PUBLIC VERSION UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C.

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

RESPONSE OF THE OFFICE OF UNFAIR IMPORT INVESTIGATIONS TO THE NOTICE OF COMMISSION DETERMINATION TO REVIEW IN THE ENTIRETY A FINAL DETERMINATION FINDING NO VIOLATION OF SECTION 337

OFFICE OF UNFAIR IMPORT INVESTIGATIONS Lynn I. Levine, Director David O. Lloyd, Supervisory Attorney Daniel L. Girdwood, Investigative Attorney U.S. International Trade Commission 500 E Street, S.W. Suite 401 Washington, D.C. 20436 202.205.3409 (ph) 202.205.2158 (fax) Conf. Version: Public Version: May 18, 2012 May 31, 2012

i TABLE OF CONTENTS

I. 

QUESTION 1 - CLAIM CONSTRUCTION (DALLY PATENTS)..................... 2  a.  Why “output frequency” requires a construction setting forth a specific 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. ......................... 3  b.  If “output frequency” is construed not to require a particular data rate, the effect of that construction, if any, on the section 102 and 103 determinations on review, as set forth below. ............................................................................................ 4 

II.  QUESTION 2 - VALIDITY ..................................................................................... 6  a.  The motivation to combine and secondary indicia of nonobviousness, for each section 103 combination upon which one or more parties petitioned for review. (Barth patents and Dally patents) ............................................................................... 6  1.  2.  Obviousness Combinations as to the Dally Patents.......................................... 8  Obviousness Combinations as to the Barth I Patents ..................................... 14 

b.  The pertinence, if any, of synchronous versus asynchronous prior art, and the motivation to apply the teachings of asynchronous art to synchronous systems. (Barth patents) ............................................................................................................ 26  1.  2.  Background..................................................................................................... 27  Combinations Based On Yano (RX-4261) As A Primary Reference ............ 30 

c.  Whether the Harriman patent evidences the publication of the NeXTBus specification, in view of the fact that NeXT is the assignee of the Harriman patent. (Barth patents) ............................................................................................................ 37  d.  Whether the respondents have demonstrated the publication date of the SyncLink specification (RX-4270C). (Barth patents) ............................................. 39  III.  QUESTION 3 - INFRINGEMENT .................................................................... 40  a.  The disablement of the Cisco products with a disabled transmitter (Dally patents), see Resp. Pet. 48, as compared to the disablement of the SL500 prior art products, see Rambus Pet. 17-20 ............................................................................... 40  b.  Given that “in 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) (emphasis added), whether a finding of infringement or noninfringement of the asserted Dally claims should be guided by the claim language at issue in Fantasy Sports, Silicon Graphics, Inc. v. ATI Technologies, Inc., 607 F.3d 784, 794 (Fed. Cir. 2010), ACCO Brands, Inc. v. ABA Locks Manufacturer Co., 501 F.3d 1307, 1310 (Fed. Cir. 2007), or other Federal Circuit caselaw regarding active or enabled components. ................................................... 40 

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ii c.  The infringement of asserted Dally ‘494 method claims 39, 40, and 42 in view of the ALJ’s discussion at page 77 of the ID regarding enabled features of apparatuses. ................................................................................................................. 45  d.  Certain STMicroelectronics products are claimed to have substantial noninfringing uses by virtue of their compatibility with SDR memory. See Resps. Pet. 25; ID at 67 n.9. Explain with specificity and citations to the evidentiary record what these STMicroelectronics products are and your contention that these products have or lack substantial noninfringing uses. .................................. 47  IV.  QUESTION 4 - UNCLEAN HANDS (Barth patents) ...................................... 48  a.  Whether the doctrines of preclusion or stare decisis prevent Rambus from challenging the determinations from the 661 investigation as to the date upon which it was obligated to retain documents, or its bad faith. ................................. 48  b.  Explain with specificity the factual distinctions between the records of the 661 investigation and this investigation, with respect to prejudice suffered or allegedly suffered by the respondents by reason of Rambus’s destruction of documents. .. 55  1.  2.  SyncLink......................................................................................................... 58  Prosecution Files............................................................................................. 59 

V.  QUESTION 5 - INEQUITABLE CONDUCT (Barth patents)........................... 62  a.  Whether the respondents have proven materiality of this particular document. 63  b.  Whether the PTO’s reexamination of the ’109 patent demonstrates that the broadest reasonable construction of the ’109 patent’s “signal” is a construction broader than the ’405 and ’353 patents’ “strobe signal.” ....................................... 63  c.  If the broadest reasonable construction of “signal” in the ’109 patent is “a signal,” and not “a strobe signal,” whether the SyncLink specification is cumulative with art presented to the PTO. .............................................................. 63  1.  Background..................................................................................................... 64  2.  SyncLink is Cumulative With Other Request Packet Prior Art That Was Submitted And Considered During Prosecution ....................................................... 67  d.  If inequitable conduct were to be found for the ’109 patent, whether the ’405 and ’353 patents are also unenforceable. .................................................................. 68  VI.  QUESTION 6 - DOMESTIC INDUSTRY ........................................................ 71  VII.  QUESTION 7 - PATENT EXHAUSTION (Barth patents) ............................. 75  a.  Whether the licensed Samsung memory products substantially embody the Barth patents. .............................................................................................................. 75  1.  2.  Background..................................................................................................... 75  Discussion....................................................................................................... 76 

b.  What evidence, if any, demonstrates that the Samsung memory purchased (by the respondent discussed on the bottom half of page 337 of the ID, see Rambus Pet. 95-97), was ever located in the United States prior to incorporation PUBLIC VERSION

iii into products overseas, and whether the respondent took possession of the memory in the United States. ..................................................................................... 78  VIII.  QUESTION 8 - Standing (Dally patents) ....................................................... 80  a.  Whether Rambus is a bona fide purchaser pursuant to 35 U.S.C. § 261. ....... 80  b.  Whether UNC’s claim of ownership is barred by laches. ................................ 86  IX.  REMEDY .............................................................................................................. 87  1.  Rambus’s Arguments Concerning a General Exclusion Order Should Be Rejected..................................................................................................................... 88  2.  Respondents’ Arguments Concerning Their Own Downstream Products Should Be Rejected ................................................................................................... 91  b.  Cease and Desist Orders Are Appropriate As To Certain Respondents ........ 92  c.  The Public Interest ............................................................................................... 93  d.  Bonding ................................................................................................................. 95  X.  CONCLUSION ....................................................................................................... 97  a.  A Limited Exclusion Order Is Appropriate ...................................................... 87 

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iv TABLE OF AUTHORITIES Cases  Adv. Fiber Techs. Trust v. J&L Fiber Servs., --- F.3d ---, 2012 U.S. App. LEXIS 6641 (Fed. Cir. Apr. 3, 2012)................................................................................................... 6 AGFA Corp. v. Creo Prods. Inc., 451 F.3d 1366 (Fed. Cir. 2006)................................... 69 Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed. Cir. 2008) ............................ 11, 13 Aventis Pharma S.A. v. Hospira, Inc., --- F.3d ---, 2012 U.S. App. LEXIS 7095 (Fed. Cir. Apr. 9, 2012) ................................................................................................................. 67 Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321 (Fed. Cir. 1998) ............................ 69, 70 Certain Agricultural Tractors Under 50 Power Take-off Horsepower, Inv. No. 337-TA380, Comm’n Op. (March 1997) .................................................................................. 93 Certain Compact Multipurpose Tools, Inv. No. 337-TA-416, USITC Pub. No. 3239, Comm’n Op. (September 1999).................................................................................... 94 Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, Comm’n Op., EDIS Doc. ID 467105 (Dec. 21, 2011) ....................................................................................................................... 46 Certain Erasable Programmable Read-Only Memories, Components Thereof, Products Containing Such Memories, and Processes for Making Such Memories, Inv. No. 337TA-276, USITC Pub. 2196 (May 1989) ....................................................................... 92 Certain Ground Fault Circuit Interrupters and Products Containing Same, 337-TA-615, Comm’n Op. (March 2009) .................................................................................... 88, 89 Certain Hair Irons and Packaging Thereof, Inv. No. 337-TA-637, Comm’n Op. at 3 (July 20, 2009) ....................................................................................................................... 89 Certain Hybrid Electric Vehicles and Components Thereof, Inv. No. 337-TA-688, Comm’n Op., EDIS Doc. ID 422099 (Apr. 2, 2010) .................................................... 49 Certain Hybrid Electric Vehicles and Components Thereof, Inv. No. 337-TA-688, Comm’n Op., EDIS Doc. ID 427966 (June 22, 2010).................................................. 49 Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Comm’n Op. (November 2007) .......................................................................................................... 95 Certain Multibrand Infrared Remote Control Transmitters, Inv. No. 337-TA-363, Notice of Comm’n Determination, 1994 ITC LEXIS 709 (June 1994) ................................... 48

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v Certain Multimedia Display and Navigation Devices, Inv. No. 337-TA-694, Comm’n Op., 2011 ITC LEXIS 1416 (July 22, 2011) .................................................................. 72, 73 Certain Neodymium-Iron-Boron Magnets, Magnet Alloys, and Products Containing Same, Inv. No. 337-TA-372, Comm’n Op. on Remedy, the Public Interest and Bonding, USITC Pub. 2964 (May 1996) ...................................................................................... 95 Certain Plastic Encapsulated Integrated Circuits, Inv. No. 337-TA-315, Comm’n Op. on Issues Under Review and on Remedy, the Public Interest, and Bonding (November 1992) ............................................................................................................................. 95 Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Comm’n Op., 2011 ITC LEXIS 2689 (August 10, 2010)...................................................................... passim Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Initial Determination, EDIS Doc. ID 417900 (Jan. 22, 2010) ..................................... 50, 51, 66 Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Order No. 21, EDIS Doc. ID 411759 (Oct. 7, 2009) ............................................................................... 71, 72 Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-605, Comm’n Op. (June 3, 2009).................. 88, 90 Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-630, Comm’n Op., 2010 ITC LEXIS 2701 (Dec. 2010) ............................................................................................................................. 48 Certain Two-Handle Centerset Faucets and Escutcheons, and Components Thereof, Inv. No. 337-TA-422, USITC Pub. No. 3332, Comm’n Op. (July 2000) ........................... 94 Consol. Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804 (Fed. Cir. 1990) ................. 69 Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002) 41 FilmTec Corp. v. Allied-Signal, Inc., 1993 U.S. App. LEXIS 414 (Fed. Cir. 1993) (unpublished) ................................................................................................................ 85 FilmTec Corp. v. Hydranautics, 982 F.2d 1546 (Fed. Cir. 1992) .................................... 85 FilmTec. Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991) ...................... 84, 85 Fujifilm Corp. v. Benum, 605 F.3d 1366 (Fed. Cir. 2010).......................................... 76, 78 In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011) .............................................. 20, 21 In re King, 801 F.2d 1324 (Fed. Cir. 1986) ...................................................................... 44 PUBLIC VERSION

vi In re Lister, 583 F.3d 1307 (Fed. Cir. 2009)..................................................................... 40 In re Regents of the Univ. of Cal., 101 F.3d 1386 (Fed. Cir. 1996).................................. 60 In re Spalding Sports Worldwide, Inc., 203 F.3d 800 (Fed. Cir. 2000) ............................ 60 Joy Tech., Inc. v. Flakt, Inc., 6 F.3d 770 (Fed. Cir. 1993) ................................................ 41 Larson Mfg. Co. v. Aluminart Prods., Ltd., 559 F.3d 1317 (Fed. Cir. 2009) ................... 68 Leviton Mfg. Co. v. Universal Sec. Instruments, Inc., 606 F.3d 1353 (Fed. Cir. 2010) ... 68 Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) ....................... 41, 46 Mother’s Restaurant, Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566 (Fed. Cir. 1983)... 52, 53, 54 Pharmacia Corp. v. Par Pharma., Inc., 417 F.3d 1369 (Fed. Cir. 2005) ......................... 69 Quanta Computer, Inc v. LG Electronics, Inc., 128 S. Ct. 2109 (2008)............... 75, 76, 77 Rhône-Poulenc Agro, S.A. v. DeKalb Genetics Corp., 284 F.3d 1323 (Fed. Cir. 2002) . 81, 86 Silicon Graphics, Inc. v. ATI Tech. Inc., 607 F.3d 784 (Fed. Cir. 2010) .............. 41, 42, 43 Stanford v. Roche, 583 F.3d 832 (Fed. Cir. 2009), aff’d 131 S. Ct. 2188 (2011) ............. 86 Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) ....................................................................................................................................... 69 V-Formation, Inc. v. Benetton Group SpA, 2006 WL 650374 (D.Colo. Mar. 10, 2006) . 84 Viscofan, S.A. v. United States Int’l Trade Comm’n, 787 F.2d 544 (Fed. Cir. 1986) ....... 87 Statutes  19 U.S.C. § 1337 ............................................................................................. 87, 88, 90, 95 35 U.S.C. § 261 ................................................................................................................. 81 Other Authorities  Manual of Patent Examining Procedure (8th Ed. with July 2008 Revisions) ............ 44, 45 Restatement 2nd of Judgments § 27 (1982) ..................................................... 49, 51, 52, 54

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vii Rules  19 C.F.R. § 210.43 ............................................................................................................ 11 19 C.F.R. § 210.50 ............................................................................................................ 95

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1 The Office of Unfair Import Investigations (“OUII”) respectfully submits this response to the Notice of Commission Determination to Review in the Entirety a Final Initial Determination Finding No Violation of Section 337, 77 Fed. Reg. 27249 (May 2012) (“Notice”).1 As discussed below, OUII is of the view that the ID’s finding of no violation of Section 337 should be affirmed because all of the asserted claims are invalid as anticipated by or obvious in view of the prior art.2 In the event that the Commission nonetheless finds a violation of Section 337, OUII submits that the appropriate remedy consists of a limited exclusion order (“LEO”) directed at the accused products of the remaining Respondents, and cease and desist orders (“C&D”) directed at a subset of the remaining Respondents. A proposed LEO and C&D are attached hereto as Exhibits A and B, respectively.3 OUII further submits that the bond should be set at 2% of entered value for the Presidential review period.

See Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond, EDIS Doc. IDs. 725571 & 725577 (Mar. 2, 2012) (“ID” or “753 ID”); Respondents’ Contingent Petition for Review of the Initial Determination, EDIS Doc. ID 475141 (Mar. 19, 2012) (“Resp. Pet.”); Respondents’ Reply to Petition of Complainant Rambus Inc. and Contingent Petition of the Office of Unfair Import Investigations, EDIS Doc. ID 476074 (Mar. 27, 2012) (“Resp. Pet. Reply”); Complainant Rambus Inc.’s Petition for Review, EDIS Doc. ID 475134 (Mar. 19, 2012) (“Rambus Pet.”); Response of Complainant Rambus to Petitions for Review of Respondents and the Staff, EDIS Doc. ID 476083 (Mar. 27, 2012) (“Rambus Pet. Reply”). Rambus asserts claims from two patents that are collectively referred to herein as the “Dally patents,” i.e., claims 1, 2, 4-6, 9-13, 24-28, 31-36, 39-44, 47, and 49-53 of U.S. Patent No. 7,602,857 (the “’857 patent”); and claims 1-3, 6, 8, 25, 26, 30, 39, 40, and 42 of U.S. Patent No. 7,715,494 (the “’494 patent”). Rambus also asserts claims from three patents that are collectively referred to herein as the “Barth I patents,” i.e., claims 11-13, 15 and 18 of U.S. Patent No. 6,470,405 (the “’405 patent”), claims 11-13 of U.S. Patent No. 6,591,353 (the “’353 patent”); and claims 1-6, 11-13, 20-22 and 24 of U.S. Patent No. 7,287,109 (the “’109 patent”).
3 2

1

A copy of the proposed LEO was provided to Customs on May 7, 2012. Customs has not provided any comments regarding the proposed order.

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2 In the discussion below, OUII first responds to the eight (8) questions set forth in the Notice. OUII then addresses the remedy issues on which the Commission has also sought briefing. Reference should also be made to OUII’s briefs in response to the private parties’ petitions for review, to OUII’s pre- and post-hearing briefs, and to other relevant pleadings submitted during the course of the investigation.4 I. QUESTION 1 - CLAIM CONSTRUCTION (DALLY PATENTS) With respect to the Dally patents, the parties dispute the meaning of two closely related limitations in six dependent claims: (1) an “output frequency” of a least 1 GHz as recited in claims 2, 31, and 49 of the ‘857 patent and claim 3 of the ‘494 patent; and (2) a “rate” of at least 400 MHz as recited in claims 30 and 42 of the ‘494 patent. While the “output frequency” and “rate” terms were treated similarly by the parties, their experts, and the presiding Judge (in the ID), the Commission has requested briefing on the following two issues that are directed solely at the adopted construction for the “output frequency” limitation. See ID at 24-34.

See, e.g., Combined Response of the Office of Unfair Import Investigations to the Private Parties’ Petitions for Review of the Initial Determination on Violation of Section 337, EDIS Doc. ID 476023 (Mar. 27, 2012) (“OUII Pet. Reply.”); Initial Post-Hearing Brief of the Commission Investigative Staff, EDIS Doc. ID 463598 (Nov. 8, 2011) (“OUII Initial Br.”); Reply PostHearing Brief of the Commission Investigative Staff, EDIS Doc. ID 465069 (Nov. 22, 2011) (“OUII Reply Br.”); Pre-Hearing Statement and Brief of the Commission Investigative Staff, EDIS Doc. ID 460813 (Oct. 5, 2011) (“OUII Pre-trial Brief”); Respondents’ Corrected Post-Trial Brief, EDIS Doc. ID 467902 (Jan. 6, 2012) (“Resp. Initial Br.”); Respondents’ Post-Hearing Reply Brief, EDIS Doc. ID 465121 (Nov. 22, 2011) (“Resp. Reply Br.”); Respondents’ Prehearing Statement and Brief, EDIS Doc. ID 459712 (Sept. 21, 2011) (“Resp. Pre-trial Br.”); Complainant Rambus Inc.’s Posthearing Brief, EDIS Doc. ID 463649 (Nov. 8, 2011) (“Rambus Initial Br.”); Complainant Rambus Inc.’s Posthearing Reply Br., EDIS Doc. ID 465112 (Nov. 22, 2011) (“Rambus Reply Br.”); and Complainant Rambus Inc.’s Corrected Pre-Hearing Statement, EDIS Doc. IDs 663021 and 663022 (Sept. 28, 2011) (“Rambus Pre-trial Br.”).

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3 a. Why “output frequency” requires a construction setting forth a specific 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.

At trial, the following three constructions were proposed for the “output frequency” term: Complainant Rambus one half the value of the output data rate See CX-9542C, Singer Direct Q/A 117 OUII and Respondent STM output data rate Respondent LSI frequency content of the output signal See RX-5430C, Hajimiri Direct Q/A 35.

See RX-5431C, Hassoun Direct Q/A 54

None of the parties proposed construing the term to mean “a number of cycles per second” as set forth in Question 1(a). Nor has such a construction been applied by the parties’ experts to the validity and infringement evidence of record. OUII submits that the plain and ordinary meaning of the term “output frequency” in the context of the Dally patent claims is “output data rate.” This fact is confirmed by Dr. Hajimiri’s testimony at trial: Q. A. So in [the] context [of a data sheet for a transmitter circuit], output frequency probably refers to output data rate; is that correct? That would be correct in that context.

Hajimiri, Tr. 1643:07-10; see also id. at 1640:21-1643:06 (similar testimony as to the individual parts “output” and “frequency”); RX-5430C, Hajimiri Direct Q/A 41 (acknowledging that a data rate of 1 Gbps can loosely be referred to as 1 GHz). Inventor Dally gave essentially the same definition for the term at his deposition. See RDX-0276; RX-5431C, Hassoun Direct Q/A 56 (testifying as to RDX-0276). This plain and ordinary meaning definition to which Dr. Hajimiri and Dr. Dally both testified is consistent with all embodiments disclosed in the specification, which equate a 1:1 ratio between a particular “frequency” in Hertz and the corresponding data rate of the system.

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4 For example, the embodiment of Figure 1 uses a 400MHz clock to generate an output signal corresponding to a 4 Gbps data rate, thus equating a 1 Hertz frequency with a 1 bit-per-second data rate. See ‘857 patent, Figure 1 (right); 3:15-46 (describing the embodiment of Figure 1); ID at 31-32 (same). Figure 12 similarly includes a label of “4Gbps” for what the specification describes in terms of 4GHz, again equating a 1 Hertz frequency with a 1 bit-per-second data rate. See ‘857 patent, Figure 12; see also ID at 32 (describing Figure 12 and the corresponding disclosure thereof in the specification). Other examples also exist. See ID at 33 (quoting ‘857 patent, 8:13-16). Thus, the plain and ordinary meaning of the term “output frequency,” the intrinsic record of the Dally patents, and the extrinsic testimony of record all support the finding in the ID that a person of ordinary skill in the relevant art would construe the term to mean “output data rate.” For at least these reasons, OUII respectfully submits that the Commission should affirm the ID’s interpretation of “output frequency” as meaning “output data rate.” b. If “output frequency” is construed not to require a particular data rate, the effect of that construction, if any, on the section 102 and 103 determinations on review, as set forth below.

