit or declaration was requested to be filed eight days later.

After reviewing IV’s submission, ALJ Gildea determined that any doubts raised with respect to the Nanya settlement were removed and granted IV and Nanya’s renewed motion to terminate.