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PUBLIC VERSION

UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C.

In the Matter of: Investigation No. 337-TA-753 CERTAIN SEMICONDUCTOR CHIPS AND PRODUCTS CONTAINING SAME

COMPLAINANT RAMBUS INC.S RESPONSE TO THE COMMISSIONS NOTICE TO REVIEW IN THE ENTIRETY A FINAL INITIAL DETERMINATION FINDING NO VIOLATION OF SECTION 337

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TABLE OF CONTENTS I. Issue 1: Claim Construction (Dally Patents) ............................................................................ 1 A. B. Issue 1(a): Output Frequency Refers to a Number of Cycles Per Second Where Two Bits of Data Are Transmitted Per Cycle. .................................................. 1 Issue 1(b): If the Commission Does Not Specify a Data Rate Corresponding to the Claimed Output Frequency, Disputes May Remain Between the Parties Regarding the Section 102 and 103 Determinations on Review ....................... 5

II.

Issue 2: Validity........................................................................................................................ 8 A. Issue 2(a) (Barth and Dally patents): There Is No Motivation For the Proposed Combinations for Dally or Barth Patents and Secondary Indicia Demonstrate Non-obviousness ..................................................................................... 8 1. 2. There Is No Motivation for the Dally Obviousness Combinations .................. 8 There Is No Motivation for the Twelve Barth Obviousness Combinations.................................................................................................. 12 a. b. c. The Barth Claims Are Not Predictable Combinations of Known Elements ................................................................................ 12 The ALJs Analysis Is Predicated on Hindsight ................................ 13 The ALJs Obviousness Combinations Are Refuted By the References Themselves ...................................................................... 14 i. Combinations 1-4 Do Not Render the Asserted Barth Claims Obvious ..................................................................... 14 (a) The ALJ Erred in Finding that It Would Have Been Obvious to Combine Synchronous and Asynchronous Memory Systems .............................. 14 The ALJ Erred in Finding that It Would Have Been Obvious to Incorporate Double Data Rate Features into Yano and Dan ............................. 15 The ALJ Erred in Finding it Obvious to Incorporate Precharge, Bank Selection Information, and Sense Operation Features into Dan and Yano .................................................... 16

(b)

(c)

ii.

Combinations 5-6 Do Not Render the Barth Claims Obvious ................................................................................. 17

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iii. 3.

Combinations 7-12 Do Not Render the Barth Claims Obvious ................................................................................. 17

The ALJs Secondary Considerations Analysis Was Legally Flawed ........... 19 a. Secondary Indicia Support the Non-obviousness of the Asserted Dally Claims ....................................................................... 20 i. ii. iii. iv. b. The Dally Inventions Enjoy Substantial Commercial Success .................................................................................. 21 The Dally Inventions Satisfy a Long-Felt Need .................... 24 Actual and Potential Licensing of the Dally Inventions Supports Non-obviousness .................................................... 25 The Dally Inventions Were Praised by Others ...................... 26

Secondary Indicia Support the Non-obviousness of the Asserted Barth Claims ....................................................................... 27

B.

Issue 2(b) (Barth patents): Aspects of Synchronous and Asynchronous Would Not Have Been Combined in October 1995 ................................................... 29 1. 2. 3. Synchronous and Asynchronous Systems Are Fundamentally Different ......................................................................................................... 29 Jacobs Textbook Recognizes the Significant Differences Between Asynchronous and Synchronous Systems ...................................................... 31 The ALJs Conclusion Based on Evidence That Does Not Support Combining Aspects of Asynchronous and Synchronous Systems ................. 32 a. b. c. Jacobs Reliance on the Reexamination Proceedings and on Information Not Presented in this Investigation Was Improper ........ 32 Jacobs Testimony About Whether Yano and Dan Are Synchronous Is Inconsistent With His Textbook ............................... 33 Jacobs Reliance on Irrelevant Barth and Stark Testimony About Unidentified Patent Applications Does Not Support Obviousness ....................................................................................... 34

C. D. III.

Issue 2(c) (Barth patents): The Harriman Patent (RX-4266) Does Not Evidence Publication of the Next Document (RX-4265) ........................................... 36 Issue 2(d) (Barth patents): Respondents Have Not Demonstrated Publication of the Draft SyncLink Specification ........................................................................... 39

Issue 3: Infringement .............................................................................................................. 42 ii

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C. D.

Issue 5(c): The SyncLink Document Is Cumulative of Information Provided to the PTO Even If the PTOs Construction of Signal Is Adopted ......................... 71 Issue 5(d): There is No Inequitable Conduct Relative to Any of the Barth Patents, Including the 405 and 353 Patents .............................................................. 72 1. 2. 3. Respondents Never Argued Invalidity or Materiality of the Draft SyncLink Document Relative to the 405 Patent Claims ............................... 72 The Draft SyncLink Document Is Not Material to the 353 or 405 Patent Claims .................................................................................................. 72 There Was No Intent To Deceive as to Any of the Barth Patents .................. 72

VI.

Issue 6: Domestic Industry ..................................................................................................... 74 A. B. C. D. There Is No Legal Requirement for Expenses to be Allocated on a Patent-byPatent Basis ................................................................................................................. 76 A Patent-by-Patent Allocation Requirement has been Consistently Rejected by the ITC for Portfolio Licensing.............................................................................. 77 Patent-by-Patent Allocation is Impractical and Bad Policy ........................................ 79 Rambus Established a Strong Nexus Between the Asserted Patents and Its Licensing Expenses, and no Further Allocation is Required ...................................... 81

VII.

Issue 7: Patent Exhaustion (Barth Patents) ............................................................................. 82 A. Issue 7(a): The Licensed Samsung Memory Products Do Not Substantially Embody the Asserted Barth Patent Claims. ................................................................ 82 1. 2. Memory Products Do Not Substantially Embody the Asserted Barth Claims ............................................................................................................. 82 The Claim Language, Specification, and Record Evidence Demonstrate that Samsung Memory Does Not Embody the Essential Features of the Asserted Claims ..................................................................... 85 a. The Claim Language Demonstrates that the Asserted Barth Patent Claims Are Directed to Controller Operations, Not Memory .............................................................................................. 85 The Specification Demonstrates that the Asserted Barth Claims Are Directed to Controller Functionality, Not Memory Structure or Operation........................................................................ 86 The Infringement Evidence, Arguments, and Analyses Confirm that the Asserted Barth Claims Are Directed to Controller Functionality, Not Memory Structure or Operation ......... 88 iv

b.

c.

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d.

The Lack of Knowledge of How Memory Operates With Respect to the DQS Signal Demonstrates that the Memory Does Not Embody the Claimed Strobe Signal/Signal .................... 91

B.

Issue 7(b): No Evidence Demonstrates that the Samsung Memory Purchased by was ever Located in the U.S. before Incorporation into Products Overseas, or that took Possession of the Memory in the U.S. ....................... 93

VIII.

Issue 8: Standing (Dally Patents) ........................................................................................... 94 A. B. Issue 8(a): Rambus Is a Bona Fide Purchaser Under 35 U.S.C. 261 ...................... 94 Issue 8(b): UNCs claim of ownership is barred by laches........................................ 97

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TABLE OF AUTHORITIES Page(s) FEDERAL CASES


ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307 (Fed. Cir. 2007) ..................................................................................................... 46 ADT Corp v. Lydall, Inc., 159 F.3d 534 (Fed. Cir. 1998) ....................................................................................................... 74 Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d. 1157 (Fed. Cir. 1993) .................................................................................................... 97 Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir. 2000) ..................................................................................................... 36 Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) ..................................................................................................... 58 Banner v. United States, 238 F.3d 1348 (Fed. Cir. 2001) ..................................................................................................... 52 Certain 3G Wideband Code Division Multiple Access (WCDMA) Handsets and Components Thereof, Inv. No. 337-TA-601, Order No. 20 (June 24, 2008) .................................................................... 78 Certain 3G Wideband Code Division Multiple Access (WCDMA) Handsets and Components Thereof, Inv. No. 337-TA-613, Order No. 42 (March 10, 2009) ................................................................. 78 Certain Dynamic Random Access Memories, Components Thereof and Prods. Containing Same, Inv. No. 337-TA-242, USITC Pub. 2034, Commn Op. at 62 (Nov. 1987) .................................. 81 Certain Male Prophylactic Devices, Inv. No. 337-TA-546, Commn Op. at 39, USITC Pub. 4005 (May 2008) .................................. 77 Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Prods. Containing Same, Inv. No. 337-TA-694, Corrected Public Version of Commn Op. (Aug. 8, 2011) ................ passim Certain Semiconductor Chips with Minimized Package Size, Inv. No. 337-TA-432, Order No. 13 (January 24, 2001) .............................................................. 78 Certain Semiconductor Chips with Minimized Chip Package Size and Prods. Containing the Same, Inv. No. 337-TA-432, Initial Determination on Violation (December 1, 2008) .......................... 78

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Certain Semiconductor Chips with Minimized Chip Package Size and Prods. Containing the Same, Inv. No. 337-TA-432, Order No. 31 (September 16, 2008) ......................................................... 78 Certain Stringed Musical Instruments and Components Thereof, Inv. No. 337-TA-586, USITC Pub. 4120, Commn Op. at 26 (May 16, 2008)............................. 80 Certain Variable Speed Wind Turbines and Components Thereof, Inv. No. 337-TA-376, Commn Op. (Sept. 23, 1996) ................................................................... 77 Comair Rotron, Inc. v. Nippon Densan Corp., 49 F.3d 1535 (Fed. Cir. 1995) ....................................................................................................... 51 Eolas Techs., Inc. v. Adobe Sys., Inc., 810 F. Supp. 2d 795 (E.D. Tex. 2011) ........................................................................................... 44 Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002) ............................................................................................... 45, 46 FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991) ..................................................................................................... 94 Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010) ................................................................................................ 48-49 Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573 (Fed. Cir. 1997) ............................................................................................... 23, 28 Gonzales v. United States, 553 U.S. 242 (2008)....................................................................................................................... 53 Graham v. John Deere Co., 383 U.S. 1 (1966)........................................................................................................................... 12 Heidelberg Harris, Inc. v. Loebach, 145 F.3d 1454 (Fed. Cir. 1998) ..................................................................................................... 96 Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d 964 (E.D. Mich. 2003) ........................................................................................ 41 In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) ..................................................................................................... 41 In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, No. 2011-1399, -1409 (Fed. Cir. Apr. 16, 2012) .................................................... 9, 14, 19, 20, 24 In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) ..................................................................................................... 38

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In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) ..................................................................................................... 13 In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008) ..................................................................................................... 32 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008) ............................................................................................... 10, 11 Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360 (Fed. Cir. 2000) ..................................................................................................... 51 KSR Intl v. Teleflex, 550 U.S. 398 (2007)....................................................................................................................... 12 Kyocera Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 2008) ..................................................................................................... 37 Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353 (Fed. Cir. 2008) ..................................................................................................... 93 Loveladies Harbor, Inc. v. United States, 27 F.3d 1545 (Fed. Cir. 1994) ....................................................................................................... 53 Lucent Tech., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) ..................................................................................................... 49 McCook Metals L.L.C. v. Alcoa Inc., 192 F.R.D. 242 (N.D. Ill. 2000)..................................................................................................... 58 Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354 (Fed. Cir. 2004) ............................................................................................... 26, 28 Micron Tech, Inc., v. Rambus, Inc., 255 F.R.D. 135 (D. Del. 2009) ...................................................................................................... 58 Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343 (Fed. Cir. 2010) ............................................................................................... 10, 11 Preminger v. Secy of Veterans Affairs, 517 F.3d 1299 (Fed. Cir. 2008) ..................................................................................................... 53 Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332 (Fed. Cir. 2005) ....................................................................................................... 9 Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) ....................................................................................................... 38 Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008)............................................................................................................... passim viii

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Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed. Cir. 2009) ............................................................................................... 45, 46 Ricoh, Ltd. v. Quanta Computer Inc., 550 F.3d 1325 (Fed. Cir. 2008) ..................................................................................................... 49 Serdarevic v. Advanced Med. Optics, Inc., 532 F.3d 1352 (Fed. Cir. 2008) ..................................................................................................... 98 Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784 (Fed. Cir. 2010) ................................................................................................. 45, 46 SIRF Tech., Inc. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010) ..................................................................................................... 95 Standefer v. United States, 447 U.S. 10 (1980)......................................................................................................................... 52 Sud-Chemie, Inc. v. Multisorb Techs. Inc., 554 F.3d 1001 (Fed. Cir. 2009) ..................................................................................................... 15 Tellabs Operations, Inc. v. Fujitsu Ltd., 2009 WL 1329153 (N.D. Ill. May 13, 2009) ................................................................................. 44 Texas Instruments, Inc. v. Hyundai Elecs., 49 F. Supp. 2d 893 (E.D. Tex. 1999) ............................................................................................. 80 Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) ................................................................... 62, 72, 73, 74 U.S. Philips Corp. v. ITC, 424 F.3d 1179 (Fed. Cir. 2005) ............................................................................................... 76, 80 Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ..................................................................................................... 13

FEDERAL STATUTES
35 U.S.C. 102 .............................................................................................................................. 39, 40 35 U.S.C. 261 .............................................................................................................................. 94, 95 35 U.S.C. 282 .................................................................................................................................... 32

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TABLE OF ABBREVIATIONS CPB RPB SPB CIB RIB SIB CRB RRB SRB CP RP SP CR RR SR HTr. CXRXSXJXID Commn Op. Complainants Corrected Prehearing Brief Respondents Prehearing Brief Staffs Prehearing Brief Complainants Initial Posthearing Brief Respondents Initial Posthearing Brief Staffs Initial Posthearing Brief Complainants Posthearing Reply Brief Respondents Posthearing Reply Brief Staffs Posthearing Reply Brief Complainants Petition for Review Respondents Petition for Review Staffs Petition for Review Complainantss Response to Petitions for Review Respondents Response to Petitions for Review Staffs Response to Petitions for Review Hearing Transcript Complainant Exhibit Respondent Exhibit Staff Exhibit Joint Exhibit Initial Determination Commission Opinion

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I.

Issue 1: Claim Construction (Dally Patents) A. Issue 1(a): Output Frequency Refers to a Number of Cycles Per Second Where Two Bits of Data Are Transmitted Per Cycle.

Rambus agrees with the Commissions suggestion that output frequency means a number of cycles per second, provided that a cycle is understood to be the window of time in which two signal levels, and thus two bits, are transmitted. This has been Rambuss position throughout this proceeding, although Rambus expressed its construction in terms of an equivalent data rate (i.e., at least 2 Gb/s) as opposed to cycles per second because the number of bits transmitted per cycle impacts the validity analysis. See, e.g., CIB at 181-84 (explaining why output frequency refers to the number of cycles per second and the impact that construction has on the data rate). Accordingly, the explanation in Rambuss previous briefs supports the Commissions proposed construction where two bits are transmitted per cycle. See id.; CRB at 98-101; CPB at 270-72; CP at 26-28. Respondents and the Staff have also equated frequency with a number of cycles per second. See, e.g., RDX-2189 (illustrating a frequency of one Hertz as having one cycle per second and a frequency of three Hertz as having three cycles per second); SIB at 135 (The unit hertz (Hz) refers to cycles-per-second .). But they disagree with Rambus on how many bits are transmitted per cycle. To resolve the dispute, the ALJ, Respondents, Staff, and two of the three Dally experts in this Investigation have therefore expressed their constructions of output frequency in terms of data rate. Supporting Rambuss construction, two basic facts establish that two bits are transmitted per cycle, making an output frequency of at least 1 GHz correspond to at least 2 Gb/s: (1) two signal levels are transmitted per cycle; and (2) each of those two signal levels represents one bit in the context of the Dally claims. As to the first fact, Respondents documents establish that two signal levels are transmitted in a single cycle. For example, when questioning Rambuss expert, Respondents prepared RDX-2189, 1

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illustrating one high signal level and one low signal level in each cycle.

Respondents had Dr. Singer confirm the accuracy of their figure: Q: And in this example hopefully I have illustrated it correctly the frequency is one cycle per second or one hertz. Did I illustrate that right? A: Yes, you did. HTr. 684:9-13. Dr. Singer confirmed that, within a given period of time, one hertz corresponds to one high and one low. HTr. 685:4-5. This is consistent with the Staffs dictionary definition, defining frequency as the rate at which a waveform action repeats, measured in HERTZ. SX-0006 at STAFF0024. Thus, the record demonstrates that two signal levels are transmitted in a single cycle. The second factthat each of the two signal levels represents one bit in the context of the Dally patentsis established by the language of the asserted Dally claims, which recites that only one signal level is used to represent a single bit. For example, asserted claim 24 of the 857 patent recites that each digital value in the digital input signal is represented by one of the signal levels in the output signal. JX-120.0017 (emphasis added). The other asserted claims recite similar features. See 857 patent claim 1 (an output bit signal of the output signal representing a particular bit value has one signal level under certain circumstances and another signal level under other circumstances) (emphasis added); 857 patent claim 35 (each digital value in the digital input signal is represented by one of the signal levels in the output signal) (emphasis added); 857 patent claim 2

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39 (an output bit signal of the output signal representing a particular bit value has one signal level under certain circumstances and another signal level under other circumstances) (emphasis added); 494 patent claim 1 (each bit of the digital input signal being represented by a single output bit signal) (emphasis added); 494 patent claim 25 (same); 494 patent claim 39 (same). Thus, the asserted Dally claims are only directed to signals where each bit is represented by one signal level. In the ID, the ALJ misconstrued the claims, finding that they could cover signals where multiple signal levels are required to represent one bit. See ID at 27. In particular, the ALJ relied on the following image created by the Staff, which illustrates a signal as found in a Manchester- or biphase-encoded signal. ID at 28.

In that example, a value of 1 is represented by two signal levels: a low signal level followed by a high signal level. The digital value is not represented by one signal level, as required by the claims. As discussed above, the asserted Dally claims do not read on signals of this type, so this image does not support the view that 1 GHz corresponds to 1 Gb/s. Indeed, the Dally patents were allowed over references disclosing this type of Manchester-encoded signaling, as acknowledged by Respondents expert. HTr. 1516:20-1518:5 (Respondents expert acknowledging that the Dally patents were

allowed over Shih, CX-10188, which discloses an emphasized Manchester-encoded output signal). Because two signal levels are transmitted per cycle and each of those two signal levels represents one bit in the context of the Dally claims, a signal having an output frequency of at least 1 GHz necessarily has a corresponding data rate of at least 2 Gb/s. CX-9542C.0054-55; HTr. 705:24706:6. The Dally patent specification supports this conclusion. For example, in describing Figures

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2A and 2B, the Dally patents state that the highest frequency of interest for a 4 Gb/s signal is 2 GHz (i.e., half of the data rate). JX-120.0014 at 3:59-63. Further confirming this relationship between output frequency and data rate, in describing another set of figures, the Dally patents state that our operating frequency of 2 GHz correspond[s] to a bit rate of 4 Gb/s. Id. at 4:16-19. Respondents witnesses further confirmed that two bits are transmitted in a single cycle, as required under Rambuss construction. As nVidia senior scientist Dr. John Poulton testified, [t]he maximum frequency in a four gigabit data stream is two gigahertz. JX-99C.0030 at 103:8-10.1 Similarly, nVidia engineer Bill Simms confirmed that two data bits make up a single cycle: A: Megabit is the data sent per second. Megahertz is the cycles per second. Q: Do those happen to be the same in the links you were working on? A: No. Q: And why not? A: It requires two cycles of data or two bits of data to make a full cycle. So the rate is always twice the clock for the links in question. JX-117C.0007 at 14:2-10. Based on these facts, output frequency is correctly construed to mean a number of cycles per second provided that a cycle is understood to be the window of time in which two signal levels, and thus two bits, are transmitted. Using this construction of output frequency, the claimed output frequency of at least 1 GHz corresponds to a data rate of at least 2 Gb/s. All arguments to the contrary conflict with these basic principles and are based on a misreading of the Dally patent specification and claims. See CIB at 181-84; CRB at 98-101; CPB at 270-72; CP at 26-28.

At the hearing, Poulton attempted to distance himself from this testimony, claiming that [i]n most data streams, there are harmonics that might have to be represented. HTr. 1725:8-12. The concept of harmonics, however, relates to the frequency content of a signal, not its output frequency, which the parties agree has a relationship to data rate. See RX-5430C.0011-14 (Hajimiri illustrating harmonics of a signal). Poultons statements regarding harmonics are thus not relevant to this claim construction, which focuses on the data rate corresponding to the output frequency. 4

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B.

