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

IN THEUNITED STATES COURT OF APPEALSFOR THE FEDERAL CIRCUIT

___________

RAMBUS, INC.,

Appellant,

v.

MICRON TECHNOLOGY, INC.,

Appellee.___________

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

REPLY BRIEF FOR RAMBUS INC.___________

October 21, 2013

J. Michael Jakes

James R. Barney

Aidan C. Skoyles

FINNEGAN,HENDERSON,FARABOW,

GARRETT &DUNNER,LLP

901 New York Avenue, NW

Washington, DC 20001(202) 408-4000

Attorneys for Appellant Rambus Inc.

Case: 13-1228 Document: 37 Page: 1 Filed: 10/21/2013

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TABLE OF CONTENTS

I. INTRODUCTION ...........................................................................................1II. REPLY TO MICRONS ARGUMENTS ........................................................2

A. The Board Lacked Jurisdiction over Microns Appeal .........................21. The Boards Statutory Interpretation Is Not Entitled

to Chevron Deference ................................................................. 22. Microns Interpretation of 35 U.S.C. 315(b) Is

Incorrect ......................................................................................43. Micron Concedes that Any Final Decision in

35 U.S.C. 315(b) Refers Only to Decisions Within

the Requested Reexamination ...................................................114. The Hypothetical Non-merger Scenario Is Relevant

Because It Proves the Board Overstepped ItsStatutory Bounds .......................................................................12

5. Microns Remaining Arguments Lack Merit............................13B. Micron Has Failed to Show by Substantial Evidence that

Any Single Embodiment of Bennett Stores a Value that Is

Representative of a Number of Clock Cycles .....................................151. Micron Misstates the Proper Weight to Be Given to

the Examiners Factual Findings in anInter Partes

Reexamination ..........................................................................152. Microns Alternative Construction of

Representative Is Incorrect ....................................................163. The Configurations Shown in Figures 25a and 25b of

Bennett Do Not Anticipate Claim 27 ........................................204. The Presence or Absence of One Extra Clock

Cycle Does Not Satisfy Claim 27s Requirement of

a Value that Is Representative of a Number ofClock Cycles Which Must Transpire Before

Sampling ...................................................................................26


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C. Microns Alternative Ground for Invalidity Based onJEDEC and Park Contradicts This Courts Prior Decisions ...............27

III. Conclusion .....................................................................................................31


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TABLE OF AUTHORITIES

FEDERAL CASES PAGE(S)

Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.,

598 F.3d 1336 (Fed. Cir. 2010) (en banc) .......................................................... 28

Belkin International, Inc. v. Kappos,

696 F.3d 1379 (Fed. Cir. 2012) ............................................................ 7-8, 10, 12

Bettcher Industries, Inc. v. Bunzl USA, Inc.,661 F.3d 629 (Fed. Cir. 2011) .......................................................................... 3, 4

Brand v. Miller,487 F.3d 862 (Fed. Cir. 2007) .............................................................................. 4

Brown v. 3M,

265 F.3d 1349 (Fed. Cir. 2001) .................................................................... 22-23

Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc.,467 U.S. 837 (1984) ..................................................................................... 2, 3, 4

City of Arlington, Texas v. FCC,

133 S. Ct. 1863 (2013) .......................................................................................... 4

Cooper Technologies Co. v. Dudas,

536 F.3d 1330 (Fed. Cir. 2008) ............................................................................ 3

Ex parte Frye,94 USPQ2d 1072 (BPAI 2010) .......................................................................... 15

Ex parte Horito,

2012 WL 4842863 (BPAI Sept. 27, 2012) ................................................... 15, 16

Ex parte Technology Development & Licensing, LLC,2013 WL 3294852 (PTAB Apr. 19, 2013) ......................................................... 17

Hynix Semiconductor Inc. v. Rambus Inc.,645 F.3d 1336 (Fed. Cir. 2011) .......................................................................... 28

ICU Medical, Inc. v. Alaris Medical Systems, Inc.,

558 F.3d 1368 (Fed. Cir. 2009) .......................................................................... 28


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In re Caveney,761 F.2d 671 (Fed. Cir. 1985) ...................................................................... 15, 16

In re Gartside,

203 F.3d 1305 (Fed. Cir. 2000) ................................................................ 4, 15, 22

In re Swanson,540 F.3d 1368 (Fed. Cir. 2008) ................................................................ 2, 3, 4, 9

LizardTech, Inc. v. Earth Resource Mapping, Inc.,

424 F.3d 1336 (Fed. Cir. 2005) .......................................................................... 28

Pfizer Inc. v. Apotex Inc.,

731 F. Supp. 2d 741 (N.D. Ill. 2010) .................................................................... 3

Phillips v. AWH Corp.,415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 17

Rambus Inc. v. Infineon Technologies AG,

318 F.3d 1081 (Fed. Cir. 2003) .................................................................... 27, 31

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

Talbert Fuel Systems Patents Co. v. Unocal Corp.,

275 F.3d 1371 (Fed. Cir.), vacated and remanded on other grounds,

537 U.S. 802 (2002) ...................................................................................... 18-19

Tehrani v. Hamilton Medical, Inc.,331 F.3d 1355 (Fed. Cir. 2003) .............................................................. 16, 18, 23

United States v. Mead,

533 U.S. 218 (2001) .......................................................................................... 3, 4

Vitronics Corp. v. Conceptronic, Inc.,90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 20

FEDERAL STATUTES

5 U.S.C. 556-557............................................................................................... 3, 4

28 U.S.C. 651-658......................................................................................... 14, 15

35 U.S.C. 312 .............................................................................................. 5, 10, 12


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v

35 U.S.C. 315 .......................................................................................... 4, 7, 11, 12

35 U.S.C. 317 .......................................................................................................... 7

