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UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, D.C.

BEFORE THE HONORABLE THEODORE R. ESSEX

ADMINISTRATIVE LAW JUDGE

In the Matter of:

CERTAIN SEMICONDUCTOR CHIPS AND

PRODUCTS CONTAINING SAME

Investigation No. 337-TA-753

COMPLAINANT RAMBUS INC.S PETITION FOR REVIEW

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TABLE OF CONTENTS

I. INTRODUCTION ..................................................................................................................... 1II. THE ALJS INVALIDITY DETERMINATIONS SHOULD BE REVIEWED ...................... 3III. THE DALLY PATENTS ARE NOT INVALID ...................................................................... 4

A. The Widmer Article Does Not Invalidate the Asserted Dally Claims .......................... 41. The Dally Patents and the Asserted Dally Claims ............................................ 42. The Widmer Articles Disclosure ..................................................................... 53. The ALJ Erred in Finding the Widmer Article Enabling ................................. 54. The ALJ Erred in Finding that the Widmer Article Discloses the

Claimed On-Chip Circuitry ............................................................................ 10a. The Widmer Articles Disclosure of a Chip Does Not Mean

that Circuitry for Asserting DHPEAK and DLPEAK Is On-

Chip .................................................................................................... 10b. Not Requiring External Components Does Not Mean that

Circuitry for Asserting DHPEAK and DLPEAK Is On-Chip ............ 12c. Respondents Experts Testimony Cannot Replace the

Widmer Articles Disclosure ............................................................. 135. The ALJ Erred in Finding that Additional Features from Ewen Would

Have Been Combined with the Widmer Article ............................................. 14B. The SL500 Art Does Not Anticipate the Asserted Claims of the Dally Patents ......... 17

1. The ALJ Erred By Finding It Was Irrelevant To Determine WhatProducts Were Prior Art ................................................................................. 17

2. The Evidence Shows that the SL500 Fibre Channel Transceiver WithNo Emphasis Was the Focus of LSIs Relationship with Seagate ................. 20

3. Respondents Did Not Show What SL500 Product Was Reduced ToPractice, Used, or Offered for Sale ................................................................. 21

4. Respondents Did Not Meet Their Burden Regarding an Offer For Saleto Cabletron .................................................................................................... 25

5. The SL500 Art Does Not Meet the Speed Limitations of the DallyClaims ............................................................................................................. 26

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C. The ALJ Erred in Construing Output Frequency to Mean Output DataRate ........................................................................................................................... 26

IV. THE BARTH I PATENTS ARE NOT INVALID .................................................................. 28A. Background of the Technology of the Asserted Barth I Patents ................................. 29B. The Prior Art Does Not Anticipate the Barth Claims ................................................. 30

1. The NextBus Specification (RX-4265C) Does Not Anticipate AnyClaims of the 353 and 109 Patents ............................................................... 30a. The ALJ Erred in Finding that the NextBus Specification Is

Prior Art ............................................................................................. 30b. The ALJs Construction of Memory Device is Wrong .................. 32

i. The Intrinsic Evidence Supports RambussConstruction .......................................................................... 33(a) The Claims Support Rambuss Construction ............ 33(b) The Specification Supports Rambuss

Construction .............................................................. 34(c) The ALJs Construction, Inconsistent With the

Intrinsic Evidence, Must Be Rejected ....................... 35ii. The Extrinsic Evidence Supports Rambuss

Construction .......................................................................... 36(a) The Prior Art Supports Rambuss

Construction .............................................................. 37(b) Testimony from Parties Adverse to Rambus

Supports Rambuss Construction .............................. 38c. NextBus Does Not Anticipate the 353 or 109 Claims ..................... 39d. NextBus Does Not Anticipate Claims 12 and 13 ............................... 39

2. Harriman (RX-4277) Does Not Anticipate the Asserted Claims of the353 and 109 Patents ..................................................................................... 40

3. Hayes (RX-4268) Does Not Anticipate Claim 11 of the 353 Patent ............ 404. Dan and Yano Do Not Anticipate Claim 11 of the 353 Patent ..................... 42

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a. The Barth I Patents Are Directed to Synchronous MemorySystems Whereas Dan and Yano Describe Asynchronous

Memory Systems ............................................................................... 42b. Dan Does Not Anticipate 353 Patent Claim 11 ................................ 43c. Dan Does Not Disclose the Claimed Write Command .................. 44d. Yano Does Not Anticipate 353 Patent Claim 11 .............................. 46e. Yano Does Not Disclose the Claimed Write Command ................ 47

C. The ALJ Committed Errors of Law, Fact, and Policy in His ObviousnessAnalysis of the Barth I Claims .................................................................................... 471. None of the References Disclose or Suggest the Claimed Strobe

Signal/Signal Features .................................................................................... 492. Combinations 1-4 Do Not Render the Asserted Barth I Claims

Obvious .......................................................................................................... 49a. SCI Is Not Prior Art ........................................................................... 50b. The ALJ Erred in Finding that It Would Have Been Obvious

to Combine Synchronous and Asynchronous Memory

Systems .............................................................................................. 50c. The ALJ Erred in Finding that It Would Have Been Obvious

to Incorporate Double Data Rate Features into the Systems of

Yano and Dan .................................................................................... 51d. The ALJ Erred in Finding it Obvious to Incorporate

Precharge, Bank Selection Information, and Sense Operation

Features into Dan and Yano ............................................................... 523. Combinations 5-6 Do Not Render the Barth I Claims Obvious ..................... 534. Combinations 7-12 Do Not Render the Barth I Claims Obvious ................... 545. Secondary Considerations Support a Finding of Non-Obviousness .............. 55

V. THE BARTH I PATENTS ARE NOT UNENFORCEABLE FOR UNCLEANHANDS ................................................................................................................................... 56A. The ALJ Erred in Conflating the Determination of Whether Rambus

Anticipated Litigation of the Barth I Patents with Rambuss Anticipated

Enforcement of the Farmwald Portfolio ..................................................................... 57B. The ALJ Erred in Finding that Litigation on the Barth I Patents Was

Reasonably Foreseeable at Least by July 1998 ........................................................... 58

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1. The ALJs Broad Interpretation of Anticipated Litigation ContradictsEstablished Authority ..................................................................................... 59

2. No Evidence Supports the ALJs Finding that Rambus Adopted aLong Term Strategic Litigation Plan Based on the Barth I Patents ............ 60a. That Rambus Sought to Create a Patent Minefield Does Not

Evidence an Intent to Litigate the Barth I Patents ............................. 60b. That Rambuss Document Retention Policy Was Not Patent

Specific Does Not Show an Intent to Litigate Barth I Patents ........... 613. The Totality of the Circumstances Regarding the Barth I Portfolio

Differs Substantially from Those of the Farmwald Portfolio ......................... 62a. The ALJ Clearly Erred in Dismissing the Importance of the

Fact the Asserted Barth I Patents Were Years from Issuing

When Rambus Adopted Its Document Retention Policy ................... 62b. The ALJ Clearly Erred in Equating Considered Enforcement

of the Farmwald Patents with Anticipated Litigation of the

Barth I Patents .................................................................................... 63i. The ALJ Ignored Unrebutted Evidence Demonstrating

a Distinction Between Rambus Patent Families .................... 63ii. The ALJ Clearly Erred in Attributing Activities

Involving SPP1 to the Barth I Patents ................................... 64c. The ALJ Clearly Erred in Confusing Notice of Potential

Infringement of the Farmwald Patents with Potential

Infringement of the Barth I Patents .................................................... 66d. The ALJ Clearly Erred in Ignoring Evidence of Rambuss

Efforts to License and Resolve Disputes Without Litigation ............ 68C. The ALJ Erred in Finding Bad Faith Destruction of Barth I Documents ................... 70

1. The ALJ Legally Erred in Concluding that Supposed Bad Faith in theFarmwald Litigations Justified Finding Bad Faith Here ................................ 71a.

