Case: 13-1623

Document: 23

Page: 1

Filed: 01/28/2014

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 2013-1623 (Reexamination No. 95/001,169)

IN RE RAMBUS, INC.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. APPELLANT RAMBUS, INC.S RESPONSE IN OPPOSITION TO USPTO DIRECTORS MOTION FOR REMAND Greg H. Gardella Scott A. McKeown Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. 1940 Duke Street Alexandria, VA 22314 (703) 413-3000 ggardella@oblon.com smckeown@oblon.com

Case: 13-1623

Document: 23

Page: 2

Filed: 01/28/2014

I. INTRODUCTION The Appellee/Intervener, the Director of the United States Patent and Trademark Office (Appellee), has not carried its burden of demonstrating that remand of this case is justified. The Appellee has proffered only a generalized allegation that the recent decision by this Court in Rambus Inc. v. Rea, 2013 WL 3242241 (Fed. Cir. 2013) (the 2012-1480 Rambus decision) involved a prior art reference and patent which share the same or similar specifications. The Appellee does not confess error in the earlier Patent Trial and Appeal Board (PTAB) decision or explain what aspect of the 2012-1480 Rambus decision would be likely to influence the PTABs evaluation of the merits on remand. Indeed, the 20121480 Rambus decision relates to the 109 patent, the claims of which are directed to a different embodiment than the claims of the 353 patent. (See discussion infra) The motion to remand should be denied because the Appellee has not identified any potential benefit which would outweigh the substantial costs that would be borne by Appellant and the PTAB on remand. II. STATEMENT OF FACTS This appeal has been taken from a decision by the PTAB in an inter partes reexamination of U.S. Patent 6,591,353. The PTAB maintained the Examiners rejection of claims 1, 5, 7, 11, 14, 19 and 23 under Hayes and reversed the

Case: 13-1623

Document: 23

Page: 3

Filed: 01/28/2014

Examiners decision not to reject claims 1 through 26. The PTAB Decision set forth the following new grounds of rejections: New Ground #1- Claims 2, 6, 10, 17, 25 and 26 as obvious under 35 U.S.C. 103(a), based on Hayes in view of Bennett. New Ground #2 - Claims 3, 4, 12, 13, 21 -13, 33 and 34 as obvious under 35 U.S.C. 103(a) based on Hayes, Bennett and Inagaki. New Ground #3 - Claims 2-10, 12-14, 16, 17 and 20-26 as obvious under 35 U.S.C. 103(a) based on Hayes with Ohshima. New Ground #4 - Claims 1-14, 16, 17 and 19-26 as obvious under 35 U.S.C. 103(a) based on Kushiyama, Hayes and Lu. New Ground #5 - Claims 1-4, 6-9, 11-13, 15-16, 18-22 and 24-26 as obvious under 35 U.S.C. 103(a) based on Farmwald 755 and Lu. New Ground #6 - Claims 1-4, 6-9, 11-13, 15-16, 18-22 and 24-26 as obvious under 35 U.S.C. 103(a) based on Farmwald 755 and iRAM. (A136 et seq.) As can be appreciated from the foregoing, only two of the appealed grounds involve Farmwald 755. The remaining five are based on Hayes or other references.

Case: 13-1623

Document: 23

Page: 4

Filed: 01/28/2014

The Appellees motion to remand is based on the assertion that the 353 patent and the Farmwald 755 reference (at issue in this appeal) have specifications which are the same or similar to the 109 patent and Farmwald 037 reference, respectively, which were at issue in the 2012-1480 Rambus decision. particularly, the Appellee urges that [i]n the 2012-1480 Rambus decision, this Court analyzed various aspects of Farmwald 037s disclosure as well as the specification of Rambuss 109 patent. Notably, Farmwald 755 (at issue in this case) and Farmwald 037 (discussed in the 2012-1480 Rambus decision) share the same specification. Id. at *3. Further, the 353 patent (at issue in this case) and the 109 patent (at issue in the 2012-1480 Rambus decision) share a similar specification. (Motion at 2) However, the Appellee does not specify any particular aspect of the 2012-1480 Rambus decision which might, on remand, affect the PTABs evaluation of the merits in this case. Rather, Appellee merely asserts that there are similarities in the two cases indicating that review of this Courts 2012-1480 Rambus decision would be helpful and important to the Boards thorough analysis in this case. Accordingly, the Director believes it is in the best interest of the parties and this Court to remand the case back to the Board to reconsider its More

Case: 13-1623

Document: 23

Page: 5

Filed: 01/28/2014

opinion currently on appeal and the pending claims in light of the Rambus 2012-1480 decision. (Motion at 2) Appellee offers no further explanation as to how the 2012-1480 Rambus decision might influence the PTABs evaluation of the merits of the two grounds based on the Farmwald 755 patent. The 2012-1480 Rambus decision itself noted that 109 patent (at issue in that appeal) is directed to a different embodiment than the 353 patent (at issue in this appeal): The 109 patent discloses and claims certain methods of controlling data transfers to and from a DRAM. As the Board found, the specification describes at least two embodiments, which the Board referred to as the strobe embodiment and the non-strobe embodiment. (Decision at 4) As explained in Appellants opening brief, the 353 patent is instead directed to the strobe embodiment. (See, e.g., Opening Brief at 12) III. ARGUMENT A remand requested by an administrative agency in view of an intervening court decision is appropriate only if the cost associated with the remanded proceeding is justified by the potential benefits of further consideration by the administrative agency. This Court discussed in SKF USA Inc. v. U.S., 254 F.3d