FEDERAL RULES

37 C.F.R. 41.77(b)(2) (2012) ................................................................................ 31

OTHER AUTHORITIES

145 Cong. Rec. E1788-93 (daily ed. Aug. 5, 1999)(extended remarks of Rep. Coble) .............................................................. 6, 7, 14

MPEP 2240 (8th ed. Rev. 9, Oct. 2012) ................................................................. 5

MPEP 2258 (8th ed. Rev. 9, Oct. 2012) ............................................................... 17


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I. INTRODUCTIONMicron has compounded the jurisdictional problems in this case by raising

two additional referencesJEDEC and Parkthat it failed to include in its

original request for reexamination. As with Bennett, only Samsung asserted

JEDEC and Park as anticipation references and, therefore, only Samsung had a

right to appeal the examiners ruling that claim 27 is allowable over these

references. The Boards erroneous decision that Micron had standing to appeal

these Samsung issues was based on a misinterpretation of the statute.

Contrary to Microns assertion, the Boards statutory interpretation is not

entitled to Chevron deference. As an informal adjudication handed down without

notice-and-comment rulemaking, a Board decision interpreting a statute is

reviewed by this Court de novo. Moreover, Micron fails to explain how the

Boards ruling is consistent with the statute. Microns reasoning is based on the

faulty premise that the PTO has unfettered authority to issue duplicate rejections

in copending reexaminations. To the contrary, in a given reexamination, the PTO

can only enter a rejection if it independently satisfies the substantial new question

of patentability (SNQ) requirement forthat reexamination. Here, the rejections

based on Bennett, JEDEC, and Park did not meet the SNQ requirement for the

Micron-requested reexamination because they were not new, i.e., they had

already been taken up in the earlier Samsung-requested reexamination. Thus,


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regardless of the PTOs administrative merger procedure, Micron could not have

gained the right to appeal these Samsung issues because these issues could not

have been properly added to Microns reexamination as a matter of statute.

On the merits, Micron fails to show that the Boards rejection of claim 27

over Bennett was supported by substantial evidence. Micron concedes that

Bennetts configuration parameter VI can, at most, be configured to include or not

an extra clock cycle of delay before the transmission of data. (Micron Br. 8

(emphasis added).) As the examiner correctly found, this extra clock cycle is not

representative of the number of clock cycles because there are other factorsnot

accounted for by configuration parameter VIthat can also affect this delay

period.

II. REPLY TO MICRONS ARGUMENTSA. The Board Lacked Jurisdiction over Microns Appeal

1. The Boards Statutory Interpretation Is Not Entitledto Chevron Deference

Contrary to Microns assertion, the Boards interpretation of a statute is not

entitled to Chevron1 deference but, instead, is reviewed de novo. See In re

Swanson, 540 F.3d 1368, 1374 (Fed. Cir. 2008) (We review the Boards legal

conclusions including statutory interpretation de novo. (emphasis added)). In

Swanson, this Court distinguished Board decisions, like the one here, from

1Chevron, U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984).


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situations where deference may be owed to the PTOs interpretation of a statutory

provision concerning the conduct of proceedings in the PTO, institutedafter notice

and comment proceedings and published in the Federal Register. Idat 1374-75

n.3 (emphasis added).

In United States v. Mead, 533 U.S. 218, 231-34 (2001), the Supreme Court

made clear that Chevron deference is generally reserved for agency interpretations

set forth after notice-and-comment rulemaking or a formal adjudication under

5 U.S.C. 556-557. A bare panel decision of the Board of Patent Appeals and

Interferences does not meet this criterion and is therefore not entitled to Chevron

deference. Swanson, 540 F.3d at 1374-75 n.3 ([T]he Boards statutory

interpretation in a particular case is given no deference . . . .); accord Pfizer Inc. v.

Apotex Inc., 731 F. Supp. 2d 741, 751 (N.D. Ill. 2010) (Board decisions are not

entitled to Chevron deference, regardless of whether they concern procedural or

substantive issues.).

Microns reliance on Cooper Technologies Co. v. Dudas, 536 F.3d 1330

(Fed. Cir. 2008), is therefore misplaced because the PTO rule at issue there had

undergone the notice-and-comment process and had been published in the Federal

Register, unlike the Board decision here, id. at 1332-34. Likewise, Bettcher

Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011), is inapplicable

because it involved a provision of the MPEP, not a Board decision as here,


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id. at 646. Moreover, in Bettcher, the Court cited the MPEP provision only as an

alternative ground supporting its decision and without any discussion or analysis as

to what type of deference should be given to that provision, e.g., Chevron

deference, Skidmore2deference, or something else. See id.

The decision in City of Arlington, Texas v. FCC, 133 S. Ct. 1863 (2013), is

likewise inapplicable here. In City of Arlington, the statutory interpretation at issue

was promulgated by the FCC in a Declaratory Ruling, and there was no dispute

before the Court as to whether this Declaratory Ruling constituted a formal agency

adjudication, as opposed to an informal agency interpretation of the type excluded

from Chevron deference underMead. Here, in contrast, this Court has held that

PTO proceedings are notformal adjudications governed by 556 and 557 of the

APA. Brand v. Miller, 487 F.3d 862, 867 (Fed. Cir. 2007) (emphasis added)

(citing In re Gartside, 203 F.3d 1305, 1313 (Fed. Cir. 2000)). Accordingly, the

Boards decision here is not entitled to Chevron deference. See Mead, 533 U.S. at

231-34; Swanson, 540 F.3d at 1374-75.

2. Microns Interpretation of 35 U.S.C. 315(b) IsIncorrect

Micron contends that [t]he persistent flaw in Rambuss argument is that it

bases a requesters statutory appeal rights solely on what is in a requesters

2Skidmore v. Swift & Co.,323 U.S. 134 (1944).