Issue 1(b): If the Commission Does Not Specify a Data Rate Corresponding to the Claimed Output Frequency, Disputes May Remain Between the Parties Regarding the Section 102 and 103 Determinations on Review

If output frequency of at least 1 GHz is construed to correspond to a data rate of 2 Gb/s, all of Respondents validity challenges to the output-frequency claims are resolved in Rambuss favor, as Respondents did not preserve any obviousness combinations that achieve that data rate. On the other hand, if the Commission declines to identify a data rate corresponding to the claimed output frequency and does not uphold the validity of the output-frequency claims on other grounds (such as those identified in Rambuss Petition for Review), significant disputes will remain regarding the section 102 and 103 determinations on review. The disputes stem from the fact that the alleged prior art references specify their output rates in terms of data rate as opposed to output frequency. Thus, if the Commission does not specify a data rate corresponding to the claimed output frequency, the parties will be unable to ascertain which references, if any, disclose the claimed output frequency under the Commissions construction. The specific impact of the Commissions output-frequency construction for each reference or combination of references is discussed in turn. Turning first to the SL500 Art, Respondents and the Staff allege that the SL500 Art operated at 1.0625 Gb/s, which is approximately half the rate required by the output-frequency claims as properly construed. Thus, there is no anticipation. See HTr. 1628:9-19, 1629:8-17 (Respondents expert acknowledging that the SL500 Art does not meet the requirements of the claims under Rambuss construction). Respondents, the Staff, and the ALJ also did not identify any obviousness combinations involving the SL500 Art that would achieve the 2 Gb/s data rate required by the claims. See, e.g., RIB at 175 (arguing anticipation only under Respondents construction of output frequency and not arguing obviousness elsewhere); SIB at 190-91; ID at 182-205 (analyzing only anticipation of the output-frequency claims in relation to the SL500 Art). Thus, the Commission can uphold the validity of the output-frequency claims over the SL500 Art on the sole basis that the SL500 Art does not disclose the claimed output frequency (i.e., corresponding to at least 2 Gb/s) and 5

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no party has alleged obviousness, let alone presented clear and convincing evidence of it.2 For the Widmer Article, the ALJ did not identify any reference or combination of references that would have resulted in a data rate of 2 Gb/s on a single output. Instead, based on surrounding claim language, he properly found that the Widmer Articles four separate 500 Mb/s transmitters could not be aggregated to achieve the claimed output frequency. ID at 151-52; see also CIB at 22022 (providing additional reasons why frequencies from separate outputs cannot be added together in the manner Respondents contend). The ALJ also found that the Widmer Article in combination with Ewen would have achieved an output data rate of 1.062 Gb/sabout half the claimed output frequency as properly construed.3 See ID at 153. The ALJ did not adopt Respondents other obviousness arguments regarding the output-frequency claims. See id. at 223-25. Consequently, the analysis in the ID does not support a finding of obviousness. Respondents did not preserve any other combinations that would have resulted in a data rate of at least 2 Gb/s on a single output. Indeed, the only combinations identified as achieving that rate involved Marbot, which discloses a test chip that allegedly transmitted data at 3 Gb/s. Respondents had listed their Marbot combinations in a table in their Prehearing Brief without providing adequate analysis elsewhere to preserve those combinations. See RPB at 292-93. Accordingly, the ALJ found those combinations waived to the extent he had not discussed them elsewhere. ID at 225 (Because Respondents have not provided any explanation on how these combinations render obvious the claimed inventions, Respondents have waived these arguments.). Marbot is not mentioned

anywhere in the ID, so the ALJ apparently found all Marbot combinations waived. Even if Respondents had not waived their Marbot combinations, those combinations would not have resulted in the claimed inventions. In its response to Respondents Petition for Review, In addition to the output-frequency issue, Rambus has provided other reasons why it should not find the asserted Dally claims invalid over the SL500 Art. See CP at 17-26. 3 Rambus disagrees with the ALJs conclusion that the Widmer Article would have been combined with Ewen in the proposed manner. See CP at 14-17. 6
2

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Rambus explained why Marbot does not disclose that signals are actually sent out of the chip at 3 Gb/s because it only states that signals are generated on-chip at that rate. CR at 34-35. Rambus also explained why one of ordinary skill in the art would not have combined Marbot with the Widmer Article, such as the incompatibility of Marbots technology with the Widmer Articles technology and the fact that Marbot discloses a failed technology that one of ordinary skill in the art would not have turned to at the time of the Dally inventions. Id. Empirical evidence also demonstrates that Marbot does not render obvious the asserted claims. For example, despite Marbot allegedly having a publication date of 1993, Widmers team of exceptional skill was only able to achieve an output of 500 Mb/s (or 1/6 of Marbots alleged data rate) several years later in 1996 when the Widmer Article was published. If Marbots technology could have been combined so easily with the Widmer Articles technology, one would have expected the Widmer Articles data rate to be much higher. In reality, the Widmer Articles data rate was only a fraction of Marbots rate, objectively demonstrating that those of exceptional skill could not accomplish the combination that Respondents contend one of ordinary skill could have accomplished.4 CR at 34-35. Rambuss Petition for Review identifies several grounds to confirm the validity of the asserted Dally claims. See CP at 4-26. Construing output frequency as Rambus proposed provides another dispositive ground for confirming the validity of the output-frequency claims, making it a significant issue in the case. If the validity of the output-frequency claims is not upheld on other grounds, declining to identify a corresponding data rate will leave several disputes unresolved

Respondents allege that the Widmer Articles lower data rate was due to design constraints based on the particular application at issue. But the Ewen article, which was also published long after Marbot and was authored by members of the Widmer Articles team, was not subject to those same alleged design constraints. Even without those constraints, Ewen is alleged to disclose an output data rate of only 1.062 Gb/s (or about 1/3 of Marbots alleged rate). Thus, the record reflects multiple instances where a team of exceptional skill was unable to achieve data rates anywhere close to those allegedly disclosed in Marbot despite possessing Marbots teachings for a period of years. 7

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II.

Issue 2: Validity A. Issue 2(a) (Barth and Dally patents): There Is No Motivation For the Proposed Combinations for Dally or Barth Patents and Secondary Indicia Demonstrate Non-obviousness 1. There Is No Motivation for the Dally Obviousness Combinations

The ALJ found that one of ordinary skill in the art would have been motivated to combine the Widmer Article with Ewen, relying on this combination to invalidate a subset of the asserted Dally claims.5 Not only does the ALJ provide almost no justification for this proposed combination, but he also ignores the reasons why one of ordinary skill in the art would not have combined these references. In discussing why the differential signaling feature of Ewen would have been

incorporated into the Widmer Articles transmitter, the ALJ relies on the Widmer Articles citation to Ewen and concludes that it would have been obvious to a person of ordinary skill in the relevant art to implement well known differential signaling techniques such as Ewen with the system of the Widmer Article where increased speed and noise tolerance were bigger concerns than reduced pincount. ID at 148-49.6 For the claims that recite an output frequency of at least 1 GHz, the ALJ took a virtually identical approach. He found that the Widmer Article refers to Ewen and cited increased speed as a reason for the combination: it would have been obvious to modify the system disclosed in the Widmer Article to achieve an output data rate of 1.062 Gbps as disclosed in Ewen, particularly in light of the need for increasingly fast data transmission techniques in certain implementations. ID at 153. This limited discussion does not justify combining the Widmer Article with Ewen for several reasons. The Widmer Article (published in 1996) states that its technology already adopts techniques used in Ewen (published in 1995). RX-4109.0001. As Dr. Singer explained, [t]he authors of the The ALJ found obvious claims 2, 11-13, 31-34, and 49-52 of the 857 patent and claims 3, 25, 26, 30, 39, 40, and 42 of the 494 patent. ID at 138, 147-54. 6 The ALJ also discusses differential signaling generally, but that discussion is not tied to Ewen. See ID at 149-50. Regardless, that discussion also does not support an obviousness finding for the reasons discussed in Rambuss Petition. See CP at 16. 8
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Widmer Article already claim to have incorporated the relevant features of [Ewen] into their design, so one of ordinary skill in the art would not have considered combining other features from that paper. CX-10764C.0034. Those of ordinary skill in the art also would have recognized that the authors of Ewen are all authors of the Widmer Article. Therefore, if there were additional techniques to be imported from Ewen, the Widmer Articles team would have already known about them and incorporated them. Compare the author list at RX-4125.0001 with the author list at RX-4109.0001. Moreover, the Widmer Articles team included members of exceptional skill (HTr. 1500:18-23), so those of ordinary skill would not have expected to improve on their design by incorporating other features from Ewen when Widmers team had already used their higher level of skill to incorporate what they could. The fact that Widmers team, which included all the authors of Ewen, still could not achieve the speeds described in Ewen, compels the conclusion that it would not be obvious to combine the two references to achieve a higher speed. The desire for increased speed also does not justify combining Ewens features with the Widmer Articles. As an initial matter, most industries desire increased speed in one form or another, be it in the form of faster decision making, increased throughput through an assembly line, or an increased data rate from a transmitter. It is difficult to imagine an industry today where increased speed is not a goal. Accordingly, if increased speed alone were sufficient to justify combining features of the prior art, the patents of most industries would be in jeopardy, as virtually all [inventions] are combinations of old elements. Princeton Biochemicals, Inc. v. Beckman

Coulter, Inc., 411 F.3d 1332, 1337 (Fed. Cir. 2005). This result is neither desirable nor supported by the law. As the Federal Circuit recently confirmed, knowledge of the goal does not render its achievement obvious. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, No. 2011-1399, -1409 (Fed. Cir. Apr. 16, 2012) (Cyclobenzaprine), slip. op. at 19 (internal quotations omitted). It was error for the ALJ to rely almost exclusively on the goal of increasing speed without adequately considering why or how the Widmer Article/Ewen combination 9

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would have been made, particularly given the nature of the technology at issue. See, e.g., PowerOne, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010) (rejecting obviousness argument because experts testimony did not provide a plausible rational[e] as to why the prior art references would have worked together to render the claims of the [asserted] patent obvious.); Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) (Nowhere does [defendants expert] state how or why a person ordinarily skilled in the art would have found the claims of the [asserted] patent obvious) (emphasis added). Serial-link technology is highly sensitive, where small design changes can have significant consequences. See CX-10764C.0035, 130. One of ordinary skill in the art would have understood this fact and its corollary that one cannot simply swap technology from one serial link design into another serial link design, as the ALJ contends. Id. This is particularly true when attempting to combine technology from a system without emphasis, like Ewens, into a system attempting to provide a form of emphasis, like the Widmer Articles. Doing so is not a straightforward task, and one of ordinary skill in the art would not have expected the combined system to operate at the highest rates disclosed in either reference, if the system would function at all. Id. Indeed, despite the Widmer Article being published a year after Ewen, the Widmer Articles 500 Mb/s transmitters are capable of less than half the alleged data rate of Ewen. Compare RX-4109.0001 with RX-4125.0001. Thus, the evidence demonstrates that one of ordinary skill in the art could not have improved the Widmer Articles data rate by simply incorporating Ewens features. In addition to failing to account for the sensitive nature of the technology, the ALJ also does not discuss how one of ordinary skill would have made the Widmer Article/Ewen combination or how that combination would have functioned. Instead, he attempts to incorporate the alleged result of Ewens circuit (i.e., an output with a data rate of 1062 Mb/s) without explaining which aspects of Ewens circuitry would have achieved that result in the Widmer Articles system. In effect, the ALJ divorces the result (speed) from the means for providing that result (Ewens circuit). However, it is 10

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well-understood by those of ordinary skill in the art that one cannot simply incorporate the speed of a prior system; one has to incorporate the circuitry that provides the speed. On this critical issue, the ALJ, Respondents, and the Staff provide no explanation. Instead, they rely on conclusory statements that the circuitry could be combined without reconciling the different operating principles of Ewens and the Widmer Articles circuitry (e.g., that the Widmer Article attempts to provide a form of emphasis while Ewen does not, that the Widmer Article is single-ended while Ewen is differential, that the Widmer Articles design was fabricated in 0.5m CMOS while Ewen was fabricated in 0.8m CMOS, etc.). Nowhere do they identify how Ewens circuitry would supplant or augment the Widmer Articles circuitry. An obviousness determination requires more. Power-One, Inc., 599 F.3d at 1352; Innogenetics, N.V., 512 F.3d at 1373. The ALJ also did not give adequate weight to the Widmer Articles teaching away from differential signaling. See ID at 148-50. The Widmer Article teaches away from differential signaling by stressing the need to reduce wire count to avoid wire congestion. RX-4109.0001; CX10764C.0043. Converting to differential signaling would have increased wire congestion, contrary to the Widmer Articles teachings. Id. As the ALJ recognized, [g]enerally, a prior art reference that teaches away from the claimed invention does not create [a] prima facie case of obviousness, ID at 210 (citing cases), so the Widmer Article/Ewen combination was not obvious. The ALJ also incorrectly trivialized the difficulty of converting the Widmer Articles single-ended design to support differential signaling. See ID at 148. As Rambus explained in its Petition, this would not have been a trivial task for one of ordinary skill in the art. CP at 16. In addition to the Widmer Article/Ewen obviousness findings, the ALJ also found that a subset of the asserted Dally claims were obvious in view of the SL500 Art. ID at 182. Rambus challenges those findings on numerous grounds, (see CP at 17-26), but motivation to combine is not the primary focus of those arguments. Accordingly, Rambus does not further address those findings in this section. And if Respondents attempt to resurrect their Widmer Article/Marbot combination, 11

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their attempt should be rejected for the reasons discussed above in Section I.B. 2. There Is No Motivation for the Twelve Barth Obviousness Combinations

In just thirteen pages of the ID, the ALJ found that 12 different prior art combinations render obvious all of the asserted claims of the Barth patents. ID at 210-23. In that short discussion, the ALJ committed fundamental errors of law. For example, the ALJ legally erred by grouping

references without discussing or distinguishing what they disclose. ID at 212-23; Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). As an example, there is virtually no discussion of SCI or Release 4, though the ALJ relies on them in four obviousness combinations. ID at 210-11. This does not comply with the Graham mandate of establishing the scope and content of the prior art. The ALJ also legally erred by not considering the claimed inventions as a whole. KSR Intl v. Teleflex, 550 U.S. 398, 418-19 (2007). Instead, the ALJ grouped claim features (ID at 213 and 220, double data rate; ID at 214 and 220-21, precharge; ID at 214 and 221, multiple memory bank; and ID at 216 and 221 sense amplifier). Isolating those claim features outside of the context of the claims as a whole was error. a. The Barth Claims Are Not Predictable Combinations of Known Elements

The ALJ erred in repeatedly concluding that the prior art combinations yield predictable results. ID at 214, 215, 216, 218, 222, 223. Likewise, in his witness statement, Respondents expert, Dr. Jacob, erred in opining that [s]trobe signals, double data rate, precharge operations, sense operations, and the use of multi-bank memories were all well-known elements of memory design in October 1995 and that the asserted Barth claims use each known element for the exact purpose for which it was designed and in the exact manner it was expected to operate. RX5429C.0203. Jacob is the lead author of a textbook titled Memory Systems: Cache, DRAM, Disk. CX9731. That book refutes the ALJs findings on predictable results and Jacobs witness statement. 12

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In particular, Jacobs textbook notes that DDR SDRAM includes a data strobe signal (DQS), a signal not found in previous generation SDRAM devices, to provide a source-synchronous timing reference signal. CX-9731.0501 (emphasis added). Jacobs textbook further notes that the

synchronous device interface of SDRAM, which was synchronous by including a timing reference, made it a significant departure from earlier asynchronous systems. Id. at 494. The DQS data strobe in DDR SDRAM systems that Jacob characterized as not found in earlier DRAMs, corresponds to the strobe signal/signal of the Barth claims. This has been repeatedly found by the ALJ and Commission, ID at 50-53; 661 ID at 22-26, and was not challenged by Respondents in their petition for review. RP at 23-25. The claimed strobe signal/signal, according to Jacobs textbook, therefore is a signal not found in previous generation SDRAM devices and, among other things, is part of what makes the Barth claims a significant departure from earlier asynchronous systems. This refutes the ALJs conclusion that the prior art combinations yield predictable results. b. The ALJs Analysis Is Predicated on Hindsight

The ALJ also improperly relied on hindsight. Aided by the Barth claims, he pointed to where the alleged prior art supposedly discloses individual claimed features. In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (reversing an obviousness finding based on improper hindsight reasoning.) The ALJ selected isolated features from different pieces of prior art, concluding it would have been obvious to modify other prior art with those features. Even if each claimed feature is disclosed in the prior art, however, a conclusion of obviousness does not follow. Rather, there must be a reason prompting a person having ordinary skill in the pertinent art to combine allegedly known features in the way the claimed invention does. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). The ALJs rationale for the combinations is improved speed and faster data access. ID at 213, 214, 218, 221, 222. That is the same reason the ALJ used to find Dally claims obvious. ID at 153 (fast data transmission techniques). It was the same reason the 13

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ALJ used to find the Ware claims obvious in the 661 Investigation. 661 ID at 85 (addressing increased operating speeds). In the ALJs apparent view, the goal of increased speed would likely make any prior art combination in the electronics field obvious. That cannot be correct. Indeed, the Federal Circuit recently rejected such a goal-oriented approach, re-affirming that knowledge of the goal does not render its achievement obvious. Cyclobenzaprine, slip op. at 19. There, in reversing an obviousness holding, the Federal Circuit stated that the goal of an extended-release formulation did not make achievement of that goal obvious. Id. Likewise, the goal of increased speed in October 1995 does not mean how increased speed could be achieved was obvious. c. The ALJs Obviousness Combinations Are Refuted By the References Themselves i. Combinations 1-4 Do Not Render the Asserted Barth Claims Obvious

The ALJ concluded that asynchronous Yano or Dan combined with Farmwald, SCI, and/or Release 4 renders obvious certain claims of the Barth patents. ID at 210-19. (a) The ALJ Erred in Finding that It Would Have Been Obvious to Combine Synchronous and Asynchronous Memory Systems

As a preliminary matter, Respondents dispute that Yano and Dan are asynchronous. RR at 10, 12. Neither, however, show a clock signal sent to the memory device. RX-4261, Fig. 1; RX4262, Fig. 2. As a result, they disclose asynchronous memory. CX-10765.0028, 0034. As discussed in more detail below in addressing issue 2b of the Commissions Notice, the ALJ erred in concluding that it would have been obvious to take features from asynchronous memory systems (such as Yano and Dan) and put them in synchronous memory systems (such as Farmwald) and vice versa to arrive at the claimed inventions. This distinction, however, highlights a fundamental difference between Yano and Dan and the Barth claims. The Federal Circuit has held that when the prior art and the claimed invention are different in a way that the [asserted] patent treats as important to the invention an obviousness 14

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holding is improper. Sud-Chemie, Inc. v. Multisorb Techs. Inc., 554 F.3d 1001, 1008 (Fed. Cir. 2009). Here, the Barth claims treat as important decoupling the timing between a command and data transfer through use of a strobe signal. The Barth claims issue a write command separately from the strobe signal/signal. See also JX-4 at 10:34-44. The asynchronous interfaces in Yano and Dan do not treat that decoupling as important and in fact do not decouple. Instead, Yano and Dan effect a write operation by holding asynchronous control signals at predetermined levels throughout the duration of the write operation, including the transfer of data to the memory. CX-10765.0027-37. This distinction, by itself, demands a conclusion that Yano and Dan cannot be the basis of an obviousness finding. (b) The ALJ Erred in Finding that It Would Have Been Obvious to Incorporate Double Data Rate Features into Yano and Dan

The ALJ found that although the double data rate, or DDR, elements of the asserted Barth claims may not be disclosed in Yano or Dan, they would have been obvious in view of Farmwald and SCI. ID at 213-14. In finding these individual claim elements obvious, the ALJ asserted that Yano, Dan, Farmwald 037, and SCI each sought to address the well-known need in the industry for faster data access operations, and creating faster data speeds without increasing the number of input/output pins by sampling two pieces of data during a single cycle of a clock or other periodic signal would be a desirable result. Id. at 213. But the memory devices in Yano and Dan are asynchronous and do not receive a clock signal. 10765C.0029, 0034. See RX-4261.0007; RX-4262.0010; CX-

It would not have made sense to incorporate a clock signal, much less

synchronous double data rate clock features from Farmwald or SCI into the memory devices of Yano and Dan. CX-10765C.0109-114 at 108-13. The ALJ did not explain how a clock signal would be used by the memory systems of Yano or Dan, given that those systems already had an established asynchronous method of operation. It would have required a fundamental redesign of memory interfaces and memory devices to make the combination suggested by the ALJ. CX-10765C at 11115

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12. Switching from an asynchronous to a synchronous memory device was no simple matter. It was, as Respondents expert said, a significant departure. CX-9731.0494; HTr. 1133:17-21. The ALJs analysis of SCI also fails because it is not prior art, something the ALJ did not address. ID at 212-19; CX-10765C.0113-14. Regardless, one of ordinary skill would not have combined SCI with Yano or Dan because SCI does not describe sending data to memory devices. It describes sending data to computers and processors. Id. The ALJ did not explain how to modify SCI to be used with a memory device. He did not explain why one would have been motivated to combine a radically different interconnect system of SCI (RX-4278C.0001) with Yano or Dan. In fact, he did not substantively address SCI. ID at 212-27. The ALJ thus erred in concluding that it would have been obvious to incorporate DDR clock features into the asynchronous memory of Yano and Dan, which use no clock. (c) The ALJ Erred in Finding it Obvious to Incorporate Precharge, Bank Selection Information, and Sense Operation Features into Dan and Yano

The ALJ found that the claimed precharge, bank selection information, and sense operation would have been obvious in view of Farmwald 037 and Release 4, stating that it would have been obvious to incorporate those features into asynchronous Yano or Dan to improve efficiency and/or speed and because synchronous systems began overtaking asynchronous systems. ID at 214-17. This reasoning fails because it would not have been obvious to combine aspects of asynchronous and synchronous systems. Moreover, nothing in the record supports that the claimed precharge, bank selection information, and sense operation features would solve problems Yano and Dan were trying to solve or would make them more efficient or faster. Significantly, the asynchronous memory of Yano and Dan have no need for precharge commands because they precharge their internal nodes as soon as the data is safely in the sense amplifiers. CX-10765C.0115. The asynchronous signals of Yano and Dan can only access one memory bank at a time, making the addition of multiple banks 16

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and bank selection information meaningless.7 CX-10765C.0116-17. The ALJ erred in finding that it would have been obvious to incorporate precharge, bank selection, and sense operation features into Yano and Dan. ii. Combinations 5-6 Do Not Render the Barth Claims Obvious

Combinations 5 and 6 use Farmwald as the primary reference, as modified by Yano or Dan. ID at 211. The ALJ found that it would have been obvious to incorporate the strobe signals from asynchronous Yano and Dan into Farmwald to enable faster data access operations and to overcome the inherent skew associated with various clocking schemes. ID at 217-19. But one of ordinary skill would not have incorporated the alleged strobe signals from the slower, asynchronous systems of Yano and Dan into the already faster systems of Farmwald to enable faster data access operations. Farmwald teaches systems that operate at 500 MHz and was already much faster. CX10765C.0119; RX-4269 at 6:15-18. Farmwald also had a mechanism for dealing with skew, and the ALJ does not explain why or how this mechanism would have been replaced by anything in Yano or Dan. CX-10765C.0119. Nowhere do Dan and Yano disclose or suggest using their purported strobes as a solution for increasing speed or dealing with skew. RX-4264.0014; CX-10765C.011819. No reason exists for the ALJs combinations other than impermissible hindsight. iii. Combinations 7-12 Do Not Render the Barth Claims Obvious

The ALJ also concluded that various combinations (numbers 7-12) of NextBus, Harriman, Farmwald 037, and Release 4 render obvious claims of the 405 and 109 patents. ID at 211, 21923. He based these conclusions on the same reasons provided for the combinations including asynchronous Yano and Dan. Id. As discussed above, however, those reasons are unsupported. The ALJ also relies on inherency for the claimed sense operation features. But Yano and Dan do not inherently disclose the claimed codes. RX-4261; RX-4262; CX-10765C.0117. One of ordinary skill would understand these codes to be one or more bits in the context of the Barth patents. Id. The assertion of asynchronous signals, such as the AS signal in Yano, is not one or more bits for the same reasons explained regarding the R/W signal of Yano. CX-10765.0117. 17
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In addition, the ALJ did not address evidence and arguments supporting non-obviousness. CIB at 91-100; CRB at 48-51. For example, the ALJ failed to address why it would have been obvious to implement the alleged DDR features in NextBus or Harriman or even that such a modification was possible. Indeed, the fact that the NextBus and Harriman systems ran at 25 MHz (at most) is strong evidence that they would not have functioned at twice that rate. CX-