As an initial matter, Question 1(b) appears to seek briefing on the effect of the construction proposed in Question 1(a), i.e., “a number of cycles per second,” on certain of the obviousness and anticipation issues raised in Questions 2(a) and 3(a). For the reasons discussed below, OUII submits that such a construction would likely implicate the parties’ existing dispute over data rates even though the proposed construction does not explicitly call for a particular

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5 data rate. Thus, OUII does not believe that the adopted construction will significantly affect (or resolve) the corresponding validity disputes at issue in this investigation. More specifically, in the context of the Dally patents the term “baud” is often used to refer to the number of “symbols” per second that a transmitter can send, with each symbol representing a single bit of data. See CX-10764C, Singer Rebuttal Q/A 110; Hassoun, Tr. 1541:17-1542:04, 1555:21-24. Thus, 1 baud (Bd) equals 1 bit-per-second (bps). The two primary pieces of Dally prior art asserted at trial, i.e., the Widmer Article (addressed in response to Question 2(a)) and the SL500 art (addressed in response to Question 3(a)), disclose transmitter circuitry that generates a 500Mbaud and a 1.0625Gbps output signal, respectively. See OUII Initial Br. at 175-177 (discussing the Widmer Article); id. at 190-191 (discussing the SL500 Art). In other words, the Widmer Article transmits 500 x 106 symbols-per-second and the SL500 Art transmits 1.0625 x 109 symbols-per-second due to the relationship between bps, baud, and symbols. Should the Commission construe the “output frequency of at least 1 GHz” limitation to mean at least 1 x 109 cycles-per-second, the invalidity analysis as to the Widmer Article, the SL500 art, and the other Dally prior art of record would thus turn on the number of “symbols” that a given reference transmits per “cycle.” By way of example, the relevant question would be whether 1.0625 x 109 symbols-per-second of the SL500 art is greater than the 1 x 109 cycles-persecond of certain dependent claims of the Dally patents. With none of the experts having opined directly on a “cycles-per-second” construction per se, Rambus has previously argued that the prior art of record should be interpreted as transmitting 2 symbols-per-cycle, consistent with its view that the Dally patents envision a 1:2 ratio between frequency (i.e., cycles-per-second) and data rate (i.e., bits-per-second or Baud). See, e.g., CX-10764C, Singer Rebuttal Q/A 110. By contrast, OUII and the Respondents have

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6 previously argued that the same prior art should instead be interpreted as transmitting 1 symbolper-cycle, consistent with their view that the Dally patents envision a 1:1 ratio between frequency and data rate. See Hassoun, Tr. 1541:17-1542:04, 1555:21-24; Hajimiri, Tr. 1643:0710, 1640:21-1643:06; RX-5430C, Hajimiri Direct Q/A 41. In short, the Commission’s proposed construction of “a number of cycles per second” would simply shift the dispute from the proper interpretation of “frequency” in the existing claim language to the proper interpretation of “cycle,” thus leaving unresolved the parties’ disagreement over whether the Dally patents envision a 1:1 or 1:2 ratio between Hertz and Baud/bps. See Adv. Fiber Techs. Trust v. J&L Fiber Servs., --F.3d ---, 2012 U.S. App. LEXIS 6641 at *15-24 (Fed. Cir. Apr. 3, 2012) (construing a disputed word within an agreed upon construction of a claim term). For at least these reasons, OUII respectfully submits that construing “output frequency” to mean “a number of cycles per second” would not materially affect the nature of the parties’ validity disputes as to this limitation. II. QUESTION 2 - VALIDITY The Commission has also requested briefing on the following four issues that generally relate to the ID’s findings on anticipation and obviousness under 35 U.S.C. §§ 102 and 103(a), three of which relate to the Barth I patents and one of which relates to both the Barth I patents and the Dally patents. OUII addresses these four issues individually below. a. The motivation to combine and secondary indicia of nonobviousness, for each section 103 combination upon which one or more parties petitioned for review. (Barth patents and Dally patents)

In their petitions, the private parties sought review of the ID’s determinations concerning the following Section 103(a) combinations relating to the Dally patents: 1. Widmer Article (RX-4109) in view of Ewen (RX-4125); 2. Widmer Article (RX-4109) in view of the Widmer Patent (RX-2870); PUBLIC VERSION

7 3. Nakamura (RX-4114) in view of Tewksburry (RX-4416); 4. Nakamura (RX-4114) in view of Batruni (RX-4117); 5. Lau (RX-4106) in view of Tewksburry (RX-4116); and 6. Lau (RX-4106) in view of Batruni (RX-4117). The private parties also sought review of the ID’s determinations concerning the following Section 103(a) combinations relating to the Barth I patents: 1. Yano (RX-4261) in view of Farmwald-Horowitz (RX-4269); 2. Yano (RX-4261) in view of SCI (RX-4278) and/or Release 4 (RX-2108C); 3. Dan (RX-4262) in view of Farmwald-Horowitz (RX-4269); 4. Dan (RX-4262) in view of SCI (RX-4278) and/or Release 4 (RX-2108C); 5. Farmwald-Horowitz (RX-4269) in view of Yano (RX-4261); 6. Farmwald-Horowitz (RX-4269) in view of Dan (RX-4262); 7. Farmwald-Horowitz (RX-4269) in view of NeXTBus (RX-4265); 8. Farmwald-Horowitz (RX-4269) in view of Harriman (RX-4266); 9. NeXTBus (RX-4265) in view of Farmwald-Horowitz (RX-4269); 10. NeXTBus (RX-4265) in view of Release 4 (RX-2108C); 11. Harriman (RX-4266) in view of Farmwald-Horowitz (RX-4269); and 12. Harriman (RX-4266) in view of Release 4 (RX-2108C). Given the large number of obviousness combinations (18) implicated by Question 2(a), the discussion below focuses on three representative combinations for the asserted patent families.5

Because Question 2(a) is limited to obviousness “combinations,” OUII also does not address in this brief its position that certain claims are obvious in view of a single reference. See, e.g., OUII Initial Br. at 177-178, 191 (single reference obviousness involving the multiple transmitter limitation of claims 11, 32, and 50 of the ‘857 patent).

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8 1. Obviousness Combinations as to the Dally Patents

In OUII’s view, the most pertinent obviousness combination in dispute as to the Dally patents involves the Widmer Article (RX-4109) in view of Ewen (RX-4125). More specifically, the parties dispute whether it would have been obvious to a person of ordinary skill in the relevant art to combine these references is such a manner as to achieve: (1) a system with the specified output frequency of dependent claims 2, 31, and 49 of the ‘857 patent and dependent claim 3 of the ‘494 patent; and (2) a system that uses differential signaling as recited in independent claims 25 and 39 of the ‘494 patent. See OUII Pet. Resp. at 84-87. These two issues are discussed individually below. i) The “Output Frequency” Limitation

As discussed supra in response to Question (1), four of the asserted claims of the Dally patents require data rates in excess of 1 Gbps pursuant to the construction adopted in the ID for the “output frequency” term. See ID at 24-34 (discussing the proper interpretation of the term “output frequency”). The Widmer Article (RX-4109) does not disclose a transmitter circuit operating at such a data rate. See ID at 150-154. Instead, the Widmer Article discloses a Quartet (i.e., four part) transceiver (i.e., transmitter-receiver) wherein each of the individual transceivers has a 500 Mbps data rate – i.e., one half of the claimed 1 Gbps data rate:

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9

RX-4109.0002, Figure 1 (annotated to highlight the specified data rate). The ID thus found that the Widmer Article fails to anticipate the “output frequency” claims. See ID at 150-152. However, the Widmer Article (RX-4109) explicitly refers to a secondary reference (Ewen (RX-4125)) that its design “adopts techniques” from: The serializer/deserializer (SerDes) design adopts techniques used previously but includes functions to support transparent operation and relax timing constraints at the system interface[1]. RX-4109.0001; see also RX-4109.0002 (“[1] Ewen, J.F. et al. ‘Single-Chip 1062MBaud CMOS Transceiver for Serial Data Communication,’ ISSCC Digest of Technical Papers, pp. 32-33, Feb., 1995”); ID at 153. As noted in the ID, Ewen discloses a chip with a 1062 Mbaud (i.e., 1.062 Gbps) data rate: This work implements the media independent functions specified in the emerging ANSI fibre channel standard at 1062.5Mbaud. Integrated onto a single CMOS chip are: two phase-locked loops (PLL)for clock generation and clock recovery, a selectable 1B or 2B parallel interface with corresponding multiplexer and demultiplexer for parallel-to-serial and serial-to-parallel conversion, word alignment logic for byte synchronization, 8B/10B coder and decoder, and highspeed differential CMOS PECL drivers and receivers for the serial I/0.

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10 ID at 153 (quoting RX-4125.0001); see also RX-5431C, Hassoun Direct Q/A 160; Hassoun, Tr. 1497:17-1498:05. Thus, Ewen explicitly discloses the “output frequency” limitation of the relevant dependent claims that is not taught by the Widmer Article standing alone. With respect to modifying the system disclosed in the Widmer Article (RX-4109) so as to achieve the over 1 Gbps data rate of Ewen (RX-4125), the ID found with evidentiary support that such a modification would have been obvious to a person of ordinary skill in the relevant art. See ID at 153-154; RX-5431C, Hassoun Direct Q/A 158-160, 163-168. Specifically, while the authors of the Widmer Article (RX-4109) chose to implement the embodiment explicitly described therein in a particular manner (e.g., using single-ended signaling and a 500 Mbps output data rate) so as to achieve certain advantages, a person of ordinary skill in the relevant art would have readily appreciated the fact that some aspects of the design are a matter of routine design choice that should (and can readily) be changed when other design constraints are at play (e.g., a need for higher data rates, better noise tolerance, etc.). See Hassoun, Tr. 1501:08-22, 1552:20-1553:23; RX-5431C, Hassoun Direct Q/A 194. In the specific context of weighing the drawbacks of modifying the Widmer Article (RX-4109) so as to achieve the higher data rates of the “output frequency” claims versus the advantages offered by such modifications, the ID correctly found that both the Widmer Article and Ewen disclose serial transmitters, overlapping authors are on both articles, and the Widmer Article expressly refers to Ewen as disclosing technology relevant to their design. See ID at 153-154 (discussing the relationship between the Widmer Article and Ewen). Thus, a person of skill in the art would have looked to Ewen for suggestions on how to modify (and the feasibility of modifying) the system disclosed in the Widmer Article to be more suitable for other purposes – such as implementations where a greater emphasis is placed on high data rates than the particular design constraints (e.g., reduced pin-

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11 count) addressed by the specific implementation disclosed in the Widmer Article. In OUII’s view, this provides clear and convincing evidence in support of the ID’s finding of obviousness. See Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1314 (Fed. Cir. 2008) (finding that replacing a bus with a multiplexer would have been a matter of routine design choice obvious to a person of ordinary skill in the relevant art) (“Asyst”). To the extent that Question 2(a) further seeks briefing on secondary considerations of nonobviousness regarding the Dally patent claims, OUII notes that Rambus has not alleged any error in the ID as it relates to this issue. Specifically, Rambus solely sought review of the ID’s rejection of Rambus’s secondary consideration arguments as they pertain to the Barth I patents. See Rambus Pet. at 55-56. Rambus did not seek review of the ID’s findings on such arguments regarding the Dally patents. The issue has thus been waived by Rambus. See 19 C.F.R. § 210.43(b)(2) (“Any issue not raised in a petition for review will be deemed to have been abandoned by the petitioning party . . . .”). Should the Commission nonetheless address the issue on its own initiative, OUII submits that the ID considered Rambus’s evidence and appropriately rejected it as insufficient. See ID at 227-231. For at least these reasons, OUII respectfully submits that the Commission should affirm the finding in the ID that it would have been obvious to modify the embodiment disclosed in the Widmer Article (RX-4109) based on Ewen (RX-4125) or other analogous art of record so as to achieve the invention of the “output frequency” claims. ii) The “Differential Signaling” Limitation

Clear and convincing evidence also supports the finding in the ID that it would have been obvious to modify the system disclosed in the Widmer Article (RX-4109) to implement “differential signaling” as called for in claims 25 and 39 of the ‘494 patent. See ID at 147-150. Claim 25 is representative of the differential signaling limitation, and reads in pertinent part: PUBLIC VERSION

12 a transmitter circuit within the chip, the transmitter circuit being operable to accept a digital input signal including a plurality of bits and send a differential output signal including a series of output bit signals, each bit of the digital input signal being represented by a single output bit signal ‘494 patent, 10:42-47 (emphasis added). Differential signaling and its counterpart, single-ended signaling, were both well known in the art before the critical date of the Dally patents. See RX-5431C, Hassoun Direct Q/A 194. More specifically, differential signaling involves the use of paired signal lines to transmit a signal (i.e., as represented by a voltage difference between the two lines), whereas single-ended signaling involves the use of one signal line to transmit a signal (i.e., as represented by the particular voltage on that particular line). See CX-9542C, Singer Direct Q/A 431-436, 461, 469; JX-068C, Kobayashi at 52:05-12; JX-069C, Ozguc at 62:20-04; JX-117C, Simms 83:16-19, 84:11-21. As Dr. Hassoun explained at trial, persons of ordinary skill in the relevant art switch between single-ended signaling and differential-ended signaling as a matter of routine design choice: Q. Would a person of ordinary skill in the art choose to implement single-ended signaling versus differential signaling in some contexts? A. Yes absolutely. Q. Why? A. Well it depends on your constraints. For example -- or what problems are you going to solve? For example if you look at the Widmer article, they made a choice to implement single-ended because they had wiring constraint. They were designing the chip for a particular application that had that particular constraint. If you didn’t have that constraint you might choose to implement differential signaling in there, to make, for example, your receiver design a little bit easier. It doesn’t have to work so hard at figuring out the high and the low. It can use differential signaling. So there is -- those are examples of considerations you would have whether you would use differential or singleended. Hassoun, Tr. 1552:25-1553:23.

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13 As alluded to in Dr. Hassoun’s testimony above, the authors of the Widmer Article (RX4109) chose to implement the embodiment disclosed therein with single-ended signaling due to pin-count constraints that were specific to their particular application. See RX-4109.0001 (“The 500Mbaud drivers, being single-ended (to reduce wire congestion) with nearly 3V swings, are significant generators of delta-I noise.”). The ID thus found that the Widmer Article does not anticipate the “differential signaling” claims. See ID at 147-148. However, Ewen (RX-4125), which again is explicitly referred to in the Widmer Article, describes an implementation that uses differential signaling. See RX-4125.0001 (describing “high-speed differential CMOS PECL drivers and receivers for the serial I/O”). Ewen thus discloses the sole limitation of claims 25 and 39 of the ‘494 patent that is not taught by the Widmer Article standing alone. With respect to modifying the system disclosed in the Widmer Article (RX-4109) so as to utilize the “differential signaling” technique disclosed in Ewen (RX-4125), the ID found with evidentiary support that such a modification would have been obvious to a person of ordinary skill in the relevant art. See ID at 148-150; RX-5431C, Hassoun Direct Q/A 194; Hassoun, Tr. 1552:20-1553:23. For example, the evidence of record establishes that a person skilled in the art would chose to implement differential signaling in place of single-ended signaling so as to “provide better immunity to signal noise” (RX-5431C, Hassoun Direct Q/A 194) and/or to simplify receiver design (Hassoun, Tr. 1552:20-1553:23) in circumstances in which such advantages outweigh the alternative advantages of single-ended signaling, such as reduced pincount (RX-4109.0001). In short, switching between differential signaling (as claimed in the Dally patents and disclosed in Ewen) and single-ended signaling (as disclosed in the Widmer Article) is nothing more than an obvious matter of routine design choice based on application specific considerations. See Asyst, 544 F.3d at 1314 (finding that replacing a bus with a

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14 multiplexer would have been a matter of routine design choice obvious to a person of ordinary skill in the relevant art). For at least these reasons, OUII respectfully submits that the Commission should affirm the finding in the ID that it would have been obvious to modify the embodiment disclosed in the Widmer Article (RX-4109) based on Ewen (RX-4125) or other analogous art of record so as to achieve the invention of the “differential signaling” claims. 2. Obviousness Combinations as to the Barth I Patents

Turning to the Barth I patents, the primary obviousness combinations in dispute as to these patents involve two issues: (1) combining features of allegedly asynchronous art (e.g., Yano (RX-4261) and Dan (RX-4262)) that disclose a strobe signal with features of synchronous art (e.g., Farmwald-Horowitz (RX-4269)) that disclose the other claim limitations; and (2) combining features of synchronous art (e.g., the NextBus Specification (RX-4265), Harriman (RX-4266), and Farmwald-Horowitz (RX-4269)) with features of other synchronous art.6 See OUII Pet. Resp. at 38-44. The asynchronous/synchronous combinations are addressed later in reference to Question 2(b). The purely synchronous combinations are addressed below. However, OUII first notes that there is only one purportedly novel limitation in the asserted Barth I claims – i.e., the strobe limitation. This fact is verified by patents from the Farmwald-Horowitz family (e.g., RX-4269), which disclose each and every limitation of the asserted Barth I patent claims with the exception of the strobe limitation.7 This fact is further

As Respondents’ expert Dr. Jacobs testified at trial, the NeXTBus Specification (RX4265) can be used with either synchronous or asynchronous memory chips. See Jacobs, Tr. 1122:04-20. For purposes of this brief, OUII focuses on the NeXTBus Specification as it relates to a synchronous implementation. See Przybylski, Tr. 2717:19-2719:07 (Rambus’s expert acknowledging that the strobe limitation is the only limitation that he asserts is not disclosed in the Farmwald ‘037 patent); Rambus Initial Br. at 52-55 (distinguishing the Farmwald ‘037 patent solely based on the strobe PUBLIC VERSION
7

6

15 verified by the Commission’s conclusion in the 661 investigation that the asserted Barth I patent claims were valid over Farmwald-Horowitz patents based solely on the strobe limitation: Under the facts as found by the ALJ and adopted by the Commission, no asserted prior art reference discloses the “strobe signal”/“signal” limitations of the asserted Barth I claims. We therefore find that the difference between the asserted prior art and the asserted Barth I claims is that no asserted prior art reference discloses the “strobe signal”/“signal” limitations. Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Comm’n Op., 2011 ITC LEXIS 2689 at *118 (August 10, 2010) (“661 Comm’n Op.”) (emphasis in original). Given the above, the Barth I prior art validity issues that remain in dispute turn primarily on: (1) whether the prior art in this investigation discloses the strobe limitation; and (2) if so, whether it would have been obvious to combine prior art references that disclose the strobe limitation with patents from the Farmwald-Horowitz family or other references of record that disclose the remaining limitations. Clear and convincing evidence supports answering both of these questions in the affirmative. i) Combinations Based On The NeXTBus Specification (RX-4265) As A Primary Reference

From OUII’s perspective, one of the most straightforward obviousness combinations with respect to the Barth I patents involves the NeXTBus Specification (RX-4265) in view of Farmwald-Horowitz (RX-4269). See ID at 219-222. As background, the NextBus Specification is a document by NeXT Inc. that generally describes a bus architecture that was used, for example, in a NeXT computer system. See RX-4265.0002. Most importantly, the NextBus limitation); 661 ID at 49 (“[T]he main point of contention between the parties is whether Farmwald discloses a ‘strobe signal’ as required by the ‘353 and the ‘405 Patents and a ‘signal’ as required by the ‘109 Patent.”); 661 Comm’n Op. (“Rambus argues that the U.S. Patent No. 5,319,755 (‘Farmwald ‘755’ or ‘the Farmwald ‘755 patent’) does not teach or suggest the ‘strobe signal’ or ‘signal’ limitations of the asserted Barth I claims.”).

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16 Specification discloses a data strobe (DSTB*) that is used to initiate the sampling of data by a memory board: Data Strobe (DSTB*) During burst transfers, the board sending data (the master during writes, and the slave during reads) generates the DSTB* signal by gating BUSCLK. The data sender asserts DSTB* at the same time that it places data on the bus. The receiver then captures data at the rising edge of DSTB*. RX-4265.0025 (emphasis in original); see also Przybylski, Tr. 2648:21-2649:24, 2652:172653:16. While Rambus contends that the memory board in the NeXTBus Specification does not qualify as the memory device of the asserted claims under its rejected construction of the “memory device” term, it does not appear to contest the fact that DSTB* is a data strobe signal that initiates the sampling of data.8 Thus, the sole Barth I limitation not taught by FarmwaldHorowitz – i.e., the strobe limitation – is explicitly taught by the NeXTBus Specification. Turning to whether it would have been obvious to a person skilled in the relevant art to combine the NeXTBus Specification (RX-4265) with Farmwald-Horowitz (RX-4269) so as to achieve the invention(s) claimed in the Barth I patents, it bears noting that the NeXTBus Specification standing alone anticipates many of the asserted claims. See ID at 104-117 (finding that the NeXTBus Specification anticipates all of the asserted claims of the ‘353 patent as well as claims 1, 20, and 24 of the ‘109 patent). The few limitations not explicitly disclosed in the NeXTBus Specification are: (1) sense amplifiers (see id. at 221-222); (2) autoprecharge (see id. at 220-221); and (3) multiple memory banks (see id. at 221). While the ID also addresses (4) double-data-rate (DDR) functionality in the context of an obviousness analysis, the ID’s finding of obviousness in this regard is a secondary issue given the ID also finds that the
8

As to disclosure in the NextBus Specification (RX-4265) of a signal that initiates sampling, Rambus appears to only contest the Respondents’ alternative theory that is based on a DRQ* signal -- no such argument is raised by Rambus with respect to the DSTB* signal discussed above. See Rambus Pre-trial Br. at 132. It is thus undisputed that at least the DSTB* initiates the sampling of data by a memory board. See, e.g., Jacobs, Tr. 1162:06-1164:01. PUBLIC VERSION

17 NeXTBus Specification explicitly discloses such functionality. See id. at 114-117 (discussing disclosure of DDR functionality in the NeXTBus Specification); OUII Pet. Resp. at 39 (same). OUII nonetheless addresses below all four of the ID’s obviousness findings as to the NeXTBus Specification. Sense Amplifiers Unlike the asserted claims of the ‘353 patent, claim 18 of the ‘405 patent and claims 2 and 21 of the ‘109 patent include a limitation directed at the use of a “sense amplifier.” Claim 18 of the ‘405 patent is representative. It reads: 18. The method of claim 11 wherein the plurality of control codes includes a third code which specifies that a row of sense amplifiers be activated. ‘405 patent, 42:28-30. In the context of the Barth I patents, sense amplifiers are components of a memory device that provide a mechanism by which data is moved out of memory cells within that device to a more accessible location: Q: I see in CDX-1034 two boxes labeled “Sense Amps.” What are Sense Amps? A: Sense amps, which is short for sense amplifiers, are sort of a gateway in and out of the memory cells. The charge used to store a zero or one in a memory cell is very small, so the purpose of sense amps for read operations is to detect the presence of that charge and to temporarily store a copy of that bit of information so that it can be subsequently used. The process of transferring or copying data from memory cells into sense amps is referred to as sensing a row, opening a row, or activating a row. Those are just different words to describe the same thing. I usually call it sensing a row. CX-9543C, Przybylski Direct Q/A 53. A memory controller thus issues “sense” commands to a memory device so as to instruct the device to transfer data from internal memory cells to the sense amplifiers, which makes that data accessible for purposes of read and write operations: Q: How is data written to DRAM? A: First, a memory controller will provide the memory device with an activate or sense command to specify a sense operation. As discussed above, the activate or sense command is accompanied by a row address and a bank address for

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18 DRAMs with more than one bank. The memory device uses the row address to identify the requested row and transfer that row of data into the sense amplifiers as illustrated in CDX-1035. CX-9543C, Przybylski Direct Q/A 56; see also RX-5429C, Jacobs Direct Q/A 213-214 (similar discussion). In the specific context of a write operation, the memory device will ultimately write over data within the sense amplifiers that were previously transferred from the memory cells (during a preceding sense operation) with a new value(s) received from the memory controller. See CX-9543C, Przybylski Direct Q/A 57. The updated value(s) can then be transferred from the sense amplifiers back to the corresponding memory cells for storage therein as part of a “precharge” operation. See id. at Q/A 58. Turning back to the NeXTBus Specification (RX-4265), it is undisputed that this reference discloses the use of memory boards. See Przybylski, Tr. 2655:15-18. These memory boards would be understood by a person of ordinary skill in the relevant art as including one or more dynamic random access memory (DRAM) chips for storing data. See RX-5429C, Jacobs Direct Q/A 531; Jacobs, Tr. 1120:14-24. These DRAM chips, in turn, include sense amplifiers, which are used in the “standard operation” of a DRAM. See RX-5429C, Jacobs Direct Q/A 515 (“[S]ense operations, including providing a control code to a memory device specifying a sense operation, would be inherent in DRAM write operations.”); CX-10765C, Przybylski Rebuttal Q/A 362 (“Precharge, sense, and activate are low-level commands typically sent from a memory controller to a DRAM.”); CX-9543C, Przybylski Direct Q/A 433 (similar discussion). Thus, clear and convincing evidence demonstrates that sense amplifiers and their associated commands would normally be used in conjunction with the embodiments disclosed in the NeXTBus Specification (RX-4265) even though they are not explicitly identified in the reference. See RX5429C, Jacobs Direct Q/A 515-518; ID at 221-222.

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19 Although Rambus nonetheless disputed whether the “sense amplifier” limitation is inherent in or obvious in view of the NeXTBus Specification (RX-4265) standing alone, the ID finds with evidentiary support that this limitation is explicitly disclosed in other art of record (e.g., Farmwald-Horowitz (RX-4269)) and that it would at least have been obvious to combine the NeXTBus Specification (RX-4265) with such art so as to achieve the claimed invention. See ID at 221-222; RX-5429C, Jacobs Direct Q/A 518 (discussing motivation to combine the sense operation elements of Farmwald-Horowitz with the NeXTBus Specification). Rambus’s challenge to this obviousness finding appears to be largely premised on its view that the memory board of the NeXTBus Specification includes a slave memory controller that purportedly differentiates this memory board from the memory device of the asserted claims. More specifically, Rambus argues that sense operations involve “low-level” information sent directly from an external memory controller to the memory device, whereas the NeXTBus Specification would purportedly send this information (if at all) within the memory board (i.e., from a slave memory controller to a DRAM chip, both mounted on the board) rather than to the memory board (via the NeXTBus backplane) as claimed.9 However, the Respondents’ expert Dr. Jacobs explained at trial that low-level commands are often sent to a memory board by an external memory controller, such as the memory controller on the CPU board of the NeXTBus Specification, and that Rambus’s interpretation of the signaling that takes place over the NeXTBus backplane was thus unduly narrow. See RX-5429C, Jacobs Direct Q/A 531 (testifying about the issuance of low-level pre-charge commands to a memory board). As such, clear and convincing evidence supports the finding reached in the ID that it would have been obvious to
9

See Rambus Reply Br. at 49 (“Under Respondents’ proposed construction, the NextBus ‘memory device’ (a board including a memory controller) would issue the codes or bank selection to itself.”); Rambus Initial Br. at 98-99 (similar arguments); Rambus Pet. at 54 (similar arguments).

