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July 12, 2012 VIA ELECTRONIC FILING The Honorable Lisa R. Barton Acting Secretary U.S. International Trade Commission 500 E Street, SW Washington, DC 20436 Re: Certain Semiconductor Chips and Products Containing the Same, Inv. No. 337-TA-753

Dear Acting Secretary Barton: On behalf of Respondents, enclosed for filing is a public version of Respondents’ Response to the Commission’s Notice of Review, which was filed on May 18, 2012 in the above-referenced investigation. Please do not hesitate to contact me should you have questions regarding this filing. Respectfully submitted,

/s/ Peter A. Klivans Peter A. Klivans

quinn emanuel urquhart & sullivan, llp
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UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. Before The Honorable Theodore R. Essex Administrative Law Judge _________________________________________ In the Matter of ) ) CERTAIN SEMICONDUCTOR CHIPS ) Inv. No. 337-TA-753 AND PRODUCTS CONTAINING THE SAME ) _________________________________________ )

RESPONDENTS’ RESPONSE TO THE COMMISSION’S NOTICE OF REVIEW

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TABLE OF CONTENTS Page I. II. INTRODUCTION ...............................................................................................................1 THE ALJ CORRECTLY CONSTRUED “OUTPUT FREQUENCY” TO MEAN “OUTPUT DATA RATE” (ISSUES 1A AND 1B) ............................................................1 A. “Output Frequency” Refers to Data Rate.................................................................2 1. 2. 3. 4. B. The Plain Language of the Claims Requires Specifying the Value of a Cycle Based on the Data Rate...............................................................3 A Person of Ordinary Skill Would Consider the Entire Specification in Construing “Output Frequency” ........................................4 The Remaining Intrinsic and Extrinsic Evidence Clearly Define “Output Frequency” in Terms of Data Rate ................................................5 “Output Frequency” Is “Insolubly Ambiguous” Without a Construction Specifying a Data Rate ...........................................................9

If the Commission Finds that “Output Frequency” Does Not Require a Particular Data Rate, the “Output Frequency” Claims Are Invalid Under Section 102 and 103 and Rambus Has Not Proven Infringement .........................10

III.

THE ALJ CORRECTLY FOUND THE DALLY PATENTS INVALID IN LIGHT OF THE PRIOR ART BECAUSE RESPONDENTS PROVED A MOTIVATION TO COMBINE REFERENCES (ISSUE 2A/DALLY) ...........................12 A. B. The Widmer and Ewen Articles .............................................................................12 Other References Addressed by Dr. Hajimiri ........................................................15 1. 2. C. Lau .............................................................................................................15 Nakamura ...................................................................................................19

Secondary Indicia of Nonobviousness ...................................................................21 1. 2. 3. 4. Commercial Success ..................................................................................22 Long Felt Need ..........................................................................................23 Licensing ....................................................................................................23 Praise By Others ........................................................................................24 i

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IV.

CERTAIN PRODUCTS DO NOT INFRINGE THE DALLY PATENTS (ISSUES 3A, 3B, 3C) ........................................................................................................25 A. Issue 3a: Disablement of Cisco Products and SL500 ...........................................25 1. 2. 3. B. C. The SL500 Art Was Not Disabled .............................................................25 The Programmability of the SL500 Prior Art Does Not Affect the Invalidity of the Dally Patents ...................................................................26 Cisco’s Products with Disconnected Transmitters Do Not Infringe ..........27

Issue 3b: The Appropriate Standard for Infringement of the Dally Claims .........28 Issue 3c: Rambus Failed to Prove Infringement of Method Claims 39, 40, and 42 of the ‘494 Patent .......................................................................................30

V.

THE ALJ CORRECTLY FOUND THE BARTH PATENTS INVALID IN LIGHT OF THE PRIOR ART (ISSUE 2A AND 2B/BARTH) ........................................31 A. The Motivation to Combine Each Section 103 Combination upon Which One or More Parties Petitioned for Review (Issue 2a) ..........................................31 1. 2. 3. 4. 5. 6. 7. 8. 9. B. Combination 1—Yano Combined with Features of Farmwald ‘037 .........32 Combination 2—Yano Combined with Features of SCI and Release 4 ....................................................................................................34 Combination 3—Dan Combined with Features of Farmwald ‘037 ...........36 Combination 4—Dan Combined with Features of SCI and Release 4..................................................................................................................38 Combinations 5 and 6—Farmwald ‘037 Combined with Either the Yano Strobe Signal or the Dan Strobe Signal ............................................39 Combinations 7 and 9—NextBus or Harriman Combined with Features from Farmwald ‘037 ....................................................................42 Combinations 8 and 10—NextBus or Harriman Combined with Features from Release 4 .............................................................................43 Combinations 11 and 12—Farmwald ‘037 Combined with Either the NextBus Strobe Signal or the Harriman Strobe Signal ........................44 There Is No Reliable Evidence of Objective Considerations that Would Support a Finding of Nonobviousness ...........................................47

The False Distinction Between Synchronous and Asynchronous (Issue 2b) ........48 ii

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1. 2.

The Dan and Yano References Each Discloses a Synchronous System ........................................................................................................48 A Person of Ordinary Skill in the Art Would Be Motivated to Apply the Teachings of Both Asynchronous and Synchronous Systems in Developing Memory Systems .................................................52

C.

Whether Harriman Evidences Publication of NeXTBus Specification, in View of Fact that NeXT Is Assignee of Harriman (Issue 2c) ...............................55 1. 2. Harriman Incorporates the NextBus Specification by Reference, Which Standing Alone Is Prior Art to the Barth Patents ...........................55 The Disclosure of NextBus in Harriman Further Supports the ALJ’s Finding that the NextBus Specification Was Publicly Available ....................................................................................................57

D.

Whether the Respondents Have Demonstrated the Publication Date of the SyncLink Specification (RX-4270C) (Issue 2d) ...................................................59 1. 2. SyncLink Itself Evidences Its Public Availabilty ......................................60 Rambus and JEDEC Documents Show SyncLink Publicly Available. ...................................................................................................61

VI. VII.

SDR PRODUCTS DO NOT INFRINGE THE BARTH PATENTS (ISSUE 3D) ............63 THE ALJ ERRED IN NOT FINDING THE BARTH PATENTS UNENFORCEABLE DUE TO RAMBUS’ INEQUITABLE CONDUCT ......................65 A. Respondents Have Proven by Clear and Convincing Evidence that the SyncLink Specification (RX-4270C) Is Material to the Patentability of the Asserted Barth Claims ...........................................................................................65 The PTO’s Broadest Reasonable Construction of “Signal” in the ‘109 Patent Is Broader than the Construction of “Strobe Signal” Applied by the ALJ .........................................................................................................................65 1. 2. C. The ALJ’s Construction of “Strobe Signal” ..............................................65 The PTO’s Construction of “Signal” .........................................................66

B.

Even Though the PTO’s Broadest Reasonable Construction of “Signal” Is Broader than the Construction of “Strobe Signal” Applied by the ALJ, the SyncLink Specification (RX-4270C) Is Not Cumulative to the Art Presented to the PTO .............................................................................................67

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1. 2. D.

Farmwald Was Found to Anticipate the Non-Strobe Embodiment Whereas SyncLink Teaches the Preferred Strobe Embodiment ................67 SyncLink Is Non-Cumulative over Farmwald Because SyncLink Does Not Use an Intermediate Transceiver Device ...................................69

If the Commission Finds the ‘109 Patent Unenforceable Due to Inequitable Conduct, the ‘405 and ‘353 Patents Should Likewise Be Unenforceable ........................................................................................................69

VIII.

THE ALJ CORRECTLY FOUND THE BARTH PATENTS UNENFORCEABLE DUE TO RAMBUS’ UNCLEAN HANDS ...................................70 A. Issue Preclusion Prevents Rambus from Challenging the 661 Determinations as to When It Had a Duty to Preserve Documents and Its Bad Faith ................................................................................................................72 1. Rambus Cannot Challenge the Prior Determinations of when Its Duty to Preserve Arose and Whether It Acted in Bad Faith Because Both Issues Satisfy the Test for Issue Preclusion ........................72 Precluding Rambus from Challenging Previously Decided Spoliation Issues Is Fair and Will Avoid Repetitious Litigation ...............79

2. B.

Rambus Should Be Prevented from Challenging the 661 Investigation’s Determinations as to When It Had a Duty to Preserve Documents and Its Bad Faith Because the Operative Law and Facts Still Apply ................................80 Respondents in this Investigation Presented Additional Factual Evidence on Prejudice Through Live Testimony and Videotaped Depositions ....................81 1. 2. 3. 4. 5. Vincent Offered New Testimony Regarding Prejudice .............................82 Barth Testified that Relevant Documents Were Destroyed .......................83 Respondents Elicited New Evidence of the Destruction of the Files of Rambus’ Top Executives and the Breadth of the Destruction...............85 Respondents Presented New Testimony from Neil Steinberg Regarding Rambus’ Document Destruction ..............................................85 New Evidence Elicited on Cross Examination in this Investigation Demonstrates Rambus Could Not Meet Its Heavy Burden to Show Respondents Were Not Prejudiced ............................................................86 The Newly Submitted Evidence Is Relevant to Respondents' Defenses Including New Defenses First Raised in the 753 Investigation ...............................................................................................86

C.

6.

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IX.

RAMBUS DID NOT SATISFY THE DOMESTIC INDUSTRY REQUIREMENT (ISSUE 6) .............................................................................................87 A. B. C. The Plain Language of Section 337 Requires Rambus to Allocate Expenses to Each of the Asserted Patents..............................................................87 Commission Precedent Requires a Strong Nexus Between a Complainant’s Portfolio Licensing Investment and the Asserted Patents .............89 The Scope of Rambus’ Licenses Varies Widely, Attenuating Any Nexus............90

X.

THE ALJ CORRECTLY DETERMINED THAT THE BARTH PATENTS WERE EXHAUSTED AS TO (ISSUE 7) ........................................................92 A. Issue 7a: The Licensed Samsung Memory Products Substantially Embody the Barth Patents ....................................................................................................92 1. 2. B. The Only Reasonable and Intended Use of the Samsung Licensed Memory Devices Is to Practice the Barth Patents......................................93 The Licensed Samsung Memory Devices Embody Essential Features of the Barth Patents .....................................................................93

Issue 7b: Purchase of Samsung Memory Was in the United States ......................................................................................................................95

XI.

RAMBUS LACKS STANDING TO ASSERT THE DALLY PATENTS .......................96 A. B. Issue 8a: Rambus Is Not a Bona Fide Purchaser Without Notice.........................97 Issue 8b: Laches Cannot Cure Rambus’ Standing Defect ....................................99

XII.

CONCLUSION ................................................................................................................100

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TABLE OF AUTHORITIES Page

CASES ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307 (Fed. Cir. 2007)......................................................................................... 28 Adv. Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157 (Fed. Cir. 1993)......................................................................................... 99 Anderson v. Cryovac, Inc., 862 F.2d 910 (1st Cir. 1988) ............................................................................................. 86 Avenues in Leather, Inc. v. U.S., 423 F.3d 1326 (Fed. Cir. 2005) ........................................................................................ 80 Caudill v. Sears Transition Pay Plan, 2011 WL 1595044 (E.D. Mich. Apr. 26, 2011) .............................................................. 100 Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same, Inv. No. 337-TA-650, Comm’n Op. (Apr. 14, 2010) ................................................. 88, 89 Certain Dynamic Sequential Gradient Compression Devices and Component parts Thereof, Inv. No. 337-TA-335, Final ID, USITC Pub. 2575 (Nov. 1992) ..................................... 89 Certain Hybrid Elec. Vehicles and Components Thereof, Inv. No. 337-TA-688, Order No. 5, 2010 WL 1138330 (Feb. 26, 2010) ........................ 89 Certain Multicellular Plastic Film, Inv. No. 337-TA-54A, Comm’n Op., 1981 WL 178478 (Jan. 30, 1981) ............................ 74 Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same, Inv. No. 337-TA-694, Comm’n Op. (Aug. 8, 2011) ................................................... 88, 89 Certain Polyethylene Terephthalate Yarn, Inv. No. 337-TA-457, Comm’n Op., USITC Pub. No. 3550, 2002 WL 1349938 (June 18, 2002).................................................................................................................... 9 Chevron, Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984) .......................................................................................................... 89 Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988)................................................................................... 56, 61 Duncan Townsite v. Lane, 245 U.S. 308 (1917) .......................................................................................................... 99 vi

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Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006).................................................................................. passim Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002)................................................................................... 28, 29 Filmtec Corp. v. Hydranautics, 982 F.2d 1546 (Fed. Cir. 1992)......................................................................................... 99 In re Freeman, 30 F.2d 1459 (Fed. Cir. 1994) ............................................................................. 72, 76, 79 In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011)................................................................................... 25, 47 In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004)......................................................................................... 61 In re Lister, 583 F.3d 1307 (Fed. Cir. 2009)......................................................................................... 60 In re Natures Remedies, Ltd., 315 Fed. App’x 300 (Fed. Cir. 2009)................................................................................ 57 In the Matter of Certain Elec. Devices with Multi-Touch Enabled Touchpads and Touchscreens, Inv. No. 337-TA-714, Order No. 16 (Sept. 28, 2010) ..................................................... 72 In the Matter of Certain Multicellular Plastic Film, Inv. No. 337-TA-54A, Rec. Determination, 1981 WL 178478, (Jan. 30, 1981) ................ 72 Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir. 2004)......................................................................................... 24 Jazz Photo Corp. v. U.S. Int’l Trade Comm’n, 264 F.3d 1094 (Fed. Cir. 2001)......................................................................................... 96 Katz v. Lear Siegler Inc., 1993 U.S. App. LEXIS 17507 (Fed. Cir. July 12, 1993) .................................................. 97 KSR Int’l v. Teleflex, 550 U.S. 398 (2007) ................................................................................................... passim Kyocera Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 2008)......................................................................................... 57 Mass. Inst. of Tech. v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985)......................................................................................... 57 Micron Technology, Inc. v. Rambus, 645 F.3d. 1311 (Fed. Cir. 2011) ...................................................................... 74, 80, 81, 86 Mother’s Restaurant, Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566 (Fed. Cir. 1983)............................................................................... 76, 77, 78 vii

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N. Am. Phillips Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576 (Fed. Cir. 1994)........................................................................................... 96 Nat’l Org. of Veterans’ Advocates, Inc. v. Sec’y of Veterans Affairs, 260 F.3d 1365 (Fed. Cir. 2001) ........................................................................................ 80 Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003)........................................................................................... 9 Novo Nordisk v. Bio-Tech. Gen., 424 F.3d 1347 (Fed. Cir. 2007)......................................................................................... 70 Oki Am., Inc. v. Adv. Micro Devices, Inc., 2006 U.S. Dist. Lexis 73144(N.D. Cal. Sept. 21, 2006) ............................................. 57, 61 Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967 (Fed. Cir. 2010)........................................................................................... 57 Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006)......................................................................................... 47 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 2, 3, 4, 5 Planned Parenthood of Se. Pa. v. Casey, 505 U.S. 833 (1992) ......................................................................................................... 80 Quanta Computer, Inc. v. LG Elec., Inc., 553 U.S. 617 (2008) .............................................................................................. 92, 93, 95 Realsource, Inc. v. Best Buy Co., 282 Fed. App’x 821 (Fed. Cir. 2008) ................................................................................. 2 SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349 (Fed. Cir. 2000)......................................................................................... 24 Silicon Graphics, Inc. v. ATI Tech., Inc., 607 F.3d 784 (Fed. Cir. 2010)........................................................................................... 29 Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir. 2000)......................................................................................... 30 Stamps.com Inc. v. Endicia, Inc., 2011 WL 2417044 (Fed. Cir. June 15, 2011) ............................................................. 59, 63 Stanford v. Roche, 583 F.3d 832 (Fed. Cir. 2009), aff’d 131 S. Ct. 2188 (2011) ..................................................................................... 97, 100 Therasense, Inc. v. Becton, Dickinson & Comp., No. 2008-1511 (Fed. Cir. 2011) (en banc) ....................................................................... 69 Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358 (Fed. Cir. 2011)................................................................................... 22, 47 viii

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TransCore, L.P. v. Elec. Transaction Consultants Corp., 563 F.3d 1271 (Fed. Cir. 2009)......................................................................................... 96 Transocean Offshore Deepwater Drilling Inc. v. Maersk Contractors USA Inc., 617 F.3d 1296 (Fed. Cir. 2010)......................................................................................... 74 VastFame Camera Ltd v. Int’l Trade Comm’n, 386 F.3d 1108 (Fed. Cir. 2004) ....................................................................................... 72 V-Formation, Inc. v. Benetton Group SpA, 2006 WL 650374 (D.Colo. Mar. 10, 2006) ...................................................................... 99 W. Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361 (Fed. Cir. 2010)......................................................................................... 22

STATUTES 19 U.S.C. § 1337 ........................................................................................................... 1, 87, 88, 89 19 U.S.C. § 1337(a)(1)(2) ............................................................................................................. 87 19 U.S.C. § 1337(a)(2) .................................................................................................................. 88 19 U.S.C. §1137(a)(3)(C) ................................................................................................. 88, 90, 92 35 U.S.C. § 102 ......................................................................................................................... 2, 31 35 U.S.C. § 102(b) ........................................................................................................................ 56 35 U.S.C. § 103 ................................................................................................................... 2, 31, 48 35 U.S.C. § 112 ............................................................................................................... 2, 3, 10, 87 35 U.S.C. 271(c) ........................................................................................................................... 64 37 CFR § 1.56(b) .......................................................................................................................... 70 U.C.C. § 2-319(1) ......................................................................................................................... 96

OTHER AUTHORITIES Black’s Law Dictionary 632 (6th ed. 1990) .................................................................................. 96 RESTATEMENT (SECOND) OF JUDGMENTS § 27 (1982) ............................................................... 72 RESTATEMENT (SECOND) OF JUDGMENTS § 27, cmt. c ............................................................... 79 RESTATEMENT (SECOND) OF JUDGMENTS § 27, cmt. d (1982) ..................................................... 75 RESTATEMENT (SECOND) OF JUDGMENTS § 27, cmt. h ..................................................................... 76 ix

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RESTATEMENT (SECOND) OF JUDGMENTS § 27, cmt. j .................................................................. 77

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I.

INTRODUCTION On March 2, 2012, the ALJ issued his Initia l Determination on Violation of Section 337

and Recommended Determination on Re medy and Bond. The ALJ c orrectly determined that each asserted claim of t he Barth an d Dally patents was in valid and th at each Barth claim is unenforceable. On May 3, 2012, the Commission prov ided notice of its intent to review th e ent on eight issues and

ALJ’s determination in its entirety, specifically requesting comm

numerous sub-issues. Respondents’ answers to the Comm ission’s questions are set forth below. At the hearing, Respondents proved that no violation of Section 337 should be found on numerous grounds. On review, Respondents respectfully request that the Co mmission affirm the ALJ’s determination of no violation on the same grounds as the ALJ, or on any of the alternative grounds urged in Respondents’ post-hearing briefing. II. THE ALJ CORRECTLY CONSTRUED “OUTPUT FREQUENCY” TO MEAN “OUTPUT DATA RATE” (ISSUES 1A AND 1B) Respondents have been asked to address two questions regarding the construction of

“output frequency” for the Dally patents in the 753 Investigation: 1. Why “output frequency” requires a construction setting forth a sp ecific data rate per cycle, as opposed to the plain language of the claims, which requires only a particular output frequency, i.e., a number of cycles per second. 2. If “output f requency” is construed not to require a particular data rate, the effect of that construction, if any, on the section 102 and 103 determ inations on review, as set forth below. First Question. The construction of “output frequency” req uires a specific data rate per cycle because a person of ordinary skill in the art would understand the output frequency of the claimed digital tran smitter to refer to a data rate, as reflected in each party’s construction Further, any construction of “output frequency” that fails to specify a 1-to-1 ratio between the .

data rate and cycle would contradict the intrinsic a nd extrinsic evidence. The parties agree that Hertz generally refers to a num ber of cycles per second, -1but “cycles” can be interpreted in

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different ways depending on context. A person of ordinary skill would understand that “cycles, ” in the context of Dally’s digital transm itters, refers to data rate. Accordingly, Rambus, all 34 Respondents, the Staff, the experts, and ultim ately the ALJ, uniform ly agreed that any

construction of “output frequency” must specify a particular data rate p er cycle. Otherwise, th is term is insolubly ambiguous and thus invalid under 35 U.S.C. § 112. Second Question. To the extent the Co mmission construes “output frequency” to not require a particular data rate and only a particular num ber of cycles per second, the Dally claim s would still be invalid under 35 U.S. C. §§ 102 and 103. Only Hajim iri, an expert for some of the Respondents, offered a construction m eeting this requirem ent. Under his construction—as an alternative to his prim ary position that the claims are indefinite—the Widmer article and SL500 anticipate the output frequency claim s (i.e., dependent claim s 2, 31, and 49 of the ‘857 patent and claim 3 of the ‘494 patent) under section 102 and also render them obvious under section 103. Respondents also note that Rambus failed to address, let alone prove, infringem ent under any construction that does not req uire a p articular data rate. Each question is addressed

separately and in greater detail below. A. “Output Frequency” Refers to Data Rate

“When construing a claim , courts m ust give the words of the claim the ordinary and customary meaning that would be attributed to them by a person of ordinary skill in the art who reads them in the context of the specification and prosecution history.” Realsource, Inc. v. Best Buy Co., 282 Fed. App’x 821, 825 (F ed. Cir. 2008). Im portantly, “[w]e cannot look at the ordinary meaning of the term in a vacuum. Rather, we must look at the ordinary meaning in the context of the written descripti on and the prosecution history.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (internal citations omitted). In many cases th at give rise to litigation . . -2. determining the

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ordinary and customary meaning of the claim requires examination of terms that have a particu lar meaning in a field of art. Because the meaning of a clai m term as understood by persons of skill in the art is often not imm ediately apparent, and because patentees frequently use term s idiosyncratically, the court looks to “those sources available to th e public that s how what a person of sk ill in the art would have understood disputed claim language to mean.” Those sources includ e “the words of the claim s themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relev ant scientific principles, the meaning of technical terms, and the state of the art.” Id., at 1314 (internal citations omitted). “In some cases, the ordinary m eaning of claim language as understood by a person of skill in the art m ay be readily apparent even to lay judges, and claim construction in such cases involves little m ore than the app lication of the widely accepted m eaning of commonly

understood words.” Id. This is not one of those cases. As demonstrated by the extensive record, although Hertz generally refers to cycles per second, “cycles” can have several possible

meanings depending on context. Accordingly, Respondents’ and Ra mbus’ experts, Hassoun and Singer, both recognized that it was appropriate to look beyond the plain language of the claims to “those sources available to the p ublic” to determ ine the proper construction of “output

frequency.” They uniformly concluded that this phrase requires a specific data rate, and the ALJ agreed. If, however, th e Commission were to find that “output frequency” could be construed without specifying a data rate, Respondents assert that the clai invalid for indefiniteness under 35 U.S.C. § 112. 1. The Plain Language of the Claims Requires Specifying the Value of a Cycle Based on the Data Rate ms containing this phrase are

The asserted independent claim s require a transmitter that accepts digital input s ignals and transmits a corresponding digital output signal. Dependent cl aims 2, 31, and 49 of the ‘857 patent and claim 3 of the ‘494 patent requ ire the transmitter to send an “output sig nal with an

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output frequency of at least 1 GHz.” In this con text, a person of ordinary skill in th e art would understand that “output frequency,” m easured in “Hz,” refers to the speed, or data rate, of the digital output signal. (See, e.g., Tr. (Singer) at 2420:17-21; Tr. (Hassoun) at 1540:10-11; CX9542C (Singer Direct) at Q. 103.) Other claims of the Dally patents, which are “valuable sources of enlightenm ent as to the meaning of a claim term,” also indicate that “Hz” (i.e., Hertz) measures data rate. Phillips, 415 F.3d at 1314. For example, com paring claim 2 of the ‘857 patent (“an output frequency of at least 1 GHz”) with claim 24 of the ‘857 patent (“a rate of at least 400 m egahertz”) reveals that the claims treat rate and frequency, both measurable in Hertz, as synonymous. Indeed, all parties agree that a person of ordinary skill would understand that, for the

claimed digital transmitters, cycles per second refers to the rate at which the transmitter transmits this digital data. (See SIB at 134; CIB at 181; RIB at 118.) Even Dally, the sole inventor of the Dally patents with years of relevant experience, testified that the claim language at issue refers to data rate, or “output bit rate” in his words: Q. Dr. Dally, what does it m ean when it says ‘output frequency of at least 1 gigahertz’? What is that referring to? A. I believe it’s referring to the output bit rate. (JX-00032C.0042 at 149:15-18.) As all parties agreed, construing “output frequency” in term s of data rate does not contradict the claim s’ requirement for “a particular output frequency, i.e., a number of cycles per second.” Rather, such a construction properly gives m eaning to the ter m “cycles” in the context of the claimed digital transmitters. 2. A Person of Ordinary Skill Would Consider the Entire Specification in Construing “Output Frequency” lain

The analysis of “output frequency” should not end with consideration of “the p

language of the claims.” Although the claim s recite a particular Hertz, which refers to a unit of -4-

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measurement that indicates the num ber of cycles pe r second, all parties agree th at Hertz is used in these claim s to describe the required data rate. W ithout specifying the data rate per cycle, “cycles per second” is m erely a unit of m easurement and would have different interpretations depending on context, rendering the claim language indefinite. As Ra mbus’ expert, Singer,

testified regarding the term “1 GHz”: “the num ber 1 and then the sym bol for gigahertz appears, but that’s a word, it is a number, and a unit, which by themselves mean nothing.” (Tr. (Singer) at 709:11-14.) In this case, one m ust consider the “sources available to the public that show what a person of skill in the art would have understood disputed claim language to m ean” because the meaning of “cycle” is n ot readily apparent fro m the claim s. Phillips, 415 F.3d at 1314. T o resolve this am biguity, proper claim construction should also include the remainder of the specification, the prosecution history, and extrinsic evidence concern principles, the meaning of technical terms, and the state of the art. 3. The Remaining Intrinsic and Extrinsic Evidence Clearly Define “Output Frequency” in Terms of Data Rate ing relevant scientific

As discussed at length by the Staff and Respondents and ultimately held by the ALJ, the intrinsic and extrinsic evidence—including the specification, witness testimony, and technical dictionary definitions—provide overwhelm ing support for construing “output f requency” to require a specific data rate per cycle, specifically, one that re sults in a 1-to-1 relationship

between data rate and “outpu t frequency.” (See, e.g., SIB at 134-40; S RB at 68-72; SRPRF at 73-77; RIB at 118-22; RRB at 55-58; RRPFR at 33-35.) The specification expres sly refers to the claim ed 1 GHz as the data rate. In the sole passage reciting the term “1 GHz,” the sp ecification points out that prior art systems are limited to data rates of “about 1 GHz.”