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reexamination request rather than basing the appeal rights on the examiners final

decision of patentability . . . . (Micron Br. 24.) Yet it is Microns interpretation

of the statute that is flawed.

Micron fails to acknowledge that the entire inter partes reexamination

statute is based on a single gateway criterionthe substantial new question of

patentability threshold set forth in 35 U.S.C. 312. Notably, a substantial new

question of patentability must be new in order tobe the basis of an inter partes

reexamination. Thus, for example, if Requester A successfully initiates an inter

partes reexamination of a patent based on argument X, a subsequent Requester B

challenging the same patent cannot initiate an inter partes reexamination based on

the same argument X since it no longer constitutes a new question of

patentability. Cf. MPEP 2240(II) (8th ed. Rev. 9, Oct. 2012) (If the prior art

cited [in an ex parte reexamination request] raises the same substantial new

question of patentability as that raised in the pending reexamination proceedings,

the second or subsequent request should be denied.). (See also A2891, Microns

Oppn to Rambuss Mot. to Dismiss for Lack of Standing at 2 (acknowledging that

Micron was not permitted to repeat the same arguments and rejections proposed

in Samsungs reexamination request).) The PTO recently made this clear in

denying a second ex parte reexamination request in Reexamination No.

90/012,901. (A20217 ([B]ecause the same technological teachings formed the


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basis of the substantial new question of patentability found in the co-pending 781

proceeding, there is no substantial new question of patentability in the present

request.).)

Had Congress intended something different, it could have drafted the statute

to allow the PTO to institute an inter partes reexamination based on any substantial

question of patentability, even if not new. This would have allowed, for instance,

multiple requesters to institute simultaneous inter partes reexaminations of the

same patent based on the same invalidity arguments. Yet that is notwhat Congress

adopted. Congress was concerned, among other things, that the inter partes

reexamination procedure might be used by third-party requesters to harass patent

owners. As Rep. Coble remarked:

To prevent harassment, anyone who requests inter partes

reexamination must identify the real party in interest andthird-party requesters who participate in an inter partesreexamination proceeding are estopped from raising in asubsequent court action orinter partes reexamination any

issue of patent validity that they raised or could haveraised during such inter partes reexamination.

145 Cong. Rec. E1788, at E1790 (daily ed. Aug. 5, 1999 (extended remarks of

Rep. Coble) (emphasis added). Rep. Coble further explained that 317 of the

statute was aimed at preventing harassment of patent owners:

Title V creates a new 317 which sets forth certain

conditions by which inter partes reexamination isprohibited to guard against harassment of a patent holder.

In general, once an order of inter partes reexamination


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has been issued, neither a third-party requester nor thepatent owner may file a subsequent request for interpartes reexamination until an inter partes reexaminationcertificate is issued and published, unless authorized by

the Director.

Id. (emphasis added).

It is undisputed that the inter partes reexamination statute does not suggest

or envision multiple reexamination proceedings being joined together. Instead, the

statute treats each inter partes reexamination as a stand-alone proceeding with one

requester and onepatent owner. See, e.g., 35 U.S.C. 317(a) (referring to the

patent owner and the petitioner (emphases added)). Similarly, the estoppel

provision of 315(c) is unique to each individual requester. See 35 U.S.C.

315(c) (estoppel applies to any claim finally determined to be valid and

patentable on any ground which the third-party requester raised or could have

raised during the inter partes reexamination proceedings (emphasis added)).

With respect to the SNQ criterion, this Court has summarized the process as

follows:

The statute requires the Director to order reexamination

for resolution of the question. 313. The statute isclear that that question is the same substantial new

question of patentability found by the Director under 312(a). The statutory framework thus requires that an

issue must raise a substantial new question of

patentability, as determined by the Director, with respect

to cited prior art before it can be considered duringinter partes reexamination.


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Belkin Intl, Inc. v. Kappos, 696 F.3d 1379, 1382 (Fed. Cir. 2012).

Micron citesBelkin for the proposition that, during reexamination, the PTO

may make any new rejection . . . . (Micron Br. 30 (quotingBelkin, 696 F.3d at

1383).) But, tellingly, Micron truncates the Courts holding and, in so doing,

eliminates a critically importantcaveat. The full holding is as follows:

Indeed, the PTO may make any new rejection, as long asthat rejection also meets the substantial new question of

patentability requirement. . . . Thus, the scope ofreexamination may encompass those issues that raise a

substantial new question of patentability, whetherproposed by the requester or the Director, but, unless it is

raised by the Director on his own initiative, it only

includes issues of patentability raised in the request under

[35 U.S.C.] 311 that the Director has determined raisesuch an issue. It otherwise may not include other priorart than what constituted the basis of the Directors

determination of a substantial question of patentability.

Belkin, 696 F.3d at 1383 (emphasis added) (citation omitted).

Thus, in any reexamination proceeding, the Director only has statutory

authority to issue a new rejection if it meets the substantial new question of

patentability requirement for that reexamination. 35 U.S.C. 312(a). This is

why Microns arguments fail. Micron incorrectly contends that the PTO has

unfettered authority to issue identical Office Actions in [two separate inter partes

reexamination] proceeding[s] in order to obtain many of the same benefits of

merger. (Micron Br. 27-28.) Yet this is simply untrue; the statute only permits


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the PTO to issue rejections in an inter partes reexamination that satisfy the SNQ

requirement forthatreexamination.