10765C.0131. If they could have operated twice as fast, the clock frequency simply would have been 50 MHz instead of 25 MHz. And if confronted with a system that could have operated at 50 MHz, but was limited because it only had a 25 MHz clock, one of ordinary skill would have simply increased the clock frequency to 50 MHz and would not have looked to modify the system to use both edges of the clock signal (add DDR functionality) since there would have been no impediment to increasing the clock frequency. Id. at 123. Further, NextBus and Harriman involved communications over a backplane bus between a CPU and a board, something entirely different from communication with a memory chip as in, for example, Farmwald. Id. at 46-47. The CPU in NextBus and Harriman does not keep track of lowlevel information necessary for issuing a precharge operation, providing bank selection information, or issuing a code specifying a sense operation to a memory device. Id. at 79, 123-26. The claimed precharge operation, bank selection information, and sense operation are instead irrelevant to the backplane bus of NextBus and Harriman. Id. at 124-27. In addition, under the ALJs construction, a memory device in NextBus and Harriman is a board including a memory controller and DRAMs. ID at 109. The only component capable of issuing the codes and bank selection information would have been the on-board memory controller. As such, the issuance of those signals would have occurred entirely within the so-called memory device. CX-10765C.0124-27. Jacob agreed this is non-sensical, testifying that it doesnt make

sense for the structure that is performing the methods described in the claims [to] reside[] within the memory device. HTr. 1099:20-24. 18

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Finally, the ALJs reasons for incorporating the purported strobe signal of NextBus or Harriman into Farmwald are unsupported. He asserted that it would have been obvious to do so because all the references sought to address the well-known need in the industry for faster data access by overcoming the inherent skew associated with various clocking schemes. ID at 222. But the ALJ ignores that Farmwald operates at 500 MHztwenty times faster than NextBus and Harriman. CX-10765C.0130-31; RX-4269 at 4:44-46; RX-4265.0013. He does not explain why one of ordinary skill would have looked to the slow systems of NextBus and Harriman to improve the speed of the much faster of Farmwald systems. CX-10765C.0131. They would not. The ALJ also asserted that combinations with Farmwald would improve the efficiency and speed . . . by indicating to the target memory device that data is on the bus, thereby enabling higherfrequency data access rates. ID at 222. But Farmwald already has a mechanism for determining when data is on its bus, for example, through the use of a delay value stored in an access time register, enabling speeds well beyond NextBus and Harriman. RX-4269.0022 at 6:40-45; CX10765C.0130-31. The ALJ ignored this point. ID at 223. Thus, Farmwald already solved the problem (albeit in a different way) that the ALJ said needed to be solved. No one would look to NextBus or Harriman to solve a problem Farmwald did not have. Simply put, the ALJs reasons for the combinations of the NextBus specification, Harriman, Farmwald and Release 4 are contrary to the evidence and do not make sense. 3. The ALJs Secondary Considerations Analysis Was Legally Flawed

Recently, the Federal Circuit reversed a holding of obviousness based in part on the district courts legally erroneous assessment of secondary indicia of non-obviousness. Cyclobenzaprine, slip op. at 21-31. There, the Federal Circuit held that it was error for the district court to make

obviousness findings before assessing secondary considerations of non-obviousness. Id. In first making an obviousness determination and then considering whether the patentee adequately rebutted a prima facie case of obviousness, the Federal Circuit explained that courts improperly shift the 19

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burden to the patentee, contrary to Supreme Court and Federal Circuit precedent. Id. at 21-27. Such an analysis relegates secondary considerations to secondary status, id. at 27, and fails to guard against hindsight bias, id. at 28. The danger of this type of analysis is that decision-makers unconsciously let knowledge of the invention bias their conclusion concerning whether the invention was obvious in the first instance. Id. at 29. As in Cyclobenzaprine, the ALJ erred by making obviousness determinations before assessing secondary considerations of non-obviousness. As to the asserted Dally claims, the ALJ first made various obviousness determinations. ID at 133-205. Then, the ALJ improperly shifted the burden to Rambus to rebut that obviousness determination, that Rambuss evidence of commercial success cannot overcome the extremely prima facie obviousness case; the evidence of long felt need was insufficient to overcome the strong prima facie case of obviousness; the evidence of licensing was insufficient to overcome the strong prima facie case of obviousness; and the evidence of praise by others was too tenuous to overcome the clear prima facie case of obviousness. ID at 227-231. Likewise, as to the asserted Barth claims, the ALJ first found them obvious, ID at 211-223, and then shifted the burden to Rambus, finding that Rambuss evidence of commercial success, long felt need, failure of others, copying, and praise by others cannot overcome the strong showing of obviousness in this instance. ID at 226. The legal error repeatedly committed by the ALJ led him to fall into the understandable but improper trap of constructing a selective version of facts relating to the objective considerations so as to confirm [his] hunch that the asserted claims were obvious. Cyclobenzaprine, slip op. at 31. The Commission should correct that legal error. Proper consideration of the secondary indicia confirms that the Dally and Barth claims are not obvious. a. Secondary Indicia Support the Non-obviousness of the Asserted Dally Claims

Secondary indicia of non-obviousness, including commercial success, long-felt need, 20

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licensing, and praise by others, support the validity of the asserted Dally claims. This evidence was largely unrebutted. Indeed, in their Prehearing Brief, Respondents devoted only one paragraph to secondary considerations, addressing just one aspect of the evidence. RPB at 298. Thus, the bulk of the evidence discussed below was not challenged by Respondents, and under the ALJs Ground Rule 8(f) and Order No. 51, Respondents have waived any right to challenge it. i. The Dally Inventions Enjoy Substantial Commercial Success

The technology of the asserted Dally claims quickly enjoyed commercial success and adoption in the industry. In an email from 1999, Dr. John Poulton (currently an nVidia senior scientist) noted that EVERYbody is using it! CX-6683C.0004. Poulton confirmed that by 1999 a lot of people had started making use of this idea. JX-99C.0028 at 95:4-8. The success has continued through today, with Poulton confirming that the technology is used all over the place today. Id. at 95:12-13. Poulton also confirmed that the Dally technology is used in conjunction with many standards, including PCI Express, SATA, and a litany of other signaling standards. Id. at 96:2-7. Indeed, the inventive techniques are now used in virtually every personal computer. HTr. 1751:11-1752:1. The widespread incorporation of the claimed technology is due in large part to the enhanced speed it makes possible. CX-10764C.0143. In describing an embodiment of the Dally inventions, Poulton explained that it was built in a technology in which people were lucky to signal at the rate of a few hundred megahertz off chip. This thing was running at four gigabits per second and kind of working. It was a pretty remarkable achievement, actually. JX-99C.0024 at 80:1-5. In his words, [t]he rate at which this thing was running and the features that it incorporated were completely unprecedented. Id. at 79:23-25. Given the unprecedented nature of the speeds it allowed, the claimed technology has been widely commercially successful, including the success it has enjoyed in the Accused Products. 21

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The ALJ incorrectly found this evidence unpersuasive. First, he found that Poultons testimony is not completely objective because he was Dr. Dallys co-worker and helped reduce the invention to practice and so the ALJ finds that it is entitled to less weight. ID at 227. The ALJ failed to recognize, however, that Poultons testimony was given while he was an employee of thenRespondent nVidia and therefore had an interest in diminishing the importance of the Dally inventions to protect his employer. JX-99C.0006 at 9:4-5. That he continued to give accounts of commercial success and praised the inventions under those circumstances justifies giving his testimony more weight than usual, not less. Next, the ALJ found that Poultons statements are vague and cannot demonstrate the necessary nexus to establish that these particular claims are non-obvious. ID at 227. To the contrary, Poulton confirmed that his testimony was specifically directed to the Dally inventions, thus establishing a strong nexus. For example, when Poulton discussed transmitter equalization, he stated that he was referring to transmitter equalization as as practiced or as described in our original paper and then the Dally patent. CX-099C.0028 at 95:19-22. While Poulton directly linked his testimony to the Dally patents, he also linked it to our original paper, which was a reference to the 1996 Hot Interconnects paper that lists Poulton as a coauthor with Dally. See, e.g., CX-099C.0036 at 128:21-129:18. This paper is indisputably related to the Dally patents, as it was submitted as part of the provisional patent application to which all of the Dally patents claim priority. CX-9704.0005-14. Further, Respondents have acknowledged that this paper is related to the claimed invention (RPB at 293) and was submitted by Dally to the PTO as evidence of conception of the Dally inventions to swear behind a document during prosecution (RPB at 180). Consequently, Poultons testimony was tied in multiple ways to the asserted Dally patents, both by discussing the patents directly and by discussing them indirectly through the 1996 Hot Interconnects paper. Poultons testimony lacked a nexus to the Dally inventions is unsupportable. The ALJ also dismissed Poultons 1999 e-mail about the invention where he exclaims that 22 The ALJs finding that

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EVERYbody is using it! ID at 227 (discussing CX-6683C.0004). The ALJ stated that Poulton admitted that he had not read the patent at the time he wrote the email . . ., and he scaled back his statements at the hearing. Id. (citations omitted). At the time of the e-mail, however, Poulton was intimately familiar with the content of the 1996 Hot Interconnects paper (a paper listing him as a coauthor), and that paper undisputedly discloses the technology claimed in the Dally patents. Given the relationship between the Hot Interconnects paper and the Dally patents, it is immaterial that Poulton had not read the Dally patents when he wrote the e-mail. His comments were about the very technology that was described and claimed in the Dally patents. CX-099C.0028 at 95:19-22. The ALJ was also incorrect that Poulton scaled back his testimony in any meaningful way at the hearing. Instead, in the testimony cited by the ALJ, Poulton testified that he was not aware of many companies using a particular design that used the transition filter with a clock multiplexing scheme. HTr. 1773:21-1774:1. This testimony only relates to a particular embodiment disclosed in the Dally patents, not to the invention generally. And, as the ALJ correctly found, the asserted Dally claims are not limited to that particular embodiment. See ID at 34-43 (finding that the terms transmitter and transmitter circuit are not limited to the specific embodiment advocated by Respondents). Accordingly, Poultons trial testimony about a particular embodiment of the invention does not detract from his earlier statement about the widespread adoption of the invention. The ALJ also did not mention (and, therefore, presumably gave no weight to) the commercial success of the Accused Products, which the ALJ found to infringe the asserted Dally claims. The Federal Circuit has repeatedly held that sales of an infringing product support non-obviousness. See, e.g., Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579 (Fed. Cir. 1997) (reversing a finding of obviousness based in part on the commercial success of the infringing products). Given the significant sales volumes of the Accused Products in the United States, the ALJ was incorrect in not finding these sales to support the commercial success of the claimed inventions.

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ii.

The Dally Inventions Satisfy a Long-Felt Need

There was also a long-felt need for the technology of the asserted Dally claims. Although the on-chip speeds of digital systems had been steadily increasing, the signaling speed between chips was limited at the time of the Dally inventions. CX-10764C.0145; JX-120.0013 at 1:25- 39. Thus, many companies devoted considerable resources to improving off-chip signaling speeds. CX-

10764C.0145-46. It was Dally, however, who figured out a way to solve this signaling problem in a way that could be implemented on a chip. As Poulton explained, Dallys notion that a fairly simple mechanism built into the CMOS chip could overcome a really horrible problem with signaling, a really fundamental problem . . . was clearly a good thing to do. JX-99C.0023 at 75:1-12; see also HTr. 1719:18-1720:9. Further evidencing the long-felt need for the Dally inventions, Widmers team of exceptional skill designed systems had previously failed to achieve the claimed output frequency of at least 1 GHz, as explained above in Section I.B. This evidence strongly demonstrates nonobviousness. As the Federal Circuit recently explained: Evidence that others tried but failed to develop a claimed invention may carry significant weight in an obviousness inquiry. While absolute certainty is not necessary to establish a reasonable expectation of success, there can be little better evidence negating an expectation of success than actual reports of failure. . . . This is particularly true when the evidence indicates that others found development of the claimed invention difficult and failed to achieve any success. . . . In such circumstances, evidence of failed attempts by others could be determinative on the issue of obviousness. Cyclobenzaprine, slip op. at 33. The ALJ dismissed this evidence of long-felt need, focusing on citations to the Dally patents themselves as being unreliable evidence of this need. ID at 228. This evidence, however, was corroborated by Poultons testimony about the fundamental, longstanding nature of the problem and how the Dally inventions solved it. JX-99C.0023 at 75:1-12; see also HTr. 1719:18-1720:9. It was also corroborated by Dr. Singers testimony, which not only cited the Dally patents, but also confirmed the accuracy of those statements based on his expertise and experience in the field. CX24

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10764C.0145. Thus, Rambus established a long-felt need for the Dally inventions. The ALJs justifications for disregarding the evidence on this issue are not supportable. iii. Actual and Potential Licensing of the Dally Inventions Supports Non-obviousness

Despite their own efforts, many companies expressed an interest in licensing the Dally inventions. See, e.g., CX-6680C.0001 (showing AT&Ts interest in licensing technology Even former Respondent nVidia expressed an interest in

implementing the Dally inventions).

licensing or purchasing rights to the Dally patents, only to find out that Rambus already had the rights. CX-7099C.0002 (Based on what Bill [Dally] has briefly told me, NVIDIA might have some interest in this patent, either to license or purchase.). While Respondents implied that this e-mail exchange did not pertain to the asserted Dally patents (RPB at 298), nVidias interrogatory responses confirmed that it was. In particular, in response to an interrogatory seeking the dates when nVidia was made aware of the asserted Dally patents, nVidia cited this licensing e-mail exchange as providing responsive information. CX-7341C.0078-79. At the hearing, nVidias expert agreed. HTr. 1529:18-1530:6. nVidias interest in licensing the Dally inventions, expressed only months before this Investigation began, supports the non-obviousness of the Dally inventions. In addition to the interest shown by nVidia and AT&T, other parties have actually licensed the Dally patents. These patents are part of Rambuss SerDes license portfolio, and Rambus has entered at least one patent license agreement and six technology license agreements that include the Dally Patents, as explained in Rambuss domestic-industry briefing. See, e.g., CIB at 285-88. These licenses and attempts to license demonstrate that others have acquiesced to the validity of the claimed inventions and have chosen to adopt them rather than seek alternatives, objectively demonstrating the non-obviousness of the technology. The ALJ gave little weight to this evidence, contending that there are a number of Dally patents and the nexus between these licenses and the particular claims at issue here is not particularly 25

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strong. ID at 229. The ALJ is incorrect, as Rambus established that there was a strong nexus in several ways. This included providing claim charts mapping claims of the asserted Dally patents to the licensed technology (CX-9548C.0004-50), providing testimony about those charts from a Rambus employee familiar with the licensed technology (id.), providing expert testimony confirming the accuracy of the charts (CX-9542C.00506-07), and having one of Respondents experts confirm that some of the technologies in those licenses practice the Dally patents (HTr. 1826:7-15). This evidence shows a strong nexus between the licensed technology and the claimed inventions. The ALJ also diminished the importance of this evidence because the Rambus portfolio licenses may be motivated by factors other than the validity of the Dally patents, such as avoiding litigation. ID at 229. Licenses are covenants not to sue, so by their very nature they exist to avoid litigation. Nonetheless, the Federal Circuit recognizes licenses as supporting the non-obviousness of licensed inventions. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1368 (Fed. Cir. 2004) (licensing to eight companies supported non-obviousness). Thus, the ALJ erred by failing to give appropriate weight to this evidence. Finally, the ALJ stated that without additional evidence regarding nVidias interest in the Dally patents, the ALJ is reluctant to draw extensive conclusions from a single email. ID at 229. The ALJ overlooks that the evidence of licensing includes not only nVidias interest, but also interest from AT&T and the actual licensing of the invention reflected in at least one patent license agreement and six technology license agreements. CIB at 285-88. This significant evidence of licensing should be given substantial weight. iv. The Dally Inventions Were Praised by Others

Members of the industry have praised the Dally technology. For example, Poulton recalled that, after presenting a paper disclosing the Dally technology at the Hot Interconnects conference in 1996, people were pretty interested in this and [t]hey thought this was maybe a game changer, as, in fact, it turned out to be. JX-99C.0023 at 74:8-11. Indeed, several members of the industry, 26

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including LSI Logic, Hewlett Packard, AT&T, and Toshiba, expressed interest in the Dally technology following the presentation and publication of the Hot Interconnects paper. JX-122.0097. Poulton testified that the paper was certainly one of the more heavily discussed papers and that arguably this paper and this work actually was the foundation of an industry. JX-99C.0023 at 74:14-25. He further noted that it was quite clear that it was the way forward for chip-to-chip signaling, or was one aspect of the way forward. Id. at 74:19-22. The 1996 Hot Interconnects paper was also the subject of a write-up in the trade publication EE Times and was selected for publication in IEEE Micro as one of the best papers from the [Hot Interconnects] symposium. CX-6681C.0001; see also CX-6305C.0038. Poulton testified that

IEEE Micro realized that it was kind of a breakthrough, and they were really interested in having more information about it. JX-99C.0024 at 80:5-8. The substantial praise the Dally inventions received when they were published further supports that the Dally inventions are not obvious. The ALJ found this evidence unpersuasive, contending that much of it was self-serving because it was documented by Dally himself in the 1990s. The bulk of that evidence, however, was corroborated by Poulton through his testimony praising the invention himself and explaining the praise of others for the invention. The ALJs dismissal of Poultons testimony is not warranted. At the time of his testimony, Poulton was an employee of Respondent nVidia and therefore had no incentive to heap praise on the Dally inventions. But he did so anyway, undermining the ALJs finding that his testimony was self-serving. b. Secondary Indicia Support the Non-obviousness of the Asserted Barth Claims

As with the asserted Dally claims, the ALJ also failed to properly consider the evidence of secondary considerations as to the asserted Barth claims. ID at 226-27. That evidence was

substantively unrebutted by Respondents. See RIB at 96 (contending secondary considerations should be disregarded but not addressing the substance of any of them). And it led the Staff to 27

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conclude in the 661 Investigation that the evidence adduced at trial shows that secondary considerations of non-obviousness, including at least commercial success and praise by others, further demonstrates that the asserted 353 patent claims are not obvious. 661 SIB 31; CIB at 10102; RIB at 51. Instead, without specifically addressing the evidence, the ALJ dismissed it as merely the testimony of Dr. Przybylski, and referenced issues with his credibility. Id. It is untrue that the evidence of secondary considerations was just Przybylskis testimony because specific examples were provided (see, e.g., CX-10765C at 132-33) in addition to the infringement findings in the 661 Investigation. In particular, the ALJ did not address the commercial success of the inventions demonstrated by the findings of infringement in this Investigation and the 661 Investigation, which was based in significant part on Przybylskis credited testimony. ID at 47-67 (extensively citing Przybylskis testimony), 226-27; 661 ID at 20-31. Those infringement findings demonstrate that the entire industry adopted Rambuss technology when it developed controllers for DDR memory, which for the first time issued a strobe signal to initiate sampling. The Federal Circuit has held that sales of an infringing product support non-obviousness. See, e.g., Gambro Lundia AB, 110 F.3d at 1579 (reversing a finding of obviousness based in part on the commercial success of the infringing products). Given the significant sales volumes of the Accused Products in the United States, the ALJ incorrectly dismissed that evidence. In addition, Rambuss licensing activities support the non-obviousness of the Barth claims. CX-10765.0134. These patents are part of Rambuss Concurrent license portfolio, and Rambus has entered into at least technology license agreements and at least patent license

agreements that include the Barth patents. CIB at 281-82. These licenses and attempts to license demonstrate that others have acquiesced to the validity of the claimed inventions and have chosen to adopt them rather than seek alternatives, objectively demonstrating the non-obviousness of the Barth technology. The Federal Circuit recognizes licenses as supporting non-obviousness. Metabolite 28

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Labs., 370 F.3d at 1368. That evidence should have been considered here. B. Issue 2(b) (Barth patents): Aspects of Synchronous and Asynchronous Would Not Have Been Combined in October 1995

The Commission requests briefing on synchronous versus asynchronous prior art and the motivation to apply the teachings of asynchronous art to synchronous systems. Commn Notice at 3, issue 2b. As it pertains to this Investigation, the question is whether in October 1995, when the initial Barth application was filed, it would have been obvious to mingle aspects of controlling asynchronous memory (such as an asynchronous DRAM), which does not receive a clock signal, with aspects of controlling synchronous memory, which does receive a clock signal, and vice versa. Obviousness combinations 1-4 propose modifying asynchronous systems (Yano or Dan) with aspects of synchronous systems (Farmwald, SCI, or Release 4), while obviousness combinations 5-6 propose modifying a synchronous system (Farmwald) with aspects of asynchronous systems (Yano or Dan). ID at 210-11. In the context of the specific prior art identified by Respondents, and more generally in the context of the knowledge of one skilled in the art in October 1995, the answer is no. One of ordinary skill would not have combined aspects of these fundamentally different types of systems. 1. Synchronous and Asynchronous Systems Are Fundamentally Different

A goal of synchronous memory systems was to increase speed and bandwidth. The ability to sample data with precision - at known points in time and without significant timing variations helped achieve that goal. The Jacob textbook recognizes that the primary difference between [synchronous] DRAMs and earlier asynchronous DRAMs is the presence in the system of a clock signal against which all actions (command and data transmission) are timed. CX-9731.0362. In a synchronous DRAM, the Jacob textbook explains, by associating all data and control transfer with a clock signal, the timing of events is made more predictable. Id. at 0356. In asynchronous memory signals can arrive at the DRAMs pins at any time. Id. Asynchronous systems thus do not have predictability or timing precision because they do not receive a clock signal and are instead 29