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Most digital systems today use full-swing unterm inated signaling methods that are unsuited for data rates over 100 MHz on one meter wires. Even good current-mode signaling m ethods with matched terminations and carefully controlled line and connector impedance are limited to about 1 GHz by the frequency-dependent attenuation of copper lines. (JX-0120 at col. 1:32-37 (em phasis added).) Significantly, the term “1 GHz” always

accompanies the term “output frequency” in the claims and supports Hassoun’s construction that the “output frequency” claims equate output frequency with data rate. The specification also closely ties “4 GHz” and “4 Gbps” together in the context of frequency and data rate, de monstrating a 1-to-1 correspondence between cycles and data rate. Figure 12 (reproduced below), for example, depicts a transmitter embodiment that “accepts 10 bits of data, D 0-9, at 400 MHz.” (JX-0120 at col. 7:5-6.) These 10 bits of 400 MHz parallel data are ultimately converted and output at 4 Gbps serially. Ten times 400 MHz equals 4 GHz, which demonstrates a clear 1-to-1 relationship between an output of 4 Gbps and 4 GHz. Indeed, Singer admits that each one of the 10 channels operates at “one-ten th of the data rate of the output” ( i.e. 400 Mbps data rate for each 400 MHz channel) (Tr. (Singer) at 807:10-18.)

Similarly, Figure 1 (reproduced below) of the Dally Patents discusses converting 10-bit parallel data at 400 MHz to serial data operating at an output data rate of 4 Gbps (again, 10 x 400 MHz = 1 x 4 GHz). (JX-0120 at col. 3:16-19.) In particu lar, the “transmitter module 22 accepts -6-

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8-bit parallel data at 400 MHz.” (JX-0120 at col. 3:16-17;

see also Tr. (Hassoun) at 1558:12-

1559:06.) The bit rate for data input to the transmitter is thus 8-bits parallel x 400 MHz, i.e., the equivalent of 1-bit serial x 3.2 GHz ( i.e., 8 x 400 MHz = 1 x 3.2 GHz). (Tr. (Hassoun) at 1558:4-11.) Within the transmitter module 22, however, the 8-bit parallel data “is coded into 10 bits for band-limiting and forward error correction and transmitted . . . across a single differential transmission line.” (JX-0120 at col. 3:17-19; see also Tr. (Hassoun) at 1558:12-1559:15.) Thus, the transmitter module 22 is processing the equivalen t of 10-bits parallel x 400 MHz. (Tr. (Hassoun) at 1558:12-1559:15.) But Figure 1 specifies the rate for the serial channel on which the transmitter module 22 transm its those bits in term s of bits-per-second ( i.e., 4 Gbps) rather than in terms of Hertz ( i.e., 10 x 400 MHz = 4 G correspondence between cycles and data rate. Hz), again dem onstrating a 1-to-1

In another example, the specification states that a “4 Gbps serial channel . . . . replaces 40 100 MHz pins,” corresponding to one serial channel at 4 GHz. (JX-0120 at col. 8:13-16

(emphasis added).) Also, the transmitter’s FIR filter operates at 4 GHz. (Id. at col. 5:1-2.) Consistent with the foregoing, the specifica tion further characterizes th e corresponding input frequency of the receiver that receives the transmitted 4 Gbps signal as operating at 4 GHz. The specification s tates that “[e]qu alizing at the transm itter allows us to use a sim ple receiver that just samples a binary value at 4 GHz.” (JX-0120 at col. 5:8-9.) This 1-to-1 correspondence between cycles an d data rate is further confirm ed by the relevant extrinsic evidence. As noted above, the nam -7ed inventor Dally testified that “output

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frequency” refers to data rate: Q. Dr. Dally, what does it m ean when it says ‘output frequency of at least 1 gigahertz’? What is that referring to? A. I believe it’s referring to the output bit rate. (JX-00032C.0042 at 149:15-18.) Respondents’ expert Hassoun also testified that when dealing with binary data, a baud equals “a bit per second”: Q. What does Hz stand for? A. It stands for hertz. Q. Can you remind us what a baud refers to? A. A baud is, if we’re only dealing with binary data, then it is a bit per second. (Tr. (Hassoun) at 1555:21-24.) In this exam ple, Hertz represents 1 cycle per second, and a baud refers to 1 bit per second, reflecting a 1-cycle to 1-bit correspondence (i.e., a 1-to-1 ratio between cycles and bits). As the Staff notes, cycle per second is also of ten referred to in term s of the

system’s “symbol rate” (also know n as baud (Bd)), with each sym bol representing one or m ore bits depending on the implementation. (See SIB at 135; Tr. (Hassoun) at 1555:21-24; RX-5506C (Vorenkamp Rebuttal) at Qs. 59-61.) None of these points were contested by Rambus. Rambus agrees that the specification teaches that “output frequency” refers to a particular data rate, but alleges that the ratio must be limited to 2-to-1. Rambus’ arguments primarily stem from its m istaken assumption that the Dally patents are som ehow limited to NRZ-encoded signals. (CIB at 118.) But “NRZ” and “non-return-to-zero” do not appear in the intrinsic evidence, and none of the claim s specify any particular encoding schem e that must be used by the processor. Instead, the Dally patents can be im plemented using a wide range of coding schemes, such as Manchester or bi-phase coding, which admittedly are not limited to a maximum

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ratio of 2-to-1 as proposed by Ram bus. (See CX-10764C (Singer Rebuttal) at Q. 38 (describing similar demonstrative C DX-1886); Tr. (Hassoun) at 1545:04-1546:01 (describing analogous figure from Widmer Patent RX-2870).) Indeed, even Rambus’ own evidence reveals the Dally patents were not lim ited to NRZ encoded data. ( See, e.g., CX-6683C.004 (email from Poulton referring to “PAM encoded with the Dally technology”). ) No support exists for Ram bus’ assertion that “output frequency” is necessarily one-half the data rate; instead, the overwhelming intrinsic evidence indicates a 1-to-1 correspondence between “output frequency” and data rate. As Dally confirm “output frequency” is synonymous with output data rate. 4. “Output Frequency” Is “Insolubly Ambiguous” Without a Construction Specifying a Data Rate ed under oath,

A patent m ust include “one or m ore claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. ” 35 U.S.C. § 112, ¶ 2. A claim is invalid for indefi niteness if it is “insolubly am biguous and not am enable to

construction.” Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1358 (Fed. Cir. 2003). “[W]here after a reasonable at tempt at claim construction, the claim s cannot reasonably be interpreted in a m anner that would resolve the am biguity and preserve their validity” the claim s are invalid. Certain Polyethylene Terephthalate Yarn, Inv. No. 337- TA-457, Comm’n Op., USITC Pub. No. 3550, 2002 WL 1349938, at *8 (June 18, 2002). In their post-trial brief, Respondents argued that the “output frequency” claim s were indefinite because the term “output frequency” could be construed in se veral different ways by one of ordinary skill in the art, as demonstrated by the experts in th is case. (RIB at 2 05.) If the Commission construes “output frequency” without specif ying a sp ecific data rate, then the have several different

“output frequency” claim s will be a mbiguous because “cycles” can

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meanings depending on context. If the Comm

ission finds that “output frequency” does not

require a particular data rate, Respondents respectfully request that dependent claim s 2, 31, an d 49 of the ‘857 patent and claim 3 of the ‘494 patent be found invalid under 35 U.S.C. § 112. B. If the Commission Finds that “Output Frequency” Does Not Require a Particular Data Rate, the “Output Frequency” Claims Are Invalid Under Section 102 and 103 and Rambus Has Not Proven Infringement

As discussed above, Hassoun and Singer both construe “output frequency” to require a particular data rate. ( See Tr. (Singer) at 2326:4-8; Tr. (Hassoun) at 1484:23-1584:1.)

Respondents’ other expert witness, Hajimiri, generally agrees: Q. If you had a data sheet for transm itter circuit in the 1996 to 1997 time frame that used the phrase output frequency, how would a person of ordinary skill in the relevant art interpret the term? A. Just the term out of frequency? Q. In the context of a data sheet for a transmitter circuit. A. In that context, if I were to -- the most common way to interpret that would be to interpret as the output data rate. .... Q. So in that context, output frequency probably refers to output data rate; is that correct? A. That would be correct in that context. (Tr. (Hajimiri) at 1642:18-1643:10. ) As an alte rnative to his prim ary position that “outpu t frequency” is indefinite, Hajimiri offered a construction that was not based on a particular data rate, namely that “output frequency” can refer “to the frequency content of the output signal. Frequency content of an output signal refers to the energy carried by a signal at a particular

frequency.” (RX-5430C (Hajim iri Direct) at Q. 35 (e mphasis added).) Although Respondents maintain the proper co nstruction of “output frequency” is output d ata rate, they note that

Hajimiri’s alternative construction does not require “a specific data rate per cycle,” but rather ,

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only requires that one look to energy at “a particular output frequency,” i.e., at a particular cycle per second, which is consistent with the Comm ission’s proposed construction based on plain claim language. Under Hajimiri’s alternative construction, “an output signal that operates at a data rate of 1 Gbps or 500 Mbps would . . . have ‘energy at frequencies of at least 1 GHz,’” thereby practicing the lim itations of the “output frequency” claim s. ( Id. at Q. 38.) Applying his alternative construction to the prior art, Hajimiri testified that the SL500 “has frequency content greater than 1 GHz” and therefore invalidates the “output frequency claims. (Id. at Qs. 402, 424, 450, 464.) As Ra mbus admits, the Widmer article discloses a transmitter circuit “which outputs data . . . at 500 Mbaud (or 500 megabits per second).” (CIB at 215.) Hajimiri further opined that a 500 m egabits per second ( i.e., 500 Mbits/s) signal also has fr equency content at frequencies above 1 G Hz. ( See RX-5430C (Hajimiri Direct) at Q. 38.) Thus, the W idmer article also anticipates the “output frequency” claims under this alternative construction.1 Hajimiri also testified that under his altern ative construction, the “output frequency” see, e.g., id. at Q. 67), as well as

claims are obvious over Lau in view of Widmer or Ewen, (

Nakamura in viewl of W idmer or Ewen. ( Id. at Q. 181.) For the reasons cited above, Ewen's 1062 Mbaud transmitter has a freq uency content greater than 1 GHz; thus bo th Widmer and Ewen satisfy the “output frequency” limitation under this construction. (Id.) Rambus and Singer do not contest that the SL50 0 and the Widm er article anticipate the “output frequency” claims under Hajimiri’s alternative construction. ( See, e.g., CIB at 239-40; CX-10764C (Singer Rebuttal) at Qs. 109, 370.) If “output frequency” is construed not to require Respondents note that claim s 30 and 42 of the ‘494 patent recite a rate of at least 400 megahertz. Under any construction, these claim s require a lower rate/output frequency value than the “output frequency” claims. Thus, the discussion in this section applies equally to claim 30 and 42 of the ‘494 patent. -111

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a particular data rate, then the SL500 and the W

idmer article prior art anticipate the “output

frequency” claims under the only remaining construction considered as part of this Investigation. Rambus’ entire infringement analysis for the “output frequency” claim s is based on the output data rate of the Accused Products, not the number of cycles per second. For example: The Accused Products that output data at a rate of at least 2 Gb/s satisfy these claims, and Rambus has identified a large num ber of Accused Products that infringe. C X-9542C.0030-49. Indeed, the relevant PCI express standards all require a data rate of at least 2 Gb/s for each output. See. [sic] CX-9542C.0259-67. Respondents’ witnesses and docum ents also confirm that m any of the Accused Products operate at these speeds. JX-094C.0023 at 81:13-17; JX-137C.0043 at 147:5-148:4; JX-137C.0047 at 163:316; JX-56C.0021 at 71:4-6; CX-9104C.0001-2; CX-9105C.0001. (CIB at 199, 202.) To the extent “output frequency” does not require a particular data rate, Rambus has failed to prove infringement of the “output frequency” claims of the Dally patents. III. THE ALJ CORRECTLY FOUND THE DALLY PATENTS INVALID IN LIGHT OF THE PRIOR ART BECAUSE RESPONDENTS PROVED A MOTIVATION TO COMBINE REFERENCES (ISSUE 2A/DALLY) Respondents have been asked to address the motivation to combine and secondary indicia of nonobviousness for each Sectio n 103 obviousness co mbination upon which one or m ore parties petitioned for review. This section addresses the issues related to the Dally patents. A. The Widmer and Ewen Articles

The ALJ fo und that the com bination of the Widmer and Ewen articles renders obvious the “output frequency” claim s (claims 2, 31, and 49 of the ‘857 patent and claim 3 of the ‘494

patent) and the “differential” signaling claims (claims 25 and 39 of the ‘494 patent). (ID at 148154.)2 There are multiple reasons why one of ordinary skill in the art would have been motivated As discussed in detail in Respondents Reply to Ram bus and the Staff’ s Petitions for Review, the ALJ did not rely so lely on the combination of the Widmer and Ewen articles to render the “output frequency” and “differential” signaling claims obviousness. (RRPFR at 46-47.) Instead, the ALJ found that other factors independent from Ewen, including the disclosure in Widmer and the knowledge of one of ordinary skill in the art, rendered claims 2, 31, and 49 of the ‘857 patent -122

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to combine Ewen with the disclosure in W idmer. In particular, it would have been obvious to combine the differential, 1062 Mbaud serial driv er from Ewen with W idmer because the Ewen serial driver increases the speed of serial data transmission, a goal shared by both articles. The transmitters disclosed by W idmer and Ewen “involve[] the sa me technology, and faced similar physical m edia constraints. The transm itters addressed the problem of signa l integrity over communication media to achieve higher data rates and/or longer distances.” (RX5431C (Hassoun Direct) at Q. 240.) Indeed, W idmer and Ewen expressly disclose com ponents for increasing performance at higher speeds. The W idmer serial driver features a “predisto rtion technique” to com bat “frequency-dependent attenuation,” which degrades signals at higher frequencies. (RX-4109 at 126; RX-5431C at Qs. 27-28.) Sim ilarly, Ewen discloses “high-speed differential CMOS PECL drivers and receivers” that “achieve[] higher-speed operation than previous CMOS work.” (RX-4125 at 32.) Given the custom er demand for increasingly faster speeds, one of ordinary skill in the art would have been m otivated to modify the Widmer system Widmer to achieve the output data rate of 1.062 Gbps disclosed in Ew en, thereby meeting the “output frequency” claim s under Respondents construction. See Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[W]e have repeatedly held that a n

implicit motivation to combine exists not only when a suggestion m ay be gleaned from the prior art as a whole, but when the ‘im provement’ is technology-independent and the com bination of references results in a product or process that is m ore desirable, for exam ple because it is

stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”).) One of ordinary skill would have recognized the increase in speed of the Ewe n

and claims 3, 25, and 39 of the ‘494 patent obvious. ( See ID at 147-50, 153.) Since Ram bus only seeks review of the ALJ’s finding regarding the com bination of Widmer and Ewen, and did not find any error with respect to the rest of his findings on this topic, resolution of this issue should not disturb the ALJ’s obviousness findings. -13-

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transmitter was at least partially a result of using differential outputs, instead of the single-ended outputs of W idmer. ( See, e.g. CX-6683C.003 (“The system I’m currently working on is differential. Single-ended is just too difficult for speeds in excess of 500 Mbit/sec or so.”.) The combination would have presented a “significant advantage” that would have motivated a person of ordinary skill to combine these articles. (R X-5431C (Hassoun Direct) at Q. 164.) The shared design need of improving high-speed signal performance provides one of ordinary skill in the art with explicit motivation to combine features of Ewen with that of Widmer. One of ordinary skill would be further motivated to combine the two disclosures because Widmer expressly teaches one to do so, instructing that it “ adopts techniques used previously” in Ewen and listing Ewen and the first of only two citations. (RX-4109 at 127-28 (em phasis

added).) The articles even shared four of the sam e authors and were presented at b ack-to-back ISSCC conferences in 1995 and 1996. ( Compare RX-4109 at 126 with RX-4125 at 32.)

Widmer and Ewen als o have sim ilar titles: Single-Chip 4x500Mbaud CMOS Transceiver and Single-Chip 1062Mbaud CMOS Transceiver for Serial Data Communication, respectively. In addition, each of the elem ents of the asserted Dally claim s performs the identical function that it performed in W idmer and Ewen. ( See, e.g., RX-5431C (Hassoun Direct) at Qs. 158, 163, 164, 194.) Specifically, the differen tial 1062Mbaud Ewen driver combined with

Widmer produces a transm itter that performs Dally's pre-emphasis at the claim ed output frequency, while sending the claim ed differential signals. ( Id.) The Dally claim s merely combine familiar elements that do no more than yield predictable results. One of ordinary skill in the art would have found it “quite easy” to combine the disclosures Widmer and Ewen: Q. Well, you are contending -- an d tell m e if I am wrong here, please -- but you are contending that one of ordinary skill in the art could have taken the teachings of the Ewen article, com bined them with the Widmer article, and achieved a transmitter with an output of 1,062 megabaud, right? -14-

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A. Quite easily, yes. (Tr. (Hassoun) at 1501:8-15.) Both transmitters even used many of the same circuit components including 8B/10B encoders, m ultiplexers, latches, and PLLs, fabricated using a CMOS process. (RX-4109 at 126-27; RX-4125 at 32-33.) For at least these reasons, one of ordinary sk ill in the art w ould have been m otivated to combine the features fro m Ewen with the dis closure of W idmer. Therefore, the Commission should affirm the ALJ’s finding that it would have been obvious to one of ordinary skill in the art to combine the Widmer article with features from the Ewen article. (See ID at 148-49, 154.) B. Other References Addressed by Dr. Hajimiri

Dr. Ali Hajim iri identified m otivations to combine certain of Respondents prior art references – U.S. Patent No. 5,541,957 (“Lau”) (RX-4106) and U.S. Patent No. 3,806,807 (“Nakamura”) (RX-4114)– with other references, which invalidate th e asserted claims of the Dally patents. 3 1. Lau

Respondents argued that Lau, in combination with other references, rendered obvious certain of the asserted claims of the Dally Patents. Hajimiri explained that a combination of Lau with any one of Tewksbury (RX-4416) Batruni (RX-4117), Widmer (RX-4109) , and Ewen (RX4125) invalidates claims 1, 2, 11-13, 24, 31- 35, 39, and 49- 50 of the ‘857 patent and claims 3, 26, 30, 40, and 42 of the ‘494 patent. (RX-5430C at Q/A 58-168.) He also identified

Hajimiri also testified regarding the obviousnes s of certain asserted Dally claim s based on the SL500 both alone and in com bination with other references. Rambus did not offer any arguments to counter this testim ony prior to the Initial Determ ination (ID at 194, 200). As the ID reflects, the ALJ agreed with Hajimiri. (Id. at 182-205.) Rambus has not pointed to any error in the ALJ's findings and did not petition for review of the ALJ' s obviousness findings based on the SL500. Thus, Rambus has affir matively waived its right to challenge those findings. Further, for these reasons, discussion of obviousness of the D ally patents in view of the SL500 is outside the scope of question 2(a) posed by the Commission. -15-

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motivations for combining these references: For example, certain limitations of claims 1, 24, 35, and 39 of the ‘857 patent require that both a transmitter and a processor be present on a chip. (See JX-120.) Hajimiri testified that Lau, in combination with Tewksbury, discloses these limitations. (See RX-5430C at Q/A 60, 81, 101, and 111.) He also testified that one skilled in the art would have been motivated to combine Lau with Tewksbury because starting well before the alleged priority date of the Dally Patents, the integration of more functionality, circuitry and devices on a single integrated circuit was an ongoing and successful effort driven by the continuous reduction in chip feature sizes, demand for higher computing performance, lower overall system power and the market need to reduce costs. (RX-5430C at Q/A 60, 81, 101, 111.) Tewksbury highlights that the increased performance and complexity of a single integrated circuit placed great demand for interconnect performance "between the monolithic IC component and the circuit board levels." (Id.; see also RX-4416.) This disparity would motivate one skilled in the art to integrate high speed communication transceivers on the same integrated circuit as the "highest performance and most complex digital functions" to provide interconnect between these complex digital functions and other chips and boards. (Id.) Furthermore, Tewksbury describes the need for integrating a high speed communication circuit on a single chip (“IC”) operable in the range of Gbit/sec data rates. (Id.) In fact, Tewksbury discloses integrating transmitters onto a single IC as well as on the board level. (Id.) The motivation to combine all such functionality on a single chip is described in at least at RX-4416.0014, RX-4416.0018, RX-4416.0021-22 (including Fig. 1.1c), RX4416.0039-41, and RX-4416.0070 (Fig. 2.1 and Fig. 2.14). (Id.) One skilled in the art would therefore have been motivated to integrate a transmitter and a processor on a single IC. (Id.) Lau in combination with Batruni also invalidates these claims. (Id.) As shown at least at RX-4117.0002, Batruni discloses an IC that includes a digital signal processor ("DSP") and a -16-

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transceiver. (Id.) Hajimiri testified that it would have been obvious to combine Lau with Batruni for the same reasons as articulated above for combining Lau with Tewksbury. (Id.) Lau in combination with Batruni would thus teach a chip that would include an integrated transmitter and processor, as required by claims 1, 24, 35, and 39 of the ‘857 patent. (Id.) Claims 2, 31, 49 of the ‘857 patent and claim 3 of the ‘494 patent require that the transmitter circuit send the output signal with an output frequency of at least 1 GHz and a bandwidth greater than 100 MHz. (See JX-120, JX-121.) As explained by Hajimiri, these claims would have been obvious in view of Lau combined with either of Widmer or Ewen. (RX5430C at Q/A 67, 92, 123, 140.) In particular, Hajimiri explained that it would have been obvious for someone skilled in the art to combine Lau’s transmitter with the circuit design techniques of either Widmer or Ewen in order to reliably operate at an output frequency of at least 1 GHz and a bandwidth greater than 100 MHz. (Id.) Similarly, claims 30 and 42 of the ‘494 patent require that the series of output signals sent from the transmitter be transmitted onto a signal path at a rate of at least 400 megahertz. (See JX-121.) As explained in Hajimiri’s direct witness statement, the transmitter circuit disclosed in Widmer (RX- 4109), is operable to send the output signal with an output frequency of at least 400 MHz. Ewen (RX-4125) also discloses this limitation. It would have been obvious for someone skilled in the art to combine Lau’s transmitter with the circuit design techniques of either Widmer or Ewen in order to transmit a series of output signals by the transmitter onto a single path at a rate of at least 400 MHz. (See RX-5430C at Q/A 153, 163.) Hajimiri provided detailed testimony that rebuts Rambus’s expert, Dr. Singer, and his misplaced arguments that Lau, Widmer, and Ewen cannot be combined to operate at the speeds claimed in claims 2, 31, and 49 of the ‘857 patent and claims 3, 30, and 42 of the ‘494 patent. (See RX-5430C at Q/A 168.) Singer opined that modifying Lau's transmitter to achieve a -17-

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minimum output frequency of 1 GHz or a rate of at least 400 MHz could have resulted in Lau' s transmitter being incompatible with other Ethernet transceivers. Hajimiri testified, however, that in making this assertion, Singer overlooked the fact that in describing a transmitter that complies with, for example, the 10Base-T standard, Lau was only describing one exemplary embodiment of his design techniques, and that Lau’s teaching is not limited to any specific standard (e.g., 10Base-T) and can be applied to a broad range of frequencies. (Id.) Hajimiri also testified that Singer overlooked the fact that Lau' s transmitter was designed to be compatible with two different standards, namely 10Base-T and 100Base-T standards, with the 10Base-T operating at the data rate of 10 Mbit/s and 100Base-T operating at the data rate of 100 Mbit/s. (Id.) Thus, Lau' s transmitter could have been modified to operate at 1 Gbit/s without encountering the problems cited by Singer. (Id.) Likewise, Hajimiri stated that while it is true that Widmer's transmitter had a singleended output terminal while Lau' s transmitter had a differential output terminal, it would have been trivial to combine Lau's transmitter with that of Widmer. (Id.) Converting a single-ended output to a differential output or vice-versa, was well within the knowledge of a person of ordinary skill in the art. (Id.) A number of well-known techniques existed at the time to convert Widmer's single-ended output to a differential output. (Id.) As clearly articulated by Hajimiri, contrary to Singer's assertions, no substantial modifications would have been necessary to convert Widmer's single-ended output terminal to a differential output terminal to accommodate the use of Widmer’s design techniques in Lau' s transmitter. (Id.) Claims 11, 32, 50 of the ‘857 patent and claims 26 and 40 of the ‘494 patent require the integration of multiple transmitters on the same chip. Hajimiri testified that these claims would have been obvious in view of the combination of Lau and Widmer. (RX-5430C at Q/A 74, 94, 125, 152, 162.) In particular, he testified that it would have been obvious to combine Lau with -18-

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Widmer to increase the number of transmitters integrated on a chip in order to relieve interconnect congestion when transmitting data over lossy transmission lines. (Id.) Other motivations for combining Lau 's multiple transmitterswith Widmer would have been to reduce cost and footprint, as well as increase functionality. (Id.) All of these issues were well known to one of ordinary skill in the art at the time of the alleged invention of the Dally Patents. (Id.) Hajimiri testified that claims 12, 13, 33, 34, 51, and 52 would have been obvious over Lau in view of Widmer for the same reasons as described above in connection with claims 11, 32, and 50 of the ‘857 patent. (RX-5430C at Q/A 76, 78, 96, 98, 127, and 129.)4 2. Nakamura

Hajimiri testified that the Asserted Claims of both Dally Patents would have been obvious in light of U.S. Patent No. 3,806,807 issued to Nakamura (hereinafter alternatively referred to as “Nakamura”) in view of any one of Tewksbury, Batruni, Widmer, or Ewen. Hajimiri identified the specific motivations for combining Nakamura with these references. For example, claims 1, 24, 35, and 39 of the ‘857 patent and claim 1 of the ‘494 patent require that a transmitter be integrated on a semiconductor chip. Although this limitation is not explicit in Nakamura, it would have been obvious to combine Nakamura with Tewksbury – which contains a transmitter on a semiconductor chip – to arrive at the alleged inventions of claims 1, 24, 35, and 39 of the ‘857 patent. Hajimiri testified that integrating components, such as transceivers, on the same chip was well known at the time. (RX-5430C at Q/A 174, 191, 204, 207, 216, 229.) Starting well before the alleged priority date of the Dally Patents, the integration of more and more functionality, circuitry and devices on a single integrated circuit was a constant phenomenon driven by the continuous reduction in chip feature sizes, demand for The remaining limitations of claim s 12, 13, 33, and 34 are anticipated by the Lau Patent, as explained in Hajim iri’s direct witness statem ent. (RX-5430C at Q/A 76, 78, 96, 98, 127, and 129.) -194

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higher computing performance, lower overall system power, and the market need to reduce costs. (Id.) An example of such integration includes VLSI (Very Large-Scale Integration) and ULSI (Ultra Large-Scale Integration) as well as Wafer-Level Integration and Wafer-Scale Integration (WSI). (Id.) In fact, Tewksbury (RX-4416) discloses integrating transmitters in a single IC as well as on a board level. (Id.) Accordingly, one skilled in the art would have been motivated to integrate a transmitter onto a single VLSI chip. (Id.) Thus, in view of Tewksbury, it would have been obvious to include the transmitter circuit disclosed by Nakamura on a semiconductor chip, as required by claims 1, 24, 35, and 39 of the ‘857 patent. (Id.) Claims 1, 24, 35, and 39 of the ‘857 patent further require that the transmitter and a processor (or component circuit) be integrated on a semiconductor chip. Hajimiri testified that the motivations to combine Nakamura with Tewksbury as described above would have also rendered it obvious to integrate a processor on the same IC, thus rendering the combination of the two references obvious. (See RX-5430C at Q/A 175, 192, 199, 208, 215, 217, 222.) Hajimiri further testified that Batruni discloses an IC that includes a digital signal processor ("DSP") and a transceiver. (Id.; see also RX-4117.0002.) Hajimiri also testified that it would have been obvious to combine Nakamura with Batruni for at least the same reasons as described above in connection with combining Nakamura and Tewksbury. (Id.) Nakamura in combination with Batruni (RX-4117) would thus teach a chip that would include an integrated transmitter and processor as required by claims 1, 24, 35, and 39 of the‘857 patent. (Id.) Claims 2, 31, and 49 of the ‘857 patent further require that the transmitter circuit be operable to send the output signal with an output frequency of at least 1 GHz and a bandwidth greater than 100 MHz. As Hajimiri testified, several prior art references disclosed such speeds. (RX-5430C at Q/A 181, 203, 204, 228.) For example, Widmer (RX-4109) and Ewen (RX-4125) each disclose a transmitter that is operable to send the output signal with an output frequency of -20-

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at least 1 GHz and a bandwidth greater than 100 MHz. (Id.) As explained by Hajimiri, these claims would have been obvious over Nakamura in view of either Widmer or Ewen. (RX-5430C at Q/A 67, 92, 123, 140.) In particular, Hajimiri explained that it would have been obvious for someone skilled in the art to combine Nakamura’s transmitter with the circuit design techniques of either Widmer or Ewen in order to reliably operate at an output frequency of at least 1 GHz and a bandwidth greater than 100 MHz. (Id.) Likewise, Hajimiri attested to the fact that it would have been obvious to a skilled artisan at the time of the alleged invention of the Dally patents to integrate m ultiple transmitters 32 and 33 of Nakamura on the same semiconductor chip as required by claims 11, 32, and 50 of the ‘857 patent. (RX-5430C at Q/A 188, 204, 229.) In fact, Tewksbury (RX-4416) discloses integrating multiple transmitters in a single IC as well as on the b oard level, as described above, in

connection with claim 1. (Id.) Therefore, in view of Tewks bury, it would have been obvious to integrate an additional transm itter on the sam e chip. ( Id.) This is described at least at RX4416.0041, RX-4416.0070, and illu strated in Figures 2.1 and 2.14. ( Id.) Each su ch transmitter when integrated on a chip would receive dig ital input sig nals from the processo r on that chip . (Id.) C. Secondary Indicia of Nonobviousness

Rambus’ petition did not address the issue of secondary indicia of nonobviousness for the Dally patents and, accordingly, th at issue has b een waived. To the extent the Co mmission is inclined to address this issue on its o wn initiative, Rambus made no attempt to identify any error in the ID with respect to this issue. Respondents believe the ALJ correctly decided the issue of secondary indicia of nonobviousness for the Dally patents and the Comm conclude otherwise. ission should not

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1.

