Case: 14-1133

Document: 17

Page: 1

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2014-1133 (Reexamination Nos. 95/001,026 and 95/001,128)

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

IN RE RAMBUS, INC.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.

JOINT MOTION FOR REMAND

Appellant Rambus Inc. ("Rambus") and Appellee, the Director of the United States Patent and Trademark Office ("PTO"), respectfully move to remand this case to the PTO to permit further proceedings before the agency. This is an appeal from a December 10, 2012 Patent Trial and Appeal Board ("Board") decision and an August 19,2013 Board rehearing decision rejecting reexamined claims 30, 38 and 39 of U.S. Patent No. 6,378,020 as obvious over the combination of two prior art references - iAPX and Inagaki.! Subsequent to the Board's decision in this case, this Court vacated the Board's obviousness rejection of claims of a related

! Regarding the obviousness rejection based on iAPX and Inagaki, the Board's decision under review in this appeal (Board Appeal No. 2012-1976) incorporates the Board's decision under review in a related appeal pending before this Court (Appeal No. 2014-1133 (Board Appeal No. 2012-1917)) which also involves an obviousness rejection based on iAPX and Inagaki.

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Rambus patent based on a similar combination ofthe iAPX and Inagaki references, and remanded to the PTO for further proceedings. Rambus Inc. v. Rea, 731 F.3d 1248, 1255-1258 (Fed. Cir. 2013) ("Rambus 2013 decision"). Accordingly, the Director believes it is in the best interest of the parties and this Court to remand the case back to the Board to reconsider the opinion currently on appeal and the pending claims in light of the Rambus 2013 decision. Rambus agrees that a remand is in the best interest of the parties. A remand to permit further proceedings at the PTO at this juncture would prevent the Court, Rambus, and the PTO from needlessly expending additional resources. See, e.g., In re
Gould, 673 F.2d 1385, 1387 (CCPA 1982) (after the Commissioner informed the

Court that the PTO would enter a new rejection of the sole claim on appeal, the Court remanded the case for judicial economy reasons and in order to not delay the ultimate disposition of the case).

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A proposed Order accompanies this motion.

March 28,2014

Respectfully submitted,

lsi Jason E. Stach J. Michael Jakes Jason E. Stach Aidan C. Skoyles Finnegan, Henderson, Farabow, Garret & Dunner, LLP
901 New York Avenue, NW Washington, DC 20001 (202) 408-4000

lsi William La Marca Nathan K. Kelley Solicitor

William La Marca Coke M. Stewart Associate Solicitors Office of the Solicitor - Mail Stop 8 U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, Virginia 22313-1450

Attorneys for Rambus, Inc.

Attorneys for the Director of the United States Patent and Trademark Office

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2014-1133 (Reexamination Nos. 95/001,026 and 95/001,128)

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

IN RE RAMBUS, INC.
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.

ORDER
Upon consideration of the JOINT MOTION FOR REMAND, it is ORDERED that the motion is granted, and it is FURTHER ORDERED that this appeal is REMANDED.

FOR THE COURT Date: _ _ _ _ __ Daniel O'Toole, Clerk United States Court of Appeals For the Federal Circuit cc: Office ofthe Solicitor, USPTO, Mail Stop 8 P.O. Box 1450 Alexandria, VA22313-1450 (571) 272-9035 Jason E. Stach 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 on March 28, 2014, I electronically filed the foregoing JOINT MOTION FOR REMAND using the Court's CMlECF filing system. Counsel for the Appellant was electronically served via e-mail per Fed. R. App. P. 25 and Fed. Cir. R. 25(a) and 25(b).

lsi William La Marca WILLIAM La MARCA Office of the Solicitor - Mail Stop 8 P.O. Box 1450 Alexandria, Virginia 22313 -14 50
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UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

IN RE RAMBUS INC.

2014-1133 (Reexamination Nos. 95/001,026 & 95/001,128) CERTIFICATE OF INTEREST

Pursuant to Federal Circuit Rules 26.1 and 47.4, counsel for Appellant Rambus Inc. certify the following: 1. The full name of every party or amicus represented by us is: Rambus Inc. 2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by us is: Rambus Inc. 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of any party represented by us are: None 4. The names of all law firms and the partners or associates that appeared for the parties now represented by us in the trial court or are expected to appear in this court are: J. Michael Jakes, Kathleen Daley, Naveen Modi, Jason E. Stach, Aidan C. Skoyles,
FINNEGAN, HENDERSON, F ARABOW, GARRETT & DUNNER,

LLP

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Dated: March 28,2014

Respectfully submitted,

lsi Jason E. Stach J. Michael Jakes Jason E. Stach Aidan C. Skoyles Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 NewYorkAve.,NW Washington, DC20001 Telephone: (202) 408-4000
Attorneys for Appellant Rambus Inc.