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2013-1228 (Reexamination Nos. 95/001,107 & 95/001,132)

IN THE

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
___________

RAMBUS, INC.,

Appellant,
v. MICRON TECHNOLOGY, INC.,
___________

Appellee.

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

REPLY BRIEF FOR RAMBUS INC.
___________

J. Michael Jakes James R. Barney Aidan C. Skoyles FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 901 New York Avenue, NW Washington, DC 20001 (202) 408-4000 October 21, 2013

Attorneys for Appellant Rambus Inc.

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TABLE OF CONTENTS I. II. INTRODUCTION ...........................................................................................1 REPLY TO MICRON’S ARGUMENTS ........................................................2 A. The Board Lacked Jurisdiction over Micron’s Appeal .........................2 1. 2. 3. The Board’s Statutory Interpretation Is Not Entitled to Chevron Deference .................................................................2 Micron’s Interpretation of 35 U.S.C. § 315(b) Is Incorrect ......................................................................................4 Micron Concedes that “Any Final Decision” in 35 U.S.C. § 315(b) Refers Only to Decisions Within the Requested Reexamination ...................................................11 The Hypothetical Non-merger Scenario Is Relevant Because It Proves the Board Overstepped Its Statutory Bounds .......................................................................12 Micron’s Remaining Arguments Lack Merit............................13

4.

5. B.

Micron Has Failed to Show by Substantial Evidence that Any Single Embodiment of Bennett Stores a Value that Is Representative of a Number of Clock Cycles .....................................15 1. Micron Misstates the Proper Weight to Be Given to the Examiner’s Factual Findings in an Inter Partes Reexamination ..........................................................................15 Micron’s Alternative Construction of “Representative” Is Incorrect ....................................................16 The Configurations Shown in Figures 25a and 25b of Bennett Do Not Anticipate Claim 27 ........................................20 The Presence or Absence of “One Extra Clock Cycle” Does Not Satisfy Claim 27’s Requirement of a Value that Is “Representative” of a Number of Clock Cycles Which Must Transpire Before Sampling ...................................................................................26 i

2. 3. 4.

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C. III.

Micron’s Alternative Ground for Invalidity Based on JEDEC and Park Contradicts This Court’s Prior Decisions ...............27

Conclusion .....................................................................................................31

ii

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TABLE OF AUTHORITIES FEDERAL CASES PAGE(S)

Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc) ..........................................................28 Belkin International, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012) ............................................................ 7-8, 10, 12 Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011) ..........................................................................3, 4 Brand v. Miller, 487 F.3d 862 (Fed. Cir. 2007) ..............................................................................4 Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001) .................................................................... 22-23 Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984) ..................................................................................... 2, 3, 4 City of Arlington, Texas v. FCC, 133 S. Ct. 1863 (2013) ..........................................................................................4 Cooper Technologies Co. v. Dudas, 536 F.3d 1330 (Fed. Cir. 2008) ............................................................................ 3 Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) ..........................................................................15 Ex parte Horito, 2012 WL 4842863 (BPAI Sept. 27, 2012) ...................................................15, 16 Ex parte Technology Development & Licensing, LLC, 2013 WL 3294852 (PTAB Apr. 19, 2013) .........................................................17 Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336 (Fed. Cir. 2011) ..........................................................................28 ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368 (Fed. Cir. 2009) ..........................................................................28

iii

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In re Caveney, 761 F.2d 671 (Fed. Cir. 1985) ......................................................................15, 16 In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) ................................................................4, 15, 22 In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008) ................................................................2, 3, 4, 9 LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) ..........................................................................28 Pfizer Inc. v. Apotex Inc., 731 F. Supp. 2d 741 (N.D. Ill. 2010) .................................................................... 3 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..........................................................17 Rambus Inc. v. Infineon Technologies AG, 318 F.3d 1081 (Fed. Cir. 2003) ....................................................................27, 31 Skidmore v. Swift & Co., 323 U.S. 134 (1944) ..............................................................................................4 Talbert Fuel Systems Patents Co. v. Unocal Corp., 275 F.3d 1371 (Fed. Cir.), vacated and remanded on other grounds, 537 U.S. 802 (2002) ...................................................................................... 18-19 Tehrani v. Hamilton Medical, Inc., 331 F.3d 1355 (Fed. Cir. 2003) ..............................................................16, 18, 23 United States v. Mead, 533 U.S. 218 (2001) ..........................................................................................3, 4 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ............................................................................20 FEDERAL STATUTES 5 U.S.C. §§ 556-557...............................................................................................3, 4 28 U.S.C. §§ 651-658.........................................................................................14, 15 35 U.S.C. § 312 ..............................................................................................5, 10, 12 iv

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35 U.S.C. § 315 ..........................................................................................4, 7, 11, 12 35 U.S.C. § 317 ..........................................................................................................7 FEDERAL RULES 37 C.F.R. § 41.77(b)(2) (2012) ................................................................................31 OTHER AUTHORITIES 145 Cong. Rec. E1788-93 (daily ed. Aug. 5, 1999) (extended remarks of Rep. Coble) ..............................................................6, 7, 14 MPEP § 2240 (8th ed. Rev. 9, Oct. 2012) ................................................................. 5 MPEP § 2258 (8th ed. Rev. 9, Oct. 2012) ...............................................................17

v

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I.