The ALJ Clearly Erred in Minimizing Outside Counsels Rolein Implementing Rambuss Document Retention Policy ................... 71

b. Rambuss Farmwald Prosecution Activities Have No Bearingon Bad Faith ....................................................................................... 74

2. The ALJ Clearly Erred in Assessing the Implementation of RambussDocument Retention Policy ............................................................................ 75

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3. The ALJ Erroneously Dismissed Relevant Evidence as Irrelevant andMischaracterized Relevant Arguments as Misrepresentations ................... 76a. Arguments and Evidence Presented Regarding the Scope of

Destroyed Documents Were Not Misleading .................................... 76b. Rambuss Witnesses Provided Relevant Testimony

Demonstrating Lack of Prejudice ...................................................... 774. Demonstrably False Determinations of Fact Infected the ALJs

Credibility Determinations ............................................................................. 785. The ALJs Commentary on Dr. Przybylski Has No Bearing on Bad

Faith and Should Be Vacated ......................................................................... 79D. Respondents Were Not Prejudiced by Any Document Destruction ........................... 81

1. The ALJ Made Clearly Erroneous Findings and Misconstrued theRecord in Finding Prejudice Based on Alleged Destruction of Mr.Barths Emails and JEDEC Materials ............................................................ 81a. Clear Legal and Factual Error Infected the ALJs Prejudice

Determination .................................................................................... 81i. Written Description ............................................................... 82ii. Anticipation and Obviousness ............................................... 82

b. The ALJ Grounded His Finding of Prejudicial Destruction onDocuments that Demonstrably Still Exist .......................................... 84

2. No Prejudice Resulted from the Destruction of Other Documents ................ 87a. Conceptual Tree ................................................................................. 87b. Vincent Files ...................................................................................... 88

3. Respondents Other Defenses Were Not Prejudiced ...................................... 904. The ALJ Legally Erred by Relieving Respondents of Their Burden

and Placing Too High a Burden on Rambus .................................................. 91E. The Harsh Sanction of Dismissal Is Unwarranted and Contrary to Law .................... 92

VI. THERE IS NO PATENT EXHAUSTION .............................................................................. 95A. The ALJ Erred in Finding that Authorized Sales from Samsung to

Take Place in the U.S. ................................................................................................. 951. The Samsung- Sales Take Place in ....................................... 95

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2. The Samsung/Elpida Sales Are Not Authorized Sales ................................... 97B. The ALJ Erred in Finding that the Samsung/Elpida Memory Devices

Substantially Embody the Barth Patents ..................................................................... 98VII. CONCLUSION ....................................................................................................................... 99

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TABLE OF AUTHORITIES

Page(s)

FEDERAL CASES

Adv. Display Sys., Inc. v. Kent State Univ.,

212 F.3d 1272 (Fed. Cir. 2000) ..................................................................................................... 32

Anderson v. Cryovac, Inc.,

862 F.2d 910, 925 (1st Cir. 1988) .................................................................................................. 91

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

598 F.3d 1336 (Fed. Cir. 2010) ..................................................................................................... 82

Arthur A. Collins, Inc. v. N. Telecom Ltd.,

216 F.3d 1042 (Fed. Cir. 2000) ..................................................................................................... 37

Arthur Andersen LLP v. United States,

544 U.S. 696 (2005)..................................................................................................... 58, 59, 62, 71

Deere & Co. v.Intl Trade Commn,

605 F.3d 1350 (Fed. Cir. 2010) ............................................................................................... 70, 80

Daubert v. Merrell Dow Pharms., Inc.,

509 U.S. 579 (1993)....................................................................................................................... 23

Doe v. Menefee,

391 F.3d 147 (2d Cir. 2004) .......................................................................................................... 78

Fujifilm Corp. v. Benun,

605 F.3d 1366 (Fed. Cir. 2010) ..................................................................................................... 95

Genentech, Inc. v. Intl Trade Commn,

122 F.3d 1409 (Fed. Cir. 1997) ..................................................................................................... 94

Graham v. John Deere Co.,

383 U.S. 1 (1966)........................................................................................................................... 47

Gumbs v. Intl Harvester, Inc.,

718 F.2d 88 (3d Cir. 1983) ............................................................................................................ 70

HTC Corp. v. IPCom GmbH & Co.,

667 F.3d 1270 (Fed. Cir. 2012) ............................................................................................... 33, 34

Hynix Semiconductor, Inc. v. Rambus Inc.,

591 F. Supp. 2d 1038 (N.D. Cal. 2006) ................................................................................... 86, 87

Hynix Semiconductor Inc. v. Rambus Inc.,

645 F.3d 1336 (Fed. Cir. 2011) ................................................................................... 35, 73, 74, 90

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In re Lister,

583 F.3d 1307 (Fed. Cir. 2009) ......................................................................................... 30, 31, 50

In re NTP, Inc.,

654 F.3d 1279 (Fed. Cir. 2011) ..................................................................................................... 48

In re Rambus,2004 WL 390647 (FTC Feb. 23, 2004) ................................................................................... 74, 86

In re Swanson,

540 F.3d 1368 (Fed. Cir. 2008) ..................................................................................................... 29

In re Turlay,

304 F.2d 893 (C.C.P.A. 1962) ....................................................................................................... 25

Jiminez v. Mary Washington College,

57 F.3d. 369 (4th Cir. 1995) .......................................................................................................... 78

Kay v. Fed. Commcns Commn,396 F.3d 1184, 1189 (D.C. Cir. 2005) ........................................................................................... 70

Kingsdown Med. Consultants, Ltd v. Hollister, Inc.,

863 F.2d 867 (Fed. Cir. 1988) ....................................................................................................... 74

Kronisch v. United States,

150 F.3d 112 (Fed. Cir. 1998) ....................................................................................................... 57

KSR Intl v. Teleflex,

550 U.S. 398 (2007)................................................................................................................. 47, 48

Kyocera Wireless Corp. v. ITC,

545 F.3d 1340 (Fed. Cir. 2008) ..................................................................................................... 32

Leon v. IDX Sys. Corp.,

464 F.3d 951 (9th Cir. 2006) ......................................................................................................... 94

Litecubes, LLC v. N. Light Prods., Inc.,

523 F.3d 1353 (Fed. Cir. 2008) ..................................................................................................... 96

McCook Metals L.L.C. v. Alcoa Inc.,

192 F.R.D. 242 (N.D. Ill. 2000) ............................................................................................... 84, 89

Micron Tech., Inc. v. Rambus, Inc.,

255 F.R.D. 135 (D. Del. 2009) ............................................................................................... passim

Micron Tech., Inc. v. Rambus Inc.,

645 F.3d 1311 (Fed. Cir. 2011) .............................................................................................. passim

Microsoft Corp. v. i4i Ltd. Pship,

131 S. Ct. 2238 (2011) ..................................................................................................................... 3

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Motorola, Inc. v. Interdigital Tech. Corp.,

121 F.3d 1461 (Fed. Cir. 1997) ..................................................................................................... 14

Mycogen Plant Sci., Inc. v. Monsanto Co.,

243 F.3d 1316 (Fed. Cir. 2001) ......................................................................................... 17, 18, 20

Netscape Commcns. Corp. v. Konrad,295 F.3d 1315 (Fed. Cir. 2002) ......................................................................................... 17, 18, 20

Network Commerce, Inc. v. Microsoft Corp.,

422 F.3d 1353 (Fed. Cir. 2005) ............................................................................................... 35, 36

Orion IP, LLC. v. Hyundai Motor Am.,

605 F.3d 967 (Fed. Cir. 2010) ................................................................................................. 30, 32

Pfaff v. Wells Elecs., Inc.,

525 U.S. 55 (1998) ............................................................................................................. 17, 18, 20

Pfizer, Inc. v. Apotex, Inc.,480 F.3d 1348 (Fed. Cir. 2007) ....................................................................................................... 3

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................................................... 36

Quanta Computer, Inc. v. LG Elecs., Inc.,

553 U.S. 617 (2008)................................................................................................................. 97, 98

Rambus Inc. v. Hynix Semiconductor, Inc.,

2008 WL 5771128 (N.D. Cal. Nov. 21, 2008) .............................................................................. 37

Rambus Inc. v. Infineon Techs. Ag,

318 F.3d 1081 (Fed. Cir. 2003) ............................................................................................... 74, 90

Sanofi-Synthelabo v. Apotex, Inc.,

550 F.3d 1075 (Fed. Cir. 2008) ....................................................................................................... 6

Schmid v. Milwaukee Elec. Tool Corp,

13 F.3d 76 (3d Cir. 1994) .............................................................................................................. 92

Sud-Chemie, Inc. v. Multisorb Techs. Inc.,

554 F.3d 1001 (Fed. Cir. 2009) ..................................................................................................... 49

Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found.,

422 F.3d 1378 (Fed. Cir. 2005) ..................................................................................................... 90

Therasense, Inc. v. Becton, Dickinson & Co.,

649 F.3d 1276 (Fed. Cir. 2011) (en banc) ..................................................................................... 90

TransCore, L.P. v. Elec. Transaction Consultants Corp.,

563 F.3d 1271 (Fed. Cir. 2009) ..................................................................................................... 95

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United States v. Univis Lens Co.,

316 U.S. 241 (1942)........................................................................................................... 97, 98, 99

FEDERAL STATUTES

35 U.S.C. 102 ................................................................................................................................ 5, 31

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TABLE OF ABBREVIATIONS

CPB Complainants Corrected Prehearing Brief

RPB Respondents Prehearing Brief

SPB Staffs Prehearing Brief

CIB Complainants Initial Posthearing Brief

RIB Respondents Initial Posthearing Brief

SIB Staffs Initial Posthearing Brief

CRB Complainants Posthearing Reply Brief

RRB Respondents Posthearing Reply Brief

SRB Staffs Posthearing Reply Brief

HTr. Hearing Transcript

CX- Complainant Exhibit

RX- Respondent Exhibit

SX- Staff Exhibit

JX- Joint Exhibit

ID Initial Determination

Commn Op. Commission Opinion

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I. INTRODUCTIONComplainant Rambus Inc. petitions for review of the March 2, 2012 Initial Determination

which found no violation of Section 337 as to all five of the asserted patents, i.e., U.S. Patent Nos.