Commercial Success

The ALJ correctly found Ra mbus had failed to establish a nexus between the alleged commercial success and the Dally patents. (ID at 227.) “[T]he patentee must establish a nexus between the evidence of commercial success and the patented invention.” W. Union Co. v.

MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1372 (Fed. Cir. 2010). In its post-hearing brief, Rambus relied solely on statements made by Poulton in a 1999 email and at his deposition, taken out of context. Rather than dem onstrating non-obviousness, the em ail suggests that Dally was attempting to patent an idea that everyone was already using.

(CX-6683C.0004.) This email, which never once mentions any specific evidence of commercial success, suggests neither Dally nor Poulton achieved financial success fro m the work that led to the Dally patents. Poulton also admitted he “hadn’t read th e Dally Patents, nor had [he] seen the invention disclosure” w hen he composed the em ail and could not remem ber if the statem ents even applied to the Dally patents. (Tr. (Poulton) at 1748:15-20; 1772:15-1773:1; see also Tokai
Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to a n element in the prior art, no nexus exists.”). ) Ra mbus also m isrepresented Poulton’s deposition

testimony, alleging he “confirmed that the Dally technology is utilized in conjunction with many standards, including PCI Express, SATA,” and others. (CIB at 268.) But at the hearing, Poulton testified that his s tatements regarding the indu stry standards at is sue in th is case were no t directed to the Dally invention. (Tr. (Poulton) at 1773:11-20.) Indeed, P oulton testified that he is not aware of “lots and lots of companies” using the Dally invention. ( Id. at 1773:21-1774:1.) Although Rambus focused on the 4 Gbps speed of Dally’s transm itter, only a handful of asserted claims contain any sort of frequency or data rate lim itation, and none require 4 Gbps. As the -22-

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ALJ concluded, there is sim ply no nexus between the alleged evid ence of comm ercial success and the Dally Patents. 2. Long Felt Need

Rambus alleged in its post-hearing brief that there was a long felt need in the industry to increase “signal speed between chips.” (CIB at 269.) As the record reflects, prior developm ent of the claimed pre-emphasis techniques at the claimed speeds of the Dally paten ts by Widmer, LSI and others, demonstrates that there was no su ch long felt need. But even presum ing such a need existed, the ALJ correctly found Rambus’ “flimsy evidence” was not sufficient to establish a long felt need. (ID at 228.) Rambus relied on deposition testimony not in evidence concerning Dally’s alleged solution to a “horrible problem,” but failed to tie this problem to the alleged need to increase “signal speed between chips.” (CIB at 269.) Ra mbus also relied on self-serving

statements in the background section of the Dally patents and conclusory statements by its expert Singer. Although Rambus contended “m any companies devoted considerable resources to

improving off-chip signaling speeds,” it failed to identify a single com pany that did so. (CIB at 269; CX-10764C (Singer Rebuttal) at Q. 432.) In any event, the prior art, such as Marbot, showed that the indu stry had already achieved and surpassed the 1 GH z speeds claimed by the Dally patents. Thus, the ALJ correctly concluded that Ram bus had failed to prove that the Dally patents addressed any long felt need in th e industry and there is no basis in the record for th e Commission to find otherwise. 3. Licensing

Rambus alleged “m any companies expressed an in terest in licensing the Dally inventions” but only identified two (CIB at 269), neither of which actually licensed the Dally patents. Although Rambus also relied on actual licenses that m ay have included the Dally

Patents, Rambus failed to cite any evidence that anyone “acquiesced ” to the validity of the Dally -23-

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patents or specifically entered into those licenses to acquire rights to the asserted Dally patents. There may be any num ber of reasons as to why a party en ters into a license, for exam ple, “it is often cheaper to take licenses than to defend infringement suits.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004) (citations omitted.) Moreover, “the mere existence of . . . licenses is insufficient to overcom e the conclusion of obviousness w hen there is a strong prima facie case of obviousness.” Id. (citations omitted.); see also SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1358 (Fed. Cir. 2000) (“the m ere existence of these licenses is insufficient to overcom e the conclu sion of obviousness, as based on the express teachings in the prio r art”). Acco rdingly, the ALJ correctly concluded Ram bus had failed to show the required nexus between the Dally patents and R ambus’ licenses, and Ram bus has

offered no basis for the Commission to reach a different conclusion. 4. Praise By Others

The ALJ correctly fou nd that “Rambus has com pletely failed to p rovide praise by others.” (ID at 230.) Although Ram bus dedicated an entire paragraph to al leged interest in the Dally technology and a paper in which it was allegedly discussed (CIB at 270), Ra mbus failed to identify any actual praise or even positiv e treatment of the claim ed inventions. Moreover,

Rambus cites deposition testimony from Poulton, but ignores his testimony at the hearing, where he clarifies the statem ents cited by R ambus “might have been a bit of hyperbole” and were not directed to the claimed inventions. (See, e.g. Tr. (Poulton) at 1733:17-1735:5.) Although an article by Dally and Poulton was selected as one of the best papers at a Hot Interconnects conference, Ram bus failed to provide any objective evidence by which to gauge the import of this selection, or its nexus to th e claimed inventions, rather than other aspects of their work. Indeed, Poulton testified that the inter est in th e paper was also due to the output multiplexing transmitter, the unclaimed idea of using slow clocks to generate a very high speed -24-

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bit sequence. ( See, e.g., Tr. (Poulton) at 1770:1-17.) Despite Ram bus’ claim that there was “substantial praise,” th e ALJ correctly concluded the record lacks any eviden ce that th e

technology of the asserted claims was praised by anyone, and no basis exists for the Commission to disturb that finding. See In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Where the offered secondary consideration actually results from something other than w hat is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.”). IV. CERTAIN PRODUCTS DO NOT INFRINGE THE DALLY PATENTS (ISSUES 3A, 3B, 3C) Respondents have been asked to address three specific questions relating to infringement of the Dally patents. This section addresses those questions. A. Issue 3a: Disablement of Cisco Products and SL500 1. The SL500 Art Was Not Disabled

Rambus asserts that emphasis was inoperable and/or disabled in the SL500 chip offered for sale to Seagate. First, this simply is incorrect. As is shown in the business diary of Seagate test engineer Bruce Johnson, LSI Logic informed Seagate on numerous occasions of the CWSL500’s emphasis functionality. (See, e.g., RX-4173C.0030-31, 48-49, and 65-67.) As such, there can be no question whether LSI Logic was offering to sell the CWSL500 technology that included and was operable to perform emphasis. Moreover, the oscilloscope testing performed by Mr. Johnson confirms the operability of the emphasis function of the CWSL500. (See RX4175C.0067, 77.) Singer testified that "[t]he larger the eye opening, the more likely the receiver will be able to properly interpret the data when noise is present." (CX-9542C at Q34.) When comparing the eye diagram Singer identifies as a good eye diagram with the eye diagram captured by the oscilloscope during testing of the CWSL500 when emphasis was enabled, there is no discernible difference. (See CDX-1504; excerpt from RX-4175.0067.) Singer admitted as much during his testimony at the hearing. (See Tr. 2521:3-2527: 11.) -25-

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Moreover, LSI Logic published a paper in February 1997 describing a 1.0625 Gbps transceiver with transmit signal pre-emphasis. (See RX-4107; Tr. 2519:5-24.) The article states that the transceiver core described therein is the CWSL500 transceiver core. (RX-4107.0001; Tr. 1678:25-1679:18.) As attested to by Hajimiri, this paper would have been submitted to the ISSCC for publication in September 1996 and, moreover, would have been accompanied by documentation of a fully functional chip, including test results showing that the chip is operational. (Tr. 1608:11-22; 1677:14-22.) The CWSL500 product manuals further set forth the functionality and characteristics of the technology, leaving no question as to whether LSI Logic developed a fully functional transceiver that performed emphasis. (See RX-4130.) 2. The Programmability of the SL500 Prior Art Does Not Affect the Invalidity of the Dally Patents

Contrary to Rambus' suggestions, the fact that the CWSL500's emphasis functionality was programmable, thus enabling the emphasis level to be varied (e.g., set to a low level) (RX4130.0047; RIB at 167-72), does not mean that the CWSL500's transmitter did not have emphasis or that its emphasis functionality was inoperable. Thus Rambus' claim that "[p]roduct documentation for LSI's SL500 shows that emphasis in the product was permanently disabled" (CIB at 232), is simply false. Rambus bases this assertion on a Seagate product specification from July 1996 that shows a low emphasis level selected for the CWSL500 transmitter disposed in that particular product. (RX-4171.) That Seagate may have opted to set the emphasis level to low (as reflected in a July 1996 application-specific document) is irrelevant to the overall functionality of the CWSL500 circuitry and operability of the SL500. As stated above, since the emphasis level for CWSL500 was programmable, it could have been set to any one of a number

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of different levels, including the low level selected by Seagate for this one product variation.5 Contrary to Rambus’s assertion, this documentation merely corroborates LSI Logic's development and offer to sell the CWSL500 technology that had programmable emphasis, a feature repeatedly mentioned in LSI Logic's conversations with Seagate. (RX-4173C.0048 (7/20/95 entry stating the transmitter "[w]ill have pre-emphasis option"); RX-4173C.0065 (11/3/95 entry regarding LSI Logic meeting, stating that the output driver "has pre-emphasis option").) In addition, Rambus' assertion that setting the emphasis level to low in the SL500FCT product constitutes the absence of emphasis functionality, directly contradicts Singer's testimony on the same issue in the context of infringement. Singer testified that if a chip has preemphasis circuitry, even when unused, it still infringes the asserted claims of the Dally Patents. (Tr. 790:22-791:5.) By this same rationale, a chip that incorporates the CWSL500 emphasis circuitry, even if set to low, still invalidates the asserted claims of the Dally Patents.. 3. Cisco’s Products with Disconnected Transmitters Do Not Infringe

Conversely, the accused transmitters are not “disabled” in Cisco products. In particular, in certain Cisco products, the transmitters are not connected to anything and are incapable of use. Because the transmitters are not connected to anything, they are not “operable to send an output signal” as required by the asserted Dally patent claims.As a result, these transmitters are not “operable to send an output signal” as required by the asserted Dally patent claims. (See Tr. (Singer) at 770:21-771:2 (“In that case, if not pinned out meant that there weren’t any wires connecting that circuitry, and it was disabled in that fashion, yes, I would agree it is disabled and bypassed and it cannot infringe.”).) In certain Cisco products, identified in Exhibit B to CX-7424C, the accused transmitters Indeed, as attested to by Hajim iri, the single doc ument relied upon by Rambus m erely reflects one variation of the SL500. (Tr. 1615:10-1616:1.) -275

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are not used. The accused transmitters reside on components made by Supplier Respondents. Those components are in turn integrated into larger Cisco products. Although the transmitters still exist on the Supplier’s components, those transmitters are not connected to any other chips in the Cisco product and are therefore incapable of transmitting data. Nor can those transmitters be “enabled” to send data—the Cisco products in question do not have the circuitry or software to employ the accused transmitters. The Cisco products without the interfaces connected cannot use the accused transmitters, and similarly cannot infringe the Dally patents. B. Issue 3b: The Appropriate Standard for Infringement of the Dally Claims

As the Commission correctly pointed out, “[i]n every infringement analysis, the language of the claims, as well as the nature of the accused products, dictates whether an infringement has occurred.” (Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002).) In the present analysis, the claim language of the Dally patents and the nature of the accused devices are determinative. In this respect, the Commission’s noninfringement analysis should be guided by ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307 (Fed. Cir. 2007). In ACCO, the asserted patents were directed to locking systems that inhibit the theft of equipment such as personal computers. (Id. at 1310.) The accused device in ACCO could be operated in either of two modes – infringing and noninfringing. (Id. at 1313.) Accordingly, the Federal Circuit held that the accused device can be used at any given time in a noninfringing manner, and does not necessarily infringe the asserted patent. (Id.) Moreover, because ACCO failed to point to specific instances of direct infringement, the Federal Circuit found no evidence of direct infringement. (Id.) In other words, a claim that is cast in terms of one particular mode of operation does not cover alternative modes of operation. Certain claims of the Dally Patents explicitly call for a transmitter that is operable to send -28-

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an output signal that is determined by the comparison of current bits to “preceding” bits. (See, e.g., claim 1 of the ‘857 patent.) All of the asserted independent claims exclude any reference to “succeeding” bits. (See claims 1, 24, 35, 39 of the ‘857 Patent and 1, 25, and 39 of the ‘494 Patent.) Accordingly, Rambus and Singer base their analysis on a theory of infringement that requires the use of current and preceding bits to perform pre-emphasis – the infringing mode. In contrast, LSI documents and testimony demonstrate that all LSI products incorporating either a 3-tap or a 4-tap filter use succeeding bits to perform pre-emphasis – the noninfringing mode. (RX-6244 at Q137-60; see also Resp. Pre-HB at 202-06.) Therefore, as acknowledged by Rambus, this mode of operation is noninfringing. (Tr. of Singer at 752:23-24 (“When the third tap is on, you can read that outside the scope of these, of these claims.”)) Respondents do not dispute the conclusions of law articulated in the other cases cited by the Commission – Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002) and Silicon Graphics, Inc. v. ATI Tech., Inc., 607 F.3d 784 (Fed. Cir. 2010). However, in both of those cases, the specific claim language was determ inative. In Fantasy, the claim language refers to means for performing a specific function. 287 F.3d at 1111, 1118 (“[A]lthough a user must activate the functions programmed into a piece of software by selecting those options, the user is only activating m eans that are alre ady present in the underlying

software… In other words, an infringing software m ust include the ‘m eans for scoring… bonus points’ regardless whether that means is activ ated or utilized.”) And in Silicon Graphics, the claim was directed to a computer that was claimed in functional terms. 607 F.3d at 794 (“Where, as here, a product includes the structural means for perform ing a claim ed function, it can still infringe ‘separate and apart’ from the operating system that is needed to use the product.”) In both cases, the Federal Circuit carefully limited its application to the asserted claim language and the nature of the accused devices. As such, neither case supports a finding of infringement here. -29-

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C.

Issue 3c: Rambus Failed to Prove Infringement of Method Claims 39, 40, and 42 of the ‘494 Patent ination that “the Dally patents cover

The ALJ stated on page 77 of the Final Determ

apparatus, not method claims…” (ID at 77.) The ALJ does not address claims 39, 40, and 42 of the ‘494 patent, which are, in fact, method claims. ( Id.) If one or m ore steps of a claim ed is not infringed. ( See, e.g., Southwest

method are not performed as recited or at all, the claim

Software, Inc. v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir. 2000) (An accused infringer avoided infringement by disabling rather than rem oving from an accused device com puter software that would cause the device to infringe.)) Accordingly, because LSI products with functional 3rd and 4th taps do not perform the claims as recited, those products should be found to be noninfringing. The accused STMicro products also do not infr inge the asserted Dally m ethod claims. The only grounds on w hich such a finding could be based is on indirect infringem ent, and, as explained in Respondents’ Post-Hearing Brief, merely asserting that the Supplier Respondents provide customers with device drivers, product m anuals and other technical literature, without more, does not establish that any Supplier Respondent induced infringement of the Dally Patents. Rambus relied upon a web page (CX-9453) and a product sheet (CX-9451) to prove inducement. (See RBHB at 34.) But neither docu ment instructs a cus tomer how to implem ent pre-emphasis in the transm itter. At best, they simply recite product features and do not instruct a custom er

how to i mplement pre-emphasis. (CX-9542C ( Singer Direct) at Q. 535.) The we b page (CX9453) does not identify the STMicro products, if any, to which it m ight relate. The spec sheet for the SPEAr1310 is blank in the section regarding physical layer for the serial interface MiPhy, except for the words “to be com pleted.” Further, to the extent STMicro’s witnesses were asked whether STMicro provided drivers to its custom ers, the testimony was that it did not. ( See JX-

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094C.0026 at 91:15-19; RX-6274C (Kobayashi Rebuttal) at Q. 38.6 V. THE ALJ CORRECTLY FOUND THE BARTH PATENTS INVALID IN LIGHT OF THE PRIOR ART (ISSUE 2A AND 2B/BARTH) In the prior 661 Investigation involving the sam e asserted claims of the Barth patents, the Commission found that the only “difference between the asserted prior art and the asserted Barth I claims is that no asserted prior art reference d iscloses the ‘strobe signal’/’signal’ limitations.” (RX-4239C at 7.) Here, in contrast, the ALJ relied on a host of prior art references (listed below) that Respondents identified; each discloses the claimed “strobe signal” found to be missing in the 661 Investigation: (i) Japanese P atent Publication No. 3-276344 (“Yano”) (R X-4261); (ii)

European Patent Application No. 94304672.2 (“Dan”) (RX-4262); (iii) the NextBus Specification (“NextBus”) (RX-4265); (iv) U.S. Patent No. 5,313,624 (“Harrim an”) (RX-4266); and (v) U.S. Patent No. 5,218,684 (“Hayes”) (R X-4268). It is no surprise that the A LJ held that twelve separate and independent combinations of prior art each render the asserted Barth claims invalid as obvious under 35 U.S.C. § 103. (ID at 210-27.) And it is also no surprise that the BPAI sim ilarly concluded upon reexam ination that all of the claims of the asserted Barth patents are invalid over the prior art. ( See RX-5356 (BPAI decision holding all claim s of the ‘109 patent invalid); RX-5357 (BPAI decision holding all claims of the ‘405 patent invalid); SX9 (Part 7) at 1059-96 (BPAI decision holding all claims of the ‘353 patent invalid).) Therefore, for the reasons stated by the ALJ in his ID (and more fully explained below), the Commission likewise should hold that all of the asserted Barth claim s are invalid under 35 U.S.C. § 102 and/or § 103. A. The Motivation to Combine Each Section 103 Combination upon Which One or More Parties Petitioned for Review (Issue 2a)

STMicro included each of these argum ents in Respondents’ Post-Hearing Brief at page 134 and, therefore, did not waive the argument. -31-

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1.

Combination 1—Yano Combined with Features of Farmwald ‘0377 ne of ordin ary skill in the art would have been

There are multiple reasons why o

motivated to combine Yano with the disclosure in U.S. Patent No. 6,584,037 (“Farmwald ‘037”). Yano and Farmwald ‘037 both expressly disclose the need for faster data operations. Specifically, Yano describes “a design can be created which enables processing at a higher speed in comparison to the prior art exam ple.” (RX-4261 at 3:20-21; RX-5429C (Jacob Direct) at Q. 489.) Sim ilarly, Farmwald ‘037 teaches that “[p]rior art mem ory systems have attem pted to solve the problem of high speed access to m emory with limited success.” (RX-4269 at 2:12-24; RX-5429C (Jacob Direct) at Q. 48 9.) Theref ore, the shared goal of higher-speed and m ore

efficient data access from both Yano and Farmwald ‘037 furnishes one of ordinary skill in the art with explicit motivation to combine features from Farmwald ‘037 with the disclosure in Yano. In particular, one of ordinary sk ill in the art wo uld be motivated to combine the double data rate (“DDR”), precharge, and m emory bank elem ents from Farmwald ‘037 with Yano because each of those elem ents from Farmwald ‘037 is designed to increase th e speed and

efficiency of data access operations. (See RX-5429C (Jacob Direct) at Qs. 468-79; ID at 212-17; RIB at 78-96.) Specifically, Farm wald ‘037 discloses the DDR ele ments of the asserted Barth claims (RX-4269 at col. 8:42-48, col. 27:58-63 (Claim 33); ID at 213), and the use of DDR “creat[es] faster data speeds withou t increasing the number of input/output pins by sam pling on both the rising and falling edges of a clock or other periodic signal.” (RX-5429C (Jacob Direct) at Q. 470; ID at 213-14.) Far mwald ‘037 also discloses the precharge elem ents of the asserted Barth claims (RX-4269 at col. 10:62-11:2, 11:60, 28:5-20; ID at 214), and those precharge elements similarly improve the efficiency and speed of data access ope rations “by conducting a For consistency and ease of reference, the same combination numbers employed by the ALJ for the twelve separate and independent invalidating com binations of prior art to the Barth claims are used in the present submission. (ID at 210-11.) -327

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precharge operation following the write operation when there potentially is no active operation on the bus, and therefore no time penalty, instead of incurring a time penalty by waiting until the next memory operation to precharge the sense amplifiers.” (RX-5429C (Jacob Direct) at Q. 473; ID at 214-15.) Farmwald ‘037 also discloses the memory bank elements of the asserted Barth claims (RX-4269 at col. 11:15-18, col. 23:54-56, col. 24:26, Fig. 15; ID at 215), and such

memory bank elements also improve the speed of data access operation s “by allowing m ultiple banks to cycle in an interleaved fashion.” (RX-5429C (Jacob Direct) at Q. 476; ID at 215-16.)8 Moreover, as acknowledged by the BPAI and the ALJ, the need for increased speed and efficiency of data access is a universal m otivator even absent any explicit suggestion. (See RX5357 at 28; ID at 213, 214-15, and 216 (each citing RX-5357 at 28); Dystar, 464 F.3d at 1368

(“[W]e have repeated ly held that an im plicit motivation to com bine exists not o nly when a suggestion may be gleaned from the prior art as a whole, but when the ‘im provement’ is

technology-independent and the combination of references results in a product or process that is more desirable, for example because it is strong er, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”).) Each of the elem ents of the asserted Barth cl aims performs the identical function that it Although the “sense amplifier” elem ents of certain asserted Barth claims m ay not be expressly disclosed in Yano, the ALJ correctly found that such elements would be inherent in the write operations disclosed in Yano. (ID at 216-17; RX-5429C (Jacob Direct) at Q. 478). In particular, the address strobe AS is asserted at time S3 in Figure 2 of Yano, in response to which one of ordinary skill in the art would recog nize that a sense operation would occur and that a row of sense amplifiers would be activated in the m emory device. (RX-4261 at Fig. 2; RX-5429C (Jacob Direct) at Q. 47 8). Moreover, it would have been obvious for one of ordinary skill in the art to app ly the write operation d escribed in Yano to a variety of m emory types including DRAM, in which case the resulting method would necessarily include a code that specifies that a row of sense am plifiers be activated, or th at a sense op eration occur, in th e memory device. (RX-5429C (Jacob Direct) at Q. 47 8; ID at 217 .) Because such elements are inherent in Yano , no combination with F armwald ‘037, SCI, Release 4, or som e other reference is necessary. Nonetheless, even if required, it w ould have been obvious to incorporate such elem ents from Farmwald ‘037, SCI, or Release 4 for the sam e reasons as discussed herein with respect to the DDR, precharge, and memory bank elements. (Cf. RX-5429C (Jacob Direct) at Qs. 516-18.) -338

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performed in Yano and/or Farmwald ‘037. (RX-5429C (Jacob Direct) at Qs. 470, 473, and 476.) Consistent with binding Supreme Court precedent, the ALJ correctly found that the combination of Yano with features fro m Farmwald ‘037 merely involves “well-known m ethod[s]” from the prior art performing “established function[s]” and “does no more than yield predictable results, and therefore such combinations w ould have been obvious to one of ordinary skill in the art. (See ID at 212-16 (citing KSR Int’l v. Teleflex, 550 U.S. 398, 417 (2007)); RX-5429C (Jacob Direct) at Qs. 470, 473, and 476.) Given the multiple reasons why one of ordinary skill in motivated to com bine the features from the art would have been ”

Farmwald ‘037 with the disclosure of Yano, the

Commission should affirm the ALJ’s finding that it would have been obvious to one of ordinary skill in the art to combine Yano with features from Farmwald ‘037. (ID at 212-17.) 2. Combination 2—Yano Combined with Features of SCI and Release 4

There also are m ultiple reasons wh y one of ordinary sk ill in the art would have b een motivated to com bine Yano with features disclosed in the Scalab le Coherent Interface article (“SCI”) (RX-4278C) and the JEDEC Release 4 re ference (“Release 4”) (RX-2108C). In

particular, it would have been obvious to combine the DDR element from SCI, and the precharge and memory bank elem ents from Release 4, with the Yano referen ce because each of those elements from SCI and Release 4 is designed to increase the speed and efficiency of data access operations. (RX-5429C (Jacob Direct) at Qs. 468-78; ID at 212-17.) As discussed previously, Yano discloses the goal of faster data operations, expressly

targeting “a design [that] can be created which enables processing at a higher speed in comparison to the prior art exam ple.” (RX-4261 at 3:20-21; RX-5429C (Jacob Direct) at Q .

