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TABLE OF CONTENTS

Page

ARGUMENT..........................................................................................................2

I. The Directors Claim Constructions Cannot Be Sustained.............................2

A. The Claimed Signal Is Not Any Physical Representation of

Data......................................................................................................2

B. Claim 1 Requires Its Steps To Be Performed in Sequence and

Separately (Decoupled)Not Merely That the Method Exhibit

Flexibility.........................................................................................10

C. The 109 Patent Does Not Claim the Prior Art It Distinguishes.........14

D. The Directors Reliance on the Delay Value Embodiment Is

Misplaced ............................................................................................17

II. The Director Cannot Salvage the Boards Anticipation Analysis.................21

A. Option (1)In the Request PacketFails......................................22

B. The Director Effectively Concedes the Failure of the Boards

Options (2)-(4).....................................................................................27

CONCLUSION ....................................................................................................29

Case: 12-1480 Document: 33 Page: 2 Filed: 01/16/2013

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Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d 1325 (Fed. Cir. 2010) .....17, 20

Semitool, Inc. v. Dynamic Micro Sys. Semiconductor Equip. GMBH,

444 F.3d 1337 (Fed. Cir. 2006) ....................................................................28, 29


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The Directors defense of the Boards decision hinges on 5 propositions:

1. The term signal in claim 1 includes any physical representation ofdata, even though that claim distinguishes signal from data (and

from code), using those terms to mean different things;

2. Even though claim 1 recites 4 distinct, sequential steps (step 1followed by 2, then 3, then 4)and steps 3 and 4 concededly must

proceed in sequencethe first step (providing a first code) can

come second and the second step can come first;

3. While claim 1 and the specification support providing the writecommand and the signal to begin data transfer separately, separ-

ate or decoupled really means flexible;

4. The 109 patent encompasses the prior-art 037 patent it distinguishesas inflexible; and

5. [P]roviding a signal to the memory device encompasses moving asignal within the memory device.

The Director thus reads claim 1 as satisfied whenever any data (including

the code specifying the write operation or the bits to be written to memory),

obtained from any location (whether sent to the device or already stored within the

device), provided in any sequence with other claim steps (including before the

write has been specified or after the bits have been written), indicates to the

memory device when data transfer should initiateso long as the result can be

considered flexible. Although the Board is entitled to give claim terms their

broadest reasonable construction . . . consistent with the specification, In re

Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012), its construction

here is neither reasonable nor consistent with the specification.


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Even apart from claim construction, the finding of anticipation is erroneous.

The prior-art 037 patent does not disclose[] within the four corners of the docu-

ment . . . all of [claim 1s] limitations, much less all of the limitations arranged or

combined in the same way as recited in the claim. Net MoneyIN, Inc. v. VeriSign,

Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Director focuses on only one of

the Boards four theories for how the 037 patent anticipates the 109 patentthat

the 037 patent discloses placing a delay value in the request packet. But that

theory lacks support in the 037 patent and overlooks critical differences between

the particular method the 037 patent discloses and the invention claimed in the

109 patent.

ARGUMENT

I. The Directors Claim Constructions Cannot Be SustainedA. The Claimed Signal Is Not Any Physical Representation of

Data

The prior-art 037 patent cannot anticipate claim 1 unless, as the Board

posited, claim 1s recited signal (which is sent to the memory device to indicate

when to begin sampling data, i.e., transferring data to memory) is the same as the

037 patents delay value (a value previously stored in memory that tells the

memory device how long to wait before sampling). Rather than analyze claim 1s

terms in context, the Board invoked the IEEE dictionary to assert that signal

includes any physical representation of data. See Rambus Br. 38-41. But the


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109 patent uses signal differently to mean a transmission that incites the

memory device to act: Like the starting gun is the signal that tells sprinters when

to begin running, claim 1s signal tells the memory device when to begin

sampling data. The signal is not data (to be stored, written, or otherwise), much

less a value telling the memory device how long to wait before writing data.

1. The Director nowhere denies that, if signal means any physical

representation of data, it would encompass anything transmitted across a bus.

Rambus Br. 39. Claim 1 defies that boundless construction. It carefully distin-

guishes transmissions, differentiating signal from data and from code.

Claim 1 first recites in paragraph [1] providing a code (the write command) that

indicates the operation to be performed (the write operation); it then recites in

paragraph [2] providing a signal that indicates when sampling is to begin; and

finally it recites in paragraphs [3] and [4] providing the data (the bits to be sam-

pled). Id. at 39-40; A74-75, 41:61-43:2. The Directors construction, however,

would equate everything in claim 1 with the signal recited in paragraph [2]

including the code specifying the write operation in paragraph [1], and the data

to be written to memory in paragraphs [3] and [4], A74-75, 41:61-43:2every one

of which is a physical representation of data. That cannot be correct. The Court

must presume that the use of these different terms in the claims connotes different


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meanings. CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d

1308, 1317 (Fed. Cir. 2000).