Assume, for example, that Requester A successfully institutes an inter partes

reexamination of a patent based on invalidity argument X. Three months later,

Requester B successfully institutes a secondinter partes reexamination of the same

patent based on invalidity argument Y. Contrary to Microns assertion, the PTO

does not have statutory authority to include the X rejection in Requester Bs

separate reexamination proceeding because X is not a substantial new question

of patentability in Requester Bs proceeding. It was only new when it was

originally proposed by Requester A. From that point forward, X cannot be

raised by a third party or the Directoras a ground for rejection in any subsequent

reexamination of the same patent because it is no longer new. See Swanson,

540 F.3d at 1379 (As properly interpreted a substantial new question of

patentability refers to a question which has never been considered by the

PTO . . . . (emphasis added)).

This statutory constraint does not go away when the PTO decides, for its

own housekeeping purposes, to merge two separate reexamination proceedings

into one. For instance, in this case, Micron did notand could notraise Bennett,

JEDEC, or Park as anticipation references in its original reexamination request

because those references had already been raised by Samsung and determined to


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satisfy the SNQ requirement. (See pp. 5-7, supra.) Therefore, Micron based its

reexamination request on different art, namely, Gustavson in view of either

Bennett or Bowater. (A2341-47.) Once instituted on those grounds, Microns

reexamination was statutorily limited to those grounds plus any other references or

combinations the Director determined raised a substantial new question of

patentability. 35 U.S.C. 312;Belkin, 696 F.3d at 1383. By the plain reading of

the statute, the Director couldnothave cited Bennett, JEDEC, or Park as satisfying

the SNQ requirement in Microns reexamination because those references had

already been taken up in Samsungs earlier-requested reexamination. Indeed,

Micron itself concedes that it was precluded from raising those references in its

original request. (Seepp. 5-7, supra.)

Thus, when the PTO sua sponte merged Samsungs and Microns

reexamination proceedings together, although it administratively combined all

rejections into a single office action (see Micron Br. 25 (citing A10841-42)), this

did not have the effect of injecting Samsungs issues into Microns reexamination

proceeding because, as a matter of statute, the PTO had no authority to do so.

Micron is therefore mistaken when it claims that the issues raised by Samsung

were included by the examiner in Microns proceeding and vice versa. (Id. at 26.)

To the contrary, Samsungs issues were included only in the same office action as

Microns issues; they did not become part of Microns reexamination.


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3. Micron Concedes that Any Final Decision in35 U.S.C. 315(b) Refers Only to Decisions Within

the Requested Reexamination

In holding that Micron had standing to appeal issues originally proposed

only by Samsung, the Board referred to 315(b)s provision that [a] third-party

requester . . . may appeal . . . with respect to any final decision favorable to the

patentability of any original or proposed amendment or new claim of the patent.

(See A4-5 (emphasis added).) Rambus has consistently argued that any final

decision in this provision means any final decision in the particular

reexamination that the third party actually requested, as opposed to unrelated

reexaminations that happen to involve the same patent. (Rambus Br. 41-43.)

Rambus was compelled to make this argument because Micron had previously

asserted precisely the opposite in its response to Rambuss motion to dismiss for

lack of standing. (See A2893-95.)

Now, however, it appears Micron no longer contends that any final

decision in 315(b) means that Requester A can appeal an adverse decision in

Requester Bs unrelatedreexamination involving the same patent. (Micron Br. 26

(asserting that the Office has not interpreted any to be as broad as Rambus

suggests).) Given this concession, it appears the parties now agree that 35 U.S.C.

315(b) only grants a third-party requester the right to appeal adverse decisions in

the particular reexamination that the third party actually requested. In other words,


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a third-party requester cannot jump into another requesters appeal simply because

both reexaminations involve the same patent.

4. The Hypothetical Non-merger Scenario Is RelevantBecause It Proves the Board Overstepped Its

Statutory Bounds

Micron contends Rambuss hypothetical non-merger scenario is irrelevant

[b]ecause a merger did in fact occur. (Id.) This misses the point entirely. As

Rambus explained, if Micron would not have had the right to appeal Samsungs

issues in the non-merger scenario, it could not have gained that substantive right

merely by virtue of the PTOs merger procedure, which is a creature of regulation,

not statute. (Rambus Br. 44-47.) Micron does nothing to rebut this fundamental

point.

Micron first contends that Rambuss hypothetical is based on a flawed

premise because, according to Micron (albeit without citation), the examiner

could sua sponte add rejections from each proceeding into the other. (Micron

Br. 27.) This is incorrect. As explained above, the examiner could only have

added rejections into Microns reexamination if those rejections independently

satisfied the SNQ requirement for that reexamination. 35 U.S.C. 312; Belkin,

696 F.3d at 1383. An anticipation rejection based on Bennett, JEDEC, or Park

would nothave met that requirement because those issues were no longer new

when Microns reexamination request was filed.


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As a fallback, Micron contends the PTOs merger procedure did not confer

substantive appeal rights but, instead, Micron had appeal rights to the Board

because the examiner issued a final decision favorable to patentability with respect

to the proposed rejection of [claim 27] over Bennett (and other prior art). (Micron

Br. 28.) Yet this argument is merely circular. It ignores that Samsung, not Micron,

originally proposed those rejections of claim 27 and, therefore, only Samsung

would have had the right to appeal the examiners decision to withdraw those

rejections, but for the Boards flawed jurisdictional ruling.

5. Microns Remaining Arguments Lack MeritMicron attempts to dismiss Rambuss evidence showing that the Board has

issued contradictory rulings regarding appeal rights in a merged reexamination

proceeding. According to Micron, Rambuss evidence shows only that

a requesters rights are confined by the statute, which is consistent with the

Boards decision [in this case] finding that the statute provided Micron the right to

appeal. (Id. at 30.) This is incorrect. In Reexamination 95/001,714, the Board

recently merged two inter partes reexaminations and explained the parties

respective appeal rights, in part, as follows:

[I]n the notice of appeal, . . . the third party requester

must identify each rejection that was previously proposedby that third party requesterthat the third party requester

intends to contest.


