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2013-1224 (Reexamination Nos. 95/001,106 & 95/001,131)

IN THE

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT ___________ RAMBUS, INC.,

Appellant,
v. MICRON TECHNOLOGY, INC., ___________

Appellee.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. ___________ REPLY BRIEF FOR APPELLANT RAMBUS INC. ___________ J. Michael Jakes James R. Barney Molley R. Silfen Aidan C. Skoyles FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 901 New York Avenue, NW Washington, DC 20001 (202) 408-4000 October 15, 2013

Attorneys for Appellant Rambus Inc.

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TABLE OF CONTENTS I. II. INTRODUCTION ...........................................................................................1 REPLY TO MICRONS ARGUMENTS ........................................................2 A. The Board Lacked Jurisdiction over Microns Appeal .........................2 1. 2. 3. The Boards Statutory Interpretation Is Not Entitled to Chevron Deference .................................................................2 Microns Interpretation of 35 U.S.C. 315(b) Is Incorrect ......................................................................................5 Micron Concedes that Any Final Decision in 35 U.S.C. 315(b) Refers Only to Decisions Within the Requested Reexamination ...................................................11 The Hypothetical Non-merger Scenario Is Relevant Because It Proves the Board Overstepped Its Statutory Bounds .......................................................................12 Microns Remaining Arguments Lack Merit............................13

4.

5. B.

Micron Has Failed to Show by Substantial Evidence that Any Single Embodiment of Bennett Stores a Value that Is Representative of a Programmable Number of Clock Cycles ............15 1. Micron Misstates the Proper Weight to Be Given to the Examiners Factual Findings in an Inter Partes Reexamination ..........................................................................15 Microns Alternative Construction of Representative Is Incorrect ....................................................16 The Configurations Shown in Figures 25a and 25b of Bennett Do Not Anticipate Claims 15 and 16 ..........................20 The Presence or Absence of One Extra Clock Cycle Does Not Satisfy Claim 15s Requirement of a Value that Is Representative of a Number of Clock Cycles Which Must Transpire Before Sampling ...................................................................................25 i

2. 3. 4.

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C. III.

Microns Alternative Ground for Invalidity Based on JEDEC and Park Contradicts This Courts Prior Decisions ...............26

Conclusion .....................................................................................................30

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TABLE OF AUTHORITIES Page(s) FEDERAL CASES ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314 (Fed. Cir. 2012) ..........................................................................23 Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc) ..........................................................27 Belkin International, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012) ................................................................8, 10, 12 Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011) ..........................................................................3, 4 Brand v. Miller, 487 F.3d 862 (Fed. Cir. 2007) ..............................................................................4 Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001) ..........................................................................23 Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984) ..............................................................................................2 City of Arlington, Texas v. FCC, 133 S. Ct. 1863 (2013) ..........................................................................................4 Cooper Technologies Co. v. Dudas, 536 F.3d 1330 (Fed. Cir. 2008) ............................................................................3 Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) ..........................................................................15 Ex parte Horito, 2012 WL 4842863 (BPAI Sept. 27, 2012) ...................................................15, 16 Ex parte Technology Development & Licensing, LLC, 2013 WL 3294852 (PTAB Apr. 19, 2013) .........................................................17 Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336 (Fed. Cir. 2011) ..........................................................................27

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ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368 (Fed. Cir. 2009) ..........................................................................28 In re Caveney, 761 F.2d 671 (Fed. Cir. 1985) ......................................................................15, 16 In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) ......................................................................4, 15 In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008) ................................................................2, 3, 4, 9 LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) ..........................................................................28 Pfizer Inc. v. Apotex Inc., 731 F. Supp. 2d 741 (N.D. Ill. 2010) .................................................................... 3 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..........................................................17 Rambus Inc. v. Infineon Technologies AG, 318 F.3d 1081 (Fed. Cir. 2003) ....................................................................27, 28 Skidmore v. Swift & Co., 323 U.S. 134 (1944) ..............................................................................................4 Talbert Fuel Systems Patents Co. v. Unocal Corp., 275 F.3d 1371 (Fed. Cir. 2002), vacated and remanded on other grounds, 537 U.S. 802 (2002) ......................................................................................18, 19 Tehrani v. Hamilton Medical, Inc., 331 F.3d 1355 (Fed. Cir. 2003) ..............................................................16, 17, 24 United States v. Mead, 533 U.S. 218 (2001) ..........................................................................................3, 4 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ............................................................................20 FEDERAL STATUTES 5 U.S.C. 556 ........................................................................................................3, 4

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5 U.S.C. 557 ........................................................................................................3, 4 28 U.S.C. 651-658...............................................................................................15 35 U.S.C. 311 ..........................................................................................................8 35 U.S.C. 312 ..........................................................................................5, 8, 10, 12 35 U.S.C. 313 ..........................................................................................................8 35 U.S.C. 315 ..........................................................................................5, 7, 11, 12 35 U.S.C. 317 ..........................................................................................................7 OTHER AUTHORITIES 145 Cong. Rec. E1788-93 (daily ed. Aug. 5, 1999) (extended remarks of Rep. Coble) .....................................................................................................7, 14 MPEP 2240(II) (8th ed. Rev. 9, Oct. 2012) ............................................................ 5 MPEP 2258(G) (8th ed. Rev. 9, Oct. 2012)..........................................................17

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I.