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controlled using signals that are asserted for a window of time over which actions may occur. See CX-10765.0111. In addition to making the timing of events more predictable, the Jacob textbook recognizes that the clock signal allowed synchronous DRAM to scale to much higher switching speeds more easily than the earlier asynchronous DRAM interfaces. CX-9731.0357-58. Thus, synchronous systems achieved higher data rates and timing uncertainties were reduced. Id. at 0362. The approach of asynchronous systems is therefore incompatible with a synchronous system that demands timing precision an asynchronous system cannot provide. The Barth system, including its use of a strobe signal to initiate sampling of data, achieved multiple objectives. Because it is a synchronous system, the clock signal synchronizes the flow of information. JX-4 at 2:24-28. And the Barth strobe signal was unique in that it decoupled the timing of data transfer control information (e.g., a write command) from the timing of the data sampled into memory. JX-4 at 3:21-23, 8:55-67, and 10:34-38. Thus, in addition to achieving the benefits of a synchronous system, it improved on what was known by its addition of a strobe signal from the controller indicating to the memory device (e.g., a DRAM) the specific point in time when sampling would take place. Respondents expert Jacob recognized the significance of the addition of a strobe signal that provided a separate timing reference. The Jacob textbook discusses DDR SDRAMs adoption of the data strobe signal (DQS). CX-9731.0501. This is the signal the ALJ and Commission have found performs the functionality of Barths claimed strobe signal/signal. ID at 50-53; 661 ID at 22-26. Jacob explains that in a system that issues a data strobe signal DQS, the DRAM samples the incoming data (the data being written to the memory) with respect to the DQS signal. CX-

9731.0362. This strobe signal, indicating the timing of write data delivery from the memory controller to the DRAM device, is recognized in the Jacob textbook as a signal not found in previous-generation SDRAM devices. CX-9731.0501. As a result, not only are asynchronous and synchronous systems fundamentally different, the Barth system for the first time implemented a data 30

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strobe signal in a synchronous system to sample write data. 2. Jacobs Textbook Recognizes the Significant Differences Between Asynchronous and Synchronous Systems

For purposes of this litigation, Jacob characterized the differences between asynchronous and synchronous systems as a red herring. RX-5429C.0032 and 0191. Outside of this litigation, however, he recognized those differences as significant. The Jacob textbook explains that

synchronous DRAM (SDRAM) contained many new features that separated it distinctly from DRAM devices that preceded it. CX-9731.0494. In this manner, the SDRAM device represented a break between what Jacob characterizes as Modern-Commodity DRAM devices (which began with synchronous DRAM) and Historical-Commodity DRAM devices. Id. Thus, SDRAM

devices represented a significant departure from the DRAM devices that preceded it. Id. The Jacob textbook identifies the first of the significant ways that synchronous DRAM differed from previous generation devices as: the SDRAM device has a synchronous device interface. Id. Rambuss expert, Przybylski, also recognized this distinction in his textbook. The Przybylski textbook notes the limitations of the generic DRAM interface, and states that the synchronous interface, identified as a new temporal interface, adds a high speed clock to 1) synchronize the flow of addresses, data, and control on and off the DRAM and 2) facilitate pipelining of operations. RX-4022.0224 and 226. Far from being a red herring, Jacobs textbook, as well as Przybylskis textbook, confirm the significant differences between asynchronous and synchronous systems. These differences confirm that, as a general proposition, aspects of asynchronous systems cannot be combined with aspects synchronous systems. CX-9731.0494; see also HTr. 1133:17-21. Despite his witness statement characterizing the differences between asynchronous and synchronous systems as a red herring, Jacobs trial testimony corresponded to his textbook. Jacob agreed at trial that it was an important distinction that synchronous memory devices are driven directly by a system clock whereas asynchronous memory devices are not; agreed that in the 31

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timeframe of the Barth patents, it would have been simpler to develop asynchronous memory devices rather than synchronous ones; and agreed that asynchronous systems were cheaper and had better performance at the time. HTr. 1129:12-24, 1131:2-1133:6. This refutes the ALJs conclusion that it would have been obvious to combine aspects of asynchronous and synchronous art. 3. The ALJs Conclusion Based on Evidence That Does Not Support Combining Aspects of Asynchronous and Synchronous Systems

Relying only on portions of Jacobs witness statement, the ALJ stated that the evidence shows that it would indeed have been obvious to combine aspects of asynchronous and synchronous art so as to achieve the inventions claimed in the Barth I patents. ID at 212 (citing RX-5429C at Q/A 105, 129, and 492-496). Jacobs witness statement and the materials Jacob relied on, however, do not support a conclusion that combines aspects of asynchronous and synchronous systems would have been obvious. a. Jacobs Reliance on the Reexamination Proceedings and on Information Not Presented in this Investigation Was Improper

The ALJ relied on Q/As 105 and 129 from Jacobs witness statement, which discussed the PTO Board decision in the reexamination of the 405 patent (RX-5357). Reliance on that

reexamination proceeding was improper given the different claim construction standards applied by the PTO and the Commission and the fact that the Commission must apply the statutorily-mandated presumption of validity, while the PTO does not. In re Swanson, 540 F.3d 1368, 1377-78 (Fed. Cir. 2008); 35 U.S.C. 282. At trial, the ALJ recognized that relying on the reexamination proceedings was improper, noting that the PTO has different standards and do[es] not follow the presumption of validity. HTr. 2712:18-22. As a result, the ALJ stated that, I am not going to follow what the Board does, I am not going to cite what the Board does. HTr. 2713:7-10. Nonetheless, in relying on the Jacob witness statement and in other places, he repeatedly (and improperly) did. See ID at 94, 108, 109, 118, 120, 212. The Commission should not compound that error in considering

Respondents asserted obviousness combinations. 32

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In addition, Jacobs witness statement in Q/A 105 refers to an obviousness rejection in the reexamination based on a prior art combination not asserted in this Investigation, presumably because Respondents do not agree with it. RX-5429.0028. In the context of that unasserted

combination, Jacob quoted a snippet from the reexamination decision stating that Rambus in the 405 reexamination did not rebut testimony describing how asynchronous functions were being combined routinely with, and integrated into, synchronous DRAM systems by skilled artisans. RX-

5429C.0028. The ALJ refuted that statement, noting that Rambus rebutted it in this Investigation. ID at 212 (citing testimony disagreeing with the Boards decision as to whether it would be obvious to combine aspects of asynchronous and synchronous art). Moreover, the reexamination testimony Jacob referenced was from an individual who did not participate in this Investigation, presumably based on a decision made by Respondents. Jacobs conclusion, therefore, that the distinction between asynchronous and synchronous is nothing more than a red herring, is refuted by, among other things, his textbook, and is based on reexamination proceedings that should not be considered and arguments and testimony not presented in this Investigation. b. Jacobs Testimony About Whether Yano and Dan Are Synchronous Is Inconsistent With His Textbook

The ALJ also cited Jacobs witness statement in Q/As 492-494. ID at 212. There, Jacob addresses whether Yano and Dan are asynchronous. RX-5429C.0187-89.8 Jacob points to clock signal (A) of Yano Figure 2, which is identified a system clock. Id. at 0188. Yano Figure 1 (not discussed by Jacob) shows that the signals from the controller to the memory device do not include a clock signal. RX-4261, Fig. 1. This indicates that Yanos memory is asynchronous. CX-

10765.0028. As to Dan, Jacob notes only that its title references synchronous random access memory. RX-5429C.0189. Figure 2 of Dan, however, shows the signals input to the memory. They do not include a clock signal, indicating that Dan, like Yano, discloses asynchronous memory. Respondents abandoned their position with respect to Seki so although it is addressed in the portion of Jacobs witness statement cited by the ALJ, it is not addressed here. ID at 90, n.11. 33
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RX-4262 at Fig. 2; CX-10765.0034. Contrary to Jacobs position in his witness statement, the fact that Yano and Dan have system clocks does not make their memory or its control synchronous. Jacobs textbook recognizes that a system can have a system clock that does not drive the memory, as in Yano and Dan. In that case the DRAMs are called asynchronous DRAMs while in a system in which the clock drives the DRAMs directly, the DRAMs are called synchronous DRAMs. CX9731.0352 (emphasis included). Because Yano and Dan control asynchronous memory, the question of whether aspects of asynchronous and synchronous control can be swapped is essential, not a red herring. c. Jacobs Reliance on Irrelevant Barth and Stark Testimony About Unidentified Patent Applications Does Not Support Obviousness

The ALJ also cited Jacobs witness statement at Q/As 495-96, ID at 212. There, Jacob references deposition testimony from Barth patent inventors Barth and Stark about other unidentified patent applications that Rambus may have been preparing in 1995 and 1996. What Rambus may have been inventing in different patent applications, however, does not support a conclusion that one of ordinary skill in October 1995 would combine features of asynchronous and synchronous systems. Nor does the actual testimony. In particular, Jacob relies on testimony from Barth about his belief that an unidentified patent application filed by Rambus included the concept of having an EDO-like timing interface combined with a synchronous timing face [sic]. RX-5429C.0191. The testimony was given in reference to the following snippet in a Rambus document from January 1996:

If that snippet and Barths testimony suggest anything, the unidentified Rambus patent application related to a system with two separate interfaces, one asynchronous (the EDO-like timing interface) and one synchronous (the synchronous timing face [sic]), supporting a conclusion that aspects of asynchronous and synchronous systems were not being combined in a single interface 34

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(otherwise there would not have been two interfaces), and refuting a conclusion that it would have been obvious to combine asynchronous and synchronous features in a single interface. Jacob also relies on deposition testimony of inventor Stark referencing an e-mail that mentions Asynchronous request, synchronous data.9 The e-mail addresses an unidentified patent application Rambus may have been preparing in August 1995, described in total as follows:

Based on this snippet, Stark recalled sixteen years later an idea for a system that could use an asynchronous request and a synchronous access switch. RX-5429C.0190. This, however, does not mean that the idea was for a system with a single interface combining aspects of asynchronous and synchronous systems. Instead, it could have been for a system like the one Barth testified about, suggesting the separation of asynchronous and synchronous operations, not their combination. Without further information it is simply impossible to know the details of the idea Stark was remembering. This inchoate recollection about a patent application Rambus may have been

preparing does not support the notion that it was obvious in October 1995 to combine aspects of synchronous and asynchronous systems. Jacob also references the JEDEC DDR SDRAM specification as supporting the obviousness of combining aspects of synchronous and asynchronous systems. RX-5429C.0190. The JEDEC DDR specification, however, was not published until 1999 and thus cannot support the obviousness of the Barth inventions in 1995. See RX-2109; CX-9543.0010. Moreover, as Przybylski testified, it took JEDEC a very long time of these smart, experienced people considering lots of different options to come to an understanding of what exactly the first synchronous DRAM should look like, what Jacob referenced a June 17, 2001 deposition and RX-3353C. RX-5429C.0190. That deposition date is incorrect (the deposition was in 2011) as is the reference to RX-3353C, which does not contain the text Jacob highlighted. The reference should be to RX-2490C. 35
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features to throw out, what features to put in, It was far from a trivial problem. CX-10765.0113. At the time, no one considered aspects of asynchronous and synchronous systems swappable. Any other conclusion is based on a hindsight reconstruction of events that disregards the fundamental differences between such systems. C. Issue 2(c) (Barth patents): The Harriman Patent (RX-4266) Does Not Evidence Publication of the Next Document (RX-4265)

Nothing in the Harriman patent (RX-4266) supports publication of the Next document (RX4265). The only reference to any Next document in Harriman is the following: In the preferred embodiment of the present invention, bus 209 is a bus known as the NextBus and is described in NextBus Specification, published by NeXT Computer, Inc., Redwood City, Calif. Id. at 15:43-46. From that reference, there is no way of knowing the content of the NextBus Specification or whether it is the same as the Next document in question. And there is no indication that any Next document, let alone a NextBus Specification, was submitted to the PTO during prosecution of Harriman. See RX-4266. That Harriman is assigned on its face to Next Computer, Inc. does not support the notion that the Next document was published before the Barth application was filed. Indeed, it was common for such materials to be maintained as confidential. CX-10765C at 43-44. Respondents nevertheless contend that the statement in Harriman incorporates by reference the Next document. RR at 13. Incorporation by reference is a method of integrating material from various documents into a host document by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein. Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents. Id. (citations omitted). The statement in Harriman, however, does not identify the NextBus

Specification with nearly enough detail to conclude it is a reference to the Next document and does 36

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not even state that it is an incorporation by reference. The law is clear that a vague referencing practice is hardly sufficient to meet this courts legal requirements for incorporation. Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351-52 (Fed. Cir. 2008). The requirements of incorporation by reference are exacting for a reason. One reading a patent should be able to discern its content. Otherwise, as here, one is left to wonder what exactly is incorporated. Beyond the fact that the statement in Harriman does not incorporate by reference the Next document, there is no way of knowing whether it is the Next document (RX-4265) relied on by the ALJ. And contrary to Respondents argument, despite having the same generic title (NextBus Specification), the notation in Harriman does not indicate that persons of ordinary skill in the relevant art exercising reasonable diligence could locate a copy of the Next document. RRB at 26. Even assuming that one could have contacted Next to obtain what was referenced, nothing in Harriman or in the record supports a conclusion that the content of its vaguely referenced NextBus Specification is the same as the content of RX-4265 or justifies a conclusion that RX-4265 was publicly available. In fact, the vagueness of the reference in Harriman and the fact that no NextBus Specification was submitted to the PTO during prosecution of Harriman despite the notation in the specification suggests it was not. At trial, Respondents did not provide evidence either tying the notation in Harriman to the Next document or suggesting that the Next document was publicly available. No one with personal knowledge of the Next document or Harriman testified. Thus, other than the existence of the Next document itself, which includes a page indicating its retrieval from a website not created until 2005, no one with knowledge tied Harriman to the Next document or testified that the Next document was publicly available before the Barth filing date. The only witness to testify on this topic was

Respondents expert, who did not say he had any personal knowledge about the operations or practices of Next Computer as a company or any personal knowledge of the Harriman patent or the Next document. Regarding the reference in Harriman, the most he could say was that he believed 37

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the reference in Harriman was to the Next document. HTr. 1154. The belief of a witness with no knowledge is not clear and convincing evidence. See Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (noting that clear and convincing evidence requires an abiding conviction that the truth of the factual contentions are highly probable). Respondents expert also testified that Next made the Next document available to the public. RX-5429C.0087. Again, with no personal knowledge, there is no way he could know that and his status as a technical expert did not qualify him to provide fact-based testimony about the public availability of the Next document. In addressing whether the Next document qualifies as prior art, the ALJ stated that the evidence shows that the NextBus Specification was publicly available sometime prior to the October 1995 priority date of the Barth I patents. ID at 105. Sometime is not clear and convincing evidence of when the document was publicly available. The ALJ also considered notations in the Next document itself, concluding that they suggest that the document was indeed publicly available. Id. A suggestion, here based on the testimony of Respondents unknowledgeable witness about what the Next document suggests to him is not clear and convincing evidence that the document was publicly available. ID at 105 (citing HTr. 1152:24-1154:07); see in particular HTr. 1153:18-1154:7 regarding what the Next document suggests. Irrespective of this testimony, the information in the Next document relied on by the ALJ does not demonstrate public availability. The inclusion of a 1990 copyright does not indicate that the Next document was publicly available. See ID at 105. The Federal Circuit in In re Lister, 583 F.3d 1307, 1312-16 (Fed. Cir. 2009), considered not just a copyright, but whether a document submitted to the Copyright Office was publicly available. Notwithstanding that submission, the Federal Circuit concluded that document did not qualify as prior art. Id. Something even less than that here--the mere placement of a copyright mark--is not dispositive. This is especially true given that the last page of the Next document is a reference to www.NeXTcomputers.org, a website not created until 38

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a decade after the initial Barth application was filed. HTr. 1167. Contrary to the arguments of Respondents and the Staff, the different font of the 2005 website identification does not mean that the Next document was publicly available before it was place on that website. RRB at 27, n.23; SRB at 28. Instead, the non-publicly available Next document could have been made publicly available in 2005 when the NeXTComputers.org website was created. The different fonts are irrelevant. The other information on the Next document, namely the re-order number and telephone number, also fail to demonstrate public availability. ID at 105-06. Those items, not provided in Harriman, would have only been available to someone once they had the Next document. They do not indicate when, how, or even if the document was publicly available. As Rambuss expert testified, it was common for such materials to be provided under NDA. CX-10765C at 43-44. There is no evidence that that was not the case here. That the Harriman patent was assigned to Next does not change any of these facts. The assignment does not tie the vague reference in Harriman to the Next document. Nor does it suggest that the Next document was publicly available before the Barth application was filed. There is no evidence, much less clear and convincing evidence, that the Next document was a publicly available publication qualifying as prior art. The fact that Harriman and the Next document may share Next Computer as their source cannot change that. D. Issue 2(d) (Barth patents): Respondents Have Not Demonstrated Publication of the Draft SyncLink Specification

Respondents have not proven that the SyncLink document was a printed publication under 102 before the Barth application was filed. The SyncLink document is a draft that includes language limiting its distribution and copying. The dates on the document do not provide

information about its publication or non-publication. Further, Respondents do not provide any evidence outside of the document itself, testimonial or otherwise, showing publication. The SyncLink document is called Draft 0.5 IEEE P1596.x-199X. RX-4270C.0001. It is 39

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identified as an unapproved draft of a proposed IEEE standard subject to change. According to the document, it is an internal standards-body document and Standards Committee participants are given permission to reproduce the document only for the limited purpose of standardization activities. Id. Other limitations are placed on distribution and copying. Id. All of its pages have a 1995 copyright notice (), though there is no more specific indication in that notice of when in 1995. Certain pages have a date of August 21, 1995. RX-4270C.0016-68. Statements in the document indicate that it was a draft that was not in a condition to be publicly disseminated. One page states that, The following persons were on the balloting committee that approved the document for submission to the IEEE Standards Board. No one is listed. RX4250C.0005. Another states that [w]hen the IEEE Standards Board approved this standard on Month dd. 199x it had the following membership, listing, among others, the fictitious people A. Good. Person as Chair, R. Dear Scribe as Secretary, Alternate B. Him as Vice Chair, and How R. You and Eye M. Fine as IEEE Standards Board liaisons. RX-4270C.0006. In its pre and posthearing submissions, Rambus noted that Respondents had not shown that the SyncLink document was a printed publication under 35 U.S.C. 102. CPB at 153; CIB at 55-57. The ALJ did not specifically address the issue, though he concluded that the SyncLink document does not anticipate any claims and was not material to patentability. ID at 122-23 and 246-47. In arguing that the SyncLink document qualifies as prior art, RP at 31, Respondents rely on a September 1993 internal e-mail, almost two years before the earliest date on the SyncLink document, stating that it shows Rambus had working knowledge of an earlier draft of the proposed SyncLink standard. Id. An e-mail referencing working knowledge of a draft two years earlier does not support publication of the SyncLink document. Respondents also rely on May 1995 JEDEC meeting minutes, arguing that they show Rambus had possession of SyncLink in May 1995, as their [sic] representative attended the May 1995 JEDEC meeting at which SyncLink was disclosed. RR at 31 (citing RX-2048C); see also RIB at 75 and RRB at 34. As to a May 1995 e-mail stating that JEDEC 40

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offered to put anyone on the SynchLink proposal that wants to be on the list, Respondents contend that it confirms the public availability and distribution of SyncLink. RRB at 34 (citing RX2050C). And based on a June 1995 internal Rambus e-mail including provocative language about shoot[ing] synclink in the head, Respondents contend that Rambuss claim that SyncLink was not publicly available is simply not believable. RRB at 34 (citing RX-4288C.0001). An internal Rambus e-mail from 1993 and meeting minutes and internal Rambus e-mails from May and June 1995, however, cannot demonstrate that a document with a later August 1995 date was publicly available. Nor can generic references to SyncLink demonstrate that the

particular document relied on by Respondents, RX-4270C, is prior art. Information in the document itself indicates it was not publicly available. The document is labeled a draft and identifies fictitious people on the IEEE Standards Board, suggesting that the document was at most an internal working document and not publicly available. The stated

conditions limiting its reproduction and dissemination confirm that conclusion. The August 1995 date and the copyright notice do not demonstrate public availability. See In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d 964, 975 (E.D. Mich. 2003). As with the Next document, no one with personal knowledge testified that the SyncLink document was publicly available before the October 1995 Barth filing date. The only testimony presented by Respondents was from Jacob, their technical expert, who, without personal knowledge, stated that the document was published on August 21, 1995 and was publicly available and in Rambuss possession prior to the Barth filing date. RX-5429C.0145. That testimony, unsupported by any evidence, cannot be the clear and convincing evidence Respondents were required to provide. There is no evidence indicating when, how, or to whom the SyncLink document was distributed. Respondents have not proven it is prior art.

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III.

Issue 3: Infringement A. Issue 3(a): The SL500 Arts Transmitters Are Incapable of Emphasis, Unlike Ciscos

As detailed in Rambuss petition, the ALJ acknowledged that emphasis functionality was disabled in the SL500 Fibre Channel Transceiver product. CP at 17-18. The ALJ explained that early designs of the SL500 included inputs emph[1:0] that could be adjusted to program the level of emphasis provided. ID at 169. In those designs, those inputs would determine whether emphasis was used in the chip at all, and if so, how much emphasis was provided. Id. But documentation for the SL500 product that was most likely manufactured and offered for sale stated that those inputs were fixed such that there was no emphasis. RX-4171.0006-7. In other words, those inputs were hard-wired so that the chip was incapable of providing emphasis. Id. Because the inputs were fixed in the no emphasis setting, there was nothing that a user could do to enable emphasis in the chip. Id. Those inputs could not be adjusted or modified to enable emphasis. Id. Instead, they were fixed at a value that guaranteed that the chip had no emphasis. Id. Respondents own expert confirmed this, stating that there was no emphasis in the application. HTr. 1618:18-22. Thus, emphasis functionality was simply not present in the SL500 semiconductor chip. At trial, Rambuss expert explained that the emphasis functionality was likely removed because the product did not function properly when emphasis was enabled. CX-10764C.0129-30; HTr. 2584:9-2586:12. He explained that while attempting to design the product,

CX-10764C.0129-30.

Id.