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(A20165 (emphasis in original).) This guidance from the Board is contrary to the

Boards ruling in this case that Micron has the right to appeal any decision

favorable to patentability that is present in a merged proceeding at the time the

RAN is entered irrespective of who initially raised the patentability issue in

question. (A20005 (emphases added).) This inconsistent guidance from the

Board strongly suggests that the PTO is in need of this Courts guidance on this

issue.

Micron also contends that the crux of Rambuss argument is that by settling

with Samsung, Rambus should get the benefit of an erroneous patentability

decision by an examiner . . . . (Micron Br. 31-32.) This too is incorrect. To

begin with, the examiner duly completed the Samsung-requested reexamination

after Samsung withdrew and correctly found that claim 27 was allowable over

Bennett, JEDEC, and Park. Moreover, Micron is wrong that the express purpose

ofinter partes reexamination is to provide an alternate forum for third parties to

fully argue their case. (Id. at 32 n.8.) Instead, the cited remarks of Rep. Coble

indicate that the statute was intended to reduce expensive patent litigation in

U.S. district courts by giving third-party requesters . . . the option of inter partes

reexamination proceedings in the PTO. 145 Cong. Rec. E1788, at E1789-90

(emphasis added). Since the long-standing policy of Congress and the judiciary is

to encourage settlement of litigations, see, e.g.,28 U.S.C. 651-658, it would be


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an odd result to interpret the inter partes reexamination statute in a manner that

discouragesparties to settle their disputes during reexamination.

B. Micron Has Failed to Show by Substantial Evidence thatAny Single Embodiment of Bennett Stores a Value that Is

Representative of a Number of Clock Cycles

1. Micron Misstates the Proper Weight to Be Given tothe Examiners Factual Findings in anInter Partes

Reexamination

The examiners factual findings form part of the record, and contrary to

Microns assertions (Micron Br. 37-38), the Board may not simply disregard them

when they prove inconvenient. See Gartside, 203 F.3d at 1312-14 (court must

examine the record as a whole, taking into account evidence that both justifies

and detracts from the Boards decision (emphases added)).

Micron contends, incorrectly, that the Board gives no deference to an

examiners factual findings. (Micron Br. 37-38 (citingEx parte Frye, 94 USPQ2d

1072, 1077 (BPAI 2010), and a PTO blog entry).) To the contrary, [t]he Board

reviews facts found by the Examiner to determine whether those facts are

supported by a preponderance of the evidence. Ex parte Horito, 2012 WL

4842863, at *2 (BPAI Sept. 27, 2012) (citing In re Caveney, 761 F.2d 671, 674

(Fed. Cir. 1985)). A preponderance-of-the-evidence reviewis not the same as a de

novo review. Thus, Micron is simply wrong that the Board is not required to

detail the error in the examiners findings. (Micron Br. 38.) Instead, if the


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Board seeks to overturn specific factual findings of the examiner (as it did here), it

must first show that those findings were not supported by a preponderance of the

evidence. Horito, 2012 WL 4842863, at *2; see also Caveney, 761 F.2d at 674

([P]reponderance of the evidence is the standard that must be met by the PTO in

making rejections . . . .). The Board failed to do so here.

2. Microns Alternative Construction ofRepresentative Is Incorrect

With respect to the proper construction of representative, Micron appears

to be of two minds. First, it appears to agree with this Courts holding in Tehrani

v. Hamilton Medical, Inc., 331 F.3d 1355, 1361 (Fed. Cir. 2003), that, to be

representative, a value must be directly related to and stand for, or be a

reasonable proxy for, the latter item. Specifically, Micron contends that the

finding that Figure 25a-h of Bennett anticipates claim 27 under the construction

argued for by Rambus should be reviewed for substantial evidence. (Micron

Br. 33 (emphasis added).) Certainly, Micron would not be advocating that this

Court review the Boards decision under an incorrect construction; thus, it can

only be assumed that Micron agreeswith the construction advocated by Rambus,

which is consistent with the meaning of representative in Tehrani.


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At the same time, Micron seeks to hedge its bet by suggesting that

representative has a broader-than-normal meaning in the 051 patent.3

Microns

only purported evidence of this alleged broader meaning is a single passage at

column 11, lines 38-58 of the 051 patent. (See Micron Br. 35.) Yet nowhere does

that passage use representative any differently than its ordinary meaning.

Instead, that passage explains an encoding scheme in which four bits (i.e.,

BlockSize[0:3]) are used to represent various block sizes from 0 to 1024 bytes.

(A113[11:38-58].) Each four-bit combination uniquely describes (and therefore

represents) a different block size. Micron contends that only the last three bits

are relevant since the first bit indicates an encoding scheme (binary versus power-

of-two) and that representative therefore means something different in the

051 patent than it does elsewhere. (Micron Br. 35.) But Micron is wrong. Each

of the sixteen possible values of BlockSize[0:3] stands for, or represents, a

single, specific block size. (See A113[11:38-57].) That the first of the four bits

dictates whether the remaining three should be interpreted as a binary value or a

power of two is irrelevant because the overall four-bit value of BlockSize[0:3]

3Micron cites the incorrect claim-construction standard. (Micron Br. 20-21.)

Because the 051 patent expired during reexamination, the PTO was obliged to

apply Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), rather than the

broadest reasonable interpretation standard. See Ex parte Tech. Dev. &

Licensing, LLC, 2013 WL 3294852, at *2 (PTAB Apr. 19, 2013); MPEP 2258(G).


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corresponds to a specific block size, consistent with the ordinary meaning of

representative as explained in Tehrani.

In contrast, under Microns skewed construction of representative, even if

the wait-line value in a particular bus configuration of Bennett fails to correlate to

the actual request-to-data-delivery delay period in 99.99% of all memory

transactions on that bus, if it correlates occasionallyi.e., even if purely by

happenstance in 0.01% of transactionsthen the representative limitation would

be satisfied. This rationale cannot be correct because it would eviscerate the

ordinary meaning of representative and render the claimed invention inoperable.