2. The Director nowhere disputes that a dictionary-first approach contra-

venes this Courts directive that claim terms be interpreted within the context of

the patent, and the specification in particular. Abbott, 696 F.3d at 1149. Instead,

the Director downplays the Boards reliance on the dictionary. The Board be-

gan, the Director declares, by looking to the language of the claims, then by

making detailed findings regarding the use of the term signal in the 109 patents

specification, and then only referenced the dictionary. PTO Br. 25 (citing JA10,

14, 21). That is mistaken.

As to the language of claim 1, the Board nowhere acknowledged that it

distinguishes signal from data and from code, distinctions the Boards dic-

tionary definition (any physical representation of data) would obliterate. Far

from beginning with claim 1s text, the Board passed over itso does the Director.

Indeed, the pages of the decision cited by the Director highlight the Boards

erroneous dictionary-directed approach. For example, the first cited page of the

Boards decision (JA10) moves directly from stating that the 109 patent does not

define the term signal to the supposedly plain meaning of signal, point[ing] to

an IEEE Standard Dictionary. The discussion thus goes straight from claim term


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to dictionary, without anchoring the definition of signal in the context of the

entire claim.

As for the Boards supposedly detailed findings regarding the use of sig-

nal in the . . . specification, PTO Br. 25, the Director avoids describing them, and

with reason. As mentioned, the first cited page (JA10) begins with the dictionary

and, in any event, recites the parties arguments, not the Boards findings. The

next cited page (JA14) again underscores the Boards dictionary-first approach: It

begins by citing the IEEE Dictionary (at the top of the page), while its remaining

analysis addresses decoupling, not signal. And the last cited page (JA21)

invokes a supposedly plain meaning of signal, again drawn from the IEEE

Dictionary definition.1

The one Board finding the Director proffers is the assertion that the patent

uses the term signal broadly, using signal and information interchangeably.

Br. 12 (JA21). But that putative finding (actually construing phrases recited in

claims 7, 14, and 25, JA21) is indefensible. The cited sentence from the 109

patents specification states that the data transfer start information (a strobe

signal) [is] sent from the controller. A58, 9:4-6. That nowhere suggests that

____________________________1

The Director states that Rambus has cited this definition in other litigation.

PTO Br. 12-13. But that reflected specific points of construction for different

claim terms in different patentsnot the view that signal broadly means the

physical representation of data in all contexts.


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signal means any transmitted information; it indicates only that a strobe sig-

nal can convey one type of informationthe data transfer start information that

triggers sampling. The Boards contrary view is like reading the phrase Italian

sports cars (Ferraris) and declaring that the word Ferraris encompasses all

cars. The equation fails, logically and grammatically. In any event, it cannot

overcome claim 1s clear indication that signal is distinct from data and

code, and thus not a synonym for any information.

The Director also urges that the Board did not equate signal with code,

data, and value, but instead equated it with another term of art in the specifi-

cation, delay value. PTO Br. 26. According to the Director, the Board con-

cluded that signal means not only a transmission that incites the memory device

to act, but also a transmitted value that tells the memory device how many clock

cycles to wait before acting. See id.2

That misses the point: No one has cited any

accepted definition of signal that means a transmission that incites action, like

the strobe the patent concededly covers, plus the delay value the Director

identifies, but excludes any other values, code, or data that might control when

sampling begins. For that reason, the Board could construe signal to encompass

delay value only by stretching that term to encompass any physical representa-

____________________________2

Any effort to equate[] signal with delay value is self-evidently wrong: The

term signal concededly encompasses strobe signal, which is not a delay value.


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tion of data, as the Boards repeated invocation of that definition makes clear.

See A10, 13-14, 21. The consequenceis to sweep in everything that is transmitted

in claim 1 as the recited signal as well.

That approach defies the inventors disparate use of terms like signal,

data, and code: Where a transmission in claim 1 represents a value (as

opposed to something that triggers a response), the claim uses data or code. It

also defies practical application. No one would have thought claim 1 covers every

method in which any transmitted data (whether the write command or the bits of

write data) controls when sampling occurs, a construction so expansive as to cover

anything with a write command and data. When the Board starts with the broad

dictionary definition without appreciating how the patent itself implicitly limits

that definition, the error will systematically cause the construction of the claim to

be unduly expansive. Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir.

2005) (en banc). That is what happened here.

3. The Boards construction and the Directors arguments, moreover, are

inconsistent with the specification, which is the single best guide to the meaning

of a disputed term. Phillips, 415 F.3d at 1315. Claim 1s signal indicates when

the memory device is to begin sampling write data, A74, 42:61-63, telling the

memory device to begin sampling in response to the signals arrival; it is not data

telling the memory device to wait a specified period following the receipt of the


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operation code before beginning sampling. See Rambus Br. 29-31. The specifica-

tion repeatedly makes clear that [t]he timing of the strobe signal itself indicates

when the memory device is to begin sampling. A64, 21:31-32; see also A64,

21:33-36 (sampling begins [i]n responseto signal); Rambus Br. 30-31 (terminate

signal). The Directors failure to identify any useof signal in the 109 patent to

support the Boards physical representation of data definition, A10, 13-14, is

telling.

