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today via the Office electronic filing system (EFS-Web) in accordance with 37 CFR §1.6 (a)(4). Date: June 25,2012 Signature: /Stephanie Dominguez/ Printed Name: Stephanie Dominguez
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES In re Inter Partes Reexaminations of: Farmwald et al. Patent No.: 6,266,285 Issued: July 24,2001 For: METHOD OF OPERATING A MEMORY DEVICE HAVING WRITE LATENCY Appeal No.: 2012-000168 Control No.: 95/001,106 Confirmation No.: 4245 Control No.: 95/001,131 Confirmation No.: 1154 Art Unit: 3992 Examiner: Ovidio Escalante
Board of Patent Appeals and Interferences United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
THIRD PARTY REQUESTER'S COMMENTS TO PATENT OWNER'S REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 41.79
I hereby certify that this paper (along with any paper referred to as being attached or enclosed) is being transmitted today via the Office electronic filing system (EFS-Web) in accordance with 37 CFR §1.6 (a)(4). Date: June 25,2012 Signature: /Stephanie Dominguez/ Printed Name: Stephanie Dominguez
COMMENTS TO RAMBUS'S REQUEST FOR REHEARING Third Party Requester, Micron Technology, Inc., ("Requester" or "Micron") submits
these Comments, pursuant to 37 C.F.R. § 41.79(c), to the Request for Rehearing submitted by Patent Owner Rambus, Inc. ("Patent Owner" or "Rambus") in the above captioned matter. A. Response to "Claim 15 Is Not Anticipated by Bennett" 1. Response to "Bennett Does Not Disclose Sampling Data After a Programmable Number of Clock Cycles" a. Response to "The Number of Wait Lines of Bennett Is Not the Claimed Value" The crux of Rambus's argument in this section is that the Board erred in reversing the confirmation of claim 15 because it limited its analysis to two example configurations in
Bennett. Rambus's Request for Rehearing at 2, 3. Rambus urges that "[t]he Board's arbitrary selection of some example configurations of Bennett over others is improper." Id. at 2. Firstly, the Board did not arbitrarily select some example configurations of Bennett over the others; the Board specifically stated that "Rambus's and the Examiner's reliance on Figure 35 (Rambus Reb. Br. 14; RAN 41), showing a read operation, Respondent's is not helpful, whereas Decision at 14
reliance on Figure 36, showing a write operation, is persuasive."
(emphasis added). Thus, the Board's determination was not based on "arbitrary" selection, but rather based on a proper review of the evidence provided during the reexamination proceeding. Secondly, Rambus ignores that only a single embodiment in a reference needs to disclose the claim in order to anticipate. Athrocare Corp. v. Smith & Nephew Inc., 406 F. 3d 1365, 1372 (Fed. Cir. 2005); see also, Tyler Refrigeration v. Kysar Indus. Corp. 777 F.2d 687, 688, 690 (Fed. Cir. 1985). Based on its review of the prior art, the reexamination prosecution history, and all appeal briefs, the Board determined that "in all configurations for the Figure 25a-h
embodiment, the number 1 always results in a two clock cycle delay for 'DATA' after a write request and the programmable number 3 always results in a one clock delay for 'DATA' after a write request." Decision at 14. Thus, the Board correctly determined that Bennett discloses a number of clock cycles that transpires before sampling data in at least the embodiment represented by Figures 25a-h.
Furthermore, the premise of Rambus' s argument that the same outcome must occur in every single one of Bennett's configurations in order to show anticipation results in the absurd conclusion that Bennett's vast disclosure would provide virtually no anticipatory disclosure due to its high configurability. See Bennett at 39:18-20 (stating that at least 31,045 configurations exist). In each configuration, the effect of changing one configuration parameter can be impacted by the value of other configuration parameters, which is precisely why the description of Figures 25a-h provides express values for certain configuration parameters. Bennett 86:49-87:58. When these configuration parameters are known, as Bennett expressly provides for Figures 25a-h, the effect of using a 1 or a 3 for the sixth parameter is also known. The fact that the sixth parameter may operate differently in some of Bennett's other 31,000 plus configurations is legally
irrelevant to the express and unambiguous disclosure of how the sixth parameter operates within the confines of Figures 25a-h. Athrocare at 1372. Rambus has provided insufficient grounds for a rehearing; the Board properly reviewed the prior art, the reexamination prosecution history, and all appeal briefs and, accordingly, did not overlook or misapprehend the disclosure and teachings of Bennett. Therefore, the Board should deny Rambus's Request for Rehearing on at least this issue. b. Response to "The Board Ignored the Settled Meaning of 'Representative'" Rambus urges that a rehearing is proper because the Board erred in not addressing Rambus's purported evidence regarding the interpretation of the claim term "representative." Rambus's Request for Rehearing at 6. Rambus merely repeats the arguments it made during the reexamination proceeding. Id. The Board has already decided upon those arguments and
determined that Micron's arguments were persuasive. Rambus's reliance on Tehrani is unpersuasive since Tehrani was decided under the now repudiated Texas Digital principals of claim construction. See Tehrani v. Hamilton Med., Inc., 331 F.3d 1355, 1361 (Fed. Cir. 2003) (citing Tex. Digital Sys., Inc. v. Telegenix, Inc. 308 F.3d 1193, 1203 (Fed. Cir. 2002)).1 The meaning that "representative" had in Tehrani provides little, if any, probative value for how the term should be construed for the '285 patent. Instead, looking
I Rambus's assertion that Tehrani was cited with approval is misleading, as it was cited for approval for the determination that different terms can have the same meaning depending on the evidence rather than approval for the reasons that Rambus relies on the case.