489.) Figure 6 of SCI discloses the DDR ele ments of the asserted Barth claim s (RX-4278.0004 at Figure 6), and such DDR signaling facilitates accom plishment of Yano’s goal of faster data -34-

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operations “without increasing the nu mber of input/output pins by sam pling on both the rising and falling edges of a clock or other periodic signal.” (RX-5429C (Jacob Direct) at Q. 470; ID at 213.) Release 4 discloses the precharge elem ents of the asserted Barth claim s in Table 3.11.5-1 (the SDRAM Function Truth Table) wherein it identifies “WRITE with AUTO Pr echarge” as a command option (RX-2108C.0111; ID at 214), and this feature supports Yano’s goal of faster data operations “by conducting a precharge oper ation following the write operation when there potentially is no active operation on the bus, and therefore no tim e penalty, instead of incurring a time penalty by waitin g until th e next m emory operation to precharge the sens e amplifiers.” (RX-5429C (Jacob Direct) at Q.473; ID at 214-15.) In addition, Release 4 discloses the m emory bank elements of the asserted claims (RX-2108C.0018 at 2.2, Section 2.1.6; RX-2108C.0111 at 5-5, Table 3.11.5-1; ID at 215-16), and this feature also supports Yano’s goal of faster data

operations “by allowing multiple banks to cy cle in an interleaved fashion.” (RX-5429C (Jacob Direct) at Q. 476; ID at 215-16.) As such, th ere is exp licit motivation to com bine the DDR feature from SCI, and th e precharge and m emory bank features from Release 4, with the disclosu re in Yano in order to advance Yano’s express goal of faster data processing. And even if it were not explicit, both the BPAI and the ALJ correctly acknowledged that this need for faster data processing is a universal motivator even absent any explicit suggestion of such in the prior art. (See RX-5357 at 28; ID at 213, 214-15, and 216 (each citing RX-5357 at 28); Dystar, 464 F.3d at 1368.) In addition, each of the elem ents of the asserted Barth claim s performs the identical function that it performed in Yano, SCI, and/or Release 4. (RX-5429C (Jacob Direct) at Qs. 470, 473, and 476.) Therefore, the ALJ correctly found that the combination of Yano with features from SCI a nd Release 4 also m erely involves “well-known m ethod[s]” from the prior art performing “established function[s]” and “does no m -35ore than yield predictable results, and

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therefore such combinations would have been obvious to one of ordinary skill in th e art.” ( See ID at 212-16 (citing KSR, 550 U.S. at 417); RX-5429C (Jacob Direct) at Qs. 470, 473, and 476.) Thus, there are m ultiple reasons why one of ordinary sk ill in the art would have b een motivated to com bine the featu res from SCI a nd Release 4 with the disclosure of Yano. Therefore, the Commission should affir m the ALJ’s finding that it would have been obvious to one of ordinary skill to combine Yano with features from SCI and Release 4. (ID at 212-17.) 3. Combination 3—Dan Combined with Features of Farmwald ‘037

There also are m ultiple reasons wh y one of ordinary sk ill in the art would have b een motivated to combine Dan with the disclosure in Farmwald ‘037. First, both Dan and Farmwald ‘037 expressly disclose the need for faster data operations. Specifically, Dan discloses that “[t]o achieve an optimally functioning system, i.e., peak performance, data should be held stable just long enough to m eet external m emory’s timing requirements and not an instant longer.” (RX4262 at 2:1-4; RX-5429C (Jacob Direct) at Q. 489.) Sim ilarly, Farmwald ‘037 teaches th at of high speed access to

“[p]rior art m emory systems have attem pted to solve the problem

memory with limited success.” (RX-4269 at 2:12-24; RX-5429C (Jacob Direct) at Q. 489.) This shared purpose of increasing the speed and efficiency of data access provides explicit motivation to combine features from Farmwald ‘037 with the disclosure in Dan. In particular, as with Yano, it would have been obvious to combine the DDR, precharge, and memory bank elements9 from Farmwald ‘037 with the Dan reference because each of those elements from Far mwald ‘037 is designed to in crease the speed and efficiency of data access operations. As discussed previously in Section V.A.1, supra, Farmwald ‘037 discloses the DDR, The memory bank elem ents of t he asserted Barth claim s are disclosed in Dan, so no combination with Farmwald ‘037 is required for this elem ent. (RX-5429C (Jacob Direct) at Q . 476; RX-4262 at 7:42-54; ID at 215) Yet even if the m emory bank elements were not disclosed in Dan, it would be obvious to co mbine this feature from Farmwald ‘037 with Dan for the reasons described herein. -369

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precharge, and memory bank elements of the asserted Barth claims, and each of those features serves to advance Dan’s goal of achieving an “o ptimally functioning system” by increasing the speed and efficiency of data access operations. (RX-5429C (Jacob Direct) at Qs. 47 0, 473, 476, and 479; ID at 212-17.)10 Moreover, even if it were not explicit in Dan and Far mwald ‘037, this need for increased speed and efficiency is a univers al motivator to com bine like references such as Dan and Farmwald ‘037. ( See RX-5357 at 28; ID at 213, 214-15, 216, 218, and 222 (each citing RX5357 at 28); Dystar, 464 F.3d at 1368.) In addition, each of the elem ents of the asserted Barth claim s performs the identical function that it performed in Dan and/or Farm wald ‘037. (RX-5429C (Jacob Direct) at Qs. 470, 473, and 476.) Therefore, the ALJ again correctly found that the combination of Dan with features from Far mwald ‘037 merely involves “well-known m ethod[s]” from the prior art performing “established function[s]” and “does no m ore than yield predictable results, and

therefore such combinations would have been obvious to one of ordinary skill in th e art.” ( See ID at 212-16 (citing KSR, 550 U.S. at 417); RX-5429C (Jacob Direct) at Qs. 470, 473, and 476.) Thus, there are m ultiple reasons why one of ordinary sk ill in the art would have b een motivated to combine the features from Farmwald ‘037 with the disclosure of Dan. Therefore, the Commission should affir m the ALJ’s finding that it w ould have been obvious to one of
10

As with Yano, the “s ense amplifier” elements from the asserted claims are inheren t in Dan , and it would have been obvious for one of ordinary skill in the art to apply the write operation described in Dan to a variety of m emory types includ ing DRAM, in which case th e resulting method would necessarily include a code that sp ecifies that a row of sense amplifiers be activated, or that a sens e operation occur, in th e memory device. ( See Section V .A.1, n.12, supra; RX-5429C (Jacob Direct) at Q. 478; ID at 217.) Because such elem ents are inherent in Dan, no combination with Farm wald ‘037, R elease 4, or som e other reference is necessary. Nonetheless, even if required, it w ould have been obvious to incorporate such elem ents from Farmwald ‘037 or Release 4 for th e same reasons as discussed he rein with respect to the DDR, precharge, and memory bank elements. (Cf. RX-5429C (Jacob Direct) at Qs. 516-18.) -37-

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ordinary skill in the art to combine Dan with features from Farmwald ‘037. (ID at 212-17.) 4. Combination 4—Dan Combined with Features of SCI and Release 4

As with the previous co mbinations, there are multip le reasons why one of ordinary skill in the art would have been motivated to combine Dan with features disclosed in SCI and Release 4. Dan ex pressly discloses that “[t]o achieve an optim ally functioning system , i.e., peak eet external m emory’s timing

performance, data should be held stable just long enough to m

requirements and not an instant longer.” ( See RX-4262 at 2:1-4; RX-5429C (Jacob Direct) at Q . 489.) In light of this express goal of “an optim ally functioning system,” it would have been

obvious to combine the DDR ele ment from SCI, and the precharge and m emory bank elements from Release 4 with the disclosure in Dan. In particu lar, as d iscussed previously in Section V.A.2, supra, SCI discloses the DDR elem ent, and Release 4 disclo ses the precharge and

memory bank elements of the asserted Barth claim s, and each of those elem ents helps optimize memory system function by increasing the speed and efficiency of data access operations. (ID at 212-17; see also RX-5429C (Jacob Direct) at Q. 479.) As such, th ere is exp licit motivation to com bine the DDR feature from SCI, and th e precharge and m emory bank features from Release 4, with the d isclosure in Dan in order to advance Yano’s express goal of “an optim ally functioning system.” Furthermore, this need for optimal functionality and increased speed of data access is a universal motivator to com bine Dan with features from SCI and Release 4, even if there was no explicit su ggestion of such in the

references themselves. (See RX-5357 at 28; ID at 213, 214-15, and 216 (each citing RX-5357 at 28); Dystar, 464 F.3d at 1368.) In addition, as with prior com binations, each element of the asserted Barth claim s

performs the identical f unction it performed in Dan, SCI, a nd/or Release 4. (RX-5429C (Jacob Direct) at Qs. 470, 473, and 476.) Therefore, the ALJ correctly found that the combination of -38-

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Dan with features from SCI and Release 4 m erely involves “well-known m ethod[s]” from the prior art performing “established function[s]” and “does no more than yield predictable results, and therefore such combinations w ould have been obvious to one of ordinary skill in the art. (See ID at 212-16 (citing KSR, 550 U.S. at 417); RX-5429C (Jacob Direct) at Qs. 468-78.) Given the multiple reasons why one of ordinary skill in the art would have been ”

motivated to com bine the featu res from SCI a nd Release 4 with the disclo sure of Dan, the Commission should affirm the ALJ’s finding that it would have been obvious to one of ordinary skill to combine Dan with features from SCI and Release 4. (ID at 212-17.) 5. Combinations 5 and 6—Farmwald ‘037 Combined with Either the Yano Strobe Signal or the Dan Strobe Signal

During the 661 Investigation, th e claimed “strobe signal” was the only element from the asserted Barth claims identified as not disclosed in Farmwald ‘037. (RX-4239C at 9.) Indeed, in this Investigation, “Rambus only disputed whether Farmwald ‘037 disclosed the ‘strobe

signal’/’signal’ limitation and does not dispute that Farmwald ‘037 discloses the other features of the Barth patents.” (ID at 217 (citing CRB at 24-25); SRPFR at 38 (“At trial, Rambus and its expert Dr. Przybylski only contested whether Farm wald-Horowitz discloses the strobe

signal/signal limitation of the asserted claim s—no other lim itations are dispu ted as for this particular reference.”) (citing Tr. 2717:07-2719:07)); see also RX-5429C (Jacob Direct) at Qs. 366-384.) Yano and Dan are the first of multip le prior art referen ces newly identified by

Respondents in this Investigation that each disclo se this claimed strobe signal. And, as the ALJ found, there are many reasons why one of ordinary skill in the art would have been motivated to combine Farmwald ‘037 with the strobe signal feature from either Yano or Dan. In particular, Yano discloses that “th e data strobe signal (DS) creates the active state, the write data is transmitted by the databus (DBx) corresponding to this bit and the data is written to

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this bit.” (RX-4261 at 4:20-21; ID at 217-18). Figure 2 of Yano shows that this data strobe signal is asserted and then deasserted when valid data is on the data bus. (R X-4261 at Fig. 2; RX-

5429C (Jacob Direct) at Q. 487; ID at 218). Sim ilarly, Figures 2 and 3 of Dan show the claim ed strobe signal beginning as an internal write strobe on communication path 230 and then continues past write strobe gate 203 onto the write strobe line 256 as the external strobe signal. (RX-4262 at Fig. 2 and 3; RX-5429C (Jacob Direct) at Q. 258; ID at 218). Once the external strobe is asserted at time 323, as shown in Figure 3 of Dan, the memory interface 120 places data on the data bus 250. (R X-4262 at Fig. 3; RX-5429C (Jacob Direct) at Q. 258; ID at 218.) Once data is placed on the data bus 250, it is written to m emory upon the clocking of the claim ed

strobe signal. (RX-4262 at Fig. 3; RX-5429C (Jacob Direct) at Q. 487; ID at 218.) There are multiple reasons why o ne of ordin ary skill in the art would have been

motivated to com bine Farmwald ‘037 with the strobe signal feature f rom either Yano or Dan. First, the strobe signals fro m Yano and Dan overcom e “the inherent skew associated with various clocking schemes” by “indicating to the target m emory device that data is on the bus, thereby enabling higher-frequency data access rates.” (RX-5429C (Jacob Direct) at Qs. 483-8 9; ID at 217-19.) Thus, the strobe signal featur e from both Yano and Dan furthers the express

intent of Farmwald ‘037 to im prove “[p]rior art memory systems [that] have attem pted to solve the problem of high speed access to memory with limited success.” (R X-4269 at 2:12-24; RX5429C (Jacob Direct) at Q. 489.) This m akes sense because Yano expressly shares th e desire of Farmwald ‘037 for faster access to data in m emory, disclosing “a design can be created which enables processing at a higher speed in comparison to the prior art example.” (RX-4261 at 3:2021; RX-5429C (Jacob Direct) at Q. 489.) Sim ilarly, Dan strives “[t]o achieve an optim ally

functioning system, i.e., peak performance” wherein “data should be held stable just long enough to meet external memory’s timing requirements and not an instant longer.” (RX-4262 at 2:1-4; -40-

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RX-5429C (Jacob Direct) at Q. 489.) Therefore, there is explicit m

otivation to com bine the

strobe signal from either Yano or Dan with the write operation disclosed in Far mwald ‘037 in order to advance the shared goal of increased speed and efficiency of data operations. And even if it were not explicit in the referen motivator to add the “strobe signal” feature from ces themselves, there ex ists a un iversal

either Yano or Dan with Farm wald ‘037 to

improve the efficiency and speed o f data access operations. ( See RX-5357 at 28 (“But the benefits of speed, red uced power (i.e., efficiency), and compactness constitute universal

motivators even absent any hint of suggestion in the references them selves.”) (citing Dystar, 464 F.3d at 1368); RX-5429C (Jacob Direct) at Q. 489; ID at 218 (citing RX-5357 at 28).) Furthermore, as seen in Yano and Dan (and the other references cited by Respondents), the “strobe signal” lim itation of th e asserted Barth claim s was well-kn own in the art, and the claimed “strobe signal” performs the same established function in the assert ed Barth claims that it was known to perform in Yano and Dan, “nam ely timing the capture of data off of a bus.” (RX-5429C (Jacob Direct) at Q. 48 8.) Therefore, the ALJ corre ctly found that “combining the ‘strobe signal’ from Yano or Dan with the known write operation method described in Farmwald ‘037 does no m ore than yield predictable results, and therefore such co mbinations would have been obvious to one of ordinary skill in the art.” (ID at 218 ( citing KSR, 550 U.S. at 417); RX5429C (Jacob Direct) at Q. 488.) Given the num erous reasons why one of ordinary skill in the art would have been motivated to com bine the “s trobe signal” from Yano or Dan with the disclosu re of Farmwald ‘037, the C ommission should affirm the ALJ’ s finding that it would have been obvious to combine Farmwald ‘037 with the “strobe signals” from Yano and Dan. (ID at 217-19.)

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6.

Combinations 7 and 9—NextBus or Harriman Combined with Features from Farmwald ‘037

There also are m ultiple reasons wh y one of ordinary sk ill in the art would have b een motivated to com bine either the N extBus Specification prior art reference (“NextBus”) (RX4265) or U.S. Patent No. 5,313,624 (“Harrim an”) (RX-4266) with certain features disclosed in Farmwald ‘037. In particular, it would have been obvious to combine the DDR,11 precharge, and memory bank elements from Farmwald ‘037 with NextBus or Harriman because each of those elements from Far mwald ‘037 is designed to in crease the speed and efficiency of data access operations. (See Section V.A.1, supra; RX-5429C at Q511, 514, 518; ID at 219-22.)
12

Indeed,

such features further the express go al of Farmwald ‘037 to im prove memory data access ov er “[p]rior art m emory systems that have attem pted to solve the problem of high speed access to memory with limited success.” (R X-4269 at 2:12-24; RX-5429C at Q489.) Therefore, there is explicit motivation to combine the features of Farmwald ‘037 with either NextBus or Harriman. (RX-5429C at Q507, Q511, Q514, Q518; ID at 219-22.) Moreover, as acknowledged by the ALJ, this need for increased speed of data access is a universal motivator even absent explicit suggesti on of such in NextBus, Harrim an, or Farmwald ‘037. (See Section V.A.1, supra; RX-5357 at 28; ID at 219-22; Dystar, 464 F.3d at 1368.) In addition, each of the elements of the asserted Barth claims was well-known in the prior

11

The DDR elements of the asserted Barth claim s are disclosed in NextBus, so no co mbination with Farmwald ‘037 is required for this elem ent. (RX-5429C (Jacob Direct) at Q . 507; ID at 220.) Nevertheless, even if DDR was not disclosed in NextBus, it would be obvious to com bine this feature from Farmwald ‘037 with NextBus for the reasons described herein. The “sense am plifier” elements of certain as serted Barth claim s are express ly disclosed in NextBus and Harriman. (RX-5249C (Jacob Direct) at Q. 515; ID at 221 n.23.) And even if such elements were not disclosed in NextBus and Harrim an, it would have been obvious to incorporate such elements from Farmwald ‘037 or Release 4 for the sam e reasons as discussed herein with respect to the DDR, precharge, and m emory bank elem ents. (RX-5429C (Jacob Direct) at Qs. 516-18; ID at 221-22.) -42-

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art and performs “the same established function” that it performed in NextBus, Harriman, and/or Farmwald ‘037. (RX-5429C (Jacob Direct) at Qs. 507, 511, 514, and 518.) Therefore, the combination of NextBus or Harrim an with features from Farmwald ‘037 “does no m ore than yield predictable results, and such com binations would have been obvious to one of ordinary skill in the art.” (See id.; KSR, 550 U.S. at 417; ID at 213-22.) Given the multiple reasons that would have motivated the combination of features from Farmwald ‘037 with the disclo sure of either NextBus or Harrim an, the Commission should affirm the ALJ’s finding that it would have been obvious to one of ordinary skill to com NextBus and Harriman, respectively, with features from Farmwald ‘037. (ID at 219-22.) 7. Combinations 8 and 10—NextBus or Harriman Combined with Features from Release 4 bine

Likewise, there are multiple reasons why one of ordinary skill in the art would have been motivated to combine either NextBus or Harriman with features disclosed in Release 4. As with other combinations, it would have been obvious to com bine the precharge and memory bank elements from Release 4 with either NextBus or Harrim an because each of those elements from Release 4 is designed to increase the speed and efficiency of data access operations. ( See

Sections V.A.2 and V.A.4, supra; ID at 219-22; see also RX-5429C (Jacob Direct) at Qs. 511, 514, and 518.) In particular, the precharge elem ent in Release 4 would im prove speed of data acces s in both NextBus and Harrim an because, “by conducting a precharge operation when there potentially is no active operation on the bus (that is, follo wing a write operation ), the memory system could avoid a tim e penalty that would otherwise result from waiting un til the nex t memory operation to precharge the sense am plifiers.” (R X-5429C (Jacob Direct) at Q. 511.) And the multiple memory banks disclosed in Release 4 would increase the speed and efficiency

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of Both the NextBus and Harrim an data access operations “by allowing multiple banks to cycle in an interleaved fashion.” (RX-5429C (Jacob Direct) at Q. 514.) Indeed, this need for increased speed and efficiency of data access is recogn ized as a universal m otivator for co mbining like references such as NextBus, Harriman, and Release 4. ( See RX-5357 at 28; ID at 219-22 (citing ID at 213-16); Dystar, 464 F.3d at 1368.) In addition, as with earlier com binations, it would have been obvious to one of ordinary skill in the art to com bine certain features of Release 4 with NextBus or Harrim an because each of the elements of the asserted Barth claim s was well-known in the prior art and perform s “the same established function” that it perform ed in NextBus, Harrim an, and/or Release 4. (RX5429C (Jacob Direct) at Qs. 507, 511, 514, and 518.) Therefore, the com bination of NextBus

and Harriman, respectively, with features from Release 4 “does no m ore than yield predictable results, and such combinations would have been obvious to one of ordinary skill in the art.” (See id.; KSR, 550 U.S. at 417; ID at 219-22.) Given the multiple reasons one of ordinary sk ill in the art would have b een motivated to combine features from Release 4 with NextBus and Harrim an, respectively, the Comm ission should affirm the ALJ’s finding that it would have been obvious to do so. (ID at 219-22.) 8. Combinations 11 and 12—Farmwald ‘037 Combined with Either the NextBus Strobe Signal or the Harriman Strobe Signal

As discussed previously, during the 661 Investigation the claimed “strobe signal” was the only element from the asserted Barth claims identified as not disclosed in Farmwald ‘037. (RX4239C at 9.) And in this Investigation, “Ram bus only disputed whether Farmwald ‘037

disclosed the ‘strobe signal’/’signal’ lim itation and does not dispute that Farmwald ‘037 discloses the other features of the Barth patents.” (ID at 217 (citing CRB at 24-25); SRPFR at 38 (“At trial, Ra mbus and its expert Dr. Przybylski only contested whether Farm wald-Horowitz

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discloses the strobe s ignal/signal limitation of the asserted claim s—no other limitations are disputed as for this particular reference.”) (citin g Tr. 2717:07-2719:07)); see also RX-5429C (Jacob Direct) at Qs. 366-384.) NextBus and Harrim an are two addition al prior art references newly identified by

Respondents here that each disclose this claim ed strobe signal. First, NextBus discloses the use of the strobe signal DSTB* to sam ple data. (RX-5429C (Jacob Direct) at Q. 296; ID at 223.) In particular, NextBus states that “[w]hen data is placed on the bus, the data source (m aster for

writes, slave for reads) asserts the DSTB* signal. The rising edge of the DSTB is used to sam ple the data. During burst transactions, two words of data are transferred du ring each major clo ck

cycle.” (RX-4265.0045; RX-5429C (Jacob Direct) at Q. 296.) NextBus also expressly discloses that DSTB* is used to sam ple the data (rather than a clock signal) to “m inimiz[e] skew between the data and its clock.”13 (RX-4265.0071; RX-5429C (Jacob Direct) at Q. 296.) Similarly, Harriman describes the use of the DSTB* signal from NextBus, stating in

column 15 that “a data strobe signal 901 provides a timing reference for data when bursts of data are transferred. During burst transfers, the d ata sender provides the DST B* signal 901 with the data. The receiver cap tures data on the rising edge of DSTB* 901 as illustrated in Figure 9.” (RX-4266.0009 and .0019; RX-5429C (Jacob Direct) at Q. 321; ID at 223.) There are multiple reasons why o ne of ordin ary skill in the art would have been

motivated to com bine Farmwald ‘037 with th e strobe s ignal feature from either NextBus or Harriman. First, th e strobe signals of NextBus and Harrim an are each d esigned to increase the speed and efficiency of data access operations by overcoming the “inherent skew associated with
13

Indeed, this is precisely why the DQS signal is used in JE DEC DDR SDRAM specification. (ID at 112.) As a result, given Rambus’ argu ment that the DQS signal from JEDEC is the “strobe signal” that initiates the sampling of data as claimed in the Barth patents, Rambus cannot dispute in good faith that DSTB* from NextBus is the same type of claimed “strobe signal.” -45-

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various clocking schemes.” (RX-5429C (Jacob Direct) at Q. 526; ID at 222-23; also RX-5429C at Q. 296; RX-4265.0071.) Therefore, one of ordinary skill in the art as of the alleged priority date of the Barth patents would have been m otivated to combine the “strobe signal” from either NextBus or Harriman with the write operation m ethod described in Farmwald ‘037 to im prove the efficiency and speed of data access operatio ns “by indicating to the target me mory device that data is on the bus, thereby enabling higher-frequency data access rates. ” (ID at 222; RX-

5429C (Jacob Direct) at Q. 526.) Therefore, there is explicit m otivation to combine the strobe signal from either NextBus or Harrim an with the write operation disclosed in Farmwald ‘037 in order to advance the shared goal of increased speed and efficiency of data operations. And even if it were not explicit in the referen ces themselves, there ex ists a un iversal an with Farmwald

motivator to add the “strobe signal” feature from either NextBus or Harrim

‘037 to improve the efficiency and speed of data access operations. ( See RX-5357 at 28 (“But the benefits of speed, reduced pow er (i.e., efficiency ), and compactness constitute universal motivators even absent any hint of suggestion in the references them selves.”) (citing Dystar, 464 F.3d at 1368); RX-5429C (Jacob Direct) at Q. 489; ID at 218 (citing RX-5357 at 28).) Furthermore, as seen in NextBus and Harriman (plus Yano, Dan, and the other references cited by Respondents), the “strobe signal” lim itation of the asserted Barth claims was wellknown in the art, and the claim ed “strobe signal” perform s the same established function in the asserted Barth claims it was known to perform in the prior art, nam ely “indicating to the target memory device that data is on the bus.” (RX-5429C (Jacob Direct ) at Q. 526.) T herefore, the ALJ correctly found that “com bining the ‘strobe signal’ from NextBus and Harrim an with the known write operation method described in Farmwald ‘037 does no m ore than yield predictable results, and therefore such combinations would have been obvious to one of ordinary skill in the art.” (ID at 223 (citing KSR, 550 U.S. at 417); RX-5429C (Jacob Direct) at Q. 526.) -46-

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Given the multiple reasons why one of ordinary skill in

the art would have been

motivated to combine the “s trobe signal” from NextBus or Harrim an with the disclosure of Farmwald ‘037, the Co mmission should affirm the ALJ’s finding that it would have been obvious to one of ordinary skill in the art to combine Farmwald ‘037 with the “strobe signals” disclosed in NextBus and Harriman, respectively. (ID at 222-23.) 9. There Is No Reliable Evidence of Objective Considerations that Would Support a Finding of Nonobviousness