The Director nowhere denies that the specification states that the memory

device begins sampling [i]n response to the claimed signal. The Director

instead disputes that construction by insisting it would require the signal to incite

immediate action. PTO Br. 13. The signal, the Director asserts, does not elicit an

immediate response. Id. at 14. Respectfully, the Director misunderstands Ram-

buss position and the invention. The memory device need not begin sampling

immediately on receiving the signal. The patent makes clear, for example, that

some strobe [signal]-to-data delay is intrinsic to the circuit, as Rambus noted.

Rambus Br. 31 (quoting A58, 9:46). The point is that the memory device begins

sampling [i]n responseto the signal. A64, 21:31-36;see Rambus Br. 29-31. A

runner may briefly hesitate before leaving the starting blocks in response to the

starting gun; but that latency does not change the fact that the starting gun is a

signal when to begin the race, with runners beginning in response to it. Claim


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1s signal is no different. Besides, the specification does show an all-but

immediate response; the write data arrives on the clock cycle immediately

following the strobe signal.3

The Director errs both in requiring immediacy and in

denying that it is met.

Ultimately, the Director urges that, if Rambus wanted to exclude a construc-

tion of signal that encompasses delay values, the specification would have

had to limit the claim language explicitly. PTO Br. 14. That is incorrect. A pat-

entee need not use words or expressions of manifest exclusion or restriction to

limit a claim against all conceivable readings. Phillips, 415 F.3d at 1320-21.

Here, the patent itself shows that claim 1s signal indicat[es] when sampling is to

begin by arrivingthat the memory device acts [i]n response to the signal. See

Rambus Br. 29-30 (citing A58, 9:4-6, 9:35-37, 10:48-49; A59, 11:38-44; A64,

21:31-36, 21:57-60, 22:48-53; A65, 23:66-24:5). By contrast, the Director has no

such support in the patent for the over-expansive signal-encompasses-any-data

construction adopted below. Because the Board gave the term signal its broadest

conceivable interpretation, rather than the broadest reasonable interpretation

____________________________3See,e.g., A67 (write on cycle 40, strobe on cycle 47, data on cycles 48-63; write

on cycle 72, strobe on cycle 79, data on cycles 80-95); A70 (write on cycle 45,

strobe on cycle 47, data on cycles 48-63); A71 (write on cycle 113, strobe on cycle

115, data on cycles 116-131).


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consistent with the specification, In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)

(emphasis added), its ruling cannot be sustained.

B. Claim 1 Requires Its Steps To Be Performed in Sequence andSeparately (Decoupled)Not Merely That the Method Exhibit

Flexibility

The Director acknowledges that provid[ing] a mechanism to decouple

control timing from data timing is one object of the 109 patent. PTO Br. 14

(quoting A55, 3:33-34). Indeed, it is the essence of the 109 patents claimed

advance over the prior art. See Rambus Br. 26-29, 35-37. Claim 1 requires, as a

matter of logic [and] grammar, Altiris, Inc. v. Symantec Corp., 318 F.3d 1363,

1369 (Fed. Cir. 2003), that its steps be performed separately and in the order

written. See Rambus Br. 26-28.

1. No one disputes that, in four separate paragraphs, claim 1 recites:

[1] a first code specifying the write operation, followed by

[2] a signal to the memory device that indicates when the memory

device is to begin sampling write data, followed by

[3] providing a first bit of the write data to the memory device, and then

[4] providing a second bit of the write data to the memory device.

A74-75, 41:61-43:2; Rambus Br. 10. Nor does anyone deny that claim paragraph

[1] designatesthecode specifying the write operation as first. And the Director

concedes that the steps in paragraphs [3] and [4] (providing the first bit of data and

then providing the second, respectively) must proceed in order.


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The Director instead debates whether steps one and two must be performed

in sequence. Claims may implicitly require[] a specific order. PTO Br. 17.

That was true inMantech Environmental Corp. v. Hudson Environmental Services,

Inc., 152 F.3d 1368 (Fed. Cir. 1998) (Rambus Br. 27), the Director asserts, because

the order was required for the claim to make sense; each step simply could not be

performed before the prior step had occurred. PTO Br. 18. The same is true here:

Claim 1s method would not function if its steps were performed out of order.