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20 modify the NeXTBus Specification in view of other art such as Farmwald-Horowitz so as to achieve the claimed invention. See ID at 221-222; RX-5429C, Jacobs Direct Q/A 518. Finally, OUII respectfully submits that Rambus’s reliance on secondary considerations of non-obviousness as it relates to the sense amplifier claims is misplaced. See Rambus Pet. at 5556 (arguing that the ID failed to give due weight to secondary considerations of nonobviousness). In particular, Rambus has not shown a nexus between the purported evidence on which it relies and the sense amplifier claims – sense amplifiers being a feature that was already well known in the prior art (e.g., Farmwald-Horowitz (RX-4269)). Instead, Rambus refers generally to memory controller and strobe signal technology (see CX-10765C, Przybylski Rebuttal Q/A 595-600), which is anticipated by the NeXTBus Specification standing alone (see ID at 104-117). As the Federal Circuit has explained, such evidence is inadequate to overcome a strong showing of prima facie obviousness: [T]here is a more fundamental requirement [than secondary considerations being reasonably commensurate with the scope of the claims] that must be met before secondary considerations can carry the day. “For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (quotation omitted). Where 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 merits of the claimed invention. Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to an element in the prior art, no nexus exists.”); Ormco Corp. Align Tech., Inc., 463 F.3d 1299, at 1312 (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims .... [and] in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”) (citations omitted)). In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (italics in original, underlining added for emphasis) (“Kao”); see also id. at 1069 (“[F]or the unexpected [results] to have

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21 substantial weight, there must be a nexus to some aspect of the claim not already in the prior art . . . .”) (emphasis added); id. at 1070 (similar statement as to commercial success). Moreover, Rambus’s evidence of secondary considerations is particularly inadequate here due to its heavy reliance on the discredited and conclusory testimony of its expert, Dr. Przybylski. See ID at 305309. Thus, the Commission should affirm the ID’s rejection of Rambus’s purported evidence of secondary considerations of nonobviousness as it relates to claim 18 of the ‘405 patent and claims 2 and 21 of the ‘109 patent. For at least these reasons, OUII respectfully submits that the Commission should affirm the finding in the ID that the sense amplifier limitation would have been an obvious addition to NeXTBus Specification (RX-4265) to the extent that it is not inherent in this reference. Autoprecharge Operations Certain of the Barth I claims, e.g., all of the asserted ‘405 patent claims and claims 5 and 13 of the ‘109 patent, include a limitation directed at “autoprecharge” functionality. Claim 11 of the ‘405 patent is representative. It reads in pertinent part: providing a plurality of control codes to the memory device wherein the plurality of control codes include a first code which specifies that a write operation be initiated in the memory device and a second code which specifies that a precharge operation be initiated automatically after initiation of the write operation ‘405 patent, 41:60-65 (emphasis added). The autoprecharge limitation is related to the sense amplifiers previously discussed. Namely: Precharge refers to the operation where the sense amplifiers are prepared for the next activate command. A controller must issue a precharge command and a new activate command to a SDRAM anytime it wants to perform a read or write to a different row of data than the one that is currently present in the sense amplifiers of the memory device. That precharge operation can be initiated via a separate precharge command, or it can be specified to occur automatically after a read or a write. The latter is called autoprecharge.

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22 CX-9543C, Przybylski Direct Q/A 61; see also RX-5429C, Jacobs Direct Q/A 208-212 (similar discussion). The parties’ dispute regarding the autoprecharge limitation as it relates to the NeXTBus Specification (RX-4265) is essentially the same as their dispute regarding the aforementioned sense amplifier limitation. Namely, the ID found with evidentiary support that this limitation is explicitly disclosed in other art of record (e.g., Farmwald-Horowitz (RX-4269)) and that it would have been obvious to combine the NeXTBus Specification with such art so as to achieve the claimed invention. See ID at 220-221; RX-5429C, Jacobs Direct Q/A 509-511. Rambus disagrees, primarily on the grounds that the NeXTBus Specification would send this low-level information (if at all) internally within the memory board rather than to the memory board (i.e., over the backplane bus) as claimed.10 However, as previously discussed Dr. Jacobs effectively rebutted this argument at trial. See RX-5429C, Jacobs Direct Q/A 531 (testifying about the issuance of low-level pre-charge commands to a memory board). Dr. Jacobs further testified that a person skilled in the art would have been motivated to add an autoprecharge operation to improve speed because, “by conducting a precharge operation when there potentially is no active operation on the bus (that is, following a write operation), the memory system could avoid a time penalty that would otherwise result from waiting until the next memory operation to precharge the sense amplifiers.” See id. at Q/A 511. Thus, clear and convincing evidence supports the combination finding in the ID as it relates to the autoprecharge limitation. Finally, OUII submits that Rambus’s reliance on secondary considerations of nonobviousness as it relates to the autoprecharge claims is misplaced. See Rambus Pet. at 55-56.
10

See Rambus Reply Br. at 49 (“Under Respondents’ proposed construction, the NextBus ‘memory device’ (a board including a memory controller) would issue the codes or bank selection to itself.”); Rambus Initial Br. at 97 (similar arguments); Rambus Pet. at 54 (similar arguments).

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23 Again, Rambus has not shown a nexus between the purported evidence on which it relies and the use of an autoprecharge command – a feature that was already well known in the prior art (e.g., Farmwald-Horowitz (RX-4269)). Instead, Rambus refers generally to memory controller and strobe signal technology, which is inadequate for the reasons discussed above with respect to the sense amplifier limitation. Thus, the Commission should affirm the ID’s rejection of Rambus’s purported evidence of secondary considerations of nonobviousness as to the asserted ‘405 patent claims and claims 5 and 13 of the ‘109 patent. For at least these reasons, OUII respectfully submits that the Commission should affirm the finding in the ID that the autoprecharge limitation would have been an obvious addition to NeXTBus Specification (RX-4265). Multiple-Memory Banks The last of the three major obviousness issues regarding the NeXTBus Specification (RX-4265) is the multiple “banks” limitations of claims 4, 5, 12, and 13 of the ‘109 patent. Claim 4 is representative. It reads: 4. The method of claim 1, wherein the memory core includes a plurality of banks, wherein each bank of the plurality of banks includes a memory cell array, wherein the method further includes: transmitting bank selection information to the memory device, wherein the bank selection information identifies a bank of the plurality of banks, wherein the write operation is initiated in a subset of the memory cell array included in the bank identified by the bank selection information; and transmitting address information to the memory device, wherein the address information identifies the subset of the memory cell array. ‘109 patent, 43:13-25. As Dr. Przybylski explained at trial: Memory cells can be divided into groups within a memory device, which are referred to as banks. Memory cells may be divided into Bank 1 and Bank 2 as shown . . . in the figure in CDX-1034. This picture is somewhat oversimplified because memory devices actually contain millions or billions of memory cells, and may have many more banks. Organizing the memory cells into separate

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24 banks divides the cells into separate units that can operate independently, allowing the memory device to essentially do more than one thing at a time. CX-9543C, Przybylski Direct Q/A 51. The ID found with evidentiary support that the use of a plurality of banks and the associated transmission of bank selection information is disclosed in other prior art of record (e.g., Farmwald-Horowitz (RX-4269)) and would have been an obvious addition to the NeXTBus Specification (RX-4265). See ID at 221; RX-5429C, Jacobs Direct Q/A 512-514. Rambus’s challenge to these obviousness findings is misplaced. Namely, Rambus again argues that the NeXTBus Specification would send low-level bank selection information (if at all) internally within the memory board rather to the memory board over the backplane bus.11 This argument should be rejected for at least the reasons previously discussed with respect to the autoprecharge and sense amplifier limitations. This argument should also be rejected as contrary to Dr. Jacob’s testimony that a person skilled in the art would have been motivated to implement multiple memory banks within the NeXTBus Specification to increase the speed and efficiency of the system “by allowing multiple banks to cycle in an interleaved fashion.” See RX-5429C, Jacobs Direct at Q/A 514. Thus, clear and convincing evidence supports the combination finding in the ID as it relates to this feature. To the extent that Rambus relies on secondary considerations of nonobviousness as it relates to the multiple banks claims, its reliance is misplaced. See Rambus Pet. at 55-56. Again, Rambus has not shown a nexus between the purported evidence on which it relies and the use of multiple banks – a feature that was already well known in the prior art (e.g., Farmwald-Horowitz
11

See Rambus Initial Br. at 98 (“These combinations would not have been obvious to one of ordinary skill in the art in October 1995, for similar reasons already discussed regarding the precharge features.”); Rambus Reply Br. at 49 (“Under Respondents’ proposed construction, the NextBus ‘memory device’ (a board including a memory controller) would issue the codes or bank selection to itself.”); Rambus Pet. at 54 (similar arguments).

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25 (RX-4269)). Instead, Rambus refers generally to memory controller and strobe signal technology, which is inadequate for the reasons discussed above with respect to the sense amplifier and autoprecharge limitations. Thus, the Commission should affirm the ID’s rejection of Rambus’s purported evidence of secondary considerations of nonobviousness as to claims 4, 5, 12, and 13 of the ‘109 patent. For at least these reasons, OUII respectfully submits that the Commission should affirm the finding in the ID that the multiple memory banks limitation would have been an obvious addition to NeXTBus Specification (RX-4265). Double-Data-Rate (DDR) Functionality While the three primary obviousness issues are addressed above, Rambus has also petitioned the Commission for review of the ID’s finding that the DDR functionality recited in claims 12 and 13 of both the ‘353 and ‘405 patents would have been an obvious addition to the NeXTBus Specification (RX-4265). See Rambus Pet. at 54. In OUII’s view, the Commission need not address this issue in light of the ID’s finding that the NeXTBus Specification expressly discloses DDR functionality. See ID at 114-117 (discussing disclosure of DDR functionality in the NeXTBus Specification); OUII Pet. Resp. at 39 (same). Should the Commission reject the finding of anticipation as to the DDR functionality and address the alternative obviousness finding on the merits, OUII submits that the obviousness finding is fully supported by the evidence of record. See ID at 220; RX-5429C, Jacobs Direct Q/A 507-508. Specifically, the ID explains with evidentiary support that DDR “techniques were widely available and known as an effective way to increase speed without significantly increasing circuit complexity, pincount, etc.” ID at 213 (citing RX-5429C, Jacobs Direct Q/A 202-207).

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26 Rambus’s reliance on secondary considerations of nonobviousness as to the DDR limitation is similarly misplaced. See Rambus Pet. at 55-56. Again, Rambus has not shown a nexus between the purported evidence on which it relies and the use of DDR functionality – a feature that was already well known in the prior art (e.g., Farmwald-Horowitz (RX-4269)). Instead, Rambus refers generally to memory controller and strobe signal technology, which is inadequate for the reasons discussed above with respect to the sense amplifier, autoprecharge, and multiple memory bank limitations. Thus, the Commission should affirm the ID’s rejection of Rambus’s purported evidence of secondary considerations of nonobviousness as to claims 12 and 13 of both the ‘353 and ‘405 patents. For at least these reasons, OUII respectfully submits that the Commission should affirm the finding in the ID that the DDR limitation would have been an obvious addition to the NeXTBus Specification (RX-4265) to the extent that it is not already explicitly disclosed in that reference. ii) Combinations Based On Asynchronous References

Insofar as Question 2(a) seeks briefing on the motivation to combine and secondary considerations of nonobviousness involving purportedly asynchronous prior art references (e.g., Yano (RX-4261) and Dan (RX-4262)), this issue is addressed below in response to Question 2(b). b. The pertinence, if any, of synchronous versus asynchronous prior art, and the motivation to apply the teachings of asynchronous art to synchronous systems. (Barth patents)

The ID found that certain purportedly asynchronous references (e.g., Yano (RX4261) and Dan (RX-4262)) anticipate claim 11 (only) of the ‘353 patent. See ID at 90-99 (discussing Yano); id. at 99-104 (discussing Dan). However, the ID also found that it would have been obvious to one of ordinary skill in the relevant art to modify these references with features of synchronous systems known in the art (e.g., the NeXTBus Specification (RX-4265) and/or PUBLIC VERSION

27 Farmwald-Horowitz (RX-4269)) so as to achieve the invention(s) of the other asserted claims. See id. at 210-217 (discussing obvious based on Yano or Dan as a primary reference). As discussed below, OUII is of the view that the ID’s findings of obviousness based on Yano and Dan are supported by clear and convincing evidence of record, and should be affirmed by the Commission. 1. Background

As an initial matter, the parties dispute which (if any) of the asserted Barth I patent claims are limited to synchronous systems.12 The parties also dispute whether a person of skill in the art would view Yano and Dan as limited to asynchronous systems.13 For purposes of responding to Question 2(b), OUII addresses the pertinence of asynchronous and synchronous prior art combinations under the assumption (for analysis purposes only) that at least some of the asserted Barth I patent claims are indeed limited to synchronous systems and that Yano and Dan both disclose solely asynchronous systems. In general, “synchronous” systems primarily differ from “asynchronous” systems in that command, address, and data signals are timed according to a clock signal in a synchronous system, whereas in asynchronous systems they are not. See, e.g., RX-5429C, Jacobs Direct Q/A 126-127; CX-10765C, Przybylski Rebuttal Q/A 89; CX-9543C, Przybylski Direct Q/A 35. For See Rambus Pet. at 43 (“[T]he Barth I patents teach and claim synchronous memory systems where the memory device receives a clock signal that governs the timing of operations.”); OUII Pet. Reply at 26 (“[T]he ID’s decision not to limit claim 11 to ‘synchronous’ systems and thereby distinguish Yano and Dan is supported by the intrinsic and extrinsic evidence of record and should not be reviewed by the Commission.”); Resp. Pet. Reply at 10 (“[T]he distinction between synchronous and asynchronous systems is not relevant here because the asserted claims are not limited solely to synchronous systems . . . .”). See Rambus Pet. at 42 (“The ALJ erred because he did not differentiate between the asynchronous memory systems of Dan and Yano and the synchronous memory systems of the Barth I patents.”); Resp. Pet. Reply at 10 (“Rambus’ argument that Yano is an asynchronous system is incorrect.”); id. at 11 (similar statement as to Dan).
13 12

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28 systems in which command, address, and data signals are timed according to a clock signal, the receiving device typically requires a clock signal. See CX-10765C, Przybylski Rebuttal Q/A 148-149, 154 (discussing the lack of a clock signal in Yano); id. at Q/A 179, 181 (discussing the lack of a clock signal in Dan). By contrast, such a clock signal need not be provided to the analogous receiving device of an asynchronous system, which uses other timing techniques. See CX-10765C, Przybylski Rebuttal Q/A 148-149, 154, 179, 181. As such, asynchronous and synchronous systems indisputably differ in certain respects. In the 1990s timeframe of the Barth I patents, the state of the art was in transition from the asynchronous memory systems used in legacy products to the synchronous memory systems that are now commonplace in consumer electronics. For example, documentation from the standards-setting organization JEDEC confirms that it was working on synchronous DRAM technologies in 1995 when the original Barth I application was filed. See RX-2124.0007 to 0009 (discussing SDRAM offerings from various companies); RX- 2414C.0005 (discussing a write data latency proposal); see also Rambus Pet. at 51 (noting that a JEDEC standard issued in 1999). While Rambus characterizes this shift as a “significant departure” from the legacy “asynchronous systems [that] were cheaper and had better performance” in comparison to the then-existing SDRAM systems (Rambus Pet. at 51), at most these “facts” highlighted the need for persons of skill in the art to look for ways to merge the advantageous features of legacy asynchronous systems (such as the strobe signal of Yano and Dan) with the advantageous features of the up-and-coming synchronous systems (such as the DDR, precharge operation, sense operation, and memory bank features of Farmwald-Horowitz). See ID at 212; see also RX-5429C, Jacobs Direct Q/A 105, 129, 492-496. This fact was perhaps best articulated by the

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29 USPTO Board reexamining the ‘405 patent when summarizing evidence of record that it ultimately found to be persuasive on the asynchronous/synchronous issue: Appellant’s expert, Mr. Parris, partly in response to the Murphy Declaration (Parris Declaration (Parris Decl. ¶ 1 (attached as App. Br. Ex. 27)), testifies that skilled artisans in the semiconductor DRAM industry, including himself, were transitioning to newer synchronous systems in part by “incorporat[ing] asynchronous functionality that had existed on previous asynchronous memory systems into synchronous memory systems” (Parris Decl. ¶ 9). Mr. Paris generally explains that the newer synchronous DRAMs incorporated more logic, registers, latches, and associated functions all onchip - thereby making the devices faster by reducing propagation delays (by shortening the propagation distance between circuit locations). (See id. at ¶¶ 9, 12 (citing Farmwald ‘755 and Lu’s Future of Drams article), 17 (converting from asynchronous to synchronous increases speed), 18 (describing Hayes), 19 (asserting that Mr. Murphy (citing Murphy Decl. at ¶¶ 79-82) does not provide a reason for asserting that providing on-chip logic reduces speed)), 23.) Mr. Paris also refers to such modifications as “straight forward and well within the ability of one of ordinary skill in the art.” (Id. at ¶ 9; accord ¶ 23.) Mr. Paris’s testimony is corroborated by the Farmwald ‘755 patent and other references of record. (See FW3, FW5 (detailing similar onchip logic changes as involving ordinary skill); Lu; and iRAM (both discussed infra).) SX-8, Decision on Appeal at 10-11 (2011); see also id. at 11, n. 2 (explaining most DRAM designs from the 1980s up until 1995 were asynchronous, and thereafter switched to synchronous); id. at 12 (adopting the position of Mr. Parris regarding the combinability and motivation to combine features from synchronous and asynchronous technologies); see also SX10, Tr. of Oral Hearing at 12:09-13:09 (May 4, 2011) (similar argument made by counsel for appellant). To the extent that Rambus contends that the Commission should reject the position adopted by the USPTO as to the combinability of and motivation to combine asynchronous and synchronous art in light of “evidence not considered in the reexaminations,” OUII disagrees. See Rambus Pet. at 50-51. As explained in the ID, the findings concerning combinability and motivation are supported by the evidence of record, which includes both the reexamination file wrappers and additional supporting evidence. See ID at 211-212; SX-8 to SX-10 (reexamination PUBLIC VERSION

30 file wrappers); see also OUII Pet. Reply at 41-43. Rambus’s arguments to the contrary are, in essence, simply a complaint over an evidentiary finding that did not go in its favor but that is fully supported by the record. OUII thus respectfully submits that the Commission should affirm the finding reached in the ID on the combinability of and motivation to combine features from asynchronous and synchronous art. 2. Combinations Based On Yano (RX-4261) As A Primary Reference

In OUII’s view, the combinations discussed in the ID with respect to Yano (RX-4261) as a primary reference are largely representative of the parties’ dispute regarding Rambus’s asynchronous/synchronous distinction. See ID at 212-217. Yano is a Japanese Patent Publication dated December 6, 1991, with Sharp Co. identified as the applicant and Eijiro Yano as the sole inventor. Based on the Barth I patents’ October 1995 priority date, the Yano reference qualifies as prior art under 35 U.S.C. § 102(b). See RX-5429C, Jacobs Direct Q/A 227; Przybylski, Tr. 2596:18-2597:07. Most importantly, Yano discloses a “data strobe (DS)” signal that is issued by microprocessor 3 to memory 2:

RX-4261, Yano at Figure 1; Przybylski, Tr. 2601:01-2602:07, 2604:03-12. Yano describes the use of its data strobe (DS) in the context of a write operation as follows: [T]he memory cell corresponding to the bit in which writing is performed is discriminated with address signals (AB0 ~ AB15) and with the bit enable signal (BEx) on the side of memory 2, the data strobe signal (DS) creates the active state, PUBLIC VERSION

31 the write data is transmitted by the databus (DBx) corresponding to this bit and the data is written to this bit. RX-4261.0004. Thus, the sole Barth I limitation not taught by Farmwald-Horowitz (RX-4269) – i.e., the strobe limitation – is explicitly taught by Yano. Turning to whether it would have been obvious to a person skilled in the art to combine Yano (RX-4261) with Farmwald-Horowitz (RX-4269) so as to achieve the invention(s) claimed in the Barth I patents, it bears noting that Yano standing alone anticipates claim 11 of the ‘353 patent. See ID at 90-99 (anticipation analysis regarding Yano). The few limitations not explicitly disclosed in Yano are: (1) sense amplifiers (see id at 216-217); (2) autoprecharge (see id. at 214-215); (3) multiple memory banks (see id. at 215-216); and (4) double-data-rate functionality (see id. at 213-214). OUII addresses below all four of these obviousness findings as to Yano. Sense Amplifiers As previously discussed with respect to the NeXTBus Specification (RX-4265), claim 18 of the ‘405 patent and claims 2 and 21 of the ‘109 patent include a limitation directed at the use of a “sense amplifier.” Although Rambus disputed whether the “sense amplifier” limitation is inherent in or obvious in view of Yano (RX-4261) standing alone, the ID found with evidentiary support that this limitation is explicitly disclosed in other art of record (e.g., Farmwald-Horowitz (RX-4269)) and that it would at least have been obvious to combine Yano with such art so as to achieve the claimed invention. See ID at 216-217; RX-5429C, Jacobs Direct Q/A 478-480 (discussing motivation to combine the sense operation elements of Farmwald-Horowitz with Yano). For example, the Respondents’ expert Dr. Jacobs explained: [I]t would have been obvious for one of ordinary skill in the art as of the alleged October 19, 1995 priority date of the Barth patents to apply the write operation methods described in Yano, Dan, and Seki, respectively, to a variety of memory types including DRAM, in which case the resulting method would necessarily PUBLIC VERSION

32 include a code that specifies that a row of sense amplifiers be activated, or that a sense operation occur, in the memory device. RX-5429C, Jacobs Direct Q/A 478. This testimony is corroborated by the evidence on which the Board relied to reach a similar conclusion during the reexamination proceedings as to the combinability and motivation to combine features from asynchronous systems with features from synchronous systems. See SX-8, Decision on Appeal at 10-11 (2011). While Rambus disputes this testimony and reasoning by the Board as failing to recognize that “differences between asynchronous systems and synchronous systems are significant precluding their combination,” this argument lacks merit for the reason discussed supra in Section II(b)(1). See Rambus Initial Br. at 85. Clear and convincing evidence thus supports the conclusion reached in the ID regarding prima facie obviousness as to this limitation. See ID at 216-217. Finally, for essentially the same reasons as discussed above with respect to the NeXTBus Specification (RX-4265), OUII respectfully submits that Rambus’s reliance on secondary considerations of non-obviousness as it relates to the sense amplifier claims is misplaced. See Rambus Pet. at 55-56 (arguing that the ID failed to give due weight to secondary considerations of nonobviousness). Namely, Rambus has not shown a nexus between the purported evidence on which it relies and the use of sense amplifiers – a feature that was already well known in the prior art (e.g., Farmwald-Horowitz (RX-4269)). Instead, Rambus refers generally to memory controller and strobe signal technology, which is explicitly taught by Yano. See ID at 90-99. Thus, the Commission should affirm the ID’s rejection of Rambus’s purported evidence of secondary considerations of nonobviousness as to claim 18 of the ‘405 patent and claims 2 and 21 of the ‘109 patent.