INTRODUCTION Micron has compounded the jurisdictional problems in this case by raising

two additional referencesJEDEC and Parkthat it failed to include in its original request for reexamination. As with Bennett, only Samsung asserted

JEDEC and Park as anticipation references and, therefore, only Samsung had a right to appeal the examiners ruling that claims 15 and 16 are allowable over these references. The Boards erroneous decision that Micron had standing to appeal these Samsung issues was based on a misinterpretation of the statute. Contrary to Microns assertion, the Boards statutory interpretation is not entitled to Chevron deference. As an informal adjudication handed down without notice-and-comment rulemaking, a Board decision interpreting a statute is reviewed by this Court de novo. Moreover, Micron fails to explain how the Boards ruling is consistent with the statute. Microns reasoning is based on the faulty premise that the PTO has unfettered authority to issue duplicate rejections in copending reexaminations. To the contrary, in a given reexamination, the PTO can only enter a rejection if it independently satisfies the substantial new question of patentability (SNQ) requirement for that reexamination. Here, the rejections based on Bennett, JEDEC, and Park did not meet the SNQ requirement for the Micron-requested reexamination because they were not new, i.e., they had already been taken up in the earlier Samsung-requested reexamination. Thus,

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regardless of the PTOs administrative merger procedure, Micron could not have gained the right to appeal these Samsung issues because they could not have been properly added to Microns reexamination as a matter of statute. On the merits, Micron fails to show that the Boards rejection of claims 15 and 16 over Bennett was supported by substantial evidence. Micron concedes that Bennetts configuration parameter VI can, at most, be configured to include or not an extra clock cycle of delay before the transmission of data. (Micron Br. 8 (emphasis added).) As the examiner correctly found, this extra clock cycle is not representative of the programmable number of clock cycles because there are other factorsnot accounted for by configuration parameter VIthat can also affect this delay period. II. REPLY TO MICRONS ARGUMENTS A. The Board Lacked Jurisdiction over Microns Appeal 1. The Boards Statutory Interpretation Is Not Entitled to Chevron Deference

Contrary to Microns assertion, the Boards interpretation of a statute is not entitled to Chevron 1 deference but, instead, is reviewed de novo. See In re

Swanson, 540 F.3d 1368, 1374 (Fed. Cir. 2008) (We review the Boards legal conclusions including statutory interpretation de novo. (emphasis added)). In

Chevron, U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984).

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Swanson, this Court distinguished Board decisions, like the one here, from situations where deference may be owed to the PTOs interpretation of a statutory provision concerning the conduct of proceedings in the PTO, instituted after notice and comment proceedings and published in the Federal Register. Id at 1374-75 n.3 (emphasis added). In United States v. Mead, 533 U.S. 218, 231-34 (2001), the Supreme Court made clear that Chevron deference is generally reserved for agency interpretations set forth after notice-and-comment rulemaking or a formal adjudication under 5 U.S.C. 556-557. A bare panel decision of the Board of Patent Appeals and Interferences does not meet this criterion and is therefore not entitled to Chevron deference. Swanson, 540 F.3d at 1374-75 n.3 ([T]he Boards statutory

interpretation in a particular case is given no deference . . . .); accord Pfizer Inc. v. Apotex Inc., 731 F. Supp. 2d 741, 751 (N.D. Ill. 2010) (Board decisions are not entitled to Chevron deference, regardless of whether they concern procedural or substantive issues.). Microns reliance on Cooper Technologies Co. v. Dudas, 536 F.3d 1330 (Fed. Cir. 2008), is therefore misplaced because the PTO rule at issue there had undergone the notice-and-comment process and had been published in the Federal Register, unlike the Board decision here. Id. at 1332-34. Likewise, Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011), is inapplicable

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because it involved a provision of the MPEP, not a Board decision as here, id. at 646. Moreover, in Bettcher, the Court cited the MPEP provision only as an alternative ground supporting its decision and without any discussion or analysis as to what type of deference should be given to that provision, e.g., Chevron deference, Skidmore 2 deference, or something else. See id. The decision in City of Arlington, Texas v. FCC, 133 S. Ct. 1863 (2013), is likewise inapplicable here. In City of Arlington, the statutory interpretation at issue was promulgated by the FCC in a Declaratory Ruling, and there was no dispute before the Court that this Declaratory Ruling constituted a formal agency adjudication, as opposed to an informal agency interpretation of the type excluded from Chevron deference under Mead. Here, in contrast, this Court has held that PTO proceedings are not formal adjudications governed by 556 and 557 of the APA. Brand v. Miller, 487 F.3d 862, 867 (Fed. Cir. 2007) (emphasis added) (citing In re Gartside, 203 F.3d 1305, 1313 (Fed. Cir. 2000)). Accordingly, the Boards decision here is not entitled to Chevron deference. See Mead, 533 U.S. at 231-34; Swanson, 540 F.3d at 1374-75.

Skidmore v. Swift & Co., 323 U.S. 134 (1944).

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2.