at the specification of the '285 patent the meaning of "representative" would not be as limited as Rambus suggests. In fact, the '285 patent describes configurable parameters as representative even when the same stored configuration values can result in different processes depending on other
For example, when discussing the 4-bit BlockSize parameter the '285
patent states that if the first bit is a zero then the block size is the binary value of the remaining three bits. '285 patent at 11:38-40. Yet, if the first bit is a one then the block size is a binary power of two of the remaining three bits. Id. at 40-42. In short, the first bit of the BlockSize parameter determines the type of encoding used to calculate the block size from the remaining three bits. This means that the same 3-bit pattern can represent two different block sizes depending on the value of the first bit. Id. As an example, the 3-bit pattern of 011 can represent a block size of either 3 or 64 depending on whether the first bit is a zero or one respectively. In addition,
the '285 patent also mentions that other block size encoding schemes could be used as well. Id. at 59-60. Thus, the block size represented by the value stored for the last three bits of the
BlockSize parameter changes depending on if the value of the first BlockSize bit is a one or a zero. This is no different than Bennett, where the wait time represented by the value stored for parameter VI may change depending on the value of other
the three bits of configuration configuration parameters.
Furthermore, Rambus reliance on the order from Rambus v. Hynix Semiconductor, Inc. 628 F. Supp. 2d 1114, 1134 (N.D. Cal. 2008) ("Hynix II Order"), is misplaced. First, Rambus
fails to mention that the Order is based on a summary judgment standard looking at Bennett in a light most favorable to Rambus. Therefore, Judge Whyte's analysis that Bennett's configuration parameter VI would not anticipate under a summary judgment standard is not determinative of whether Bennett would anticipate under the standard in reexamination. Second, the statement
relied on by Judge Whyte to support his finding -- that "[t]he Bennett inventors never referred to Parameter VI as embodying a mechanism for controlling the write latency of the Versatile Bus interface's memory operations" -- is improper. The Federal Circuit recently overturned another
district court for improperly reading a purpose requirement into a limitation reciting "identifying information represents the number of recording planes." Toshiba Corp. v. Imation Corp., et al., No. 2011-1204, Slip Op. at 17 (Fed. Cir., Jun. 11,2012). 4 Just as in the Toshiba case, the claims
here recite structural elements and therefore the purpose of Bennett's configuration parameter VI is irrelevant since configuration parameter VI discloses the structural elements of the claim. Finally, even if the Board did accept Rambus's unduly narrow construction, such
construction is irrelevant in the context of Bennett. The Board made factual findings that with the given configuration parameters of Figures 25a-h that a value of 1 for the sixth configuration parameter "amounts to four total clock cycles, or two clock cycles after a function command" and that a value of 3 for the sixth parameter "amounts to three total clock cycles, or one clock cycle after the write command." Decision at 8. Thus, the exact amount of clock cycle delay would be known if the value of the sixth configuration parameter value were known. This correlation between the value of sixth configuration parameter and the amount of delay
anticipates the claim even under Rambus' s improper construction. Thus, Rambus has not provided Accordingly, sufficient grounds for a rehearing on this issue.