Finally, there are no objective or “secondary” considerations that would support a finding that the asserted Barth claims are not obvious over each of the twelve independent combinations of prior art discussed previously. As an initial matter, as recognized by the ALJ (ID at 226), the only “evidence” of objectiv e or “secondary ” considerations advanced by Ra mbus was the uncorroborated testimony of its exp ert witness Dr. Przybylski—testim ony the ALJ ultim ately found “so unreliable overall that his testimony in this matter could not assist him.” (ID at 309.) Rambus failed to establish the required nexus between any supposed evidence of “secondary” considerations and anything novel in the asserted Barth claims because every

element of the asserted claims was well-known in the prior art. See, e.g., In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“W here the offered secondary consideration actually

results from something other than what is both claimed and novel in the claim, there is no nexus to the m erits of the claim ed invention.”); Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If comm ercial success is due to an elem ent in the prior art, no nexus exists.”); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (F ed. Cir. 2006) (“[I]f the feature that creates the comm ercial success was known in the prior art, pertinent.”) Therefore, this lack of reliab le evidence regarding “objective” or “secondary” the success is not

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considerations of nonobviousness, when considered in conjunction with the twelve independent combinations of prior art that woul d have been obvious to one of ordinary skill in the art, clearly and convincingly demonstrates that the asserted Barth claims are invalid under 35 U.S.C. § 103. B. The False Distinction Between Synchronous and Asynchronous (Issue 2b)

Rambus’ purported contrast between “synchronous” and “asynchronous” prior art is a false distinction in terjected into this Investigation as a last ditch effort to avoid prior art that plainly discloses each and every elem ent of the asserted Barth claim s; it has no pertinence here whatsoever. Indeed, as dem onstrated below, the Dan and Yano prim ary references—references Rambus claims are asynchronous—in fact describe synchronous system s. As a result, Ra mbus’ purported distinctions between synchronous and asynchronous prior art are per se irrelevant with respect to those references. Moreover, a person of ordinary skill in the art would be motivated to apply the teachings of both asynchronous an d synchronous systems in develop ing memory systems—a finding universally adopted by the A LJ and the Staff in this Investigation, as well as by the BPAI in finding all claim s of the Barth pa tents invalid during reexamination. Therefore, there is no pertinence to any of the distinction synchronous and asynchronous references. 1. The Dan and Yano References Each Discloses a Synchronous System s Rambus attempts to draw between alleged ly

The ALJ fo und that the Dan and Yano references—which were not part of the 661 Investigation—expressly disclose the strobe signal / signal lim claims. ( See ID at 95-96, 102-03.) Because of this, itations of the asserted Barth

Rambus was forced to co ncoct a new t differentiate

argument for this Investigation, nam ely that the “ALJ erred because he did no

between the [allegedly] asynchronous m emory systems of Dan and Yano and the synchronous memory systems of the Barth I patents.” (CPFR at 42.) But this supposed falls apart because both references disclose synchronous memory systems. -48-

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(a)

Dan Expressly Discloses a Synchronous System

That Dan discloses a synchronous m emory system could not be clearer. Its title of the is “method and system for providing data hold tim e by synchronous random access memory.” (RX-4262, Title Page (emphasis added).) In an attempt to overcome this unequivocal statement, Rambus relies entirely on dubious testim ony from its expert Przybylski who surm ises the word “synchronous” in the title was a “typ ographical error” because there purp ortedly “is not support within the specification that the external m emory is, in fact, synchronous.” (Tr. (Przybylski) at 2690:1-20). Yet, as Jacob testified, Rambus itself defined a “synchronous” system during the Barth patent reexaminations as one “that synchronizes its data transfer operations with a clock. ” (RX-5429C (Jacob Direct) at Qs. 127-29, 494.) And this is precisely what Dan discloses when it states, “the present invention relates to a m emory interface on a semiconductor IC that transfers data to a data bus and writes the data to an external memory upon the clocking of a write strobe signal.” (ID at 102 citing RX-4262 at 1:01-10 (em phasis added).) Dan also refers to “clocks,” “clocking,” and “clocked”—concepts Ram bus has contended are indicative of synchronous systems—throughout its disclosure. (RX-4262 at 1:01-3:15.) Therefore, as the Staff contends, “Rambus’ assertion that Dan is lim ited to asynchronous memory systems should be rejected” as it “conflicts with express statements in the reference itself.” (SRB at 34-35.) The ALJ also observed that Przyby lski “often merely disputed the words of the paper, rather than offering an explanation or argument for the court to consider” (ID at 306) and did not offer any more explanation beyond testim ony “that the prior art does not m ean what it says” (ID at 307).14 Przybylski’s argument that Dan so mehow is not synchronous is a glaring exam ple of this. When faced with the copious express ev idence that Dan discloses a synchronous system ,
14

As the Staff set forth in its Response to Complainant’s and Respondents’ petitions for review, the ALJ’s findings as to Przybylski’s credibility are entitled to deference and Ra mbus’ challenge to the ALJ’s findings regarding Przybylski should be denied. (SRPFR at 12-14.) -49-

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Przybylski offered no evidence beyond his naked opinion that the num

erous references t o

“synchronous” memory, “clocking of a write strobe signal, ” and “clocks” in Dan som ehow do not disclose a synchronous m emory system. (Tr. (Przybylski) at 2695:4-22.) Tellingly, when provided an opportunity to allow Przybylski to explain his position on redirect, Rambus declined to ask Przybylski a single question, even though this testim ony contained nu merous

inconsistencies that demanded clarification as highlighted by the ALJ. ( Id. at 2742:3; ID at 30509.) Therefore, because Ram bus cited no ev idence that Dan is an asynchronou s reference beyond Przybylski’s uncorroborated testim ony—testimony the ALJ righ tly rejected—the Commission should disregard Ram bus’ arguments regarding the allegedly asynchronous nature of Dan. (See RIB at 87-89; RRB at 20-21.) (b) Yano Also Discloses a Synchronous System memory system. As Rambus has

Like Dan, Yano also discloses a synchronous repeatedly represented to the PTO in the Barth reexam

ination proceedings, “asynchronous”

means “that transmission to those devices of command and address information and data was not timed according to a clock signal.” (RX-5429C (Jacob Direct) at Qs. 127-28, 494; RX-4244 at 7; RX-4251 at 10; RX-4256 at 8.) As explained by Jacob, Figure 2 of Yano shows that the

command, address, and data information “clearly is ‘tim ed according to a clock sig nal.’” (RX5429C (Jacob Direct) at Q. 494.) Therefore, ap plying Rambus’ own definition, Yano does no t disclose an “asynchronous” system. Similarly, Rambus defined a “synchr onous” memory system during the B arth

reexaminations as one “that synchronizes its d ata transfer operations with a clock.” ( Id.) As seen in the following demonstrative exhibit RDX-3441, which was used during the hearing, each transition on the address line (B), th e command line (D), an d the data line (G) in Yano is tim ed according to the transition of the system clock (A): -50-

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(RDX-3441.) Indeed, when shown RDX-3441 during cross exam ination, Przybylski admitted that the m emory controller of Yano is synchronous and that there is a “tem poral relationship

between the activities of the m emory controller and the system clock,” which includes th e transfer of data to the m emory device as shown in line G of Figure 2. (Tr. (Przybylski) at 2608:23-2609:21, 2611:7-11.) So again, app lying Rambus’ own definition, Yano discloses a “synchronous” system. 15 Therefore the Co mmission should disregard Ram bus’ spurious

arguments that somehow the Yano reference is “asynchronous.”

The irrelevance of Rambus’ as ynchronous/synchronous distinction is further dem onstrated by the unassailable fact that the asserted claim s of the Barth patents are not lim ited to synchronous references. Barth himself admitted that claim 11 of the ‘3 53 patent does not even refer to a clock, which he acknowledged was required for the synchronous device. (Tr. (Barth) 384:22385:21; see also SRPFR at 26-27; R RPFR at 4, 10.) And Przybylski agreed. (Tr. (Przybylski) at 2637:9-11, 2714:9-2715:16.) Moreover, while none of the asserted claims of the Barth patents use the term “synchronous,” other claims of the Barth patents not asserted by Rambus do contain the term as an express limitation, thus indicati ng that the asserted claim s are not lim ited to synchronous systems. ( See id. at 2716:8-19 (acknowledging that non-asserted claim 1 of the ‘405 patent contains an express limitation “receiving a first code synchronously with respect to the external clock signal” (JX-3 41:5-11) (em phasis added), whereas the asserted claims of the Barth patents do not contain any such limitation).) -51-

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2.

A Person of Ordinary Skill in the Art Would Be Motivated to Apply the Teachings of Both Asynchronous and Synchronous Systems in Developing Memory Systems

With respect to the twelve separate prior art combinations that the ALJ found rendered the asserted Barth claim s obvious (ID at 210-11), the only prior art references that Ram bus

argues are “asynchronous” and would not be combined with “synchronous” references are Dan and Yano. (CPFR at 50-51.) Yet, as discussed previously, both D an and Yano disclose

“synchronous” systems. As such, Ram bus’ attempt to distinguish betw een asynchronous and synchronous references has no pertinence to any issue before the Comm ission. Moreover, even assuming arguendo that Dan and Yano somehow constitute “asynchronous” systems (which they do not), Rambus’ argum ent would still lack m erit, as th e evidence set forth at the Hearing demonstrated that persons of ordinary skill as of the priority date of the Barth patents routinel sought to combine aspects of asynchronous and synchronous systems. In particular, by October 1995—the earliest claim ed priority date of the Barth patents— persons of ordinary skill in the art were well aware of both asynchronous and synchronous y

systems, and synchronous systems had started overtaking asynchronous systems. (ID at 97 n.13.) The asserted prior art itself establishes this point. Rambus, for example, does not dispute that the NextBus Specification (RX-4265) and Far mwald ‘037 (RX-4269) are synchronous references, yet both systems were developed in 1990—over 5 years b efore the filing of the Barth paten ts. (RX-4266.0019 at 15:46-48 (stating that NextBus is “syn chronous”); CIB at 45 (adm itting that Farmwald ‘037 is a “synchronous” system ).) Therefore, when Yano and Dan were filed in 1990 and 1994, respectively, synchronous systems had become quite prevalent. (See ID at 90, 99.) Second, as Jacob testified, “engineers seek to solve problem s and use whatever tools are at their disposal. Asynchronous approaches solve problem s that purely synchronous system s cannot, and vice versa. In practice, m any systems represent a hybrid approach of these -52-

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techniques.” (RX-5429C (Jacob Direct) at Q. 496.) As an exam ple of such a hybrid approach, Jacob pointed to the JEDEC DDR SDRAM specification where the command and addres s ed

information is tim ed according to a clock ( i.e., a synchronous signal), but the data is tim

according to a signal called DQS that Rambus asserts is not a clock (i.e., an asynchronous signal). (Id.) Ram bus nonetheless criticizes this example, arguing that the JE DEC DDR specification took years to develop and was not published until 1999 ( originally filed in October 1995). (CPFR at 50-51.) Yet Ram i.e., after the Barth p atents were bus’ JEDEC-specific rebuttal

misses the point. In reality, the DQS signal used in the JE DEC DDR SDRAM specification is just one example, and using an asynchronous signal to sam ple data in a synchronous system was well known in the prior art years before the priority date of the Barth patents. For instance, in the NextBus Specification copyrighted by NeXT in 1990, the DSTB* signal is the sam e as the DQS signal in the JEDEC DDR SDRAM specification. 16 Specifically, in order to minimize clock skew, the receiver in the NextB us Specification “captures data at the rising edge of DSTB*.” (ID at 111-12.) Consequently, the ALJ held that “ DSTB* is the same type of signal and has the same purpose of DQS in the JEDEC DDR SDRAM specification Rambus alleges is covered by the asserted Barth patents.” (ID at 112 (em phasis added); see also RX-5429C (Jacob Direct) at Q . 296.) Indeed, as noted by the ALJ, Przybylski him self

admitted that the DSTB* signal in NextBus was used to sample data ju st like the DQS signal in the JEDEC DDR SDRAM specification. (ID at 112; R X-5429C (Jacob Direct) at Q. 308

(showing how the accused JEDEC DDR SDRAM system compares to the system of the NextBus Specification).) As another exam ple, Motorola had also developed asynchronous/synchronous hybrid
16

Similarly, the Harrim an patent was filed on May 14, 1991, and it also discloses the DSTB* signal where “data is sampled on the rising edge of ioClock or on the rising edge of DSTB*” like the JEDEC DQS signal. (RX-4266.0019 at col. 15:37-38.) -53-

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systems well before the alleged priority date of the asserted Barth patents. For exam

ple, the

Motorola 68000 m anual was published in 1993 and disclosed both “asynchronous” and “synchronous” implementations of the sam e device. (RX -4275; see also RX-5429C (Jacob Direct) at Qs. 427-44.) Specifically, the Motorola 68000 reference discloses both “Asynchronous Operations” of its memory system in Section 5.7 and “Synchronous Operations” in Section 5.8. W hen confronted with this evidence at the Hearing, Przybylski’s only response was that som ehow the “asynchronous” and “synchronous” operations of the Motorola 68000 were “essentially the sam e.” (Tr. (Przybylski) 2698:10-2699:9; see also RX-5429C (Jacob

Direct) at Q. 496 (citing the Motorola reference as evidence of persons of ordinary skill using both asynchronous and synchronous features in the same device).) Therefore, both the N extBus Specification and the Motorola 68000 refute Rambus’ argument that com bining synchronous and asynchronous features into the sam e system was any

difficult and not obvious by 1995, as such combinations had been known in the art for m

years. Indeed, consistent with Jacob’s opinions, the obviousness of combining certain signals from asynchronous systems into synchronous systems was recognized and adopted by the BPAI during reexamination of the Barth patents. Specifically, in finding all of the Barth claims invalid, the BPAI relied on “ testimony describing how asynchronous functions were being combined routinely with, and integrated into, synchronous DRAM systems by skilled artisans” before the priority date of the Barth patents. (RX-5357 at 12; RX-5429C (Jacob Direct) at Q. 129 (emphasis added).) For exam ple, the BPAI found the claim s of the ‘405 patent obvious in light of the combination of Hayes (an asynchronous reference) with Watanabe (a synchronous reference), holding that the “ev idence shows that sk illed artisans were routinely making sim ilar

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adjustments.” (RX-5357 at 12.) 17 Therefore, the BPAI rejected Rambus’ arguments that one of ordinary skill in the art would not employ asynchronous features in synchronous systems. (Id.) In summary, the ALJ’s rejection of Ra mbus’ argument regarding the com bination of asynchronous and synchronous features is well supported by the prior ar t itself, by Jacob’s

testimony, and by the findings of the BPAI during the Barth reexam inations. (ID at 211-12.) In contrast, Rambus’ only support for its position is uncorroborated testim ony from its expert

Przybylski—an expert who the ALJ concluded lacked credibility and provided “no useful testimony to the ALJ or the Comm ission.” (ID at 306. ) Therefore, the Commission should disregard Rambus’ irrelevant arguments regarding asynchronous versus synchronous prior art. C. Whether Harriman Evidences Publication of NeXTBus Specification, in View of Fact that NeXT Is Assignee of Harriman (Issue 2c)

Harriman evidences th e publication of the Ne xtBus Specification by incorporating the entire NextBus Specification by reference and thr ough express disclosure of the relevant aspects of the NextBus Specification, including the data strobe signal DSTB* and the external clock MCLKSEL*. (RX-4266 at col. 15:32-60.) As such, the disclosures regarding the NextBus Specification in Harriman corroborate the significant evidence of pubic availability contained in the NextBus Specification itself. 1. Harriman Incorporates the NextBus Specification by Reference, Which Standing Alone Is Prior Art to the Barth Patents

As an in itial matter, given that Harrim an incorporates the NextBus S pecification by reference (ID at 104), it is im portant to consider what is disclosed in the NextBus Specification itself and therefore disclosed in Harriman by reference. Th e ALJ identified significant evidence

17

Similarly, the Exam iner found during reexam ination of certain Barth patents that one of ordinary skill “ would have understood that a synchronous memory device does not exclude signals that may be asynchronous.” (RX-4252 at 13; R X-5429C (Jacob Direct) at Q. 129 (emphasis added).) -55-

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of public availability contained in the Next

Bus Specification itself , including “the 1990

copyright date, a specified reorder nu mber N6010 (that allowed customers to order the NextBus Specification), and technical support telephone num ber within the NextBus Specification. ” (ID at 105.) As a result, the ALJ correctly concluded that the NextBus Spec ification standing alone is prior art under 35 U.S.C. § 102(b), even without reference to Harriman. (ID at 105.) As explained by the Staff, Jacob’s testim ony during the Hearing supports the A LJ’s

determination and provides further context to the evidence of public availability contained in the NextBus Specification (and incorporated by reference in Harrim an). (SRPFR at 15-19.) puter]

Specifically, Jacob testified that (1) NeXT Computer’s “first product [the NeXT com

rolled out in the 1990 tim e frame” which is consistent with the 1990 copyright of the NextBus Specification; (2) the reorder number “suggests that if you want more copies of the specification, you could call NeXT, give them that number, and they would send you more copies;” and (3) the technical support number “suggests that th e tech support departm ent was fa miliar with this document and wanted to be able to tell people about the contents of the docum ent.” (Tr. (Jacob) at 1153:5-1154:7.) As the Staff noted, “[t]his evidence is consiste nt with im plementers of the NeXT product having needed (and being able to obtain) access to the specification documents on that product, such as the NextBus Specification.” (SRPFR at 17.) Moreover, the S taff’s position is consistent the NextBus Specification itself that states it was written for persons developing products to work with the NeXT computer. (RX-4265.0011) (“This specification is written for NeXT hardware developers.”) In situations such as this, courts have found that such evidence of routine business practices and evidence of public demonstrate public availability of prior art.18 availability in th e prior art itself often

See, e.g., Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988) (evidence of routine business practice can be used to prove that a reference was accessible and, if -56-

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2.

The Disclosure of NextBus in Harriman Further Supports the ALJ’s Finding that the NextBus Specification Was Publicly Available the NextBus Specification in the

The ALJ’s identification of key disclosures from

Harriman patent (RX-4266) further corroborates the finding that the NextBus Specification qualifies as publicly-available prior art. (ID at 105-06.) First, as mentioned previously, the ALJ found that “U.S. Patent No. 5,313,624 (‘Harrim specification.” (ID at 104.) Specifically, Harrim an’) incorporates by reference the NextBus an states that a portion of the preferred

embodiment of the invention included “ bus 209 in a bus known as the ‘NextBus’ and is described in NextBus Specification, published by NeXT Computer, Inc., Redwood City, Calif.” (RX-4266.0019 at col. 15:43-60 (emphasis added).) 19 As Jacob testified, this reference to the in Harriman is the NextBus Specification at issue in this Investigation because “[t]he document that we have got is called the NextBus specification. It has a publication date of—a copyright date of 1990, which is before th is patent was subm itted. All of the descrip tions match up. The figures

accessibility is proved, there is no requirem ent to show th at particular members of the public actually received the information); Oki Am., Inc. v. Adv. Micro Devices, Inc., 2006 U.S. Dis t. Lexis 73144 at *15-20 (N.D. Cal. Septem ber 21, 2006) (relying on indicia of public availability in document itself); see also Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 9 74-75 (Fed. Cir. 2010) (relying in part on a copyright date to determ ine public availability of a prior art reference); Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351 (Fed. Cir. 2008) (holding a prior art reference was publically available in part because the primary purpose of the reference was to enable parties to create products that complied with a standard ); In re Natures Remedies, Ltd., 315 Fed. App’x 300, 305 (Fed. Cir. 2009) (“The fact that there is nothing in the [prior art reference] evidencing an intent to keep its con tents confidential serves to buttress the board ’s determination that it was publically available prior to the 107 patent’s critical date.”); Mass. Inst. of Tech. v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985) (concluding that a paper was publically accessible where “persons interested and of ordinary sk ill in the subject matter were actually told of the ex istence of the paper and informed of its conten ts by the oral presentation, and the docum ent itself was actually dis seminated without restriction”); Stamps.com Inc. v. Endicia, Inc., 2011 WL 2417044, *4 (Fed. Cir. June 15, 2011) (finding no issue of material fact as to whether a prior art reference was publicly available because the patentee did not subm it any evidence to rebut the evidence of printed publication).
19

Such a specific reference in Harrim an to the NextBus Specification is sufficient to incorporate the NextBus Specification by reference under Federal Circuit precedent. (RRB at 27-28.) -57-

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are substantially similar. The diagram—the names of the signals are the same and the operation is the same.” (Tr. (Jacob) at 1165:22-1166:9; see also 1154:22-1155:7.) In fact, Harriman states that “NextBus is a superset of NuBus, which is defined by IE EE standard 1196. The NextBus has d ifferent clocks, data transfer rate and electrical interface than NuBus.” (RX-4266.0019 at col. 15:50-53.) T his exact same distinction between NextBus and NuBus is found in the NextBus Specification, f urther evidencing that the NextBus Specification incorporated by referen ce in Harrim an is the sam e NextBus Specification at issue in th Investigation. (RX-4265.0013.) In addition, as Jacob testified in detail, Harriman discloses many of the key aspects of the system disclosed in the NextBus Specification, including the DSTB* and MCLKSEL* signals. (RX-5429C (Jacob Direct) at Qs. 312-27 (includi ng a detailed claim chart for the Harrim an patent).) Indeed, th ere is so m uch direct overlap between Harrim an and the NextBus Specification, the ALJ found that H arriman standing alone anticipates the sam e asserted Barth claims for the same reasons as the NextBus Specification. (ID at 104.) 20 Moreover, the fact that NeXT is the assignee on Harriman further evidences that NeXT made the NextBus Specification availab le to persons of ordinary skill in the art well before the filing date of the Barth patents. Harrim an was filed on May 14, 1991 and issued May 17, is

1994—well over a year prior to the alleged priority date of the Barth patents. (RX-4266.0001.) Therefore, the disclosure of Harrim an was available not only to assignee NeXT, but also to the general public more than one year before the earl iest priority date for the Barth patents. (Id.) In
20

Specifically, the ALJ f ound that “[w]hile Respondents perform ed an element by elem ent analysis of Harrim an in their initial post-h earing brief, that analys is is sim ilar to the NextBus analysis set forth below. Indeed m any of Rambus’ arguments against Harriman parallel those to NextBus, e.g., Harriman does not disclose the claim ed ‘memory device’ . . . To the extent that the anticipation analysis for Harriman is strik ingly similar to the analys is for NextBus, the ALJ incorporates by reference his analysis below for the Harriman reference.” -58-

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other words, if NeXT had actually desired

to keep the Nex tBus Specification confidential as

Rambus suggests (CIB at 67), NeXT would not have publicly disclosed so m any aspects of the NextBus Specification in Harrim an and notified persons of ordinary skill in the art that it “publishe[s]” the NextBus Specification. (R X-4266 at col. 15:43-62.) Thus, by providing detailed information of what is contained in th e NextBus Specification and by stating that NeXT located in “Redwood Ci ty, Calif.” publishes the NextBus Specification, the Harriman inventors not only infor med the public as to why they should acquire full copies of the NextBus Specification, but also how and where to get such copies.21 (Id.) The inclusion of such technical details and contact info rmation in the Harrim an patent assigned to NeXT de monstrates that NeXT both supported and enabled the public availability of the NextBus Specification. In contrast, as the ALJ found, Ra mbus’ arguments against the public availability of the NextBus Specification “simply state that such evidence is insufficient without providing a reason as to why they are insufficient.” (ID at 106.) Indeed, Ram bus offers no evidence that the

NextBus Specification was not pub licly available prior to the claim ed priority date of the Barth patents, let alone evidence refuting the strong corroboration of public availability provided by the Harriman patent. In such cases where the p atentee offers no evidence to rebut evidence showing public availability, courts find against the patentee. See, e.g., Stamps.com, 2011 WL 2417044, at *4 (finding no issue of m aterial fact as to whether prior art reference was publicly availab le

because patentee did not submit any evidence to rebut evidence of publication). Therefore, the Commission should hold that the NextBus Specification is prior art to the Barth patents. D.
21

Whether the Respondents Have Demonstrated the Publication Date of the SyncLink Specification (RX-4270C) (Issue 2d)

“A reference is considered publicly accessible if it was dissem inated or otherwise m ade available to the extent that person s interested and ordinarily skilled in the subject matter or art exercising reasonable d iligence can locate it.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). -59-

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Respondents demonstrated that SyncLink (RX-4270C) was publicly available before the claimed priority date of the Barth patents. Whether a docum ent is publicly available is stances surrounding the

determined on a “case-by-case basis based on the ‘facts and circum

reference’s disclosure to members of the public.’ A reference is considered publicly accessible if it was ‘dissem inated or otherwise m ade available to the extent that persons in terested and

ordinarily skilled in th e subject m atter or art exercising reasonable d iligence can locate it.’” Lister, 583 F.3d at 1311 (internal citations omitted). SyncLink meets this standard. 1. SyncLink Itself Evidences Its Public Availabilty

There is significant evidence within SyncLink itself that demonstrates that it was publicly accessible. SyncLink has a 1995 copyright an d is dated August 21, 1995. (RX-4270C.0001, 4270C.00016.) The Microprocessor and Microcom puter Standards Subcommittee of the IEEE Computer Society sponsored SyncLink. (RX- 4270C.0001.) SyncLink provides perm ission for “IEEE Standards Comm ittee participants to reproduce th is document for purposes of IEEE standardization activities” and perm ission is “granted for member bodies and technical

committees of ISO and IEC to reproduce this docum ent for purposes of developing a national position.” (Id.) Finally, SyncLink states that “[o]ther entities seeking perm ission to reproduce this document for standardization or other activities, or to reproduce portions of this docum ent for these and other uses m ust contract the IEEE Standards Deportm ent for the appropriate license.” (Id.) Indeed, SyncLink provides an address for the IEEE Standards Departm ent—445 Hoes Lanes, P.O. Box 1 331, Piscataway, NJ 08 855-1331—which is the sam e address provided for persons to obtain copies of other IEEE standards. (RX-4270C.0001, 4270C.0019 n.1.) And SyncLink states that “[c]omm ents for revision of IEEE Standards are welcom e from any interested party regardless of membership affiliation with IEEE.” (RX-4270C.0002.) As a result, SyncLink itself demonstrates that the IEEE m ade the SyncLink reference accessible to m embers -60-

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of the interested public for

the purpose of the “standardization” and “developing a national

position,” and were open to comm ents from “any interested party.” This is substantial evid ence that the IEEE made SyncLink available to the public to gain acceptance and for public comment. In such cases, courts have found that a document qualifies as a printed publication.22 2. Rambus and JEDEC Documents Show SyncLink Publicly Available.