Microns Interpretation of 35 U.S.C. 315(b) Is Incorrect

Micron contends that [t]he persistent flaw in Rambuss argument is that it bases a requesters statutory appeal rights solely on what is in a requesters reexamination request rather than basing the appeal rights on the examiners final decision of patentability . . . . (Micron Br. 24.) Yet it is Microns interpretation of the statute that is flawed. Micron fails to acknowledge that the entire inter partes reexamination statute is based on a single gateway criterionthe substantial new question of patentability threshold set forth in 35 U.S.C. 312. Notably, a substantial new question of patentability must be new in order to be the basis of an inter partes reexamination. Thus, for example, if Requester A successfully initiates an inter partes reexamination of a patent based on argument X, a subsequent Requester B challenging the same patent cannot initiate an inter partes reexamination based on the same argument X since it no longer constitutes a new question of patentability. Cf. MPEP 2240(II) (8th ed. Rev. 9, Oct. 2012) (If the prior art cited [in an ex parte reexamination request] raises the same substantial new question of patentability as that raised in the pending reexamination proceedings, the second or subsequent request should be denied.). (See also A2087, Microns Oppn to Rambuss Mot. to Dismiss for Lack of Standing at 2 (acknowledging that Micron was not permitted to repeat the same arguments and rejections proposed 5

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in Samsungs reexamination request.).) The PTO recently made this clear in denying a second ex parte reexamination request in Reexamination No. 90/012,901. (A20217 ([B]ecause the same technological teachings formed the basis of the substantial new question of patentability found in the co-pending 781 proceeding, there is no substantial new question of patentability in the present request.).) Had Congress intended something different, it could have drafted the statute to allow the PTO to institute an inter partes reexamination based on any substantial question of patentability, even if not new. This would have allowed, for instance, multiple requesters to institute simultaneous inter partes reexaminations of the same patent based on the same invalidity arguments. Yet that is not what Congress adopted. Congress was concerned, among other things, that the inter partes

reexamination procedure might be used by third-party requesters to harass patent owners. As Rep. Coble remarked: To prevent harassment, anyone who requests inter partes reexamination must identify the real party in interest and third-party requesters who participate in an inter partes reexamination proceeding are estopped from raising in a subsequent court action or inter partes reexamination any issue of patent validity that they raised or could have raised during such inter partes reexamination.

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145 Cong. Rec. E1788, at E1790 (daily ed. Aug. 5, 1999) (extended remarks of Rep. Coble) (emphasis added). Rep. Coble further explained that 317 of the statute was aimed at preventing harassment of patent owners: Title V creates a new 317 which sets forth certain conditions by which inter partes reexamination is prohibited to guard against harassment of a patent holder. In general, once an order of inter partes reexamination has been issued, neither a third-party requester nor the patent owner may file a subsequent request for inter partes reexamination until an inter partes reexamination certificate is issued and published, unless authorized by the Director. Id. (emphasis added). It is undisputed that the inter partes reexamination statute does not suggest or envision multiple reexamination proceedings being joined together. Instead, the statute treats each inter partes reexamination as a stand-alone proceeding with one requester and one patent owner. See, e.g., 35 U.S.C. 317(a) (referring to the patent owner and the petitioner (emphases added)). Similarly, the estoppel provision of 315(c) is unique to each individual requester. See 35 U.S.C.

315(c) (estoppel applies to any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings (emphasis added)). With respect to the SNQ criterion, this Court has summarized the process as follows:

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The statute requires the Director to order reexamination for resolution of the question. 313. The statute is clear that that question is the same substantial new question of patentability found by the Director under 312(a). The statutory framework thus requires that an issue must raise a substantial new question of patentability, as determined by the Director, with respect to cited prior art before it can be considered during inter partes reexamination. Belkin Intl, Inc. v. Kappos, 696 F.3d 1379, 1382 (Fed. Cir. 2012). Micron cites Belkin for the proposition that, during reexamination, the PTO may make any new rejection . . . . (Micron Br. 30 (quoting Belkin, 696 F.3d at 1383).) But, tellingly, Micron truncates the Courts holding and, in so doing, eliminates a critically important caveat. The full holding is as follows: Indeed, the PTO may make any new rejection, as long as that rejection also meets the substantial new question of patentability requirement. . . . Thus, the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under [35 U.S.C.] 311 that the Director has determined raise such an issue. It otherwise may not include other prior art than what constituted the basis of the Directors determination of a substantial question of patentability. Belkin, 696 F.3d at 1383 (emphasis added) (citation omitted). Thus, in any reexamination proceeding, the Director only has statutory authority to issue a new rejection if it meets the substantial new question of patentability requirement for that reexamination. 35 U.S.C. 312(a). This is

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why Microns arguments fail. Micron incorrectly contends that the PTO has unfettered authority to issue identical Office Actions in [two separate inter partes reexamination] proceeding[s] in order to obtain many of the same benefits of merger. (Micron Br. 27.) Yet this is simply untrue; the statute only permits the PTO to issue rejections in an inter partes reexamination that satisfy the SNQ requirement for that reexamination. Assume, for example, that Requester A successfully institutes an inter partes reexamination of a patent based on invalidity argument X. Three months later, Requester B successfully institutes a second inter partes reexamination of the same patent based on invalidity argument Y. Contrary to Microns assertion, the PTO does not have statutory authority to include the X rejection in Requester Bs separate reexamination proceeding because X is not a substantial new question of patentability in Requester Bs proceeding. It was only new when it was originally proposed by Requester A. From that point forward, X cannot be raised by a third party or the Director as a ground for rejection in any subsequent reexamination of the same patent because it is no longer new. See Swanson, 540 F.3d at 1379 (As properly interpreted a substantial new question of patentability refers to a question which has never been considered by the PTO . . . . (emphasis added)).