the Board did not overlook or misapprehend
in its decision that claim 15 is
anticipated by Bennett. 2. Response to "Bennett Does Not Disclose the Claimed Memory Device" Rambus urges that a rehearing is proper because the Board erred in finding that Bennett discloses the claimed memory device. Rambus's Request for Rehearing at 7. Rambus continues to make the same arguments it made during the reexamination proceeding. Id. at 7-14. Rambus has not provided any new arguments that warrant a rehearing on this issue. The Board had properly reviewed the prior art, the reexamination prosecution history, and all appeal briefs in this reexamination proceeding and had addressed the same arguments in the several other related reexamination proceedings. Accordingly, the Board did not overlook or misapprehend in its
decision maintaining the Examiner's finding that Bennett disclosed the claimed memory device. Once again Rambus focuses on Bennett's disclosure of 232 addresses and various
Requester statements as evidence that Bennett includes multiple chips. Id. at 8. What Rambus continually ignores is that no party disputes that Bennett discloses a system that includes multiple chips. For example, Micron cited to Figure 38 of Bennett in its briefing that provides an unambiguous example of multiple memory devices connected to the same versatile bus. Bennett at Figure 38 and 97:8-10. However, as Micron has explained in numerous responses and the appeal briefs, although Bennett discloses a system that contains multiple user memory devices,
Micron relies on Bennett's disclosure about the structure, configuration, and operation of an individual user memory device to read on the claims.
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MJ~N1M.'W1( [)f,~~~~:~~~ 38020 "'''''''''''',,, DEVICE
A single user memory device reads on the claims of the '285 patent even though it may only hold a subset of the entire physical memory of Bennett. There is no requirement in the claims that the memory device holds the entire memory system it is connected to. Further, Rambus's argument regarding Bennett's reference to "memories" is unavailing as there is no dispute that Bennett discloses multiple memory devices in the system. Rambus's Request for Rehearing at 10. Rambus appears to ignore the actual basis of this rejection that relies on a single one of Bennett's memory devices and instead avoids this issue by arguing against its own madeup rej ection. Rambus also repeats its argument that the claims of the '285 patent are not limited to a single chip. Id. However, the Board has already addressed the single-chip issue (Appeal No. 2010-011178, Ctrl. no. 901010,420, Decision on Appeal mailed Jan. 12, 2011) and Rambus has not provided sufficient grounds for a rehearing on this issue. In addition, even if the claims required a single chip, Rambus provides no persuasive argument to ignore the explicit disclosure in Bennett that a user memory device is a single chip. Bennett at Figure 1, 12:29-32, and 35:59-62. In fact, Rambus's reconsideration brief concedes that Bennett anticipates a single chip by arguing that "[t]his disclosure merely indicates that the VBI could be built with memory. Bennett makes clear that the VBI is normally but not always implemented on the same chip substrate." Rambus's Request for Rehearing at 10. There is no 6
reliance on inherency for this disclosure so there is no requirement that a user is "always" on a single chip as Rambus contends. By admitting that Bennett sometimes discloses the VBI and memory are on a single substrate, Rambus has conceded that Bennett anticipates a limitation requiring a single chip. Finally, with respect to Rambus's arguments on the '169 Decision, Rambus alleges that Micron provided no evidence in that proceeding regarding the meaning of Bennett's large slow and small fast RAM. Rambus's Request for Rehearing at 11. This statement once again appears to willfully ignore the facts. As evidence Micron relied at least on the disclosure of Bennett, Wicklund and iRAM. See Appeal No. 2012-000169, Control Nos. 95/001,107 and 95/001,132, Micron Cross-Appeal Brief at 14. In contrast, Rambus's own evidence amounted solely to the declaration of its expert. However, as Micron showed in its brief, the declaration of Rambus's expert contradicted the express disclosure of Bennett. Therefore, it is Rambus and not Micron who has failed to provide any probative evidence. B. Response to "Claim 16 Is Not Anticipated
Rambus urges that a rehearing is proper because the Board erred in its Decision by improperly shifting the burden onto Rambus. Rambus's Request for Rehearing at 14. Rambus argued: In the Decision, the Board said that "Rambus' s contentions do not explain how storing a value in response to a set register request as required by claim 16 is patentably distinct from serially shifting bits in Bennett." Decision at 14. This improperly shifts the burden to Rambus. In addition, beyond this single sentence the Board provides no reasoning as to how Bennett anticipates claim 16. And, the Board did not address the evidence presented by Rambus showing otherwise. Id. Contrary to Rambus's argument, the Board specifically pointed out that Rambus failed to show error in "the Examiner's implicit finding that Bennett's system employs a request and a responsive storing." Decision at 15. As the Examiner had found that Bennett's system discloses the additional features of claim 16, then it is Rambus' s burden to rebut that finding. See In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (if a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments andlor evidence to rebut the prima facie case). Therefore, the Board did not improperly shift the burden onto Rambus and Rambus cannot show that the Board erred in this finding. The Board properly reviewed the prior art, the reexamination prosecution history, and all appeal briefs and, accordingly, did not overlook or misapprehend the disclosure and teachings of 7