In addition, docum ents from both Ram bus and JEDEC de monstrate that SyncLink was generally available to m embers of the interested public. At least as early as September 1993, Rambus had detailed knowledge of SyncLink. (RX-4287C ( stating that “the Ram Link boys are now proposing an alternate, m ore Rambus like scheme, called SyncLink”); see also RX-3684C (a SyncLink docum ent copyrighted 1993 produced by Rambus).) Rambus had a copy of a document describing significant details concerning SyncLink “posted outside [Crisp’s] cube” and maintained an electronic file in the “P1596.4 directory” ( id.), and SyncLink was sim ilarly numbered “P1596x-199x.” (RX-4270C.0016.) Indeed, Rambus’ detailed knowledge of

SyncLink even included knowledge that SyncLink has “R AMS [that] provide an output vali d strobe that marks the validity of data on the bus.” (RX-4287C.)23 Rambus continued to track the developm ent of SyncLink through the m id-1990s before filing the Barth patents. For example, Rambus attended a JEDEC meeting concerning SyncLink on May 24, 1996, along with representatives of over 30 com panies in the industry. (RX-

2048C.0001.) At the meeting, Hyundai gave a detailed presentation concerning SyncLink, with
22

In re Klopfenstein, 380 F.3d 1345, 1351 (Fed. Cir. 2004) (“‘[e]vidence of business practice that was sufficient to prove [a docum ent] was widely available and accessib le to the interested public’ can be sufficient to p rove that the document was publicly accessible”); Constant, 848 F.2d at 1569 (evidence of routine business practice can be used to prove that a reference was accessible); Oki, 2006 U.S. Dist. Lexis 73144, at *15-20. As the ALJ found, Ra mbus accused products of infringement by alleg ing DQS “is the sign al that is used to tell th e receiver that d ata is valid on the bus . . . . [and] Ram bus cannot construe ‘strobe signal’ in two different ways to prove infringement and avoid invalidity.” (ID at 121.) -61-

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meeting notes stating that the “IE

EE task group m emory users and suppliers” developing

SyncLink brought SyncLink “to JEDEC for a pinout standard.” (RX-2048C.0005; see also RX2048C.0050-58 (containing detailed slide from the proposal).) And the JEDEC m eeting minutes state that the SyncLink meeting minutes were “available to anyone who requests it.” (Id.) In addition, after attending this meeting on behalf of Rambus, Crisp sent an email to other Rambus executives and engineers on the same day entitled “JEDEC JC42meeting notes (DRAM) *INCLUDES SYNCLINK INFO* (long report!).” (RX-2050C.0001.) In it, Crisp reported on the “Hyundai: SyncLink presentation,” noting “[t]hey send a strobe with the input packets which is used to validate the packet. They do not regard this as a clock.” (RX-2050C.0004.) Crisp confirmed the public nature of the S yncLink development, noting “[t]hey offered to put anyone on the SynchLink proposal that wants to be put on the list” and that he had “attended all of the SynchLink meetings.” (RX-2050C.0005 (em phasis added).) Crisp expressed his concerns over SyncLink’s “open publicizing of their spec” a nd noted he believed the motivation for

developing SyncLink was to “to av oid paying Rambus royalties by developing a free and open standard.” (RX-2050C.0006 (emphasis added).) Crisp even referred to an EE Times news

article concerning the S yncLink standard (RX-2050C.0007), and a copy of an EE Tim es article entitled “SyncLink to take on SDRAMs” dated April 10, 1995, was in cluded in the May 1995 JEDEC meeting minutes. (RX-204 8C.) Finally, Crisp admitted that “SyncLink docum ents were available publicly through an FTP site” during the time he attended the SyncLink meetings. (JX-030.0028-29, 31 at 83:15-85:21; 97:3-17.) Crisp also admitted that the SyncLink documents made available to the public through the F documents. (JX-030C.0031 at 97:3-17.) When asked about RX-2050C, Barth himself readily admitted that SyncLink “was one of the technologies that we were tracking” during the m id-1995 timeframe and that R ambus was -62TP site included the draft SyncLink standard

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“analyzing SyncLink at this tim e for competitive analysis reasons.” (T r. (Barth) 425:7-427:3.) To that end, Rambus created internal analyses reflecting a very detailed knowledge of SyncLink. (RX-2475C.) Indeed, Crisp even asked Barth in June 1995 “if it is possible to salvage and get anything that helps us get a claim to shoot synclink in head.” (RX-4288C (emphasis added).) In summary, SyncLink itself demonstrates the public accessib ility of the SyncLink

system well before the claimed October 18, 1995 Barth priority date. Rambus’ own testimony as well as JE DEC meeting m inutes provide corroboration showing that presentations regarding SyncLink were given to large numbers of companies in the field. Even Rambus’ own documents contain substantial evidence that SyncLink was a “free and open standard” and openly publicized, including in EE Ti mes articles. Rambus, in contrast, offers no evidence to support its position that SyncLink was not publicly available. Given the enormous am ount of information Rambus had concerning SyncLink before filing the Barth paten ts, if there was any eviden ce from that period showing that SyncLink som ehow was not publicly available, Ram bus would have had it. Yet Rambus did not offer any evidence to support its position. In such circum stances, courts have held that the reference in question was publically available. WL 2417044, at *4. Therefore, the Co See, e.g., Stamps.com, 2011

mmission should hold that SyncLink was publically

available and constitutes prior art to the Barth patents. VI. SDR PRODUCTS DO NOT INFRINGE THE BARTH PATENTS (ISSUE 3D) Rambus contends that double date rate (DDR) m emory controllers infringe the Barth

patents. (C IB at 1-2, 24, 26.) Specifically, Rambus contends that a data strobe signal, DQS, used in DDR products initiates sam pling as claimed. (CIB at 27-31, 34, 39.) Ra mbus does not allege infringement by single data rate (SDR) memory controllers. Three accused STMicro products, Cartesio1, Hydra, and Yeti 3.1, include dual-purpose memory controllers that can connect to either non-infringing SDR m -63emory or allegedly

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infringing DDR memory. (RX-6275C (Walker) at Qs. 55-57, 69-75; RX-6035C at 1, 38, 411-12, 1265-71; RX-6031C at 1, 24-25; RX-6040C at 9, 18, 23, 28-30, 35.) The Hydr example, has an SDRAM interface that supports both SDR and DDR m signal, DDR_DQS, is used in “DDR mode a product, for

emory, but the DQS

only.” (R X-6031C at 24-25.) L ikewise, the

Cartesio1 and Yeti 3.1 products do not utilize a DQS signal when connected to SDR memory. (RX-6035C at 1268-71 (SDR DQS(L/U) shown for DDR but not SDR); RX(mc_mem_dqs(3:0) “is not used in the SDR mode”).) T 6040C at 18

hese products do not infringe when

connected to SDR memory because they lack the critical DQS signal. The record shows that Seagate and connect STMicro products to non-infringing

SDR memory. Seagate has m anufactured disk drives with Y eti for the “lower perform ance and cost sensitive market segments” using SDR m emory. 24 (RX-6273C (Siraz) at Qs. 45, 47-50.) has m anufactured at Qs. 80-81; devices with Cartesio1 using SDR m emory. ( .)

The record thus estab lishes that th e dual-purpose SDR/DDR interfaces of STMicro’s Cartesio1, Hydra, and Yeti 3.1 have substantial non-infringing uses when connected to SDR memory. The ID was incorrect to conclude that these products do not have substantial noninfringing uses. (ID at 67.)
25

Consequently, Rambus has failed to m eet its burden to show that

STMicro’s Cartesio1, Hydra, and Yeti 3.1 infringe under 35 U.S.C. 271(c).

24

LSI is also a Seagate supplier of accused products that support both SDR and DDR memory. (RX-6273C (Siraz) at Qs. 8, 27, 43, 45.) The same analysis applies to LSI’s SDR/DDR products Yeti, Teton, Nonet, and Sphinx. (Id. at Qs. 45, 47-50.). It is irrelevant whether an end custom er, such as a downstream purchaser of a Seagate disk drive or a unit, is capable of sw itching from a DDR me mory to an SDR m emory. (ID at 67, n.9.) The point is that S TMicro’s customers, like Seagate and are ab le to connect to non-infringing SDR memory. -64-

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VII.

THE ALJ ERRED IN NOT FINDING THE BARTH PATENTS UNENFORCEABLE DUE TO RAMBUS’ INEQUITABLE CONDUCT A. Respondents Have Proven by Clear and Convincing Evidence that the SyncLink Specification (RX-4270C) Is Material to the Patentability of the Asserted Barth Claims

Respondents’ expert, Dr. Jacob, identified RX-4270C as the SyncLink reference in his witness statement: 385. Q: Is there another prior art system you found that invalidates a claim of the Barth patents? A: Yes. Another invalidating prior art reference is the SyncLink Standard v.0.5. I’ll refer to this reference as SyncLink. Q: What is RX-4270C? A: It’s the SyncLink reference. n

386.

(RX-5429C (Jacob Direct) at Qs. 385-86 (emphasis added).) Jacob relied on RX-4270C i

rendering his opinion that SyncLink wa s anticipatory prior art. (Id. at Qs. 385-405.) As shown in Respondents’ petition (RPFR at 29-32) and as discussed further in Section C below, SyncLink—and specifically RX-427 0C—anticipates all ass erted claims of the ‘353 Patent and claims 1, 20, and 24 of the ‘109 Patent; thus RX-4270C is indisputably a material reference. B. The PTO’s Broadest Reasonable Construction of “Signal” in the ‘109 Patent Is Broader than the Construction of “Strobe Signal” Applied by the ALJ ’s reexamination of the ‘109 patent is

The construction of “signal” used in the PTO

broader than the construction of “strobe signal” applied by the ALJ. In particular, the PTO’s construction of “signal” encompasses embodiments in the specification that do not use a “strobe signal” at all. 1. The ALJ’s Construction of “Strobe Signal”

In the 661 Investigation, the ALJ found: (i) that “a strobe signal… to initiate sam pling of a first portion of the data by the m emory device” in claim 11 of the ‘353 patent m eans “a timing signal to initiate sam pling of a first p ortion of the data by the m emory device;” and (ii) that “an external strobe signal… to signal the m emory device to sample data” in claim 11 of the ‘405 -65-

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Patent means “a timing signal to signal the memory device to sample data.” 661 ID at 20. Thus, “strobe signal” was construed simply to mean a “timing signal.” In this Investigation, the ALJ again construed “strobe signal” to m ean “a timing signal.” Here, however, the ALJ elaborated that there can be two different kinds of timing signals: The ALJ finds that the “strobe sig nal” […] can encom pass a signal that is capab le of indicating when sampling may begin (“indirect contro l”) and a signal that […] actually initiates data sampling (“direct control”). (ID at 54.) However, a key sim ilarity between the direct control configuration utilized with JEDEC complaint memory devices ( i.e., where the DQS strobe signal con trols the latching of data) and the indirect control configuration of certain preferred embodiments in the Barth Patents (i.e., where a clock sign al controls the latching of data afte r first detecting a strobe signal) is that both configurations utilize a strobe sig nal to initiate the sampling of data by a memory device as part of a write operation. The evidence shows that this broad concept, i.e., the use of a strobe signal to initiate sampling, is adequately disclosed by the specification for written description purposes. (Przybylski, Tr. 2738:19-2739:13.) (ID at 237. ) Thus, the ALJ’s construction of the term “strobe signal” as used in the asserted

claims of the ‘353 and ‘405 patents encom passes both (i) systems that use a strobe signal m erely to put in motion a set of actions that result in the sampling of data at some future time, as well as (ii) systems that use a strobe signal itself to sample data. 2. The PTO’s Construction of “Signal” “signal” was a broad ter m

The PTO i n the ‘109 reexam ination found that the term

covering multiple embodiments disclosed in the specification, includ ing one em bodiment that does not use a “strobe signal” at all in connection with a data transfer. (See RX-5356.0003 (“The ‘109 patent discloses at least two embodiments for operating a DRAM . . . The first embodiment employs a strobe signal, the second does not.”).) The PTO concluded that “[i]n both embodiments, a memory device (e.g., a DRAM) receives co mmand control information causing it to begin a process for reading data from 5356.0004.) In the , or writing data to, the memory core.” (RX-

strobe embodiment, according to the PTO, if the command control -66-

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information specifies a write m ode, the strobe signal causes the m emory device to accept dat a from a data bus. ( Id.) In a second, non-strobe embodiment, according to the PTO, a controller varies the timing of data transm issions without using a strobe signal; rather, the request packet contains a delay value that indicates to the DRAM when the data specified in the req uest packet will begin to be sent relative to the time at which the packet is sent. (RX-5356.0004-5.) As this analysis shows, the “signal” term was construed by the PTO to e ncompass a nonstrobe embodiment that was not found by the ALJ to be within the scope of the “strobe signal” terms in the ‘353 and ‘405 patents. As a result, the “signal” elem ent of the ‘109 claims are broader in scope than the “strobe signal” elements of the ‘353 and ‘405 claims. C. Even Though the PTO’s Broadest Reasonable Construction of “Signal” Is Broader than the Construction of “Strobe Signal” Applied by the ALJ, the SyncLink Specification (RX-4270C) Is Not Cumulative to the Art Presented to the PTO reasons why SyncLin k is no t cumulative to Farmwald: (1)

There are at least two

Farmwald has been found by the P TO to anticipate the non-strobe embodiment of the ‘109 patent whereas SyncLink teaches one of the strobe embodiments; and (2) during prosecution of the ‘109 patent, the app licant successfully overcame a rejection based on Farm wald by arguing that the Ad drValid signal was no t the claimed signal b ecause it w ent to an interm ediate transceiver device, not the claim ed “memory device,” w hereas SyncLink does not use an intermediate transceiver device. 1. Farmwald Was Found to Anticipate the Non-Strobe Embodiment Whereas SyncLink Teaches the Preferred Strobe Embodiment

As discussed above, the PTO found that the ‘109 patent disclosed a non-strobe embodiment wherein a controller varies the tim ing of data transm issions without the use of a strobe signal; rather, the request p acket contains a delay value that indicates to the DRAM when the data specified in the request packet “will begin to be sent relative to the time at which the -67-

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packet is sent.” (RX-5356.0005-6 (em phasis added).) Accordingly, the PTO found that Farmwald discloses the non-strobe embodiment of the ‘109 patent claims.26 SyncLink, on the other hand, disclo ses the “indirect control” strobe signal embodiment of the ‘109 patent claim s. (RPFR at 29-32; RIB at 77; RX-5429C (Jacob Direct) at Qs. 393-95, 402.) Specifically, when the flag signal switches from “0/1” to “1/0” the m emory knows that pled using the “strobe” signal in

data is following the command, and the data is then sam SyncLink. The “strobe” in Synclink is a ref

erence clock signal. (RX-4270C.0063 (“The

incoming strobe signal is used as a reference clock.”)) This is functio nally equivalent to the preferred “strobe” embodiment disclosed in the specification of the ‘109 patent. ( See ID at 23435 (“In one configuration, the strobe signal indirectly initiates the sampling of data: the m emory devices in the preferred em bodiments of the Barth Patents can be configured to sam ple data

during a programmable number of clock cy cles after first detecting the strobe signal. ”)) In this preferred embodiment, “a transition of the clock signal directly controls the actual sam pling of data by the m emory device and the strobe signal preced ing the d ata indirectly initiates that

process by informing the memory device when sam pling is to begin based on the clock signal. ” (Id.) Likewise, in SyncLink, the “strobe” is the clock-like signal that directly controls the sampling of data, and the “flag” is the signal that indirectly initiates the process by informing the memory device when sampling is to begin based on the “strobe” signal. Moreover, as noted by the ALJ, Ra mbus’ characterization in its infringem ent

contentions of the “strobe signal” as “indicating that data is v alid” on the bus m ust hold true for the prior art as well. (ID at 120 -21 (“Rambus relied on a sim ilar disclosure for its infringem ent
26

The ALJ in the 661 Investigation found that with respect to Farm wald “the evidence shows that the sampling is initiated bas ed on a specified offset relative to the request packet as a whole.” (661 ID at 52-53 (em phasis added).) This is consisten t with the PTO’s findings as to what Farmwald discloses. -68-

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analysis, namely that the DQS signal ‘is the signal that is used to tell the receiver that valid on the bus, so now you can clock those data into . .

data is

. its registers’ … Rambus cannot

construe “strobe signal” in two different ways to prove infringement and avoid invalidity.”) (bold and italics in original).) The switching of the Sy ncLink flag signal from “0/1” to “1/0” indicates that data is valid on the bus. Therefore, SyncLink is no t cumulative over Farm wald because

SyncLink discloses the preferred, strobe embodiment of the Barth patents. 2. SyncLink Is Non-Cumulative over Farmwald Because SyncLink Does Not Use an Intermediate Transceiver Device

A review of the prosecution history for the ‘109 patent reveals that the ALJ’s com parison in the ID of the SyncLink flags with the AddrValid bit (ID at 246-47) is m isplaced: The

applicant in the ‘109 prosecution successfully overcame a rejection based on Farm wald ‘755 by arguing that the AddrValid signal w as not the claimed signal because it went to an interm ediate transceiver device, not the memory device. (See RX-2166C.0390-392; 0407.) There is no such intermediate structure in SyncLink. (RX-4270C.) Had Far mwald ‘755 disclosed the AddrValid bit without the presence of the intervening transceiver, the claims (in the form presently asserted) likely would never have issued. Thus, SyncLink (which lacks the interven satisfies the but-for materiality test and is non-cumulative over Farmwald. D. If the Commission Finds the ‘109 Patent Unenforceable Due to Inequitable Conduct, the ‘405 and ‘353 Patents Should Likewise Be Unenforceable ing transceiver)

“[I]n assessing the materiality of a withheld reference, the co urt must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference. ”

Therasense, Inc. v. Becton, Dickinson & Comp., No. 2008-1511, at 27-28 (Fed. Cir. 2011) ( en banc). Respondents have shown that SyncLink anticipates claim s 11-13 of the ‘353 patent and claims 1, 20, and 24 of the ‘109 patent. Respondents have further shown that SyncLink is not cumulative of the Farmwald prior art cons idered by the PTO during prosecution. -69Therefore,

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Rambus’ intentional withholding of SyncLink from the PTO renders at least the ‘353 and ‘109 patents unenforceable. See 37 CFR § 1.56(b) (stating that the PTO considers a reference material "[i]f it establis hes, by itself or in combination with other information, a prim a facie case of unpatentability of a claim") (emphasis added); Novo Nordisk v. Bio-Tech. Gen., 424 F.3d 1347, 1362 (Fed. Cir. 2007) (when duty of candor and good faith is intentionally breached, and a material reference is w ithheld from the USPTO during prosecution, the patent is rendered

unenforceable under th e doctrine of inequitab le conduct). In addition, because SyncLink discloses the preferred, strobe em bodiment of the Barth patents— an embodim ent also claimed in the asserted ‘405 patent claim s—the claims of the ‘405 patent should likewise be held

unenforceable.27 See 37 CFR § 1.56(b). This conclusion is underscored by the extensive analysis of SyncLink done by Rambus (RPFR at 34-35), particularly in view of the testim ony elicited at the hearing on cross ail from Crisp during

examination of the lead Barth inventor that he had received an em

prosecution of a Barth parent application that said, “Well, if it is possible to salvage anything that helps us get a claim to shoot SynchLink (sic) in the head, we should do it…” (Tr. at 405:15-13; RX-4288C.) Given the sim ilarities between strobe in SyncLink and the strobe/signal claim s of all three Barth patents, it certainly appears Mr. Barth followed through on Crisp’s request. VIII. THE ALJ CORRECTLY FOUND THE BARTH PATENTS UNENFORCEABLE DUE TO RAMBUS’ UNCLEAN HANDS In connection with the Comm ission’s review, Respondents have been asked to address
27

Rambus did not dispute that Farmwald discloses all elem ents other than the “signal” and “strobe signal” elements. (ID at 121 (“It is important to note that the only elements of claims 1, 2, 4, 5, 12, 13, 20, 21, and 24 of the ‘109 patent that Przybylski argues are not disclosed in Farmwald ‘037 are the elements concerning the signal (or code) th at indicates when the memory is to begin sam pling.”).) Thus, even if SyncLink does not anticipate the asserted claim s of the ‘405 patent, its disclosure of the preferred, strobe em bodiment (identified as the indirect control embodiment by the ALJ ) renders it a m aterial reference to the ‘405 patent as its combination with Farmwald renders the asserted claims of the ‘405 patent obvious. -70-

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two questions regarding the ALJ’s unclean hands determination in the 753 Investigation: 1. Whether the doctrines of preclusion or stare decisis prevent Ram bus from challenging the determinations from the 661 Investigation as to the date upon which it was obligated to retain documents, or its bad faith. 2. Explain with specificity the factu al distinctions between th e records of the 661 Investigation and this investigation, with respect to prejudice suffered or allegedly suffered by the respondents by reason of Ra mbus’s destruction of documents. As to th e first qu estion, the answer is yes: the doctrine of issue preclusion prevents Rambus from challenging prior determ inations on the issu es of when it was obligated to retain documents and whether it acted in bad faith when destroying evidence. Both these issues were contested in the 661 Investigation and ultim ately decided by the ALJ and the C ommission.

Though Rambus was not found to have unclean hands for lack of evidence of prejudice under the legal standard applied in the 661 Investigation, the underlying issues were decided adversely to Rambus. Because neither the facts nor the law concerning when Rambus was obligated to retain and its bad faith has changed, the application of issue preclusion and stare decisis is warranted. As to the second question, it should be noted at the outset that the legal standard for

prejudice applied in this investigation was based on the Federal Circuit' s intervening Micron II decision and differed significantly from the standard applied in the 661 Investigation.

Respondents in this Investigation also presented a far more developed record containing numerous new facts bearing on prejudice and the scope of Ra mbus’s destruction that were not developed in the 661 Investigation. Respondents elicited m any of these facts from witnesses called to testify live at th e hearing in this Investigation who did not app ear in the 66 1

Investigation. This new evidence directly contradicts the testim

ony that Ram bus witnesses

offered in the 661 Investigation on the issue of prejudice; among other things, it establishes that documents Rambus had previously claimed were spared from destruction were in fact purged.

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Each question is addressed separately and in more detail below. A. Issue Preclusion Prevents Rambus from Challenging the 661 Determinations as to When It Had a Duty to Preserve Documents and Its Bad Faith

The doctrine of issue preclusion, known trad itionally as collateral estoppel, forecloses previously decided issues of law or fact from being re-litigated in a su bsequent proceeding,

whether on the same or a di fferent claim. In re Freeman, 30 F.2d 1459, 1465 (Fed. Cir. 1994); RESTATEMENT (SECOND) OF JUDGMENTS § 27 (1982). This doctrine extends to issues of fact and law that have been determ ined in C ommission opinions. VastFame Camera Ltd v. Int’l Trade Comm’n, 386 F.3d 1108, 1115 n.2 (Fed. Cir. 2004). Issue preclusion differs from claim preclusion, otherwise known as res judicata, in that it precludes litigants from re-raising issues, rather than entire claims. In the Matter of Certain Multicellular Plastic Film, Inv. No. 337-TA-54A, Rec. Deter mination, 1981 WL 178478, at *2 (Jan. 30, 1981). Determining whether issue preclusion should apply t o a given issue is str aightforward. A party is collaterally estopped f rom relitigating an issue wh en four elements are met: in an earlier proceeding, there must have been (1) an identical issue, (2) that was actually litigated by the

parties, (3) the reso lution of which was essen tial to a final judgm ent in that proceeding, and (4) the party m ust have had a full and fair oppo rtunity to litigate the issue. Freeman, 30 F.2d at

1465; In the Matter of Certain Elec. Devices with Multi-Touch Enabled Touchpads and Touchscreens, Inv. No. 337-TA-714, Order No. 16, at *3 (Sept. 28, 2010). 1. Rambus Cannot Challenge the Prior Determinations of when Its Duty to Preserve Arose and Whether It Acted in Bad Faith Because Both Issues Satisfy the Test for Issue Preclusion

The precise issues the Commission has raised here—when Rambus first had a duty to preserve and whether it acted in bad faith—were already decided in the 661 Investigation. As

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here, the 661 Respondents raised an unclean hands defense in response to Rambus’ assertions of the Barth I Patents. And as here, the claim was based on spoliation perpetrated by Ram bus in the late 1990s and early 2000s. In ruling on the unclean hands defense in the 661 Investigation, the ALJ m ade findings on spo liation, in the process determining (i) when Ram bus first had a duty to preserv e relevant documents and (ii) whether Rambus acted in bad f aith when

destroying documents.28 These findings were adopted without modi fication and incorporated by reference into the Commission’s Final Opinion. (661 Comm’n Op. at 2.) Because the identical issues of when Rambus had a duty to preserve and whether it acted in bad faith were previously decided by the Commission, all four elements of the test for collateral estoppel are met. That doctrine sh ould therefore operate to prevent R ambus from raising any challenges to the Commission's findings on those issues in this Investigation.29 (a) The Issues in the 661 Investigation Are Identical to the Issues Now Being Decided Because Respondents in Both Investigations Raised Unclean Hands Defenses Based on Spoliation

The first element—identity of issues with the earlier proceedi ng—is met as to each issue raised by the Comm ission. For purposes of collate ral estoppel, “identity” m erely

requires that the specific issue to which a party seeks to apply the doctrine be “substantially the same.” Certain Multicellular Plastic Film, Inv. No. 337-TA-54A, Comm’n Op., 1981 WL 178478, Specifically, the ALJ found that “R ambus had decided it would go into litigation against manufacturers of SDRAM and control makers no later than July of 1998,” and thus had a duty to preserve relevant documents at least by this tim e. (661 I D at 109.) The ALJ fur ther found “the evidence of Ram bus’s intention to d estroy evidence for pu rposes of p reparing the company for litigation overwhelming and that the destruction was intentional and in bad faith.” (Id. at 114.) 29 Respondents argued for application of collateral estoppel early on in this Investigation. In June of 2011, Respondents filed a motion for a n order based on collateral estoppel that Ra mbus destroyed evidence it had a duty to preserve and did so in bad faith. (Motion Docket No. 753031.) Although the ALJ denied the motion, the only ground for denial was that Respondents had not shown that the spoliation issues were essential to the judgment in the 661 Investigation. (Order No. 56.) This elem ent is addressed in section (c), be low. Respondents respectfully contend that the ALJ’s ruling on this issue was flawed. T he ALJ did not determine that any of the other three elements necessary for issue preclusion were not, or could not be, met. -7328