For example, it would make no sense to send the signal in paragraph [2],

telling the memory device when to begin sampling (transferring data into memory)

for a write operation, before the memory device was told (in paragraph [1]) that the

operation would be a write (a read transfers data out of memory). The signal

thus would be meaningless to the memory device at that time. And unlike the

prior-art 037 patent, JA17614, 27:32-36, the 109 patent does not provide for

storing a signal (or delay values) for later reference (assuming dubitante the

signal can be a value). With no means of storage, the signal in paragraph [2]

would have no effect if sent first. When the first code in paragraph [1] specify-

ing the write operation arrived later, the memory device would have no means of

recalling when to begin sampling. Similarly, the writing of the first and second

bits of data to the memory device in paragraphs [3] and [4]which the Director

concedes must be performed in order, PTO Br. 19could not occur before the


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steps in paragraph [1] specifying the write operation and paragraph [2] telling the

memory device when to begin sampling.

The Directors assertion that the claim language does not require a specific

order, PTO Br. 17, is thus incorrect. The invention could not function with

paragraph [2] being executed before paragraph [1], or paragraphs [3] and [4] ahead

of the others (as the specification makes clear, see Rambus Br. 28-31). Because

the method could not be implemented in the Directors paragraph [2]-[1]-[3]-[4]

sequence, the Boards ruling cannot stand.4

2. The Director also urges that decouplingsending the signal to begin

sampling separate from the write commandis not required because [c]laim 1

does not recite the term decouple, . . . separate or subsequent to[,] or otherwise

require that the signal and write command be performed separately. PTO Br. 14-

15. As explained above, however, claim 1 presents a series of separate and

sequential steps that grammatically and logically follow one after another. Claim 1

recites providing separately for each stepproviding the write command, then

providing the signalnot one step of providing the code and signal together.

It is no more proper to combine those steps than to scramble them. The

specificationthe single best guide to the meaning of a disputed term, Phillips,

____________________________4

The Director asserts that claim 1 contain[s] a write operation step that is clearly

out of order, PTO Br. 18-19, but fails to identify which step or why.


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415 F.3d at 1315repeatedly specifies that Claim 1s signal is sent by the

controller to the DRAM separate from and subsequent to the write command.

A57-58, 8:65-9:2; pp. 13-14, infra; Rambus Br. 28-29.

The Director re-interprets the specifications use of separate from or

decoupled. Invoking a section titled DecoupledData Transfer Control Informa-

tion, the Director urges that decoupling of timing information does not require

that various types of control information be sent separately; it merely requires that

the timing of the data control information be flexible so that the timing between

the request to begin a write operation and the actual data transmission vary. PTO

Br. 15 (quoting JA58, 10:25) (emphasis added). But decoupled is used in the

specification to require that the information be sent separately, A58, 10:40-43; it

does not, as the Director would have it, mean coupled but flexible. That cannot

be dismissed as an effort to import a limitation from the specification into the

claim. PTO Br. 16. It is the specifications description of the decoupled method

in claim 1 itself. Seepp. 13-14, infra; Rambus Br. 26-29.

The Directors focus on varying the time between the write command and

the actual data transmission also looks to the wrong events. The invention does

not require separating the memory devices receipt of the write command from its

initiation of data transfer. It specifies decoupling the controllers provision of the

write command from its later provision of a signal to begin sampling; the


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controllers write command and signal are decoupled, not just the memorys

response thereto. Thus, the DRAM is configured to start . . . transmission of data

based on data transfer control information sent by the controller to the DRAM

separate from and subsequent to the transmission of the command control

information. A57-58, 8:65-9:2 (emphasis added); A58, 9:26-27 (transmitting

data transfer control information separate[ly]from the command control informa-

tion (emphasis added)); A58, 10:41-43 (signal which controls the timing of the

data transfer associated with a request packet is sent separately from the command

control information to which it corresponds (emphasis added)).

C. The 109 Patent Does Not Claim the Prior Art It DistinguishesBy reading signal expansively and overlooking claim 1s separate and

sequential steps, the Board and the Director concluded that the 109 patent reads

on the prior-art Farmwald 037 patent Rambus had filed 5 years earlier. But that

result makes their construction more unreasonable: The inventors expressly distin-

guished that prior art; it is implausible that they were simultaneously claiming it.

See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366-67 (Fed. Cir.

2002); Rambus Br. 31-37. And if Rambus had meant to claim its own prior-art

patent, it would have claimed priority to it; instead, Rambus distinguished it.

The Director denies that the 037 patent was the prior art being distin-

guished. See PTO Br. 30-33. But the prior art the 109 patent distinguishes


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utilizes delay value[s] stored in a register within the DRAM. A58, 10:35-36.

That describes the 037 patent precisely, as evidenced by the portions of the 037

patent the Director cites. See, e.g., PTO Br. 27-28 (retrieving previously stored

delay values). Neither the Board nor the Director identified any other art to which

it might refer.5

Citing the 109 patent specifications statement that the fixed timing be-

tween requests and data transmissions render[ed] the prior art systems inflexible,

PTO Br. 16 (quoting JA59, 11:1-2), the Director urges that the specification could

not have been distinguishing the 037 patent, which (according to the Director) was

flexible and variable, id. at 30. But flexible is a relative term. The 037

patent may have been flexible compared to the art that preceded it; but it is

inflexible compared to the 109 patent.

