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Case3:10-cv-04017-JSW Document56
Filed09/30/11 Page1 of 37
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Edward Kmett (CA Bar No. 204374) ekmett@fchs.com FITZPATRICK, CELLA, HARPER & SCINTO 650 Town Center Drive Suite 1600 Costa Mesa, CA 92626 Telephone: (714) 540-8700 Facsimile: (714) 540-9823 Anthony M. Zupcic (Pro Hac Vice) azupcic@fchs.com Robert H. Fischer (Pro Hac Vice) rfischer@fchs.com Douglas Sharrott (Pro Hac Vice) dsharrott@fchs.com FITZPATRICK, CELLA, HARPER & SCINTO 1290 Avenue of the Americas New York, New York 10112 Telephone: (212) 218-2100 Facsimile: (212) 218-2200 Kenneth R. Adamo (Pro Hac Vice) kradamo@kirkland.com KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 Telephone: (312) 862-2000 Facsimile: (312) 579-2200 Attorneys for Plaintiff International Business Machines Corporation UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA INTERNATIONAL BUSINESS MACHINES CORPORATION, Plaintiff, v. RAMBUS INC., Defendant. ) ) ) ) ) ) ) ) ) ) )
Case No. C 10-04017 JSW DECLARATION OF ANDREW METZ
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I, Andrew H. Metz, declare as follows: (1) I have been retained on behalf of defendant, International Business Machines Corporation (IBM) to provide certain facts regarding aspects of the practice of the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO) as pertinent to the present action, and to provide certain opinions regarding the actions of the PTO and Board in the proceedings below. A true and correct copy of my current curriculum vitae (CV) is attached as Exhibit A.
(2) I have a Bachelor of Science degree from the University of Maryland, which I received in 1970, where I majored in chemistry. I have a Juris Doctor degree from the University of Baltimore School of Law, which I received in 1980. I was admitted to the Bar of the State of Maryland in November 1980, and am currently a member of that Bar, the Bar of the Supreme Court of the United States and the Bar of the Court of Appeals for the Federal Circuit. I am registered to practice before the PTO. My Registration Number is 58,519.
(3) I was employed by the PTO for over 30 years. I commenced my employment at the PTO in June 1972. From 1972 to 1984, I was a patent examiner in Group 110 examining applications involving lubricant compositions, fuel compositions, catalysts and catalytic processes. My duties as a patent examiner are fully set forth in Exhibit A and included determinations of patentability, preparing an application for issue, including conducting an interference search to determine if an interference was appropriate. From 1984 until 1987 I was a Supervisory Patent Examiner in Art Units 112 and 116 of Group 110. In Art Unit 112, I was responsible for the conduct of the examination of patent applications by the examiners in my Art Unit in the fields of electrochemistry and electrochemical apparatus. A more thorough description of my duties as a Supervisory Patent Examiner is set forth in Exhibit A. Following that, I was assigned to be the Supervisory Patent Examiner in Art Unit 116, which examined patent applications in the fields of petrochemistry and refining processes, catalysts,
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carbohydrates and cleaning methods. My duties as the Supervisory Patent Examiner in Art Unit 116 are fully set forth in Exhibit A.
(4) During the time I was an examiner, I examined countless patent applications, and based upon the patentability searches I conducted in the performance of my duties I considered whether to recommend institution of interference proceedings involving applications for which I was responsible.
(5) In July 1987, I was appointed by the Commissioner of Patents and Trademarks to serve as a member of the Board of Patent Appeals and Interferences (Board). At the time I joined the Board, a member was called an examiner-in-chief. See 35 U.S.C. 3(a), 7 (a)-(c), as then in force. That title was later changed to Administrative Patent Judge (APJ) (See Commissioner Lehmans Notice of October 15, 1993 in 1156 OG 32, November 9, 1993). Among the responsibilities of an APJ on the Board (then and to the present day) are to hear appeals from final rejections of pending patent applications and reexaminations made by the examining corps, and some APJs also hear in the first instance inter partes interferences. 35 U.S.C. 134 and 135. In 1990, I was assigned to conduct inter partes proceedings in addition to deciding my ex parte cases. I served primarily in the capacity of an inter partes APJ on the Board for the next sixteen years until January 2005 when I retired from federal service. In the spring of 2006 I became of counsel to the law firm of Ditthavong & Mori (now Ditthavong, Mori and Steiner). My work since leaving the PTO has included drafting new patent applications for foreign clients for foreign filing and subsequent filing in the United States; drafting new patent applications for domestic clients for filing in the United States; advising how to provoke an interference and advising and consulting with respect to conducting on-going interference proceedings.
(6) During my tenure as an APJ, my duties encompassed a number of interference-related activities, including reviewing examiners recommendations regarding whether to institute interferences, 3
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assisting examiners in setting up applications for interference, presiding over conferences in interferences with the parties counsel, serving as the motions judge in the preliminary motions phase, authoring motions and priority opinions, and sitting on three judge panels to decide preliminary motions and to decide priority, including awarding judgment. During my tenure as an APJ, I presided over roughly 300 (three hundred) interference proceedings.
(7) I have served as an expert in interference practice for the Office of Enrollment and Discipline of the PTO in three disciplinary proceedings. I have also served as an expert in interference practice in two Hatch-Waxman litigations in United States District Courts.
Matters Considered (8) My task was to review the interference proceedings below, provide certain factual information regarding PTO and Board practice as pertinent to those proceedings, and assess the soundness and justifications for the Boards decision in this instance declining to permit IBM to file preliminary motions seeking to add to the interference certain other patents and applications owned by Rambus, in accordance with the relevant legal standards. To carry out this task, I reviewed copies of U.S. Patent No. 6,502,161 (161 patent), naming Richard Perego and others as inventors, which I understand is assigned to Rambus Inc., and also reviewed copies of certain other patents and applications claiming priority benefit from the 161 patent. I additionally reviewed a copy of U.S. Patent No. 6,526,469 (469 patent), naming Robert Drehmel and others as inventors, which I understand is assigned to IBM, as well as certain reissue applications which are based upon the 469 patent, one of which was involved in the interference with the 161 patent. Using the PTOs electronically available data base I also reviewed the interference file. I reviewed as well certain papers filed in the present civil action.
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Commencement and Conduct of PTO Interferences (9) Generally speaking, under the patent laws that apply to this case, the PTO issues a patent to the first person that invents new and nonobvious subject matter that is eligible for patent protection under title 35, United States Code. Under that patent statute, in the case of two or more parties claiming the same subject matter, priority of invention is determined by the inventors proofs for a date of invention that can be earlier than the opponents patent application filing date.
(10)
The proceeding for determining priority of inventorship in the PTO is referred to as an
interference, also known as a contested case since September 2004 (See 37 C.F.R. 41.2). If the parties are claiming interfering subject matter in two or more patent applications or in a patent application and a patent, the PTO is authorized by statute, 35 U.S.C. 135(a), to conduct an administrative proceeding known as an interference or contested case to determine which party was first to invent the interfering subject matter. The interference is heard before a Board panel of three Administrative Patent Judges; I have served as a member of many such panels.