6,470,405 (the 405 patent), 6,591,353 (the 353 patent), and 7,287,109 (the 109 patent) (collectively

the Barth I patents) and U.S. Patent Nos. 7,602,857 (the 857 patent) and 7,715,494 (the 494 patent)

(collectively the Dally patents). The ID found all of the asserted claims invalid as anticipated by or

obvious in view of alleged prior art. The ID also found the Barth I patents unenforceable due to

unclean hands arising out of Rambuss alleged spoliation of evidence. The ID further found that

Rambus had exhausted its rights in the Barth I patents directed to memory controllers as to a subset

of the accused products from downstream Respondents based on alleged purchase

of licensed memory devices in the United States.

Rambus petitions for review of the ALJs holdings of invalidity (anticipation and

obviousness) of all 61 asserted Barth I and Dally claims. For Dally, the ALJ legally erred in: (1)

shifting the burden of providing rebuttal evidence to Rambus; (2) finding that the Widmer Article

anticipates or renders obvious the asserted Dally claims despite that articles lack of enablement and

its failure to disclose the claimed on-chip equalization mechanism; (3) finding that the Widmer

Article in combination with Ewen renders obvious certain asserted Dally claims when the Widmer

Article states that it already incorporated the relevant teachings of Ewen and expressly teaches away

from combining the specific features the ALJ found it obvious to combine; (4) finding that the SL500

Art anticipates the asserted Dally claims based on prior invention, public use, and on-sale activity

without first determining what product was allegedly prior art and whether that product contained all

of the claimed features; and (5) construing output frequency to mean output data rate as opposed

to half the value of the output data rate when the technology mandates that latter construction and

the Dally patent specification supports it. Many of these legal errors were based on or compounded

by clearly erroneous factual findings.

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With respect to Barth I, the ALJ reached erroneous legal conclusions in: (1) shifting the

burden of providing rebuttal evidence to Rambus; (2) finding that the NextBus specification is prior

art when there is no evidence of the documents public availability before the Barth I 1995 filing date

and the indicia of such availability on the document are from 2005, a decade after Barth I was filed;

(3) finding sub silentio that SCI is prior art without addressing Rambuss contrary arguments; (4)

construing memory device and write command based on extrinsic dictionary definitions while

not addressing the intrinsic and extrinsic evidence refuting those constructions and stating that

Rambus did not present that evidence; and (5) failing to perform the mandated Graham obviousness

analysis in summarily concluding that 12 different combinations of prior art render Barth I claims

obvious. These legal errors were compounded by clearly erroneous findings of fact in concluding

that the Barth I claims are invalid based on prior art.

Rambus petitions for review of the ALJs holding of unenforceability of the Barth I patents

for unclean hands based on spoliation. The ALJ erred as a matter of law and fact in finding that

Rambus anticipated litigation at least by July 1998, and therefore had a duty to preserve documents,

based on prosecution, and licensing/litigation activities unrelated to the Barth I patents. In so doing,

the ID defies Federal Circuit precedent in holding that Rambus reasonably foresaw litigation on its

asserted Barth I patent applications years before: (1) those applications were amended to claim

features incorporated into Respondents accused products; (2) those applications issued as patents,

(3) the accused products were marketed, and (4) Rambus considered litigating the Barth I patents.

Fundamental errors of law and fact made in assessing anticipation of litigation infected the

ALJs bad faith determination, which also depended on adverse credibility determinations grounded

on clearly erroneous findings of fact. Moreover, the ALJ erred as a matter of law in effectively

establishing an irrebutable presumption of prejudice in the face of considerable evidence

demonstrating that Respondents defenses were not prejudiced by any document destruction. At the

very least, the degree of fault and degree of prejudice associated with the document destruction does

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not warrant the harsh sanction of dismissal.

Rambus also petitions for review of the ALJs holding on exhaustion based on legal and

factual errors. The ALJ did not identify any authorized sale of a memory controller, but instead

erroneously relied on the sale of DRAMs, i.e. memory devices, an error of law. Even if a sale of a

memory device could result in exhaustion, there is insufficient evidence to establish that an

authorized sale occurred in the United States. Finally, the ALJ made both legal and factual errors in

concluding that the Samsung/Elpida memory devices substantially embody the Barth I Patents. The

ALJs conclusions are based on the wrong legal standard, as well as a fundamental misunderstanding

of the applicable facts.

II. THE ALJS INVALIDITY DETERMINATIONS SHOULD BE REVIEWEDIn holding all 61 claims of the Dally and Barth I claims invalid, the ALJ applied an incorrect

legal standard. While noting that Respondents bear the burden of persuasion, the ALJ incorrectly

shifted the burden to Rambus of providing evidence that the patents are not invalid. ID at 85-86. In

support, the ALJ quoted a statement from Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1360 (Fed. Cir.

2007), that once a challenger has presented a prima facie case of invalidity, the patentee has the

burden of going forward with rebuttal evidence. Pfizer, however, in an analysis not addressed by

the ALJ, clarifies that this does not mean a patentee is required to present rebuttal evidence:

But, all that means is that even though a patentee never mustsubmit

evidence to support a conclusion by a judge or jury that a patent

remains valid, once a challenger introduces evidence that might lead

to a conclusion of invaliditywhat we call a prima facie casethe

patentee would be well advised to introduce evidence sufficient to

rebut that of the challenger.

Id. (emphasis in original). Consistent with that premise, the Supreme Court recently confirmed that a

challenger always bears the burden of proving invalidity by clear and convincing evidence.

Microsoft Corp. v. i4i Ltd. Pship, 131 S. Ct. 2238 (2011). The ALJs erroneous holding that

Rambus was required to provide rebuttal evidence infected his entire validity analysis. Moreover,

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while improperly placing a burden of presenting rebuttal evidence on Rambus, the ALJ compounded

that error by failing to address the evidence Rambus presented establishing that the prior art does not

invalidate the Dally and Barth claims. See Section III (Dally) and Section IV (Barth). The

Commission should review the ALJs invalidity holdings.

III. THE DALLY PATENTS ARE NOT INVALIDA. The Widmer Article Does Not Invalidate the Asserted Dally ClaimsThe Commission should review and reverse the ALJs finding that the Dally claims are

invalid based on the Widmer Article (RX-4109) because Respondents have not established that it is

either enabling or invalidating. The ALJ relies on erroneous facts and conclusions of law in finding

that it contains an enabling disclosure that teaches the claimed on-chip equalization mechanism, and

it would have been combined with aspects of Ewen (RX-4125) to achieve the claimed output

frequency of at least 1 GHz or to have a differential output.

1. The Dally Patents and the Asserted Dally ClaimsRambus asserts two Dally patents: U.S. Patent Nos. 7,602,857 (JX-120, the 857 patent) and

7,715,494 (JX-121, the 494 patent). The Dally patents share a common specification and are

directed to, among other things, improving signal integrity and data transmission for high speed,

chip-to-chip communication. See JX-120.0013 at 1:54-60. For instance, they teach a particular form

of transmitter equalization that is used on a chip to mitigate the negative effects a transmission

channel can have on the transmitted signal. See JX-120.0014 at 4:54-61; CX-9542C.0007-16. By

disclosing specific on-chip techniques to mitigate those negative effects, the receiver is more likely to

properly interpret the signal leading to more reliable and faster chip-to-chip communication. JX-

120.0014 at 3:1-8; CX-9542C.0014-16.

Rambus asserts claims 1, 2, 4-6, 9-13, 24-28, 31-36, 39-44, 47, and 49-53 of the 857 patent

and claims 1-3, 6, 8, 25, 26, 30, 39, 40, and 42 of the 494 patent. Claim 1 of the 857 patent is

exemplary of the independent claims, each of which recites, among other things, a semiconductor

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chip or integrated circuit having circuitry for performing a particular type of equalization. 857

patent claim 2 is exemplary of the claims that require high data-rate transfer capability, reciting

[t]he component as claimed in claim 1 wherein the transmitter circuit is operable to send the output

signal with an output frequency of at least 1 GHz and a bandwidth greater than 100 MHz.