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33 For at least these reasons, OUII respectfully submits that the Commission should affirm the finding in the ID that the sense amplifier limitation would have been an obvious addition to Yano (RX-4261). Autoprecharge Operations Turning to the autoprecharge limitation, all of the asserted ‘405 patent claims and claims 5 and 13 of the ‘109 require such functionality as previously discussed. The parties’ dispute regarding the autoprecharge limitation as it relates to Yano (RX-4261) is essentially the same as their dispute regarding the sense amplifier limitation. Namely, the ID found with evidentiary support that this limitation is explicitly disclosed in other art of record (e.g., Farmwald-Horowitz (RX-4269)) and that it would have been obvious to combine Yano with such art so as to achieve the claimed invention. See ID at 214-215; RX-5429C, Jacobs Direct Q/A 471-473. For example, Dr. Jacobs testified: As seen in Farmwald ‘037 and in Release 4, providing a command to a memory device to initiate a precharge operation was a well-known method in the art, and this command performs the same established function in the asserted Barth claims that it was known to perform in Farmwald ‘037 and in Release 4, namely causing the sense amplifiers to be charged to an intermediate value that is neither logical 0 nor 1. As such, combining a precharge command from either Farmwald ‘037 or Release 4 with the known write operation methods described in Yano, Dan, and Seki, respectively, does no more than yield predictable results, and therefore such combinations would have been obvious to one of ordinary skill in the art. Moreover, Yano, Dan, Seki, Farmwald ‘037, and Release 4 each sought to address the well-known need in the industry for faster data access operations. Therefore it would have been obvious to one of ordinary skill in the art as of the priority date of the Barth patents to combine the precharge command from either Farmwald ‘037 or from Release 4 with the write operations disclosed in Yano, Dan, and Seki, respectively, to improve the efficiency and speed of data access operations by conducting a 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, Jacobs Direct Q/A 473.

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34 Rambus disagrees with Dr. Jacob’s opinion primarily on the grounds that “a person of ordinary skill would not have attempted to introduce synchronous functionality into an outdated asynchronous memory device.” Rambus Initial Br. at 90. However, this argument lacks merit for the reasons discussed supra in Section II(b)(1). Rambus’s reliance on secondary considerations of nonobviousness as it relates to the autoprecharge claims is similarly misplaced. See Rambus Pet. at 55-56. Again, Rambus has not shown a nexus between the purported evidence on which it relies and the use of an autoprecharge command – a feature that was already well known in the prior art (e.g., Farmwald-Horowitz (RX-4269)). Instead, Rambus refers generally to memory controller and strobe signal technology, which is inadequate for the reasons discussed above with respect to the sense amplifier limitation. For at least these reasons, OUII respectfully submits that the Commission should affirm the finding in the ID that the autoprecharge limitation would have been an obvious addition to Yano (RX-4261). Multiple-Memory Banks The next obviousness issue regarding Yano (RX-4261) involves the multiple “banks” limitations of claims 4, 5, 12, and 13 of the ‘109 patent. The ID found with evidentiary support that the use of a plurality of banks and the associated transmission of bank selection information is disclosed in other prior art of record (e.g., Farmwald-Horowitz (RX-4269)) and that it would have been an obvious addition to Yano. See ID at 215-216; RX-5429C, Jacobs Direct Q/A 474476. Rambus’s challenge to these obviousness findings is again misplaced. Namely, Rambus argued that “given the timeframe of Seki, Dan, or Yano, the asynchronous signals of Seki, Dan, and Yano could only access one memory bank at a time, making the addition of multiple banks

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35 meaningless, and providing no motivation for combination.” Rambus Initial Br. at 91. However, as Dr. Jacobs explained: [I]t would have been obvious for one of ordinary skill in the art as of the alleged October 19, 1995 priority date of the Barth patents to combine the memory bank elements disclosed in Farmwald ‘037 and in Release 4 with the disclosures ofYano, Dan, and Seki. As seen in Farmwald ‘037 and Release 4, the memory bank elements were well-known in the art, and such elements performs the same established function in the Barth ‘109 patent that they were known to perform in Farmwald ‘037 and in Release 4. As such, combining the memory bank elements disclosed in Farmwald ‘037 and in Release 4 with the disclosures of Yano, Dan, and Seki does no more than yield the predictable result of increased data access rates due to interleaved cycling between banks, and therefore such combinations would have been obvious to one of ordinary skill in the art. Moreover, Yano, Dan, Seki, Farmwald ‘037, and Release 4 all sought to address the well-known need in the industry for faster data access operations. Therefore it would have been obvious to one of ordinary skill in the art at the time of the Barth ‘109 patent to combine memory bank elements from Farmwald ‘037 or Release 4 with the methods disclosed in Yano, Dan, and Seki, respectively, to improve the speed of data access operations by allowing multiple banks to cycle in an interleaved fashion. RX-5429C, Jacobs Direct Q/A 476. Rambus’s arguments to the contrary lack merit for the reasons discussed supra in Section II(b)(1). To the extent that Rambus relies on secondary considerations of nonobviousness as it relates to the multiple banks claims, its reliance is misplaced. See Rambus Pet. at 55-56. Again, Rambus has not shown a nexus between the purported evidence on which it relies and the use of multiple banks – a feature that was already well known in the prior art (e.g., Farmwald-Horowitz (RX-4269)). Instead, Rambus refers generally to memory controller and strobe signal technology, which is inadequate for the reasons discussed above with respect to the sense amplifier and autoprecharge limitations. Thus, the Commission should affirm the ID’s rejection of Rambus’s purported evidence of secondary considerations of nonobviousness as to claims 4, 5, 12, and 13 of the ‘109 patent.

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36 For at least these reasons, OUII respectfully submits that the Commission should affirm the finding in the ID that the multiple memory banks limitation would have been an obvious addition to Yano (RX-4261). Double-Data-Rate (DDR) Functionality The final obviousness issue involving Yano relates to the DDR functionality recited in claims 12 and 13 of both the ‘353 and ‘405 patents. The ID found with evidentiary support that the use of DDR functionality is disclosed in other prior art of record (e.g., Farmwald-Horowitz (RX-4269)) and that it would have been an obvious addition to Yano as implemented in a synchronous environment. See ID at 213-214; RX-5429C, Jacobs Direct Q/A 468-470. Rambus primarily challenged this finding as failing to recognize that “it would not have made sense for one of ordinary skill in the art to combine the so-called DDR features of Farmwald ’037 with memory that does not even use a clock signal, such as in Seki, Dan, and Yano.” Rambus Initial Br. at 89. However, this argument is contrary to the evidence discussed supra in Section II(b)(1) and should be rejected accordingly. Rambus’s reliance on secondary considerations of nonobviousness as to the DDR limitation is similarly misplaced. See Rambus Pet. at 55-56. Again, Rambus has not shown a nexus between the purported evidence on which it relies and the use of DDR functionality – a feature that was already well known in the prior art (e.g., Farmwald-Horowitz (RX-4269)). Instead, Rambus refers generally to memory controller and strobe signal technology, which is inadequate for the reasons discussed above with respect to the sense amplifier, autoprecharge, and multiple memory bank limitations. Thus, the Commission should affirm the ID’s rejection of Rambus’s purported evidence of secondary considerations of nonobviousness as to claims 12 and 13 of both the ‘353 and ‘405 patents.

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37 For at least these reasons, OUII respectfully submits that the Commission should affirm the finding in the ID that the DDR limitation would have been an obvious addition to Yano (RX4261). c. Whether the Harriman patent evidences the publication of the NeXTBus specification, in view of the fact that NeXT is the assignee of the Harriman patent. (Barth patents)

As discussed in OUII’s petition response, the NeXTBus Specification (RX-4265) anticipates claims 11-13 of the ‘353 patent and claims 1, 20, and 24 of the ‘109 patent, and renders obvious (alone or in combination with other art) the remaining Barth I patent claims at issue in this investigation. See OUII Pet. Reply at 20-25 (anticipation); id. at 38-41 (obviousness). Indeed, very little of the substantive disclosure of the NeXTBus Specification as it relates to the Barth I patents remains in dispute. Rather, Rambus primarily contests whether the NeXTBus Specification (RX-4265) qualifies as a printed publication for prior art purposes. See Rambus Pet. at 30-32. On this specific issue, the Commission appears to seek briefing regarding the extent to which a related prior art reference - i.e., U.S. Patent No. 5,313,624 (“Harriman”) (RX-4266) – evidences the publication of the NeXTBus Specification. See ID at 105-106 (finding Harriman “further suggest[s] that persons of ordinary skill in the relevant art exercising reasonable diligence could locate a copy of [the NeXTBus specification]”). In OUII’s view, Harriman corroborates the other evidence of record regarding the public availability of NeXTBus and is thus further support for the ID’s findings on public availability. See id. As background, the “NeXTBus Specification” is a document by NeXT Inc. that describes a synchronous bus architecture. See RX-4265.0002. Respondents’ expert Dr. Jacobs provided the following historical testimony regarding NeXT Inc. and its product lineup in the 1990 timeframe:

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38 NeXT was a computer workstation company that was formed by Steve Jobs in the late 1980s. And they built something called the NeXT computer. It was an innovative computer. It had an innovative operating system. And I believe their first product rolled out in the 1990 time frame. Jacobs, Tr. 1153:05-12. In addition to relying on the NeXTBus Specification itself, the Respondents also cite a patent that issued from an application filed on May 14, 1991, i.e., shortly after publication of the NeXTBus Specification in 1990. This patent reads in pertinent part: In the preferred embodiment of the present invention, bus 209 is a bus known as the “NextBus” and is described in NextBus Specification, published by NeXT Computer, Inc., Redwood City, Calif. The NextBus is a synchronous, multiplexed, multimaster bus that provides a “strictly fair” arbitration mechanism. Bus slots are addressed geographically and their arbitration scheme is not daisychained. NextBus is a superset of NuBus, which is defined by IEEE standard 1196. The NextBus has different clocks, data transfer rate and electrical interface than NuBus. Timing for the NextBus is derived from a BusClk signal illustrated in FIG. 8. BusClk signal 801 is a 25 megahertz system clock. An MCLKSEL* signal 802 selects every other low phase of BusClk 1401. MCLKSEL* is the logical OR of BusClk and MCLKSEL*. MCLK* signal 803 provides timing for control signals and for single word transfers on the NeXT Bus as illustrated by signal 804. RX-4266, 15:43-60 (emphasis added). As noted in Question 2(c), “Next Computer, Inc.” of Redwood City, California is the assignee listed on the face of the patent arising out of that application. See RX-4266.0001, Field [73]. An entity with a similar name, i.e., “NeXT, Inc.” is purportedly the assignee of several “NeXT” trademarks discussed within the NeXTBus Specification. See RX-4265.0002 (“NeXT, the NeXT logo, NextBus, and NextBus Interface Chip are trademarks of NeXT, Inc.”); id. (“Copyright © 1990 by NeXT, Inc. All Rights Reserved.”). Thus, both Harriman and the NeXTBus Specification refer to a “NeXT” entity and a NeXTBus Specification from the early 1990s timeframe. While the exact relationship between NeXT, Inc. and Next Computer, Inc. is unclear from the evidence of record, the high degree of similarity between the substantive disclosure of

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39 NeXTBus (RX-4265) and that of Harriman (RX-4266)14 and the close proximity in time between the two publications15 suggests that NeXT, Inc. and Next Computer, Inc. are related. Further, because NeXT presumably would not have disclosed prominent features from the NeXTBus Specification in a public patent application and explicitly identified a pre-existing “NeXTBus Specification” in that application if the company intended to keep its specification secret, this evidence further corroborates the ID’s finding on public availability of the NeXTBus Specification. As such, the ID’s finding should be affirmed. d. Whether the respondents have demonstrated the publication date of the SyncLink specification (RX-4270C). (Barth patents)

While a close question, in OUII’s view the Respondents have not shown SyncLink (RX4270C) to be publicly available for prior art purposes under Section 102. Unlike the NeXTBus Specification (RX-4265) which is referred to explicitly in other documents from the same general timeframe (e.g., Harriman (RX-4266)) with corresponding embodiments disclosed therein, the Respondents identify no such documents for SyncLink. See Resp. Reply Br. at 3334 (referring to Rambus having generally been aware of a SyncLink standard under development at JEDEC); Resp. Initial Br. at 75 (discussing copyright date information provided within SyncLink). Moreover, SyncLink (RX-4270C) itself suggests that distribution was controlled in the sense that it could only be reproduced in limited circumstances with appropriate
14

Prominent features of the NextBus Specification, such as the use of a DSTB* strobe signal to initiate the sampling of data and double-data-rate (DDR) data transmission, are disclosed in Harriman. See, e.g., RX-4266.0019 at 15:64-66 (“the receiver captures data on the rising edge of DSTB* [data strobe] signal 901 as illustrated in FIG. 9”); Jacobs, Tr. 1155:3-11 (“The diagrams for the signals are the same, substantially the same in the patent and specification. The names of the signals are the same. The description of the mechanism is the same. It is the same thing.”).

15

As previously discussed, the NeXTBus Specification includes a 1990 copyright date and the Harriman patent is based on an application with a 1991 filing date. Thus, these references appear to be separated by approximately one year in time.

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40 authorization. See RX-4270C.0001 (requiring parties contact the IEEE Standards Department for an appropriate license to reproduce). As such, the Respondents have not met their burden of providing clear and convincing evidence of public accessibility for SyncLink to qualify as prior art to the Barth I patents. See In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (public accessibility is the “touchstone” in determining whether a reference constitutes a printed publication). III. QUESTION 3 - INFRINGEMENT The Commission has requested briefing on the following four issues that generally relate to the ID’s infringement findings, three of which relate to the Dally patents and one of which relates to the Barth I patents. See ID at 47-67 (infringement findings as to the Barth I patents); id. at 68-85 (infringement findings as to the Dally patents). Each of these four issues is discussed below, the first two of which are discussed together. a. The disablement of the Cisco products with a disabled transmitter (Dally patents), see Resp. Pet. 48, as compared to the disablement of the SL500 prior art products, see Rambus Pet. 17-20 Given that “in 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) (emphasis added), whether a finding of infringement or noninfringement of the asserted Dally claims should be guided by the claim language at issue in Fantasy Sports, Silicon Graphics, Inc. v. ATI Technologies, Inc., 607 F.3d 784, 794 (Fed. Cir. 2010), ACCO Brands, Inc. v. ABA Locks Manufacturer Co., 501 F.3d 1307, 1310 (Fed. Cir. 2007), or other Federal Circuit caselaw regarding active or enabled components.

b.

In OUII’s view, Questions (3)(a) and (3)(b) involve two closely related issues: (1) the level of proof required to show infringement of a method claim versus an apparatus claim as it relates to an accused product (e.g., certain accused Cisco products) in which relevant functionality can be readily enabled or disabled; and (2) the level of proof required to show

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41 invalidity of method and apparatus claims by a prior art system (e.g., the SL500 art) in which that same functionality can also be readily enabled or disabled. These two issues are discussed below. Burden of Proof to Show Infringement of Configurable/Programmable Functionality Turning first to infringement, much of the parties’ dispute as to the Dally patents focuses on the asserted apparatus claims, and in particular on what constitutes “modification” of a product under the Federal Circuit’s Silicon Graphics line of cases. See Silicon Graphics, Inc. v. ATI Tech. Inc., 607 F.3d 784, 794 (Fed. Cir. 2010) (“Silicon Graphics”). This focus stems from differences in the level of proof required to show that an accused product infringes upon an apparatus claim versus a method claim with respect to claimed functionality that can be enabled/disabled in the accused product. Namely, a complainant must prove that the product was actually used in an infringing manner to show infringement of a method claim asserted against that product. See, e.g., Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009) (“Lucent”); Joy Tech., Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed. Cir. 1993) (“Joy Tech.”). By contrast, such proof is not required to show infringement of an apparatus claim even if the claim contains functional language. Rather, “an apparatus claim directed to a [product] that is claimed in functional terms is nonetheless infringed so long as the product is designed ‘in such a way as to enable a user of that [product] to utilize the function . . . without having to modify [the product].’” Silicon Graphics, 607 F.3d at 794 (quoting Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002)) (latter two alterations in original). In applying this distinction in the level of proof required to show infringement of apparatus versus method claims to the Dally patents, OUII submits that the claim language

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42 considered by the Federal Circuit in Silicon Graphics is particularly instructive. Claim 1 is representative, and reads: A computer system, comprising: a processor for performing geometric calculations on a plurality of vertices of a primitive; a rasterization circuit coupled to the processor that rasterizes the primitive according to a rasterization process which operations on a floating point format; a frame buffer coupled to the rasterization circuit for storing a plurality of color values; and a display screen coupled to the frame buffer for displaying an impage according to the color values stored in the frame buffer; wherein the rasterization circuit performs scan conversion on vertices having floating point color values. Silicon Graphics, 607 F.3d at 788 (quoting claim 1 of U.S. Patent No. 6,650,327). Notably, a key question in the Silicon Graphics appeal turned on whether the accused hardware products standing alone directly infringed upon claim 1 even though the installation and use of an operating system was required to enable certain functionality recited in the claim. See id. at 794 (noting that the immunity provision of a particular license agreement involving the MS Windows operating system was inapplicable if the hardware product directly infringed separate and apart from the operating system). The Court found that direct infringement was indeed shown, and explained: Even if the products cannot rasterize or store absent an operating system, they may include a rasterization circuit and frame buffer for doing so. If they do, they infringe separate and apart from the operating system, and the Immunity Provision does not apply.

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43 Id. at 795. In short, the mere presence of circuitry for performing the claimed functionality was sufficient to show direct infringement even though that circuitry standing alone lacked a component – i.e., an operating system – that was necessary to enable claimed functionality.16 Similar to claim 1 in Silicon Graphics, the asserted apparatus claims 1, 2, 4-6, 9-13, 2428, 31-36, 39-44, 47, and 49-53 of the ‘857 patent and 1-3, 6, 8, 25, 26, and 30 of the ‘494 patent call for circuitry that performs a particular function, i.e., a transmitter circuit with pre-emphasis functionality. Claim 1 of the ‘857 patent is exemplary in this regard, and reads in pertinent part: a transmitter circuit within the chip, the transmitter circuit being coupled to the processor to accept a digital input signal including a plurality of digital values from the processor, the transmitter circuit being operable to send an output signal including a series of signal levels representing the digital values and to emphasize high frequency components of the output signal relative to low frequency components of the output signal ‘857 patent, 8:48-55. The record shows that all of the accused products include such circuitry.17 See ID at 69-85. Under Silicon Graphics, the record thus supports the ID’s finding of direct infringement of the asserted apparatus claims irrespective of the purported lack of evidence showing that the pre-emphasis functionality has been enabled in a particular instance.

See also Fantasy Sports, 287 F.3d at 1118-1119 (finding direct infringement of an apparatus claim by software that contained code corresponding to the claimed functionality even though that software must be installed on a computer to enable infringing operation of that code).
17

16

Rambus’s infringement allegations as to the downstream products that remain in this investigation are limited to products that include an accused semiconductor chip with a transmitter circuit that is manufactured by or on behalf of Supplier Respondents LSI and/or STM. The evidence shows that all of the accused chips from these two Supplier Respondents include a transmitter circuit with pre-emphasis functionality. See, e.g., Hassoun, Tr. 1467:04-10 (admitting that [ ]); Hajimiri, Tr. 1572:06-1573:08 (admitting that [ ]); 1601:04-08 (admitting that [ ]. Thus, the loose semiconductor chips and downstream products that remain at issue in this investigation all include transmitter circuitry for performing pre-emphasis as claimed in the Dally patents.

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44 For at least these reasons, OUII respectfully submits that the Commission should affirm the ID’s finding that all of the accused products directly infringe at least the asserted apparatus claims of the Dally patents.18 Burden of Proof to Show Invalidity of Configurable/Programmable Functionality Turning to invalidity, the level of proof required to show that an asserted claim is invalid in view of a prior art system (e.g., the SL500 art) versus the level of proof required to show infringement of that same claim by an accused product (e.g., the accused Cisco products) also differs in at least one important respect. Namely, unlike an infringement analysis under Section 271, an invalidity analysis under Section 102 does not require evidence of a prior art product actually being used in the claimed manner even as to an asserted method claim. See Manual of Patent Examining Procedure, § 2112.02 (Process Claims) (8th Ed. with July 2008 Revisions) (“MPEP”) (citing In re King, 801 F.2d 1324, 1326-1327 (Fed. Cir. 1986)). This is a particularly important distinction regarding the SL500 art, which the ID found to anticipate or render obvious the asserted Dally patent claims. See ID at 160-205. More specifically, Rambus has attempted to distinguish the SL500 art on the grounds that certain versions of the SL500 chip were delivered to customers with transmitter circuits in which the pre-emphasis functionality was permanently disabled. See Rambus Pet. 17-25. However, the record reflects the fact that the CWSL500 core design that was instantiated in versions of the SL500 chip contained programmable pre-emphasis functionality that could be disabled/enabled for different applications. See RX-5430C, Hajimiri Direct Q/A 466. This proof is sufficient to invalidate even the asserted method claims because, unlike an infringement analysis under Section 271, a prior art product need not actually be used in the claimed manner in order to teach OUII’s position with respect to method claims 39, 40, and 42 of the ‘494 patent is discussed below in response to Question 3(c).
18

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45 or disclose the claimed method. See MPEP, § 2112.02 (Process Claims). Thus, it does not matter whether the CWSL500 core design as instantiated in certain SL500 chips shipped to certain customers contained transmitter circuits in which the pre-emphasis functionality was temporarily or permanently disabled. For at least these reasons, OUII respectfully submits that the Commission should affirm the ID’s finding that all of the asserted Dally patent claims are invalid in view of the SL500 art. See ID at 160-205. c. The infringement of asserted Dally ‘494 method claims 39, 40, and 42 in view of the ALJ’s discussion at page 77 of the ID regarding enabled features of apparatuses.

With respect to Question 3(c), the ID states in pertinent part that: As for LSI’s second [noninfringement] argument, the ALJ notes that LSI fails to recognize that the asserted claims of the Dally patents are apparatus claims, not method claims. ID at 77. While the vast majority of the asserted Dally patent claims are indeed apparatus claims, Rambus has also asserted three method claims 39, 40, and 42 of the ‘494 patent. See Notice, Question 3(c). Thus, the above quoted statement on page 77 of the ID is incorrect.19 Nevertheless, insofar as the Commission seeks an identification of evidence showing that the Respondents have induced infringement of method claims 39, 40, and 42 of the ‘494 patent under 35 U.S.C. § 271(b) and thus still infringe those claims, OUII submits that the record

19

The error may stem from a corresponding discussion in the reply post-hearing briefs of OUII and Rambus, wherein these parties noted that proof of the accused products having been used in an infringing manner was not required to show infringement of the asserted apparatus claims. See OUII Reply Br. at 62; Rambus Reply Br. at 105. As discussed above in response to Questions 3(a) and 3(b), this is a correct statement that supports the ID’s finding of infringement as to the vast majority of the asserted claims, i.e., apparatus claims 1, 2, 4-6, 9-13, 24-28, 31-36, 39-44, 47, and 49-53 of the ‘857 patent and 1-3, 6, 8, 25, 26, and 30 of the ‘494 patent.