How Interferences Arise (11) Interferences in the PTO generally commence in one of three different ways. First, in the
course of examining a patent application the examiner conducts an interference search to determine if there are other pending patent applications claiming the same or similar subject matter. If the same subject matter is found to be claimed in another pending application, the examiner can refer the two applications to the Board for institution of an interference. Alternatively, the examiner can request one of the parties to copy the other partys claims for purposes of instituting an interference.
(12)
Second, if an examiner rejects a pending claim based upon a prior art patent, it is sometimes
the case that the applicant will seek to prove (by filing an inventor declaration as permitted by 37 C.F.R. 1.131) prior invention to remove the cited patent as prior art. However, if a claim of the prior art patent is the same or sufficiently similar to the rejected application claim, the examiner will 5
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not permit the filing of the declaration, and instead will suggest an interference (37 C.F.R. 1.131(a)(1)).
(13)
Third, it is also possible for a party, upon reviewing the claims of a pending patent application
or an issued patent, to copy one or more of those claims for purposes of provoking an interference before the Board. This is the most common means by which interference proceedings are precipitated, and was the means used by IBM to provoke the interference that transpired below.
PTO Examiner Actions to Institute an Interference (14) In the case of a party seeking to provoke an interference by copying claims, it must file the
necessary papers required by 37 C.F.R. 41.102 (the prior regulations under the C.F.R., the 600 rules discussed further below, contained almost identical requirements). The procedure which the examiner is supposed to follow when an applicant provokes an interference is set forth in Chapter 2300 of the Manual of Patent Examining Procedure (M.P.E.P.) 8th Edition, Revision 4.
(15)
Once the possibility of an interference situation presents itself, the examiner first determines
whether in fact there is interfering subject matter. This is done by conducting a patentability determination utilizing what is called the two-way test; i.e., in the case where an application claim is said to interfere with a claim from another patent or application, the examiner will determine whether the claim is anticipated by the opponents claim (35 U.S.C. 102), or would have been obvious under the requirements of 35 U.S.C. 103 from the opponents claim, assuming the other partys claim is in the prior art, and vice versa.
(16)
Once interfering claims have been found present, it is the examiners primary responsibility to
set up the parameters of the interference, which includes matters such as selecting an appropriate count, determining which claims to designate as corresponding to the count, which claims not to designate as corresponding to the count and determining for which applications benefit should be 6
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accorded. A count is a short description of the interfering subject matter, and typically is a claim or claims from one or more of the cases in interference. The process of designating a claim to correspond to a count means to determine that the subject matter of the claim is directed to the same invention as the count. This determination is conducted using a one-way test: the examiner assesses whether the claim would have been anticipated by or obvious from the count if the subject matter of the count were in the prior art. If it would have been anticipated or obvious, the claim is designated to correspond to the count.
(17)
Designating claims to correspond to the count is important for providing a full and complete
judgment. If a patent owner loses on the issue of priority, then the PTO will enter a judgment that all claims of the patent owner designated to correspond to the count are subject to the judgment and are unpatentable to the losing party. If however, a claim is not designated to correspond to a count, as in the case of a claim in a patent that is not included in the interference, then that claim will not be subject to direct force of the judgment.
(18)
When an examiner decides that an interference exists he or she meets with an Interference
Practice Specialist (IPS) who are specially trained primary examiners found in every Technology Center (a PTO organization devoted to the examination of patent applications directed to a particular field of technology). If the IPS agrees with the examiners decision, the application or applications are forwarded to the Board with a PTO FORM-850 that outlines all the relevant information necessary for declaring an interference. The examiners decisions in this regard will then be reviewed by an APJ prior to formal institution of any interference proceeding, and changes can and often are suggested. Because interferences are not common, it is my experience that examiners confronted with interference situations will often seek assistance immediately from the IPS and then from the APJs in setting up interference proceedings. See the Eighth Edition of the M.P.E.P., Revision 4, 2307.03 2307.05 for details on how an interference is initiated in the Technology Center. Exhibit B is a true and correct copy of portions of the M.P.E.P. that includes these sections. 7
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Board Conduct of an Interference (19) The authority to declare an interference rests with the Director, 35 U.S.C. 135(a)(first
sentence), but per 37 C.F.R. 41.203(b) that authority is delegated to an APJ.
(20)
Once an interference is declared in the PTO, it is currently conducted pursuant to a portion of
the Code of Federal Regulations found in Part 41 of 37 C.F.R., entitled Practice before the Board of Patent Appeals and Interferences. Although Subpart E of these regulations is entitled Patent Interferences, the regulations applicable to the conduct of interference proceedings are largely remitted to Subpart D of these regulations, entitled Contested Cases, and the two separate sections must be considered together. Generally, the regulations in the C.F.R. governing interferences are referred to by practitioners simply as the rules.
(21)
An interference proceeding is an adversarial proceeding, in which each party has a right to
representation by counsel. The proceeding is conducted in phases; first a motion phase, and then a priority phase following the motions phase. In the motions phase, the Board reviews motions the parties may bring which may affect the scope of the interference. Generally, the Board may grant the relief requested, deny the relief requested, grant-in-part the relief requested or deny-in-part the relief requested. In the priority phase, the Board receives evidence on the issue of which party invented the contested subject matter first, and makes a determination of priority of invention accordingly with judgment in favor of the party determined to be the first inventor.
(22)
Essentially, the order in which an interference is now conducted has remained the same as the
order in which the interference was conducted under the previous 600 Rules. The 600 Rules were the previous regulations in the C.F.R. governing the conduct of interferences. The prior rules were found at 37 C.F.R. 1.600, et seq., hence the shorthand name. The 600 Rules were superseded by the current Part 41 Rules in 2004. These rules are discussed below as relevant.
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The Standing Order for Governing an Interference (23) Under current practice, in the papers declaring the interference the APJ conducting the
proceeding issues a Standing Order for the Trial Section, which is included in the papers instituting the interference. A true and correct copy of the current Standing Order, which governed the current interference, is Exhibit C hereto.
(24)
The Trial Section was created in 1998 originally to perform the interlocutory phase of
interferences (see 1217 OG PTO 18, December 1, 1998), which concerned all matters prior to the decision on priority and judgment. The Trial Section is now the section of the Board that is responsible for the entire conduct of interferences (contested cases), with one Trial Section APJ overseeing the interlocutory phases and a panel of three Trial Section APJs issuing decisions at the conclusion of the motions and priority phases of the interference. As specifically noted in the Standing Order the procedures set forth therein govern the conduct of the proceeding and where there is a conflict between the Standing Order and an amended rule, the amended rule prevails. (Exhibit C i).
Motions Practice and the Motions List Requirement (25) In the motions phase, the parties may seek to make a variety of motions, such as motions to
designate additional claims, un-designate other claims, motions for benefit of the filing dates of other patent applications, motions for judgment of unpatentability of certain claims, based either on the prior art, an alleged lack of descriptive support, or other grounds, or motions to add additional patents and/or patent applications to the interferences, as was sought in the interference that is the subject of this action. Motions practice is now governed by 41.121-41.125 of Subpart D, 37 C.F.R. (Contested Cases) and 41.204(b); 41.207(c) and 41.208 of Subpart E, 37 C.F.R. (Patent Interferences). Under current practice, a party must file a motions list with the APJ and thereafter participate in a telephone conference with the APJ and any opponent discussing the proposed motions before any party may file any motion. After receiving the motions list and having the conference 9
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the APJ issues her decision setting forth what motions the parties will be allowed to file. The APJs decision is usually in the form of a written order.