2. The Widmer Articles DisclosureThe Widmer Article (the first three pages of RX-4109)1 is a paper that was part of the

International Solid State Circuits Conference (ISSCC) in 1996. It briefly discloses a

semiconductor transceiver with four transmitter circuits, each of which outputs data through a single-

ended serial output at 500 MBaud (or 500 megabits per second). See, e.g., RX-4109.0002 at Fig. 1.

The transmitter circuits each include a pre-distorting driver that boosts high-frequency content by

allegedly peaking the low and high levels of a signal by 50% in the intervals immediately following

transitions. RX-4109.0001.

The left side of Figure 4 shows the pre-distorting driver, which has four control inputs.

According to the Widmer Article, two of the inputs (DHBASE and DLBASE) set the base driver

levels, while the other two inputs (DHPEAK and DLPEAK) allegedly turn on the extra drive

required for peaking. RX.4109.0001; CX-10764C.0022. It is this peaking and the related circuitry

that Respondents contend is the equalization mechanism called for in the Dally claims.

3. The ALJ Erred in Finding the Widmer Article EnablingThe ALJ found the Widmer Article to be enabling (ID at 131-37), but because the Widmer

Article does not disclose a mechanism for generating the critical DHPEAK and DLPEAK signals,

Respondents did not present clear and convincing evidence that the Widmer Article enables the

1 The ALJ correctly found that the slides appearing at the end of RX-4109 are not prior art

because they are not part of the Widmer Article and are not a printed publication. ID at 130 (in a

typographical error, the word not was omitted from Respondents have not presented clear and

convincing evidence that the slides are a printed publication within the meaning of 102 in part

because Mr. Widmer, who was to verify that the slides were presented and publicly disseminated,

failed to provide such testimony at the evidentiary hearing).

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claimed on-chip equalization circuitry. Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed.

Cir. 2008) (An anticipating reference must be enabling; that is, the description must be such that a

person of ordinary skill in the field of the invention can practice the subject matter based on the

reference, without undue experimentation.). Instead, the evidence demonstrates that the Widmer

Article is nothing more than another hard-to-decode ISSCC paper (see RX-2772C.0103, discussing

another ISSCC paper), leading Dr. Singer to explain that one of ordinary skill in the art would have

found it impossible to make and use the claimed invention without undue experimentation. CX-

10764C.0023. The ALJs finding to the contrary was based on a number of incorrect grounds.

One is that the Widmer Article is allegedly enabled because a different reference, the

Widmer Patent (RX-2870), would have been an obvious addition to the disclosure of the Widmer

Article. ID at 133. According to the ALJ, a person of ordinary skill in the relevant art would have

found the Widmer Article to contain an enabling disclosure, with the Widmer Patent being

exemplary of how equalization can be done using the circuits disclosed and described in the Widmer

Article. Id. The Widmer Patent, however, is a 1970s-era reference that does not enable one of

ordinary skill in the art to perform the claimed on-chip equalization without undue experimentation.

Instead, it discloses a system implemented mostly with discrete circuit components (as opposed to

integrated circuit components on a chip), such as those connected by wires on a circuit board or

similar structure. CX-10764C.0075; RX-2870.0003 at Fig. 5. In addition to giving no indication that

all of its transmitter components are located on a chip, (CX-10764C.0075), the Widmer Patent

discloses components, such as inductors, that are difficult to place on a chip even today, much less

when the Dally patents were filed in 1997. Id.; RX-2870.0003 (showing inductors as part of

transformer 33 on the output of the transmitter); HTr. 2416:20-21 (Even today it is very difficult to

put inductors or transformers on a chip.).

The equalization mechanism of the Widmer Patent also differs substantially from the Widmer

Articles equalization mechanism. For example, it outputs data at 1.39 Mbps (RX-2870.0008 at

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6:17-20), which is over 350 times slower than the 500 Mbps rate contemplated by the Widmer

Article.2 There is no indication that the Widmer Patents equalization mechanism would scale to the

rates contemplated by the Widmer Article, much less do so on a chip. CX-10764C.0081. Another

significant distinction is that the Widmer Patent applies its equalization to signals that are

bifrequency or biphase-encoded. See, e.g., RX-2870.0001 at Abstract. These encoding schemes

mean that two signal levels are output for each bit, and the Widmer Patent discloses that its emphasis

operates on only one of those two signal levels (i.e., half of the bit period). Id.; CX-10764C.0074-75,

78-79. The Widmer Article, in contrast, is alleged to disclose a different emphasis mechanismone

that emphasizes a signal for an entire bit period. ID at 144-45. These different emphasis

mechanisms are not interchangeable, so the Widmer Patent cannot make up for the lack of

enablement of the Widmer Article. CX-10764C.0027, 78.

The ALJs finding of enablement through the Widmer Patent ultimately rests on the

erroneous assumptions that one of ordinary skill in the art would have understood that its 1970s-era

technology, operating orders of magnitude slower than the Widmer Articles disclosed rate,

implemented in discrete components as opposed to on a chip, and using an entirely different

equalization mechanism than the Widmer Article, would somehow make up for the Widmer Articles

lack of enablement and enable the claimed on-chip equalization mechanism. The Widmer Patent,

however, cannot save the Widmer Article.

The ALJ also erroneously relies on Respondents experts flippant and conclusory testimony

that a sophomore or junior in electrical engineering would have been able to make and use the

Widmer Articles emphasis circuit. ID at 135. To the contrary, it is, in fact, impossible to

understand the Widmer Article as written because it discloses a nonfunctional design. HTr. 2577:17-

2 It is also over 700 times slower than 1 Gbps, which is the rate required under the ALJs

construction of an output frequency of at least 1 GHz, and it is over 1400 times slower than 2

Gbps, which is the rate required under Rambuss construction. HTr. 1502:9-1503:13.

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2579:19. In particular, the Widmer Article states that DHPEAK and DLPEAK turn on the extra

drive required for peaking. RX-4109.0001. This means that the circuitry for generating DHPEAK

and DLPEAK is the very circuitry that provides the emphasis mechanism alleged to satisfy many of

the features of the asserted Dally claims. Figure 4, however, shows that the transistors driven by

DHPEAK and DLPEAK are providing the same voltage as the transistors driven by DHBASE and

DLBASE. When two transistors connected across the same voltage have their outputs combined, the

voltage is not increased. Instead, the same voltage is output on the line as when either transistor is

enabled. HTr. 2577:17-2579:19. Thus, an output with DHBASE asserted will have the same voltage

as when both DHBASE and DHPEAK are asserted. As Dr. Singer explained, [s]imply asserting

DH base or DH peak would give exactly the same output. HTr. 2578:8-11.

Since the same output results regardless of whether DHPEAK and DLPEAK are asserted, no

peaking actually occurs in the circuit shown in the Widmer Article. Because the circuitry depicted in

the Widmer Article cannot function the way the text says it should, there must be more sophisticated

circuitry involved to accomplish the type of peaking mentioned in the Widmer Article. HTr.

2579:18-19. The Widmer Article does not disclose that circuitry, and the circuitry it does disclose

cannot possibly perform the on-chip equalization of the asserted Dally claims. HTr. 2577:17-

2579:19.

3 The ALJ correctly held that Odysseus was not proven to be prior art. ID at 138.

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10764C.0026.4 Because Respondents expert, whose qualifications place him above the level of

ordinary skill, had to seek this confirmation, it is unreasonable to conclude that one ofordinary skill

in the art would have understood how the pre-distorting driver worked, let alone been capable of

making and using it.

The ALJs finding that the Widmer Article contains an enabling disclosure of the claimed

invention is clearly erroneous because the Widmer Patent cannot make up for the Widmer Articles

incomplete disclosure and the record provides strong affirmative evidence that one of ordinary skill

in the art would not have been able to make and use the claimed invention based on the Widmer

Articles brief and nonfunctional disclosure.

4. The ALJ Erred in Finding that the Widmer Article Discloses theClaimed On-Chip Circuitry

The Widmer Article does not show that the circuitry for generating DHPEAK and DLPEAK

is on-chip. The ALJ found to the contrary, primarily basing his finding on three facts: (1) the

Widmer Articles disclosure of a chip; (2) the Widmer Articles statement that [n]o external

components are required (RX-4109.0001); and (3) Respondents experts testimony that the

Widmer Articles equalization circuitry was implemented on a chip. ID at 133-136, 139. None of

these facts, either alone or collectively, provide clear and convincing evidence that the Widmer

Articles equalization mechanism was on-chip, as required by all of the asserted Dally claims. Each

fact is discussed below.

a. The Widmer Articles Disclosure of a Chip Does Not Mean thatCircuitry for Asserting DHPEAK and DLPEAK Is On-Chip

Regarding the first fact relied on by the ALJ, it is undisputed that the Widmer Article

discloses a chip. The question is whether the chip contains the claimed equalization logic and

4 Dr. Singer discussed Respondents experts testimony in one of his witness statements, but

the ALJ incorrectly excluded this portion of the witness statement because the testimony was not in

his expert report. But Ground Rule 10.5.6 permits witness statements to include evidence adduced at

deposition, so the Commission should reverse the ALJs exclusion of it.