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

two additional references—JEDEC and Park—that it failed to include in its original request for reexamination. As with Bennett, only Samsung asserted

JEDEC and Park as anticipation references and, therefore, only Samsung had a right to appeal the examiner’s ruling that claim 27 is allowable over these references. The Board’s erroneous decision that Micron had standing to appeal these Samsung issues was based on a misinterpretation of the statute. Contrary to Micron’s assertion, the Board’s statutory interpretation is not entitled to Chevron deference. As an informal adjudication handed down without notice-and-comment rulemaking, a Board decision interpreting a statute is reviewed by this Court de novo. Moreover, Micron fails to explain how the Board’s ruling is consistent with the statute. Micron’s reasoning is based on the faulty premise that the PTO has unfettered authority to issue “duplicate” rejections in copending reexaminations. To the contrary, in a given reexamination, the PTO can only enter a rejection if it independently satisfies the “substantial new question of patentability” (“SNQ”) requirement for that reexamination. Here, the rejections based on Bennett, JEDEC, and Park did not meet the SNQ requirement for the Micron-requested reexamination because they were not “new,” i.e., they had already been taken up in the earlier Samsung-requested reexamination. Thus, 1

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regardless of the PTO’s administrative merger procedure, Micron could not have gained the right to appeal these Samsung issues because these issues could not have been properly added to Micron’s reexamination as a matter of statute. On the merits, Micron fails to show that the Board’s rejection of claim 27 over Bennett was supported by substantial evidence. Micron concedes that

Bennett’s configuration parameter VI can, at most, “be configured to include or not an extra clock cycle of delay before the transmission of data.” (Micron Br. 8 (emphasis added).) As the examiner correctly found, this “extra” clock cycle is not “representative of the number of clock cycles” because there are other factors—not accounted for by configuration parameter VI—that can also affect this delay period. II. REPLY TO MICRON’S ARGUMENTS A. The Board Lacked Jurisdiction over Micron’s Appeal 1. The Board’s Statutory Interpretation Is Not Entitled to Chevron Deference

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

Swanson, 540 F.3d 1368, 1374 (Fed. Cir. 2008) (“We review the Board’s legal conclusions including statutory interpretation de novo.” (emphasis added)). In Swanson, this Court distinguished Board decisions, like the one here, from
1

Chevron, U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984). 2

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

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

Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011), is inapplicable because it involved a provision of the MPEP, not a Board decision as here, 3

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id. at 646. Moreover, in Bettcher, the Court cited the MPEP provision only as an alternative ground supporting its decision and without any discussion or analysis as to what type of “deference” should be given to that provision, e.g., Chevron deference, Skidmore 2 deference, or something else. See id. The decision in City of Arlington, Texas v. FCC, 133 S. Ct. 1863 (2013), is likewise inapplicable here. In City of Arlington, the statutory interpretation at issue was promulgated by the FCC in a “Declaratory Ruling,” and there was no dispute before the Court as to whether this Declaratory Ruling constituted a formal agency adjudication, as opposed to an informal agency interpretation of the type excluded from Chevron deference under Mead. Here, in contrast, this Court has held that “PTO proceedings are not formal adjudications governed by §§ 556 and 557 of the APA.” Brand v. Miller, 487 F.3d 862, 867 (Fed. Cir. 2007) (emphasis added) (citing In re Gartside, 203 F.3d 1305, 1313 (Fed. Cir. 2000)). Accordingly, the Board’s decision here is not entitled to Chevron deference. See Mead, 533 U.S. at 231-34; Swanson, 540 F.3d at 1374-75. 2. Micron’s Interpretation of 35 U.S.C. § 315(b) Is Incorrect

Micron contends that “[t]he persistent flaw in Rambus’s argument is that it bases a requester’s statutory appeal rights solely on what is in a requester’s

2

Skidmore v. Swift & Co., 323 U.S. 134 (1944). 4

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reexamination request rather than basing the appeal rights on the examiner’s final decision of patentability . . . .” (Micron Br. 24.) Yet it is Micron’s interpretation of the statute that is flawed. Micron fails to acknowledge that the entire inter partes reexamination statute is based on a single gateway criterion—the “substantial new question of patentability” threshold set forth in 35 U.S.C. § 312. Notably, a substantial new question of patentability must be new in order to be the basis of an inter partes reexamination. Thus, for example, if Requester A successfully initiates an inter partes reexamination of a patent based on argument X, a subsequent Requester B challenging the same patent cannot initiate an inter partes reexamination based on the same argument X since it no longer constitutes a “new” question of patentability. Cf. MPEP § 2240(II) (8th ed. Rev. 9, Oct. 2012) (“If the prior art cited [in an ex parte reexamination request] raises the same substantial new question of patentability as that raised in the pending reexamination proceedings, the second or subsequent request should be denied.”). (See also A2891, Micron’s Opp’n to Rambus’s Mot. to Dismiss for Lack of Standing at 2 (acknowledging that “Micron was not permitted to repeat the same arguments and rejections proposed in Samsung’s reexamination request”).) The PTO recently made this clear in denying a second ex parte reexamination request in Reexamination No. 90/012,901. (A20217 (“[B]ecause the same technological teachings formed the 5