The whole purpose of storing a value representative of a number of clock

cycles in the 051 patent is to allow a controller to know at the time of the request

andwith precision when a particular device will respond to a given operation code

to allow interleaved scheduling. (A115[15:63-16:1].) If the values were only

sometimes predictive of reality, and only under unpredictable circumstances (as the

Boards rationale would allow), the system would not work properly because the

controller would not be able to depend on the correct data consistently being on the

bus at the selected time. (See A115[16:1-2].) As a matter of law, a construction

that inhibits the operation of the claimed invention should be viewed with

extreme skepticism. Talbert Fuel Sys. Patents Co. v. Unocal Corp., 275 F.3d


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1371, 1376 (Fed. Cir.), vacated and remanded on other grounds, 537 U.S. 802

(2002).

Micron also contends (for the first time on appeal) that, [w]hen viewed in

light of the specification, it is clear that sampling data exactly when the access time

transpires is only a preference and not a requirement. (Micron Br. 14.) Micron

cites certain passages in the 051 patent that use preferential language, e.g.,

a slave should preferably respond to a request in a specified time, sufficient to

allow the slave to begin or possibly complete a device-internal phase including any

internal actions that must precede the subsequent bus access phase. (Id.

(emphasis Microns) (citing A111[8:48-52]).) Reading the entire sentence

carefully and in context, including the surrounding statements that the slaves are as

simple as possible and never worry about arbitrating for the bus, what is taught is a

preference for how a proper delay time for the response is determined, not an

option as to whether the delay time is to be conformed to or not.

Further, regardless of whether the exact-timing feature was described as a

preferred embodiment in the specification, it is the claimed embodiment.

Specifically, claim 27 requires a value which is representative of a number of

clock cycles of the external clock signal to transpire before sampling a first portion

of data. (A120[26:35-38].) Patentees are certainly entitled to claim their

preferred embodiments, and it is the claimsthat define the scope of the invention,


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not the specification. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582

(Fed. Cir. 1996).

3. The Configurations Shown in Figures 25a and 25b ofBennett Do Not Anticipate Claim 27

Micronlike the Boardrelies almost exclusively on Figures 25a and 25b

of Bennett for its anticipation argument. The reason Micron relies on those

simplified figures is that the other figures of Bennett, such as Figures 32, 35, and

36 (which show actual memory transactions), clearly do not anticipate the asserted

claims.

Micron incorrectly states that Rambus has argued that the same outcome

must occur in every single one of Bennetts 30,000+ configurations in order to

show anticipation. (Micron Br. 46.) Rambus has argued no such thing. Instead,

it is Rambuss position (and the examiners below) that no embodimentof Bennett,

including the bus configurations corresponding to Figures 25a and 25b, discloses a

predetermined value that is representative of the number of clock cycles that will

transpire between an operation code and data sampling.

To begin with, Micron concedes that the wait-line parameter in Bennett can,

at most, be configured to include or not an extra clock cycle of delay before the

transmission of data. (Id. at 8 (emphasis added)); see also A1144.) As Rambus

has explained, this extra clock cycle does not indicate the actual number of clock

cycles that will necessarily transpire between an operation code and data sampling


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because there are other factors, such as arbitration, retry conditions, pin

configuration, address block size, and bus activity, that can affect the

data-sampling time.

For example, in a 32-bit address space with 16 data lines and a dedicated

wait-line configuration of 3, the address information consumes two clock cycles

(32 bits 16 bits/cycle = 2 cycles), as shown in Bennett Figure 36, so at least two

cycles must transpire between an operation code and data. But a 16-bit address

transmitted across the same bus configuration, including the same wait-line

configuration of 3, would require only one clock cycle (16 bits 16 bits/cycle =

1 cycle) between an operation code and sampling of data.

This address-size variable is completely ignored in the transactions

illustrated in Figures 25a and 25b. Indeed, those transactions do not include any

address information at all, which renders them both artificial and incapable of

anticipating a claim that expressly requires sampling data in response to an

operation code. As shown in Figure 34, all large-memorytransactions in Bennett

require address information to be transmitted after the Function ID. This can also

be seen in the exemplary write operation illustrated in Figure 36:


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(A1418[Fig. 36].) In contrast, the generic transactions shown in Figures 25a and

25bwhich are notmemory transactionsdo not include any address information

at all:

(A1408[Figs. 25a-b].) Thus, because the generic transactions shown in Figures

25a and 25b are notspecifically memory transactions, they cannot be used to show

anticipation of claim 27 as a matter of law. Brown v. 3M, 265 F.3d 1349, 1351

(Fed. Cir. 2001) (To anticipate, every element and limitation of the claimed

Write Request

AddressInformation


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invention must be found in a single prior art reference, arranged as in the claim.).

Moreover, when the Figure 25a and 25b configurations are modified to

include the transmission of address information, Microns hypotheses are no longer

true. For instance, Micron states: Regarding Figure 25b, using configuration

122123XX, the number of clock cycles between receipt of the operation code and

transfer of data is one. (Micron Br. 40.) But in a real-world memory transaction,

this period could actually be one of many different numbers of clock cycles,

depending on the size of the address and other factors. Thus, because the same

wait-line configuration can result in different times between a request and data, it

cannot be said to represent that time period. Tehrani, 331 F.3d at 1361.