Before the invention disclosed in the 037 patent, asynchronous memory

devices largely began writing whenever possible following receipt of the write

command; timing was largely uncontrolled. Rambus Br. 4-8. The 037 patents

synchronous, register-based, delay-value method represented an advance in flexi-

bility. By selecting among op codes when sending the write command, the con-

____________________________5

The Director urges that Farmwald cannot be the prior art distinguished in the 109

patent because Farmwald mirrors the alternate embodiment, which Rambus

has not contended is prior art. PTO Br. 31. That is incorrect: Unlike Farmwald,

that alternate embodiment does not store delay values in registers for later usea

feature identified with the prior art. See A58, 10:52-67; Rambus Br. 31-37.


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troller could defer data transfer for any of the periods previously stored as delay

values in the memory devices access-time registers. Id. at 7-8. Timing choices,

however, were constrained to values that had been previously stored. A58, 10:33-

39. Choicesand flexibilitywere limited.

Moreover, because the timing of data transfer could be determined only

when the operation was specified, timing became fixed the moment the write

command was sent. A58, 10:27-28, 10:57-60. That too limited flexibility: Once

the memory controller sent an op code indicating a write command and selecting

an access-time register with a stored delay value, the timing of data transfer was

locked in; the controller could not adjust timing later. Rambus Br. 49-50. That in-

flexibility (timing becoming fixed when the write command is sent) was overcome

only by sending the signal indicating when to sample separate from and subsequent

to the write command. Separating the timing signal from the write command, and

thereby overcoming the identified inflexible aspects of Farmwald, is what the

inventors actually invented and intended to envelop with the claim. Renishaw

PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).

In any event, the Directors focus on flexibility is mistaken. See Rambus

Br. 50-53. There may be multiple ways in which succeeding generations of

technology have been structured to be flexible over what came before. PTO Br.


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15. But that does not mean the 109 patent should be construed to encompass all

of them, and certainly not the specific prior-art method it distinguishes.

D. The Directors Reliance on the Delay Value Embodiment IsMisplaced

Ultimately, the Director invokes an alternate (the so-called delay value)

embodiment to justify the Boards decision. But the mention of such an embodi-

ment cannot justify rewriting claim 1s terms to encompass it. The embodiment

was claimed in a parent patent, and that patents terms belie the Boards over-

expansive constructions.

1. The alternate embodiment lies outside claim 1 because it does not use

a signal (which initiates action) but instead sends a value specifying how long

to defer action. And it lacks the critical feature of decoupling because it sends the

write command together with the value used to control when sampling begins.

Rambus Br. 42-46; pp. 12-14,supra. The Director errs in rewriting claim 1 to en-

compass the alternate embodiment. See Rolls-Royce, PLC v. United Techs. Corp.,

603 F.3d 1325, 1335 (Fed. Cir. 2010).

The PTO urges that the alleged delay value embodiment does de-

couple[ ]. That is true only if one accepts the Directorssui generis definition of

decoupling, i.e., varying the timing between the write command and the actual

transfer of data. PTO Br. 20. As explained above (pp. 12-14), the 109 patent

distinguishes between (a) decoupling the signal from the write command and


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(b) simply varying the timing of data transfer. See, e.g., A58, 10:41-47. It

explains that decoupling means disconnecting, such that the signal that controls

the timing of the data transfer associated with a request packet is sent separately

from the command control information (i.e., the operation code). A58, 10:40-43.

And it distinguishes the ability to vary the timing of data transfer from transaction

to transaction, describing it as another aspect of the invention. Id. The delay-

value embodiment may also allow the time between the write command and data

transfer to vary for different write operations, but the delay value and write

command are provided in the same request packet for each operation; they are not

decoupled. A58, 10:52-60.

The absence of that decoupling in the alternate embodiment, moreover,

eliminates the flexibility the 109 patent sought to achieve: It prevents the con-

troller from determining when data transfer should occur separately and after

having sent the write command in light of changing conditions, precisely the

advance the inventors claimed. Rambus Br. 12-13; pp. 15-17,supra.6

Further, while claim 1 requires a signal, A74, 42:61-63, the alternate

embodiment is described as operating without the use of strobe or terminate

____________________________6

Contrary to the Directors assertion, PTO Br. 21, Rambus does not contend that

the delay-value embodiment is the prior art that the 109 patent distinguishes. It

simply shares characteristics with the prior artuse of a delay value and a failure

to decouple the timing signal from the write commandthat preclude it and the

prior art from falling within claim 1. See Rambus Br. 50.


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signals, using a delay value instead, A58, 10:55-58. The Director urges that the

specification describes the embodiment as operating without the use of strobe or

terminate signals, not without signals. PTO Br. 20-21. But those are the only

signals the specification identifies. Besides, the 109 patent repeatedly distin-

guishes between signals and delay values,see Rambus Br. 45, and the Director

can point to nothing in the patent equating the two. The fact that the alternate

embodiment is described in terms of values, not signals, undermines any sug-

gestion it was claimed.