(26)
Motions can assume critical importance to an interference, and oftentimes will be dispositive
of the entire interference. Although preliminary motions were a matter of right under the 600 Rules, there is now no absolute right for any party to to bring any motion, and under 37 C.F.R. 41.120(a)(i) motions are permitted only to the extent the Board authorizes. Nevertheless, the APJ has the specific authority under the rules to conduct the proceeding as he or she sees fit, including waiving the rules for any reason deemed appropriate by the APJ (37 C.F.R. 41.104 (a) and 41.104(b)). The waiver rule applies only to the Subpart 41.100 rules (Contested Cases), that is, Subpart D.
(27)
There are no specific rules in Subpart D, 37 C.F.R., or elsewhere in the Code of Federal
Regulations setting forth the criteria that the Board will consider in determining whether or not to permit a motion. The current Standing Order (Exhibit C ), discussed above, contains two paragraphs concerning the motions list. The first, 104.2.1, list three ways that a list of proposed motions assists the administration of justice, specifically by: (1) helping arrive at an appropriate schedule; (2) permitting the Board to determine whether the listed motions are both necessary and sufficient to resolve the issues raised; and (3) revealing the possibility early on a case-dispositive motion. Regarding (2), the term necessary refers to those motions that need to be decided in order to resolve whether the pending application in interference could be issued as a patent, and the term sufficient was intended to require at least some showing of a substantive basis for a motion before it would be permitted (this would weed out place holder motions, where the movant had no proofs yet, but wished to reserve a future right in case some should surface). The second, 204, sets forth no criteria to determine whethether the Board will permit or disallow a party to file a motion, but merely advises that a motions list is a tool for planning the course of the proceeding, eliminating unnecessary costs and delay, and avoiding abusive practices. 10
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(28)
In a December 2004 symposium on PTO Day, APJ Sally Gardner Lane, a member of the Trial
Section, gave an oral presentation entitled MOTIONS LISTS AND PRIORITY STATEMENTS which I attended as an APJ. The presentation included a handout with a transcript of the content of her oral presentation; a true and correct copy of the handout is attached as Exhibit R. On page 3 of her presentation, Judge Gardner Lane advises that the motions list need not be a complete outline of the motions sought to be filed. Rather the list should include enough detail to permit the APJ to decide if the motion is necessary.
(29)
On page 4 of that presentation Judge Gardner Lane explained that, for a motion to redefine the
scope of the interference by adding an application or patent, there should be provided at least an identification of the application sought to be added and a brief explanation of why the application should be included in the present interference, for an APJ to evaluate whether to authorize the motion. These requirements exist today for a motion to redefine an interference by adding an application or patent. (See Exhibit C at 203.2).
How Motions List Practice Arose (30) My experience deciding motions under the 600 Rules was extensive and included
patentability determinations, ruling on evidence, deciding the proper procedure for conducting the interference, determining who was an inventor and threshold jurisdictional issues. During the time period when the 600 Rules were in effect there were often if not always motions filed by the parties seeking judgment on the grounds an opponents claims corresponding to the count were unpatentable. Indeed, there were many attorneys specializing in interference practice who counseled using interferences as an inexpensive alternative to litigating patentability issues in U.S. District Courts. (See for example, Why Patent Interference Proceedings Are Worth It, The New Jersey Law Journal, July 19, 2004, Lara C. Kelly and Barbara Clarke McCurdy).
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(31)
Accordingly, in part to reduce the attempted use of an interference as a cancellation
proceeding, as occurred under the 600 Rules, it became and is the current practice of the Board (and was the practice at the time of the pendency of the interference below) to require the parties to submit, soon after institution of the interference, a list of motions which they desire to bring in the interference. Following this, it is the Board practice for a motions conference to be held, in which an APJ rules on whether the motions requested by each of the parties can be brought or not. Note that per 104.2.1 of the current Standing Order, whereby the motions list permits the Board to determine if a motion is necessary to resolve the issues raised, oftentimes a motion for judgment of unpatentability would not satisfy this test, and thus the practical effect was to reduce the potential for using the interference as a cancellation proceeding where priority of invention was never determined.
(32)
The practice of requiring a motions list before filing any motions is set forth in 37 C.F.R.
41.204(b). Just as prevailing on a preliminary motion may critically affect the outcome of an interference by, for example, changing the count or un-designating claims previously designated as corresponding to the count, the APJs decision on what motions she will allow the parties to file may critically affect the outcome of an interference by providing or denying a party a meaningful opportunity to present its case.
(33)
In my experience, an APJ will issue an order following a motions conference, which sets forth
the motions that have or have not been authorized. Such an order was issued in the interference below.
How Multiple Patents Claiming the Same Invention Can Arise Generally (34) As mentioned above, the most common means to provoke an interference for one party with a
patent application that discloses the same patentable invention as disclosed and claimed in another patent or application is to present claims directed to the same patentable invention as an opponents 12
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claims or to copy an opponents claims in order to provoke an interference. Claim wording will differ, and the way an inventor perceives his or her invention will differ so determining whether an interference-in-fact exists can be difficult. There are a variety of ways by which an applicant may learn of a pending application of another party with claims to the same patentable invention such as through litigation, publication of research, published foreign patent applications or even via a third party submission in a patent file or application under 37 C.F.R. 1.99.
(35)
Relative to the number of patent applications that are filed each year, it is not common for two
patent applications (or one application and one patent) to claim the same subject matter. However, one aspect of patent prosecution practice, referred to as continuation practice (35 U.S.C. 120), has the potential to generate multiple patent applications containing claims to the same patentable invention. An applicant is permitted to file multiple continuation applications during the pendency of the original application, each having the same disclosure as the original application. Thus in some instances, an applicant will file in multiple continuation applications claims of slightly varying scope and wording, yet which may be directed to the same patentable subject matter.
(36)
The only statutory proscription to this practice is that an applicant cannot file multiple
applications for exactly the same invention (per 35 U.S.C. 101). Otherwise, the PTO will permit the applicant to file multiple applications claiming obvious variations of the same subject matter from the subject matter claimed in the first issued patent, provided that the assignee file terminal disclaimers in the later-filed application when it is otherwise in condition to allow. In my experience, examiners do not always require applicants to file terminal disclaimers in appropriate situations.
Treatment of Related Applications in the Event of an Interference (37) There also exist specific instructions for examiners to follow when an application otherwise in
condition for allowance is found to be related to an application involved in an interference. See for
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example M.P.E.P. 8th Edition, Revision 4, 2307.03, Exhibit B. Specifically, therein it is set forth that: Although the examiner may not act in a patent or an application directly involved in an interference, 37 CFR 41.103, examination may continue in related cases, including any benefit files. Once examination is completed, the examiner should consult with an Interference Practice Specialist (IPS) to determine whether and how further action should proceed. The IPS may consult with the Board of Patent Appeals and Interferences (Board) to determine whether the application claims would be barred in the event the applicant loses the interference. Suspension may be necessary if the claims would be barred by a loss in the interference. Steps should be considered to minimize the effect of any patent term adjustment that would result from the suspension. For instance, the examiner could require restriction, 35 U.S.C. 121, of the application to only the claims that do not interfere so that they can be issued. The applicant may then file a divisional application with the interfering claims, which may be suspended. Treatment of Related Applications in this Interference (38) Because IBM filed a paper before the examiner requesting an interference with Rambus
multiple applications, each having claims alleged to be directed to the same patentable subject matter as the count proposed by IBM, the examiner had actual notice of the existence of the possible interfering subject matter in the other Rambus applications then pending. Because the interference was ultimately declared the examiner also had actual knowledge of the count in the interference and therefore the examiner knew the scope of the subject matter being contested in the interference. Nonetheless, the examiner plainly did not suspend prosecution of any of Rambuss applications claiming benefit of their involved patent in the interference, as evidenced by the passage to issuance of Rambus patent applications in which terminal disclaimers were required for issuance.