Micron also fails to acknowledge that the generic transactions shown in

Figures 25a-h are not the only transactions that can occur across those bus

configurations. For example, as Rambus explained and Micron does not dispute, a

read-modify-write transaction in Bennett would involve sampling a first portion

of data, as recited in claim 27, and would necessarily involve a split

command/response cycle like that shown in Figure 35, which necessarily requires

the memory device to arbitrate onto the bus to deliver and sample the requested

data. (Rambus Br. 63-64.) Micron does not dispute these facts, nor could it since

Figure 34 expressly defines Bennetts read-modify-write transaction as including

MEM. ARB., or memory arbitration:


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(A1416[Fig. 34] (excerpt).)

Accordingly, any read-modify-write transaction occurring across the bus

configurations in Figures 25a-h wouldnecessarilybe subject to an indeterminate

amount of time before memory arbitration (see the first set of vertical ellipses in

Fig. 35) and during arbitration (see the second set of vertical ellipses in Fig. 35).

Likewise, the wait signal itself could result in a retry condition, requiring the

memory device to re-arbitrate onto the bus, resulting in a further indeterminate

delay.

Micron responds that arbitration is an optional feature and [is] not

required. (Micron Br. 43.) But this is not true for the configurations shown in

Figures 25a-h and 36, upon which Micron expressly relies for its anticipation

argument. In each of these configurations, configuration registers I, II, and III

(which govern arbitration settings) are set to allow for arbitration when needed.

(A1661[25:42-26:11, 26:55-57]; A1397[Fig. 3].) And as Micron cannot dispute,

any read-modify-write transaction involving large memory in Bennett will

necessarily require memory arbitration (see A1416[Fig. 34]), which necessarily


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introduces even more uncertainty into the period between receipt of a given

memory request and the sampling of data.

Microns only other response to these points is to return to its flawed

construction of representativei.e., where something can be representative,

even though it means different things in different circumstances, and even if it

varies from transaction to transaction across the same bus configuration. (Micron

Br. 44-45.) As explained above, that construction is incorrect as a matter of law.

Moreover, Microns arguments in this regard actually prove Rambusspoint.

For instance, Micron argues:

Similarly, in Rambuss example for Figure 36 of Bennett,the 3-bit value of 011 for Parameter VI represents 1, 2 or

4 clock cycles depending on the other configurationvalues. Instead, if the 3-bit value of 001 was used for

Parameter VI, that value represents 2, 3 or 5 clock cycles

respectively (as this change adds in a one clock delay

cycle as discussed previously). Thus, even for Figure 36,Parameter VI is a programmable value stored in aconfiguration register which is representative of the

programmable number of clock cycles.

(Id. at 45 (emphasis added).)

What Microns argument above proves beyond any doubt is that parameter

VI of Bennett is nota stored value that is representative of the claimed number

of clock cycles. Instead, as Micron concedes, Bennetts data-arrival time actually

depend[s] on other configuration values. (Id. (emphasis added).) Notably,

the Boards decision did not rely on other configuration values as collectively


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satisfying the stored value limitation of claim 27. Nor could it, since claim 27

specifically requires a [singular] value which is representative of a number of

clock cycles. (A120[26:35-36] (emphasis added).) Instead, the Board relied

(as does Micron here) on parameter VI of Bennett, which Micron now flatly admits

is notby itselfrepresentative of a number of clock cycles between an

operation code and the subsequent sampling of data.

4. The Presence or Absence of One Extra Clock CycleDoes Not Satisfy Claim 27s Requirement of a Value

that Is Representative of a Number of Clock CyclesWhich Must Transpire Before Sampling

As explained above, Micron does not dispute that the wait-line setting in

Bennetts configuration parameter VI can, at most, be configured to include or not

an extra clock cycle of delay before the transmission of data. (Micron Br. 8

(emphasis added).) This extra clock cycle occurs only when the wait-line value

is set to 1, specifying a multiplexed wait line. For all other values of

configuration parameter VI (i.e., 2, 3, 4, and 5), there will not be any extra clock

cycle, because either the wait line(s) are dedicated (configuration settings 3, 4, and

5) or there are no wait lines at all (configuration setting 2). (A1397[Fig. 3].) Thus,

the entire premise of Microns argument is that Bennetts configuration parameter

VI, because it has one of five settings that requires the use of a data line for one

clock cycle, allegedly stores a value that is representative of the number of clock

cycles which transpire before data sampling. (Micron Br. 7.) This, however, is


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fundamentally incorrect. The most that can be determined by looking at

configuration parameter VI is whether or not wait-line information will be driven

by the slave on a data line after the master drives the function. This one-clock-

cycle wait-information time slot, when configured, necessarily pushes data

sampling back, but it cannot inform as to the actual data-sampling time in any

given memory transaction.

C. Microns Alternative Ground for Invalidity Based onJEDEC and Park Contradicts This Courts Prior Decisions

Without even addressing the merits of the references, Micron argues that

JEDEC and Park render claim 27 invalid. As an initial matter, because that

argument was not part of Microns request for reexamination, Micron does not

have standing to raise it. See Section II.A, supra.

Moreover, as the examiner and the Board correctly concluded, Rambus is

entitled to its priority date, such that JEDEC and Park are not prior art. (A1171;

A1174; A73-76.) Micron contends claim 27 is overbroad because it is not limited

to one particular type of bus, a multiplexed bus, even though this claim is directed

exclusively to features other than the bus. As the examiner and the Board correctly

found, however, the original disclosure of the 898 application is not limited to a

multiplexed bus. (A73-76.) Indeed, this Court has already concluded the same

thing, a decision that is stare decisis on this issue. In Rambus Inc. v. Infineon

Technologies AG, 318 F.3d 1081, 1091-95 (Fed. Cir. 2003), in the context of claim


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construction, this Court analyzed whether the disclosure of the 898 application

was limited to a multiplexed bus and found that a multiplexing bus is only one of

many inventions disclosed in the 898 application, id. at 1095.