Case: 13-1623

Document: 23

Page: 6

Filed: 01/28/2014

1022, 1028-29 (Fed.Cir. 2001) the appropriateness of remand requested by an administrative agency: It appears that when an agency action is reviewed by the courts, in general *1028 the agency may take one of five positions . . . Third, the agency may seek a remand to reconsider its decision because of intervening events outside of the agency's control. . . . A comprehensive discussion of many of these issues is set forth in Lawrence v. Chater, 516 U.S. 163, 116 S.Ct. 604, 133 L.Ed.2d 545 (1996) (per curiam). We briefly discuss the first four situations before turning to the case at hand. . . . Third, the agency may seek a remand because of intervening events outside of the agency's control, for example, a new legal decision or the passage of new legislation. See Lawrence, 516 U.S. at 169, 116 S.Ct. 604 (discussing remands to lower courts based on intervening factors); Nat'l Fuel Gas Supply Corp. v. Fed. Energy Regulatory Comm'n, 899 F.2d 1244, 1249 (D.C.Cir.1990) (granting Commission's request for remand following new legal decision). A remand is generally required if the intervening event may affect the validity of the agency action. See Ethyl Corp. v. Browner, 989 F.2d 522, 524 (D.C.Cir.1993) (noting the tradition of allowing agencies to reconsider their actions where events *1029 pending appeal draw their decision in question). 6

Case: 13-1623

Document: 23

Page: 7

Filed: 01/28/2014

In the foregoing passage the Federal Circuit cited and relied upon Lawrence v. Chater, 116 S.Ct. 604 (1996). The Lawrence Court held that if the delay and further cost entailed in a remand are not justified by the potential benefits of further consideration by the lower court, a [remand] order is inappropriate. Id. at 607. Here, only two out of the seven appealed grounds involve the Farmwald 755 patent. The 2012-1480 Rambus decisions discussion of the Farmwald 037 reference has no absolutely bearing on the majority of the grounds at issue in this appeal, most of which are instead based on the Hayes reference. Moreover, the Appellee has not identified any concrete respect in which the 2012-1480 Rambus decisions findings regarding the Farmwald 037 reference would impact the PTABs evaluation of the asserted grounds of obviousness based on the Farmwald 755 patent. Indeed, the 353 patent is directed to the strobe embodiment whereas the 109 patent is directed to the non-strobe embodiment.

Case: 13-1623

Document: 23

Page: 8

Filed: 01/28/2014

IV. CONCLUSION Remand in this instance is not justified because there is no discernable benefit in doing so, much less any benefit which would outweigh the substantial cost and burden on both the Appellant and the PTAB. The Appellees motion to remand should be denied.

DATED: January 28, 2014

Respectfully submitted,

/s/Greg H. Gardella Greg H. Gardella Scott A. McKeown OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 Duke Street Alexandria, VA 22314 (703) 413-3000 ggardella@oblon.com smckeown @oblon.com ATTORNEYS FOR APPELLANT RAMBUS,INC.

Case: 13-1623

Document: 23

Page: 9

Filed: 01/28/2014

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT IN RE RAMBUS, INC., 2013-1623 CERTIFICATE OF INTEREST Counsel for Appellant Rambus, Inc. certifies the following: 1. The full name of every party or amicus represented by me is: Rambus, Inc. 2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is: N/A 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are: N/A 4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court are: Greg H. Gardella, USPTO Reg. No. 46,045 Scott A. McKeown, USPTO Reg. No. 42,866 OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, L.L.P.

January 28, 2014 /s/Greg H. Gardella Greg H. Gardella

Case: 13-1623

Document: 23

Page: 10

Filed: 01/28/2014

CERTIFICATE OF SERVICE I, Greg H. Gardella, certify that on January 28, 2014, I electronically filed the foregoing APPELLANT RAMBUS, INC.S RESPONSE IN OPPOSITION TO USPTO DIRECTORS MOTION FOR REMAND using the Courts CM/ECF filing system, which constitutes service, pursuant to Fed. R. App. 25(c)(2), Fed. Cir. R. 25(a), and the Courts Administrative Order Regarding Electronic Case Filing 6(A) (May 17, 2012), on counsel for Appellees: U.S. Patent & Trademark Office, Office of the Solicitor Nathan K. Kelley nathan.kelley@uspto.gov William LaMarca william.lamarca@uspto.gov Stacy Beth Margolies stacy.margolies@uspto.gov Scott Weidenfeller scott.weidenfeller@uspto.gov P.O. Box 1450 Mail Stop 8 Alexandria, VA 22213-1450 /s/Greg H. Gardella Greg H. Gardella Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. 1940 Duke Street Alexandria, VA 22314 Phone: (703) 412-6297 Fax: (703) 413-2220 ggardella@oblon.com