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circuitry. The ALJs citations to the Widmer Articles general chip image and other portions that

mention chips do not answer this important question. Since DHPEAK and DLPEAK turn on the

extra drive required for peaking, (RX-4109.0001), the circuitry that determines when to activate

DHPEAK and DLPEAK is a key component of the equalization mechanism.5 See CX-10764C.0022-

25. Without it, peaking will not occur as allegedly intended, if at all. The Widmer Article, however,

does not disclose how to implement this circuitry, and therefore does not disclose or suggest that it is

on-chip. Id. Instead, several facts lead to the opposite conclusion, indicating that the circuitry for

asserting DHPEAK and DLPEAK is located off-chip. Id.

For instance, the Widmer Article describes DHPEAK and DLPEAK as inputs, much the

same way as data and other signals that are not generated within the chip are provided to the chip as

inputs. RX-4109.0001 (Control inputs DHBASE and DLBASE set the base driver levels, and

DHPEAK and DLPEAK turn on the extra drive required for peaking, emphasis added). Providing

these signals as off-chip inputs (as opposed to generating them on-chip) was consistent with how

chips described in ISSCC papers were often designed. As Dr. Singer explained, ISSCC publications

disclose cutting edge chips where it is often not known how well portions of the chip will function.

HTr. 2580:3-5. For that reason, all the time, a chip that will appear at ISSCC will have numerous

inputs so the signals on the inputs can be changed to test the chip. Id. at 2580:2-11.

The Widmer Article states that its chip was designed consistent with these principles. In

discussing one of [s]everal features [that] provide testability, the Widmer Article says that an on-

chip monitor with an interface to an external processorprovides control capabilities and collects

diagnostic data. RX-4109.0001 (emphasis added). The Widmer Article also specifies that its chip

5 The ALJ criticized the testimony of Rambuss expert regarding which circuitry is part of the

transmitter and which circuitry is not. See ID at 141-143. While Rambus disagrees with this

criticism, it is beyond dispute that DHPEAK, DLPEAK, and their associated circuitry are part of the

transmitter, as they are the exact features that allegedly turn on the extra drive required for peaking

on the transmitters output. RX-4109.0001. Therefore, if they are not on-chip, as claimed, the

Widmer Article does not invalidate the asserted Dally claims.

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has 361 pins that can be used for power, accepting inputs, and providing outputs, with 140 pins used

for ground and power, eight used for the 4 serial, duplex links (two pins per duplex), and 32 for

receiving the four parallel words of eight-bit data shown in Figure 1. Id. That leaves 181 pins for

use as inputs to provide testability and perform other functions, such as providing inputs DHPEAK

and DLPEAK. See CX-10764C.0023. In light of the Widmer Articles disclosure of an off-chip

processor providing control inputs and a multitude of pins that can accept inputs, and because DH

peak and DH base are referred to as inputs, one of ordinary skill sitting at ISSCC would have no

reason not to assume that they could be off-chip inputs. HTr. at 2580:11-15 (Singer).

The ALJ dismisses these facts, contending that a person of ordinary skill in the relevant art

would interpret the input language as referring to the signals being input into the Predistorting

Driverportion of the chip as explicitly shown in Figure 4. ID at 134 (emphasis in original). This

finding is incorrect for the reasons discussed above, as one of ordinary skill in the art would have

expected a chip being presented at ISSCC to have number of off-chip inputs and there is no

indication that DHPEAK and DLPEAK are generated on-chip. The ALJ also contends that the

Widmer Article refers to off-chip signaling as in and out as opposed to input and output. Id.

at 135-36. This finding is clearly erroneous because the Widmer Article states that an input to one

of its circuits can be provided by an external receiver clock that is indisputably located off-chip.

RX-4109.0001. Thus, contrary to the ALJs finding, the Widmer Article does use the term input to

refer to signals provided off-chip. Finally, the ALJ contends that certain off-chip signals are

described as being optional and not related to DHPEAK and DLPEAK. Id. at 136. Even if this were

true, it is beside the point. The Widmer Articles description of those off-chip signals as being

inputs establishes that one cannot assume that inputs DHPEAK and DLPEAK are on-chip as

opposed to off-chip.

b. Not Requiring External Components Does Not Mean thatCircuitry for Asserting DHPEAK and DLPEAK Is On-Chip

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The second fact the ALJ relied on to support his finding that the equalization circuitry is on-

chip is the Widmer Articles statement that [n]o external components are required. ID at 134-36.

This statement does not mean that the chip generates all signals, including DHPEAK and DLPEAK,

internally on-chip. Instead, the Widmer Article makes clear that a number of its signals are

generated by and provided from sources external to its chip. Indeed, the very purpose of the chips

many inputs is to accept externally-generated, off-chip signals. One example of an off-chip input is

data, which the ALJ acknowledges comes from an off-chip source. Id. at 135-36. Another example

is an external controller used to load a parameter related to packet size. RX-4109.0001. Yet

another example is the reference input for one of the Widmer Articles PLL circuits, which may be

provided by an external [i.e., off-chip] receiver clock. Id. The Widmer Article also discloses a

dummy off-chip driver (OCD) and receiver (OCR) to compensate for I/O circuit delay variations so

output timing is controlled more precisely. Id. (emphasis added). It further discloses an external

[i.e., off-chip] processor that provides control capabilities, among other things. Id. Without these

critical, externally-generated signals (like data), the chip would not function and would serve no

purpose. Accordingly, one of ordinary skill would not have understood the Widmer Articles

statement that [n]o external components are required to mean that all signals, including DHPEAK

and DLPEAK, are generated on-chip. CX-10764C.0024-25.

c. Respondents Experts Testimony Cannot Replace the WidmerArticles Disclosure

The final fact the ALJ relied on to support his finding that the Widmer Articles equalization

circuitry is on-chip is Respondents experts conclusory testimony. ID at 135, 143-44. Given the

Widmer Articles brief disclosure, the experts testimony is essentially based on the same facts that

the ALJ relied on (i.e., the Widmer Articles disclosure of a chip and its statement that no external

components are required). See id. Because these facts do not establish that the equalization circuitry

is on-chip for the reasons discussed above, Respondents experts testimony is entitled to no weight

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and cannot be used to supplant the Widmer Articles actual disclosure. Motorola, Inc. v. Interdigital

Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (An expert's conclusory testimony, unsupported

by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior

art reference itself.).

In summary, the Widmer Articles brief disclosure suggests that DHPEAK and DLPEAK are

generated off-chip, and none of the facts cited by the ALJ establishes otherwise.

5. The ALJ Erred in Finding that Additional Features from Ewen WouldHave Been Combined with the Widmer Article

The ALJ combined Ewen (RX-4125) with the Widmer Article to render obvious the claims

reciting an output frequency of at least 1 GHz (857 claims 2, 31, and 49; 494 claim 3) and

differential signaling (494 claims 25, 26, 30, 39, 40, and 42). ID at 147-54. The ALJs findings are

flawed because one of ordinary skill would not have combined those references as proposed and,

even if one had, it would not have resulted in the claimed inventions.

One of ordinary skill in the art would not have made the proposed combination because the

Widmer Article (published in 1996) states that its technology already adopts techniques used in

Ewen (published in 1995). RX-4109.0001. As Dr. Singer explained, [t]he authors of the Widmer

Article already claim to have incorporated the relevant features of [Ewen] into their design, so one of

ordinary skill in the art would not have considered combining other features from that paper. CX-

10764C.0034.

Not only does the Widmer Article already adopt the relevant Ewen techniques, but the

authors of Ewen are all authors of the Widmer Article. Compare the author list at RX-4125.0001

with the author list at RX-4109.0001. Thus, the authors of the Widmer Article were intimately

familiar with the teachings of Ewen when they designed the technology of the Widmer Article, yet

they only achieved an output data rate of 500 Mbps (half the rate of the claimed at least 1 GHz

under the ALJs construction, and only 1/4 the rate under Rambuss construction). This is not

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surprising, as serial links are sensitive designs where small changes can have significant

consequences. See CX-10764C.0035, 130. Simply swapping technology from a system without

emphasis, like Ewens, into a system attempting to provide a form of emphasis, like the Widmer

Articles, is not a straightforward task and one would not expect the combined system to operate at

the highest rates disclosed in either reference. Id. Moreover, as Respondents expert Dr. Hassoun

acknowledged, at least one of the authors of the Widmer Article was a person of exceptional skill in

the art. HTr. 1500:18-23. Despite this exceptional skill and full knowledge of Ewen, the authors of

the Widmer Article did not achieve the 1062 MBaud output that the ALJ contends one of ordinary

skill in the art would have achieved by combining the references.