Micron asserts this Courts analysis of the disclosure was eclipsed by a later

hypothetical statement by this Court in Hynix Semiconductor Inc. v. Rambus Inc.,

645 F.3d 1336, 1352-53 (Fed. Cir. 2011). (Micron Br. 47-48.) But Micron

misreads theHynix decision. InHynix, this Court held that a jury was reasonable

in finding that Rambuss claims do, in fact, meet the written-description

requirement without requiring a multiplexed bus. Hynix, 645 F.3d at 1351-53.

Thus, the jurys determination and this Courts affirmance of it are themselves

compelling evidenceand certainly provide substantial evidence to support the

Boards determinationthat the claims meet the written-description requirement

and are therefore entitled to their priority date. See Ariad Pharm., Inc. v.

Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (written-

description requirement is a question of fact reviewed for substantial evidence).

Indeed, this Court determined in Hynix, 645 F.3d at 1352-53, that the jurys

fact-finding overcame any analogy to either ICU Medical orLizardTech, an

analogy the Board similarly addressed and rejected (A74-76 (citingICU Med., Inc.

v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1378 (Fed. Cir. 2009);LizardTech, Inc. v.

Earth Res. Mapping, Inc., 424 F.3d 1336, 1344 (Fed. Cir. 2005)).) Thus, each of


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this Courts statements about the written description of the 898 application

supports the examiners and the Boards holding.

Contrary to Microns argument (Micron Br. 53-57), the original disclosure

describes inventions that do not require a multiplexed bus, including synchronous

memory devices, controllers for controlling such devices, and systems that include

such devices (A109[3:22-48, 4:35-42]; A110[5:52-64]; A2506). The specification

goes on to describe numerous object[s] of this invention, only one of which is to

a multiplexed bus. (A109[3:22-48] (referring to a relatively narrow bus).) For

example, the specification discusses a bus interface for large blocks of data

(A109[3:22-26]), or a clocking scheme allowing for high speed clock signals to

be sent along the bus with minimal clock skew (A109[3:27-29]), neither of which

requires a multiplexed bus. See alsoInfineon, 318 F.3d at 1095 (noting that a

multiplexing bus is only one of many inventions disclosed in the 898

application).

The specification refers repeatedly and generically to a bus, without

indicating whether the bus is multiplexed or not. (See, e.g., A109[4:38-39]

(The bus lines are controlled-impedance, double-terminated lines.);

A110[5:52-57] (a bus [is connected] to an independent cache memory).)

Although the specification describes a byte-wide, multiplexed

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


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(A111[8:17-25].) The specification never limits further bus discussion to this

preferred multiplexed architecture. And, as the Board recognized, one of skill in

the art would recognize that it is not so limited and that other important touted

features in the 898 disclosure, including clocking schemes and writing large

blocks of data, could have been practiced on generic buses without multiplexing.

(A75; A2506-07[32-36].)

The original claims of the 898 application also demonstrate that the

inventors were in possession of generic bus claims. The Board correctly

recognized that certain original claims (73 and 91) required only a generic bus, not

necessarily a multiplexed bus. (A75.) Claim 73, for example, required only a

bus subsystem (A10789-90) and claim 91 required a plurality of external bus

lines (A10799), but both were silent as to whether the claimed bus is multiplexed.

Micron essentially complains that neither of these claims was directed to the bus

itself (Micron Br. 57), but that assertion applies even more strongly to claim 27 on

appeal, since it also does not recite a bus (see A75 (distinguishing ICU Medical

because, here, claim 27 does not require a bus at all)).

In sum, Microns alleged alternative ground for affirmance based on JEDEC

and Park fails because Micron has raised an issue not within the scope of its

reexamination and because claim 27 is entitled to its original April 1990 priority

date, predating both references. This Court has twice held a generic bus to be


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supported by the specification, and the examiners and Boards decisions and the

specification itself all support such a holding.

III. CONCLUSIONFor the foregoing reasons and those explained in Rambuss opening brief,

this Court should vacate the Boards decision because the Board lacked jurisdiction

to hear Microns arguments. Alternatively, the Court should reverse the Boards

decision finding claim 27 of the 051 patent invalid and reinstate the examiners

finding of no anticipation.4

Dated: October 21, 2013 Respectfully submitted,

/s/ James R. Barney

J. Michael JakesJames R. Barney

Aidan C. SkoylesFINNEGAN,HENDERSON,FARABOW,

GARRETT &DUNNER,LLP901 New York Avenue, NWWashington, DC 20001

(202) 408-4000

Attorneys for Appellant Rambus Inc.

4Reversal is appropriate here because Rambus elected under 37 C.F.R.

41.77(b)(2) (2012) to request rehearing by the Board upon the same record

rather than reopen prosecution following the Boards new grounds of rejection.

Thus, if the Boards decision is unsupported by substantial evidence in the existingrecord, the appropriate action is reversal rather than remand.


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CERTIFICATE OF COMPLIANCE

I certify that the foregoing REPLY BRIEF FOR RAMBUS INC. contains

6,920 words as measured by the word-processing software used to prepare this

brief.

Dated: October 21, 2013 Respectfully submitted,

/s/ James R. Barney

J. Michael JakesJames R. Barney

Aidan C. SkoylesFINNEGAN,HENDERSON,FARABOW,

GARRETT &DUNNER,LLP901 New York Avenue, NW

Washington, DC 20001(202) 408-4000


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CERTIFICATE OF SERVICE

I hereby certify that copies of the foregoing REPLY BRIEF FOR RAMBUS

INC. were served upon registered counsel by operation of the Courts CM/ECF

system on this 21st day of October, 2013.

Henry A. Petri, Jr.

Novak Druce Connolly Bove + Quigg, LLP1875 Eye Street, NW, 11

thFloor

Washington, DC [email protected]

/s/ Kay Wylie


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