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46 indeed contains such evidence.20 See Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, Comm’n Op., EDIS Doc. ID 467105 at 12-20 (Dec. 21, 2011) (holding that a violation of Section 337 cannot be based on direct infringement of a method claim, but can be based on induced infringement of such a claim); ID at 82-85 (discussing evidence of inducement under 35 U.S.C. § 271(b)). Using STM as an example, the record shows that accused STM products include [

]. JX-147C.0016-17, Walker at 53:24-54:5. Thus, a user in operating the product will [ ]. When viewed in

combination with the evidence of extensive domestic sales of accused STM products, this provides at least circumstantial evidence of the accused STM products being used in an infringing manner in the United States. See Lucent, 580 F.3d at 1317 (extensive domestic sales of an accused product are sufficient to support supporting a finding of direct infringement by customers for purposes of an inducement analysis); CX-7564C.0011 to 16 (STM interrogatory response). Because the record also contains evidence of STM’s specific intent to cause its customers to perform these infringing acts, the evidence supports the ID’s finding of inducement under 35 U.S.C. § 271(b). See OUII Pet. Resp. at 9-11, 63 (discussing Respondents’ inducement arguments); ID at 82-85 (discussing evidence of inducement in the record). For at least these reasons, OUII respectfully submits that the finding of infringement as to method claims 39, 40, and 42 of the ‘494 patent under 35 U.S.C. § 271(b) should be affirmed.
20

The only exception to this statement that is known to OUII involves the particular Cisco products identified in Question 3(a), i.e., the products whether the infringing transmitter circuit is not necessarily hooked up to an output. Specifically, OUII is unaware of evidence in the record showing a specific intent by Cisco to induce infringing acts of its customers as they relate to this small subset of the accused Cisco products. However, OUII notes that these products still infringe the asserted apparatus claims for reasons discussed above in response to Question 3(a).

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47 d. Certain STMicroelectronics products are claimed to have substantial noninfringing uses by virtue of their compatibility with SDR memory. See Resps. Pet. 25; ID at 67 n.9. Explain with specificity and citations to the evidentiary record what these STMicroelectronics products are and your contention that these products have or lack substantial noninfringing uses.

According to Respondent STM, certain of its accused semiconductor chips purportedly have a non-infringing use due to their ability to be used in non-accused single-data-rate (SDR) systems as well as in the accused double-data-rate (DDR) systems. These particular dual-use chips appear to be as follows: Product [ [ [ ] ] ] Exemplary Evidence Of Product Operation RX-6275C, Walker Direct Q/A 55-56 RX-6275C, Walker Direct Q/A 69-71 RX-6275C, Walker Direct Q/A 73

As the record reflects, however, once a “dual-use” chip is installed on a circuit board (e.g., within a hard disk drive, graphic card, motherboard, etc.), it is effectively configured to operate solely in either an infringing DDR mode or a noninfringing SDR mode: [

] Siraj, Tr. 1202:11-23. In other words, a dual-use chip it is no longer truly dual-use once [ ] (e.g., on a circuit board within a hard disk drive, graphic card, etc.). Rather, such a chip effectively becomes a permanent DDR-only chip at that point in time. Thus, STM’s PUBLIC VERSION

48 dual-use chips are, for purposes of 35 U.S.C. § 271(c), components with no substantial noninfringing SDR mode when they are imported, sold for importation, or sold after importation in a [ ].21 See CX-9543C, Przybylski Direct Q/A 1008-1009. For at least these reasons, the Commission should affirm the ID’s finding that at least certain applications of STM’s dual-use chips infringe the asserted Barth I patent claims under 35 U.S.C. § 271(c). IV. QUESTION 4 - UNCLEAN HANDS (Barth patents) The Commission has requested briefing on the following two issues that generally relate to the ID’s finding that the asserted Barth I patents are unenforceable due to spoliation of evidence. See ID at 254-317. These two issues are discussed individually below. a. Whether the doctrines of preclusion or stare decisis prevent Rambus from challenging the determinations from the 661 investigation as to the date upon which it was obligated to retain documents, or its bad faith.

Before addressing Question (4)(a) as it relates to the specifics of the Respondents’ unclean hands defense, OUII first notes that the Commission recently addressed the stare decisis aspect of this question in the following manner: We note that determinations reached by the Commission in prior investigations are not binding on subsequent investigations and each investigation must be decided on its own record evidence. There is no doctrine of stare decisis in an administrative practice. Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-630, Comm’n Op., 2010 ITC LEXIS 2701 at *43 (Dec. 2010) (internal citations omitted); see also Certain Multibrand Infrared Remote Control Transmitters, Inv. No. 337-TA-363, Notice of Comm’n Determination, 1994 ITC LEXIS 709 at *8 (June 1994) To be clear, such downstream products (e.g., hard disk drives, graphics cards, etc.) with an accused dual-use STM chip therein are still “components” in the sense that they can be incorporated into larger downstream products (e.g., computers, servers, etc.). PUBLIC VERSION
21

49 (the principle of stare decisis “has little or no bearing on Commission decisions.”). Because this longstanding Commission precedent holds that the doctrine of stare decisis is inapplicable to Section 337 investigations, the discussion below focuses solely on the “preclusion” aspect of this question. Of the two branches of preclusion recognized by the Commission, i.e., “issue” preclusion and “claim” preclusion, the previously adjudicated aspects of the Respondents’ unclean hands defense fall under the rubric of issue preclusion, if at all.22 The general rule of “issue” preclusion has been stated as follows: When an issue of fact or law is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim. Restatement 2nd of Judgments § 27 (1982). The parties dispute whether issue preclusion can be used to bar a prevailing party from relitigating certain aspects of a claim or defense on which it lost in a prior proceeding. More specifically, the parties dispute whether findings adverse to Rambus on reasonable foreseeability and bad faith were “essential to the judgment” of no unclean hands in favor of Rambus, who ultimately prevailed on the unclean hands defense based on a finding that nVidia and the other 661 respondents were not prejudiced by its document destruction activities. See Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-

See Certain Hybrid Electric Vehicles and Components Thereof, Inv. No. 337-TA-688, Comm’n Op., EDIS Doc. ID 422099 at 12 (Apr. 2, 2010) (“Hybrids I”) (reversing an ID finding that “claim” preclusion barred relitigation of certain defenses previously adjudicated in a prior district court action, and remanding for an analysis of “issue” preclusion); Certain Hybrid Electric Vehicles and Components Thereof, Inv. No. 337-TA-688, Comm’n Op., EDIS Doc. ID 427966 (June 22, 2010) (“Hybrids II”) (affirming an ID finding that “issue” preclusion barred relitigation of certain defenses previously adjudicated in a prior district court action).

22

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50 661, Initial Determination, EDIS Doc. ID 417900 at 116 (Jan. 22, 2010) (“661 ID”). This issue was previously briefed in the following pre-trial motions:  Respondents LSI Corporation and Seagate Technology Motion for Summary Determination of Unclean Hands and Unenforceability, Mtn. Dkt. No. 753-050 (July 15, 2011); and Respondents’ Motion for an Order Based on Collateral Estoppel that Rambus Destroyed Evidence it had a Duty to Preserve and did so in Bad Faith, or in the Alternative for Summary Determination of Those Issues, Mtn. Dkt. No. 753-031 (June 30, 2011)23

See also Order No. 56 (Oct. 7, 2011) (denying Mtn. Dkt. Nos. 050 and 031). As OUII explained in opposing these motions, the Respondents cannot show a key element of the Commission’s four part test for collateral estoppel: i.e., that resolution of the issue was essential to a final judgment in the first action. The basis for OUII’s opposition stems from the manner in which the spoliation-based affirmative defenses were decided in the 661 investigation. More specifically, Rambus ultimately prevailed on the spoliation-based affirmative defenses despite the adverse spoliation-related findings noted above. According to the 661 ID, Rambus prevailed due to a lack of evidence demonstrating the destruction of materials relevant to a claim or defense in the investigation: [T]he record does not demonstrate that evidence relevant to the party's claim or defense, such that a reasonable trier of fact could find that it would support that claim or defense, was destroyed. While Rambus clearly was getting rid of records it should have kept, there was no evidence or testimony that the evidence that was destroyed would have supported any [of] Respondent’s claims or defenses. While it is true that Rambus clearly did not dispose of records in a content neutral way, keeping things that might be “helpful” that does not per se mean that what was disposed of was necessarily supportive of the defense. In a case such as this, Respondents are placed in a very difficult position. Rambus pursued its destruction while making no records of what it destroyed, kept conversations about destruction between the employees outside the record, and acted when no
23

Respondents’ memorandum in support of Mtn. Dkt. 753-031 is referred to herein as the “Collateral Estoppel Memo.”

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51 one else was alerted there shall be litigation. If ALJ could rule on the bad intentions of a party, there is no question but Rambus could not prevail. Nonetheless, the evidentiary burden is on Respondents to prove that their defenses were prejudiced by Rambus’s misconduct, and they have not carried that burden. The ALJ has found no evidence in the record that the evidence destroyed would support the respondent’s claim or defense. 661 ID at 116. Thus, the ultimate judgment on the respondents’ spoliation-based affirmative defenses in the 661 investigation was not based on findings that Rambus had destroyed in bad faith materials that it had a duty to preserve at the time of their destruction. Rather the ultimate judgment was based solely on the findings concerning a lack of proof of prejudice that were decided in favor of Rambus. Because “prejudice” was the only basis on which the spoliation-based affirmative defenses were ultimately decided in the 661 investigation, collateral estoppel does not preclude Rambus – the prevailing party on “prejudice” and the corresponding defenses – from relitigating other aspects of those defenses in this investigation. As the Restatement (Second) of Judgments explains: If issues are determined but the judgment is not dependent upon the determinations, relitigation of those issues in a subsequent action between the parties is not precluded. Such determinations have the characteristics of dicta, and may not ordinarily be the subject of an appeal by the party against whom they were made. In these circumstances, the interest in providing an opportunity for a considered determination, which if adverse may be the subject of an appeal, outweighs the interest in avoiding the burden of relitigation. Restatement (Second) of Judgments § 27 comment (h) (1982). The Restatement includes two illustrative hypotheticals that make this point clear: 13. A brings an action against B to recover interest on a promissory note payable to A, the principal not yet being due. B alleges that he was induced by the fraud of A to execute the note, and further alleges that A gave him a release under seal of the obligation to pay interest. The court, sitting without a jury, finds that A had given such a release but that B was not induced by A’s fraud to execute the note, and gives verdict for B on which judgment is entered. After the note matures A brings an action against B for the principal of the note. B is not

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52 precluded from defending this action on the ground that B was induced by A’s fraud to execute the note. 14. A, as owner of a trademark, brings an action against B for infringement. B denies the validity of the trademark and denies infringement. The court finds that the trademark is valid, but that B had not infringed it, and gives judgment for B. Thereafter A brings an action against B alleging that since the rendition of the judgment B infringed the trademark. B is not precluded from defending this action on the ground that the trademark is invalid. Id. (emphasis added). In their original motion arguing for a collateral estoppel order, the Respondents recognized the problem noted above. See Collateral Estoppel Memo at 8 (“Although Rambus may argue against the application of collateral estoppel because the ALJ did not find in the ‘661 case that it had unclean hands, the law is otherwise.”). However, the Respondents failed to adequately address the contrary commentary in the Restatement (Second) of Judgments quoted above. Instead, the Respondents relied on one Federal Circuit opinion that they argued stands for the premise that collateral estoppel applies to express findings regarding disputed claim elements even where not included in the judgment. See Collateral Estoppel Memo at 8 (citing Mother’s Restaurant, Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 1571 (Fed. Cir. 1983) (“Mother’s”)). This citation misses the point. Unlike this investigation, where Rambus prevailed on the spoliation-based affirmative defenses in the prior action, Mother’s Restaurants Inc. (“MRI”) was the losing party on the ultimate judgment in the prior action that gave rise to collateral estoppel in a subsequent action. More specifically, MRI appealed a decision by the Trademark Trial and Appeal Board (“TTAB”) in which the Board gave preclusive effect to “state court findings of confusing similarity and priority of use” with respect to a rejected counterclaim brought by MRI in the state court action. See Mothers, 723 F.2d at 1569. On appeal, MRI took the position “that the court’s finding of confusing similarity is [not] necessary . . . to the court’s decision on the counterclaim” because PUBLIC VERSION

53 “the court’s final judgment did not specify why [MRI’s] counterclaim was denied . . . .” See id. at 1571. The Federal Circuit disagreed, holding instead that “the mere existence of another possible ground for a judgment does not deprive the factual determination upon which the decision actually rested of preclusive effect.” See id. at 1571 n. 8. This is a critical distinction between Mother’s and this investigation. Unlike this investigation, MRI was the losing party on an ultimate judgment rejecting MRI’s counterclaim and the rejection of that counterclaim actually rested on a factual determination that MRI sought to relitigate in a subsequent action. By contrast, the ultimate judgment at issue in the 661 ID (i.e., judgment on the respondents’ unclean hands defense) was decided in favor of Rambus and did not actually rest on the spoliation-related findings addressed in the Respondents’ motion. In short, the Mother’s case does not support the Respondents’ position. To the extent that the Respondents characterize the reasonable foreseeability and bad faith determinations in the 661 ID as nonetheless “essential to the judgment” of no unclean hands, OUII submits that this characterization lacks merit.24 In particular, the Respondents have argued that the lengthy discussion of these issues in the 661 ID and in the parties’ briefs on appeal to the Federal Circuit makes them “essential” to the 661 ID as a whole, as opposed to mere dicta that can be ignored and relitigated in a subsequent proceeding. See Resp. Reply on Collateral Estoppel at 2-5. However, in the 661 investigation Rambus raised three separate challenges to nVidia’s unclean hands defense, any one of which could have resulted in the rejection of that defense under then-existing precedent: (1) failure to show prejudice from the destruction of any
24

See Exhibit A to Respondents’ Motion for Leave to File a Reply in Support of Their Motion for an Order Based on Collateral Estoppel That Rambus Destroyed Evidence it had a Duty to Preserve and Did so in Bad Faith, Or in the Alternative for Summary Determination of Those Issues, Mtn. Dkt. No. 753-065, EDIS Doc. ID 650155 (Aug. 2, 2011) (“Resp. Reply on Collateral Estoppel”).

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54 relevant evidence; (2) failure to show a duty to preserve the documents in question prior to their destruction; and (3) failure to show the bad faith destruction of any documents in any instance.25 A similar scenario is set forth in hypotheticals 13 and 14 of the Restatement (Second) of Judgments § 27. Namely, party B in hypotheticals 13 and 14 raised two separate challenges to party A’s allegations, either of which could have resulted in the rejection of party A’s allegations on the merits. While party B in both hypotheticals prevailed on only one of its challenges, it was still allowed to relitigate even its previously rejected challenge in a subsequent proceeding. See Restatement (Second) of Judgments § 27 comment (h). No caveat was made for the extent to which the court nonetheless addressed party B’s rejected challenge in the court’s prior opinion, or the zeal with which party B litigated the issue in that prior proceeding (or on appeal). Nor has the Federal Circuit adopted a contrary policy on issue preclusion. See Mother’s, 723 F.2d at 1569-1571 (addressing preclusion solely in the context of a party that lost on the ultimate decision at issue in the prior proceeding). For at least these reasons, OUII respectfully submits that neither the doctrine of preclusion nor the doctrine of stare decisis prevent Rambus from relitigating in this investigation the prior adverse findings on reasonable foreseeability and bad faith in the 661 investigation.

25

See Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Complainant Rambus Inc.’s Initial Post-Hearing Brief, EDIS Doc. ID 413996 at 75-109 (Nov. 5, 2009); Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Complainant’s Post-Hearing Rebuttal Brief, EDIS Doc. ID 414847 at 38-56 (Nov. 20, 2009).

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55 b. Explain with specificity the factual distinctions between the records of the 661 investigation and this investigation, with respect to prejudice suffered or allegedly suffered by the respondents by reason of Rambus’s destruction of documents.

Turning to the substance of the Respondents’ unclean hands defense, it is undisputed that there are distinctions in the 661 and 753 records as they relate to Rambus’s attempt to enforce the Barth I patents in the two investigations. For example, the 753 investigation involves new Respondents, accused products, affirmative defenses, and trial testimony not previously at issue in the 661 investigation, and thus not a part of the 661 record.26 However, these distinctions appear to be immaterial to the Respondents’ unclean hands defense. OUII thus respectfully submits that the finding of unclean hands in this investigation should be reversed as inconsistent with the Commission’s prior rejection of the same defense in the 661 investigation. In the discussion below, OUII focuses on the purported differences that the Respondents identified in Section VI(F) of their reply to the petitions for review. See Resp. Petition Reply at 89-92 (arguing that the unclean hands holding in the 753 ID is not contrary to the Commission’s prior rejection of the same unclean hands defense in the 661 investigation). However, as a preliminary matter, OUII notes that the Respondents have previously argued that the following documents show “prejudice” even though they were found not to support a finding of prejudice in the context of the 661 investigation:

With respect to the witness testimony of record in the 661 and 753 investigations, the record of this investigation includes live trial testimony from Joel Karp, Geoff Tate, and Lester Vincent, none of whom was called to testify live during the evidentiary hearing in the 661 investigation. See Karp, Tr. 1895:09-2048:11; Tate, Tr. 1315:16-1389:24; Vincent, Tr. 2188:112258:13. However, each of these three witnesses provided testimony in the 661 investigation by way of transcripts of prior deposition and trial testimony. The corresponding 661 exhibit numbers include: JX-55 (designations from the Hynix district court trial on unclean hands); JX58C (Karp designations); JX-93C (Tate designations); and JX-97C (Vincent designations).

26

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56 753 Exhibit Number RX-418C RX-449C RX-493C RX-505C Relevant Pleading Resp. Initial Br. at 249. Resp. Initial Br. at 257; Resp. Pre-trial Br. at 372. Resp. Initial Br. at 235. Resp. Initial Br. at 250. Resp. Initial Br. at 255, 257; Resp. Reply Br. at 123; Resp. Pre-trial Br. at 366. Resp. Initial Br. at 255, 257; Resp. Pre-trial Br. at 371. Resp. Pre-trial Br. at 356 Resp. Initial Br. at 248 Resp. Pre-trial Br. at 356 Resp. Pre-trial Br. at 356. Resp. Pre-trial Br. at 356. Resp. Initial Br. at 257; Resp. Pre-trial Br. at 372. Resp. Initial Br. at 248; Resp. Reply Br. at 122. Resp. Initial Br. at 248; Resp. Reply Br. at 124 Resp. Reply Br. at 124 Resp. Initial Br. at 255; Resp. Reply Br. at 124 Post-Hearing Br. at 255 Resp. Initial Br. at 256; Resp. Reply Br. at 122; Resp. Pretrial Br. at 368. Resp. Pre-trial Br. at 360. Resp. Initial Br. at 252; Resp. Pre-trial Br. at 362. Resp. Initial Br. at 253; Resp. Reply Br. at 120; Resp. Pretrial Br. at 363. Resp. Petition Reply at 80. Resp. Petition Reply at 80. 661 Exhibit/Production RX-418C RX-449C RX-493C RX-505C

RX-506C RX-507C RX-513C RX-518C RX-526C RX-545C RX-546C RX-555C RX-557C RX-573C RX-575C RX-578C RX-579C

RX-506C RX-507C RX-513C RX-518C RX-526C RX-545C RX-546C RX-555C RX-557C RX-573C RX-575C RX-578C RX-579C

RX-1042C RX-1051C RX-1187

RX-1042C RX-1051C RX-1187

RX-1189C RX-2047C RX-2050C

RX-2111C

RX-2248C

Resp. Pre-trial Br. at 362. Resp. Initial Br. at 256; Resp. Petition Reply at 80; Resp. Pre-trial Br. at 368.

RX-1189C RX-440C.0057 and RX435C.0044 RX-440C.0068-75 and RX435C.0058-64 RX-1191C, RX-1192C, RX1196C, RX-1212C, RX1231C. RX-435C at 0058-64; RX440C at 0068-75

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57 753 Exhibit Number Relevant Pleading 661 Exhibit/Production This exhibit is a listing of documents produced by bates numbers. The documents produced in 661 were produced in 753. Produced in 661 investigation Substantially similar to invoices produced in 661 investigation. RX-1191C, RX-1192C, RX-1196C, RX1212C, RX-1231C. CX-3116C RX-375C RX-1038C This exhibit is merely a picture of a tape, consistent with the discussion of tapes in the 661 ID. See, e.g., 661 ID at 104, 115

RX-2429C RX-2463C

Resp. Pre-trial Br. at 361. Resp. Pre-trial Br. at 361, 377.

RX-2524C RX-2552C RX-2577C RX-2702C

Resp. Initial Br. at 252; Resp. Pre-trial Br. at 362. Resp. Pre-trial Br. at 370. Resp. Initial Br. at 249; Resp. Pre-trial Br. at 356, 359. Resp. Pre-trial Br. at 362.

RX-2706C

RX-2709C RX-3057C

Resp. Pre-trial Br. at 360. Resp. Initial Br. at 251; Resp. Pet. Reply at 80; Resp. Pretrial Br. at 361. Resp. Initial Br. Br. at 258; Resp. Pre-trial Br. at 375.

RX445C CX-3856 This exhibit is a list of documents from media. The documents and list were produced in 661. CX-3075C Produced in 661 investigation This exhibit includes Dec. 13, 1990 meeting minutes from JEDEC. These JEDEC meeting minutes were produced in 661.

RX-3068C. RX-3540C RX-3909

Resp. Initial Br.at 251; Resp. Pre-trial Br. at 361. Resp. Initial Br. at 258; Resp. Pre-trial Br. at 375. Resp. Initial Br. at 258; Resp. Pre-trial Br. at 374.

RX-3918C

RX-4287C RX-6251C

Resp. Initial Br. at 298. Resp. Initial Br.at 256; Resp. Pet. Reply at 80; Resp. Pretrial Br. at 368, 372. Resp. Initial Br. at 252; Resp. Pre-trial Br. at 362.

RX-435C.0013 Substantially similar to RX1187

PUBLIC VERSION

58 Because Question 4(b) is limited to distinctions between the two investigations as they relate to unclean hands and the aforementioned exhibits are not unique to the 753 investigation, OUII has not substantively addressed these exhibits in this brief. 1. SyncLink

Turning to the substance of the Respondents’ arguments, the evidentiary record for the 753 investigation purportedly includes “new” evidence of spoliation of documents related to their “SyncLink” anticipation and inequitable conduct defenses. See Resp. Petition Reply at 91. However, this argument cannot support a finding of the unclean hands because the Respondents’ SyncLink defenses fail as a matter of law based on information that is publicly available to the Respondents and/or that has been preserved and produced by Rambus. More specifically, the Respondents have failed to show by clear and convincing evidence that SyncLink – which is cumulative with the Farmwald-Horowitz art disclosed and overcome during prosecution – anticipates, renders obvious, or is otherwise material to the Barth I patents. See response below to Question 5. The shortcomings of Respondents’ defense in this regard cannot be attributed to Rambus’s document destruction activities because a document must be publicly available to qualify as a printed publication for prior art purposes. See discussion supra in response to Question 2(c). Thus, documents sufficient to show the structure and operation of SyncLink – which the Respondents claim is prior art to the Barth I patents – should be available from other, public sources to the extent such documents ever existed. Indeed, many of the Respondents claim to have been JEDEC members when SyncLink was purportedly being discussed in JEDEC, and thus would have had access to such documents. See Resp. Pre-trial Br. at 411. Moreover, Rambus has preserved and produced a considerable body of documents on SyncLink and its predecessor, RamLink, none of which tend to show the relevance of SyncLink to the Barth I patents. See, e.g., RX-3341C; RX-3342C; RX-4532C; RX-4272C; RX-3053C; PUBLIC VERSION

59 RX-4528C; RX-3054C; RX-2052; RX-3411C. Thus, the Respondents’ SyncLink defenses were not prejudiced by Rambus’s document destruction activities. For at least these reasons, OUII respectfully submits that the distinctions between the 661 and 753 investigations as they relate to SyncLink cannot support a finding of prejudice for purposes of the Respondents’ unclean hands defense. 2. Prosecution Files

The Respondents also vaguely refer to various defenses being somehow prejudiced by the destruction of documents within the original Barth I patent prosecution files kept by Rambus’s outside counsel, Lester Vincent. See Respondents’ Petition Reply at 81-82, 91. However, a substantially identical argument was made by the 661 respondents and rejected by the Commission in that investigation.27 The only “new” evidence on this issue that OUII is aware of consists of the live trial testimony of Lester Vincent. However, Mr. Vincent’s trial testimony supports the Commission’s prior rejection of Respondents’ prosecution history arguments as discussed below. More specifically, the Respondents have argued that Mr. Vincent destroyed correspondence with Rambus that referred or related to the Barth I applications. See Resp. Initial Br. at 251-252 (referring to “letters between Blakely Sokoloff and Rambus regarding patent prosecution matters” and “printouts of e-mails maintained in the prosecution files”). Yet, Mr. Vincent testified that his firm kept copies of such correspondence outside the patent prosecution files in a separate “chron” file that his secretary maintained. See Vincent, Tr.