Even if one of ordinary skill in the art had attempted to combine Ewen with the Widmer

Article, the resulting combination would not have provided an output frequency of at least 1 GHz.

Instead, Ewen discloses a system that has an on-chip signaling rate of 1062 Mbaud. RX-4125.0001.

This on-chip signaling rate is not the same as the rate of the signal once it is sent off-chip. CX-

10764C.0033. Typically, off-chip signaling rates are half of the on-chip rates, so Ewens output data

rate is 531 Mbps, which falls far short of the claimed rate under both the ALJs construction (1 Gbps)

and Rambuss construction (2 Gbps).6 Id. Even if one were to incorrectly assume that Ewens on-

chip rates were comparable to its off-chip rates, Ewens signaling rate is approximately half of the

claimed rate under Rambuss construction of output frequency. Id.

The ALJs obviousness analysis regarding the claims that recite an output frequency of at

least 1 GHz is two paragraphs long and does not address these significant problems with the

proposed combination. ID at 153-54. In that analysis, the ALJ merely states that the Widmer Article

refers to Ewen, provides a quote from Ewen, and states that it would have been obvious to modify

6 In addition, under Rambuss construction of a rate of at least 400 megahertz, which

requires a data rate of at least 800 Mbps, Ewens 531 Mbps rate and the Widmer Articles 500 Mbps

rate are both too slow to meet the claimed rate. Accordingly, taken separately or when combined,

Ewen and Widmer do not anticipate or render obvious 494 patent claims 30 and 42.

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the Widmer Article to achieve an output data rate of 1.062 Gbps in light of the need for increasingly

fast data transmission techniques in certain implementations. Id. at 153. Nowhere, however, does

the ALJ explain or cite any evidence explaining how one of ordinary skill in the art could have

accomplished such a combination or how the proposed combination would have been constructed.

He also does not explain why one of ordinary skill in the art would have attempted to incorporate

features from Ewen into the Widmer Article when the Widmer Article says that it had already

incorporated the relevant aspects of Ewen. He also does not address the fact that those of exceptional

skill achieved only half the data rate he contends one of ordinary skill would have achieved through

the combination. The ALJs conclusory analysis cannot withstand scrutiny.

Regarding the differential signaling claims, the ALJs analysis of the proposed Ewen/Widmer

Article combination is more extensive but equally flawed. See ID at 148-50. There, the ALJ

contends that one of ordinary skill in the art would have incorporated Ewens differential signaling

into the Widmer Articles single-ended system despite the fact that the Widmer Article teaches away

from using differential signaling by stressing the need to reduce wire count to avoid wire congestion.

RX-4109.0001; CX-10764C.0043. Converting to differential signaling would have increasedwire

congestion, contrary to the Widmer Articles teachings. Id. As the ALJ recognized, [g]enerally, a

prior art reference that teaches away from the claimed invention does not create [a]prima facie case

of obviousness, ID at 210 (citing cases), so the Widmer Article/Ewen combination was not obvious.

And even if one had been motivated to use differential signaling, it would have required a complete

redesign of the single-ended pre-distorting driver disclosed in the Widmer Article. CX-

10764C.0043-44. Given the lack of detail as to how the Widmer Articles driver is structured

redesigning it to support differential signaling would not have been possible for one of ordinary skill

in the art. Id.

For these reasons, the ALJ erred in finding that the Widmer Article, either alone or in

combination with Ewen, anticipates or renders obvious any asserted Dally patent claim. Rambus

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requests that the Commission review the ALJs invalidity findings and reverse them.

B. The SL500 Art Does Not Anticipate the Asserted Claims of the Dally PatentsRespondents contend that the asserted Dally claims are invalid based on prior invention,

public use, and offers for sale. To prevail, they had to show an actual reduction to practice occurred,

an actual product was in public use,7 or an actual product was offered for sale. Mycogen Plant Sci.,

Inc. v. Monsanto Co., 243 F.3d 1316, 1332 (Fed. Cir. 2001); Pfaff v. Wells Elecs., Inc., 525 U.S. 55,

67 (1998);Netscape Commcns. Corp. v. Konrad, 295 F.3d 1315, 1321 (Fed. Cir. 2002). They did

not.

The record reflects that LSI was attempting to design various chips, some of which did not

include the claimed emphasis features and therefore did not meet any of the asserted Dally claims.

Thus, it was Respondents burden to show that a product that was actually reduced to practice, in

public use, or offered for sale included the claimed emphasis features. The ALJ erred by finding that

it was irrelevant to determine whether a product with the claimed emphasis features was actually

reduced to practice, in use, or offered for sale. ID at 171-72. The ALJ further erred by not

considering evidence, including testimony by Respondents own expert, which showed that the

product that was at issue did not contain the emphasis features claimed by the asserted Dally patents.

Due to these errors, the Commission should review the ALJs invalidity findings and reverse them.

1. The ALJ Erred By Finding It Was Irrelevant To Determine WhatProducts Were Prior Art

While Respondents alleged that a chip called SL500 was conceived, reduced to practice,

used, and offered for sale to Seagate in 1995 to 1996, the ALJ correctly noted that LSI was

attempting to design multiple versions of its SL500 chips in this time frame. Id. at 160; 171-72; 176-

80. The ALJ found that at least one of these designs, had its

7 Although the ALJ did not explicitly address Respondents public use defense, it has been

addressed here for completeness.

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emphasis features disabled. Id. at 171-72. RX-4171.0001-2. The ALJ specifically noted that

Rambus correctly observes that some of the documents on which LSI relies refer to applications in

which the equalization circuitry has been disabled. ID at 171.

Despite the fact that at least some SL500 designs did not even include the claimed emphasis

features, the ALJ found that it was not relevant for him to determine whether a product that

actually included those features was reduced to practice, in public use, or offered for sale. Id. at 171-

72. But only those particular products which were reduced to practice, in public use, or offered for

sale would constitute prior art. Mycogen Plant Sci., 243 F.3d at 1332; Pfaff, 525 U.S. at 67;Netscape

Commcns., 295 F.3d at 1321. Thus, in other words, the ALJ held that it was irrelevant for him to

determine which products were even prior art. ID at 171-72. This was legal error. Mycogen Plant

Sci., 243 F.3d at 1332; Pfaff, 525 U.S. at 67;Netscape Commcns. , 295 F.3d at 1321

Rather than making this determination, the ALJ sidestepped the issue by arguing that even

though the emphasis features were disabled in the they couldbe

enabled. ID at 172. But in making that determination, the ALJ did not refer to the documentation

for the Id. That documentation explicitly states that

RX-4171.0006-7. The ALJ also

ignored testimony by Respondents own expert, who testified that

HTr. 1618-19. Referring to the

Respondents expert explicitly stated there was no emphasis in the application. Id. at

1618:18-22 (emphasis added). Thus, it was of critical importance for the ALJ to determine what

SL500 design was reduced to practice, in use, or offered for sale to Seagate, as certain designs did

not contain the claimed emphasis features. But the ALJ simply did not address either of these crucial

pieces of evidence showing that emphasis was removed from the product. Had he done so, he would

have found that determining what products actually constituted prior art was far from irrelevant.

Rather than referring to documentation regarding the the

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ALJ instead referred to documentation regarding the CWSL500 core.8 ID at 172. He noted that this

documentation describes that could be used to enable the

equalization circuitry. Id. But as described above, the documentation for the

specifically states that the

RX-4171.0006-7 (emphasis added). Thus, the inputs relied on by the ALJ could notbe

changed or enabled, but were instead fixed such that any emphasis was removed from the product. 9

Id. Because of this, even Respondents own expert agreed that there was no emphasis. HTr.

1618:18-22.

The ALJ also referred to simulations as evidence that the emphasis in the SL500 Fibre

Channel Transceiver couldbe enabled. ID at 172. But the simulations are just that, simulated

results that were not run on actual products. Indeed, documentation relied on by Respondents

confirms this, stating that the document contains data derived from functional simulations and

performance estimates. LSI Logic has not verified [] the functional descriptions. RX-4130.0062

(emphasis added). Further, Respondents expert clarified that the simulations were run in reference

to the CWSL500 core. RX-5430C at Q/A 388. They show how LSI hopedthe core could operate in

a differently designed chip where the inputs were not fixed so that the emphasis functionality could

be turned off or on. RX-5430C at Q/As 488-89. But as explained above, the documentation and

even Respondents own expert confirm that had its inputs fixed

in the off position. RX-4171.0006-7; HTr. 1618:18-22. Thus, emphasis could not be activated in

the SL500 Fibre Channel Transceiver.