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This statutory constraint does not go away when the PTO decides, for its own housekeeping purposes, to merge two separate reexamination proceedings into one. For instance, in this case, Micron did notand could notraise Bennett, JEDEC, or Park as anticipation references in its original reexamination request because those references had already been raised by Samsung and determined to satisfy the SNQ requirement. (See pp. 6-7, supra.) Therefore, Micron based its reexamination request on different art, namely, the iAPX Manual and Gustavson in view of either Bennett or Bowater. (A1619; A1634-42.) Once instituted on those grounds, Microns reexamination was statutorily limited to those grounds plus any other grounds determined by the Director to raise a substantial new question of patentability. 35 U.S.C. 312; Belkin, 696 F.3d at 1383. By the plain reading of the statute, the Director could not have cited Bennett, JEDEC, or Park as satisfying the SNQ requirement in Microns reexamination because those references had already been taken up in Samsungs earlier-requested reexamination. (See pp. 6-7, supra.) Thus, when the PTO sua sponte merged Samsungs and Microns reexamination proceedings together, although it administratively combined all rejections into a single office action (see Micron Br. 25 (citing A10553-54)), this did not have the effect of injecting Samsungs issues into Microns reexamination proceeding because, as a matter of statute, the PTO had no authority to do so.

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Micron is therefore mistaken when it claims that the issues raised by Samsung were included by the examiner in Microns proceeding and vice versa. (Id.) To the contrary, Samsungs issues were included only in the same office action as Microns issues; they did not become part of Microns reexamination. 3. Micron Concedes that Any Final Decision in 35 U.S.C. 315(b) Refers Only to Decisions Within the Requested Reexamination

In holding that Micron had standing to appeal issues originally proposed only by Samsung, the Board referred to 315(b)s provision that [a] third party requester . . . may appeal . . . with respect to any final decision favorable to the patentability of any original or proposed amended or new claim . . . . (A32 (emphasis added).) Rambus has consistently argued that any final decision in this provision means any final decision in the particular reexamination that the third party actually requested, as opposed to unrelated reexaminations that happen to involve the same patent. (Rambus Br. 38-40.) Rambus was compelled to make this argument because Micron had previously asserted precisely the opposite in its response to Rambuss motion to dismiss for lack of standing. (See A2089-91.) Now, however, it appears Micron no longer contends that any final decision in 315(b) means that Requester A can appeal an adverse decision in Requester Bs unrelated reexamination involving the same patent. (Micron Br. 2526.) Given this concession, it appears the parties now agree that 35 U.S.C.

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315(b) only grants a third-party requester the right to appeal adverse decisions in the particular reexamination that it actually requested. In other words, a third-party requester cannot jump into another requesters appeal simply because both reexaminations involve the same patent. 4. The Hypothetical Non-merger Scenario Is Relevant Because It Proves the Board Overstepped Its Statutory Bounds

Micron contends Rambuss hypothetical non-merger scenario is irrelevant [b]ecause a merger did in fact occur. (Micron Br. 26.) This misses the point entirely. As Rambus explained, if Micron would not have had the right to appeal Samsungs issues in the non-merger scenario, it could not have gained that substantive right merely by virtue of the PTOs merger procedure, which is a creature of regulation, not statute. (Rambus Br. 41-44.) Micron does nothing to rebut this fundamental point. Micron first contends that Rambuss hypothetical is based on a flawed premise because, according to Micron (albeit without citation), the examiner could sua sponte add rejections from each proceeding into the other. (Micron Br. 26.) This is incorrect. As explained above, the examiner could only have added rejections into Microns reexamination if those rejections independently satisfied the SNQ requirement for that reexamination. 35 U.S.C. 312; Belkin, 696 F.3d at 1383. An anticipation rejection based on Bennett, JEDEC, or Park would not have

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met that requirement because those issues were no longer new when Micron filed its reexamination request. As a fallback, Micron contends the PTOs merger procedure did not confer substantive appeal rights but, instead, Micron had appeal rights to the Board because the examiner issued a final decision favorable to patentability with respect to the proposed rejection of claims 15 and 16 over Bennett (and other prior art). (Micron Br. 28.) This argument is merely circular. It ignores that Samsung, not Micron, originally proposed those rejections of claims 15 and 16, and therefore only Samsung would have had the right to appeal the examiners decision to withdraw those rejections, but for the Boards flawed jurisdictional ruling. 5. Microns Remaining Arguments Lack Merit

Micron attempts to dismiss Rambuss evidence showing that the Board has issued contradictory rulings regarding appeal rights in merged reexamination proceedings. According to Micron, Rambuss evidence shows only that

a requesters rights are confined by the statute which is consistent with the Boards decision [in this case] finding the statute provided Micron the right to appeal. (Id. at 29.) This is incorrect. In Reexamination No. 95/001,714, the Board merged two inter partes reexaminations and explained the parties respective appeal rights, in part, as follows: [I]n the notice of appeal, . . . the third party requester must identify each rejection that was previously proposed 13