Id. 42

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Id. Respondents expert, Dr. Hassoun, agreed that when a signal level is too close to the reference threshold, 1488:14. These simulations were Thus, the illustrates why the functionality was likely removed from the SL500 Fibre Channel Transceiver. HTr. 2584:9-2586:12. Unlike in the SL500 chip, the emphasis functionality in disabled. Indeed, products is not removed or , the receiver can detect the signal incorrectly. HTr. 1487:8-

does not allege that its Dally interfaces have been disabled. It relies on an

interrogatory response that contains a heading titled CX-7424C.0204. Id. at 204-07. This is not surprising, as stipulated that it in its Accused Products. CX-10863.0002. Thus, the infringing chips within accused products are in the same . argues instead that in certain products RP at 48 ( ) (citing CX-7424C.0204-07). But does not dispute that the chips included in its products

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. Nor is there any dispute that the infringing chips or that

products include

could use the infringing circuitry. Those chips contain . Those chips are thus operable to send and receive signals if those

features be used. That operable to send and receive signals.

ry does not mean the chip itself is not argument is akin to stating that its products are not

operable to send or receive signals because they are not connected to a power source when sold. But, because the bulk of the asserted Dally claims are apparatus claims, this distinction is irrelevant. In contrast, the SL500 chip is incapable of providing emphasis. CP at 17-20. There is no way that a user could have connected it to use emphasis. Id. There are no settings that a user could have modified to enable emphasis. Id. In the words of Respondents own expert, the product was designed so that there was no emphasis in the application. significantly from the chips in claimed emphasis. Thus, HTr. 1618:18-22. This differs

accused products, which are fully capable of providing the products infringe at least the asserted Dally apparatus claims while

the SL500 chip does not anticipate, as explained in Rambuss petition. See CP at 17-26. B. Issue 3(b): Federal Circuit Case Law Supports Infringement

The asserted Dally apparatus claims recite a transmitter circuit that is operable to send an output signal having certain features. See, e.g., 857 patent claim 1. Courts have construed

operable to to mean can or to identify the capability of a device. Tellabs Operations, Inc. v. Fujitsu Ltd., 2009 WL 1329153, at *13-14 (N.D. Ill. May 13, 2009) (construing operable to communicate a wavelength to mean can send a wavelength); Eolas Techs., Inc. v. Adobe Sys., Inc., 810 F. Supp. 2d 795, 813 (E.D. Tex. 2011) (The operable to language in the claim represents functional limitations of the capabilities of the apparatus, not method steps.). Given the express recitation of capability in the asserted Dally claims, the most analogous Federal Circuit cases are those involving claim language reciting the capability of a component. In one such case, the Federal Circuit discussed infringement of a claim reciting first 44

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magnetic members capable of engaging second magnetic members. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1363 (Fed. Cir. 2009) (emphasis added). Although the accused products there were not specifically designed or sold to be used in the manner recited in the claims, they were nevertheless capable of being used in that way. Id. at 1370. Since the claim only requires a capacity to perform a function, the Federal Circuit found literal infringement because the accused products had the claimed capacity without requiring any modification. Id. at 1369-70. In this Investigation, as in Revolution, Respondents accused products have the capability to send the claimed signals without modification,10 so their products literally infringe the asserted Dally apparatus claims regardless of whether those products are actually used to send the claimed signals. Similarly, in Fantasy Sports, the Federal Circuit addressed claims reciting a computer with the capability to score fantasy football in a particular way. Fantasy Sports Props., Inc. v.

Sportsline.com, Inc., 287 F.3d 1108, 1111 (Fed. Cir. 2002). A user could select options in the accused products software that could enable the system to carry out the claimed scoring mechanism. Id. at 1118. Because the software had the capability to carry out the claimed functions without having to modify the softwares source code, the court found that it could directly infringe regardless of whether any user actually used the software to carry out the claimed functions. Id. at 1119. Silicon Graphics favorably discusses Fantasy Sports and addresses similar claim language. Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 794-95 (Fed. Cir. 2010). As in Fantasy Sports, the Silicon Graphics claims recited a system having components claimed in functional terms, including those related to rasterization and frame buffering for displaying an image. Id. at 788. The district court found that [w]hen the accused products are not combined with an operating system . . . they cannot perform rasterization or frame-buffering, holding that [a]bsent performance . . . there In addition to having the capability to send the claimed signals, the record evidence demonstrates Respondents actual use of accused products to send the claimed signals. See ID at 8283 (citing evidence of use). In contrast, in the SL500 Art, the transmitter was fixed so that any emphasis circuitry it allegedly contained could not have been enabled even if a user wanted to use it. See Section III.A. Thus, the SL500 Art did not have the capability to carry out the claimed functions. 45
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could be no infringement. Id. The Federal Circuit vacated the decision, noting that even absent its use (or performance), this court has held that an apparatus claim directed to a computer that is claimed in functional terms is nonetheless infringed so long as the product is designed in such a way as to enable a user of that [product] to utilize the function . . . without having to modify [the product]. Id. (quoting Fantasy Sports, 287 F.3d at 1118). Because the product included the structural means for performing the claimed function, it could still infringe separate and apart from the operating system that is needed to use the product. Silicon Graphics, 607 F.3d at 794. In contrast to Revolution Eyewear, Fantasy Sports, and Silicon Graphics, the claims in ACCO Brands were not directed to the capability of a device but instead required actual use of the device. ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307 (Fed. Cir. 2007). Explaining the claim requirements, the Federal Circuit stated that a claim limitation related to a pin in a locking system require[d] the pin to extend through the security slot after the slot engagement member is rotated to its locked position, thus prohibiting rotation into its unlocked position. Id. at 1310. The Federal Circuit found no induced infringement because the plaintiff had not proven a predicate act of direct infringement, having failed to prove actual use of the product in the claimed manner. Id. at 1312-13. The claims at issue in this Investigation differ from the claims in ACCO Brands because the asserted Dally apparatus claims expressly recite a transmitters capability as opposed to actual method steps that must be carried out. Accordingly, Revolution Eyewear, Fantasy Sports, and Silicon Graphics are more analogous and consistently demonstrate that claims reciting the capability of an apparatus (like the asserted Dally apparatus claims) are infringed by products that can perform the recited function regardless of whether the claimed function is ever actually carried out. C. Issue 3(c): Respondents Infringe the Dally 494 Method Claims

On page 77 of the ID, the ALJ addresses the distinctions LSI asserts exist between its

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PUBLIC VERSION

providing documentation which See CX-9209C.0055. This documentation encourages See id. ( ). LSI also supports its customers to incorporate the infringing Accused Dally Products into downstream products. ID at 83. Similarly, LSI provide[s] software and/or hard device drivers to ensure the proper operation of the products, which results in infringement. Id. The ALJ found that LSI committed these acts with knowledge of the Dally patents and that they continued after learning of those patents, further demonstrating an intent to induce infringement. Id. at 83-84. The ALJ was therefore correct in finding that LSI induce[d] infringement of end-users by engaging in numerous activities to demonstrate an intent to cause infringement. Id. at 83. Moreover, although the ALJs analysis on page 77 of the ID was directed to Dally apparatus claims, the ALJ was correct in separately finding that LSI directly and indirectly infringed method claims 39, 40, and 42 of the 494 patent. D. Issue 3(d): No Substantial Noninfringing Uses Exist for any of Accused Barth Products Because Once Configured to Control DDR, the Products Cannot Control SDR asserts that three of its products, the , have

substantial noninfringing uses based on their compatibility with SDR. RP at 25; RIB at 40 n.28. The ALJ correctly rejected this argument, finding that when those products are set up to operate with DDR, they cannot instead operate with SDR, nor can the customer change the chips to operate with SDR. ID at 67 n.9. Indeed, those chips always infringe the asserted Barth claims when the DDRtype interface is turned on. See ID at 63; CX-9543C.2360-61, 2392-95. Moreover, ability to turn off the accused feature (i.e., the DDR-type interface)

does not constitute a substantial non-infringing use. See Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1330-31 (Fed. Cir. 2010) (In the present case, Netgear argues that because a user can turn off the infringing features, then there are substantial non-infringing uses. . . . [W]hen activated, the product 48

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is infringing. Whether a user activates fragmentation is relevant to the extent of direct infringement, but does not establish substantial non-infringing uses.) In the same way, ability to turn

on a separate and distinct feature (i.e., the SDR interface) does not constitute a substantial noninfringing use. See Lucent Tech., Inc. v. Gateway, Inc., 580 F.3d 1301, 1320 (Fed. Cir. 2009) (an infringer should not be permitted to escape liability as a contributory infringer merely by embedding the [infringing apparatus] in a larger product with some additional separable feature before importing and selling it.) (citation omitted); see also Ricoh, Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1338 (Fed. Cir. 2008) (When a manufacturer includes in its product a component that can only infringe, the inference that infringement is intended is unavoidable.) As in Fujitsu, whether activates the DDR-type interface does not establish

substantial noninfringing uses because when activated the products always infringe. See ID at 63 (citing CX-9543C.2360-61). This is the case for the RX-6273C.0003-05.

). Instead, the . See HTr. (Siraj) at 198:1-199:3, 222:14-16, 222:22-223:24 (

see also RX-6273C.0005 ( ). The same is true for product, RX-6035C.000001. When set up to operate with LPDDR, it cannot operate with SDR. For example, interrogatory responses indicate that the

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standard document retention policy on the advice of counsel years before any of the Barth patents issued, to infect the analysis of prejudice and sanctions. Neither of the two forms of preclusion, claim preclusion or issue preclusion, apply here. Under claim preclusion, otherwise known as res judicata, a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action. Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979)). Because the judgment in the 661 Investigation was in favor of Rambus and because supplier Respondents ST Micro and LSI were not in the 661 Investigation, there has been no judgment against Rambus on the merits of any claim, much less one involving these Respondents or their privies. Consequently, claim preclusion does not apply against Rambus.13 Likewise, issue preclusion, otherwise known as collateral estoppel, does not apply. Issue preclusion can only apply to an issue that is essential or necessary to the judgment. See Comair Rotron, Inc. v. Nippon Densan Corp., 49 F.3d 1535, 1537 (Fed. Cir. 1995). The ALJ in the 661 Investigation rejected the unclean hands defense because there was no evidence or testimony that the evidence that was destroyed would have supported any Respondents claims or defenses. 661 ID at 116. The Commission reached the same result, explaining in a submission to the Federal Circuit that whether it was NVIDIAs or Rambuss burden to demonstrate (lack of) prejudice from the missing documents is moot: i.e., because the documents existed, placement of the burden is immaterial. May 16, 2011, letter from the Office of General Counsel to the Federal Circuit. The judgment in the 661 Investigation thus rested entirely on the ALJs finding that a required element of unclean hands was absent, i.e., Respondents defenses were not prejudiced. Findings on other issues, including when Rambus intended to sue and whether documents were discarded in bad faith, were Hewlett Packard, ASUSTek, and Asus were also Respondents in the 661 Investigation. Since the judgment there was in favor of Rambus, claim preclusion does not apply to Rambus. Indeed, to the extent that claim preclusion is applicable, it would apply to Hewlett Packard, ASUSTek, and Asus since Rambus prevailed in the 661 Investigation. 51
13

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dicta, unnecessary to his rejection of the unclean hands defense and thus unnecessary to the judgment. Indeed, had the ALJ found for Rambus on those issues, the final result would have been exactly the same. Rambuss inability to directly appeal those adverse findings further shows that those findings were not necessary to the judgment.14 It is well established that collateral estoppel is not available where the party had no right to appeal the findings. See Banner v. United States, 238 F.3d 1348, 1355 (Fed. Cir. 2001) (Collateral estoppel requires that a party have an opportunity to appeal a judgment as a procedural matter.); Standefer v. United States, 447 U.S. 10, 23 (1980) (stating that contemporary principles of collateral estoppel strongly militate against giving an unreviewable judgment preclusive effect). The Restatement (Second) of Judgments explains that where a

judgment is not dependent upon a determination, such that the determination has the characteristics of dicta, there is ordinarily no right to appeal, and the interest in having an opportunity for a considered determination in a later case outweighs the interest in avoiding the burden of relitigation. Restatement (Second) of Judgments 27, cmt. h. (1982). That is the situation here, and shows why the necessary to the judgment requirement prevents applying collateral estoppel. Because the ALJ in the 661 Investigation found that certain elements of the unclean hands defense were not established, Rambus could not appeal the adverse findings on other elements (e.g., when Rambus had a duty to preserve documents and bad faith), and collateral estoppel or issue preclusion does not apply. Moreover, because the ALJ correctly rejected Respondents motion for summary determination of preclusion, the parties and the ALJ have already shouldered the burden of litigating all issues pertinent to unclean hands. Order No. 56. Thus, the heavy interest in providing an opportunity for a considered determination on all these issues, The 661 Respondents appealed the judgment against them on the Barth patents. In response, Rambus challenged some of these unnecessary findings, asserting that if they had been resolved in Rambuss favor, alternative bases would support the judgment of no unclean hands. Rambus could not itself directly appeal those findings. 52
14

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Restatement (Second) of Judgments 27, cmt. h., including revisiting the ALJs erroneous findings on duty to preserve, bad faith, prejudice, and sanction, weighs against applying issue preclusion. Stare decisis is likewise inapplicable. Stare decisis in essence makes each judgment a statement of the law, or precedent, binding in future cases before the same court or another court owing obedience to its decision. . . . It deals only with law, as the facts of each successive case must be determined by the evidence adduced at trial. Preminger v. Secy of Veterans Affairs, 517 F.3d 1299, 1309 (Fed. Cir. 2008) (quoting Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1570 (Fed. Cir. 1993)). Stare decisis also does not apply to dicta. Loveladies Harbor, Inc. v. United States, 27 F.3d 1545, 1549 (Fed. Cir. 1994) (stating that it will not accord stare decisis effect to mere dictum); see also Gonzales v. United States, 553 U.S. 242, 256 (2008) (Scalia, J., concurring) (stating that dictum, which is not the basis for judgment, is not owed stare decisis weight). In the 661 Investigation, the unnecessary factual findings on duty to preserve and bad faith are dicta that is not binding and should not be given any stare decisis effect. Indeed, to the extent that stare decisis applies, it applies to the determination of no unclean hands in the 661 Investigation. The ALJs finding that there was no evidence or testimony that the evidence that was destroyed would have supported any Respondents claims or defenses (661 ID at 116), was supported by the Commission on appeal. As discussed below, the record in this Investigation is not materially more supportive of any allegation of prejudice than the record there. B. Issue 4(b): No meaningful Factual Distinctions Exist Between the Records of the 661 Investigation and this Investigation, Evidencing the Prejudice Suffered or Allegedly Suffered by Respondents 1. The Record Contains Nothing New Justifying a Finding of Prejudice

No meaningful factual distinctions exist between the records of the 661 Investigation and this Investigation that would warrant a finding different from the correct no prejudice determination made in the 661 Investigation. Respondents prejudice arguments rest on evidence and testimony recycled from numerous previous actions addressing the nature and extent of Rambuss document 53

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destruction in 1998 and 1999. Most of Respondents arguments of prejudice rest on exhibits used in previous actions, including the 661 Investigation, and testimony from those actions entered in this Investigation as designations from previous deposition and trial testimony. This lack of new factual development is not surprising. None of the facts from the 1998 and 1999 time period changed between the October 2009 trial in the 661 Investigation and the October 2011 trial in this Investigation. The factual record regarding the implementation of Rambuss document retention policy in July 1998 and events preceding Rambuss institution of a litigation hold in late 1999 was extensively developed in the Micron, Hynix, and Infineon cases all filed earlier. All of that material was produced both in the 661 Investigation and in this Investigation. Indeed, all of the material from the 661 Investigation was produced in this Investigation. Moreover, the record in this case included additional documents that were allegedly destroyed, e.g., correspondence and draft documents from Lester Vincents chron files and electronic files distinct from the prosecution files, further supporting the ALJs original finding in the 661 Investigation of no prejudice. In sum, there is additional evidence in this Investigation further supporting the conclusion that relevant Rambus documents were preserved and produced, and the record contains no additional facts evidencing destruction of documents that could support a determination that any defense was prejudiced. Likewise, the testimony of live witnesses did not provide any additional support for a determination that Respondents defenses were prejudiced. While a few witnesses testified live here (e.g., Tate, Karp, Vincent) who appeared only through designation in the 661 Investigation, Respondents called those witnesses to highlight selected excerpts of past testimony that had been designated in the 661 Investigation, not to elicit new evidence. See JX-134C (designating prior Tate testimony); JX-60C (designating prior Karp testimony); JX-143 (designating prior Vincent testimony); HTr. 1918-20, 1948-49, 1955-56, 1959-60, 1980, 1985-88, 1998, 2043 (questioning by Respondents on Karps prior testimony including prepared demonstratives RDX-4801, 4280, 4281, 4813, 4827, 4840, 4843, 4844, 4850); HTr. 1322-28, 1354-55, 1366-69 (questioning by Respondents 54

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on Tates prior testimony including prepared demonstratives RDX-4406, 4410); HTr. 2196, 2197, 2203-04, 2207-08, 2210, 2215-17 (questioning by Respondents on Vincents prior testimony including prepared demonstratives RDX-4619, 4623, 4630, 4635, 4644, 4645, 4656, 4657, 4660). As shown in the chart below, these witnesses have testified extensively in the past, including on Rambuss adoption and implementation of its document retention policy. Witness Karp, Joel Date of Deposition or Trial Testimony and Case 1/8/2001 (Infineon); 10/8/2004 (Infineon); 7/10/2008 (Price Fixing); 7/11/2008 (Price Fixing); 9/9/2008 (Price Fixing); 8/16/2011 (Price Fixing); 10/23/2007 (Coordinated cases); 2/5/2003 (FTC); 8/7/2001 (Micron); 4/9/2001 (Micron); 4/10/2001 (Micron); 7/28/2006 (Micron); 11/8/2007 (Micron); 11/9/2007 (Micron); 10/18/2005 (Hynix); 10/19/2005 (Hynix); 7/8/2011 (753) 1/30/2006 (Hynix); 2/8/2006 (Hynix); 3/25/2005 (Hynix); 10/27/2005 (Hynix); 10/28/2005 (Hynix); 1/16/2001 (Infineon); 1/17/2001 (Infineon) 3/16/2001 (Infineon); 4/16/2001 (Infineon); 4/25/2001 (Infineon); 1/16/2001 (Infineon); 2/23/2004 (Infineon); 10/16/2004 (Infineon); 5/28/2004 (Infineon); 3/29/2001 (Micron); 3/30/2001 (Micron); 7/31/2001 (Micron); 7/31/2006 (Micron); 11/8/2007 (Micron); 11/9/2007 (Micron); 11/13/2007 (Micron); 11/15/2007 (Micron); 8/28/2008 (Price Fixing); 8/29/2008 (Price Fixing); 8/27/2008 (Price Fixing); 12/7/2007 (Coordinated cases); 1/22/2003 (FTC); 7/22/2011 (753) 1/12/2001 (Infineon); 3/14/2001 (Infineon); 4/11/2001 (Infineon); 4/12/2001 (Infineon); 10/15/2004 (Infineon); 11/30/2004 (Infineon); 7/11/2001 (Micron); 7/12/2001 (Micron); 10/9/2001 (Micron); 11/14/2007 (Micron); 11/15/2007 (Micron); 10/24/2005 (Hynix); 10/26/2005 (Hynix); 2/14/2008 (Coordinated cases); 8/28/2008 (Coordinated cases); 2/3/2003 (FTC); 7/7/2011 (753)

Tate, Geoff

Vincent, Lester

The hearing testimony of these witnesses who did not appear live in the 661 Investigation did not provide any new evidence demonstrating that Respondents defenses were prejudiced. 2. The Few Instances Where the Evidentiary Record in this Investigation Related to Prejudice Differs from the 661 Investigation Further Support Finding No Prejudice

The record in this Investigation contains new exhibits and testimony further demonstrating lack of prejudice. For instance, while largely covering ground thoroughly plowed in earlier cases,

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Mr. Vincent did provide specific testimony here on his handling of the Barth patent files. Respondents in the 661 Investigation did not depose or call Vincent as a witness. Consequently, the 661 record merely contained testimony regarding his general treatment of patent files and his specific treatment of files from different patent families. Thus, Vincents specific testimony regarding the Barth files is new to this Investigation, though it is consistent with his prior testimony about his treatment of other patent files. JX-97C (from 661). That testimony was presented through

deposition designations from this Investigation (JX-143C.0011-64), as well as through testimony at the hearing (CX-10772C; HTr. 2189-2258). Rather than support Respondents assertions of prejudice, Vincents new testimony demonstrated that Respondents suffered no prejudice as a result of the alleged cleaning of his Barth patent files. For instance, Vincent testified that correspondence related to the Barth files was maintained in his personal and his secretaries chron files, apart from the prosecution files allegedly cleaned. CX-10772C.0004. Vincent produced that correspondence. See, e.g., CX-10547C to CX10555C; CX-10570C to CX-10572C; CX-10581C; CX-10585C; CX-10587C; CX-10589C; CX10593C to CX-10597C; CX-10600C to CX-10602C; CX-10604C to CX-10609C; CX-10611C to CX-10651C; CX-10618C to CX-10631C; CX-10634C to CX-10635C; CX-10637C to CX-10C638C; CX-10643C to CX-10647C; CX-10848C; CX-10662C to CX-10663C; CX-10669C; CX-10676C; CX-10695C to CX-10698C; CX-10700C; CX-10702C to CX-10715C; CX-10781C to CX-10729C; CX-10735C; CX-10738C; CX-10742C; CX-10745C; CX-10748C to CX-10758C. Vincent further testified that he maintained electronic files where he stored documents created electronically and those electronic files were produced. CX-10772C.0004; see also CX-10530C to CX-10546C; CX10555C to CX-10569C; CX-10573C to 10580C; CX-10598C; CX-10642C; CX-10651C; CX10657C; CX-10659C to CX-10662C; CX-10664C to CX-10688C; CX-10671C to CX-10674C; CX10677C to CX-10694C; CX-10699C. While Respondents allege that some diskettes in the files may have been destroyed, Vincents testimony was that the diskettes were duplicative of the paper and 56