8 As the ALJ found, the CWSL500 core is meant to be incorporated into the SL500 chips. ID

at 160. But, as the ALJ notes, certain chips have their emphasis functionality disabled even though

they are based upon the CWSL500. Id. at 171-72.9 The ALJ analogizes the emphasis settings in the SL500 to those in the infringing products.

ID at 171; 190-91. But documents and testimony show the settings can be enabled in the infringing

products, unlike in the where they are fixed to have no

emphasis and cannotbe enabled. CX-9542C at Q/As 446-457; RX-4171.006-7.

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Accordingly, the ALJ clearly erred by dismissing as irrelevant whether the product at issue

even contained the claimed emphasis features. He further erred by determining that the SL500

could have included emphasis, contrary to that products documentation and testimony by

Respondents own expert. ID at 171-72. It was critically important that the ALJ determine which

product was reduced to practice, publicly used, and offered for sale and actually used emphasis. By

failing to perform that analysis, the ALJ committed legal error. Mycogen Plant Sci., 243 F.3d at

1332; Pfaff, 525 U.S. at 67;Netscape Commcns., 295 F.3d at 1321

2. The Evidence Shows that the SL500 Fibre Channel Transceiver With NoEmphasis Was the Focus of LSIs Relationship with Seagate

The evidence shows LSIs relationship with Seagate was focused on

and in particular with emphasis removed:

In a presentation by LSI to Seagate, LSI indicated that the CWSL500 based productfor Seagate would be RX-4149.0004.

A Seagate presentation details its and says thatSeagate is creating a RX-4156C.0007, 7.

Bruce Johnson, a Seagate employee who allegedly met with LSI regarding theseproducts, was in the See RX-4175C.0001.

A third party email refers to a chip developed by LSI and saysand

RX-4176C.0001. Respondents stated that this email refers to the SL500

that was reduced to practice. RIB at 185-86.

Respondents expert confirmed that the is an LSIspecification that was produced by Seagate. HTr. 1615:4-9. It states that there is no

emphasis in the application. Id. at 1618:14-22; RX-4171.0006-2, 7.

Respondents expert testified that the documentation showing the

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transceiver had emphasis removed is documentation for LSIs SL500. RX-

5430C at Q/A 51.

The SeriaLink 500k Technology Core Specification produced by Seagate does notmention emphasis. See RX-4150.

The only two product specifications related to the SL500 from Seagate either 1) donot mention emphasis or 2) affirmatively state that there is no emphasis in the

product. RX-4171.0006-7; RX-4150.

Rambuss expert testified that testing of the SL500 by Seagate contained a largeamount of intersymbol interference, indicating that emphasis was likely not used in

the product. HTr. 2587:4-89:14; RX-4175C.0067, 77.

Rambuss expert testified that the simulations performed on the preliminaryCWSL500 design show that the circuit was not functioning when emphasis was

enabled, possibly indicating why the feature was removed. CX-10764C.0129-30;

HTr. 2584:9-86:12.

This evidence shows that if any product was prior art, it was the of the

SL500. That product did not meet the asserted Dally claims because the emphasis functionality,

which is alleged to satisfy multiple features of the asserted Dally claims, was permanently disabled.

ID at 187-92. The ALJ, however, did not consider this evidence, as he erroneously found he need

not determine what products were actually prior art. Id. at 171-72.

3. Respondents Did Not Show What SL500 Product Was Reduced ToPractice, Used, or Offered for Sale

To prevail on their invalidity defense, Respondents had to show by clear and convincing

evidence that a product incorporating the claimed emphasis features was reduced to practice, publicly

used, or offered for sale. Respondents have not done this, as they have provided scant information

on which chip was actually produced. Indeed, the ALJ noted that the final documentation or

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circuitry for the SL500 was not of record, noting that

Id. at 170. Thus, the ALJ has acknowledged that definitive evidence that would allow him

to determine what products were reduced to practice is not even of record.10 For this reason alone,

the Commission should reverse the ALJs finding.

Respondents have also provided no testimony by any witness with personal knowledge of

what was actually reduced to practice, used, or offered for sale. Respondents recognized that such

evidence would be necessary to prove what was actually prior art and attempted to submit testimony

from two current or former LSI employees and two Seagate employees. But due to Respondents

questionable discovery tactics, this evidence was excluded. HTr. 34:6-36:5. Thus, with no testimony

based on personal knowledge, Respondents could not meet their burden of showing what was prior

art. Instead, Respondents relied entirely on the testimony of their expert, who admitted that he was

not at LSI at the relevant time and so has no personal knowledge of what was offered for sale. HTr.

1612:14-18. Indeed, when asked whether it was the of the SL500 with no

emphasis that was offered for sale, Respondents expert floundered, stating Im not sure if this was

exactly what was offered for sale or not, this exact document . . . [p]robably not, I am not sure if

this particular product was, what was being offered for sale, and [i]t is not clear to me that this

particular product, this one was the only thing that was being offered that that point. HTr. 1616:6-

20. Not sures and probably nots are not clear and convincing evidence of invalidity.

Respondents attempt to salvage this lack of evidence by relying on other inadequate and

circumstantial evidence. For example, the ALJ relies on passing reference to the word emphasis or

pre-emphasis option in a Seagate employees notebook (RX-4173C.0030-31) to argue that LSI

10 The ALJ attempts to state that the lack of circuitry would not matter because such

circuitry was well known in the prior art as exemplified by the Widmer Article, the Widmer Patent,

and other art of record. ID at 170. But there were no obviousness allegations related to the SL500

Art and the ALJ provided no obviousness analysis.

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was informing its customers that the products would include[] the emphasis functionality. ID at

163, 181. This is speculative at best. There is no evidence regarding what was meant by these

passing references. And it is not evidence that the product being offered to Seagate included

emphasis. Indeed, to the contrary, as discussed above the weight of the evidence shows that LSI was

offering its which had no emphasis. Speculation-based, isolated, and

uncorroborated notebook entries simply cannot carry Respondents burden of clear and convincing

evidence, especially in light of the evidence showing that what was developed had no emphasis.

The ALJ also relies on the publication of a paper in February 1997 to conclude that a chip

must have been fabricated before February 1997.11 Id. at 165. He refers to testimony by

Respondents expert who states as a general matter that the journal requires documentation related to

a fabricated chip be accompanied with submissions. HTr. 1677:9-22. But this expert admitted that

he was not at LSI in the relevant time frame. HTr. 1612:14-18. Thus, he has no knowledge of what,

if anything, was submitted with this paper. His testimony regarding the supposed general practice of

a publication cannot substitute for evidence of what, if anything, actually accompanied the

submission. Further, he was proffered as an expert on technical issues related to the Dally

technology, not the general practice of the ISSCC. Thus, his testimony should not be given weight.

Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 597 (1993).

Respondents argument is at best speculation, not clear and convincing evidence. Indeed,

this same speculative argument was rejected by the ALJ with reference to the Widmer Article and

Odysseus. ID at 137-38. There, the ALJ stated that:

Dr Hassoun speculates that because the Widmer Article and the Odysseusdocument list the same authors, the Odysseus device was the working chip

that permitted the Widmer Article to be accepted and presented at ISSCC

11 Respondents do not rely on the paper as a printed publication. And in any event, the paper

was provided to the Patent Office during prosecution of the Dally patents and the asserted claims

were allowed over it. See JX-120.003. Indeed, the PTO found that Dally conceived of his invention

before the date of the paper. See JX-122.067-69.

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1996. However, besides Dr. Hassouns speculation, Respondents provide

no hard evidence to support this conclusion.

Id. at 138. Likewise, there is no hard evidence of what, if anything, was submitted with the ISSCC

article other than Dr. Hajimiris speculation.

The ALJ also noted that there were differences between the Widmer Article and the

Odysseus documentation, stating that while the technology of the Widmer Article and Odysseus

may have been similar in many ways, the evidence demonstrates that Odysseus was not necessarily

the chip disclosed in the Widmer Article. Id. Here, too, there are differences between the ISSCC

paper and the SL500 documentation relied upon by the ALJ. For example, the ISSCC paper states

that the chips TX rise/fall time is 100-385 ps. RX-4107.0002. Yet the documentation relied upon

by the ALJ merely lists for entries related to the transmitters rise and fall

time. RX-4130.0055. Indeed, many of the entries throughout the document are labeled TBD. See,

e.g., id. at 39, 55, 56. This is because the design of these products was just that -- to be determined.

It was incomplete and changing. Respondents essentially attempt to bridge the gap between

preliminary documentation and an article nearly a year and a half later to argue that a chip must have

been created some time in between, but they provide nothing more than speculation. See RX-

4130.0007 (dated September 1995). Thus, while there may be similarities in documentation,

Respondents simply have provided no concrete evidence of what, if anything, was submitted with the

ISSCC paper.