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at *5 (Jan. 30, 1981). Here, however, th e issues are identical. In both investigations, the respondents raised the defense of unclean hands. These defenses were predicated on the same acts of spoliation. 30 And those defenses both ne cessitated resolving the identical issues of when Rambus first had a duty to preserve evidence and whether it acted in bad faith. The Federal Circuit’s rulings o n Rambus’s spoliation after th e Commission’s

determination of the 661 Investig ation do nothing to negate the identity of the issues here. See Micron Technology, Inc. v. Rambus, 645 F.3d. 1311 (Fed. Cir. 2011) (“Micron II”). In Micron II, the Federal Circu it clarified the law on prejudice in the spoliation context, particularly with respect to the burden of proof. Id. at 1328. That decision did nothing to upset the well-

established standards for when a party reason ably anticipates litigation and thus has a du ty to preserve, or what constitutes bad faith for spoliation purposes. Id. at 1326-27. Indeed, those

standards remain unchanged from when the ALJ applied them in the 661 Investigation. (661 ID at 92.) The Federal C ircuit’s holding in Micron II thus has no bearing on whether issue preclusion applies to determ inations of when Ra mbus first had a duty to preserve or whether it acted in bad faith. Cf. Transocean Offshore Deepwater Drilling Inc. v. Maersk Contractors USA Inc., 617 F.3d 1296, 1311-12 (Fed. Cir. 2010) (applying collateral estoppel to identical issues raised in the context of different legal standards). (b) All Elements of Spoliation Were Actually Litigated in the 661 Investigation as Part of Respondents’ Unclean Hands Defense

The issues of when Rambus first had a duty to preserve evidence and whether it acted
30

Rambus admits that from 1998 to 2000, it intent ionally purged vast amounts of documents and electronic information. T he evidence in this investigation (and in numerous other proceedings) shows that Ram bus destroyed approximately 400 boxes of documents on its September 3, 1998 Shred Day; 300 boxes of documents on the August 26, 1999 Shred Day; a nd 480 boxes of documents on the December 2000 shred day. (RX-526C.0002-03; JX-61C.0021 at 97:16-98:20, 98:22-23; JX-104C .0023 at 1474:4-10.) In addi tion, Rambus destroyed over 1,000 back-up tapes of electronic evidence . (ID at 310.) Ra mbus also ordered its outside counsel, Lester Vincent, to purge his Rambus-related patent files. (Id. at 274.) -74-

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in bad faith were both “actually l itigated” in the 661 Investigation. R ESTATEMENT (SECOND)
OF JUDGMENTS

§ 27, cm t. d (1982) (“W hen an issue is properly raised, by the pleadings or

otherwise, and is su bmitted for determ ination, and is determ ined, the is sue is actually litigated . . . .”). By pleading unclean hands, the 661 Respondents placed spoliation, and all its elements, squarely in dispute between the parties. During the week-long hearing, th e parties presented extensive evidence, including live witness testimony, regarding Rambus’ conduct from 1998 to 2000 as it pertains to document destruction. (661 ID at 99-103.) The parties also submitted pre- and post-hearing briefing and findings of fact on the precise issues being consid ered here. In its briefs and at the hearing, no consequences for p urging vast

Rambus offered myriad argument s for why it should suffer

amounts of evidence—including tha t it did not reasonably anticipate litigation on t he Barth I Patents, and thus had no dut y to preserve, un til years later. (661 ID at 111-12.) Rambus also argued it did not act in bad f aith when carrying out the destruction but instead hosted “Shred Days” to clean out “junk” such as pizza boxes and phone books. (Id. at 106.) The spoliation issues that form ed the ba sis for the 661 R espondents’ unclean hands defense were not only h eard in that Investigation, but also f ully determined. After considering the evidence, the ALJ resolved all but one of thos e issues—including when Rambus first had a duty to preserve evidence and whether it acted in bad faith—against Rambus. (661 ID at 109 16.) Only a perceived lack of evidence on prejudice preven ted the 661 Respondents from

prevailing on their unclean hands defense. (Id. at 116.) These findings were adopted without modification into the Final Opinion. (661 Comm’n Op. at 2.) (c) Determinations of when Rambus Had a Duty to Preserve Evidence and Whether It Acted in Bad Faith Were Essential to Judgment in the 661 Investigation

The ALJ’s—and hence the Commission’s—dete rminations that Ram bus had a duty to -75-

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preserve documents in July of 1998 and destroyed documents in bad faith also meet the requirement of being “essential” to the judgment in the 661 Investigation. Though determination of an issue cannot be considered essential if it is treated as mere dicta, collateral estoppel does not fail merely because a judgment cannot be sustained without the issue being resolved as it was. See Mother’s Restaurant, Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 1571 (F ed. Cir. 1983) (“A t the outset, it is important to note that the re quirement that a finding be ‘necessary’31 to a judgment does not mean that the fin ding must be s o crucial that, without it, th e judgment could not stand.”); RESTATEMENT (SECOND) OF JUDGMENTS § 27, cmt. h (describing dete rminations of non-essential issues “as having the characteristics of dicta”). Rather, at th e core of this inq uiry is the requirement that, during the first proceeding, the issue was given due attention and subject to a “considered determination.” Id.; see Freeman, 30 F.2d at 1466 (explaining that the essentiality element is intended “to prevent the incidental or collateral determination of a nonessential issue from precluding reconsideration of that issue in later litigation.”) In the 661 Investigation, as in m any prior cases involving Ram bus, the parties

vigorously contested each elem ent of spo liation. W hether Rambus had a du ty to p reserve evidence when it ho sted its infam ous Shred Days and whether it destroyed evidence in bad faith to gain a litigation advantage were especially hard-fought issues. Considering the number of pages dedicated to spoliation in the parties’ post-hearing briefing alone (over 30 pages for Rambus and over 40 pages for the 661 Respondents), it is clear that neither side considered the unclean hands claim—and the underlying spoliation issues—to be unimportant or peripheral. Nor did the ALJ view th ese issues as insignificant, relegating them to mere dicta in the 661 Initial Determ ination. Rather, the ALJ re ceived substantial evidence and m ade detailed
31

Different authorities u se the word “necessary” instead of “ess ential” when discussing this element of the four-part test. Since the Restatement uses “essential,” so have we. -76-

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determinations of each subsidiary issue. (661 ID at 92-116 (separately a ddressing the duty to preserve, bad faith, and prejudice).) His analysis on unclean hands covers 25 pages of the 6 61 Initial Determination, and includes 34 separate findings of undisputed facts.32 (Id.) Given their prominence in the p roceedings and the initial determination, resolution of these issues was “essential” to the judgment in the 66 1 Investigation—and in particular to the unclean hands defense. Signif icantly, the ALJ would not have had to resolve the issue of prejudice—the last element of th e spoliation analysis (aside from the appropriate sanction)—if his findings on the other issues had not been adverse to Rambus. For exam ple, had the ALJ determined that Ram bus did not anticipate li tigation until 2002, Ram bus would have had no duty to preserve evidence during any of the Sh red Days. In those circum stances, whether the 661 Respondents had been prejudiced by the evidence destruction from 1998 to 2000 would be entirely irrelevant. Yet the ALJ proceeded th rough spoliation issue-by-issue, considering and resolving each on e separately. R
ESTATEMENT

(SECOND)

OF JUDGMENTS

§ 27, cm t. j (“Th e

appropriate question, then, is wh ether the issue was actu ally recognized by the parties as important and by the trier as necessary to the first judgment.”). That the ALJ ultim ately found for Ram bus on unclean hands does no thing to upset the application of collateral estoppe l here. The F ederal Circuit has held that collateral estoppel applies to express findi ngs on issues not included in the judgm ent. Mama’s Pizza, 723 F.2d at 1571. In Mama’s Pizza, the court addressed the question of whether a state court finding that two service marks were confusingly similar was entitled to collateral estoppel effect in a later
32

As further evidence that Ram bus considered the spoliation issues important, it sought the Commission’s review of all the ALJ’s adverse spoliation findings even though it prevailed on the defense. (661 CPF R at 45-47.) Other findi ngs on substantive issues that had not gone its way were not petitioned for review. (661 C PFR.) Ram bus also requested that the F ederal Circuit vacate the finding on anticipation of litig ation. Fed. Cir. Case N o. 2010-1556, Brief of Intervenor Rambus Inc., dated May 9, 2011, at 54-57. -77-

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PTO proceeding. The state court had issued findings of fact stating that the two service marks at issue were confusingly similar. Id. at 1568. In its conclusions of law, however, the state court rejected the defendants’ c ounterclaim for an injunction base d on separate findings regarding the date of plai ntiff’s first use of the mark. Id. at 1569. The final jud gment did no t mention the

finding of confusingly similarity. Id. at 1571 n.6. In affirming the PTO’s decision to accord collater al estoppel effect to t he finding that the two marks were confusingly sim ilar, the Federal Circuit affirmed that the finding on this particular issue was “necessary” to the state court’s judgment on the counterclaim even though that claim was rejected for a different reason: [T]he requirement that a finding be ‘necessary’ to the judgm ent does not mean that the finding must be so crucial that, with out it, the judgment could not stand. R ather the purpose of the requirement is to prevent the incidental or collateral determination of a non-essential issue from precluding reconsideration of the issue in later litigation. Id. at 1571 (citations om itted). The Federal Circuit noted that “[t]his is not a case where the [state] court reached out to make determinations as to issues which were not before it.” Id. On the contrary, the issue of whether the marks were c onfusingly similar was “t he focus of the

parties’ pleadings and was fully litigated in the state court.” Id. Under Mama’s Pizza, the Commission’s determinations on the issues of when Rambus first had a duty to preserve documents and whether it acted in bad faith are both “necessary” (i.e., essential) to the judgment. As with the state court’s findings of confusing sim ilarity in Mama’s

Pizza, the ALJ’s determination of the spoliation issues we re not the basis for the adverse resolution of the underlying claim. Moreover, these issues were neither incidental nor collateral; they were in fact critical issues to the enforceability. The ALJ decided issues squarely in dispute. (d) Rambus Had a Full and Fair Opportunity to Litigate the Issues of Bad Faith Spoliation in the 661 Investigation -78-

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Rambus had a “full and fair opportunity” in the 661 Investigation to litigate the issues of when it first had a duty to preserve docum ents and whether it acted in bad faith. (661 ID. )

Merely because these issues were decided again st it does not m ake this conclusion any less sound. The proceedings in the 66 1 Investigation were extensive, thorough, and fair. R ambus had competent counsel to represent it, and is in fact being represented by that same counsel in this Investigation. As part of the determination on the 661 Respondents’ unclean hands defense, the spoliation issues were given due attention by the parties and the ALJ. ( See, e.g., 661 CIB at 38-56; 661 RIB at 73-106; 661 ID at 92-116.) That the Commission adopted those findings and accompanying analyses without modification strongly suggests they were not deficient. 2. Precluding Rambus from Challenging Previously Decided Spoliation Issues Is Fair and Will Avoid Repetitious Litigation

Applying issue preclusion to prevent Ram bus from challenging determinations made in the 661 Inv estigation on important, fully litig ated issues is em inently fair. See Freeman, 30 F.2d at 1467 (“T he doctrine of collateral estoppel is premised on principles of fairness.”).

Rambus chose to initiate a substantially overlapping ITC investigation fully aware of how the 661 Investigation had been decided. Preventing a challenge to already-determined identical issues relating to Rambus’ admitted evidence destruction can hardly be considered unfair. Yet another reason to apply issue preclusion against Ra mbus is to avoid repeat litigation of the sa me issues. R
ESTATEMENT

(SECOND)

OF JUDGMENTS

§ 27, cmt. c (noting that the

application of issue preclusion is driven by “a balancing of important interests: on the one hand, a desire not to deprive a litigant of an adequate day in court; on the other hand, a desire to prevent repetitious litigation of what is essentially the same dispute”). I n this

Investigation, Rambus has shown itself willing to re-litigate identical iss ues before the very same ALJ. (See, e.g. ID at 309.) The Respondents have been forced to retread old ground on Rambus’

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duty to preserve and its bad faith, only for the ALJ to arrive at precisely the sam (ID at 265-266.) If it avoids issu

e conclusions.

e preclusion here, Ra mbus will almost certain ly argue in

subsequent ITC Investigations that any adverse factual determ inations on spoliation issues m ust be re-litigated and re-decided until they come out in its favor. B. Rambus Should Be Prevented from Challenging the 661 Investigation’s Determinations as to When It Had a Duty to Preserve Documents and Its Bad Faith Because the Operative Law and Facts Still Apply

The doctrine of stare decisis holds that a court m ust decide cases in accordance with precedent established by superior courts, as well as its own precedent unless there is a

compelling reason not to. Nat’l Org. of Veterans’ Advocates, Inc. v. Sec’y of Veterans Affairs, 260 F.3d 1365, 1373 (F ed. Cir. 2001) (“[S]tare decisis is a doctrine that binds courts to follow their own earlier decisions or the decisions of a superior tr ibunal.”) The doctrine of stare

decisis "in essence makes each judgment a statement of the law, or precedent, binding in future cases before the sam e court…" Avenues in Leather, Inc. v. U.S., 423 F.3d 1326, 1331 (Fed.

Cir. 2005). Having failed to challenge to th e Commission's findings in the 6 61 Investigation, stare decisis requires that Rambus not be allowed to challenge those findings here. None of the factors courts consider in limiting the role of stare decisis—impracticability of the prior ruling, reliance and equitable concerns, or later developments in the law—are found here. See Planned Parenthood of Se. Pa. v. Casey, 505 U.S. 833, 854-55 (1992). While the doctrine does not apply if there has been a change in the law, this exception is not applicable. W hereas the 661 Respondents had the burden to show prejudice, now the heavy burden of showing lack of prejudice shifts to the alleged spoliator once a showing of bad faith has been m ade. Micron II, 645 F.3d at 1328. The legal standards for determining when Rambus had a duty to preserve and whether it ac ted in bad faith, on the other hand, rem ain undisturbed. Because the only change in the law has been in favor of -80Respondents, it would

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make little sense for the Commission's determination in the 661 Investigation to not apply here. C. Respondents in this Investigation Presented Additional Factual Evidence on Prejudice Through Live Testimony and Videotaped Depositions

As to the second question, there are numerous factual distinctions between the records of the 661 Investigation and this one, with respect to prejudice suffered by the respondents by

reason of R ambus’s destruction of documents. I t bears mentioning that the legal standard regarding prejudice differed between the two inve stigations such that, even if th e facts h ad been the same, a different result would have b een justified. In th e 661 Investigation, the ALJ held the “evidentiary burden is on R espondents to prove that their defenses were prejudiced by Rambus’s misconduct.” (661 I.D. at 116.) But af ter the 661 Investigation Final Determ ination issued, the Federal Circuit held in Micron II that "[i]f it is shown that the spoliator acted in bad faith, the spoliator bears the ' heavy burden' to show a lack of prejudice to the opposing party." 645 F. 3d at 1328.
33

Respondents believe that the factual reco rd submitted in the 66 1

Investigation is sufficient for a f inding of unen forceability of the Barth patents based on the standard articulated by the Fed eral Circuit in Micron II. Nevertheless, Respondents here submitted significant amounts of new ev idence and testimony regarding Ram bus' spoliation and the ensuing prejudice that was not considered by the ALJ in the 661 Investigation. Notably, at the 753 Hearing, the ALJ heard testim ony from num erous live witnesses who had not even been called to testify live in the 661 Inves tigation, including form er CEO Geoffrey Tate, spoliation ringleader Joel Karp, and outside patent counsel Lester Vincent, resulting in the creation of an entirely new and compelling trial record on the issue of prejudice.
33

Although prejudice is directly tied to bad faith under Micron II, Respondents understand the Commission to not be seeking briefing on additional facts elicited in this Investigation showing bad faith. The ALJ held in the 661 Investigation: "The ALJ finds the evidence of Ra mbus' intention to destroy evidence for purposes of preparing the com pany for litigation overwhelming and that the destruction was intentional and in bad faith." (661 ID at 114.) -81-

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The testimony of these co-conspirators was critical to providing the Court the context and factual background of Ram bus's spoliation and the resulting prejudice. In addition, certain witnesses called in the 661 Investigation also a ppeared live at the 753 Hearing, including

Richard Barth, Craig Hampel, and Joe Moniz, and Respondents were able to elicit new, unique testimony from these witnesses on the issue of prejudice, which is described below. 1. Vincent Offered New Testimony Regarding Prejudice

The live testimony of Lester Vincent, outside patent counsel from Blakely Sokoloff, and Jose Moniz, both of whom Rambus called in its case-in -chief and were subject to cross-

examination, contained new and unique evidence on the issue of prejudice. In its post-trial briefing in the 661 Investigation, Ram bus criticized respondents for not deposing Mr. Vincen t about the disposition of the Barth I patent files. (CIB at 107.) Through the live testim Lester Vincent and Ra mbus’ Jose Moniz at th ony of

e hearing in this investigation, counsel

demonstrated that Mr. Moniz falsely testified at the 661 hearing th at Vincent had transferred all files for the Barth paten ts to Rambus in 1999—before Vincent “cleaned” them. Moniz recanted his testimony from the 661 Investigation at the hearing in this investigation, calling it a "mixup." (Tr. (Vincent) at 2256:5-2257:9; T r. (Moniz) at 2266:10-2267:6, 2278:25-2283:15.) Lester Vincent's live testimony further demonstrated that Blakely’s cleaning of the patent files extended to all fam ilies of patents, including the Barth patent fam ily. (Tr. (Vincent) at 2202:10-17,

2211:9-2213:8, 2227:22-2239:14, 2245:8-17; R X-1187.0005). Vincent' s testimony established that the Barth files did not contain any notes of meetings with inventors even though Vincent had a practice of taking notes and billed alm ost 8 hours to conferring with Karp about P48—the application that became the Barth ‘914 patent—alone. (RX-2524C; Tr. (Vincent) at 2192:3-12, 2194:17-2197:2, 2240:15-2243:25, 2244:6-2245:7.) He testified the files also did not contain floppy disks even though the purging chart indicates the files once contained such disks. (Tr. -82-

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(Vincent) at 2222:2-13, 2231:12-2232:15, 2239:15-2240:14, 2244:6-2245:7, RX-1187.0005) The Barth patent files also did not contain draf t applications and there was no correspondence in the files for other Barth patent applications—denom inated internally at Blakely as P 48D, P48D2 and P48D3 files. (Tr. at 2193:24-2194:12, 2244:6-2245:7.) 2. Barth Testified that Relevant Documents Were Destroyed

Richard Barth, the lead inventor on the Barth fam ily of patents, tes tified live at both the 661 and 753 Hearings. Respondents, however, elicited extensive new testim ony from him at the 753 Hearing that was not considered in the 661 Investigation. For exam ple, a new critical admission concerned Barth's "conceptual tree." Barth had testified in the 661 Investigation that he maintained a conceptual tree or trees that were used in p rioritizing which patent applications to file. (Tr. (Barth) 458:5-468:14.) He had also testified then that his conceptual tree docum ents were in a file cabinet outside his office when he left the company and that he did not know what had happened to them after that. (Id.) He acknowledged in the 661 Investigation that the Barth I parent patent should have been identified on th e conceptual tree and that he made handwritten notes on his conceptual tee document from time to time. (Id.) In the 661 Investigation, Ra mbus contended that all of the conceptual trees had been preserved and produ ced. (661 CIB at 40-41, 53.) In this Investigatio n, in contrast, Barth' s story unraveled. He was shown each of the socalled conceptual trees that Ram bus produced—one by one—and was forced to acknowledge that none had his handwriting; nor did any of them include entries for the original Barth patent— known as the P048 file—which should have existed had the files been preserved. (Tr. (Barth)

458:5-468:14.) From this evidence, the only reasonable inference is that Barth’s conceptual tree documents were not retained, but rather were destroyed in one of the shred days. The ALJ held that this testimony "helps establish that the shred days and destruction of docum ents and e-mails by Rambus did destroy relevant evidence that Rambus had a duty to preserve." (ID at 304.) -83-

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Barth also revealed on cross-exam ination at the hearing in this Investigation that he had abruptly left Rambus after a disagreement with CEO Tate and that he had left tens of thousands of emails on his com puter. (T r. (Barth) at 452:17-454:8.) Those em ails would have included Barth's extensive communications with Anthony Diepenbrock, inside counsel; Joel Karp, Vice President of Intellectual Property; John Dillon, involved in patent prosecution at Rambus; and Lester Vincent, outside counsel; among others, regarding claim coverage and patent prosecution of the Barth patents. ( Id. at 408:16-409:17, 410:8-16, 415:22-416:21, 421:13-422:2). Barth testified at trial he had no idea what became of his emails after he left. (Id. at 441:11-24, 452:14456:22). Under Rambus' policy governing emails and backup tapes, Barth’s emails would have been purged, and Ram bus offered no evidence to suggest otherwise. R espondents also learned from Barth on cross-exam ination that Ram bus’ JEDEC representative, Richard Crisp, had provided him with copies of JEDEC m eeting minutes, including m inutes discussing Synclink, which is prior art to the Barth patents. (RX-2248C; Tr. (Barth) at 407:17-408:15.) This evidence enabled the ALJ to conclude that documents Crisp shared with Barth that were used to draft the Barth claims were missing. (ID at 260, 305, 313). Although the destruction of 1,269 backup tapes was in evid ence before the Comm ission in the 661 Investigation (661 Respondent’s Proposed Findings of Fact No. 919; R IB at 236),

additional testimony was elicited here that directly ties the destroyed files to Barth' s conception documents. In the 661 Investigation, deposition testimony was introduced at the hearing to show how, during a meeting with an engineer, Karp viewed a docum ent he believed to be particularly helpful to establish conception of one of Ra mbus' claimed inventions; however, when the

document was displayed, the settings on the engineer' s computer automatically updated the date of the document, destroying its usefulness for conception. (661 Exhibit JX-58C at 250:16-19, 263:23-264:4, 264:22-17; Tr. (Karp) at 1943:17-1944:4.) At the hearing in this Investigation, -84-

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Karp revealed that the “engineer” in question

was Barth him self and that Karp, in fact, had

“sweated bullets to try to find this conception date on a backup tape.” (Tr. (Karp) at 1944:131946:15.) So while Mr. Karp successfully rescu ed the single conceptio n file of Barth from one of tapes to be destroye d, there is no doubt that thousands of others w ere destroyed, including

conception and diligence files of the lead named inventor on the Barth patents. Given Barth's status as lead inventor on the asserted patents, spoliation of his conceptual tree, emails and other documents prejudiced Respondents' assertion of their affirmative defenses. 3. Respondents Elicited New Evidence of the Destruction of the Files of Rambus’ Top Executives and the Breadth of the Destruction

At the hearing in this Investigation, counsel elicited testim ony from Joel Karp, Rambus’ VP of Intellectual Property, that he had gone to the office of Rambus’s CEO, Geoff Tate, to help him select documents to shred. (Tr. (Karp) at 1958:13-18). Respondents also offered testimony elicited from Rambus founder Mark Horowitz at another trial on July 11,2011, that was

unavailable at the time of the 661 hearing. Horowitz testified that som eone went into his office in 1998 and selected docum ents to shred. ( Id. at 951:15-953:12.) This reflects the breadth and extent of the destruction of materials from the files of persons at the highest level of Rambus. Respondents also cross-examined Rambus’ former CEO, Tate, regarding the type of documents in destroyed emails. Tate revealed that Rambus’ employees destroyed e-mail under the document retention policy on a rolling basis. (Tr. (Tate) at 1357:15-1358:1). He also

testified that em ail was the m ost common form of communicatio n within Ram bus and employees “could talk about anything” in em ails, such as inventions, patents , competitive products or standards, and JEDEC. ( Id. at 1939:10-1942:15.) This was unique live testim ony demonstrating plausible, concrete suggestions of what Rambus destroyed. 4. Respondents Presented New Testimony from Neil Steinberg Regarding Rambus’ Document Destruction -85-

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Respondents also presented additional prior deposition testimony from Neil Steinberg on the issue of prejudice and played the videotape so the ALJ could see the dem eanor of the

witness. In testim ony presented at the hearing in this Investigation, but not in the 661, Rambus’s Neil Steinberg disclo sed that due to the docum ent retention policy, the Ram bus litigation team could not find certain docum ents that would have connected Rambus' 1990

patent application, the concurrent technology and DRAM and logic (controller) companies. (Tr. (Steinberg) at 1249:13-16, 1249:24-1251:15. ) This testim ony confirms that docum ents pertinent to controller technology—the subject of the Barth patents—were destroyed. 5. New Evidence Elicited on Cross Examination in this Investigation Demonstrates Rambus Could Not Meet Its Heavy Burden to Show Respondents Were Not Prejudiced

Unique evidence was presented at the 753 hearing to demonstrate that Rambus could not possibly meet its heavy burden of proving a lack of prejudice by clear and convincing evidence. See id. at 1328-29 (citing Anderson v. Cryovac, Inc., 862 F.2d 910, 925 (1st Cir. 1988)). As a bad faith spoliator, Rambus had to show the destroyed docum ents could not have been relevant. See Micron II, 645 F.3d at 1328. The burden shifts under the law because “bad faith destruction of a document relevant to proof of an issue at trial gives rise to a strong inference that production of the docum ent would have been unfavorable to the party responsible for its destruction.” Id. The live cross-examinations of Rambus’ key witnesses caused the ALJ to find many lacked credibility and were dishonest, which constitutes unique evidence from this

Investigation pertinent to the issue of prejudice because it d emonstrates that the claims of some of Rambus’ witnesses that no relevant m aterials were destroyed was not believable or credible. (ID at 270-305, 309-311, 313.) 6. The Newly Submitted Evidence Is Relevant to Respondents' Defenses Including New Defenses First Raised in the 753 Investigation

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Moreover, because Respondents in this Investigation asserted additional defen beyond those asserted in the 661 Investigation, the factual argum

ses

ents concerning the relation

between the defenses and the destroyed docum ents differed in part from the 661 Investigation. In addition to the defenses asserted by the 661 respondents, the Respondents here asserted affirmative defenses including (i) that the patents are invalid for failu re to com ply with the

written description requirem ent of 35 U.S.C. § 112; (ii) that the patents are invalid under the doctrine of prosecution laches; (i ii) derivation under 35 U.S.C. § 102( f) and (iv) inequitable conduct, including failure to cite prior art such as SyncLink. Respondents’ post-trial briefing demonstrates that the docum ents Rambus destroyed would shed light on these additional affirmative defenses. (RIB at 240-47, 259-60. ) This, too, along with how Respondents’ posthearing briefs tied the d estruction to the Respondents’ defenses is a factual differen ce from the 661 Investigation. IX. RAMBUS DID NOT SATISFY THE DOMESTIC INDUSTRY REQUIREMENT (ISSUE 6) Respondents have been asked to address whet her Rambus should be required to allocate licensing expenses on a patent-by -patent basis. Section 33 7 and recen t Commission decision answer the question with a definitive “yes,” as explained below. A. The Plain Language of Section 337 Requires Rambus to Allocate Expenses to Each of the Asserted Patents