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basis of the substantial new question of patentability found in the co-pending ’781 proceeding, there is no substantial new question of patentability in the present request.”).) Had Congress intended something different, it could have drafted the statute to allow the PTO to institute an inter partes reexamination based on any substantial question of patentability, even if not new. This would have allowed, for instance, multiple requesters to institute simultaneous inter partes reexaminations of the same patent based on the same invalidity arguments. Yet that is not what Congress adopted. Congress was concerned, among other things, that the inter partes

reexamination procedure might be used by third-party requesters to harass patent owners. As Rep. Coble remarked: To prevent harassment, anyone who requests inter partes reexamination must identify the real party in interest and third-party requesters who participate in an inter partes reexamination proceeding are estopped from raising in a subsequent court action or inter partes reexamination any issue of patent validity that they raised or could have raised during such inter partes reexamination. 145 Cong. Rec. E1788, at E1790 (daily ed. Aug. 5, 1999 (extended remarks of Rep. Coble) (emphasis added). Rep. Coble further explained that § 317 of the statute was aimed at preventing harassment of patent owners: Title V creates a new § 317 which sets forth certain conditions by which inter partes reexamination is prohibited to guard against harassment of a patent holder. In general, once an order of inter partes reexamination 6

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has been issued, neither a third-party requester nor the patent owner may file a subsequent request for inter partes reexamination until an inter partes reexamination certificate is issued and published, unless authorized by the Director. Id. (emphasis added). It is undisputed that the inter partes reexamination statute does not suggest or envision multiple reexamination proceedings being joined together. Instead, the statute treats each inter partes reexamination as a stand-alone proceeding with one requester and one patent owner. See, e.g., 35 U.S.C. § 317(a) (referring to “the patent owner” and “the petitioner” (emphases added)). Similarly, the estoppel provision of § 315(c) is unique to each individual requester. See 35 U.S.C.

§ 315(c) (estoppel applies to “any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings” (emphasis added)). With respect to the SNQ criterion, this Court has summarized the process as follows: The statute requires the Director to order reexamination “for resolution of the question.” § 313. The statute is clear that that “question” is the same substantial new “question” of patentability found by the Director under § 312(a). The statutory framework thus requires that an issue must raise a “substantial new” question of patentability, as determined by the Director, with respect to cited prior art before it can be considered during inter partes reexamination. 7

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Belkin Int’l, Inc. v. Kappos, 696 F.3d 1379, 1382 (Fed. Cir. 2012). Micron cites Belkin for the proposition that, during reexamination, “the PTO may make any new rejection . . . .” (Micron Br. 30 (quoting Belkin, 696 F.3d at 1383).) But, tellingly, Micron truncates the Court’s holding and, in so doing, eliminates a critically important caveat. The full holding is as follows: Indeed, the PTO may make any new rejection, as long as that rejection also meets the substantial new question of patentability requirement. . . . Thus, the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under [35 U.S.C.] § 311 that the Director has determined raise such an issue. It otherwise may not include other prior art than what constituted the basis of the Director’s determination of a substantial question of patentability. Belkin, 696 F.3d at 1383 (emphasis added) (citation omitted). Thus, in any reexamination proceeding, the Director only has statutory authority to issue a new rejection if it meets the “substantial new question of patentability” requirement for that reexamination. 35 U.S.C. § 312(a). This is why Micron’s arguments fail. Micron incorrectly contends that the PTO has unfettered authority to “issue identical Office Actions in [two separate inter partes reexamination] proceeding[s] in order to obtain many of the same benefits of merger.” (Micron Br. 27-28.) Yet this is simply untrue; the statute only permits

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the PTO to issue rejections in an inter partes reexamination that satisfy the SNQ requirement for that reexamination. Assume, for example, that Requester A successfully institutes an inter partes reexamination of a patent based on invalidity argument X. Three months later, Requester B successfully institutes a second inter partes reexamination of the same patent based on invalidity argument Y. Contrary to Micron’s assertion, the PTO does not have statutory authority to include the “X” rejection in Requester B’s separate reexamination proceeding because “X” is not a “substantial new question of patentability” in Requester B’s proceeding. It was only “new” when it was originally proposed by Requester A. From that point forward, “X” cannot be raised by a third party or the Director as a ground for rejection in any subsequent reexamination of the same patent because it is no longer “new.” See Swanson, 540 F.3d at 1379 (“As properly interpreted a ‘substantial new question of patentability’ refers to a question which has never been considered by the PTO . . . .” (emphasis added)). This statutory constraint does not go away when the PTO decides, for its own “housekeeping” purposes, to merge two separate reexamination proceedings into one. For instance, in this case, Micron did not—and could not—raise Bennett, JEDEC, or Park as anticipation references in its original reexamination request because those references had already been raised by Samsung and determined to 9