The Director responds that a delay value satisfies claim 1s limitation of a

signal that indicates when the memory device is to begin sampling, A74,

42:61-63, because the delay value indicates when the data will be sent, PTO Br.

21. But that assumes the Boards overbroad definition of signal. Claim 1 recites

a signalas opposed to a code or databecause the memory device begins

sampling [i]n response to the signal itself, A64, 21:31-36; the signal is not a

value but a signal to the memory device to begin sampling. In the alternate

embodiment, by contrast, the memory device does not begin sampling in re-

sponse to transmission of the delay value; the delay value included in the request

packet indicates that sampling should be deferred until a designated time relative

to the time at which the request packet is sent without need for a separate signal.


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A58, 10:57-60. The delay value embodiment thus operates differently from the

signal described in the patent. Rambus Br. 29-31.

Rambus is mindful of this Courts caution regarding constructions that

would exclude a preferredembodiment. MBO Labs., Inc. v. Becton, Dickinson

& Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) (emphasis added);Invitrogen Corp. v.

Biocrest Mfg., L.P., 327 F.3d 1364, 1369 (Fed. Cir. 2003). But there is no such

concern here in excluding the alternate delay-value embodiment, A58, 10:52,

because the 109 patents primary, signal-based embodiments are still claimed.

[T]his [C]ourt, moreover, must not allow the disclosed embodiment to out-

weigh the language of the claim, especially when the [exclusionary] construction is

supported by the intrinsic evidence. Rolls-Royce, 603 F.3d at 1334. Yet the PTO

urges that result here.

2. The alternate embodiment, moreover, was claimed by a parent patent,

Patent No. 5,748,914. Rambus Br. 46-48. Even if that does not by itself preclude

the alternate embodiment from being claimed in the 109 patent, PTO Br. 22-24,

the terms of the 914 patents claims do. The 914 patent too distinguishes be-

tween the signal (recited in the 109 patent) and the delay values the alternate

embodiment and prior art employ. Rambus Br. 46-48.7

____________________________7

The Director contends that reliance on the 914 patent is waived. PTO Br. 23.

Where the patentee has asserted a particular construction of its claim terms below,


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Claims 7 and 8 of the 914 patent recite two different methods for control-

ling when sampling begins. A17658, 43:53-54, 43:58-59. Claim 7 recites trans-

mitting a delay value in the control information. A17658, 43:53-57 (emphasis

added). Claim 8, by contrast, recites transmitting a strobe signala selected num-

ber of clock cycles after transmitting the control information. A17658, 43:58-64

(emphasis added). The 914 patents separate use of delay values and signals

as distinct types of transmissions in separate claims that are alternatives to each

other makes it clearer still that those different words . . . have different meanings

and scope. Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed.

Cir. 2007) (quotation marks omitted);see also Omega Engg, Inc., v. Raytek Corp.,

334 F.3d 1314, 1334 (Fed. Cir. 2003) (rule applicable to terms in the same patent

or related patents).

II. The Director Cannot Salvage the Boards Anticipation AnalysisEven accepting the PTOs over-expansive view that signal encompasses

delay value and disregarding the separateness of claim 1s sequential steps, the

Boards anticipation finding cannot be sustained. The 037 patent anticipates

claim 1 only if it discloses within the four corners of the document . . . all of the

_________________________________________________________________

however, only arguments that change the scope of [the appellants] claim con-

struction positions . . . will be deemed to be waived. Interactive Gift Express, Inc.

v. Compuserve Inc., 256 F.3d 1323, 1347-48 (Fed. Cir. 2001). Rambuss argu-

ments concerning the 914 patent are additional support for its position before the

Board that the alternate embodiment is not claimed.


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limitations in claim 1, with all of the limitations arranged or combined in the

same way as recited in the claim. Net MoneyIN, 545 F.3d at 1371.

The Board invoked four options that supposedly catalogue the different

ways the delay value in Farmwald . . . corresponds to the claimed signal in the

109 patent. A17528. Farmwalds delay value, the Board stated, is either:

(1) in the request packet;

(2) stored in an access-register;

(3) provided for comparison to a clock; and/or

(4) implicitly used to generate another implicit signal after the compari-

son to signify a match.

A13. But the Board did not explain, much less cite substantial evidence showing,

where the 037 patent discloses those four options or that they are arranged or

combined in the same way as claim 1s signal. The Director unsuccessfully

attempts to recharacterize the Boards first option (placing the delay value in the

request packet). And he all but abandons the Boards other three optionsall

of which defy claim 1s text.