Bennett. Moreover, Rambus raises no new compelling issue that warrants a rehearing but instead represents its previous arguments with the bare allegation that the Board was wrong. Thus, Rambus has not provided sufficient grounds for a rehearing on this issue. Accordingly, the Board did not overlook or misapprehend in its decision that claim 16 is anticipated by Bennett. C. Response to "Micron Does Not Have Standing to Address Issues Raised by
Rambus continues to argue that Micron does not have standing to appeal issues proposed by another third party requester. Rambus's Request for Rehearing at 15-16. However, the Chief Administrative Patent Judge (Judge Smith) for the BPAI has already decided Micron's standing to raise these issues within several related reexaminations. See, e.g., Decision on Petitions issued Jun. 17, 2011. Importantly, 35 U.S.C. § 315 provides that a third party requester may appeal "any final decision favorable to the patentability of any original or proposed amended or new claim of the patent" and Judge Smith has repeatedly held that "the origin of a patentability issue
is immaterial to a requester's right to raise the issue on appeal." Decision on Petitions issued
Jun. 17, 2011 at 3 (emphasis added). Therefore, Micron is permitted to appeal issues t that did not originate in Micron's reexamination request. Rambus also contends that a Decision by OPLA merging Control Nos. 95/001,697
15, 2012 supports
misinterprets the relevant statutes and sections of the MPEP and is merely relying on the same arguments argued and decided upon in this and related reexamination proceedings. In particular, the March 15, 2012 Decision in Control Nos. 95/001,697 and 95/001,714 cites to 35 U.S.C. §
314(b) and Rambus again attempts to argue that this statute limits a third party requester's comment rights to issues raised in that third party requester's reexamination request. However, § 314(b )(2) explicitly provides that a third party requester may address any issue raised in a patent owner's response or the Office Action and the Acting Chief Administrative Patent Judge (Judge Moore) has further clarified that the origin of that issue is immaterial. Decision on Petitions issued Jun. 17, 2011 at 3; see also, Control Nos. 95/000,183 and 95/001,112, Decision on
Petition issued Nov. 19, 2010 at 4. Likewise, Rambus suggests that the Office's reliance on MPEP § 2674 in the March 15, 2012 Decision supports its position, but the Board has already clarified the intent ofMPEP § 2674 in a related proceeding: After further review and consideration of this matter, the Board finds that the relevant statutes, rules and MPEP sections quoted above are intended to include 8
all proposed rejections presented by the Examiner, patent owner or requester(s) during prosecution of a single unmerged reexamination proceeding or plural merged reexamination proceedings. The language in MPEP § 2674(B) is intended to differentiate between issues
first raised during prosecution and issues first raised on appeal, and not between multiple requesters in a merged proceeding.
Control Nos. 95/001,026 (emphasis added). To the extent these decisions from OPLA conflict with the determination by Judge Smith or Judge Moore, they must be dismissed. Nonetheless, Micron has proposed and adopted the rejections even if the decisions were relevant, and 95/001,128, Decision on Petition issued Feb. 15, 2011 at 4-5
initially raised by Samsung during this
proceeding. In fact, Micron has contested the patentability of the claims over those rejections at every available opportunity. See e.g., Micron's Comments on Office Actions and Appeal Briefs. Therefore, Micron would be able to appeal the issues initially raised by Samsung even if the March 15,2012 decisions were part of this proceeding (which they are not) and were proper in light of Judge Moore's finding on § 314(b). Rambus merely repeats the same "standing" arguments as raised throughout this and related reexamination proceedings even though Judge Smith has explicitly stated that this and
specific issue has been repeatedly reviewed and decided upon. See Control Nos. 95/001,026
Decision on Petition issued Jun. 10,2011 at 5 (stating "the Board has addressed this
issue on several occasions in the past few months and decided that Micron, in its briefs, was permitted to address the rejections and proposed rejections that were before the Office at the time of the RAN."). Accordingly, Rambus's Request for Rehearing must be denied as Rambus cannot provide any reasons supporting its arguments that the Board has misapprehended or overlooked its
decision allowing Micron to appeal issues initially raised in Samsung's reexamination request. II. CONCLUSION For at least the reason set forth above, the Requester respectfully submits that Rambus
has not shown sufficient grounds for their request for rehearing. Requester has concurrently submitted any necessary fees, however if a fee payment is missing or defective, please charge the required fees to Novak Druce and Quigg deposit account no. 14-1437.
Respectfully submitted, /Tracy W. Druce/ Novak Druce + Quigg LLP Donald 1. Quigg Reg. No. 16,030 Tracy W. Druce Reg. No. 35,493 James P. Murphy Reg. No. 55,474 Attorneys for Micron Technology, Inc. NOVAK DRUCE + QUIGG LLP 1000 Louisiana St. 53rd Floor Houston, Texas 77002 P: 713-571-3400 F: 713-456-2836
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