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by that third party requester that the third party requester intends to contest. (A20165 (emphasis in original).) This guidance from the Board is contrary to the Boards ruling in this case that Micron has the right to appeal any decision favorable to patentability that is present in a merged proceeding at the time the RAN is entered irrespective of who initially raised the patentability issue in question. (A20005 (emphases added).) This inconsistent guidance from the Board strongly suggests that the PTO is in need of this Courts guidance on this issue. Micron also contends that the crux of Rambuss argument is that by settling with Samsung, Rambus should get the benefit of an erroneous patentability decision by an examiner . . . . (Micron Br. 31.) This too is incorrect. To begin with, the examiner duly completed the Samsung-requested reexamination after Samsung withdrew and correctly found that claims 15 and 16 were allowable over Bennett, JEDEC, and Park. Moreover, Micron is wrong that the primary purpose of inter partes reexamination is to provide an alternate forum for third parties to fully argue their case. (Id. at 31 n.7) Instead, the cited remarks of Rep. Coble indicate that the statute was intended to reduce expensive patent litigation in U.S. district courts by giving third-party requesters . . . the option of inter partes reexamination proceedings in the PTO. 145 Cong. Rec. E1788, at E1789-90 (emphasis added). Since the long-standing policy of Congress and the judiciary is 14

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to encourage settlement of litigations, see, e.g., 28 U.S.C. 651-658, it would be an odd result to interpret the inter partes reexamination statute in a manner that discourages parties to settle their disputes during reexamination. B. Micron Has Failed to Show by Substantial Evidence that Any Single Embodiment of Bennett Stores a Value that Is Representative of a Programmable Number of Clock Cycles 1. Micron Misstates the Proper Weight to Be Given to the Examiners Factual Findings in an Inter Partes Reexamination

The examiners factual findings form part of the record, and contrary to Microns assertions (Micron Br. 37-38), the Board may not simply disregard them when they prove inconvenient. See Gartside, 203 F.3d at 1312-14 (court must examine the record as a whole, taking into account evidence that both justifies and detracts from the Boards decision (emphases added)). Micron contends, incorrectly, that the Board gives no deference to an examiners factual findings. (Micron Br. 37-38 (citing Ex parte Frye, 94 USPQ2d 1072, 1077 (BPAI 2010), and a PTO blog entry).) To the contrary, [t]he Board reviews facts found by the Examiner to determine whether those facts are supported by a preponderance of the evidence. Ex parte Horito, 2012 WL

4842863, at *2 (BPAI Sept. 27, 2012) (citing In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)). A preponderance-of-the-evidence review is not the same as a de novo review. Thus, Micron is simply wrong that the Board is not required to

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detail the error in the examiners findings. (Micron Br. 38.) Instead, if the Board seeks to overturn specific factual findings of the examiner (as it did here), it must first show that those findings were not supported by a preponderance of the evidence. Horito, 2012 WL 4842863, at *2; see also Caveney, 761 F.2d at 674 ([P]reponderance of the evidence is the standard that must be met by the PTO in making rejections . . . .). 2. Microns Alternative Construction of Representative Is Incorrect

Regarding the proper construction of representative, Micron appears to be of two minds. First, it appears to agree with this Courts holding in Tehrani v. Hamilton Med., Inc., 331 F.3d 1355, 1361 (Fed. Cir. 2003), that, to be representative, a value must be directly related to and stand for, or be a reasonable proxy for, the latter item. Specifically, Micron notes that in another proceeding, the Board expressly held: Bennetts configuration parameter values represent, symbolize, or stand for . . . the delay time . . . since they dictate that time. (Micron Br. 33 n.9.) And Micron contends that the finding that Figure[s] 25a-h of Bennett anticipate claims 15 and 16 under the construction argued for by Rambus should be reviewed for substantial evidence. (Id. at 33 (emphasis

added).) Certainly, Micron would not be advocating that this Court review the Boards decision under an incorrect construction; thus, it can only be assumed that

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Micron agrees with the construction advocated by Rambus, which is consistent with the meaning of representative in Tehrani. At the same time, Micron seeks to hedge its bet by suggesting that representative has a broader-than-normal meaning in the 285 patent.3 Microns only purported evidence of this alleged broader meaning is a single passage at column 11, lines 38-58 of the 285 patent. (See Micron Br. 34.) Nowhere, however, does that passage use representative any differently than its ordinary meaning. Instead, that passage explains an encoding scheme in which four bits (i.e., BlockSize[0:3]) are used to represent various block sizes from 0 to 1024 bytes. (A83[11:38-58].) Each four-bit combination uniquely describes (and

therefore represents) a different block size. Micron contends that only the last three bits are relevant since the first bit indicates an encoding scheme (binary versus power of two) and that representative therefore means something different in the 285 patent than it does in ordinary usage. (Micron Br. 35.) Micron is wrong. Each of the sixteen possible values of BlockSize[0:3] stands for, or represents, a single, specific block size. (See A83[11:38-58].) That the first Micron cites the incorrect claim-construction standard. (Micron Br. 20.) Because the 285 patent expired during reexamination, the PTO was obliged to apply Phillips rather than the broadest reasonable interpretation standard. See Ex parte Tech. Dev. & Licensing, LLC, 2013 WL 3294852, at *2 (PTAB Apr. 19, 2013); MPEP 2258(G) (8th ed. Rev. 9, Oct. 2012); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
3