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satisfy the SNQ requirement. (See pp. 5-7, supra.) Therefore, Micron based its reexamination request on different art, namely, Gustavson in view of either Bennett or Bowater. (A2341-47.) Once instituted on those grounds, Micron’s reexamination was statutorily limited to those grounds plus any other references or combinations the Director determined raised “a substantial new question of patentability.” 35 U.S.C. § 312; Belkin, 696 F.3d at 1383. By the plain reading of the statute, the Director could not have cited Bennett, JEDEC, or Park as satisfying the SNQ requirement in Micron’s reexamination because those references had already been taken up in Samsung’s earlier-requested reexamination. Indeed,

Micron itself concedes that it was precluded from raising those references in its original request. (See pp. 5-7, supra.) Thus, when the PTO sua sponte merged Samsung’s and Micron’s reexamination proceedings together, although it administratively combined all rejections into a single office action (see Micron Br. 25 (citing A10841-42)), this did not have the effect of injecting Samsung’s issues into Micron’s reexamination proceeding because, as a matter of statute, the PTO had no authority to do so. Micron is therefore mistaken when it claims that “the issues raised by Samsung were included by the examiner in Micron’s proceeding and vice versa.” (Id. at 26.) To the contrary, Samsung’s issues were included only in the same office action as Micron’s issues; they did not become part of Micron’s reexamination. 10

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3.

Micron Concedes that “Any Final Decision” in 35 U.S.C. § 315(b) Refers Only to Decisions Within the Requested Reexamination

In holding that Micron had standing to appeal issues originally proposed only by Samsung, the Board referred to § 315(b)’s provision that “[a] third-party requester . . . may appeal . . . with respect to any final decision favorable to the patentability of any original or proposed amendment or new claim of the patent.” (See A4-5 (emphasis added).) Rambus has consistently argued that “any final decision” in this provision means any final decision in the particular reexamination that the third party actually requested, as opposed to unrelated reexaminations that happen to involve the same patent. (Rambus Br. 41-43.) Rambus was compelled to make this argument because Micron had previously asserted precisely the opposite in its response to Rambus’s motion to dismiss for lack of standing. (See A2893-95.) Now, however, it appears Micron no longer contends that “any final decision” in § 315(b) means that Requester A can appeal an adverse decision in Requester B’s unrelated reexamination involving the same patent. (Micron Br. 26 (asserting that “the Office has not interpreted ‘any’ to be as broad as Rambus suggests”).) Given this concession, it appears the parties now agree that 35 U.S.C. § 315(b) only grants a third-party requester the right to appeal adverse decisions in the particular reexamination that the third party actually requested. In other words, 11

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a third-party requester cannot jump into another requester’s appeal simply because both reexaminations involve the same patent. 4. The Hypothetical Non-merger Scenario Is Relevant Because It Proves the Board Overstepped Its Statutory Bounds

Micron contends Rambus’s hypothetical non-merger scenario is irrelevant “[b]ecause a merger did in fact occur.” (Id.) This misses the point entirely. As Rambus explained, if Micron would not have had the right to appeal Samsung’s issues in the non-merger scenario, it could not have gained that substantive right merely by virtue of the PTO’s merger procedure, which is a creature of regulation, not statute. (Rambus Br. 44-47.) Micron does nothing to rebut this fundamental point. Micron first contends that Rambus’s hypothetical is based on a “flawed premise” because, according to Micron (albeit without citation), “the examiner could sua sponte add rejections from each proceeding into the other.” (Micron Br. 27.) This is incorrect. As explained above, the examiner could only have “added rejections” into Micron’s reexamination if those rejections independently satisfied the SNQ requirement for that reexamination. 35 U.S.C. § 312; Belkin, 696 F.3d at 1383. An anticipation rejection based on Bennett, JEDEC, or Park would not have met that requirement because those issues were no longer “new” when Micron’s reexamination request was filed. 12

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As a fallback, Micron contends the PTO’s merger procedure did not confer substantive appeal rights but, instead, “Micron had appeal rights to the Board because the examiner issued a final decision favorable to patentability with respect to the proposed rejection of [claim 27] over Bennett (and other prior art).” (Micron Br. 28.) Yet this argument is merely circular. It ignores that Samsung, not Micron, originally proposed those rejections of claim 27 and, therefore, only Samsung would have had the right to appeal the examiner’s decision to withdraw those rejections, but for the Board’s flawed jurisdictional ruling. 5. Micron’s Remaining Arguments Lack Merit

Micron attempts to dismiss Rambus’s evidence showing that the Board has issued contradictory rulings regarding appeal rights in a merged reexamination proceeding. According to Micron, Rambus’s evidence shows only that

“a requester’s rights are ‘confined by the statute,’ which is consistent with the Board’s decision [in this case] finding that the statute provided Micron the right to appeal.” (Id. at 30.) This is incorrect. In Reexamination 95/001,714, the Board recently merged two inter partes reexaminations and explained the parties’ respective appeal rights, in part, as follows: [I]n the notice of appeal, . . . the third party requester must identify each rejection that was previously proposed by that third party requester that the third party requester intends to contest.