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electronic files. HTr. 2254-55. Accordingly, the testimony and evidence unique to this Investigation regarding Vincents handling of the Barth patent files demonstrates that Respondents were not prejudiced by any alleged destruction. Mr. Vincent never worked on or had possession of any of the applications for the asserted Barth patents. CX-10771C.0029-36. As a result, there has never been any basis to argue that Mr. Vincent cleaned the files of the asserted Barth patents. And while Respondents contend that Rambus itself may have discarded documents from those files, Jose Moniz, the person responsible at Rambus for managing those applications, provided undisputed testimony to the contrary in both this Investigation and the 661 Investigation. CX-10771C.0029-36; CX-3901C (from 661) at 30-34; see also ID at 289. Thus, the record as to the administration of the asserted Barth patents files is no different in this Investigation than in the 661 Investigation. Respondents allege that Vincent cleaned the application files for patents in the Barth family not asserted in this Investigationthe 914, 046, and 731 parent patents, designated by Vincent as P048, P048D2 and P048D3of: (1) draft amendments and claims; (2) handwritten notes from attorneys working on divisionals and continuations; (3) letters to and from Rambus and Vincents firm; (4) printouts of emails; and (5) diskettes or electronic files of drafts of patents applications or papers regarding patent prosecution. RPB at 362. Consistent with previous designated testimony before the ALJ in the 661 Investigation, Vincent testified that cleaning up a file meant organizing it, not necessarily destroying any documents. CX-10772C.0028; JX-143C.0041-42 at 129-30; JX82C.0039. Also consistent with his designated 661 testimony, Vincent testified that he was not sure whether notes or drafts ever existed in those files but did not foreclose the possibility that he may have discarded some. CX-10772C.0027-28; JX-143C.0034 at 98-99, JX-143C.0041-42 at 129-30; JX-97C (from 661) at R-ITC-40005930-31. But the prosecution of the three applications proceeded quickly without much substantive actiontwo were allowed without a substantive action on the merits (P048 and P048D2) and the other was allowed after just one substantive action on the merits 57

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(P048D3). This is borne out by the billing records that Respondents cite. RX-2111C.0041-42. Thus, it is unlikely that anything of substance would have been in these files. In any event, any notes and drafts would have been privileged and Respondents would not have been entitled to them. See McCook Metals L.L.C. v. Alcoa Inc., 192 F.R.D. 242, 252 (N.D. Ill. 2000) (drafts of the specifications, claims, and other parts of the patent application prepared by the attorney . . . necessarily reflect[] the communications between a client and his attorney as the attorney attempts to put forth the invention in the best light possible to protect a clients legal right.); Micron Tech, Inc., v. Rambus, Inc., 255 F.R.D. 135, 151 n.59 (D. Del. 2009) (The court does not generally require the production of draft documents, either as they relate to patent prosecution or contract negotiations.) Thus, rather than providing evidence of prejudice, the few instances where the record of this Investigation differs from the 661 Investigation demonstrates lack of prejudice. 3. Respondents Assertion of New Defenses Based on the Same Factual Record Does Not Alter the Analysis of Prejudice

Respondents suggestion is wrong that the presence of new noninfringement defenses, new anticipation defenses, new obviousness defenses, a new written description defense, a new inequitable conduct defense, [and] a new prosecution laches defense impacts the prejudice analysis. RP at 90-91. The existence or nonexistence of Rambus documents has no bearing on

noninfringement or invalidity. Infringement depends on the nature of Respondents products and Respondents documents, not Rambus documents. And by its very nature, invalidity depends on public prior art documents and cannot be illuminated by evidence of a non-public nature, e.g., by internal Rambus documents. Micron, 255 F.R.D. at 151. Respondents written description defense similarly could not have been prejudiced by any alleged document destruction because written description is determined based on the four corners of the specification. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Likewise, Respondents charges of inequitable

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conduct and prosecution laches fail for reasons not dependent on Rambus documents.15 ID at 243-48 (dismissing charge of inequitable conduct for failure to show but for materiality) and 248-54 (dismissing charge of prosecution laches). Contrary to Respondents assertions, the record of this Investigation does not contain any meaningfully new information regarding the importance of SyncLink/RamLink or the destruction of SyncLink/RamLink documents. While Respondents assertion of inequitable conduct based on SyncLink/RamLink was new to this Investigation, the alleged destruction of purported prior art documents like those involving SyncLink was contested in the 661 Investigation. Indeed, the 661 Respondents had identified a SyncLink specification in their Identification of Prior Art. See EDIS Doc. ID No. 405187 (June 12, 2009, Respondents Identification of Prior Art Pursuant to Ground Rule 5, Inv. 661) at 17 (identifying IEEE Draft Standard for a High-Speed Memory Interface (SyncLink), IEEE Draft 0.999 IEEE P 1596.7-199X, 1996, 66 pages. cited by other.). The 661 record is replete with SyncLink/RamLink documents, as well as testimony and documents regarding Rambuss conduct at JEDEC and how JEDEC-related information was communicated within Rambus. See, e.g., RX-435C (contains numerous emails referencing SyncLink, RamLink, and

JEDEC and was an exhibit in 661); RX-440C (contains numerous emails referencing SyncLink, RamLink, and JEDEC and was an exhibit in 661); RX-204 in 661 (a draft SyncLink specification); R-ITC-00173517-74, R-ITC-00794821-76, R-ITC-00420460-521, and R-ITC-00492697-764 (other draft SyncLink specifications produced in 661); JX-33C in 661 (designated prior testimony from Richard Crisp including extensive testimony on SyncLink/RamLink, as well as JEDEC). The very fact that Rambus kept so many SyncLink/RamLink and other documents that Respondents contend are prior art, plus related emails (all created before Rambus had any duty to preserve them), shows that Respondents were not prejudiced because it is the very documents forming the basis of their inequitable conduct defense (which the ALJ properly rejected).
15

Respondents did not petition for review on prosecution laches. 59

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(findings 26, 29, 33), 113, 115.

Nothing has changed regarding these facts since the 661

Investigation, including the fact that back-up tapes are just that, backups, as opposed to a source of unique information. V. Issue 5: Inequitable Conduct (Barth Patents) The Commission raised several issues on Respondents inequitable conduct allegation as to the draft SyncLink document, RX-4270C. Rambus provides its responses below. A. Issue 5(a): Respondents Have Not Proven that the Draft SyncLink Document is Material

In Therasense, the Federal Circuit raised the standard for inequitable conduct, holding that the materiality required to establish inequitable conduct is but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Therasense, Inc. v. Becton,

Dickinson & Co., 649 F.3d 1276, 1291 (Fed. Cir. 2011) (en banc). In their petition for review, Respondents did not mention Therasense or explain how the draft SyncLink document meets the butfor materiality test. RP at 32-36. The test is not met because the draft SyncLink document does not disclose at least a signal that performs the functionality recited in the claims, namely indicating that the memory device is to begin sampling (recited in 353 claim 11, and 109 claim 1), writing (recited in 109 claim 12) or transfer (recited in 109 claim 20) (called the strobe signal/signal). The ALJ agreed that the draft SyncLink document fails to disclose the strobe signal/signal functionality of the asserted 353 and 109 patent claims. ID at 122-23; CX-10765C.0090-96. Respondents argue that two different things in the draft SyncLink document meet the strobe signal/signal limitations, the strobe and the flags. RP at 33. Neither does. 1. The SyncLink Strobe Does Not Perform the Claimed Functionality of Initiating Sampling, Writing or Transfer

Respondents now contend that because the strobe of SyncLink is transmitted at the same time as data, it is the claimed strobe signal/signal. 62 RP at 33. This is a change in position.

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Respondents previously charged that Rambus made an inaccurate claim that Respondents have argued that the strobe signal in SyncLink is the claimed strobe signal of Barth and noted that the strobe in SyncLink is like the clock signal in the Barth Patents. RRB at 34-35. Respondents earlier position is correct. Despite the similarity in nomenclature, the

functionality of the strobe in SyncLink is very different from the functionality of the strobe signal/signal in the Barth claims. The strobe in the draft SyncLink document is a free-running clock signal. CX-10765C.0095, 100. Respondents expert confirmed that the strobe in SyncLink and the clocks in RamLink are the same signals with different names. HTr. 1081-82. Such clock signals are not the same as the claimed strobe signal/signal. In fact, the 109 claims and 353 dependent claims separately recite a clock signal, distinct from the claimed strobe signal/signal. Respondents in the 661 Investigation argued that the clock signal of Farmwald (like the strobe of SyncLink) was the claimed strobe signal/signal. The ALJ properly rejected this

argument, explaining that the clock signal of Farmwald lacks data transfer start information because, like a free-running clock, it always cycles in a continuous fashion and, therefore, is not the claimed strobe signal of the Barth patents. 661 ID at 52. Respondents expert in this

Investigation agreed, testifying that [w]ithin the context of the Barth patents, no, a clock signal is not a strobe. HTr. 1068. Like the clock signal in Farmwald, the strobe in SyncLink is a clock signal. As a result, it does not perform the functionality of the claimed strobe signal/signal. The draft SyncLink document is, therefore, not material. 2. The SyncLink Flags Do Not Perform the Claimed Functionality of Initiating Sampling, Writing or Transfer

Respondents also contend the SyncLink flags are the claimed strobe signal/signal, arguing that they indicate the beginning or end of a packet of data--that is, when to initiate sampling of data. RP at 33. The SyncLink flags are not the claimed strobe signal/signal because they are not a timing signal and do not indicate a time as to when the memory device is to begin some action, as 63

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merely identify intermediate bytes that contain different information, such as the address and other control information. CX-10765C.0096. Likewise, the switch from flag pairs 0/1 to flag pairs 1/0 does not indicate that data is following the command, as Respondents contend. RP at 30. By identifying address and other information, flag pairs 1/0 cannot initiate sampling, writing, or transfer of data and thus do not perform the functionality of the claimed strobe signal/signal. And significantly, sometimes the intermediate bytes identified by flag pairs 1/0 do not even contain data, as shown in Figure 22 of the draft SyncLink document:

RX-4270C.0047.

The packet of Figure 22 contains no data that is written in memory.

The

intermediate bytes identified by flag pairs 1/0 contain only address information. Because they do not identify data, flag pairs 1/0 are not a strobe signal/signal that indicates when data will be sampled, written, or transferred into the memory device, as claimed. CX-10765C.0093. Respondents expert noted that the SyncLink flags indicate the beginning and end of a packet of data. RX-5429C.0146. In this respect, the SyncLink flags are similar to the AddrValid bit at the very beginning of the packet in Farmwald:

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As the Staff noted, the flag pairs of SyncLink are similar in many respects to the AddrValid bit . . . of the Farmwald art that was submitted and considered during prosecution. SPB at 91; CX10765C.0090-96. Arguments applying the Farmwald AddrValid 27 bit to the strobe signal/signal claim functionality were raised and rejected in the 661 Investigation. 661 ID at 50-52. Among other things, the ALJ concluded that AddrValid 27 bit of Farmwald is part of the control information in the request packet and the Barth I specification and claims distinguish control information as separate from information in a request packet. ID at 52. Likewise, the flag pairs in the draft SyncLink document indicate the beginning, intermediate, and end bytes of a packet. RX-5429C.0146. As Respondents note, a 0/1 in the flag signal indicates the presence of the packet header, which includes the command. RP at 29. Like AddrValid 27 of Farmwald, this identification of control information does not identify data to be sampled, written, or transferred to a memory device and is not a timing signal that indicates when those operations will occur, as recited in the Barth claims. Because none of the flags of SyncLink perform the functionality of the strobe signal/signal of the 353 and 109 patents, the draft SyncLink document is not material for purposes of an inequitable conduct argument. B. Issue 5(b): The PTOs Construction of Signal in the 109 Patent Claims in the Reexamination Does Not Change the Outcome on Inequitable Conduct

The Commission asks whether the PTOs reexamination of the 109 patent demonstrates

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that the broadest reasonable construction of the 109 patents signal is a construction broader than the 405 and 353 patents strobe signal. Commn Notice at 4. Regardless of whether the PTOs construction is broader, no party in this Investigation has argued that the PTOs construction should be adopted when considering inequitable conduct or for any other purpose. In fact, despite issuance of the PTO Board decision in the 109 patent reexamination weeks before the parties submitted their Prehearing Briefs, no party argued that the PTOs approach should be adopted. Instead, Respondents and the Staff argued that the constructions of the strobe signal/signal terms from the 661 Investigation should be adopted. Under the ALJs Ground Rules, any other position has been waived. Further, while Rambus maintains that the PTOs construction of signal in the 109 patent reexamination is incorrect, it does not matter because the draft SyncLink document is not material in any event. 1. The PTOs Construction of Signal in the 109 Patent Claims Is Inconsistent With the Commissions Final Determination in the 661 Investigation and the Parties Positions in this Investigation

In the 661 Investigation, the ALJ concluded that signal and strobe signal mean the same thing, namely a signal sent to the memory device to indicate a time as to when the memory device is to begin some action. 661 Order 12 at 14. Omission of the word strobe from the 109 patent claims did not require (or suggest) a different construction. Id. at 11, n.6. This makes sense given that the functionality recited all asserted Barth claims, including the 109 claims, is similar. JX-3, 405 patent claim 11, reciting issuing an external strobe signal to the memory device after delaying for the amount of time, to signal the memory device to sample data; JX-4, 353 patent claim 11, reciting, issuing the strobe signal to the memory device to initiate sampling of a first portion of the data; and JX-5, 109 patent claim 1, reciting providing a signal to the memory device, wherein the signal indicates when the memory device is to begin sampling write data, claim 12, reciting, providing a signal to the memory device, wherein the signal indicates when the memory device is to begin receiving write data, and claim 20, reciting, providing a signal to the memory device, 67

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wherein the signal indicates when the memory device is to begin the transfer operation. Calling the signal a strobe signal in the 353 and 405 patents and not in the 109 patent does not change the similarly claimed functionality across the Barth patents. As the ALJ found in the 661 Investigation, the similarly claimed functionality is supported by the description of the strobe signal in the specification. 661 Order 12 at 14 (quoting the Barth disclosure that [a]ccording to one embodiment, the data transfer control information includes data transfer start information (a strobe signal) sent from the controller to indicate when the DRAM is to begin sending data.). Citing to all three Barth patents, the ALJ thus concluded that the asserted

claims recite a signal sent to the memory device to indicate a time as to when the memory device is to begin some action. 661 Order 12 at 14. In this Investigation, in pressing its inequitable conduct argument, Respondents have not argued that signal in the 109 patent claims should be construed differently from the strobe signal recited in the 353 and 405 patent claims. In its Prehearing Brief, Respondents included charts identifying its position that signal should be construed the same way as strobe signal:

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RPB at 64. Further, in pressing arguments on invalidity and inequitable conduct based on the draft SyncLink document, Respondents did not contend that the 109 patent claims should be construed any differently from the 353 and 405 patent claims. RPB at 64, 139-42, 403-410. Nor did the Staff. SPB at 20, 70, and 90-92. The ALJs Ground Rules state that if there is a dispute as to the interpretation of any language in a claim each party should state what the dispute is and why it wants the Administrative Law Judge to accept the interpretation the party wants. Ground Rule 8(e). The Ground Rules further state that contentions not set forth in detail as required herein shall be deemed abandoned, or withdrawn, except for contentions of which a party is not aware and could not be aware in the exercise of reasonable diligence at the time of filing the pre-hearing statements. Ground Rule 8(f). 69

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These rules required Respondents to take a position that signal in the 109 patent claims meant something different from strobe signal in the 353 and 405 patent claims for purposes of their inequitable conduct argument. They did not. As a result, they have abandoned any other position. Moreover, Respondents cannot argue that they were unaware of the reexamination proceedings and could not have argued a different claim construction. In their Prehearing Brief, just five pages before providing the charts excerpted above indicating their agreement with the claim constructions from the 661 Investigation, Respondents noted the status of the reexaminations. RPB at 59. Likewise, after trial, Respondents did not argue that signal should be construed differently from strobe signal. RIB at 20, 75-77, and 209-17. Nor did the Staff. SIB at 18, 74, 110-12. Under Ground Rule 11.1, Respondents have waived any other position. Similarly, when

Respondents submitted their contingent petition for review, they did not argue that signal in the 109 patent claims should be construed differently from strobe signal in the 353 and 405 patents. RP at 29-36. Respondents should be precluded from taking a different position now. 2. The SyncLink Document Is Not Material Even Under the PTOs Construction of Signal in the 109 Patent Claims

Rambus has argued to the PTO that its construction of signal is wrong. Because no party argued that the PTOs construction was correct or that the Commissions prior construction of signal was wrong, Rambus has not made those arguments in this Investigation. It was simply not an issue raised or litigated. Rambus stands by the positions it has taken in the public reexamination proceedings. In the context of the inequitable conduct allegation in which the Commission

referenced the reexamination, however, it does not matter. Even under a broader construction of signal, the draft SyncLink document does not disclose the functionality of the signals recited in the 109 patent claims. As explained in more detail in addressing the Commissions question on materiality, the strobe of the draft SyncLink document pointed to by Respondents is a free-running clock signal. CX-10765C.0095, 100. As Respondents expert testified, [w]ithin the context of the 70

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Barth patents, no, a clock signal is not a strobe. HTr. 1068. The flags of the draft SyncLink document, also alleged by Respondents to correspond to the claimed strobe signal/signal, identify only whether bytes are at the beginning, middle, or end of a packet. They are not timing signals and do not perform the functionality of indicating when data is sampled, written or transferred to a memory device. This is so despite that the 109 patent claims do not include the word strobe. C. Issue 5(c): The SyncLink Document Is Cumulative of Information Provided to the PTO Even If the PTOs Construction of Signal Is Adopted

The ALJ found that SyncLink was cumulative with art before the Patent Office, and thus not material for purposes of inequitable conduct. ID at 246. This finding is unaffected even if the broadest reasonable construction of signal in the 109 patent is signal rather than strobe signal because all Barth claims recite similar functionality regarding sampling, writing, or data transfer. Further, the flags and strobe that the Respondents rely upon have substantially similar counterparts in Farmwald, which was disclosed to the PTO. According to the ALJ, the flags in SyncLink are substantially similar to the AddrValid bit of Farmwald, which was submitted and considered during prosecution. Id. Respondents have contested that conclusion but have also stated that AddrValid of Farmwald is used to identify control information, such as when the bus is holding a valid address request. RP at 32-33. Similarly, the flag pairs of the draft SyncLink document can be used to identify control information, i.e., the beginning, middle, and end of a packet. With respect to Respondents assertion that the SyncLink flags are the claimed strobe signal/signal, their argument is cumulative to Farmwald and positions taken and rejected in the 661 Investigation. Respondents also argue that the strobe of SyncLink is the strobe signal/signal of the Barth claims. The strobe in SyncLink, however, is a free-running clock. CX-10765C.0095, 100. As Respondents expert testified, [w]ithin the context of the Barth patents, no, a clock signal is not a strobe. HTr. 1068. Likewise, in the 661 Investigation, the ALJ rejected the argument that the clock 71

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signal in Farmwald corresponded to the claimed strobe signal/signal. 661 ID at 52. In this respect too, the draft SyncLink document is cumulative of Farmwald and positions taken and rejected in the 661 Investigation.16 D. Issue 5(d): There is No Inequitable Conduct Relative to Any of the Barth Patents, Including the 405 and 353 Patents 1. Respondents Never Argued Invalidity or Materiality of the Draft SyncLink Document Relative to the 405 Patent Claims

As an initial matter, Respondents have never argued that the draft SyncLink document invalidates any claim of the 405 patent or is material to any of those claims. As a result,

Respondents cannot now argue that the 405 patent is unenforceable for inequitable conduct based on the draft SyncLink document. 2. The Draft SyncLink Document Is Not Material to the 353 or 405 Patent Claims

For the reasons explained above with respect to the 109 claims, the draft SyncLink document is not material to either the 353 or 405 claims. SyncLink has a fundamentally different scheme by which its flag pairs 1/0 identify the beginning, middle, and end of a packet. And in particular, the flag pairs 1/0 identify what is in the middle of a packet and distinguish it from what starts or ends a packet. This identification of the location of information within a packet structure, including address and other control information, is not a signal that initiates sampling of data in a memory device, as claimed. Given at least this fundamental difference, there can be no finding that but for disclosure of the draft SyncLink document the 353 and 405 patent claims would not have issued. Based on Therasense, therefore, the draft SyncLink document is not material. 3. There Was No Intent To Deceive as to Any of the Barth Patents

The Federal Circuit has held that evidence of intent must be sufficient to require a finding of

The draft RamLink and SyncLink documents are also cumulative to other information before the PTO. In fact, Respondents conceded that other RamLink and SyncLink information, disclosing dual clocks and a strobe, was disclosed during prosecution. RPB at 405, 408. 72

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deceitful intent in the light of all the circumstances. Therasense, 694 F.3d at 1290. The ALJ correctly found that Respondents failed to prove such intent. ID at 247-48. Respondents contend that Rambus, the inventors, and the prosecuting attorneys had knowledge of SyncLink documents but failed to submit them to the PTO. RP at 34-35. Even if this is true, this does not show that anyone made a deliberate decision to withhold something known to be material. Therasense, 649 F.3d at 1290. Respondents identify a March 1995 e-mail from Mr. Richard Crisp that mentions a RamLink spec and states that he had downloaded the latest from the HP Labs server. RP at 35; RX-2047C.0003. This e-mail does not indicate that anyone, much less the Barth inventors or prosecuting attorneys, considered the draft SyncLink document material to the Barth application or deliberately decided to withhold it from the PTO. Respondents also state that Mr. Crisp attended a May 1995 JEDEC meeting at which RamLink and SyncLink presentations were made, referencing JEDEC meeting minutes. RP at 35; RPB at 405 (citing RX-2048). Those meeting minutes, however, addressing dual clocking and strobe, were submitted to the PTO during prosecution and demonstrate that Rambus did not withhold information. See JX-03.003; JX-04.0003. Indeed, as the ALJ found, the evidence shows that none of the witnesses questioned at trial were aware of material prior art that was withheld during prosecution. ID at 247. Moreover, most of the items that Respondents identify as supposedly showing intent relate to the Farmwald patents, which pre-dated RamLink and SyncLink, and thus cannot show that Rambus intended to deceive the PTO during Barth prosecution. For instance, Respondents point to a

September 1993 e-mail from Mr. Crisp. RP at 35. This email, dated two years before the Barth application was filed, indicates that Crisp had some document discussing SyncLink and states that as people try to solve the problems of going very fast, their designs look more and more like Rambus. RX-4287C. The reference to designs looking Rambus-like is to Rambuss then-existing technology, as disclosed in its Farmwald applications. This is confirmed by the documents

Respondents cite referencing Rambuss then-outside prosecution counsel, Mr. Vincent. Respondents 73