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of the four bits dictates whether the remaining three should be interpreted as a binary value or a power of two is irrelevant because the overall four-bit value of BlockSize[0:3] represents a specific block size, consistent with the ordinary meaning of representative as explained in Tehrani. In contrast, under Microns skewed construction of representative, even if the wait-line value in a particular bus configuration of Bennett fails to correlate to the actual request-to-data-delivery delay period in 99.99% of all memory transactions on that bus, if it correlates occasionallyi.e., even if purely by happenstance in 0.01% of transactionsthen the representative limitation would be satisfied. This rationale cannot be correct because it would eviscerate the ordinary meaning of representative and render the claimed invention inoperable. The whole purpose of storing a value representative of a number of clock cycles in the 285 patent is to allow a controller to know at the time of the request and with precision when a particular device will respond to a given write request to allow interleaved scheduling. (A85[15:63-16:1].) If the values were only

sometimes predictive of reality (as the Boards rationale would allow), the system would not work properly because the controller would not be able to depend on the correct data consistently being on the bus at the selected time. (See A85[16:1-2].) As a matter of law, a construction which inhibits the operation of the claimed invention should be viewed with extreme skepticism. Talbert Fuel Sys. Patents

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Co. v. Unocal Corp., 275 F.3d 1371, 1376 (Fed. Cir.), vacated and remanded on other grounds, 537 U.S. 802 (2002). Micron also contends (for the first time on appeal) that, [w]hen viewed in light of the specification, it is clear that outputting data exactly when the access time transpires is only a preference and not a requirement. (Micron Br. 14.) Micron cites certain passages in the 285 patent that use preferential language, e.g., a slave should preferably respond to a request in a specified time, sufficient to allow the slave to begin or possibly complete a device-internal phase including any internal actions that must precede the subsequent bus access phase. (Id. at 13-14 (emphasis Microns) (citing A81[8:48-52]).) Reading the entire sentence carefully and in context, including the surrounding statements that the slaves are as simple as possible and never worry about arbitrating for the bus, what is taught is a preference for how a proper delay time for the response is determined, not an option as to whether the delay time is to be conformed to or not. Further, regardless of whether the exact-timing feature was described as only a preferred embodiment in the specification, it is the claimed embodiment. Specifically, claim 13 requires sampling data, in response to the request for a write operation, after a programmable number of clock cycles of the external clock signal transpire. (A90[25:48-50] (emphasis added).) Patentees are certainly entitled to claim their preferred embodiments, and it is the claims that define the

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scope of the invention, not the specification. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Notably, in the proceedings below, neither the Board nor Micron argued that the phrase sampling data . . . after a programmable number of clock cycles in claim 13 allows an indefinite number of clock cycles to transpire beyond the specified number of clock cycles recited in the claim. Indeed, such a

construction would contradict the plain language of the claim and defeat the very purpose of the claimed programmable number of clock cycles, as explained above. (See A85[16:1-2].) 3. The Configurations Shown in Figures 25a and 25b of Bennett Do Not Anticipate Claims 15 and 16

Micronlike the Boardrelies almost exclusively on Figures 25a and 25b of Bennett for its anticipation argument. The reason Micron relies on those

simplified figures is that the other figures of Bennett, such as Figures 35 and 36 (which show actual memory transactions), clearly do not anticipate the asserted claims. Micron incorrectly states that Rambus has argued that the same outcome must occur in every single one of Bennetts 30,000+ configurations in order to show anticipation. (Micron Br. 46.) Rambus has argued no such thing. Instead, it is Rambuss position (and the examiners below) that no embodiment of Bennett, including the bus configurations corresponding to Figures 25a and 25b, discloses a 20

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predetermined value that is representative of the programmable number of clock cycles that will transpire between a write request and data sampling. To begin with, Micron concedes that the wait-line parameter in Bennett can, at most, be configured to include or not an extra clock cycle of delay before the transmission of data. (Id. at 8 (emphasis added); see also A1073-74.) As Rambus has explained, this extra clock cycle does not indicate the actual number of clock cycles that will necessarily transpire between a write request and data sampling because there are other factorsnot accounted for in configuration parameter VI that can affect the data sampling time. For example, in a 32-bit address space with 16 data lines and a dedicated wait-line configuration of 3, the address information consumes two clock cycles (32 bits 16 bits/cycle = 2 cycles), as shown in Bennett Figure 36, so at least two cycles must transpire between a write request and data. But a 16-bit address transmitted across the same bus configuration, including the same wait-line configuration of 3, would require only one clock cycle (16 bits 16 bits/cycle = 1 cycle) between a write request and sampling of data. This address-size variable is completely ignored in the transactions illustrated in Figures 25a and 25b. Indeed, those transactions do not include any address information at all, which renders them both artificial and incapable of anticipating a claim that expressly requires a memory write transaction.

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(See A90[25:45-46] (claim 13 requiring the step of receiving a request for a write operation . . .).) As shown in Figure 34, all large-memory write transactions in Bennett require address information to be transmitted after the Function ID. This can be seen in the exemplary write operation illustrated in Figure 36:

Write Request Address Information

(A1170[Fig. 36 (annotations in red)].) In contrast, the generic transactions shown in Figures 25a and 25bwhich are not memory transactions, let alone write transactions 4do not include any address information at all:

Micron cites a district-court opinion in an attempt to rebut this fact. (Micron Br. 42-43.) Not only is this opinion nonbinding on this Court, it is also irrelevant. The Board found that Figures 25a-h relate to generic slave devices including memory slave devices. (A18 (emphasis added).) In other words, the illustrated transactions in Figures 25a-h are merely genericthey are not specifically memory transactions, let alone write transactions. It is black-letter law that a

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(A1160[Figs. 25a-b].) Thus, because the generic transactions shown in Figures 25a and 25b are not memory write transactions (e.g., because they do include address information), they cannot be used to show anticipation of claims 15 and 16 as a matter of law. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (To anticipate, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim.). Moreover, when the Figure 25a and 25b configurations are modified to include the transmission of address informationas would be required to perform an actual write transactionMicrons hypotheses would no longer be true. For instance, Micron states: Regarding Figure 25b, using configuration 122123XX, the number of clock cycles between receipt of the operation code and transfer of data is one. (Micron Br. 40.) But in a real-world write transaction, this period

generic disclosure does not disclose every included species for purposes of anticipation. ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314, 1323 (Fed. Cir. 2012).