Section 337 provides that the dom estic industry requirement must be met separately for each patent asserted. 19 U.S.C. § 1337(a)(1 )(2). Here, Rambus asserts three Barth paten ts (the ‘405, ‘353 and ‘109 patents) and two Dally patents (the ‘857 and ‘405 patents). In order to prove a domestic industry for each of these paten ts based on its licensing pro gram, the plain langu age of Section 337 required Ra mbus to present sp ecific proof of a “substantial investm ent” for each patent. Yet Rambus failed to allocate its licensing expenses on a per-patent basis. -87-

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As the statute m akes clear, proof of dom estic industry is required on a patent-by-patent basis for each of the as serted patents: “Subparagraphs (B), (C), and (D ) of paragraph (1) apply only if an industry in the United States, relating to articles protected by the patent.”See 19 U.S.C. § 1337(a)(2) (em phasis added). T he Commission confirm ed this clear read of the statute in Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same, Inv. No. 337-TA-650, Comm’n Op. at 51 (Apr. 14, 2010), stating that complainant “must clearly link each activ ity to licensing efforts concerning the asserted patent. ” The Comm ission

reiterated this postion in Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same, Inv. No. 337-TA-694, Co mm’n Op. at 13 (Aug. 8, 2011), stating that “s ection 337(a)(3)(C) requires a s ubstantial investment in the

exploitation of the asserted patent.”). Moreover, Section 337 requires th at for each asserted patent for which a com plainant

seeks to establish domestic industry based on licensing, the Commission must determine whether the claimed investment for that particular patent under the econom ic prong is “substantial.” 19 U.S.C. §1137(a)(3)(C); Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same, Inv. No. 337-TA-694, Co mm’n Op. at 13 (Aug. 8, 2011) (“[S]ection 337(a)(3)(C) requires a substantial investm ent in the exploitation of the asserted patent.”). In order for the Comm ission to do that, it must have specific information as to each asserted patent on a patent-by-paten t basis. Absent that inform ation, the Commission cannot properly discharge its statutory duty of deciding whether the domestic investm ent in each asserted patent is “substantial.” Neither the statute nor the legislative history indicates that Congress intended for the Commission to credit all investments in the licensing of a portfolio to each patent of the portfolio when evaluating the extent to which complainant’s activities meet the requirement that there be a -88-

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‘substantial’ investment in exploitation of the “patent … con cerned.” Navigation Devices at 13; see also Certain Hybrid Elec. Vehicles and Components Thereof, Inv. No. 337-TA-688, Order No. 5, 2010 WL 1138330 at *7-*8 (Feb. 26, 2010) (“Paice essentially argues that because all of the patents in Paice’s p ortfolio, which includ es the [asserted] patent, related to hyb rid electric technology, then all of Paice’s expenditures in developing and furthering that portfolio are related to the exploitation of the [asserted] patent. The ALJ disagrees.”). Certain Dynamic

Sequential Gradient Compression Devices and Component parts Thereof, Inv. No. 337-TA-335, Final ID, USITC Pub. 2575 at 63 (N ov. 1992) (“To include activities which are in the sam e field of technology but which do not have the requisite nexus to the patent w ould be contrary to the statute.”) The Comm ission has rejected reliance on expenses incurred for one patent to prove exploitation of another. See Coaxial Cable at 53 (“[O]ur statu te specifically requ ires

[complainant] to show a substantial investment in the exploitation of the patent at issue.”). Rambus failed to allocate any expenses on a patent-by-patent basis—or even a portf olio basis. Here, Ra mbus’ approach of m erely submitting undifferentiated evidence of companywide spending on licensing without evidence that the expenditures pertain to the asserted patents or the licen ses in question, is contrary to the plain m eaning of the statu te and leads to a

standardless test for the existence o f a dom estic industry. Perm itting Rambus to satisfy th e domestic industry requirem ent with such undifferentiated proof would contravene the plain language of Section 337 in a m anner that would not befor entitled to deference on review. Chevron, Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837, 842-43 (1984). B. Commission Precedent Requires a Strong Nexus Between a Complainant’s Portfolio Licensing Investment and the Asserted Patents See

Rambus does not license single patents. Instead, it licenses groups of patents, or patent portfolios. The Commi ssion’s decision in Inve stigation No. 337-TA-694 set out the test to

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determine when portfolio licensing activities may constitute a substantial investment in licensing the asserted patents pursuant to Section 337(a)(3)(C). See Navigation Devices at 7-8. Am ong

other requirements, the com plainant must demonstrate a nexus between its portfolio licensin g activities and the patents in suit. See id. at 8. The com plainant must also prove the streng th of that nexus—that is “a key issue. ” Id. An attenuated relationship betw een the asserted paten t(s) and the co mplainant’s licensing activities means that the com plainant’s investment in those licensing activities can only partially be considered an inv estment in licen sing the asserted

patent(s). The strength or weakness of the nexus between the asserted patents and the alleged licensing industry should be used to adjust the magnitude of the complainant’s investment before determining whether or not that investment is “substantial.” See id. at 8. Rambus did not provide the evidence of the dom estic licensing industry the Commission requires. Rambus offered evidence that it spent roughly from 2006 through the first

half of 2010 on its com pany-wide licensing efforts. (See CX-9547C.0004-05 (Smith Direct) Qs. 25-28 (discussing CX-7587C).) However, during discovery and again at the Hearing, Ram bus

admitted that it had no way of knowing: (a) which of its p atents its licensees were actually using (see Tr. (Sm ith) at 564:13-23; R X-6288C at Q41-43.); (b) the roy alties it has received fro m licensing the Asserted Patents in particular (see id. at 535:3-10, 547:8-549:15); or (c) the am ount of its investment in licensing the Asserted Patents specifically (see id. at 514:13-515:4, 549:3-8) C. The Scope of Rambus’ Licenses Varies Widely, Attenuating Any Nexus

Rambus’ existing patent licenses tell the Comm ission little about the nature of Ra mbus’ licensing investment in any of the Asserted Patents. The only evidence of an i nvestment in

licensing that Rambus offered was its firm -wide licensing expenditures from 2006 through the

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second half of 2010. 34 On the other hand, alm ost all of the license ag reements Rambus touts as evidence of a domestic significantly pre-date that period. (See infra.) Rambus did not prove that its 2006 to 2010 licensing efforts were focused on the Asserted Patents or even the sam technologies that were the subject of Rambus’ earlier licenses. The select license agreem ents Rambus relied upon as evidence of a domestic industry in the Barth patents also included other technologies, aside from the Concurrent Interface and DDR technologies that Ram bus alleges are covered by the Barth patent s. The Concurrent Interface Technology Licenses, for exa mple, also included (See CX-51C through CX-59C; CX-579C.) The purported DDR technology licenses also included . (See CX-39C through CX-42C; CX-45C through CX35

e

48C; CX-50C; CX-662C; CX-7627C; CX-7642C; CX-7643C.)

And the Rambus patent

licenses that purportedly included the Barth patents also included all Rambus patents that read on virtually any integrated circuit. ( See CX-38C; CX-44C; CX-7628C; CX-7629C.) Given their wide and varying scope, it is im possible for Ra mbus to contend that the Barth patents were particularly important to any of these licens es—it is at leas t as likely th at Rambus’ licensees were focused on the other technologies the licenses contain. The same is true of Ram bus’ purported Dall y licenses. Most of th e Dally licenses Rambus relies upon as evidence of its dom estic industry are technology licenses that include

(See CX-4013C; CX-4329C; CX-4330C; CX-43344C.) And the one patent license that
34

In other words, Rambus includ es in its investments all of licensing efforts during that time period, even though that figure includes num erous licenses that did not include the asserted patents and/or were not even in the same field of technology. The license agreem ents marked CX-7642C and CX-7643C were signed after Ra mbus’ Complaint was filed, and is therefore not ev idence of a dom estic industry when the com plaint was filed. -91-

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allegedly includes the Dally patents also extends to any integrated circuit. (See CX-4339C.) As with the Barth patents, Ra mbus cannot tenably contend that the Dally patents were particularly important to these licenses. The license agreem ents Rambus relied upon to establish its dom estic industry are not limited to the technology of the Bar th or Dally patents. Instead, they include a varying range of other technologies and other patents. Because Ram bus’ licenses are not of si milar scope to th e Asserted Patents, Rambus should have been required to prove the extent to which its licensing activities were actu ally focused on the Asserted Patents; its inves tment in licensing other,

unrelated technologies is not and should not be evidence to support a domestic industry finding. At most, Rambus has proven that it has invested in licensing over patents and that

some of its licenses include the Asserted Patents along with a host of other patents. For the domestic industry requirement to have any teeth—for the requirem ent to remain moored to the patent-specific language of Section 337(a)(3)(C)—Ra mbus must prove what it has spent on licensing the patents-in-suit, or at least th at the Asserted Patents were an im portant part of the activities in which it did show an investment. has failed and, accordingly, it has not satisfied the domestic industry requirement. X. THE ALJ CORRECTLY DETERMINED THAT THE BARTH PATENTS WERE EXHAUSTED AS TO (ISSUE 7) A. Issue 7a: The Licensed Samsung Memory Products Substantially Embody the Barth Patents

The sale of licensed Sam sung memory products exhausted Ra mbus’ rights in the Barth patents because their only reasonable and intended use is to practice the Barth patents, and

because they embody essential features of the Barth patents. See Quanta Computer, Inc. v. LG Elec., Inc., 553 U.S. 617, 630-31 (2008) (exhaustion triggered by sale of a product whose “only reasonable and intended use was to practice the patent” and that “embodie[s] [the] essential -92-

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features of [the] patented invention.”). 1. The Only Reasonable and Intended Use of the Samsung Licensed Memory Devices Is to Practice the Barth Patents

Rambus does not contend the Samsung memory devices have a use other than to practice the Barth patents in operating, as Ra mbus contends they must, in com pliance with JEDEC.

(RX-4079C at §§ 1.10-1.12, 1.20-1.24, 1.31-1.32, 1.34 and 1.58.) Most importantly, Rambus adm itted during re-exam ination that the Barth patents “are necessarily practiced by products that are com pliant” with applicable JEDEC standards. ( See, e.g., RX-4243 at 42-43, RX-4257 at 32-33; (em phasis added).) In view of Ra mbus’

infringement contentions, the licensed Sam sung memory products are “without utility ” other than to be com bined with an accus ed controller to create a system that practices the claim ed Barth methods. See Quanta, 553 U.S. at 632 (only apparent object of component that had no

utility other than to practice the p atents was to p ermit party to incorporate the component into a computer that would practice the patents). 2. The Licensed Samsung Memory Devices Embody Essential Features of the Barth Patents

In light of Ra mbus’ infringement contentions, the licensed Sa msung memory devices embody the essential features of the Barth paten ts because it is the config uration of the memory device that dictates what commands the contro ller will iss ue. In argu ing, as it h as, that the inventive feature of the Barth patents are the commands issued by the controller, Rambus puts the chicken before the egg. Essential to every asserted Barth claim are specific requirements on the configuration and operational capabilities of the memory device. It is these elem ents that require the controller operate in the claimed infringing manner, not the other way around. The required elements of asserted claims of the ‘353 patent include specific physical and -93-

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operational features of the m emory device that are n ecessary in order to perm it the claim ed controller to operate in the clai med manner. (JX-4 at claims 11-13.) Independent claim 11 and dependent claims 12 and 13 of the ‘353 all describe “[a] method of controlling a memory device that includes a plurality of memory cells.” (JX-4 at 41:29-31) (emphasis added). More directly, it is th e characteristic of the m emory device re quired in independent claim 11 that determ ines what command the controller issues. It requires the memory device be configured in a particular way to allow the controller to issue the claimed command: (a) issuing a first write command to the memory device, the memory device being configured to defer sampling data that corresponds to the first write command until a strobe signal is detected; (JX-4 at 41:32-35 (emphasis added).) Similarly, the asserted claims of the ‘109 and ‘405 patents impose physical requirements on the claim ed memory devices that then dictate what comm ands the controller then sends, and where and how those commands are implemented. Independent claim 1 of the ‘109 patent describe “[a] m ethod of controlling a memory device having a memory core” that requires “the write data is stored in the memory core during the write operation.” (JX-5.0044 (cl. 1)) (emphasis added); see also, e.g., id. (“the write operation is initiated in the memory cell array included in the bank”) (cl. 12)) (em phasis added); (“a memory device having a m emory core”) (cl. 20). Independent claim 11 of the ‘405 patent also identifies features of the m emory device essential to the claim. ( See, e.g., JX-3.0046 (“wherein the memory device includes an array of memory cells”) (cl. 11)). That it is the claim ed JEDEC-compliant memory devices that essentially em body the asserted claims is confirm ed by Ram bus’ own post-hearing briefing in which it repeatedly argued infringement based on reference to the JEDEC standards. (See, e.g., RPHB at 26 (“. . . as well as JED EC standards dem onstrate that the Accused Products include at least one m emory

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controller that performs a m ethod for controlling a m emory device”).) As in

Quanta, “the

incomplete article (the m emory device) substantially embodies the patent because the only step necessary to practice the patent is th e application of common process or the addition of standard parts.” 553 U.S. at 633. Those standard parts are m emory controllers that operate in a m anner dictated by the characteristics of the memory device. The controllers cannot operate independent of the memory devices. B. Issue 7b: Purchase of Samsung Memory Was in the United States

purchased two different licensed Sam sung memory devices under a

at Qs. 97-99, 106.) witness testified that th e purpose of the

at Qs. 97-99.) The .) Within a week of executing the the purchase of licensed memory devices. ( at QS. 108-109.) This purchase order indicates it is issued a purchase order for

.) The May 17, 2011 purchase order identifies a Samsung supplier location in ) This purchase order shows it was designated Free on Board (“FOB”) Origin in

, based on the “Note to Vendor,” included therein. (Id. at .0001.) FOB, or “Free on Board,” is a shipping provision with legal meaning “whereby goods are -95-

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delivered at a designated location . . . where the legal title and thus risk of loss passes from seller to buyer.” N. Am. Phillips Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576, 1578 n.2 (Fed. Cir. 1994) (citing Black’s Law Dictionary 632 (6th ed. 1990); U.C.C. § 2-319(1)). Here, the purchase order specified the m emory devices were Free on Board at South San Francisco, California. ( ) at Qs. 127-128.) The term s of the originated . followed bus offered no ; (2)

purchase order, specified that the shipm ent of Samsung’s memory devices to in , where legal title and risk of loss passed to Rambus presented no contrary evidence to dispute that Sam sung and the routing and shipm ent requirements set fo rth in the purchase order. Ram evidence to show (1) the m emory devices were not delivered by Sam sung to the shipment of memory devices did not originate in devices was not transferred to took title and possession of

, or (3) title to the m emory

in San Francisco. The only evidence of record establishes licensed m emory devices from Samsung in

, which satisf ies the territoriality requ irement in Jazz Photo Corp. v. U.S. Int’l Trade Comm’n, 264 F.3d 1094, 1105 (Fed. Cir. 2001). The record also establishes these

transactions all occured in the United States such that the sales of the Sam sung memory products took place in the United States. See TransCore, L.P. v. Elec. Transaction Consultants Corp.,

563 F.3d 1271, 1278 (Fed. Cir. 2009). XI. RAMBUS LACKS STANDING TO ASSERT THE DALLY PATENTS The ALJ in correctly determined that Rambus had standin g to assert the Dally patents even though the Dally inventions w ere indisputably reduced to practice at the University of North Carolina (“UNC”) and subject to autom atic assignment to UNC. For the reasons stated in Respondents’ contingent petition for review, Respondents request that the Comm ission reverse the ALJ’s finding and hold that Rambus lacks standing to assert the D ally patents. Neither the -96-

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bona fide purchaser nor laches arguments are sufficient to overcome Rambus’ standing defects. A. Issue 8a: Rambus Is Not a Bona Fide Purchaser Without Notice

Rambus Was on Inquiry Notice of the UNC Assignment. In order to qualify as a bona fide purchaser, Ram bus must prove that it pu rchased the Dally patents in good faith without notice of the prior UNC assignm ent. Stanford v. Roche, 583 F.3d 832, 843 (Fed. Cir. 2009), aff’d 131 S. Ct. 2188 (2011). Even if Rambus lacked actual notice of the UNC assignm ent, that would not be sufficient—Ra mbus was obligated to perform reasonable diligence into the Dally patents before acquiring them . See Katz v. Lear Siegler Inc., 1993 U.S. App. LEXI S 17507, at *13-15 (Fed. Cir. July 12, 1993). Because any reasonable com pany in Rambus’ position would have inquired into and learned about the UNC assignment, Rambus is not a bona fide purchaser. Rambus had ample notice of UNC’s involvement in developing the Dally technology and could easily have investigated the extent to which UNC had righ ts in that technology. For

example, Dally’s 1996 Invention Disclosure Form refers to work done at UNC. (RX-4148C.) Dally also swore repeatedly to the PTO in publicly available filings that documentation from the Fast Links Project, on which Dally collaborated with UNC Professor John Poulton, corroborated conception of his claimed inventions. ( See, e.g., RX-2014; RX-2015; RX-2016; JX-032C.0033 at 106:1-107:1; JX-032C.0041 at 140:19-24; could thus have learned that the Dally patents JX-032C.0060-61 at 221:14-222:12.) Ra mbus were reduced to practice at UNC pursuant to a

DARPA grant—the Fast Links Project—sim ply by reviewing the prosecution histories of the Dally patents or by ask ing Dally ab out his work at UNC. Given the commonplace natu re of

assignment provisions in high-tech collaborations, Rambus should have asked what interest UNC had in the Dally patents, just as Respondents did in connection with this case. Rambus also could have learned about the UNC assignment if it had followed up on repeated references to the DARPA contract in connection with the Dally patents. During th -97e

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course of their work on the Fast Links project, Dally and Poulton published numerous papers and presentations that identified the DARPA contract as their funding source. ( See, e.g., RX-2021; RX-2238C; RX-2386; RX-2022; RX-2017C.) Indeed, starting in 1997, a website was available that provided “substantial inform ation about the Fast-Links project.” (Tr. (Quigg) at 2110:222111:22; RX-2404.) The DARPA contract proposal was drafted as a collaborative effort

between MIT Professor Dally and UNC Professor Poulton. ( See RX-5422C.005; Tr. (Quigg) at 2092:5-22; see also RX-2375; RX-4011.0001-5; RX-2776C; RX-2783C; RX-2376C.0001; RX2794C.) The for mal proposal to DARPA that led to the funding for the Dally technology was submitted by Dally on behalf of MIT. (RX-5422C.005-8; RX-2377C; RX-2794C.) At the sam e time, however, Poulton drafted the UNC subco ntract, providing that UNC would “ collaborate in all aspects” of the Fast Links Project with MIT —subject to the automatic assignment provision. (RX-5422C.0010-12; Tr. (Poulton) at 1757:5- 1761:4; Tr. (Q uigg) at 2093:6-20; RX-4522; RX2309.) The DARPA c ontract issued in August 1996, and the UNC subcontract was dated effective as of Septe mber 1, 1996. (RX-5422C.0014-15; Tr. (Quigg) at 2092; RX-2378C; RX2306C; RX-2380C; RX-2891.) Rambus could have learned about the UNC contract, with its

automatic assignment provision, by investigating the research that Dally and Poulton repeated ly stated was the source o f the Dally Patents. Indeed, a reasonable in vestigation into Dally’s statements about his work at UNC, or his and Poulton’s statem ents about funding f or the Fast Links project, would have led to the UNC subcontract and its autom atic assignment provision. That Rambus failed to p ursue these lines of inq uiry means only that Rambus chose to stick its head in the sand—not that it was a bona fide purchaser without notice. A Bona Fide Purchaser Defense Cannot Defeat Standing. Even if Ra mbus could prove that it was without notice of the UNC ass ignment, its bona fide purchaser defense would fail legally. A party’s status as a bona fide purchaser of patents is irrelevant to that party’s -98-

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standing to sue based on those patents. Rambus cannot use the bona fide purchaser defense offensively to support its standing allegations. See, e.g., V-Formation, Inc. v. Benetton Group SpA, 2006 WL 650374, at *8 (D.Colo. Mar. 10, 2006) (rejecting use of bona fide purchase defense by plaintiff with legal title to “undo” defendant’s covenant not to sue).The bona fide purchaser defense is an equitable m legal

doctrine designed to protect purchasers against belated ownership challenges fro

titleholders. See, e.g., Duncan Townsite v. Lane, 245 U.S. 3 08, 311 (1917). That a party is a bona fide purchaser of a patent does not perfect a party’s legal title so as to confer standing. Moreover, the bona fide purchaser defense is only available to parties who acquired title from a party who had legal title to transfer. If an inventor transfers rights to another party prior to a purported assignm ent, the inventor has nothing to assign—the inventor’s rights had already been transferred. See Filmtec Corp. v. Hydranautics, 982 F.2d 1546, 1553 (Fed. Cir. 1992). Because title to the Dally patents passed auto matically to UNC by virtu e of the autom atic

assignment provision (see RX-2891.007-8), MIT could not pass th e Dally patents to Ram bus or its predecessor-in-interest. Rambus is not a bona fide purchaser. B. Issue 8b: Laches Cannot Cure Rambus’ Standing Defect

As with Rambus’ bona fide purchaser argum ent, laches does not apply to cure Rambus’ standing problems for both factual and legal reasons. Factually, UNC was unaware of its interest in the Dally patents until this suit was filed. (Tr. (Quigg) at 2106:18-2107:18, 2150:16-2151:7.) MIT failed to inform UNC of the Dally patents, as was required under their agreem ent. (See id. at 2106:18-2107:18, 2104:1-16.) A s a result, UNC did not engage in any unreasonable delay of a sort that would trigger laches. See Adv. Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157, 1162 (Fed. Cir. 1993) (“[ T]here can be no laches in failing to assert righ ts of which a party is wholly ignorant, and whose existence he had no reason to apprehend.”). -99-

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Even if som e delay could be shown, howeve r, laches is not a defense to a standing challenge. See Caudill v. Sears Transition Pay Plan, 2011 WL 1595044, at *3 (E. D. Mich. Apr. 26, 2011) (rejecting plaintiffs’ reliance ondoctrine of laches to bar defendants’ standing argument). In Stanford v. Roche, Stanford sued Roche for patent infringem ent while Roche counterclaimed for ownership of the patent based on a prior assignm ent agreement. 583 F.3d at 837-38. The Federal C ircuit found that Roch e’s claim for ownership was tim e-barred. Id. at 848. Howe ver, the Federal Circuit also ruled that Roche’s inability to m aintain an offensive

counterclaim for ownership was irrelevant to standing; the fact that Stanford never received full title because of an autom atic assignment provision meant that Stanford lacked standing and its infringement suit m ust be dism issed. Id. at 848-49. In other words, even if UNC might not

prevail if it brought a declaratory judgm ent action for owne rship of the Dally patents, it would not change the fact that Ra mbus does not have clear title to those patents. As a result, Ra mbus does not have standing to maintain its suit. XII. CONCLUSION For the foregoing reasons, Respondents resp ectfully request that the Commission affir m the ALJ’s determination of no violation of Section 337, either on the grounds articulated by the ALJ or on any of the alternative grounds urged in Respondents’ post-hearing briefing.

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Dated: May 18, 2012

/s/ Paul F. Brinkman Charles K. Verhoeven Sean S. Pak QUINN EMANUEL URQUHART & SULLIVAN LLP 50 California Street, 22nd Floor San Francisco, CA 94111 Thomas D. Pease QUINN EMANUEL URQUHART & SULLIVAN LLP 51 Madison Ave., 22nd Floor New York, NY 10010 Paul F. Brinkman QUINN EMANUEL URQUHART & SULLIVAN LLP 1101 Pennsylvania Avenue, 6th Floor Washington, D.C. 20004 Counsel for Respondents STMicroelectronics N.V.; STMicroelectronics Inc.; and Cisco Systems Inc. /s/ Jonathan D. Link Jonathan D. Link KILPATRICK TOWNSEND & STOCKTON LLP Suite 900 607 14th Street, NW Washington , DC 20005-2018 David E. Sipiora Daniel S. Young KILPATRICK TOWNSEND & STOCKTON LLP Suite 600 1400 Wewatta Street Denver , CO 80202 Counsel for Respondents LSI Corporation and Seagate Technology

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/s/ Eric C. Rusnak Eric C. Rusnak K&L GATES LLP 1601 K Street, NW Washington, DC 20006-1600 Michael J. Bettinger Steven M. Everett Curt Holbreich Elaine Y. Chow Deirdre M. Digrande K&L GATES LLP Four Embarcadero Center, Suite 1200 San Francisco, CA 94111 Counsel for Respondents STMicroelectronics, Inc. and STMicroelectronics, N.V. /s/ Andrew R. Kopsidas Andrew R. Kopsidas Ruffin Cordell FISH & RICHARDSON P.C. 1425 K Street NW, 11th Floor Washington, DC 20005 Counsel for Respondents ASUSTek Computer, Inc.; Asus Computer International, Inc.; and Hewlett- Packard Company /s/ Alexander J. Hadjis Alexander J. Hadjis MORRISON & FOERSTER LLP 2000 Pennsylvania Ave, NW Suite 6000 Washington, DC 20006 Counsel for Respondent Hitachi Global Storage Technologies, Inc.

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/s/ Louis S. Mastriani Louis S. Mastriani Sarah E. Hamblin Daniel F. Smith ADDUCI, MASTRIANI & SCHAUMBERG, L.L.P. 1200 Seventeenth St, NW 5th Floor Washington, DC 20036 Counsel for Respondent Garmin International Inc.

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Certain Semiconductor Chips and Products Containing Same

Inv. No. 337-TA-753

  CERTIFICATE OF SERVICE I, Jon Tap, hereby certify that on July 12, 2012 copies of the foregoing document were served upon the following parties as indicated: The Honorable Lisa R. Barton Acting Secretary U.S. International Trade Commission 500 E Street, SW, Room 112A Washington, DC 20436 The Honorable Theodore R. Essex Administrative Law Judge 500 E Street, SW, Room 317 Washington, DC 20436 Email: tamara.foley@usitc.gov Daniel L. Girdwood Office of Unfair Import Investigations U.S. International Trade Commission 500 E Street, SW Washington, DC 20436 Email: daniel.girdwood@usitc.gov Counsel for Complainant Rambus Inc. Christine Lehman Finnegan Henderson 901 New York Avenue, NW Washington, DC 20001 Email: ITC753-Service@finnegan.com Via First Class Mail Via Hand Delivery Via Overnight Courier Via Electronic Mail Via First Class Mail Via Hand Delivery (8 copies) Via Overnight Courier Via Electronic Mail Via E-filing Via First Class Mail Via Hand Delivery (2 copies) Via Overnight Courier Via Electronic Mail Via First Class Mail Via Hand Delivery Via Overnight Courier Via Electronic Mail

/s/ Jon Tap Jon Tap Paralegal