27

See Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Respondents’ Petition for Review of Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond, EDIS Doc. ID 418745 at 59-65 (Feb. 12, 2010) (“nVidia Petition”).

PUBLIC VERSION

60 2244:22-2245:07, 2252:10-2253:06. As such, the Respondents were not prejudiced by the destruction of a particular copy of a piece of correspondence in the patent prosecution file because duplicate copies apparently still exist in the separate and distinct chron file. The Respondents have also argued that Mr. Vincent destroyed “drafts of amendments and drafts of claims” along with “diskettes” containing such documents. See Resp. Initial Br. at 252. There are several problems with this argument. First, such documents would almost certainly have been covered by a valid claim of privilege and thus not discoverable in a subsequent litigation. See, e.g., In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000) (holding an “invention record is protected by the attorney-client privilege”); In re Regents of the Univ. of Cal., 101 F.3d 1386, 1391 (Fed. Cir. 1996) (“Consultation with counsel during patent prosecution meets the criteria of compliance with law and meeting legal requirements, thereby reducing or avoiding litigation, and is within the scope of subject matter that is subject to the attorney-client privilege.”). In OUII’s view, the Respondents cannot properly claim prejudice by the purported destruction of documents that they would not have been entitled to obtain in discovery.28 Second, Mr. Vincent testified that floppy discs of the type contained in the Barth I prosecution files typically included electronic copies of final submissions to the Patent Office. See Vincent, Tr. 2254:13-2255:03. Thus, hard copies of the files contained on the floppy discs can largely (if not entirely) be obtained from the prosecution files that are publicly available from the Patent Office and of record in this investigation. See generally SX-8 to 10 (patent prosecution files for the Barth I patents).
28

Similar privilege issues apply as to outside counsel’s handwritten notes of meetings with Rambus personnel and invention disclosure documents, to the extent such notes or invention disclosure documents even existed as to the Barth I patents.

PUBLIC VERSION

61 Third, Mr. Vincent testified that draft claims and amendments were commonly discarded by his firm when a final version was submitted to the Patent Office. See Vincent, Tr. 2253:102254:08. Similarly, draft applications and meeting notes were often discarded after the relevant action had been taken (e.g., the initial filing of an application). See id. at 2253:24-2254:08, 2255:07-13. Thus, it is unlikely that the purged prosecution files at issue in this investigation even had draft amendments, claims, applications, or attorney notes remaining therein for counsel to “purge” pursuant to Rambus’s document retention policy. Fourth, the evidence shows that one of the early Barth I files, i.e., the application giving rise to U.S. Patent No. 6,122,688, was not in fact purged. See RX-2530C.0005 (P-048D1 is not listed as a file purged by counsel); Vincent, Tr. 2227:19-2239:022, 2246:16-2247:07, 2251:022252:09, 2256:05-2257:09 (testifying as to RX-2530C). With respect to the three other Barth I files that were apparently purged (i.e., P048, P048D2, and P048D3), two were allowed without a substantive action on the merits (P048 and P048D2) and the other was allowed after one substantive action on the merits (P048D3). It is thus unlikely that a considerable body of substantive drafts or correspondence would have been in the files in any event. Indeed, Mr. Vincent recorded very little time attributable to the responding to substantive actions in these three files. See RX-2111C.0041-42 (invoice). Finally, the Respondents have argued that Mr. Vincent destroyed documents that call into question the patentability of the inventions claimed in the Barth I patents. See Resp. Initial Br. at 254-255; Resp. Petition Reply at 81. However, Mr. Vincent testified at trial that his firm did not destroy any prior art contained within its files.29 Other witnesses similarly testified at trial that

29

See Vincent, Tr. 2247:21-2248:05, 2250:21-2251:01.

PUBLIC VERSION

62 they were unaware of material prior art that was destroyed or withheld during prosecution.30 These witnesses also testified that they were unaware of documents questioning patentability of Barth I patents that were destroyed during the shred days.31 Thus, the evidence fails to support the argument that the Respondents were prejudiced by the purported destruction of documents that call into question the patentability of the inventions claimed in the Barth I patents. For at least these reasons, OUII respectfully submits that the few distinctions between the 661 and 753 investigations as they relate to the Barth I patent prosecution files of Rambus’s outside counsel cannot support a finding of prejudice for purposes of the Respondents’ unclean hands defense. V. QUESTION 5 - INEQUITABLE CONDUCT (Barth patents) The Commission has requested briefing on the following four issues that generally relate to the ID’s finding that the asserted Barth I patents are not unenforceable due to inequitable conduct arising out of the applicants’ failure to disclose SyncLink (RX-4270C) during prosecution of the application giving rise to the ‘109 patent. See ID at 243-248. Each of these four issues is discussed below, the first three of which are discussed together.32

30

See Vincent, Tr. 2247:21-2248:05, 2250:21-2251:01; Hampel, Tr. 369:04-08, 370:22371:07; Barth, Tr. 474:09-14.

See Hampel, Tr. 369:09-13, 372:21-373:09; CX-10767, Hampel Rebuttal Q/A 12-17; Barth, Tr. 475:09-13; Vincent, Tr. 2248:06-17.
32

31

Because Questions (5)(a) to (d) solely address the materiality prong of an inequitable conduct defense, the discussion below does not address OUII’s position that the record lacks clear and convincing evidence of a specific intent to deceive. See ID at 247-248.

PUBLIC VERSION

63 a. b. Whether the respondents have proven materiality of this particular document. Whether the PTO’s reexamination of the ’109 patent demonstrates that the broadest reasonable construction of the ’109 patent’s “signal” is a construction broader than the ’405 and ’353 patents’ “strobe signal.” If the broadest reasonable construction of “signal” in the ’109 patent is “a signal,” and not “a strobe signal,” whether the SyncLink specification is cumulative with art presented to the PTO.

c.

Questions 5(a) to (c) appear to be directed at issues discussed in prior proceedings before both the Commission and the U.S. Patent & Trademark Office (“USPTO”). Namely, both agencies have addressed the alleged distinctions between the “signal” limitation of the ‘109 patent and the “strobe signal” limitation of the ‘353 and ‘405 patents, and the effect of these purported distinctions on an anticipation analysis involving “request packet” based prior art systems, such as SyncLink (RX-4270C) and Farmwald-Horowitz (RX-4269). Should the Commission affirm the constructions and invalidity analysis adopted in the 661 investigation, OUII submits that SyncLink (RX-4270C) is not material due to its failure to disclose “strobe signal” type functionality. Should the Commission adopt the contrary “broadest reasonable” construction used by the USPTO, OUII submits that SyncLink (RX-4270C) is still not material because it is cumulative with patents from the Farmwald-Horowitz family (e.g., RX-4269) that were submitted to the USPTO, considered by the Examiner, and used to reject various claims during prosecution of the application that ultimately issued as the ‘109 patent. Either way, the Respondents have failed to meet their burden to prove inequitable conduct by clear and convincing evidence.33

See generally OUII Pet. Resp. at 35-37, 48-50 (discussing the Respondents’ failure to prove the materiality of SyncLink); OUII Initial Br. at 111 (same); OUII Reply Br. at 37-39 (same); OUII Pre-trial Brief at 91 (same).

33

PUBLIC VERSION

64 1. Background

As previously noted, the alleged distinctions in claim scope between the “signal” limitation of the ‘109 patent and the “strobe signal” limitation of the ‘405 and ‘353 patents, and how these purported distinctions relate to an anticipation analysis involving “request packet” based prior art systems such as SyncLink (RX-4270C), were previously addressed in the context of the now completed 661 investigation.34 As the 661 ID explains: Respondents and Staff argue that the AccessType[1:2] is the claimed “signal” for the ‘109 Patent. (RIB at 60; SIB at 61.) Unlike the “strobe signal,” the “signal” of the ‘109 Patent does not require a delay between the issuance of the write command and the signal. AccessType[1:2] is transmitted from the memory controller to a memory device as part of request packet and indexes an access register, which then contains an access time that specifies when the memory device is to begin sampling data. (Przybylski, Tr. 1580:08-81:11; 1585:07-93:03; RX-1132C Q&A 170.) Thus, AccessType[1:2] indicates when memory device is to begin sampling data responsive to a request packet as required by the “signal” in the ‘109 Patent. As an initial matter, the ALJ notes that the Examiner did consider the AccessType bits specified in the request packet of Figure 4 in initially rejecting claims of the ‘109 Patent and expressly cited to it in the Office Action. (JX-10, at R-ITC-00015717; Subramanian Tr. at 1188:22-89:4, 1193:1-95:17.) The PTO considered what Respondents and Staff contend anticipates the asserted claims of the ‘109 Patent and did not reject those claims. As such, Respondents and Staff's burden are particularly heavy. Staff argues that the claims of the ‘109 Patent differ from those of the ‘353 and the ‘405 Patent in three ways, which is the basis for why Farmwald invalidates the ‘109 Patent and not the ‘353 and the ‘405 Patent: (1) a “signal” is not limited a timing signal; (2) the claims do not require the signal to “initiate sampling” but to indicate when to begin sampling; and (3) the claims do not require a delay between the issuance of the write command and the signal. Claim 1 of the ‘109 Patent recites, inter alia, “providing control information to the memory device, wherein the control information includes a first code which specifies that a write operation be initiated in the memory device” The 661 investigation involved the same Barth I patent claims that are at issue in this investigation, and the 661 respondents similarly alleged that the asserted claims were invalid based on prior art from the Farmwald-Horowitz patent family (which contains many of the same characteristics as SyncLink).
34

PUBLIC VERSION

65 and “providing a signal to the memory device, wherein the signal indicates when the memory device is to begin sampling write data.” (JX-5 at claims 1.) . . . The evidence shows that the AccessType[1:2] bits includes control information and that this AccessType[1:2] bit cannot be selected and sent separate from the request packet embodied in Figure 4. (Subramanian Tr. at 1174:14-1176:2, 1188:11-21; RX-310, Farmwald ‘755 at 6:37-40, 9:41-60, Fig. 4; JX-3, 6:60-63, 8:59-67, 10:27-37, Fig. 9.) Respondents and Staff argue, however, that the first bit of the AccessType field in Figure 4, AccessType[0], is the “first code which specifies a write operation” and the second two bits, AccessType[1:2], are the claimed “signal.” (RIB at 60-61; SIB at 62.) However, the evidence shows that Farmwald describes that the entire AccessType[0:3] field of Figure 4 as “an op code (operation code) which, for example, specifies the type of access.” (RX-310 at 9:57-60.) Farmwald teaches that read or write operations can be performed on the memory array within the memory device or on a control register within the memory device. In Figure 4, all four AccessType bits are required to specify the type of operation to be performed. Thus, AccessType[0] bit cannot be considered "separate and apart" from AccessType[1:2] bits. Instead, a write operation to the array with AccessType bits [0:3] is not fully specified without all four bits and the evidence shows that those bits cannot be split apart in the manner advocated by Respondents and the Staff. (Subramanian, Tr. 1174:11-1175:15; Przyblyski, Tr. 1556:19-1557:16, 1569:10-24; CX-3900C at Q&A 81-84; 161-163.) Indeed, if just the first bit was used, as contended by Respondents and the Staff, that bit by itself would not indicate, for example, whether the operation applies to the array or the register. (Przybylski Tr. at 1569: 10-1570: 10; CX-3900C, at Q&A 83-87; 161-163; RX-310 at 11:45-55.) The claims here are directed to writing to the array, so the first bit would not be sufficient to specify the claimed write or transfer operation all four bits are necessary to specify the type of access. (CX3900C at Q&A 163; RX-310 at 9:57-60.) And the same access type field that satisfies the claimed “first code” cannot also satisfy the separate “signal” of the ‘109 patent claims. Thus, the ALJ finds that Farmwald does not disclose or suggest providing control information and separately providing a signal that indicates when the memory will perform an operation such as sampling, as required by the ‘109 Patent. Furthermore, the Barth I Patent teaches away from the embodiment in Figure 4 of Farmwald. The Barth I specification labels as “inflexible” systems in which the “number of clock cycles that elapse between a request packet and the transfer of data specified in the request packet may be determined by a value stored in a register within the DRAM.” (JX-3 at 10:27-34.) The Barth I specification thus characterizes as inflexible the approach embodied in Figure 4 that includes AccessType[1:2] bits. The Barth I specification and the ‘109 Patent teach that in order to correct this inflexibility, the control information should be sent separate from a signal that indicates when the memory device is to begin an

PUBLIC VERSION

66 action. (JX-2 at 10:20-33; JX-3, at 3:24-25, 8:57-63, 10:27-34; Subramanian, Tr. at 1177:2-1179:9; RX-310 at 6:34-40.) Dr. Subramanian agreed that Respondents’ position as to the AccessType[1:2] bits is that what was expressly distinguished in the Barth I specification. (Subramanian Tr. 1190:16-1191:21.) Therefore, the ALJ finds that Respondents and Staff have failed to show by clear and convincing evidence that Farmwald discloses the claimed “signal” and, therefore, Farmwald does not anticipate the ‘109 Patent. 661 ID at 53-56; see also 661 Comm’n Op. at 4-9 (discussing the Barth I invalidity issues on which the Commission granted review in the 661 investigation). Thus, both OUII’s interpretation of the “signal” limitation of the ‘109 patent as being broader than the related “strobe signal” limitation of the ‘405 and ‘353 patents and the corresponding argument that the ‘109 patent is invalid were fully considered and rejected in the 661 investigation. While the Commission’s final decision in the 661 investigation was pending on appeal to the Federal Circuit, the Board of Patent Appeals & Interferences (BPAI) at the USPTO issued multiple decisions in reexamination proceedings involving the Barth I patents. See generally SX-8 to 10 (reexamination proceedings for the Barth I patents). Notably, the BPAI found that the “signal” limitation of the ‘109 patent is broad enough to read on request packet based prior art. See SX-10, Decision on Appeal at 9-20. The BPAI thus rejected the asserted ‘109 patent claims as anticipated by a patent from the same Farmwald-Horowitz patent family that had been considered and distinguished in the 661 investigation. See id.; 661 ID at 53-56. Given the above, OUII respectfully submits that the USPTO’s interpretation of the “signal” limitation in the ‘109 patent and the corresponding applicability of request packet based prior art (e.g., Farmwald-Horowitz (RX-4269)) to the asserted ‘109 patent claims is contrary to the position taken by the Commission during the 661 investigation. Thus, the Commission cannot adopt the USPTO’s position without effectively reversing the position previously taken in the 661 investigation as to the same limitation and analogous prior art.

PUBLIC VERSION

67 2. SyncLink is Cumulative With Other Request Packet Prior Art That Was Submitted And Considered During Prosecution

Should the Commission agree with the USPTO’s interpretation of the “signal” limitation, OUII nevertheless submits that SyncLink (RX-4270C) is not material because it is cumulative of other request packet prior art (e.g., Farmwald-Horowitz (RX-4269)) that was submitted, considered, and overcome during prosecution.35 Indeed, the Respondents’ petition for review makes this point clear. Namely, in their petition the Respondents contend: [G]iven the alleged similarities between Farmwald and SyncLink/RamLink, the rejection of one or more claims over Farmwald ‘037 by the BPAI is compelling evidence that a reasonable examiner would likewise have found one or more claims of the ‘109 patent invalid in view of SyncLink/RamLink. Resp. Pet. at 33. The Respondents thus implicitly recognize that SyncLink and FarmwaldHorowitz both disclose a request packet based system, and that a hypothetical rejection over SyncLink would involve largely the same teachings as in Farmwald-Horowitz. See 10765C, Przybylski Rebuttal Q/A 371-402 (Farmwald-Horowitz); id. at Q/A 403-426 (SyncLink). More specifically, both references use request packets to provide certain information to a memory device as part of a read or write operation:

See Aventis Pharma S.A. v. Hospira, Inc., --- F.3d ---, 2012 U.S. App. LEXIS 7095, at *21 (Fed. Cir. Apr. 9, 2012) (citations omitted) (“[E]ven if the withheld reference is not sufficient to invalidate the claim in district court, ‘the reference may be material if it would have blocked patent issuance under the PTO’s different evidentiary standards.’”).

35

PUBLIC VERSION

68 RX-4269 at Figure 4 (above left, Farmwald-Horowitz request packet); RX-4270C.0043 at Figure 19 (above right, SyncLink request packet). In fact, these two references provide the critical sampling related information – e.g., the “signal” limitation of the asserted ‘109 patent claims – in fundamentally the same way. See, e.g., OUII Pet Resp. at 49. For at least these reasons, OUII respectfully submits that SyncLink (RX-4270C) is cumulative with Farmwald-Horowitz (RX-4269). Under governing precedent, cumulative references such as SyncLink cannot support a finding of inequitable conduct. See Leviton Mfg. Co. v. Universal Sec. Instruments, Inc., 606 F.3d 1353, 1359 (Fed. Cir. 2010) (quoting Larson Mfg. Co. v. Aluminart Prods., Ltd., 559 F.3d 1317 (Fed. Cir. 2009)) (“[A] withheld otherwise material reference is not material if it is merely cumulative to, or less relevant than, information already considered by the examiner.”). Thus, the Commission should affirm the ID’s rejection of the Respondents’ inequitable conduct defense as it relates to this reference regardless of whether the 661 claim construction or the USPTO’s claim construction is adopted. d. If inequitable conduct were to be found for the ’109 patent, whether the ’405 and ’353 patents are also unenforceable.

As an initial matter, Question 5(d) appears to be based on the assumption that the USPTO’s broad interpretation of the “signal” limitation of the ‘109 patent and narrower interpretation of the “strobe signal” limitations of the related ‘353 and ‘405 patents is appropriate in this investigation.36 See discussion of Questions 5(a) to (c) supra. With this assumption in mind, Question 5(d) seeks briefing on the extent to which the ‘405 and ‘353 patents are tainted by inequitable conduct as to the ‘353 patent under the doctrine of “infectious unenforceability.”

36

A more complete history of the Barth I patent family is provided in the ID. See ID at 250-254.

PUBLIC VERSION

69 For the reasons discussed below, OUII submits that a finding of inequitable conduct as to the ‘109 patent should not taint the related ‘353 and ‘405 patents as well. Specifically, the Federal Circuit has held that inequitable conduct occurring during prosecution of a patent can, in certain circumstances, also render unenforceable related patents within the same patent family. See Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) (citing Consol. Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804, 808-12 (Fed. Cir. 1990)) (“[T]he taint of a finding of inequitable conduct can spread from a single patent to render unenforceable other related patents and applications in the same technology family.”). However, related patents are not automatically unenforceable despite their familial ties. See AGFA Corp. v. Creo Prods. Inc., 451 F.3d 1366, 1379 (Fed. Cir. 2006) (citing Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1332 (Fed. Cir. 1998) (discussing situations in which the related patent claims subject matter sufficiently distinct from the application in which inequitable conduct took place so as to preclude infectious unenforceability); Pharmacia Corp. v. Par Pharma., Inc., 417 F.3d 1369, 1375 (Fed. Cir. 2005) (holding inequitable conduct as to one patent does not automatically extend to a related patent despite the two patents being tied by way of a terminal disclaimer). Rather, infectious unenforceability typically occurs when the inequitable conduct (i) takes place early in prosecution of a patent family, and (ii) is material to the claims of one or more child applications. See AGFA, 451 F.3d at 1379 (distinguishing situations in which a child application has claims that bear little to no relation to inequitable conduct that occurred during prosecution of a parent application from cases in which infectious unenforceability was found as to child applications). No such circumstance exists here. As the reexamination proceedings make clear, the USPTO is of the view that the ‘353 and ‘405 patents are directed at a narrow “strobe signal” embodiment, whereas the

PUBLIC VERSION

70 ‘109 patent is more broadly directed at “non-strobe, or variable delay value” embodiments as well. Compare SX-10, Decision on Appeal at 9-20 (BPAI invalidating the asserted ‘109 patent claims as anticipated by the delay value in request packet prior art and describing the two distinct embodiments disclosed in the specification) with SX-8, Decision on Appeal at 22-33 (BPAI not rejecting the ‘405 patent claims over the same disclosure in the same prior art). Question 5(d) appears to be premised on this same distinction – i.e., an assumption that SyncLink (RX-4270C) is material to the ‘109 patent because the reference discloses a “signal” embodiment that anticipates the broadly worded ‘109 patent claims, but is not material to the ‘353 and ‘405 patents because the reference fails to disclose the narrower “strobe signal” embodiment to which these earlier patents are directed.37 In OUII’s view, this distinction made by the USPTO and implicit in Question 5(d) demonstrates why infectious unenforceability should not apply as to the ‘353 and ‘405 patents. The withheld SyncLink art (RX-4270C) is at most potentially relevant (as an anticipatory reference) to the broad “signal” claims of the ‘109 patent, and is not relevant to the ‘353 and ‘405 patents, which recite materially different and narrower “strobe signals” not taught or suggested by SyncLink. Because SyncLink is not relevant to the ‘353 and ‘405 patents, inequitable conduct as to the ‘109 patent that is based on SyncLink should not taint the earlier ‘353 and ‘405 patents. See Baxter, 149 F.3d at 1332 (rejecting allegations of infectious unenforceability that were premised on prior art withheld during prosecution of a parent application that was not material to the issued claims in the related application).

Without such a distinction, there would be no need to indirectly find inequitable conduct as to the ‘353 and ‘405 patents through the doctrine of infectious unenforceability.

37

PUBLIC VERSION

71 For these additional reasons, OUII respectfully submits that the Commission should affirm the ID’s rejection of the Respondents’ inequitable conduct defense as it relates to the ‘353 and ‘405 patents. VI. QUESTION 6 - DOMESTIC INDUSTRY The Commission’s next question asks for briefing on the ID’s finding that Rambus has made substantial investments in a licensing-based domestic industry as to the Barth I and Dally patents. See ID at 341-364. In particular, the Commission asks: Whether, given the particular scope of the licensed field of each Rambus license, Rambus should nonetheless be required to allocate licensing expenses on a patentby-patent basis. Notice at Question 6.38 For the reasons discussed below, OUII respectfully submits that the Commission should affirm the ID’s domestic industry findings. As background, in the 661 investigation the presiding Judge found that Rambus had made substantial investments in a licensing-based domestic industry as to the same Barth I patents that are again asserted in this investigation, and on a similar evidentiary record.39 Most importantly, the 661 DI Op. did not refer to or require an allocation of Rambus’s licensing investments on a patent-by-patent basis. See generally 661 DI Op. Nor did Rambus identify any evidence in the 661 record by which such an allocation could be made. See id. The lack of such evidence on

38

OUII notes that the Commission is currently reviewing a licensing-based domestic industry finding in another investigation to which OUII is not a party, and has requested briefing on a question directed at the extent to which the complainant must allocate its portfolio licensing investments to the patents-in-suit. See 77 Fed. Reg. 20048, EDIS Doc. ID 476627 at Question 15 (Apr. 3, 2012). Should the Commission issue a public opinion in that investigation that addresses allocation, OUII may seek leave to address the Commission’s opinion in this investigation. See Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Order No. 21, EDIS Doc. ID 411759 (Oct. 7, 2009) (“661 DI Op.”).