(39)
In the event an adverse party observes that the PTO is issuing multiple patents related to a
patent or application for which an interference is sought, it would be expected for that adverse party to copy all of those claims, as closely as possible, within one year of each of the patents issuance. This is done in order to comply with a one year statutory deadline for copying claims, see 35 U.S.C. 135(b)(1). IBM followed such a course of action in this instance. 14
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The Background of the Present Proceeding IBM Seeks an Interference (40) On December 30, 2003, IBM filed United States Patent Application No. 10/747,820 (820
Application), a reissue application under 35 U.S.C. 251, which included both the original claims 110 of the IBMs U.S. Patent No. 6,526,469 and claims 11-59 that corresponded exactly or substantially to a majority of the claims of the Perego 161 Patent. On August 15, 2005, the PTO examiner issued a restriction requirement in the 820 Application, so IBM filed United States Patent Application No. 11/203,652 (652 Application) as a continuing application of the 820 Application. The 652 Application included the claims 11-59 directed to the 161 patent claims, while original claims 1-10 remained in the 820 application. On August 15, 2006, the Board issued a Declaration of Interference and instituted the Interference between the 161 Patent of Rambus and the 652 Application of IBM. Exhibit D attached is a true and correct copy of that Declaration of Interference.
(41)
After IBM filed the 820 reissue Application, the PTO duly published on April 6, 2004 a
notice reporting IBMs filing of the 820 reissue Application in PTO Official Gazette. Exhibit E attached is a true and correct copy of that notice. This publication would provide any interested party notice of the reissue filing. (See 37 CFR 1.11(b)). The record also shows that the PTO sent written notice to Rambus on November 30, 2004, advising Rambus that IBM had filed a reissue application for the purpose of provoking an interference with Rambus 161 patent. Exhibit F attached is a true and correct copy of that PTO written notice to Rambus. Nevertheless, at that time, there was no rule providing for sending patentee that notice. Under previous Rule 37 C.F.R. 1.607(d) an examiner was required to notify a patentee when an applicant was seeking to provoke an interference. The notice would be placed in the file of the patent and a copy of the notice sent to patentee. The identity of the applicant was not disclosed, unless an interference was declared. If an interference was not ultimately declared, a notice to that effect was placed in the patent file and a copy sent to patentee. However, the 600 Rules were removed on the same date the Part 41 Rules became effective, so
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the basis for sending written notice to Rambus is not apparent. To my knowledge, there is no rule in either Subpart D or E of Section 41 that provides for the notice received by Rambus.
PTO Failure to Address Related Rambus Applications and Patents (42) Prior to the declaration of the Interference, in an April 13, 2006 Request for Declaration of
Interference filed in IBMs 652 Application, IBM had requested the examiner to suggest that the interference involve, in addition to the Rambus 161 Patent, all the other Rambus patents and patent applications at that time claiming benefit from the 161 Patent. Exhibit G attached is a true and correct copy of that Request for Declaration of Interference, except for exhibits. However, in the Declaration of Interference, the Board did not include these other Rambus patents and patent applications, so none of their claims was involved in the interference in the sense of 35 U.S.C. 135(a). The examiner did not provide any explanation why these other Rambus patents and patent applications were not included in the Interference. Likewise, the Board did not provide any explanation why these other Rambus patents and patent applications were not included in the Interference. Although the electronic records of the PTO show that a PTO FORM-850 was filed on May 11, 2006, in Drehmels 652 Application, the APJ declared in paper Number 22, p. 4 that there was no PTO FORM-850 and that the paper did not exist even though the examiner is required to submit it with his request to the Board to declare the interference, and would have identified, among other matters, each application or patent involved in the interference for each party, the claims designated and not designated, and the proposed count.
(43)
At the time IBM filed its 820 reissue Application, Rambus already had pending patent
applications with disclosures identical to the 161 patent, and which claimed priority benefit from the earliest application on which the 161 patent was based. Following IBMs reissue application filing seeking to provoke an interference with the 161 patent, Rambus filed additional applications claiming the same priority benefit as the 161 patent.
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(44)
Notably, on July 23, 2003, Rambus filed application no. 10/625,276, which had which had an
identical disclosure as the 161 patent and claimed priority benefit as just described. In an Office Action dated Februry 18, 2005, the PTO examiner rejected all pending claims (claims 25-71) for double patenting in view of claims 1-49 of the Rambus 161 patent. Also, on February 10, 2005, Rambus filed application no. 11/054,797, which had an identical disclosure as the 161 patent and claimed priority benefit as just described. In an Office Action dated July 25, 2005, the PTO examiner rejected all of its pending claims (claims 25-52) for double patenting in view of claims 1-49 of the Rambus 161 patent. Rambus did not substantively dispute these double patenting rejections and instead filed terminal disclaimers in view of the 161 patent, in order to obtain allowance of their claims. Exhibit H is a true and correct copy of the terminal disclaimer filed in application no. 10/625,276, and Exhibit I is a true and correct copy of the terminal disclaimer filed in application no. 11/054,797. These applications ultimately issued in United States Patent No. 7,000,062 and United States Patent No. 7,062,597.
(45)
Likewise, on March 11, 2005, Rambus filed application no. 11/078,244, which again had an
identical disclosure as the 161 patent and claimed priority benefit as described above. In an Office Action dated July 25, 2005, the PTO examiner rejected all pending claims (claims 25-48) for double patenting in view of claims 1-49 of the Rambus 161 patent (as well as over copending claims 25-52 of application no. 11/054,797, discussed above). Rambus filed a Response dated September 30, 2005. Here again, Rambus did not substantively dispute the double patenting rejection and instead filed a terminal disclaimer in view of the 161 patent in order to obtain allowance of the claims. Exhibit J is a true and correct copy of the terminal disclaimer filed in application no. 11/078,244. The claims ultimately issued in United States Patent No. 7,003,618.
(46)
By the time the Interference was declared, Rambus had already filed fifteen patent
applications claiming benefit of priority directly or indirectly from the applications on which the 161 Patent issued. Some of these patent applications had issued as patents by the time the interference 17
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was declared These patents were United States Patent No. 7,000,062 (referenced above), No. 7,003,618 (referenced above), No. 7,010,642, No. 7,017,002, No. 7,051,151 and 7,062,597 (referenced above). The balance, which were pending as of the time the interference was declared, were the following: Application No. 10/766,131 (now United States Patent No. 7,363,422); Application No. 10/848,369 (now United States Patent No. 7,356,639); Application No. 10/889,852 (now United States Patent No. 7,404,032); Application No. 10/890,001 (now United States Patent No.7,266,634); Application No. 11/119,031 (now United States Patent No. 7,206,896); Application No. 11/128,904 (now United States Patent No. 7,206,897); Application No, 11/130,734 (now United States Patent No. 7,200,710), and Application No. 11/136,995 (now United States Patent No. 7,320,047). The applications of Rambus claiming priority benefit also included Application No. 10/889,799, although Rambus has since abandoned that application.