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(A20165 (emphasis in original).) This guidance from the Board is contrary to the Board’s ruling in this case that “Micron has the right to appeal any decision favorable to patentability that is present in a merged proceeding at the time the RAN is entered irrespective of who initially raised the patentability issue in question.” (A20005 (emphases added).) This inconsistent guidance from the Board strongly suggests that the PTO is in need of this Court’s guidance on this issue. Micron also contends that “the crux of Rambus’s argument is that by settling with Samsung, Rambus should get the benefit of an erroneous patentability decision by an examiner . . . .” (Micron Br. 31-32.) This too is incorrect. To begin with, the examiner duly completed the Samsung-requested reexamination after Samsung withdrew and correctly found that claim 27 was allowable over Bennett, JEDEC, and Park. Moreover, Micron is wrong that the express purpose of inter partes reexamination is “to provide an alternate forum for third parties to fully argue their case.” (Id. at 32 n.8.) Instead, the cited remarks of Rep. Coble indicate that the statute was “intended to reduce expensive patent litigation in U.S. district courts by giving third-party requesters . . . the option of inter partes reexamination proceedings in the PTO.” 145 Cong. Rec. E1788, at E1789-90 (emphasis added). Since the long-standing policy of Congress and the judiciary is to encourage settlement of litigations, see, e.g., 28 U.S.C. §§ 651-658, it would be 14

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an odd result to interpret the inter partes reexamination statute in a manner that discourages parties to settle their disputes during reexamination. B. Micron Has Failed to Show by Substantial Evidence that Any Single Embodiment of Bennett Stores a Value that Is Representative of a Number of Clock Cycles 1. Micron Misstates the Proper Weight to Be Given to the Examiner’s Factual Findings in an Inter Partes Reexamination

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

4842863, at *2 (BPAI Sept. 27, 2012) (citing In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)). A preponderance-of-the-evidence review is not the same as a de novo review. Thus, Micron is simply wrong that the Board is not required to “detail the error in the examiner’s findings.” (Micron Br. 38.) Instead, if the

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Board seeks to overturn specific factual findings of the examiner (as it did here), it must first show that those findings were not “supported by a preponderance of the evidence.” Horito, 2012 WL 4842863, at *2; see also Caveney, 761 F.2d at 674 (“[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections . . . .”). The Board failed to do so here. 2. Micron’s Alternative Construction of “Representative” Is Incorrect

With respect to the proper construction of “representative,” Micron appears to be of two minds. First, it appears to agree with this Court’s holding in Tehrani v. Hamilton Medical, Inc., 331 F.3d 1355, 1361 (Fed. Cir. 2003), that, to be “representative,” a value must “be directly related to and stand for, or be a reasonable proxy for, the latter item.” Specifically, Micron contends that “the finding that Figure 25a-h of Bennett anticipates claim 27 under the construction argued for by Rambus should be reviewed for substantial evidence.” (Micron Br. 33 (emphasis added).) Certainly, Micron would not be advocating that this Court review the Board’s decision under an incorrect construction; thus, it can only be assumed that Micron agrees with the construction advocated by Rambus, which is consistent with the meaning of “representative” in Tehrani.

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At the same time, Micron seeks to hedge its bet by suggesting that “representative” has a broader-than-normal meaning in the ’051 patent.3 Micron’s only purported evidence of this alleged broader meaning is a single passage at column 11, lines 38-58 of the ’051 patent. (See Micron Br. 35.) Yet nowhere does that passage use “representative” any differently than its ordinary meaning. Instead, that passage explains an encoding scheme in which four bits (i.e., “BlockSize[0:3]”) are used to represent various block sizes from 0 to 1024 bytes. (A113[11:38-58].) Each four-bit combination uniquely describes (and therefore “represents”) a different block size. Micron contends that only the last three bits are relevant since the first bit indicates an encoding scheme (binary versus powerof-two) and that “representative” therefore means something different in the ’051 patent than it does elsewhere. (Micron Br. 35.) But Micron is wrong. Each of the sixteen possible values of BlockSize[0:3] stands for, or “represents,” a single, specific block size. (See A113[11:38-57].) That the first of the four bits dictates whether the remaining three should be interpreted as a binary value or a power of two is irrelevant because the overall four-bit value of BlockSize[0:3]

Micron cites the incorrect claim-construction standard. (Micron Br. 20-21.) Because the ’051 patent expired during reexamination, the PTO was obliged to apply Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), rather than the “broadest reasonable interpretation” standard. See Ex parte Tech. Dev. & Licensing, LLC, 2013 WL 3294852, at *2 (PTAB Apr. 19, 2013); MPEP § 2258(G). 17

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corresponds to a specific block size, consistent with the ordinary meaning of “representative” as explained in Tehrani. In contrast, under Micron’s skewed construction of “representative,” even if the wait-line value in a particular bus configuration of Bennett fails to correlate to the actual request-to-data-delivery delay period in 99.99% of all memory transactions on that bus, if it correlates occasionally—i.e., even if purely by happenstance in 0.01% of transactions—then the “representative” limitation would be satisfied. This rationale cannot be correct because it would eviscerate the ordinary meaning of “representative” and render the claimed invention inoperable. The whole purpose of storing a value representative of a number of clock cycles in the ’051 patent is to allow a controller to know at the time of the request and with precision when a particular device will respond to a given operation code to allow interleaved scheduling. (A115[15:63-16:1].) If the values were only sometimes predictive of reality, and only under unpredictable circumstances (as the Board’s rationale would allow), the system would not work properly because the controller would not be able to depend on the correct data consistently being on the bus at the selected time. (See A115[16:1-2].) As a matter of law, a construction that inhibits the operation of the claimed invention “should be viewed with extreme skepticism.” Talbert Fuel Sys. Patents Co. v. Unocal Corp., 275 F.3d