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PUBLIC VERSION

72 allocation is significant to Question 6 because the presiding Judge found a licensing-based domestic industry despite arguments by the 661 respondents that Rambus failed to show a nexus between its licensing investments and the asserted patents given the particular scope of the licensed field of each Rambus license. See id. at 6 (summarizing the respondents’ arguments on domestic industry); Notice at Question 6 (addressing allocation “given the particular scope of the licensed field of each Rambus license”). The respondents also petitioned the Commission to review the 661 DI Op. based on the allegedly flawed nexus showing, which the Commission denied.40 Thus, the 661 DI Op. became the decision of the Commission as it relates to whether Rambus was required to allocate its investments to show a nexus between those investments and the Barth I patents.41 After determining not to review the 661 DI Op., the Commission subsequently issued an opinion in another investigation in which the Commission addressed more specifically whether a complainant must allocate investments to the asserted patents within a portfolio of licensed patents. See Certain Multimedia Display and Navigation Devices, Inv. No. 337-TA-694, Comm’n Op., 2011 ITC LEXIS 1416 (July 22, 2011) (“Multimedia Display”). In particular, the Commission held that a complainant who engages in portfolio licensing can show substantial investments in licensing particular patents within that portfolio without allocating investments on See Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Petition for Review of Order No. 21, EDIS Doc. ID 412766 (Oct. 16, 2009); Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Notice of Commission Determination, EDIS Doc. ID 414079 (Nov. 6, 2009). The Dally patents asserted in this investigation were not asserted in the 661 investigation, and thus were not expressly considered by the Judge or the Commission in the context of the 661 DI Op. OUII submits that the analysis set forth in the 661 DI Op. is nonetheless instructive as to the Dally patents due to the similarities in Rambus’s licensing activities regarding the Dally and Barth I patent families. See ID at 341-364 (analyzing Rambus’s licensing activities as to both of the asserted patent families).
41 40

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73 a patent-by-patent basis. This opinion appears to be relevant to the analysis of Rambus’s licensing-based domestic industry given the opinion favorably cites to the domestic industry analysis in the 661 DI Op. as exemplary of how a complainant can prove that it has made substantial investments under Section 337(a)(3)(C). Relevant excerpts from the opinion include:  “Our administrative law judges have addressed the issue of whether a nexus between the activities and the asserted patents exists in prior investigations. See . . . Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA661, Order No. 21 (unreviewed) (Oct. 7, 2009) . . . .” Multimedia Display, 2011 ITC LEXIS 1416 at *14, n. 5; “Evidence demonstrating the relative value and/or importance of an asserted patent in a portfolio may indicate the focus of complainant’s investment and, in turn, may reflect the strength of the nexus between these activities and the asserted patent. See . . . Semiconductor Chips Having Synchronous DRAM Controllers at 7-9 (finding a nexus where an asserted patent was part of a particular patent portfolio where complainant had different portfolios for different technologies) . . . .” Multimedia Display, 2011 ITC LEXIS 1416 at *18 n.6; “[T]he asserted patent may be shown to be particularly important or valuable within the portfolio where there is evidence that (1) it was discussed during the licensing negotiation process, (2) it has been successfully litigated before by complainant, (3) it relates to a technology industry standard, (4) it is a base patent or a pioneering patent, (5) it is infringed or practiced in the United States, or (6) the market recognizes its value in some other way. See . . . Semiconductor Chips Having Synchronous DRAM Controllers at 6-9 (finding that complainant's technology which is licensed is in fact covered by the asserted patents and noting that complainant highlighted the asserted patents during actual licensing negotiations) . . . .” Multimedia Display, 2011 ITC LEXIS 1416 at *18 n.7; and “When a complainant’s licensing activity is performed and directed within the United States, this weighs in favor of a strong nexus between the activities and the United States. See . . . Semiconductor Chips Having Synchronous DRAM Controllers at 5, 8 (noting that complainant's licensing activities are based out of its headquarters in the United States).” Multimedia Display, 2011 ITC LEXIS 1416 at *24 n. 11.

Consistent with this precedent, the presiding Judge found in this investigation that Rambus has again shown substantial investments in a licensing-based domestic industry as to the Barth I

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74 patents previously asserted in the 661 investigation and reasserted in this investigation, and, for substantially similar reasons, that such an industry also exists as to the newly asserted Dally patents. See ID at 347-364. To the extent that the Respondents challenge the viability of the 661 DI Op. after the issuance of Multimedia Display, the Commission has already considered and rejected that challenge during the appellate proceedings involving the 661 investigation. More specifically, the Commission submitted a Rule 28j letter to the Federal Circuit in which it argued to the Court that the 661 DI Op. was consistent with Multimedia Display and that it should be affirmed on appeal. See Rambus Inc. v. Int’l Trade Comm’n, Case No. 2010-1483 (Aug. 11, 2011) (Rule 28j letter from the Office of the General Counsel to the Clerk of Court). 42 In particular, the letter explains that Rambus’s licensees practice the Barth I patents, that the Barth I patents are valuable parts of Rambus’s overall patent portfolio, and that the 661 DI Op. thus appropriately found a nexus under a Multimedia Display type analysis. OUII submits that the Commission’s position is consistent with the fact that Multimedia Display favorably cites to the 661 DI Op. for various points. Moreover, both are also consistent with the analysis set forth in the 753 ID. In light of the 661 DI Op. and Multimedia Display - neither of which required an allocation of licensing investments on a patent-by-patent basis - OUII submits that the Commission should affirm the ID’s finding of a licensing-based domestic industry irrespective of the particular scope of the license agreements on which Rambus again relies.

A copy of the Commission’s Rule 28j letter is attached as Exhibit 4 to the Opposition of the Commission Investigative Staff To Respondents’ Motion For Summary Determination That Rambus Has Not Satisfied The Domestic Industry Requirement Of 19 U.S.C. § 1337 With Respect To Any Of The Asserted Patents, EDIS Doc. ID 457498 (Aug. 22, 2011).

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75 VII. QUESTION 7 - PATENT EXHAUSTION (Barth patents) The Commission has requested briefing on the following two issues that generally relate to the ID’s finding that Rambus has exhausted its rights in the Barth I patents as to certain [ ] products that include licensed Samsung memory devices. See ID at 330-339. Each of

these two issues is discussed below. a. Whether the licensed Samsung memory products substantially embody the Barth patents. 1. Background

The Commission previously requested briefing on whether licensed Samsung memory devices substantially embody the asserted Barth I patent claims in relation to an identical exhaustion defense that nVidia raised in the 661 investigation. Because Rambus consummated its license with Samsung just days before issuance of the 661 ID, the effects of that license were presented to the Commission in the first instance after the close of proceedings before the Judge.43 The Commission nonetheless determined to address the issue, and requested briefing from each party on the effect, if any, of the Samsung license. Citing Quanta, nVidia argued that Samsung’s memory products “substantially embody the asserted claims of the Barth I Patents.”44 See Quanta Computer, Inc v. LG Electronics, Inc., 128 S. Ct. 2109 (2008) (“Quanta”). After the Federal Circuit issued its Fujifilm decision, the Commission sought additional briefing from the parties on the effect of Fujifilm. See Fujifilm Corp. v. Benum, 605 F.3d 1366, 1368 (Fed. Cir.
43

See nVidia Petition at 90-91.

44

See Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Respondents’ Supplemental Brief Regarding Patent Exhaustion, EDIS Doc. ID 427026 at 17 (June 7, 2010) (“nVidia Exhaustion Brief”); see also Brief of the Office of Unfair Import Investigations on Issues Under Review, EDIS Doc. ID 427025 at 5-9 (June 7, 2010) (“OUII Exhaustion Initial Br.”); Reply of the Office of Unfair Import Investigation on Issues Under Review, EDIS Doc. ID. 427487 at 7-10 (June 15, 2010) (“OUII Exhaustion Reply Br.”).

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76 2010) (“Fujifilm”). Rambus provided evidence that Samsung memory devices were sold overseas to nVidia and that nVidia thus failed to satisfy the territoriality requirement of Fujifilm, whereas nVidia provided no evidence on this point.45 On that basis, the Commission found that nVidia had not established exhaustion with respect to any of the accused products.46 2. Discussion

In OUII’s view, the licensed Samsung memory devices substantially embody the invention(s) claimed in the Barth I patents, and, are quite similar to the components addressed by the Court in Quanta.47 Namely, in Quanta the Respondent LGE purchased a portfolio of computer technology method patents that related to the processing, transfer and management of data. Quanta, 128 S. Ct. at 2113. LGE licensed those patents to Intel Corporation, which permitted Intel to make, use and sell microprocessors and chipsets using LGE’s patents. Id. at 2114. Other manufacturers, including Quanta, the petitioner, purchased the licensed components from Intel, and combined them with non-Intel parts to produce computers. Id. LGE sued Quanta for patent infringement on the grounds that the combination infringed LGE’s patents. Id. at 2115. Quanta raised the infringement defense of patent exhaustion and, although the District Court agreed with Quanta, the Federal Circuit determined that exhaustion did not apply because,

45

See Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Complainant Rambus’s Response to the June 22, 2010 Notice of the Commission, EDIS Doc. ID 428148 at 35 (June 25, 2010).

See 661 Comm’n Op. at 17 (“[W]e find that Respondents have failed to demonstrate that Rambus has exhausted its patent rights with respect to accused products that incorporate Samsung memory. Specifically, Respondents have failed to demonstrate that the relevant sales of Samsung memory take place in the United States.”). See OUII Exhaustion Initial Br. at 5-9 (discussing exhaustion); see also OUII Exhaustion Reply Br. at 7-10 (same); OUII Initial Br. at 127-128 (same); OUII Reply Br. at 44 (same); OUII Pre-trial Br. at 108-109 (same).
47

46

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77 among other things, LGE did not license Intel to sell the Intel Products to Quanta for use in combination with non-Intel products. Id. Quanta therefore appealed to the Supreme Court, which reversed. According to the Court, the Intel products “constitute[d] a material part of the patented invention and all but completely practice[d] the patent.” Id. at 2120. Additionally, the Court stated that LGE offered no reason to doubt the conclusion that the only “reasonable use” for the Intel products was to practice LGE’s patents. Id. Applying the reasoning set forth in Quanta, the record shows that the accused products “substantially embody” the asserted Barth I patent claims. Indeed, a significant portion of the infringement evidence put forth by Rambus consisted of memory device datasheets that proved the memory devices used in conjunction with the Respondents’ memory controllers were JEDEC-compliant and thus must receive from Respondents’ memory controllers the signaling dictated by the JEDEC standards. See, e.g., ID at 48-67 (basing infringement of Barth I claims partially on how the memory device performed in response to a signal from the controller). In other words, Rambus proved infringement by focusing on how memory devices must be signaled for proper operation in order to demonstrate that the accused memory controllers indeed send memory devices the signaling required by the asserted claims. In OUII’s view, therefore, the Samsung memory devices substantially embody the essential features of the asserted Barth I patent claims. Additionally, the sale of the Samsung memory device to [ squarely within the facts of Quanta. [ ] also appears to fall

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78

] Accordingly, OUII believes that the doctrine of patent exhaustion is applicable here as the facts of this case are strikingly similar to those present in Quanta. For at least these reasons, OUII respectfully submits that the Commission should affirm the ID’s finding that the licensed Samsung memory devices substantially embody the asserted Barth I patent claims. See ID at 335. b. What evidence, if any, demonstrates that the Samsung memory purchased (by the respondent discussed on the bottom half of page 337 of the ID, see Rambus Pet. 95-97), was ever located in the United States prior to incorporation into products overseas, and whether the respondent took possession of the memory in the United States.

As the Commission previously held in the 661 investigation, exhaustion applies only insofar as the corresponding sale of purportedly licensed components takes place in the United States. See 661 Comm’n Op. at 17. This is often referred to as the “territoriality requirement” of the first sale/exhaustion doctrine. Fujifilm, 605 F.3d at 1371 (holding Quanta “did not eliminate the first sale rule’s territoriality requirement”). With respect to this requirement, the ID held that [ ] was the only Respondent to show that it purchases licensed Samsung memory devices in

the United States and subsequently uses those devices in a subset of its accused products. See ID at 337-339. OUII respectfully submits that the evidence supports the ID’s holding in this regard. See OUII Pet. Resp. at 12 (summarizing the evidence of domestic sales of licensed memory PUBLIC VERSION

79 devices); OUII Pretrial Br. at 109-113 (same); OUII Initial Br. at 128-132 (same); OUII Reply Br. at 43-44 (same); Resp. Pet. Resp. at 93-95 (same). More specifically, [

]. See RX-5413C, Seymour Direct Q/A 70-73, 76, 100-101. [ ]. See id. at Q/A 108-109, 115-128. [

] Id. at 126-128.

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80 [

] RX-5140C.0001. In OUII’s view, this evidence is sufficient to show that [ ] took position

of Samsung memory devices in California prior to incorporating such devices into downstream products. For at least these reasons, OUII respectfully submits that the evidence supports the ID’s holding that the territoriality requirement is satisfied as to [ VIII. QUESTION 8 - Standing (Dally patents) Finally, the Commission has requested briefing on two issues that generally relate to the ID’s finding that Rambus has standing to enforce the Dally patents based on an exclusive license agreement with the owner of record with the USPTO, i.e., the Massachusetts Institute of Technology (“MIT”). See ID at 326-330. Each of these two issues is discussed below. a. Whether Rambus is a bona fide purchaser pursuant to 35 U.S.C. § 261. ] exhaustion defense.

In brief, the Respondents argue that Rambus lacks standing to assert the Dally patents because MIT did not own the Dally patents when it purportedly granted Rambus exclusive licensee rights. See Resp. Pet. at 37-42. More specifically, the Respondents contend that MIT and the University of North Carolina-Chapel Hill (“UNC”) entered into an agreement regarding work to be performed by Dr. Dally while on sabbatical at UNC and that this agreement PUBLIC VERSION

81 automatically vested ownership of the Dally patents in UNC. See id.; RX-2891C, November 19, 1996 Subcontractor Agreement. While the ID ultimately rejected the Respondents’ standing defense, it does not address OUII’s argument that the UNC-MIT agreement is unenforceable against Rambus under the bona fide purchaser provision of 35 U.S.C. § 261. See ID at 326-330. This provision states: An assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage. 35 U.S.C. § 261. As previously argued in post-trial briefing, OUII submits that Section 261 applies to the facts of this investigation. See OUII Initial Br. at 204-210; OUII Reply Br. at 95-98. Specifically, the unrebutted evidence shows that MIT (i.e., the owner of record with the USPTO) granted Rambus (i.e., a subsequent purchaser) exclusive licensee rights in the Dally patents for valuable consideration prior to institution of this investigation. See, e.g., Exhibits 8, 12A-12E to Complaint; Rambus Pre-trial Br. at 46-47; CX-9547C, Smith Direct at Q/A 37-47; JX-32C at 14:09-14, 22:10-22, 138:04-06. Rambus’s exclusive license with MIT qualifies as a “purchase” of the Dally patents for purposes of Section 261 because Rambus holds all substantial rights under those patents. See Rhône-Poulenc Agro, S.A. v. DeKalb Genetics Corp., 284 F.3d 1323, 1334 (Fed. Cir. 2002) (“Rhône”) (holding that a non-exclusive license differs from an exclusive license for purpose of Section 261, which requires the subsequent purchaser hold all substantial rights in the patent). Thus, Rambus is a subsequent purchaser for valuable consideration under Section 261. With respect to notice, the record is devoid of evidence to suggest that Rambus had actual or constructive notice of UNC’s potential ownership claim prior to Rambus purchasing its

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82 exclusive licensee rights from MIT. Specifically, the UNC-MIT agreement (RX-2891C) was not recorded in the USPTO within three months from its date, or prior to Rambus’s purchase of rights in the Dally patents. Nor is there any evidence to suggest that UNC has ever asserted an ownership claim to MIT prior to institution of this investigation. Nor is there any evidence to suggest that UNC or MIT made Rambus aware of the intellectual property provision in the UNCMIT agreement (RX-2891C) prior to the Respondents raising their standing defense in this investigation.48 Indeed, UNC failed even to notify MIT of UNC’s ownership claim prior to entering into a purported licensing agreement with certain of the Respondents despite explicit language in the UNC-MIT contract that appears to require such notice.49 Thus, Rambus was not on actual or constructive notice of the UNC-MIT agreement or UNC’s potential ownership claim in the critical timeframe. While the Respondents contend that Rambus “was on inquiry notice of UNC’s rights,” the record fails to support this contention. See Resp. Pet. Reply at 98. More specifically, the Respondents rely on an article included in the original Dally application, i.e., Provisional Application No. 60/050,098, as purportedly demonstrating that Rambus was on inquiry notice based on the application’s reference to Dr. Poulton of UNC and a DARPA contract that provided funding for Dr. Dally’s research. See RX-2150.0023; Smith, Tr. 552:07-555:04; Resp. Reply Br. Dr. Poulton and Mr. Quigg of UNC admitted at trial that neither of them had informed Rambus (or any other party) that UNC was the true owner of the Dally patents in the critical timeframe. See Poulton, Tr. 1708:20-23, 1779:15-1780:02; Quigg, Tr. 2137:07-14. Dr. Poulton even went so far as to say that he had never actually seen the UNC-MIT agreement. See Poulton, Tr. 1704:06-20. Rambus employee Mr. Smith similarly testified that Rambus was unaware of the UNC-MIT agreement prior to this investigation. CX-10768C, Smith Q/A 6-11. Finally, Dr. Dally testified that he was aware of the subcontract but could not remember the details of that agreement. JX-032C at 76:18-77:01. See RX-2023.0015; Quigg, Tr. 2140:19-2142 (testifying as to RX-2023.0015); RX2023.0025; Quigg, Tr. 2142:12-2143:01 (testifying as to RX-2023.0025); RX-2023.0026; Quigg, Tr. 2143:02-23 (testifying as to RX-2023.0026).
49 48

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83 at 50. The Respondents further rely on a UNC web site that purportedly demonstrates inquiry notice based on its disclosure of Fast-Links, a project which was funded pursuant to the DARPA contract and involved work by both Dr. Dally (of MIT) and Dr. Poulton (of UNC). See Smith, Tr. 556:04-557:12; Resp. Reply Br. at 50. However, these “facts” do not show inquiry notice as to UNC’s potential ownership claim. Rather, knowledge of the DARPA contract (RX-2306) at most put Rambus on notice of the Government – not UNC – potentially having rights under the Dally patents. The UNC-MIT agreement (RX-2891C) is wholly separate and distinct from the DARPA contract (RX-2306), involves different parties than the DARPA contract, is not referred to within the DARPA contract, and was separately entered into months after the DARPA contract. See Quigg, Tr. 2092:14-2093:02. Similarly, reference to Dr. Poulton of UNC in the DARPA contract and on the UNC website at most put Rambus on inquiry notice as to Dr. Poulton potentially being an unnamed inventor on the Dally patents. Even assuming that Rambus should have spoken with Dr. Poulton about inventorship and nonetheless inquired about ownership as well, it would have learned nothing about UNC’s potential ownership claims because Dr. Poulton believed that UNC had no rights under the Dally patents: Q. Now, at that time in June of 1999, you did not believe that the University of North Carolina had any rights to the transmitter equalization of the Dally patents, correct? That was my belief at the time, yes.

A.

Poulton, Tr. 1749:02-06. Q: [D]id you have an understanding regarding DARPA, UNC, and MIT, if something was your invention, did MIT have an interest in that as well, if something was merely Dally’s invention, was that all MIT, or who would have an interest in the various inventions? That’s a really good question. At the time, it seemed to make sense to me for Dally, who worked at MIT, to assign his inventions to MIT and for me to assign my inventions to UNC. I saw nothing wrong with that, with that model.

A:

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84 Id. at 1779:03-14. Thus, neither the DARPA contract, nor the UNC website, nor Dr. Poulton’s general involvement in the FastLink’s project put Rambus on inquiry notice as to UNC’s potential ownership claim under the UNC-MIT agreement (RX-2861C). The Respondents’ remaining attempts to distinguish Section 261 from the facts established at trial are similarly without merit. For example, the Respondents have argued that the bona fide purchaser provision of Section 261 can only be used by an alleged infringer as a defense to a claim of patent infringement. See Resp. Pet. Reply at 51-52 (citing V-Formation, Inc. v. Benetton Group SpA, 2006 WL 650374, at *8 (D.Colo. Mar. 10, 2006)). However, the Federal Circuit held to the contrary in FilmTec. Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991) (“FilmTec I”). In that case, the Court was faced with a situation much like that of the instant investigation, wherein the plaintiff (FilmTec) purportedly lacked standing because the inventor (Cadotte) had previously assigned away his rights in the patent to another company (MRI) and thus had no rights to assign to the plaintiff as of the subsequent assignment. See FilmTec, 939 F.2d at 1570-1571. Notably, the Court held that the plaintiff could qualify as a bona fide purchaser under Section 261 and thereby cut off the rights of the prior assignee if certain facts were established on remand: Since this matter will be before the trial court on remand, it may be useful for us to clarify what is required before FilmTec can properly be considered a subsequent purchaser entitled to the protections of § 261. In the first place, FilmTec must be in fact a purchaser for a valuable consideration. This requirement is different from the classic notion of a purchaser under a deed of grant, where the requirement of consideration was a formality, and the proverbial peppercorn would suffice to have the deed operate under the statute of uses. Here the requirement is that the subsequent purchaser, in order to cut off the rights of the prior purchaser, must be more than a donee or other gratuitous transferee. There must be in fact valuable consideration paid so that the subsequent purchaser can, as a matter of law, claim record reliance as a premise upon which the purchase was made. That, of course, is a matter of proof. In addition, the subsequent transferee/assignee -- FilmTec in our case -- must be without notice of any such prior assignment. If Cadotte’s contract with MRI PUBLIC VERSION

85 contained a provision assigning any inventions made during the course of employment either to MRI or directly to the Government, Cadotte would clearly be on notice of the provisions of his own contract. Since Cadotte was one of the four founders of FilmTec, and the other founders and officers were also involved at MRI, FilmTec may well be deemed to have had actual notice of an assignment. Given the key roles that Cadotte and the others played both at MRI and later at FilmTec, at a minimum FilmTec might be said to be on inquiry notice of any possible rights in MRI or the Government as a result of Cadotte’s work at MRI. Thus once again, the key to FilmTec’s ability to show a likelihood of success on the merits lies in the relationship between Cadotte and MRI. Id. at 1574. Thus, complainants such as Rambus can avail themselves of the bona fide purchaser provision of Section 261 if the corresponding facts are established at trial. To the extent that the Respondents rely on a subsequent case involving the same plaintiff as effective overruling FilmTec I, their reliance is misplaced. See Resp. Reply Br. at 51 (citing FilmTec Corp. v. Hydranautics, 982 F.2d 1546, 1553 (Fed. Cir. 1992) (“FilmTec II”)). In FilmTec II, the Federal Circuit interpreted and applied the Saline Water Conversion Act of 1971, Pub. L. No. 92-60, 85 Stat. 159, which includes a provision that governs the ownership of inventions developed under that particular act. See FilmTec II, 982 F.2d at 1548-1551. Specifically, the Court found that title vested automatically in the United States government pursuant to an assignment clause in the act, which deprived FilmTec of standing to enforce the patent-in-suit against Hydranautics. See id. at 1554. Being directed solely at the Saline Water Conversion Act, FilmTec II does not address the bona fide purchaser provision of Section 261. Nor did the Court in FilmTec II find error in the Court’s previously analysis of that statute in FilmTec I. See FilmTec Corp. v. Allied-Signal, Inc., 1993 U.S. App. LEXIS 414, at *2-3 (Fed. Cir. 1993) (unpublished) (vacating a preliminary injunction due to the finding in FilmTec II that ownership of the patent-in-suit automatically vested in the United States government pursuant to the Saline Water Conversion Act of 1971). Thus, FilmTec II provides no relevant guidance on the bona fide purchaser issue presented in FilmTec I and in this investigation.