IBMs Motions List Was Filed to Deal with the Related Rambus Applications and Patents (47) On October 3, 2006, IBM submitted in the Interference a list of eighteen motions for which it
sought Board authorization to file in the preliminary motion phase (Paper Number 20 filed on October 3, 2006). Exhibit K attached is a true and correct copy of that list, entitled Drehmel List of Intended Motions. Motions 1-17 of those eighteen proposed motions were directed to remedying the omission from the Interference of the other Rambus patents and patent applications related to the 161 patent.
(48)
More particularly, proposed Preliminary Motion 1 in the motions list that IBM submitted
requested issuance of an order requiring Rambus to show cause why any of its patents and applications related to the 161 patent should not be added to the Interference. Motion 1 also asked to require Rambus to show why all of the claims of each of those patents and applications should not be designated as corresponding to the Count in light of (i) the showing made by IBM in its April 13, 2006 Request for Declaration of Interference, (ii) at least one claim in each of the Rambus patents and applications had at least one claim directed to the same patentable subject matter as the count in 18
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the interference, (iii) the PTO examiners finding of obviousnesstype double patenting in several of the patents and patent applications, and (iv) Peregos submission of terminal disclaimers in response to those obviousnesstype double patenting rejections.
(49)
Proposed Preliminary Motion 2 in the motions list that IBM submitted requested that the
Board order the suspension of prosecution in each related Rambus patent application, as well as in any other patent applications claiming benefit directly or indirectly of the patent application that matured into the 161 Patent, unless and until Rambus established separate patentability over the Count of all claims in each such application. In substance, IBM here was simply seeking to have the Board order the Examiner to comply with the suspension procedure in M.P.E.P. 8th Edition, Revision 4, 2307.03, which was discussed above.
(50)
Proposed Preliminary Motion 3-17 in the motions list that IBM submitted requested that the
Board add to the Interference each of the then pending and issued related patents and patent applications of Rambus (one motion per Rambus patent filing), and to designate all of their claims as corresponding to the Count.
Board Denial of IBMs Motions List (51) According to the electronic interference file wrapper, following a motions conference with an
APJ, on October 11, 2006 the Board issued an Order declining to authorize IBM to file any of its proposed Preliminary Motions 1-17 (Drehmel is not authorized to file motions to add the fifteen [proposed motions 3-17] various Perego patents and applications to the interference). Exhibit L attached is a true and correct copy of that Order (Paper No. 22). During the motions conference preceding the Order (Exhibit L), the APJ allowed that if IBM (Drehmel) were awarded priority, the Board might be willing to place Rambus under an order to show cause why judgment should not be entered against the other related Rambus patents and application as well Exhibit M attached is a true and correct copy of the transcript of that conference. But the APJ and the Board declined to take any 19
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corrective action at the inception of the interference and declined to permit IBM to file its proposed motions, as stated in the Order dated October 11, 2006.
(52)
Because the Board did not authorize IBM to file proposed Motion 2 to suspend, during the
course of the Interference Rambus continued to file and prosecute related patent applications. In particular, on October 5, 2007 during the Interference, Rambus filed Application No. 11/868,242 (now U.S. Patent No. 7,526,597). Likewise on January 11, 2008 during the Interference, Rambus filed Application No. 12/013,160 (now U.S. Patent No. 7,523,248). Both of these filings were issued as patents only after Rambus filed terminal disclaimers over claims 1-49 of the 161 Patent to overcome obviousness-type double patenting rejections. (Exhibit N attached is a true and correct copy of the terminal disclaimer filed in Application No. 11/868,242, and Exhibit O is a true and correct copy of the terminal disclaimer filed in Application No. 12/013,160. Contrary to the procedure noted above ( 37), the examiner did not suspend prosecution of these applications, and instead following receipt of the terminal disclaimers allowed the applications to issue. Rambus eventually obtained a total of sixteen continuing patents, five of which were terminally disclaimed over claims 1-49 of the 161 Patent. All the Rambus applications that were allowed were examined and allowed by the same examiner. Still further, on March 25, 2009 during the Interference, Rambus filed Application No. 12/411,003, which claims the benefit of the filing date of the application on which the 161 Patent issued. That application is pending today.
(53)
On June 24, 2010, the Board entered a Judgment on priority in favor of IBM (Senior Party
Drehmel), and cancelled all of the claims (claims 1-49) of the 161 Patent. Exhibit P attached is a true and correct copy of that Judgment. Rambuss sixteen other related patents remain in force.
(54)
Following this, on July 8, 2010 a telephone conference was held with the presiding APJ, who
was not the same as the APJ presiding over the motions conference. Given that IBM (Drehmel) had been awarded priority, counsel for IBM raised the prior APJs suggestion that the Board could take 20
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remedial action following IBM prevailing, and asked the Board to place Rambus under an order to show cause why judgment should not be entered against the other related Rambus patents and application as well. But the APJ demurred, saying I only got the one case and the case is already over. Transcript (Paper No. 157), August 17, 2010, at 7, 11. Exhibit Q attached is a true and correct copy of that Transcript.
The Board Treatment of Requests to Add Patents or Applications to an Interference (55) PTO interference proceedings are not limited by statute or rule to any particular number of
parties or to any particular number of applications and patents on which the parties are involved. The only requirement for declaring an interference is the presence of interfering subject matter in two or more applications or one application and at least one patent. Interferences have never been restricted to involving only two patent applications, or one patent application and one patent. There has not been, and to my knowledge there is not now, any statutory, regulatory or internal PTO practice limiting the number of patent applications and patents that can the be involved in an interference; the only restriction is that there cannot be a patent interference proceeding in the PTO between two patents (patent-patent interferences are committed to the jurisdiction of the U.S. District Courts, 35 U.S.C. 291).
Regulations Governing Additions of Patents and Applications to an Interference (56) The PTO has recognized the possibility that an interference proceeding, as initially declared,
might not embrace all of the patents and applications claiming the interfering subject matter. The PTO has also understood that without some ameliorating mechanism, this could result in there being multiple interference proceedings involving the same subject matter, which would be wasteful of the time and resources of the PTO, and of the parties as well. Multiple interferences contesting the same patentable subject matter and involving the same real parties in interest would be neither speedy, nor just nor inexpensive.