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cite notes of Vincent from 1992 (three years before the Barth application was filed) that include a notation to Ramlink - spec - created. RPB at 404; RX-0436C.0001. Those notes, however, are for P001, which is Rambuss 1990 original Farmwald application. See RX-3957C.0002. Vincents time records relied on by Respondents, RPB at 407, likewise relate to a P001 Farmwald application. RX-2111C.0005. And when Crisp indicated that he wanted to know how we stand relative to Synclink/SDRAMs/Mosys, he referred to already-filed applications, including Farmwald applications, and getting appropriate claim coverage in those applications, not to Barth. RX-2041C. Respondents also contend that Rambus failed to disclose JEDEC meeting minutes related to SyncLink during prosecution of the 109 patent. RP at 35 215. But the 109 patent is a continuation of the 405 and 353 patents and the JEDEC meeting minutes were cited during prosecution of those patents. See JX-03.003; JX-04.0003. The Manual of Patent Examining Procedure (MPEP) makes clear that such duplicative disclosure is not required. See MPEP 609. The Federal Circuit has found that in such circumstances, there is no inequitable conduct. ADT Corp v. Lydall, Inc., 159 F.3d 534, 546-57 (Fed. Cir. 1998). Respondents also attempt to infer intent, alleging that Rambus failed to explain why the SyncLink/RamLink references were withheld from the PTO. RP at 34. The premise of

Respondents argument is untrue because Rambus did submit information on SyncLink to the PTO. See JX-03.003; JX-04.0003. Moreover, even if such information was withheld, given the cumulative information before the PTO, the Federal Circuit has held that the patentee need not offer any good faith explanation unless the accused infringer first . . . prove[s] a threshold level of intent to deceive by clear and convincing evidence. Therasense, 649 F.3d at 1291. Respondents have not shown that threshold level or any level of intent. As a result, the ALJ correctly rejected their inequitable conduct defense. VI. Issue 6: Domestic Industry Rambus should not be required to allocate its licensing expenses on a patent-by-patent basis. 74

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The defined scope of Rambuss license agreements supports the strong nexus between the asserted patents and those agreements. ID at 347-48, 357-58 (citing Certain Multimedia Display and

Navigation Devices and Systems, Components Thereof, and Products Containing Same, Inv. No. 337-TA-694, Corrected Public Version of Commn Op. (Aug. 8, 2011) (694 Opinion) at 9-13); ID at 360-62; 694 Op. at 10-11 (The scope of the technology covered by the license and the congruence of the patents contained in the portfolio may also indicate the strength of the nexus to a particular patent.). Because Rambus established a strong nexus between its licensing activities and the asserted patents, no patent-by-patent allocation is needed. Requiring licensors of patent portfolios to allocate licensing expenses, such as employee salaries, employee travel for licensing presentations, etc., on a patent-by-patent basis has been repeatedly rejected by the ITC. Such a requirement is impractical, inconsistent with economicallysound licensing practices, and would discourage truly innovative technology companies and universities from enforcing their intellectual property rights. A company or university focused on bringing new technology to the market is permitted to do so through licensing others to manufacture and sell the end productand still have a domestic industry. See S. Rep. No. 71, 100th Cong., 1st Sess., at 129 (1987). Rambus brings new technologies to market through licensing. Those technologies are largely developed by hundreds of Rambus engineers, solving various problems facing the industry. Once developed, Rambus markets its technology to potential licensees and provides them with product designs, know-how, engineering support to build a product, as well as the relevant intellectual property rights. CX-9547C at Q/A 58. Rambus has entered into numerous technology license agreements granting manufacturers rights under a portfolio of patents to make specific products that Rambus has designed, as well as access to support and know-how to assist the licensee in implementing the technology. CX-9547C at Q/A 58-59. Rambus has also entered into a number of patent license agreements, which are typically structured to grant licensees rights to a portfolio of 75

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patents that allow them to make, use, and sell specified types of products. Id. at Q/A 57. This portfolio licensing give licensees freedom of action from all patents, even if the licensee did not appreciate the importance of certain patents, or even if they have not issued yet. CX-9547C at Q/A 118-119. U.S. Philips Corp. v. ITC, 424 F.3d 1179, 1193 (Fed. Cir. 2005) (package licensing provides the parties a way of ensuring that a single licensing fee will cover all the patents needed to practice a particular technology and protecting against unpleasant surprise for a licensee who learns, after making a substantial investment, that he needed a license to more patents than he originally obtained.). Rambuss evidence supports a strong nexus between its licensing activities and the asserted patents. The ALJ analyzed that evidence in accordance with the 694 Opinion and properly determined that there was in fact a strong nexus. A. There Is No Legal Requirement for Expenses to be Allocated on a Patent-byPatent Basis

The 694 Opinion sets forth factors to analyze licensing domestic industries based on portfolio licensing, where allocation is typically unworkable. 694 Op. at 8-9. Instead of requiring allocation, the 694 Opinion provides a series of factors to be considered when a complainant is relying on licensing activities that include asserted patents and nonasserted patents. Id. These factors would not be necessary if allocation on a patent-by-patent basis was required, which further establishes that it is not, and should not be required. In cases involving very large portfolios, actual allocation would be all but impossible. And for any size portfolios, allocating investments on anything other than a pro rata basis would add essentially another time-consuming activity of no use in actual business for potential complainants. Indeed, the 694 Opinion notes that [a]lthough the number of patents

licensed may be a relevant factor [in determining the strength of the nexus], we agree with the view generally expressed by commenters that the magnitude of complainants investments in the asserted patents cannot be derived via a pro rata allocation of investments in the licensing of a portfolio to its constituent patents. 694 Op. at 11-12 n.8. The 694 Opinion recognized the difficulties in 76

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determining any sort of meaningful mathematical allocation of licensing expenses on a per-patent basis and instead set forth factors to consider in each case. 694 Op. at 13 (Each investigation requires a fact-focused and case-specific inquiry to determine whether this statutory requirement has been satisfied by the complainant.) This approach is consistent with Commission practice on domestic industry. Certain Male Prophylactic Devices, Inv. No. 337-TA-546, Commn Op. at 39, USITC Pub. 4005 (May 2008) (The Commissions determination on the economic prong [of domestic industry] is not made according to any rigid formulais no mathematical threshold test. Instead, the determination is made by an examination of the facts of each investigation, the article of commerce, and the realities of the marketplace.); Certain Variable Speed Wind Turbines and Components Thereof, Inv. No. 337-TA-376, Commn Op. at 24 (Sept. 23, 1996) ([T]he domestic industry determination is not made by application of a rigid formula. . . . .). In their Prehearing Brief, Respondents argued that Rambus should be required to allocate its expenses on a patent-by-patent basis but they failed to cite a single case in support of their argument. RPB at 414-15. At the hearing, Respondents expert confirmed that apportionment is not required. HTr. 1819. And instead of arguing for allocation in their Posthearing Brief, Respondents instead properly referred to the nexus requirement of the 694 Opinion. RIB at 281 (Recognizing that strict mathematical proof of the investment in licensing certain patents among others in a portfolio may not be possible, the Commission identified five factors that may be considered on the nexus issue.). Strict mathematical proof has never been required to prove licensing domestic industry, and should not be required now, when the ITC has set forth in detail how portfolio-based licensing domestic industries can satisfy Section 337, without allocation requirements. B. A Patent-by-Patent Allocation Requirement has been Consistently Rejected by the ITC for Portfolio Licensing

Patent-by-patent allocation of licensing expenses for portfolio licensing has been rejected by the ITC. See, e.g., Certain Semiconductor Chips with Minimized Package Size, Inv. No. 337-TA77

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432, Order No. 13 at 14 n.9 (unreviewed) (January 24, 2001) (Semiconductor Chips I); Certain Semiconductor Chips with Minimized Chip Package Size and Prods. Containing the Same, Inv. No. 337-TA-605, Initial Determination on Violation (Public Version) at 112 (December 1, 2008) (nonreviewed as to domestic industry) (Semiconductor Chips II); Certain Semiconductor Chips with Minimized Chip Package Size and Prods. Containing the Same, Inv. No. 337-TA-630, Order No. 31 (Public Version) at 3 (September 16, 2008) (Commission Decision Not to Review (October 8, 2008)) (Semiconductor Chips III). It is not appropriate here and was not appropriate in a wide range of prior ITC cases. See, e.g., Certain 3G Wideband Code Division Multiple Access (WCDMA) Handsets and Components Thereof, Inv. No. 337-TA-601, Order No. 20 at 15-17 (unreviewed) (June 24, 2008); Certain 3G Wideband Code Division Multiple Access (WCDMA) Handsets and Components Thereof, Inv. No. 337-TA-613, Order No. 42 at 15-16 (unreviewed) (March 10, 2009). In Semiconductor Chips I, II, and III, Tessera was involved in portfolio licensing activities similar to those of Rambus. Tessera did not license its patents individually, but entered into portfolio licenses for its CSP Technology. See Semiconductor Chips I, supra, at 8 (Tesseras CSP license typically includes rights to the 977 and 326 patents.). The ALJ in Semiconductor Chips I, and the Commission upon non-review, found a domestic industry notwithstanding the argument that Tesseras licensing program focuses on CSP Technology, not on the patents-in-suit, and that Tessera fails to establish a nexus or otherwise tie its investments to the patents-in-suit. Semiconductor Chips I, supra, at 9. Texas Instruments argued that Tessera lumps together all royalties, costs, expenses, labor, investments, etc. related to all of its CSP technology to support its argument that [it] has made a substantial investment in licensing the technology of the patents in suit. Id. at 13; see also id. at 13-14 (TI notes that Tesseras CSP licenses do not always include the 977 and 326 patents-in-suit, and argues that Tessera failed to tie its investments specifically to the patents-in-suit.). The ALJ found a domestic industry, noting that a number of companies were licensed under the two asserted patents and that Tessera was in the process of negotiating more 78

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licenses. Specifically, [g]iven the large-scale investment that Tessera has made relative to its CSP technology which includes the patents-in-suit, and the large number of companies specifically licensed under the 977 and 326 patents, there is no question that Tessera has made a substantial investment relative to the patents-in-suit. Id. at 14 (emphasis added). Tesseras portfolio licensing activities demonstrated a substantial investment with respect to the patents-in-suit even without a specific allocation of Tesseras CSP licensing investment to the 977 and 326 patents. Id. at 14 n.9. In Semiconductor Chips II and III, the same complainant, Tessera, again established a domestic industry based on the same sort of portfolio licensing activities as Rambus. Respondents, as in Semiconductor Chips I, argued that Tessera failed to segregate investments attributable solely to the patents-in-suit. Semiconductor Chips II at 115; Semiconductor Chips III at 6. That argument has been repeatedly rejected, and there is no requirement that complainants segregate licensing expenses when licensing a portfolio of patents. Semiconductor Chips III at 7. This explains why Respondents have not cited a single ITC investigation to support allocating licensing expenses throughout the briefing in this Investigation, including in support of their motion for summary determination of no domestic industry, their Prehearing and Posthearing Briefs, and Petition to the Commission. C. Patent-by-Patent Allocation is Impractical and Bad Policy

A requirement that licensing expenses be allocated on a patent-by-patent basis is impractical, if not impossible, for a research-focused technology company to administer and creates a disincentive for such companies to innovate and seek patent protection for their innovations. Portfolio licensing creates a host of efficiencies which benefit both licensee and licensor. A patent holder receives value for use of its intellectual property with a minimum of transaction cost, while a potential licensee gains freedom to operate without the need to constantly monitor other patents owned or acquired by the patent holder. See, e.g., 694 Op. at 13 n.10 (Chairman Okuns views). Such activity should not be punished by making access to the ITC contingent on a company creating time and expense allocation records it does not otherwise need to conduct its business, or even 79

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forcing the licensing of patents on an individual basis where it makes less economic sense. Allocating licensing activities and investments on a patent-by-patent basis is impractical at best. To comply with such a policy, any employees involved in licensing would have to determine what portion of each daily activity relates to a specific patent. That would be unworkable for technology development companies and universitiesthe type of entities Subsection C is designed to protect. Certain Stringed Musical Instruments and Components Thereof, Inv. No. 337-TA-586, USITC Pub. 4120, Commn Op. at 26 (May 16, 2008) (A precise accounting is not necessary, as most people do not document their daily affairs in contemplation of possible litigation.). Portfolio licensing is common in industry, including university technology licensing, because it makes commercial sense. [G]rouping licenses in a package allows the parties to price the package based on their estimate of what it is worth to practice a particular technology, which is typically much easier to calculate than determining the marginal benefit provided by a license to each individual patent. U.S. Philips, 424 F.3d at 1193. This goes to the core of Rambuss business: developing new technologies and licensing them to companies for commercial manufacture. While Respondents displayed mock outrage at testimony that Rambuss licensees do not want or need to know exactly what patents are included in a particular technology license, (RPB at 413), that is the commercial reality. CX-9547C at Q/A 118-119. Rambus and its licensees want to spend their time and resources developing technology and incorporating it into products. They do not want to waste valuable time and money tracking expenses on a patent-by-patent basis. Texas Instruments, Inc. v. Hyundai Elecs., 49 F. Supp. 2d 893, 901 (E.D. Tex. 1999) (describing how extremely expensive and time-consuming it is for parties to license technology using individual patents as compared to portfolio licensing). The ITC has, since its inception, recognized that it should consider such real-life factors in determining domestic industry, and should do so here in rejecting any allocation argument. Certain Dynamic Random Access Memories, Components Thereof and Prods. Containing Same, Inv. No. 337-TA-242, USITC Pub. 2034, Commn Op. at 62 (Nov. 1987) (favoring a flexible approach to 80

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determining domestic industry in light of the realities of the marketplace). A per-patent allocation requirement would be antithetical to the purpose of Section 337. Successful innovation companies like Rambus that have poured millions of dollars into the domestic economy to solve the hardest technical problems should not be punished because they solved more problems rather than fewer. ITC Complainants would also have a perverse incentive to assert more patents than may be otherwise necessary in order to meet the domestic industry requirement, and to create and maintain documents and accountings of time and expenses that serve no business purpose other than to increase litigation costs. The already compressed schedule of investigations would be complicated by discovery disputes over the specific manner and details of allocating and apportioning licensing expenses. Quite simply, an allocation requirement would complicate and increase the cost of ITC litigation for technology development companies and universities in contravention of the plain purpose of Subsection C of Section 337. D. Rambus Established a Strong Nexus Between the Asserted Patents and Its Licensing Expenses, and no Further Allocation is Required

The 694 Opinion made clear that in analyzing a portfolio-based licensing domestic industry, it is not appropriate to allocate all portfolio expenses to every individual patent, nor is it correct to do a pro rata allocation of investments in a portfolio among its constituent patents. 694 Op. at 11-12 n.8, 13. The correct analysis requires application of a detailed framework to analyze the strength of the nexus between the licensing activities and the asserted patents, without the need for allocation on a patent-by-patent basis. 694 Op. at 8-13. The ALJ analyzed the evidence in this Investigation under that framework. ID at 347-363.17 As set forth in the ID, Rambus provided evidence on each of the 694 Opinion factors (ID at 347-63), as well as identified multiple licensees, including ones like nVidia who manufacture devices Even Respondent HP agrees that the ALJ correctly applied the law. See Roeder, Paul H., Associate General Counsel, IP Litigation, at Hewlett-Packard, Resetting the ITC Test for Domestic Industry, IPLaw 360 (April 24, 2012) ([T]he Certain Semiconductor Chips ID reflects a diligent review of precedent, and a good faith attempt by Judge Essex to apply that precedent.). 81
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practicing the Barth patents. The ID details the strong nexus between Rambuss investments and the asserted patents, based on exactly the type of evidence set forth by the 694 Opinion. ID at 348-54, 359-62. Rambuss licenses grant rights to practice the asserted patents, thereby establishing a strong nexus between them. 694 Opinion at 10 n.6, 11 n.7 (citing 661 Inv., Order 21 as establishing nexus). Rambus has established through claim charts that Rambuss licensed Concurrent technology practices the asserted Barth patents and Rambuss licensed Serial Link technology practices the asserted Dally patents, exactly the type of analysis confirmed by the 694 Opinion as evidence of a strong nexus. 694 Opinion at 10-11. The ID further highlights Respondents failure to address Rambuss evidence of the importance of the asserted patents. See, e.g., ID at 352 (Respondents . . . further fail to address the factors that the Commission considers in making the determination as to whether or not the patents are relatively valuable to the portfolio.); id. (Respondents fail to address the presentations in which full slides were devoted entirely to the asserted patents, often including a summary of relevant reexamination and litigation proceedings, claim charts comparing asserted claims to potential infringing products, etc.). Because Rambus established a strong nexus that Respondents did not substantively challenge, no further allocation on a patent-by-patent basis should be required. That nexus is exactly what 694 Opinion contemplates as fulfilling the requirements of Section 337, without needing specific allocation. See 694 Op. at 8 n.5. VII. Issue 7: Patent Exhaustion (Barth Patents) A. Issue 7(a): The Licensed Samsung Memory Products Do Not Substantially Embody the Asserted Barth Patent Claims. 1. Memory Products Do Not Substantially Embody the Asserted Barth Claims

For exhaustion to apply, the article sold must substantially embody the claimed invention if the only reasonable and intended use of the article sold is to practice the claimed invention. Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 630-34 (2008). The licensed Samsung memory 82

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devices, DRAMs, do not substantially embody the asserted Barth claims. The asserted Barth claims are directed to steps performed by a memory controller in controlling a memory device. For example, claim 11 of the 405 patent is directed to a method of controlling a semiconductor memory device, including for example, providing a plurality of control codes to a semiconductor memory device. Though the claims reference a memory device, the asserted claims are directed at methods of controlling a memory device. The Barth patent makes this clear, separately illustrating memory controller (in red), which provides information to the memory device or DRAM (in blue) via the signal paths (in yellow).

A licensed Samsung DRAM is a memory device. It is controlled by a separate memory controller that, for example, provides the plurality of control codes to the DRAM. A DRAM does not control itself, nor does it provide control codes to itself. Because the licensed DRAMs do not control themselves, they cannot substantially embody or all but completely practice the claimed methods of controlling a memory device, as Quanta requires. Id. at 633. This case is very different from Quanta. There, the asserted patents claimed computer 83

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systems. Id. at 622-23. Intel sold its microprocessors to Quanta, which combined them with nonIntel memory devices and buses to practice the asserted patents. Id. at 624. The Court found that the Intel microprocessors alone all but completely practice the patent, and that [e]verything inventive about each patent is embodied in the Intel Products. Id. at 633. The Court further said that the memory and buses added to the Intel microprocessor to make the claimed memory system were standard components in such a system. Id. In contrast here, Respondents argue the reverse: that sale of the standard componentsthe memory devices that do not all but completely practice the patentexhausts the sale of the infringing memory controller. Respondents ignore that the memory controller performs the steps of the asserted claims. The Samsung memory devices cannot be said to all but completely practice the patent or embody [e]verything inventive about the Barth patents. Id. The memory devices do not issue commands or signals to control the memory devices, as required by the claimsthe memory controllers do. Respondents infringing memory controllers all but completely practice the inventive aspects of the asserted Barth claims. This conclusion is mandated by the ALJs claim construction and infringement findings in this Investigation and in the 661 Investigation, where the ALJ correctly

found that the asserted claims of the 353 Patent are method claims that lack a specific recitation of
memory device sampling circuitry and are directed at the controllers functionality. 661 ID at 27 (emphasis added). The claim construction and infringement portions of the ID in 661 were not reviewed, and were thus adopted in full by the Commission. A finding now that DRAMs embody the same claims would conflict with that prior decision. It is the controller that embodies, and infringes, the asserted Barth claims. The standard memory devices cannot substantially embody those claims as the Commission has construed them.

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2.