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could actually be one of many different numbers of clock cycles, depending in part on the size of the address. Thus, because the same wait-line configuration can result in different times between request and data, it cannot be said to represent that time period. Tehrani, 331 F.3d at 1361. Microns only response to these points is to return to its flawed construction of representativei.e., where something can be representative, even though it means different things in different circumstances. (Micron Br. 44-45.) As

explained above, that construction is incorrect as a matter of law. Moreover, Microns arguments in this regard actually prove Rambuss point. For instance, Micron argues: Similarly, in Rambuss example for Figure 36 of Bennett, the 3-bit value of 011 for Parameter VI represents 1, 2 or 4 clock cycles depending on the other configuration values. Instead, if the 3-bit value of 001 was used for Parameter VI, that value represents 2, 3, or 5 clock cycles respectively (as this change adds in a one clock cycle delay as discussed previously). Thus, even for Figure 36, Parameter VI is a programmable value stored in a configuration register which is representative of the programmable number of clock cycles. (Id. at 45 (emphasis added).) What Microns argument above proves beyond any doubt is that parameter VI of Bennett is not a stored value that is representative of the claimed programmable number of clock cycles because, as Micron concedes, Bennetts data-arrival time actually depend[s] on other configuration values. 24 (Id.)

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Notably, the Boards decision did not rely on these other configuration values as collectively satisfying the stored value limitation of claims 15 and 16. Nor could it, since claim 15 specifically requires a [singular] value which is representative of the programmable number of clock cycles. (A90[25:57-59] (emphasis added).) The Board relied on parameter VI of Bennett, which Micron now flatly admits is notby itselfrepresentative of a programmable number of clock cycles between a write request and the subsequent sampling of data. 4. The Presence or Absence of One Extra Clock Cycle Does Not Satisfy Claim 15s Requirement of a Value that Is Representative of a Number of Clock Cycles Which Must Transpire Before Sampling

As explained above, Micron does not dispute that the wait-line setting in Bennetts configuration parameter VI can, at most, be configured to include or not an extra clock cycle of delay before the transmission of data. (Micron Br. 8 (emphasis added).) This extra clock cycle occurs only when the wait-line value is set to 1, specifying a multiplexed wait line. For all other values of

configuration parameter VI (i.e., 2, 3, 4, and 5), there will not be any extra clock cycle, because either the wait line(s) are dedicated (configuration settings 3, 4, and 5) or there are no wait lines (configuration setting 2). (A1149[Fig. 3].) Thus, the entire premise of Microns argument is that Bennetts configuration parameter VI, because it has one of five settings that requires the use of a data line for one clock cycle, allegedly stores a value that is representative of the programmable number 25

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of clock cycles which transpire before data sampling. (Micron Br. 7.) This, however, is fundamentally incorrect because the most that can be determined by looking at configuration parameter VI is whether or not wait-line information will be driven by the slave on a data line after the master drives the function. This oneclock-cycle wait information time slot, when configured, necessarily pushes data sampling time back but cannot inform as to the actual data-sampling time in any given memory transaction. Hence, as the examiner correctly found (A1078), the wait-line setting in Bennett is not representative of the number of clock cycles in claims 15 and 16. C. Microns Alternative Ground for Invalidity Based on JEDEC and Park Contradicts This Courts Prior Decisions

Without even addressing the merits of the references, Micron argues that JEDEC and Park render claims 15 and 16 invalid. As an initial matter, because that argument was not part of Microns request for reexamination, Micron does not have standing to raise it. See Section II.A, supra. Moreover, as the examiner and the Board correctly concluded, Rambus is entitled to its priority date, such that JEDEC and Park are not prior art. (A1099; A1101; A44-47.) Micron contends claims 15 and 16 are overbroad because they are not limited to one particular type of bus, a multiplexed bus, even though these claims are directed exclusively to features other than the bus. As the examiner and the Board correctly found, however, the original disclosure of the 898 application 26

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is not limited to a multiplexed bus. (A44-47.) Indeed, this Court has already concluded the same thing, a decision that is stare decisis on this issue. In Rambus Inc. v. Infineon Technologies AG, 318 F.3d 1081, 1091-95 (Fed. Cir. 2003), in the context of claim construction, this Court analyzed whether the disclosure of the 898 application was limited to a multiplexed bus and found that a multiplexing bus is only one of many inventions disclosed in the 898 application, id. at 1095. Micron asserts this Courts analysis of the disclosure was eclipsed by a later hypothetical statement by this Court in Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1352-53 (Fed. Cir. 2011). (Micron Br. 47-48.) But Micron misreads the Hynix decision. In Hynix, this Court held that a jury was reasonable in finding that Rambuss claims do, in fact, meet the written-description requirement without requiring a multiplexed bus. Hynix, 645 F.3d at 1351-53. Thus, the jurys determination and this Courts affirmance of it are themselves compelling evidenceand certainly provide substantial evidence to support the Boards determinationthat the claims meet the written-description requirement and are therefore entitled to their priority date. See Ariad Pharm., Inc. v.

Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (writtendescription requirement is a question of fact reviewed for substantial evidence). Indeed, this Court determined in Hynix, 645 F.3d at 1352-53, that the jurys factfinding overcame any analogy to either ICU Medical or LizardTech, an analogy the

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Board similarly addressed and rejected (A45-47 (citing ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1378 (Fed. Cir. 2009); LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344 (Fed. Cir. 2005))). Thus, each of this Courts statements about the written description of the 898 application supports the examiners and the Boards holding. Contrary to Microns argument (Micron Br. 53-57), the original disclosure describes inventions that do not require a multiplexed bus, including synchronous memory devices, controllers for controlling such devices, and systems that include such devices (A79[3:21-47, 4:34-41]; A80[5:52-57]; A1806-07). The specification goes on to describe numerous object[s] of this invention, only one of which is to a multiplexed bus. (A79[3:21-47] (referring to a relatively narrow bus).) For example, the specification discusses a bus interface for large blocks of data (A79[3:21-25]), or a clocking scheme allowing for high speed clock signals to be sent along the bus with minimal clock skew (A79[3:26-28]), neither of which requires a multiplexed bus. See also Infineon, 318 F.3d at 1095 (noting that a multiplexing bus is only one of many inventions disclosed in the 898 application). The specification refers repeatedly and generically to a bus, without indicating whether the bus is multiplexed or not. (See, e.g., A79[4:37-38] (bus lines are controlled-impedance, double-terminated lines); A80[5:52-57] (a bus

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[is connected] to an independent cache memory).) Although the specification describes a byte-wide, multiplexed data/address/control bus, it is described simply as the preferred bus architecture. (A81[8:17-25].) The specification never limits further bus discussion to this preferred multiplexed architecture. And, as the Board recognized, one of skill in the art would recognize that it is not so limited and that other important touted features in the 898 disclosure, including clocking schemes and writing large blocks of data, could have been practiced on generic buses without multiplexing. (A46; A1806-07[32-36].) The original claims of the 898 application also demonstrate that the inventors were in possession of generic bus claims. The Board correctly

recognized that certain original claims (73 and 91) required only a generic bus, not necessarily a multiplexed bus. (A46.) Claim 73, for example, required only a bus subsystem (A1919-20) and claim 91 required a plurality of external bus lines (A1929), but both were silent as to whether the claimed bus is multiplexed. Micron essentially complains that neither of these claims was directed to the bus itself (Micron Br. 57), but that assertion applies even more strongly to claims 15 and 16 on appeal, since they also do not recite a bus (see A47 (distinguishing ICU Medical because, here, claims 15 and 16 do not require a bus at all)). Micron similarly states that only one prior-art reference (U.S. Patent No. 4,247,817 to Heller) discussed in the specification does not discuss a multiplexed

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bus and asserts that Heller is distinguishable because it is directed to parts of the invention other than the bus. (Micron Br. 59-60.) But claims 15 and 16, like Heller, are also directed to parts of the invention other than the bus. Thus,

Microns alleged distinction actually proves Rambuss point that the invention claimed in claims 15 and 16 are supported by the original specification and do not require a multiplexed bus. (See A46.) In sum, Microns alleged alternative ground for affirmance based on JEDEC and Park fails because Micron has raised an issue not within the scope of its reexamination, and because claims 15 and 16 are entitled to their original April 1990 priority date, predating both references. This Court has twice held a generic bus to be supported by the specification, and the examiners and Boards decisions and the specification itself all support such a holding. III. CONCLUSION For the foregoing reasons and those explained in Rambuss opening brief, this Court should vacate the Boards decision because the Board lacked jurisdiction to hear Microns arguments. Alternatively, the Court should reverse the Boards

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decision finding claims 15 and 16 of the 285 patent invalid and reinstate the examiners finding of no anticipation. 5

Dated: October 15, 2013

Respectfully submitted,

/s/ James R. Barney J. Michael Jakes James R. Barney Molly R. Silfen Aidan C. Skoyles FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 901 New York Avenue, NW Washington, DC 20001 (202) 408-4000 Attorneys for Appellant Rambus Inc.

Reversal is appropriate here because Rambus elected under 37 C.F.R. 41.77(b)(2) (2012) to request rehearing by the Board upon the same record rather than reopen prosecution following the Boards new grounds of rejection. Thus, if the Boards decision is unsupported by substantial evidence in the existing record, the appropriate action is reversal rather than remand.

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CERTIFICATE OF COMPLIANCE I certify that the foregoing REPLY BRIEF FOR RAMBUS INC. contains 6,975 words as measured by the word-processing software used to prepare this brief.

Dated: October 15, 2013

Respectfully submitted,

/s/ James R. Barney J. Michael Jakes James R. Barney Molly R. Silfen Aidan C. Skoyles FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 901 New York Avenue, NW Washington, DC 20001 (202) 408-4000

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CERTIFICATE OF SERVICE I hereby certify that copies of the foregoing REPLY BRIEF FOR RAMBUS INC. were served upon registered counsel by operation of the Courts CM/ECF system on this 15th day of October, 2013. Henry A. Petri, Jr. Novak Druce Connolly Bove + Quigg, LLP 1875 Eye Street, NW, 11th Floor Washington, DC 20001 henry.petri@novakdruce.com

/s/ Kay Wylie