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(57)
Accordingly, under the 600 Rules previously in effect, the PTO provided the APJ by 37
C.F.R. 1.642 with specific authority to add to an ongoing interference one or more applications or patents with claims directed to the same patentable invention as the count of an interference on such terms as to be fair to all parties. Under the current rules, 37 C.F.R. 41.203(d) comparably provides a party with an opportunity to suggest the addition of one or more patents or applications to the interference by filing a suggestion that complies with 37 C.F.R. 41.202(a). The current rules also provide the APJ with the authority to redeclare the interference. See 37 C.F.R. 41.203(c). In the Notice of the Proposed Rules in the Federal Register, Vol. 68, No. 228 of November 26, 2003, the scope of 41.203(c) was specifically discussed and therein at page 66665 it was stated that:
Proposed 41.203(c) would similarly authorize an administrative patent judge to redeclare the interference sua sponte or in response to a decision on motions. An administrative patent judge could redeclare an interference sua sponte, for instance when another interfering patent or application came to light. An interference is often redeclared after a motion is decided, particularly when there are changes in the scope of the count, in the order of the parties, or in the claims that would be affected by the judgment as the result of the decision. (Emphasis added). (58) The addition of additional claims as corresponding to the count from an application added to
an interference after the initial declaration would be a basis for redeclaration of the interference, if need be.
(59)
Additionally, in the Notice of Final Rule published in the Federal Register, Volume 69, No.
155, August 12, 2004, at page 49993 there was a discussion of a comment (Comment 179) concerning when the addition of a patent or application to an interference would be considered to be timely; the Answer in response to the comment was as follows: The suggestion to add an application or a patent under 41.203(d) could be raised at any time, but is more likely to be granted if it is raised early in the interference. The intent of the rule is that it work like the decision to declare an interference, hence it only addresses the addition of a patent or an application. 22
1 (60) 2 applications, are specifically provided for by the current rules. IBMs request to add the additional 3 applications and patents could not have been raised any earlier in the interference. The only 4 questions the APJ needed to resolve in considering IBMs motion list (specifically proposed Motions 5 3-17) was determining whether each Rambus application or patent had at least one claim that 6 interfered with any IBM claim in the interference, and if interfering subject matter was found, 7 determining which of the other claims of the Rambus application or patent were directed to the same 8 patentable subject matter as the count in the interference. Those claims found to be directed to the 9 same patentable subject matter as the count would then be designated to correspond to the count, so 10 as to make those claims amenable to judgment in the interference. 11 12 (61) 13 rules of practice for contested cases, currently set forth in Subparts D and E of Section 41 of Title 37. 14 The 600 Rules, including Rule 642, were correspondingly deleted in 2004. In the Notice of Proposed 15 Rule set forth in the Federal Register/Vol. 68, No. 228, November 26, 2003, at page 66649 it is stated 16 that Proposed Part 41 would better state the existing practice and should not be read to change the 17 existing practice except as explicitly provided. 18 19 (62) 20 forth in the notices from the Federal Register above, the intent of the rules was not to deprive a party 21 of the means to change the scope of the interference or to circumscribe the ability of the Board to add 22 further patent applications or patents to an interference when warranted and the occasion presented 23 itself. Rather as relevant to newly discovered applications and patents, it was the intent to preserve 24 the prior practice under the 600 rules and permit a party to file a motion to add those of their claims 25 which interfered with their opponent's claims and were directed to the same patentable subject matter 26 as the count. See also 203.2 of the Standing Order entitled Adding an application or patent. 27 23 As demonstrated by the PTOs own interpretation and comments about the new rules as set The current rules became effective in September 2004, as part of a general revamping of the Thus, IBMs proposed motions, which related to seeking the addition of Rambuss patents and
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(63)
Therefore from a regulatory standpoint it has long been recognized that the rules for
conducting an interference provide a means which affords a party to the interference with the ability to request the addition to said interference of additional patents and applications containing claims directed to the subject matter of the count of the ongoing interference. As noted above, by the time I reached the Board in 1987, there was a rule in the Code of Federal Regulations, 37 C.F.R. 1.642, which permitted an administrative patent judge of the Board to add an application or a patent to an interference. Likewise at this time, the rules permit an APJ to redeclare an interference to add another interfering application or patent to the interference (41.203(c)) and permit a party to file a suggestion for adding an additional interfering application or patent to an ongoing interference (41.203(d)) and requires the suggestion to comply with the requirements for initially having a interference declared (41.202(a)).
Board Treatment of Requests to Add Patents and Applications to an Interference (64) Typically, an APJ assigned to an interference became aware of the additional patent or
application by virtue of a party moving to add it to the interference. Under the 600 Rules an APJ might learn of the existence of another application or patent when a notice of filing a reissue application or a notice for a request for filing a request for reexamination of an involved patent was filed under 37 C.F.R. 1.660. A patent examiner might forward a memo to the APJ identifying the application and explain why it was relevant to the pending interference. An APJ might also learn about another application or patent from reported litigation or a published court case. Clearly, under 41.104 and 41.203(c) an APJ can redeclare an interference by adding another application or patent to the proceeding, regardless of how the APJ learns of the applications or patents existence.
(65)
From a substantive law standpoint, the Board will determine whether to add an additional
patent or application to an interference by utilizing the the two-way test: assessing whether any of the claims of each additional application or patent, if prior art, would have anticipated or rendered obvious the subject matter of a claim of an opposing party, and vice versa. (37 C.F.R. 41.203(a)). 24
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This determination is identical to the procedure utilized for determining whether an interference exists prior to the declaration of the interference. After reaching a conclusion that the additional patent or application interferes, a one-way test is utilized to determine which claims of the to-be involved application(s) and patent(s) are anticipated by or obvious in view of the count, and therefore are to be designated as corresponding to the count. This determination is of the same type utilized for determining before the interference commences whether to designate a claim as corresponding to the count. This determination is also identical to the procedure utilized during the interference in resolving a motion where when one of the parties moves to designate further claims as corresponding to a count in an interference, or moves to un-designate claims. More generally, the one-way and twoway tests utilized in both of these determinations are essentially identical to the patentability determinations that the PTO conducts as a matter of routine in determining whether to allow the claims of a pending application to issue as a patent. Thus determining whether or not to add additional patents or applications to an interference is a matter well within the training and responsibilities of the PTO generally and the APJs specifically.
(66)
Once it is determined to add the claims of an additional application or patent to an ongoing
interference, the interference proceeds in exactly the same manner as before. If fairness required, an APJ has the authority to permit an additional motions period to afford either party with a renewed but shortened motions period to address issues in the newly added applications. The APJ could also prohibit any additional motions or limit the nature of the motions to only so-called threshold motions. 37 C.F.R. 41.201. Since priority of invention is decided solely by determining who was the first to invent the subject matter defined by the count, not the specific subject matter of any of the corresponding claims from the involved applications, the number of claims designated as corresponding to the count (and whether they are in one or more applications or patents) does not affect the priority determination in any manner whatsoever. All that is relevant in the course of determining priority of invention is in the case of the interference here the one count, and nothing more. 25
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My Experience in Board Treatment of Requests to Add Patents and Applications to an Interference (67) In my experience, the Board would decline to add an application or a patent to an interference
only when some circumstance suggested that doing so would prejudice one or more of the parties, as former Rule 642 indicates. As one example, the Board might decline to add an application or patent in the case where the new application or patent came to its attention when the motions period was long passed or when the party moving to add the application knew about the other application but unreasonably delayed filing a motion for its addition. The Board might also decline to add an application or patent in the case where a party sought to add the new application or patent but it was clear, based upon the papers the parties filed, that the claims at issue from the application or patent were patentably different from the count. The Board might also decline to add additional applications and patents when they were owned by a third party not involved in the ongoing interference. At the time IBM provoked the interference and again when IBM sought to file its motions, there would have been no prejudice to Rambus to have its patents and applications added to the interference.