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86 Finally, the Respondents have argued that Rambus is not a “purchaser” under Section 261 because it received only licensee rights rather than an outright, full assignment of the Dally patents. See Resp. Pre-trial Br. at 192. Again, Federal Circuit precedent suggests otherwise. In Rhône, the Court explained that a purchaser under Section 261 must hold “all substantial rights” to the patent and thus either be an assignee or an exclusive licensee. 284 F.3d at 1334. Rambus is an exclusive licensee to the Dally patents with all substantial rights as to those patents, and thus qualifies as a purchaser under Rhône. For at least these reasons, OUII respectfully submits that the UNC-MIT agreement (RX2891C) cannot be enforced against Rambus, who is a bona fide purchaser under Section 261. b. Whether UNC’s claim of ownership is barred by laches.

In the second part of the question, the Commission seeks briefing on laches arising out of UNC’s purported failure to timely raise a claim of ownership to the Dally patents. With respect to this issue, OUII submits that a finding of laches would not change the outcome of the investigation because it would not prevent the Respondents from raising lack of standing as an affirmative defense. In fact, the Federal Circuit recently considered and rejected such an allegation of laches in an analogous case. See Stanford v. Roche, 583 F.3d 832, 838-839 (Fed. Cir. 2009), aff’d 131 S. Ct. 2188 (2011). More specifically, the appellant in Stanford challenged a district court’s rejection of its ownership counterclaim as barred under the doctrine of laches. See id. at 839 (“The district court determined that . . . the doctrine of laches foreclosed Roche’s counterclaim for a judgment of ownership . . . .”). The Federal Circuit reversed, holding that the appellant’s ownership counterclaim could alternatively be characterized as an affirmative defense of lack of standing, and that laches cannot be used to bar such a defense. See id. at 840. For the same reasons, OUII submits that a finding of laches would not bar the Respondents from

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87 raising their analogous lack of standing defense in this investigation. Thus, the Commission need not address whether UNC’s claim of ownership is barred by laches. IX. REMEDY The Commission has requested briefing on the remedy that should be ordered, effects of that remedy (if any) on the public interest, and the amount of bond that should be imposed, in the event that a violation of Section 337 is found by the Commission. See Notice at 5. In OUII’s view, the Commission should adopt the remedy and bonding recommendations set forth in the ID. See ID at 368-376. Indeed, these recommendations are consistent with the remedy and bond previously issued by the Commission in the context of the 661 investigation, which also involved the Barth I patents and similarly situated respondents. See 661 Comm’n Op. at 10-16. Each of these issues is discussed more fully below. a. A Limited Exclusion Order Is Appropriate

The Commission has “broad discretion in selecting the form, scope and extent of the remedy.” Viscofan, S.A. v. United States Int’l Trade Comm’n, 787 F.2d 544, 548 (Fed. Cir. 1986). A limited exclusion order is the usual remedy when a violation of Section 337 is found. In particular, the statute states that “[i]f the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States . . . .” 19 U.S.C. § 1337(d)(1). A general exclusion order, conversely, is available only in very limited circumstances. See 19 U.S.C. § 1337(d)(2). If the Commission finds a violation of Section 337 has been proven, OUII submits that the proper remedy in this investigation is a limited exclusion order against the products of the remaining Respondents that include an infringing semiconductor chip with a memory controller (Barth I

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88 patents) or transmitter circuit (Dally patents) manufactured by or on behalf of LSI and/or STM. A proposed exclusion order to this effect is attached hereto as Exhibit A.50 1. Rambus’s Arguments Concerning a General Exclusion Order Should Be Rejected

Here, Rambus asserts that “a general exclusion order directed to Respondents’ infringing products and any downstream products containing such infringing products, regardless of the manufacturer/importer of those downstream products, is appropriate.” Rambus Pretrial Br. at 438-439 (emphasis in original). OUII disagrees. Pursuant to 19 U.S.C. § 1337(d)(2), the Commission may order a general exclusion from entry into the United States only if such an exclusion is necessary to prevent circumvention of an exclusion order limited to products or named persons or there is a pattern of violation and it is difficult to identify the source of the infringing products. 19 U.S.C. § 1337(d)(2). The Commission focuses principally on the statutory language itself in determining whether to issue a general exclusion order. Certain Ground Fault Circuit Interrupters and Products Containing Same, Inv. No. 337-TA-615, Comm’n Op. at 25 (March 26, 2009) (noting that the Commission no longer considers the Spray Pumps factors to be the proper analysis for determining whether a general exclusion order should issue) (“Interrupters”); Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-605, Comm’n Op. at 65-66 (June 3, 2009)

OUII notes that its proposed exclusion order is explicitly limited to semiconductor chips containing an infringing memory controller or transmitter circuit manufactured by or on behalf of Supplier Respondents LSI or STM, and downstream products containing same that are manufactured by or on behalf of any one or more of the remaining Respondents. This limitation is intended to exclude from the scope of the order: (1) other semiconductor chips (i.e., that do not contain a memory controller or transmitter circuit) manufactured by or on behalf of LSI or STM; (2) downstream products that include an infringing semiconductor chip from a supplier other than LSI and STM; and (3) downstream products of unnamed entities that include an infringing semiconductor chip manufactured by or on behalf of LSI or STM. Analogous limitations have been added to the proposed cease and desist order attached hereto as Exhibit B.

50

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89 (focusing on the statutory language in determining whether to issue a general exclusion order) (“Semiconductor Chips”); Certain Hair Irons and Packaging Thereof, Inv. No. 337-TA-637, Comm’n Op. at 3 (July 20, 2009) (same) (“Hair Irons”). In OUII’s view, the evidence fails to show that a general exclusion order is warranted under either subsection (d)(2)(A) or (B). See ID at 370-371 (finding that Rambus has failed to show that a general exclusion order is warranted in this investigation). Turning first to subsection (d)(2)(B), the evidence does not show that it is sufficiently difficult for Rambus to identify the source of infringing products to justify imposing a general exclusion order under this subsection. See, e.g., Interrupters at 26 (holding large scale infringement does not itself establish that it is difficult to identify the source of infringing products). In fact, as the Commission explained in the 661 investigation, the large number of Respondents identified by Rambus in its Complaint suggests the opposite: Regarding Rambus’s argument that it is difficult to identify the source of infringing products, Rambus has named NVIDIA, along with sixteen downstream purchasers, as the only named respondents and sources of infringing goods in this case. Therefore, identifying the source of infringing goods in this case appears straightforward. 661 Comm’n Op. at 12. Rambus also cannot point to the Respondents’ purported failure to identify some of their customers during discovery when it did not seek to compel that discovery as part of this investigation, and when customer lists were in fact produced by at least the Supplier Respondents LSI and STM. See RX-5608C (LSI); RX-5640C (STM). And, while Rambus criticizes LSI and STM for not disclosing the extent to which their customers import downstream products into the United States, Rambus fails to point to any evidence to suggest that they had knowledge of such importation. See Rambus Reply Br. at 147 (addressing imported products of undisclosed customers of MediaTek, but not addressing any such products

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90 or any such customers of LSI and/or STM). For at least these reasons, the evidence does not show that a general exclusion order is warranted under Section 337(d)(2)(B). Turning next to subsection (d)(2)(A), the evidence also fails to show that a general exclusion order is necessary to prevent circumvention of an exclusion order limited to products of the named Respondents. 19 U.S.C. § 1337(d)(2)(A). The fact that certain semiconductor chips containing a memory controller and/or transmitter circuit implicated by this investigation may be manufactured oversees and incorporated into downstream products prior to being imported into the United States is irrelevant because this was a pre-existing practice known to Rambus. Semiconductor Chips at 66-67 (holding that a pre-existing practice of manufacturing accused chips overseas and incorporating them into downstream products prior to importation into the United States cannot be the basis for a conclusion that a general exclusion order is needed to preclude circumvention). Further, the record lacks evidence demonstrating that the remaining Respondents will likely induce unidentified customers or manufacturers to evade a limited exclusion order or that foreign manufacturers of the Respondents’ products are likely to do so themselves. See 661 Comm’n Op. at 12 (holding Rambus failed to show circumvention by way of international third party distributors/resellers). For at least these reasons, the evidence also does not show that a general exclusion order is warranted under Section 337(d)(2)(A). Given the above, OUII does not believe that imposition of a general exclusion order is justified in this investigation. Accordingly, in the event that a violation is found as to the Barth I patents, OUII believes that a limited exclusion order should be issued that extends to the Respondents’ products that incorporate an infringing semiconductor chip that includes a memory controller manufactured by or on behalf of Respondents LSI and/or STM. In the event that a violation is found as to the Dally patents, OUII believes that a limited exclusion order

PUBLIC VERSION

91 should be issued that extends to the Respondents’ products that incorporate an infringing semiconductor chip that includes a transmitter circuit manufactured by or on behalf of Respondents LSI and/or STM. 2. Respondents’ Arguments Concerning Their Own Downstream Products Should Be Rejected

To the extent that the Respondents argue that “any limited exclusion order should not extend to downstream products, or at least not to all downstream products,” OUII agrees as to the latter but not the former. See Respondents’ Reply Br. at 148. More specifically, the evidence shows that: (1) the importance of the accused chips to operation of the downstream products is high; (2) a limited exclusion order (as proposed by OUII) would issue only as to the named Respondents; (3) Rambus would be denied effective relief if downstream products were not included as the accused chips are almost always imported as part of a larger product; (4) licensed products are available as alternatives to the accused chips; (5) there is a high likelihood that the downstream products of the named Respondents include the accused chips; (6) an appropriate certification provision can be added (and is included in OUII’s proposed order) to reduce the risk that legitimate trade would be disrupted, as well as the burden on Customs to identify products not covered by the exclusion order; and (7) the relative value of the infringing component is high in certain accused products. See OUII Initial Br. at 227-228 (discussing evidence regarding factors (1) to (7)); ID at 372 (same). Further, the Respondents admit that they can obtain a license to at least the Barth I patents on reasonable terms pre-negotiated by a European commission in the event that the Commission issues an exclusion order for a violation of Section 337.51 These facts support inclusion of downstream relief as to the Respondents, but not
51

See Respondents’ Pretrial Br. at 314 (“In order to conclude a European Commission investigation into Rambus's patent and standard-setting misconduct, Rambus represented that it would accept specified royalties for memory controllers covered by its patents.”). PUBLIC VERSION

92 as to unnamed entities. See Certain Erasable Programmable Read-Only Memories, Components Thereof, Products Containing Such Memories, and Processes for Making Such Memories, Inv. No. 337-TA-276, USITC Pub. 2196 (May 1989). Should Respondents ASUS, Cisco, HP, Seagate, and/or others attempt to rely on the testimony of Dr. Vander Veen as purportedly demonstrating that exclusion of certain of their downstream products is not warranted, such reliance is misplaced. See generally RX-6290C, Vander Veen Rebuttal (discussing RX-6290C). As the ID explains on pages 372 to 373, Dr. Vander Veen admitted at trial that he performed solely a quantitative analysis in determining the value of the infringing components relative to the value of the downstream products, and thus could not opine on the extent to which the infringing components contribute to the operation and functionality of the downstream products. Vander Veen, Tr. 1782:11-1783:25. In addition, Dr. Vander Veen’s quantitative analysis is suspect given his: (1) use of inflated pricing information (Vander Veen, Tr. 1785:22-1791:13); (2) failure to distinguish certain downstream products (e.g., motherboards, server cards, hard drives, etc.) that are imported without being incorporated into larger downstream products (e.g., computers, servers, etc.) (Vander Veen, Tr. 1798:09-1801:07); and (3) assumption (without evidentiary support) that certain products for which he lacked pricing information can be treated the same as other products for which limited pricing information was provided (Vander Veen, Tr. 1801:08-1803:12). For at least these reasons, the evidence fails to support the Respondents’ view that certain downstream products should be exempted from a limited exclusion order. b. Cease and Desist Orders Are Appropriate As To Certain Respondents

Rambus has also requested that the Commission issue cease and desist orders. See Rambus Pretrial Br. at 445. Under Commission precedent, “cease and desist orders are warranted with respect to domestic respondents that maintain commercially significant U.S. PUBLIC VERSION

93 inventories of the infringing product.” Certain Agricultural Tractors Under 50 Power Take-off Horsepower, Inv. No. 337-TA-380, Comm’n Op. at 31, USITC Pub. 3026 (March 1997). Rambus contends that certain of the Respondents maintain commercially significant inventories of infringing goods in the United States. See Rambus Initial Br. at 296-297. The evidence supports these contentions as to [ ].52 OUII thus submits that cease and desist orders should issue as to a subset of the remaining Respondents. A proposed cease and desist order is attached hereto as Exhibit B. c. The Public Interest

Before issuing relief against a respondent, the Commission must consider the effects of such relief on the public health and welfare, competitive conditions in the U.S. economy, the production of like or directly competitive articles in the United States, and U.S. consumers. 19 U.S.C. §§ 1337(d),(f); Notice at 5. OUII does not believe that there are any public interest concerns that would preclude issuance of a limited exclusion order and cease and desist orders in this investigation. The products to be excluded here are infringing semiconductor chips that include a memory controller and/or transmitter circuit manufactured by or on behalf of LSI and STM, and downstream products containing same, e.g., personal computers, computer motherboards, graphics cards, navigation devices, etc., which do not have any major public health and welfare implications, at least insofar as can be determined based on the record that has been created here. Thus, the exclusion of Respondents’ accused products is unlikely to have any

52

[

]. See ID at 229-230 (discussing inventory evidence of record); Respondents’ Pretrial Br. at 436-440; Rambus Pretrial Br. at 445; CX-10850C ([ ]); CX7441C and Seymour, Tr. 1008:10-17 ([ ]); CX-8173C ([ ]); JX-76C at 146:07-157:22, 173:15-174:01 ([ ]); CX-6779C, CX-6780C, and JX-115C at 90:23-93:16 ([ ]).

PUBLIC VERSION

94 significant impact upon these public interest considerations. See Certain Compact Multipurpose Tools, Inv. No. 337-TA-416, USITC Pub. No. 3239, Comm’n Op. at 9 (September 1999). Moreover, the Respondents have stated that they can avoid exclusion of the accused products with respect to the Barth I patents by obtaining a pre-negotiated license to the asserted patents. See Respondents’ Pretrial Br. at 314. While OUII takes no position as to the veracity of Respondents’ public statements in this regard, if true, then Respondents could import licensed accused products for one of the two patent families in suit should they so choose and thus continue supplying products to the U.S. market. In addition, Rambus has granted licenses to former Supplier Respondents nVidia, Broadcom, Freescale, and MediaTek. The remaining Downstream Respondents can therefore continue supplying products to the U.S. market as to both of the two patent families by obtaining semiconductor chips from one or more of Rambus’s authorized providers. To the extent that the Respondents choose to instead discontinue importation in lieu of obtaining such a license or switching to an authorized provider, there is no evidence to suggest that U.S. demand for the accused products cannot be met by other entities, such as the aforementioned licensed Supplier Respondents and their customers. Thus, OUII submits that demand for the accused products will continue to be adequately met either by the Respondents or by other entities. Finally, the public interest favors the protection of U.S. intellectual property rights by excluding infringing imports. See Certain Two-Handle Centerset Faucets and Escutcheons, and Components Thereof, Inv. No. 337-TA-422, USITC Pub. No. 3332, Comm’n Op. at 9 (July 2000). Accordingly, OUII submits that the recommended relief is not contrary to the public interest.

PUBLIC VERSION

95 d. Bonding

If the Commission determines to enter an exclusion order and/or cease and desist orders in this investigation, the affected articles will still be entitled to entry and sale under bond during the 60-day Presidential review period. The amount of such bond must “be sufficient to protect the complainant from any injury.” 19 U.S.C. § 1337(j)(3); see also 19 C.F.R. § 210.50(a)(3). The Commission typically sets the Presidential review period bond based on the price differential between the imported or infringing product, or based on a reasonable royalty. See, e.g., Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Comm’n Op. at 63 (November 2007) (setting bond based on price differentials); Certain Plastic Encapsulated Integrated Circuits, Inv. No. 337-TA-315, Comm’n Op. on Issues Under Review and on Remedy, the Public Interest, and Bonding, at 45, USITC Pub. 2574 (November 1992) (setting the bond based on a reasonable royalty). However, where the available pricing or royalty information is inadequate, the bond is sometimes set at 100% of the entered value of the accused product. See, e.g., Certain Neodymium-Iron-Boron Magnets, Magnet Alloys, and Products Containing Same, Inv. No. 337-TA-372, Comm’n Op. on Remedy, the Public Interest and Bonding at 15, USITC Pub. 2964 (May 1996). Rambus contends that a bond in the amount of 100% of the entered value of any infringing imports should be imposed. See Rambus Reply Br. at 149-150. Respondents argue that, because Rambus does not manufacture any products, the appropriate bond should be zero or set as equal to a reasonable royalty of no more than what other companies have paid to Rambus in the past. See Respondents’ Reply Br. at 150. In OUII’s view, the evidence shows that the appropriate bond should be set in light of Rambus’s royalty-bearing license agreements for the same reasons as found by the Commission in the 661 investigation. See 661 Comm’n Op. at 16;

PUBLIC VERSION

96 ID at 347-364 (discussing Rambus’s licensing-based domestic industry and its revenue generating license agreements). [

] To the extent that the Respondents further argue that “the bond paid should be consistently applied to the value of the accused component-not the total value of the Accused Products themselves,” OUII disagrees. See Respondents’ Reply Br. at 150. The Respondents have not identified the applicable value of each and every accused semiconductor chip at issue in this investigation, nor have they identified any evidence to suggest that such information is readily available to Customs upon importation of the accused downstream products. See id. As such, OUII respectfully submits that applying bond to the value of the accused semiconductor chip within a given downstream product does not appear to be a viable option in this instance. [

] See Rambus Reply Br. at 150. Rambus has settled and/or granted licenses to a number of entities that purportedly infringed upon asserted claims from both the Barth I patents and the Dally patents. See, e.g., Notice of Commission Decision not to Review an Initial Determination Terminating the Investigation as to Respondent Freescale Semiconductor, Inc. Based on a Settlement Agreement, EDIS Doc. ID 454430 (July 13, 2011). Rambus thus had available to it evidence by which it could have met its burden to show that a larger royalty rate is warranted when both of the asserted patent families are covered by a given

PUBLIC VERSION

97 license, but chose not to introduce such evidence at trial. [

] and based on the fact that Rambus has identified no contrary evidence of record, the Commission should set the bond at the rate proposed by OUII. X. CONCLUSION OUII respectfully submits that the Commission should affirm the ID’s conclusion that no violation of Section 337 exists because the asserted claims are invalid as anticipated by or obvious in view of the prior art, that a licensing-based domestic industry exists as to the Barth I and Dally patents, and that the Barth I patents are not unenforceable due to inequitable conduct. OUII further respectfully submits that the Commission should affirm the ID’s conclusion that each and every one of the accused products infringes asserted claims of the Barth I and Dally patents, with the caveat that a small subset of the accused [ ] products do not infringe method

claims 39, 40, and 42 of the ‘494 patent, and that Rambus has exhausted its rights as to a small subset of the accused [ ] products. OUII further submits that the Commission should affirm

the ID’s conclusion that Rambus has standing to enforce the Dally patents, but add an alternative ground based on the bona fide purchaser provision of 35 U.S.C. § 261. Finally, OUII respectfully submits that the Commission should reverse the ID’s finding that the Barth I patents are unenforceable due to unclean hands. To the extent not already addressed above, all other conclusions reached in the ID should be affirmed.

PUBLIC VERSION

98 Respectfully Submitted, /s/ Daniel L. Girdwood Lynn I. Levine, Director David O. Lloyd, Supervisory Attorney Daniel L. Girdwood, Investigative Attorney OFFICE OF UNFAIR IMPORT INVESTIGATIONS U.S. International Trade Commission 500 E Street S.W., Suite 401 Washington, D.C. 20436 202.205.3409 (ph) 202.205.2158 (fax) Conf. Version Public Version May 18, 2012 May 31, 2012

PUBLIC VERSION

Certain Semiconductor Chips And Products Containing Same CERTIFICATE OF SERVICE

Inv. No. 337-TA-753

The undersigned certifies that on May 31, 2012, he caused the foregoing (PUBLIC VERSION) RESPONSE OF THE OFFICE OF UNFAIR IMPORT INVESTIGATIONS TO THE NOTICE OF COMMISSION DETERMINATION TO REVIEW IN THE ENTIRETY A FINAL DETERMINATION FINDING NO VIOLATION OF SECTION 337 to be filed with the Commission, served by hand (2 copies) on Judge Theodore R. Essex (including a courtesy .pdf copy to tamara.foley@usitc.gov), served by hand (1 copy) on Sidney Rosenzweig in the Office of the General Counsel (including a courtesy .pdf copy to sidney.rosenzweig@usitc.gov), and served upon the private parties (1 copy each) in the manner indicated below: Complainant Rambus Inc. Christine E. Lehman c/o Finnegan Henderson 901 New York Ave., N.W. Washington, D.C. 20001-4413 202.408.4000 (ph) 202.408.4400 (fax) ITC753-Service@finnegan.com Respondents Cisco Systems Inc. Thomas Pease c/o Quinn Emanuel 51 Madison Ave., 22nd Floor New York, N.Y. 10010 212.849.7000 212.849.7100 Via Email Via Email

Quinn-ITC-753@quinnemanuel.com ciscoITCclientTeam@winston.com (secondary counsel for Cisco) atessar@perkinscoie.com (secondary counsel for Cisco)

Respondents LSI Corp. and Seagate Technology Jonathan D. Link c/o Kilpatrick Townsend & Stockton LLP Suite 900 607 14th St., N.W. Washington, D.C. 20005 202.508.5800 (ph) 202.508.5858 (fax) lsirambusitc@kilpatricktownsend.com FM-LSI@fostermurphy.com Respondents ASUSTek Computer Inc., Asus Computer Int’l Inc., and HewlettPackard Co., Andrew R. Kopsidas c/o Fish Richardson 1425 K Street, N.W. - 11th Floor Washington, D.C. 20005 202.783.5070 (ph) 202.283.7331 (fax) 337-753Fish@fr.com Respondents STMicroelectronics N.V. and STMicroelectronics Inc. Eric Rusnak c/o K&L Gates 1601 K Street, N.W. Washington, D.C. 20006 202.778.9000 (ph) 202.778.9100 (fax) STMicro_ITC753@klgates.com Via Email Via Email Via Email

Respondent Hitachi Global Storage Tech. Alexander J. Hadjis c/o Morrison & Foerster 2000 Pennsylvania Ave., N.W. Suite 600 Washington, D.C. 20006 202.887.1500 (ph) 202.887.0763 (fax) mofo753-service@mofo.com Respondent Garmin Int’l Louis S. Mastriani c/o Adduci, Mastriani & Schaumberg LLP 1133 Connecticut Avenue, 12th Floor Washington, D.C. 20036 202.467.6300 (ph) 202.466.2006 (fax) GAR-3@adduci.com /s/ Daniel L Girdwood Office Of Unfair Import Investigations U.S. International Trade Commission 500 E Street, S.W., Suite 401 Washington, D.C. 20436 202.205.3409 202.205.2158 (Facsimile) Via Email Via Email

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