A. Option (1)In the Request PacketFailsThe Board found anticipation first by asserting that Farmwald anticipates

claim 1s signal by placing a delay value in the request packet. A13. But

that misreads Farmwald. Even if claim 1 did provide for sending a delay value in

the request packet with the write commandas opposed to sending a signal


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separate from and subsequent to the write command (decoupling them)the

Farmwald 037 patent never discloses placing its delay value in the request

packet. See Rambus Br. 52. The Director does not suggest otherwise.

1. Instead, the Director revises the Boards opinion, claiming that the

Board found that Farmwald discloses a request packet that controls the timing of

write data either by directly select[ing] a certain register in the slave DRAM

memory device which stores the (delay value) timing information or indirectly by

indicat[ing] pre-selected (delay value) access times. PTO Br. 28 (quoting JA8);

see also id. at 34. That was not the Boards basis for anticipation. The Board

found anticipation based on Farmwalds delay value being placed in the request

packet. A13 (emphasis added).

The portion of the opinion that the Director partially quotes (from the

Boards background discussion,see A8) does not refer to the delay value being in

the request packet. It states that data transfer timing information arrives in the

request packet in the form of an op code, which is then used to select a delay

value that has been previously stored in a programmable access-time register, or a

delay value in a fixed register previously associated with that op code. Id. (empha-

sis added); see JA17605, 9:31-10:5, JA17606, 11:31-39 (chart); Rambus Br. 52.

That distinction is critical. The Directors theorythat claim 1s signal is satis-

fied by the 037 patents inclusion of an op code in a request packet, which in turn


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selectsa location tofinda delay value that is notin the request packetdoes not

appear in the Boards decision, and thus may not be the basis for affirmance. In

re Thrift, 298 F.3d 1357, 1367 (Fed. Cir. 2002); In re De Blauwe, 736 F.2d 699,

705 n.7 (Fed. Cir. 1984).

The new theory is also incorrect. Claim 1 recites providing a signal to the

memory device, wherein the signalindicates when the memory device is to begin

sampling write data. A74, 42:61-63 (emphasis added). Nothing in the 037

patents request packet constitutes a signal that itself indicates when the mem-

ory device is to begin sampling. The Director may be claiming that the op code

in the request packet is the signal, but the op code specifies the operation and

refers the memory device to an access-time register; the memory device then looks

to that register to find a previously stored delay value. JA17605, 9:31-10:5. The

Director asserts that the data block transfer occurs at a later time specified in the

request packet control information. PTO Br. 34 (quoting JA17605, 9:18-19).

As the 037 patents next sentence makes clear, however, the request packet does

not itself specify when to the memory device. Instead, [t]he time after which a

data block is driven onto the bus lines is selected from values stored in slave

access-time registers that are part of the memory device. A17605, 9:23-25.

That difference is fatal. To anticipate, the 037 patent must disclose the 109

patents claimed elements, arranged or combined . . . in the same way as recited


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in the 109 patent itself. Net MoneyIN, 545 F.3d at 1371. The difference between

the arrangement and use of the 109 patents signal, and the 037 patents use of an

op code to select a register that contains a previously stored delay value, could not

be more stark. The 109 patents signal is akin to telling someone to board their

train because it is leaving the station. The 037 patents op code is like telling

someone to consult a posted schedule, in a specific room of the station, to

determine when the train is leaving. The two are not the same, and the Director

erred in equating them.

2. The Boards effort to equate Farmwalds delay value with the 109

patents signal independently fails because the two inventions require a different

order. Farmwald discloses transmitting delay values to, and storing the values

in, the DRAMs access-time registers before the write request is issued (at

initialization). See Rambus Br. 32-33. Claim 1 of the 109 patent reverses the

order: It requires that the first code the controller provides to the memory

device for a transaction be a code specifying the write operation; the signal

comes later. Seepp. 10-12,supra; Rambus Br. 26-28.

The Director asserts that substantial evidence supports a finding that

Farmwald provides a signal at least when the write operation is requested, not

before by statically storing a predetermined delay value. PTO Br. 29. That

contradicts the Boards finding that Farmwalds step of storing the delay value in


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an access-time register is one of the options that satisfies claim 1s step of

providing a signal, A14; that storage occurs at initialization before any op code

is transmitted, JA17603, 6:46-48. And the Director fails to identify any supporting

evidence. The 037 patent could not be clearer that the delay value is provided to

the memory device and stored in an access-time register before the controller

transmits the op code that indicates a write command and identifies the regis-

ter that should be consulted for timing. Id.; JA17605, 9:31-10:5.

The Director urges that the fact that certain delay values are stored within

the memory device, before an instruction, does not mean that the signalindicating

when to write the instruction is provided before the operation. PTO Br. 30. The

037 patent does provide for the controller, when sending a request packet, to

determine when the slave memory device acts. Id. But that does not help the

Director. The Director still not does identify what in Farmwald corresponds to the

signal, or how that signal indicates when the memory device is to begin sam-

pling in the same form and order as the 109 patents signal. To the extent the

Director means to repeat that the op code is the signal, that fails for the reasons

above: The Board made no such finding, and the op codewhich directs the

memory device to find a pre-stored delay value in an access-time register

operates in a fundamentally different way than the 109 patents signal. See pp.