(68)
Based on my experience, the fact that an application or patent contained a large number of
claims was never a valid reason for not adding additional applications or patents to an ongoing interference. The distribution of claims across patent applications is entirely at the choice of the applicants. As an example, the same ten claims may either be in ten different applications (one claim per patent), or in one application (containing ten claims). Further, the proofs relevant to whether to add or not add claims of new patent applications or patents to an interference are borne by the parties, who would prepare claim charts and arguments to assist the Board in its determination. Moreover, the number of claims designated as corresponding to the count does not effect the parties presentation of proof of priority of invention. It is the count that is the vehicle by which priority is proven not claims. See 37 C.F.R. 41.201 count. A claim which is directed to the same subject matter as the count and which is not designated as corresponding to the count is not subject to the judgment in the interference, but should have been.
26
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(69)
In my experience, the purpose of adding additional applications or patents to the ongoing
interference is to avoid piecemeal prosecution of the question of priority raised in the interference. Specifically, the purpose is to render such of the claims of those additional applications or patents, whose addition to the interference is proposed, to be susceptible to the judgment in the interference, 35 U.S.C. 135(a). Otherwise, a party prevailing in an interference would be faced with additional patents and applications having claims directed to the subject matter of the count, which claims were not involved in the interference and therefore not subject to the judgment in the interference.
The Board Acted Arbitrarily in the Present Situation (70) In my opinion and based on over 17 years of experience at the Board, the APJs decision not
to permit IBM to file any of its motions to add various additional applications and patents of the party Rambus to the interference constituted an abuse of discretion. Each of IBM's proposed preliminary motions raised issues of substantive law with a direct nexus to the ultimate question of priority being decided in the interference, specifically, which claims of the parties would be subject to the Board's ultimate decision on priority. It is my opinion that the APJs order refusing IBM permission to file any of its 17 proposed preliminary motions was clearly unreasonable and arbitrary. The order was, in my opinion, also based on a record that contains no evidence on which the APJ could base her opinion.
The Reasoning in the Boards Order Does Not Support the Refusal to Hear IBMs Motions (71) The Board of Patent Appeals and Interferences maintains an excellent webpage within the
PTOs web site (www.uspto.gov) wherein there are posted, inter alia, decisions by the Board made in various proceedings and denominated as either Informative Opinions or Precedential Opinions. In the Informative Opinions section there is an opinion, captioned Karim v. Jobson, No. 105,376 (28 February 2007) written by Senior APJ McKelvey for the panel. At page 3 of the opinion, before going into the basis for the Boards decision, Senior APJ McKelvey explains the Boards reason for explaining the rationale behind the panels discretionary action taken in the interference. Specifically, 27
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Senior APJ McKelvey cites to the Court of Appeals for the Federal Circuits admonition that unless there is a readily apparent basis for the decision, it is generally appropriate to explain an exercise of discretion. For reasons that follow, the APJs order of October 1, 2006, was not only an abuse of discretion but also did not follow the procedure set forth in the Boards Informative Opinion in Karim v. Jobson because the APJs order failed to adequately explain the rationale for her exercise of discretion in not permitting IBM to file any of its preliminary motions.
(72)
I have considered the statements made by the APJ in the Order dated October 11, 2006,
denying IBM (the party Drehmel) authorization to file any of its motions requesting addition of patents and applications owned by Rambus to the interference and to suspend prosecution in those applications absent a showing that they were separately patentable from the subject matter defined by the count in the interference. In my opinion, that Order does not provide any support either in the record or the rules governing the conduct of an interference for why denying IBM the ability to even file its motions was an exercise of sound discretion. There is nothing in the interference proceedings below that would support the denial of all of IBMs motions as an exercise of sound discretion by the Board.
(73)
The Order states Adding over five hundred claims to the interference would be unreasonable
and unnecessary for a determination of priority of invention. (Exhibit L at 4). But in my experience, there is no Board rule or practice that would make it unreasonable to determine priority of invention for any and all claims that may correspond to the count in one proceeding, no matter how many their number. That is because determining priority does not involve a consideration of the claims designated as corresponding to the count. The parties proof of prior invention is defined by and limited only by the scope of the count and it is only the count that is involved in a determination of priority.
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(74)
Further, the statement that the addition of so many additional claims to the interference was
unnecessary in order to determine priority is correct in the abstract, but irrelevant to the issue IBM sought to have resolved by the addition of the other Rambus applications and patents. Of course if additional applications and patents were added to the interference, the additional claims which would be designated as corresponding to the count are not necessary for a determination of priority. The interference was declared with a count and it is the count that serves as the vehicle for determining priority, not the claims.
(75)
On the other hand, the reason that the parties to an interference are in the dispute is to
determine who is entitled to the right to exclude (35 U.S.C. 154 (a)(1)), as defined by the claims involved in the interference, and who is not. Allowing the losing party to retain claims to that subject matter would subvert the point of having an interference in the first place. Further, the addition of all the Rambus claims directed to the same invention in the interference is indeed necessary, for to leave them in force means that the PTO cannot issue a patent to IBM even though it prevailed and has been adjudged the first to invent. Saying it is unnecessary to add the other Rambus claims in order to determine priority is to reduce the interference proceedings to an artificial exercise.
(76)
The Order also states, Adding so many claims and issues to the interference would not
secure the just speedy and inexpensive resolution of the interference. Bd. R. 1(b). (Exhibit L at 3) The just, speedy and inexpensive resolution of the interference as a rationale for not permitting the filing of the motions does not withstand analysis. There is no accepted definition of which I am aware for what constitutes an inexpensive interference. An interference proceeding is considered to be inexpensive only by comparison to the cost of litigation in the courts. Further, resolving priority of invention between the named parties for all applications and patents claming the same patentable invention as the count in one interference would be much less expensive for the PTO and the parties than to have to conduct multiple additional interferences between the same parties on the same issues. As for the speedy component of the APJs stated rationale, the rules envision that an 29
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interference will be administered such that pendency before the Board is normally no more than 2 (two) years. 37 C.F.R. 41.200(c). 37 C.F.R. 1.610(c) included a similar provision, and was always considered a desirable goal and not an absolute requirement limiting the pendency of an interference. This proceeding was declared on August 25, 2006 and judgment was entered on June 24, 2010. Thus, the interference took almost 4 (four) years to be concluded which is roughly twice the time period envisioned by the rule. The APJs order does not attempt to identify what is the exact nature of the many issues which are raised by IBMs proposed motions to add Rambus other applications and patents to the interference and which require resolution. In my opinion, all the proposed IBM motions raise the same basic issues: do any of the claims in each of the various Rambus patents and applications interfere with any of the IBM claims, and if so, which of the Rambus claims should be designated to correspond to the count in the interference.
(77)
As mentioned above, the purpose of adding additional applications or patents to the ongoing
interference is to avoid piecemeal prosecution of the question of priority raised in the interference. Otherwise, a party such as IBM, which prevailed in the interference, would be faced with additional patents and applications of their party opponent having claims directed to the subject matter of the count and for which IBM was declared to be the first inventor and which claims were not involved in the interference and therefore not subject to the judgment in the interference. Indeed, that is now the precise factual situation in which IBM now finds itself. The current posture of the parties after the interference is certainly not just in my opinion.