The Claim Language, Specification, and Record Evidence Demonstrate that Samsung Memory Does Not Embody the Essential Features of the Asserted Claims

The ALJs claim construction and infringement findings that the asserted Barth claims are directed to controller functionality and structure, and not memory, are supported by the claim language and record evidence. Indeed, as shown below, the significant and inventive operations of the asserted claims are found only in, or performed only by, controllers. Samsung memory thus cannot embody the essential features of those claims. a. The Claim Language Demonstrates that the Asserted Barth Patent Claims Are Directed to Controller Operations, Not Memory

The asserted Barth claims recite steps that must be performed by a memory controller and that cannot be performed by memory. For example, 109 patent claim 1 recites: 1. A method of controlling a memory device having a memory core, wherein the method comprises:

providing control information to the memory device, wherein the control information includes a first code which specifies that a write operation be initiated in the memory device; providing a signal to the memory device, wherein the signal indicates when the memory device is to begin sampling write data, wherein the write data is stored in the memory core during the write operation; providing a first bit of the write data to the memory device during an even phase of a clock signal; and providing a second bit of the write data to the memory device during an odd phase of the clock signal.
JX-5 at claim 1 (emphasis added). The claim recites a method of controlling and each of the claimed steps recites an action performed by the controller, namely, providing control information, providing a signal to the memory device, providing a first bit of the write data, and providing a second bit of the write data. A memory device cannot embody the features of this claim because the providing steps in 85

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109 patent claim 1 are not performed by the memory device. Every step recited in 109 patent claim 1 is performed by the controller. As a result, memory used with that controller cannot embody the essential features of this claim. Claims 12 and 20 of the 109 patent are similar. The asserted claims of the other Barth patents also recite steps performed by a memory controller. Claim 11 of the 353 patent and claim 11 of the 405 patent are directed to methods of controlling. They recite steps performed by a memory controller: (1) 353 patent claim 11, issuing a first write command, delaying for a first time period, and issuing the strobe signal; and (2) 405 patent claim 11, providing a plurality of control codes, delaying for an amount of time, and issuing an external strobe signal. A memory device does not embody the essential features of the asserted 353 and 405 patent claims because the recited steps are not performed by memory. b. The Specification Demonstrates that the Asserted Barth Claims Are Directed to Controller Functionality, Not Memory Structure or Operation

The Barth specification describes controller functionality. For example, the Summary and Objects of the Invention section describes a method and apparatus for performing data transfers within a computer system. That method includes: causing a controller to transmit control information on a bus. The control information specifies a data transfer operation and a beginning location of data to be transferred. The controller determines, after transmitting the control information on the bus, a desired amount of data to be transferred in the data transfer operation. The controller transmits over the bus a terminate indication at a time that is based on the desired amount of data and a beginning time of the data transfer operation. JX-3 at 3:65-4:8. The controller functionality of the inventions claimed in the asserted Barth claims is confirmed elsewhere in the specification. For example, the specification includes a section titled, CONTROLLER OPERATION, referring to Figure 8, which is a flow chart illustrating the protocol employed by a controller to initiate data transfers. JX-4 at 4:48-50. At step 802, the controller 86

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transmits a wakeup signal to the DRAM that will be involved in the data transfer operation (the target DRAM). At step 804, the controller transmits command control information to the target DRAM. JX-3 at 6:50-59. After describing the contents of the command control information sent by the controller, the specification refers again to the controller operation of Figure 8 and explains that the controller transmits the strobe signal over the BusCtl line in step 810 as well as other operations performed by the controller and illustrated there. JX-3 at 6:60-7:62. Recognizing the significance of the controller operation disclosed in the Barth specification, the ALJ highlighted Figure 8 in discussing the correct construction of the strobe signal/signal claim terms in the 661 Investigation. 661 Order 12 at 19. That claim construction was not reviewed by the Commission and the ALJ adopted, as all parties urged, the same claim construction here. In addition, one of the objects of the Barth invention is to provide a mechanism to decouple control timing from data timing. JX-3 at 3:24-25. This decoupling is achieved by the memory controller separately sending the strobe signal to the memory device some time after and distinct from a read command or a write command to indicate when data transfer, either reading or writing, is to begin. Id. at 7:28-30; 8:63-67. By using the strobe signal, the timing of control signals is decoupled from the timing of data transfer. Id. at 3:24-25. This can result in greater system efficiency. See id. at 8:15-12:17. The Barth specification labels as inflexible prior art systems in which the timing of data transfer is solely determined by a value stored in a register within the DRAM. Id. at 10:21-33. That distinction, between the controller-issued strobe signal and a value stored in a register in the memory device, is evidenced in the claims, which recite that the method of controlling includes issuing a strobe signal/signal. That distinction confirms that the result reached in Quanta does not apply here. The Court in Quanta concluded that [e]verything inventive about each patent is embodied in the [licensed] Intel Products. 553 U.S. at 633. That is not the case here. The Barth specification distinguishes the invention from the prior art by stating that in Barth the controller 87

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issues a strobe signal, while in the prior art, the DRAM stores a value in a register. JX-4 at 10:21-44. As a result, and as distinct from Quanta, the inventive features of the asserted Barth claims are not embodied in any licensed memory and there is no exhaustion. c. The Infringement Evidence, Arguments, and Analyses Confirm that the Asserted Barth Claims Are Directed to Controller Functionality, Not Memory Structure or Operation

Respondents experts confirmed that it is Respondents controllers, and not memory, that perform the steps recited in the asserted claims of the Barth patents. For example, Dr. Smith agreed that the write command is issued by the LSI and Seagate Accused Products. HTr. 913, 936 ([i]t issues a write command). He confirmed that the DQS signal is issued by the LSI and Seagate accused products, HTr. 914, and that the bidirectional data strobe (DQS) is transmitted externally, along with data. HTr. 911. He did not deny that the Accused Products perform the steps of providing a signal to the memory device, wherein the signal indicates when the memory device is to begin sampling write data, as recited in claim 1 of the 109 patent. HTr. 921. Jacob explained that in the Barth patents the controller transmits control information to the DRAM over signal paths, RX-6289C.0035, and that the strobe signal . . . is sent from the controller. RX-6289C.0009 (quoting the Barth specification). In Jacobs view, direct

infringement of any of the asserted Barth claims would require at least a memory controller, a DRAM, signal path, and a power supply. RX-6289C.0035. A controller must perform the steps because, [f]or writes . . . you need to indicate to the DRAM, to the memory device, when is an appropriate time to sample the data. HTr. 1053. Respondents experts have either acknowledged or not disputed that every limitation of claim 1 of the 109 patent is present in the Accused Products except for the even phase and odd phase features. CX-9543C.0205. For example, Smith conceded all such limitations (other than the phases) are met by the LSI Accused Products, including the providing a signal to the memory device, wherein the signal indicates when the memory device is to begin sampling write data. CX88

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9543C.0206-7. Similarly, Jacob did not contend that he had expressed non-infringement opinions based on claim features other than the phase features. CX-9543C.0138. The same was true in the 661 Investigation. For example, regarding the claim 1 preamble, nVidias expert testified that nVidias controllers do implement a method of controlling a memory device having a memory core. 661 CX-440C at Q/A 323. He similarly confirmed that nVidias controllers, and not memory, perform other steps recited in 109 patent claim 1. He testified that: [t]he accused nVidia DDR memory controllers do provide control information to the memory device wherein the control information includes a first code which specifies that a write operation be initiated in the memory device, (661 CX-440C at Q/A 323); and the accused nVidia controllers, provide a first bit of the write data to the memory device during an even phase off [sic, of] a clock signal and provide a second bit of the write data to the memory device during an odd phase of the clock signal. CX-440C at Q/A 323.18 In this Investigation, Respondents engineers agreed that the controllers, not memory, provide the claimed signal (the DQS strobe signal, which indicates when sampling will occur). For example, LSI engineer Larry King drew a diagram illustrating that the Accused Products issue DQS (strobe). See, e.g., King (LSI) Dep. 95:17-97:3; CX-6702. Mr. Lau, an LSI engineering director, agreed that all of the memory interface PHYs output DQ, DQS, clock, and address and command signals. Lau (LSI) Dep. 70:20-23 and Seagate engineers provided similar testimony.

This was also the case in the 661 Investigation, where nVidias expert and engineers testified Respondents expert similarly testified that nVidias controllers perform the steps of the other asserted 109 patent claims. CX-440C at Q/A 328 (109 claim 2); Q/A 339 (109 claim 4); Q/A 341 (109 claim 5); Q/A 343 (109 claim 12); Q/A 346 (109 claim 13); Q/A 350 (109 claim 20); Q/A 353 and 355 (109 claim 21); and Q/A 357 (109 claim 24). 89
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that nVidias controllers, and not memory, provide the claimed signal, called the DQS strobe signal, that indicates when sampling will occur. In particular, nVidias expert testified that there was no doubt that nVidias controllers issue a strobe signal and that [t]he memory controllers at issue do send a DQS signal. 661 RX-1170C at Q/A 42. nVidias David Reed testified that [t]he DQS signal on a write operation is required to be launched by our memory controller so that it is centered in the center of the valid data window of our launch data. 661 RX-1172C at Q/A 37. nVidias memory controllers sample the data on the edges of the DQS signal. 661 CX-487C at 283:3-7. nVidias Barry Wagner testified that nVidias controllers provide a strobe to the DRAM. 661 CX440C at Q/A 239 (citing 661 CX-491C at 210:20-211:3; 211:6-12 and 14-17). And nVidias Brian Angell testified that nVidias controllers issue the DQS signal. RX-1174C at Q/A 23. As with the asserted 109 patent claims, Respondents experts confirmed or did not deny that the claimed operations are performed by the Respondents controllers. With respect to 353 patent claim 11, Smith testified that LSIs ACP products issue a first write command, CX-9543C.0148, and delay after issuing the write command before issuing the strobe signal. CX-9543C.0171. Similarly, when specifically asked, Jacob declined to offer an opinion as to whether the Accused Products issue a first write command, CX-9543C.0147, or delay for a first time period. CX-9543C.0171. Similarly, nVidias expert in the 661 Investigation confirmed that the nVidia controllers performed the steps of 405 patent claim 11 and 353 patent claim 11. CX-440C at Q/A 253, 259, 278, 283, 291, 293; RX-1170C at Q/A 42. Other record evidence makes clear that it is Respondents controllers that perform the steps of the Barth claims, not the memory used with those controllers. See CX-9543C.0116-0139, 205-218 (addressing infringement of the asserted 109 patent claims and providing evidence including testimony of Rambuss expert, Respondents documents describing its controllers, memory datasheets and JEDEC specifications); CX-9543C.0116-187 (addressing infringement of the asserted 353 patent claims and providing similar evidence as for the 109 patent claims); and CX90

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9543C.0116-0139, 187-205 (addressing infringement of the asserted 405 patent claims and providing similar evidence as for the 109 patent claims). As a result, Respondents cannot show that Samsung memory, or any memory, embodies the essential features of the asserted Barth claims. Moreover, while the asserted Barth claims recite a memory device, the claimed operations of the methods of controlling are indisputably performed by the controller. This situation is distinct from the facts in Quanta. There, Quanta purchased Intel Products that were licensed to practice the LGE Patents and combined them with standard parts into its own products. Here, relative to the asserted controller claims, the purchased productnamely, the Samsung memoryis the standard part. Respondents do not purchase their controllers from Samsung, and Samsung memory is not licensed to perform the asserted claims of the Asserted Patents. The fact that a Respondent controller may be connected to Samsung memory when that controller performs the claimed methods does not make Respondents controllers licensed by virtue of Samsungs sale of memory. This distinction is fatal to Respondents exhaustion argument. d. The Lack of Knowledge of How Memory Operates With Respect to the DQS Signal Demonstrates that the Memory Does Not Embody the Claimed Strobe Signal/Signal controllers issue the DQS strobe signal

While Respondents confirmed that LSI

in a write operation, Respondents engineers testified that they do not know and do not care how memory uses the DQS strobe signal. This confirms that memory cannot embody the functionality of the claimed strobe signal/signal. For example, LSIs engineering director William Lau testified he did not know for certain how the memory devices work. See Lau (LSI) Dep. 26:2-6 (Q. Okay. Are the -- are these memory devices compliant with JEDEC standards? A. Supposed to be. We don't make memory chips. . . . I don't know.);

The lack of knowledge these witnesses,

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among others, had regarding memory devices, when taken in view of their vast knowledge of memory controllers, shows that memory cannot embody any essential feature of the Barth claims. In the 661 Investigation, Respondents expert opined that the asserted Barth claims were not infringed, stating that the NVIDIA products do not practice any of the asserted claims of the Barth patents. 661 RX-1170C at Q/A 18. At the same time, he testified that he did not know the internal operation of the memory devices, (661 RX-1170C at Q/A 26), and that NVIDIA does not manufacture memory devices, and its engineers do not know how the memory devices operate at any more than a general level. 661 RX-1170C at Q/A 35 and 37. Respondents expert showed that memory cannot embody any essential feature of the Barth claims when he asserted that those claims are not infringed while also testifying that he did not know the internal operation of the memory.

Respondents stated lack of knowledge on the operation of the memory in the face of 92

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acknowledging that the controller issues the DQS signal confirms that the memory cannot perform the functions of the claimed strobe signal/signal. Respondents exhaustion argument thus must fail. B. Issue 7(b): No Evidence Demonstrates that the Samsung Memory Purchased by was ever Located in the U.S. before Incorporation into Products Overseas, or that took Possession of the Memory in the U.S. was

There is no evidence demonstrating that the Samsung memory purchased by

ever located in the U.S. prior to incorporation into products overseas, nor is there evidence that actually took possession of the memory in the U.S. Instead, Garmin of a witness with no personal knowledge, . That one purchase order is the only evidence alleged presented on the the conjecture

Samsung memory in the United States, and is the only evidence the ALJ had the burden of establishing that the

cited. RIB at 272; ID at 337 (citing RX-5140).

allegedly exhausting sale took place within the U.S., but offered only speculation based on a single line in a purchase order that contradicts all other evidence, as well as common sense. The one purchase order is for Samsung memory and has a special notation of FOB San Francisco. RX-5140. witness had no personal knowledge of whether Samsung memory

was physically picked up in San Francisco pursuant to the purchase order, or even if Samsung has a warehouse in San Francisco. His written witness statement was carefully worded to rely on some

Significantly,

provided another
19

, RX-5141C, for a more recent sale of thus failed to establish that all of the

Samsung memory, and it has no

sales are in the U.S., even if its strained interpretation of a single invoice is believed. In any event, these documents are merely purchase orders, and occurring or the orders actually being filled. The Federal Circuit has rejected reliance on the term FOB as a formalistic approach, that a sale occurs at a single point at which some legally operative act took place. Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353, 1369-70 (Fed. Cir. 2008). 93
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presented no actual evidence of shipments

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chose to bring a witness with no personal knowledge and rely on a single document to argue for a legalistic interpretation that defies common sense. In any event, the actual terms and conditions that apply to purchase orders clearly state that the sale takes place purchase order of Samsung

. The terms and conditions that accompany memory state that the contract, i.e., the sale

RX-5141C.0008 (emphasis added). contract for the purchase of Samsung memory makes clear the sale takes place VIII. Issue 8: Standing (Dally Patents) The ALJ correctly found that Rambus has standing to assert the Dally patents. ID at 326-30. Rambus acquired all substantial rights in the Dally patents from MIT, which acquired its rights from the inventor, Dr. William Dally.20 As Rambus demonstrated, the September 1996 subcontract

agreement between MIT and the University of North Carolina - Chapel Hill (UNC) does not grant UNC any rights to the Dally patents. ID at 327-30; CIB at 3-7. Even if this were not true, Rambus would still have standing as a bona fide purchaser for value of rights to the Dally patents. Further, to the extent that UNC ever believed it had rights to the Dally inventions, it slept on those rights and laches applies, barring any claim by UNC. A. Issue 8(a): Rambus Is a Bona Fide Purchaser Under 35 U.S.C. 261

Even assuming, arguendo, that UNC obtained rights to the Dally patents as a result of the UNC subcontract, any assignment is void under 35 U.S.C. 261 because Rambus is a bona fide purchaser for value of rights to the Dally patents. FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568, 1573 (Fed. Cir. 1991) (Section 261 provides that the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark
20

Dally assigned his application and subsequent applications to MIT. CX-4008. In 1999, MIT exclusively licensed the Dally Patents to Chip2Chip Inc., later renamed Velio Communications, Inc. CX-4012C. Velio assigned the agreement to Rambus in 2003. CX-4013C. In 2010, Rambus obtained all substantial rights in the Dally patents. CX-4016C.0003. 94

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Office by the dates specified in the statute). Specifically, any assignment to UNC is void under 261, because: 1) Rambus purchased its rights to the Dally patents for valuable consideration; 2) Rambus did not have notice of the alleged prior assignment to UNC; and 3) UNC did not record an assignment in the PTO within three months from its date or prior to the date of Rambuss purchase.21 See 35 U.S.C. 261. There is no question that Rambus purchased its rights to the Dally patents for valuable consideration. Rambus acquired the license agreement between MIT and Chip2Chip/Velio through an Asset Purchase Agreement. CX-4013C. And under an Amended Agreement, Rambus continues to pay licensing fees and royalty payments to MIT in Consideration for Grant of Rights. CX4016C.0008; CX-4342C. There is also no question that UNC did not record its alleged assignment in the PTO within three months from the date of its acquisition or before the date of Rambuss purchase. Indeed, UNC waited until October 2011 to record its alleged assignment, more than fourteen years after the assignment allegedly occurred, almost eight years after Rambus acquired any rights to the Dally patents, and only after Respondents raised the UNC subcontract in support of their standing defense. HTr. 2121. Also, UNC is not listed as an assignee on the face of the patents. Even UNCs representative, Timothy Quigg, admitted that the face of the 857 patent, one of the Dally Asserted Patents, indicates that MIT owns and is the assignee of that patent. HTr. 2127-128. The only element of 261 that Respondents challenged in their Posthearing Brief was notice. RIB at 107-110. But Rambus did not have notice of the alleged assignment to UNC. CX-

10768C.0002-3. To the contrary, until UNC entered into the July 2011 agreement with certain Respondents, UNC had not asserted any rights to the Dally patents. As Rambuss V.P. of Licensing, Jared Smith, testified, Rambus was not aware of any subcontract between MIT and UNC at the time MIT recorded its assignment in 1997 (CX-4008), which creates a presumption of validity as to the assignment and places the burden to rebut such a showing on one challenging the assignment. SIRF Tech., Inc. v. ITC, 601 F.3d 1319, 1328 (Fed. Cir. 2010). 95
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that Rambus acquired rights in the Dally patents from Velio, and at no point in time did Velio, MIT, or UNC inform Rambus that UNC had or alleged to have an ownership interest in the Dally patents. CX-10768C.0003. Respondents arguments do not show that UNC had a claim to the Dally patents, let alone that Rambus had notice of it. Respondents contend that Rambuss involvement in prosecution of the Dally patents gave Rambus notice of UNCs claim. RIB at 109. Not only do Rambuss prosecution activities fail to evidence a UNC claim to the Dally patents, that activity started after Rambus acquired rights in the patents. It does not provide the pre-acquisition notice required to defeat a bona fide purchaser defense. Heidelberg Harris, Inc. v. Loebach, 145 F.3d 1454, 1459 (Fed. Cir. 1998). Likewise, the Fast Links Project did not provide notice of an assignment of the Dally patents to UNC. Respondents point to the public website for the Fast Links Project. RIB at 110. That website does not identify the UNC subcontract or give any hint that UNC had any rights or potential rights in anything. At most, it identifies Poulton, Tell, and Palmer as being at UNC and identifies the DARPA contract with MIT. See RX-2404C.0001. One document says that [t]he transmitter section of the chip is essentially that described in our [August 1996] Hot Interconnects '96 paper. RX2403C.0002. Instead of providing notice of a claim by UNC, the earlier date of the paper confirms that the Dally inventions were developed before the September 1996 UNC subcontract, not under it. Respondents also point to a Velio acquisition document they say identifies Poulton as a key participant, acknowledges that relevant technical work was performed while [Dally and Poulton were] at UNC, and specifically draws Rambuss attention to the DARPA contract. RIB 109. But the document does not mention a UNC subcontract. It simply states that

RX-4691.161. This document hardly put Rambus on notice of any claim that UNC says it had to the Dally patents. In addition, in the same document,

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. RX-4691C.0062, 056, and 113. Based on the document, there was nothing to suggest that UNC had any interest in the Dally patents and, thus, it too failed to put Rambus on notice of any such claim. The other evidence Respondents raise likewise fails to prove that Rambus was on notice of UNCs alleged rights in the Dally patents. RIB at 109-110. Without exception, it fails to indicate that UNC had any rights in any of Dallys work, let alone indicate that Rambus was on notice of such rights. The fact that Mark Horowitz, a founder of Rambus, was thanked by Dally of MIT (assuming that Horowitz even knew he had been thanked) does not mean that he or Rambus knew UNC had any claim. One of the documents Respondents rely on for this point, RX-2772C.009, reports a

conversation Dally had with Horowitz in April 1996, six months before the UNC subcontract. It does not and cannot show that Horowitz, Rambus, or anyone had knowledge of UNCs supposed rights under the later subcontract. For these reasons, Rambus is a bona fide purchaser. B. Issue 8(b): UNCs claim of ownership is barred by laches

UNCs delay in asserting its alleged rights in the Dally patents should be barred by laches. CIB at 8-10. Laches is an equitable defense to claims based on an unreasonable and unexcused delay. Laches occurs where there has been an (1) unreasonable and unexcused delay in bringing the claim, and (2) material prejudice to the defendant as a result of the delay. Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d. 1157, 1161 (Fed. Cir. 1993). The period of delay is measured from when the claimant had actual notice of the claim or would have reasonably been expected to inquire about the subject matter. Id. UNC identified its representative Poulton as key personnel under the UNC subcontract. RX-2023C. Given Poultons extensive involvement and work under the UNC subcontract in that role, UNC had actual notice of or reasonably should have inquired into the patent applications filed on the Dally inventions around 1996-1997. Indeed, Poulton told others at the time that Dally and MIT held the patents in the Dally inventions. CX-6683C.0004. Respondents assertion now that 97

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UNC owns the Dally patents comes over fourteen years after UNC knew or should have known of its alleged rights. This delay is far longer than the six-year delay period that in similar circumstances creates a presumption of laches. See, e.g., Serdarevic v. Advanced Med. Optics, Inc., 532 F.3d 1352, 1358 (Fed. Cir. 2008) (stating that a delay of more than six years on inventorship creates a presumption of laches such that the putative inventor could not bring a claim challenging inventorship). UNCs fourteen-year delay in asserting its alleged rights in the Dally patents is unreasonable and unexcused. Rambus and MIT have been severely prejudiced by Respondents belated claim that UNC owns the Dally patents. Even after being informed by Respondents of its potential rights in the Dally patents, UNC never contacted any affected party about those potential rights. UNCs representative Quigg admitted that UNC never informed MIT or Rambus that UNC believes it has rights in the Dally patents. HTr. 2137. Rambus has invested significant money in prosecuting and exploiting the Dally patents since at least 2004. Rambus has paid licensing fees and royalties to MIT and has invested money in licensing its technology and these patents to its customers. CX-9547C.0008; CX4342C.0009-11. For UNC, or Respondents, to come in at this late date, years after Rambus and MIT have made these significant investments, is highly prejudicial. Thus, any claim that UNC owns the Dally patents should be barred by laches. Instead of addressing UNCs delay, Respondents wrongly blame Rambus and MIT. RIB at 107. Respondents contend that the UNC subcontract required MIT to inform UNC of any

inventions conceived, invented, authorized, or reduced to practice under the UNC Subcontract, but did not identify any provision in the UNC subcontract containing such a requirement. RIB at 107-08; RX-2023C. Instead, Respondents rely on Quiggs bare assertion that it was MITs responsibility to tell UNC about possible rights that we would have in an invention that did not involve our staff or our faculty. HTr. 2104:1-11; RIB at 108. Even if that obligation existed, however, it would not have required a separate disclosure to UNC because Poulton from UNC was involved as key 98

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personnel and was aware of the actions taken under the subcontract, as well the applications filed on the Dally inventions. RX-2891.0004; HTr. 1743:2-4, 1747:16-1749:12, 1696:10-16. CX-6683.0004. Instead, UNC had an obligation to keep itself informed of its own activities, something it now readily concedes it did not do. Article 11.1.1 of the UNC subcontract required UNC to provide a final patent report to MIT. RX-2023C.0008-09. There is no evidence that UNC provided a report to MIT indicating that it had rights to work on the Dally inventions. If UNC thought it had rights or even questioned whether it might, it should have raised that with MIT. It did not. When asked at the hearing about that provision and whether it would have been in UNCs best interest to know what patents it owned as a result of the subcontract, all Quigg could say is that [i]n retrospect, yes. HTr. 2113:12-2114:20. In retrospect, it is clear that during the subcontract UNC knew about the Dally patents and agreed it had no rights. Respondents did not dispute that Poulton was the only UNC person identified as key personnel under MITs DARPA proposal, the DARPA award to MIT, and the UNC subcontract. See RX-2015.0048; RX-2306.0030; RX-2023.0004. In his witness statement, Poulton testified that key personnel are the people principally responsible for carrying out the requirements of the contract. RX-5422C.0009. While Poulton changed his testimony on cross examination, testifying that he was only responsible for the technical part of the subcontract, doing the research and publishing the results, the fact remains that UNC was aware of the Dally inventions and did nothing at the time to claim any rights. HTr. 1707:7-20. Given that awareness, and UNCs long and unreasonable delay in coming forward to assert its alleged rights, any interest that UNC had in the Dally patents should be barred by laches.

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