Thus, Respondents evidence that an SL500 chip with emphasis was reduced to practice, in

public use, and offered for sale, amounts in total to passing references to emphasis in a notebook

with no explanation of what was meant or discussed and a paper that itself is not prior art with no

hard evidence of what, if anything, was submitted with it. This is not clear and convincing evidence,

especially in light of the overwhelming evidence that LSI was focused on reducing to practice and

offering for sale to Seagate the of the SL500 without emphasis.

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Given that: 1) Respondents rely on speculation; 2) the ALJ found that Respondents did not

provide final documentation regarding the SL500; 3) Respondents provided no testimony based on

personal knowledge; and 4) Respondents own expert admitted he was not at LSI at the time and is

not sure if the product offered for sale to Seagate was one which had emphasis removed,

Respondents cannot meet their heavy burden of clear and convincing evidence.

4. Respondents Did Not Meet Their Burden Regarding an Offer For Sale toCabletron

The ALJ also found that the Dally patents are invalid based on an offer to sell a chip called

to Cabletron. ID at 174-76; 181-82. But like the SL500, the ALJ never determined

whether the chip that was allegedly offered for sale actually contained the claimed emphasis features.

Id. Instead, he merely presumed that the chip must have included that functionality because it was

meant to be based on the CWSL500 core. But as described above with reference to the

the mere incorporation of the CWSL500 did not guarantee that the chip

contained emphasis. See RX-4171.0006-7. The incorporated the

CWSL500 core, yet it is clear that it contained no emphasis. Id. When confronted with this conflict

at trial, even Respondents own expert admitted that the emphasis circuitry in the chip could

have been fixed to be turned off just as in the HTr. 1624:7-

17. That evidence alone, not addressed by the ALJ, justifies reversal. In re Turlay, 304 F.2d 893,

899 (C.C.P.A. 1962) (It is well established that an anticipation rejection cannot be predicated on an

ambiguous reference.).

The ALJ erred again by failing to determine what product was actually prior art, and whether

that product even contained the claimed emphasis features. The ALJ further erred by not addressing

testimony of Respondents expert who stated he cant say whether the circuitry in Shemp could be

fixed and turned off just like the fibre channel version of the SL500. Id. The ALJs finding should

be reversed.

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Dally claims,12 each high signal level represents one bit of data (e.g., a 1) and each low signal level

also represents one bit of data (e.g., a 0). HTr. 1472:22-1473:5. Thus, as the figure above

demonstrates, two bits of data are represented within a single Hertz. Because two bits of data are

provided in each Hertz, the plain and ordinary meaning of the term output frequency is one-half the

value of the output data rate. CX-9542C.0054-55; HTr. 705:24-706:6.

The Dally patent specification confirms this construction. CX-9542C.0054-55. For example,

in describing Figures 2A and 2B, the Dally patents state that the highest frequency of interest for a 4

Gb/s signal is 2 GHz (i.e., half the data rate). JX-120.0014 at 3:59-63. Further confirming this

relationship between output frequency and data rate, in describing another set of figures, the Dally

patents state that our operating frequency of 2 GHz correspond[s] to a bit rate of 4 Gb/s. Id. at

4:16-19. These passages confirm that an NRZ signal with an output frequency of 2 GHz has a data

rate of 4 Gb/s, just as an NRZ signal with the claimed output frequency of at least 1 GHz has a data

rate of at least 2 Gb/s.

In spite of these facts, the ALJ found that output frequency has a one-to-one relationship

with data rate, contending that Rambuss construction is based on a number of mistaken assumptions.

ID at 24-34. These assumptions, however, are not assumptions at allthey are simply statements

of how the technology operates. The ALJs analysis of these assumptions contains several

fundamental errors. One example that permeates the ALJs analysis is the focus on actual data

patterns as opposed to the rate at which a signal is capable of sending data. For example, on page 26

12 The ALJ contends that Rambuss construction assumes NRZ signaling but NRZ signaling

is not required by the asserted Dally claims. ID at 27. The ALJ has misinterpreted the claims. The

asserted Dally claims require NRZ signaling by reciting that each bit of data is represented by onesignal level, where that signal level may vary based on certain claimed conditions. See, e.g., 857

claim 1, reciting one signal level under a first set of conditions and another signal level under a

second set of conditions. The ALJ attempts to refute this fact by citing the Staffs figure of a

Manchester-encoded signal. ID at 27-28. Manchester-encoded signals, however, provide two signal

levels per input bit, not one. CX-10764C.0009-10, 78-79. Thus, the figure is not covered by the

claims, which expressly require one output signal level per input bit, and the figure does not support

the ALJs conclusions.

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of the ID, the ALJ relies on the Staffs figure of a signal having signal levels representing successive

ones followed by signal levels representing successive zeros. The figure labels this four-bit sequence

as spanning one Hertz. This is incorrect as a technical matter because the signal is capable of

transmitting a 1010 data pattern in that same span. See CX-9542C.0055. Using a 1010 data pattern

clarifies that the span identified as one Hertz in the Staffs figure actually represents two Hertz.

Accordingly, when properly understood, the Staffs figure supports Rambuss construction.

Another example of this same type of error appears on page 27 of the ID, where the ALJ

illustrates Figure 2A of the Dally patents. That figure shows a data pattern with varying numbers of

consecutive high and low signal levels representing zeros and ones. Using this figure, the ALJ

erroneously concludes that Rambuss assumption that one cycle necessarily includes one high signal

and one low signal is in error. ID at 27. But once again the ALJ focused on the highs and lows in a

particular data pattern as opposed to the numbers of highs and lows that the signal is capable of

providing. See CX-9542C.0055; HTr. 705:24-706:6. The critical question is how fast the signal is

capable of transitioning, not how fast it actually transitioned when transmitting a particular data

pattern (as the ALJ analyzed). Id. Due to these and other errors, the Commission should review the

ALJs construction of output frequency and adopt Rambuss construction.

IV. THE BARTH I PATENTS ARE NOT INVALIDThe ALJ found that Respondents met their heavy burden of proving all Barth I claims invalid

by clear and convincing evidence. But in reaching that conclusion, the ALJ legally erred in finding

that the NextBus specification is prior art despite no evidence of its public availability and the

exclusion of testimony from the one person Respondents said that can really authenticate for us

[its] public availability. HTr. 286:5-7. The ALJ also erred in construing the claimed memory

device so broadly as to include memory controllers, memory modules, and memory systems based

on a dictionary definition of device when the intrinsic and extrinsic evidence refute that

construction, evidence the ALJ did not address and said Rambus did not even present. ID at 108.

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And the ALJ erred in concluding that prior art asynchronous systems anticipate the claimed

synchronous control operations and that aspects of asynchronous and synchronous prior art can be

combined to improve speed and efficiency, deficits not remedied by the proposed combinations.

The ALJ also erred in relying on the on-going reexamination proceedings. At the Hearing,

the ALJ correctly noted the different standard of the PTO and the fact that the PTO does not apply

the statutory presumption of validity. HTr. 2712:18-22. This was not disputed by Respondents and

cannot be. HTr. 2712:18-2713:15; see alsoIn re Swanson, 540 F.3d 1368, 1377-78 (Fed. Cir. 2008).

Given that, the ALJ stated: I am not going to follow what the Board does. I am not going to cite

what the Board does. HTr. 2713:7-10. Nonetheless, the ALJ repeatedly followed and cited the

Board and PTO. ID at 94, 108, 109, 118, 120, 212. Not only was that legal error, the PTOs analysis

contradicts the Commissions findings in the 661 Investigation and the ALJs findings here that

Farmwald 037 does not invalidate the Barth I claims. 661 ID at 49-56; CX-10765C.0088-89; ID at

121-22. The ALJs invalidity holdings on the Barth I patents should be reviewed.

A. Background of the Technology of the Asserted Barth I PatentsThe asserted Barth I patents are directed to synchronous systems and methods for increasing

the efficiency of communication between a memory controller and memory devices. JX-3 at 1:14-

17. This is achieved by decoupling the timing of data control from the timing of data transfer. Id. at

3:24-25. They teach, for example, that after a memory controller issues a read command or a write

command to a memory device, the memory controller separately sends a signal to indicate when

sampling or data transfer is to begin. Id. at 7:28-30; 8:63-67. Barth I calls that signal a strobe signal.

Id. at 8:63-67. Barth I explains that there are several benefits to decoupling command control

information, such as a read or write command, from the data transfer start information, or strobe

signal. One is to specify a transfer operation for any amount of data. JX-3 at 9:20-22. A second is

to reduce the latency between a data transfer request and the beginning of data transfer can be

reduced. Id. at 9:35-45; 661 Order No. 12 at 21. Decoupling also makes the system more flexible.

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JX-3 at 10:21-33.

B. The Prior

rambus itc1

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