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1371, 1376 (Fed. Cir.), vacated and remanded on other grounds, 537 U.S. 802 (2002). Micron also contends (for the first time on appeal) that, “[w]hen viewed in light of the specification, it is clear that sampling data exactly when the access time transpires is only a preference and not a requirement.” (Micron Br. 14.) Micron cites certain passages in the ’051 patent that use “preferential” language, e.g., “a slave should preferably respond to a request in a specified time, sufficient to allow the slave to begin or possibly complete a device-internal phase including any internal actions that must precede the subsequent bus access phase.” (emphasis Micron’s) (citing A111[8:48-52]).) (Id.

Reading the entire sentence

carefully and in context, including the surrounding statements that the slaves are as simple as possible and never worry about arbitrating for the bus, what is taught is a preference for how a proper delay time for the response is determined, not an option as to whether the delay time is to be conformed to or not. Further, regardless of whether the exact-timing feature was described as a preferred embodiment in the specification, it is the claimed embodiment. Specifically, claim 27 requires “a value which is representative of a number of clock cycles of the external clock signal to transpire before sampling a first portion of data.” (A120[26:35-38].) Patentees are certainly entitled to claim their

preferred embodiments, and it is the claims that define the scope of the invention, 19

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not the specification. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). 3. The Configurations Shown in Figures 25a and 25b of Bennett Do Not Anticipate Claim 27

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

“simplified” figures is that the other figures of Bennett, such as Figures 32, 35, and 36 (which show actual memory transactions), clearly do not anticipate the asserted claims. Micron incorrectly states that Rambus has argued that “the same outcome must occur in every single one of Bennett’s 30,000+ configurations in order to show anticipation.” (Micron Br. 46.) Rambus has argued no such thing. Instead, it is Rambus’s position (and the examiner’s below) that no embodiment of Bennett, including the bus configurations corresponding to Figures 25a and 25b, discloses a predetermined value that is “representative of the number of clock cycles” that will transpire between an operation code and data sampling. To begin with, Micron concedes that the wait-line parameter in Bennett can, at most, “be configured to include or not an extra clock cycle of delay before the transmission of data.” (Id. at 8 (emphasis added)); see also A1144.) As Rambus has explained, this “extra clock cycle” does not indicate the actual number of clock cycles that will necessarily transpire between an operation code and data sampling 20

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because there are other factors, such as arbitration, retry conditions, pin configuration, address block size, and bus activity, that can affect the data-sampling time. For example, in a 32-bit address space with 16 data lines and a dedicated wait-line configuration of 3, the address information consumes two clock cycles (32 bits ÷ 16 bits/cycle = 2 cycles), as shown in Bennett Figure 36, so at least two cycles must transpire between an operation code and data. But a 16-bit address transmitted across the same bus configuration, including the same wait-line configuration of 3, would require only one clock cycle (16 bits ÷ 16 bits/cycle = 1 cycle) between an operation code and sampling of data. This address-size variable is completely ignored in the transactions illustrated in Figures 25a and 25b. Indeed, those transactions do not include any address information at all, which renders them both artificial and incapable of anticipating a claim that expressly requires sampling data in response to an operation code. As shown in Figure 34, all large-memory transactions in Bennett require address information to be transmitted after the Function ID. This can also be seen in the exemplary write operation illustrated in Figure 36:

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Write Request Address Information

(A1418[Fig. 36].) In contrast, the “generic” transactions shown in Figures 25a and 25b—which are not memory transactions—do not include any address information at all:

(A1408[Figs. 25a-b].) Thus, because the generic transactions shown in Figures 25a and 25b are not specifically memory transactions, they cannot be used to show anticipation of claim 27 as a matter of law. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (“To anticipate, every element and limitation of the claimed 22

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invention must be found in a single prior art reference, arranged as in the claim.”). Moreover, when the Figure 25a and 25b configurations are modified to include the transmission of address information, Micron’s hypotheses are no longer true. For instance, Micron states: “Regarding Figure 25b, using configuration 122123XX, the number of clock cycles between receipt of the operation code and transfer of data is one.” (Micron Br. 40.) But in a real-world memory transaction, this period could actually be one of many different numbers of clock cycles, depending on the size of the address and other factors. Thus, because the same wait-line configuration can result in different times between a request and data, it cannot be said to “represent” that time period. Tehrani, 331 F.3d at 1361. Micron also fails to acknowledge that the generic transactions shown in Figures 25a-h are not the only transactions that can occur across those bus configurations. For example, as Rambus explained and Micron does not dispute, a read-modify-write transaction in Bennett would involve “sampling a first portion of data,” as recited in claim 27, and would necessarily involve a split command/response cycle like that shown in Figure 35, which necessarily requires the memory device to arbitrate onto the bus to deliver and sample the requested data. (Rambus Br. 63-64.) Micron does not dispute these facts, nor could it since Figure 34 expressly defines Bennett’s read-modify-write transaction as including “MEM. ARB.,” or memory arbitration: 23