23-25,supra.


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B. The Director Effectively Concedes the Failure of the BoardsOptions (2)-(4)

The Boards remaining alternative[] theories of anticipationthat claim

1s signal is satisfied when Farmwalds delay value is (2) stored in an access-

register; (3) provided for comparison to a clock; and/or (4) implicitly used to

generate another implicit signal after the comparison to signify a matchalso

fail. A13-14.

1. The Board did not trace any of those options within Farmwald

itself, much less compare the processes side-by-side with the method recited in

claim 1 of the 109 patent. Nor does the Director. That should be dispositive. See

Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010)

(anticipation requires a comparison of the properly construed claim to the prior

art). The Director asserts that [t]he Boards enumerated options were not unsup-

ported hypotheticals, but were discussed and substantiated throughout the Boards

decision. PTO Br. 34. But those options were not substantiated by the Board;

they were merely repeated without support. Rambus Br. 53-60. And the Director

essentially does the same. While he asserts that each of the Boards options in

Farmwald is a signal that may be provided separately, he neither explains why

they are arranged as in the 109 patent nor provides supporting citations to the

Farmwald patent. PTO Br. 35. Rambuss explanation (Br. 53-60) of why the

Boards alternative options in Farmwald constitute entirely different methods,


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with parts distinct from, and that operat[e] in a different way from, claim 1 of

the 109 patent,Net MoneyIN, 545 F.3d at 1370, remains undisputed.

2. Besides, options (2)-(4)storing the delay value in the access-

register; retrieving it; and comparing it to a clock value and generating another

(implicit) signal, A14do not meet claim 1s limitation of providing a signal to

the memory device, A74, 42:61 (emphasis added). See Rambus Br. 54, 56-58.

The Director does not dispute that storage, retrieval, and comparison of any delay

value in Farmwald all occurwithinthe memory device; the access-time register is

part of the memory device. See PTO Br. 35-36. The Director urges, however, that

the limitation of providing a signal tothe memory device encompasses a signal

provided from one component of the memory device to another, id. at 35i.e.,

that providing to can mean finding within.

That is incorrect. Rambus Br. 54. The specification is clear that, for

information to be provided to the memory device, it must come from outside the

memory device; for example, by being sent by the controller to the DRAM.

A57-58, 8:67-9:1. Similarly, one would not say that moving files within an

office is the same as moving files to an office. This Court has ruled that a

limitation of supplying drying gas to the process chamber could be satisfied if

the condenser providing that gas is outside the processing chamber, but not if

the condenser is inside the processing chamber. Semitool, Inc. v. Dynamic Micro


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January 16, 2013 Respectfully submitted,

Kara F. Stoll

FINNEGAN,HENDERSON,FARABOW,

GARRETT &DUNNER,LLP

901 New York Avenue, N.W.

Washington, D.C. 20001

(202) 408-4000

John M. Whealan

4613 Merivale Road

Chevy Chase, MD 20815

(202) 994-2195

/s/ Jeffrey A. Lamken

Jeffrey A. Lamken

Counsel of Record

Michael G. Pattillo, Jr.

MOLOLAMKEN LLP

The Watergate, Suite 660

600 New Hampshire Avenue, N.W.

Washington, D.C. 20037(202) 556-2010

Counsel for Appellant Rambus Inc.


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CERTIFICATE OF SERVICE

I certify that on January 16, 2013, the foregoing Reply Brief for Appellant

Rambus Inc. was filed electronically with the Clerk of the Court for the U.S. Court

of Appeals for the Federal Circuit using the CM/ECF system and served

electronically by ECF on the following counsel:

Raymond T. Chen

Nathan K. Kelley

Coke Stewart

William LaMarcaUnited States Patent and Trademark Office

Office of the Solicitor

P.O. Box 1450

Mail Stop 8

Alexandria, Virginia 22213

/s/ Jeffrey A. LamkenJeffrey A. Lamken


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CERTIFICATE OF COMPLIANCE

1. This brief complies with the type-volume limitation of Fed. R. App. P.

32(a)(7) because:

X This brief contains 7,000 words, excluding the parts of the brief exempted

by Fed. R. App. P. 32(a)(7)(B)(iii) and Local Rule 32(b).

This brief uses a monospaced typeface and contains [state the number of]

lines of text, excluding the parts of the brief exempted by Fed. R. App. P.

32(a)(7)(B)(iii).

2. This brief complies with the typeface requirements of Fed. R. App. P.

32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because:

X this brief has been prepared in a proportionally spaced typeface using

Microsoft Word in Times New Roman 14 point font, or

this brief has been prepared in a monospaced typeface using [state name and

version of word processing program] with [state number of characters per

inch and name of type style].

/s/ Jeffrey A. Lamken

Jeffrey A. Lamken


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