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(A1416[Fig. 34] (excerpt).) Accordingly, any read-modify-write transaction occurring across the bus configurations in Figures 25a-h would necessarily be subject to an indeterminate amount of time before memory arbitration (see the first set of vertical ellipses in Fig. 35) and during arbitration (see the second set of vertical ellipses in Fig. 35). Likewise, the wait signal itself could result in a retry condition, requiring the memory device to re-arbitrate onto the bus, resulting in a further indeterminate delay. Micron responds that “arbitration is an optional feature and [is] not required.” (Micron Br. 43.) But this is not true for the configurations shown in Figures 25a-h and 36, upon which Micron expressly relies for its anticipation argument. In each of these configurations, configuration registers I, II, and III (which govern arbitration settings) are set to allow for arbitration when needed. (A1661[25:42-26:11, 26:55-57]; A1397[Fig. 3].) And as Micron cannot dispute, any read-modify-write transaction involving large memory in Bennett will necessarily require memory arbitration (see A1416[Fig. 34]), which necessarily

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introduces even more uncertainty into the period between receipt of a given memory request and the sampling of data. Micron’s only other response to these points is to return to its flawed construction of “representative”—i.e., where something can be “representative,” even though it means different things in different circumstances, and even if it varies from transaction to transaction across the same bus configuration. (Micron Br. 44-45.) As explained above, that construction is incorrect as a matter of law. Moreover, Micron’s arguments in this regard actually prove Rambus’s point. For instance, Micron argues: Similarly, in Rambus’s example for Figure 36 of Bennett, the 3-bit value of 011 for Parameter VI represents 1, 2 or 4 clock cycles depending on the other configuration values. Instead, if the 3-bit value of 001 was used for Parameter VI, that value represents 2, 3 or 5 clock cycles respectively (as this change adds in a one clock delay cycle as discussed previously). Thus, even for Figure 36, Parameter VI is a programmable value stored in a configuration register “which is representative of the programmable number of clock cycles.” (Id. at 45 (emphasis added).) What Micron’s argument above proves beyond any doubt is that parameter VI of Bennett is not a stored value that is “representative” of the claimed number of clock cycles. Instead, as Micron concedes, Bennett’s data-arrival time actually “depend[s] on other configuration values.” (Id. (emphasis added).) Notably,

the Board’s decision did not rely on “other configuration values” as collectively 25

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satisfying the “stored value” limitation of claim 27. Nor could it, since claim 27 specifically requires “a [singular] value which is representative of a number of clock cycles.” (A120[26:35-36] (emphasis added).) Instead, the Board relied (as does Micron here) on parameter VI of Bennett, which Micron now flatly admits is not—by itself—“representative” of a number of clock cycles between an operation code and the subsequent sampling of data. 4. The Presence or Absence of “One Extra Clock Cycle” Does Not Satisfy Claim 27’s Requirement of a Value that Is “Representative” of a Number of Clock Cycles Which Must Transpire Before Sampling

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

configuration parameter VI (i.e., 2, 3, 4, and 5), there will not be any “extra” clock cycle, because either the wait line(s) are dedicated (configuration settings 3, 4, and 5) or there are no wait lines at all (configuration setting 2). (A1397[Fig. 3].) Thus, the entire premise of Micron’s argument is that Bennett’s configuration parameter VI, because it has one of five settings that requires the use of a data line for one clock cycle, allegedly stores a value that is “representative of the number of clock cycles” which transpire before data sampling. (Micron Br. 7.) This, however, is 26

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fundamentally incorrect.

The most that can be determined by looking at

configuration parameter VI is whether or not wait-line information will be driven by the slave on a data line after the master drives the function. This one-clockcycle wait-information time slot, when configured, necessarily pushes data sampling back, but it cannot inform as to the actual data-sampling time in any given memory transaction. C. Micron’s Alternative Ground for Invalidity Based on JEDEC and Park Contradicts This Court’s Prior Decisions

Without even addressing the merits of the references, Micron argues that JEDEC and Park render claim 27 invalid. As an initial matter, because that argument was not part of Micron’s request for reexamination, Micron does not have standing to raise it. See Section II.A, supra. Moreover, as the examiner and the Board correctly concluded, Rambus is entitled to its priority date, such that JEDEC and Park are not prior art. (A1171; A1174; A73-76.) Micron contends claim 27 is overbroad because it is not limited to one particular type of bus, a multiplexed bus, even though this claim is directed exclusively to features other than the bus. As the examiner and the Board correctly found, however, the original disclosure of the ’898 application is not limited to a multiplexed bus. (A73-76.) Indeed, this Court has already concluded the same thing, a decision that is stare decisis on this issue. In Rambus Inc. v. Infineon Technologies AG, 318 F.3d 1081, 1091-95 (Fed. Cir. 2003), in the context of claim 27

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construction, this Court analyzed whether the disclosure of the ’898 application was limited to a multiplexed bus and found that “a multiplexing bus is only one of many inventions disclosed in the ’898 application,” id. at 1095. Micron asserts this Court’s analysis of the disclosure was eclipsed by a later hypothetical statement by this Court in Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1352-53 (Fed. Cir. 2011). (Micron Br. 47-48.) But Micron misreads the Hynix decision. In Hynix, this Court held that a jury was reasonable in finding that Rambus’s claims do, in fact, meet the written-description requirement without requiring a multiplexed bus. Hynix, 645 F.3d at 1351-53. Thus, the jury’s determination and this Court’s affirmance of it are themselves compelling evidence—and certainly provide substantial evidence to support the Board’s determination—that the claims meet the written-description requirement and are therefore entitled to their priority date. See Ariad Pharm., Inc. v.

Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (writtendescription requirement is a question of fact reviewed for substantial evidence). Indeed, this Court determined in Hynix, 645 F.3d at 1352-53, that the jury’s fact-finding overcame any analogy to either ICU Medical or LizardTech, an analogy the Board similarly addressed and rejected (A74-76 (citing ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1378 (Fed. Cir. 2009); LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344 (Fed. Cir. 2005)).) Thus, each of 28

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this Court’s statements about the written description of the ’898 application supports the examiner’s and the Board’s holding. Contrary to Micron’s argument (Micron Br. 53-57), the original disclosure describes inventions that do not require a multiplexed bus, including synchronous memory devices, controllers for controlling such devices, and systems that include such devices (A109[3:22-48, 4:35-42]; A110[5:52-64]; A2506). The specification goes on to describe numerous “object[s] of this invention,” only one of which is to a “multiplexed bus.” (A109[3:22-48] (referring to a “relatively narrow bus”).) For example, the specification discusses a bus interface for “large blocks of data” (A109[3:22-26]), or a clocking scheme allowing for “high speed clock signals to be sent along the bus with minimal clock skew” (A109[3:27-29]), neither of which requires a multiplexed bus. See also Infineon, 318 F.3d at 1095 (noting that “a multiplexing bus is only one of many inventions disclosed in the ’898 application”). The specification refers repeatedly and generically to a “bus,” without indicating whether the bus is multiplexed or not. (“The bus lines are controlled-impedance, (See, e.g., A109[4:38-39] lines.”);

double-terminated

A110[5:52-57] (“a bus [is connected] to an independent cache memory”).) Although the specification describes a “byte-wide, multiplexed

data/address/control bus,” it is described simply as the “preferred bus architecture.” 29

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(A111[8:17-25].) The specification never limits further bus discussion to this preferred multiplexed architecture. And, as the Board recognized, one of skill in the art would recognize that it is not so limited and that “other important touted features in the ’898 disclosure, including clocking schemes and writing large blocks of data, could have been practiced on generic buses without multiplexing.” (A75; A2506-07[¶¶32-36].) The original claims of the ’898 application also demonstrate that the inventors were in possession of generic bus claims. The Board correctly

recognized that certain original claims (73 and 91) required only a generic bus, not necessarily a “multiplexed bus.” (A75.) Claim 73, for example, required only a “bus subsystem” (A10789-90) and claim 91 required “a plurality of external bus lines” (A10799), but both were silent as to whether the claimed bus is multiplexed. Micron essentially complains that neither of these claims was directed to the bus itself (Micron Br. 57), but that assertion applies even more strongly to claim 27 on appeal, since it also does not recite a bus (see A75 (distinguishing ICU Medical because, here, claim 27 does not require a bus at all)). In sum, Micron’s alleged alternative ground for affirmance based on JEDEC and Park fails because Micron has raised an issue not within the scope of its reexamination and because claim 27 is entitled to its original April 1990 priority date, predating both references. This Court has twice held a generic bus to be 30

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supported by the specification, and the examiner’s and Board’s decisions and the specification itself all support such a holding. III. CONCLUSION For the foregoing reasons and those explained in Rambus’s opening brief, this Court should vacate the Board’s decision because the Board lacked jurisdiction to hear Micron’s arguments. Alternatively, the Court should reverse the Board’s decision finding claim 27 of the ’051 patent invalid and reinstate the examiner’s finding of no anticipation.4 Dated: October 21, 2013 Respectfully submitted,

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

4

Reversal is appropriate here because Rambus elected under 37 C.F.R. § 41.77(b)(2) (2012) to request rehearing by the Board “upon the same record” rather than reopen prosecution following the Board’s new grounds of rejection. Thus, if the Board’s decision is unsupported by substantial evidence in the existing record, the appropriate action is reversal rather than remand. 31

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CERTIFICATE OF COMPLIANCE I certify that the foregoing REPLY BRIEF FOR RAMBUS INC. contains 6,920 words as measured by the word-processing software used to prepare this brief.

Dated: October 21, 2013

Respectfully submitted,

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

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CERTIFICATE OF SERVICE I hereby certify that copies of the foregoing REPLY BRIEF FOR RAMBUS INC. were served upon registered counsel by operation of the Court’s CM/ECF system on this 21st day of October, 2013. Henry A. Petri, Jr. Novak Druce Connolly Bove + Quigg, LLP 1875 Eye Street, NW, 11th Floor Washington, DC 20001 henry.petri@novakdruce.com

/s/ Kay Wylie

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