(78)
Notably, the Order dated October 11, 2006 gave as an additional basis for refusing to allow
IBM to file its proposed motions the possibility that the nine Perego applications Drehmel seeks to add to the interference presumably have claims that have not been allowed, or even examined. Apparently, examination is not complete. (Exhibit L at 3). But completion of examination for each involved application is not a requirement for declaring an interference because the rule (37 C.F.R. 41.102) requiring complete examination specifically states except as the Board may authorize 30
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and the APJ therefore has the authority to add an application to an interference even if examination is not complete. For example, if any of the applications proposed to be added to the interference had one claim which was indicated as allowable and other claims which were still being prosecuted the APJ could permit the addition of that application to the interference based on the one allowable claim and suspend the prosecution of all other claims pending the outcome of the interference. The APJs order does not set forth the basis for her presumption that any claims in any particular application have not been allowed or even examined. Obviously, the issue of complete examination does not apply to the proposed motions as they are directed to issued patents that by definition have been examined and allowed. Nevertheless, from the APJs choice of language in her order one could conclude that she neither actually reviewed the applications nor determined that the examination was not complete for any application.
(79)
The Order also failed to address that the motions IBM proposed in its motions list included
motions to add six Rambus patents which had issued as of the date of the Order, and thus, as patents, were not subject to any further ex parte prosecution and the caveat in 41.102 does not apply. Thus, the APJ could have declined to permit the motions to add the applications but could have permitted only the motions to add the patents. By no measure could the Boards silence on this point be considered just.
(80)
The Order also failed to address in any fashion that IBM (Drehmel), in its proposed
Preliminary Motion 2, was seeking an order to suspend the prosecution of those Rambus (Perego) applications in which examination was continuing (contrary to the M.P.E.P.; see 37 above), absent a showing that they were separately patentable over the subject matter in interference. Thus, the APJs justification for refusing to permit the filing of IBMs motions exacerbated the very harm that the motion was seeking to remedy. And as a result, Rambus continued prosecuting its patent applications. Following the Order, many of them issued during the pendency of the interference, and
31
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one is still pending. This is additional evidence that the interference was not conducted in a manner to achieve a just outcome.
(81)
The request to add the other Rambus patents and pending applications was made at the
inception of the interference as early in the proceeding as the request could have been made, and thus consideration at that point would not have required resetting any dates that had passed, or repeating any proceedings. Since all the patents and pending applications proposed to be added were assigned to Rambus, their addition also would not have increased the number of parties to the interference.
(82)
It must be remembered that what is being reviewed is the APJs decision not to permit IBM to
even file its motions. In rendering her decision, the APJ did not have to render a decision on the relative merits of the various motions, that is not the stated purpose of the motions list. The merits of those motions is not before the court because the motions were not permitted. Thus, the APJs order effectively denied IBM an opportunity to present the issues it sought to have resolved during the conduct of the interference.
(83)
The IBM motions list contained the identification and explanation that Judge Gardner Lane
said was required for motions of the type IBM requested (see Exhibit R, and 28-29 above). Further, as pointed out previously, the term necessary refers to those motions that need to be decided in order to resolve whether the pending application in interference could be issued as a patent. IBMs proposed motions to add the related Rambus patents and applications to the interference were exactly of this type, since the PTO cannot issue the pending IBM reissue application with claims directed to the same invention as in the related Rambus patents and applications.
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The Boards Decision was Arbitrary (84) While it is the case here that the Board ultimately would have been required to decide the
motions IBM sought to bring in order to resolve the matters set forth therein if they had been permitted and while it is conceded that deciding motions consumes time and resources, IBMs motions were occasioned by Rambus conduct of filing a number of related applications all asserting priority benefit from the same patent involved in this interference, and by the same PTO examiner not following specific procedures set forth in the MPEP for applications involved in or related to applications or patents in interference, and allowing the claims of those applications. Had Rambus placed all of its claims of its related applications in one application, the Board would have necessarily considered whether to add them to the interference. The fact that Rambus chose to prosecute multiple applications related to their patent once it was aware of the interference should make no difference. Accordingly, permitting IBM to file its motions would have had no significant impact upon the speed of resolution of the interference, and the parties were either willing to accept the costs of litigating the question in one proceeding (IBM), or were not in a legitimate position to complain about them (Rambus).
(85)
The Boards refusal to hear IBMs motions is made more inexplicable by the facts that define
a close relationship among the claimed subject matter of the Rambus patents and applications. First, all claim benefit of the same original patent application, which issued as the Perego 161 patent in interference. This means that Rambus believes that they disclose common subject matter. Further, twelve of these Rambus patent applications (out of the seventeen that issued as patents or are still pending) were straight continuations of the application that issued as the Perego 161 patent. By statute (35 U.S.C. 120) this means that their disclosures were word-for-word identical to the disclosure of the Perego 161 patent and any claim in the continuing application had to find support in the disclosure of the 161 patent. While it is certainly possible that a single application for patent could disclose 17 patentably distinct inventions it is highly unlikely, especially where the 161 patent is itself only 18 columns long. 33
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
(86)
Second, during their prosecution in the PTO and prior to issuance of the October 11, 2006
Order (Exhibit L), certain of the claims of Rambuss U.S. Patents No. 7,000,062, No. 7,003,618 and No. 7,062,597 had been specifically rejected by the reviewing examiner as being unpatentable under the judicially created doctrine of obviousness double patenting in view of claims 1-49 of the Perego 161 patent. This constituted a determination by the examiner that the claims of the Rambus 161 patent involved in this interference, including claim 1 of Rambus 161 patent which serves as one alternative for the count in the interference, would have rendered the claims in the subsequently filed continuing applications obvious in the sense of 35 U.S.C. 103, and therefore would have necessarily been designated to correspond to the count, assuming interfering subject matter was otherwise found.
(87)
Rather than seeking to contest the correctness of the obviousness-type double patent
rejections, or amending the claims so that they defined separately patentable subject matter, Rambus merely filed terminal disclaimers disclaiming the term of any patent issued from the continuation application that would extend beyond the term of the Rambus 161 patent, thereby overcoming the obviousness-type double patenting rejections and obtaining allowance of these claims and issuance of the patents. These Rambus patents had all issued prior to the institution of the Interference on August 15, 2006. All of the claims of these Rambus patents had therefore been acknowledged by the PTO, without contest from Rambus, as claiming an invention that would have been obvious from the claims of the Rambus 161 patent, including claim 1 which is the count in this interference, prior to issuance of the October 11, 2006 Order. It was therefore entirely arbitrary for the APJ not to have permitted IBMs motions at least as to these three Rambus patents.
The Board Decision Does Not Yield a Just, Speedy or Inexpensive Result (88) The Board failed to properly consider the consequences to IBM, and the public, in refusing to
permit IBM to file its motions. As to IBM, it is now compelled to seek multiple interferences concerning the same claimed subject matter as in interference below in which IBM was determined to 34
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
be the first inventor, rather than obtaining resolution in a single proceeding. The result is to delay full disposition as to IBM. Further, IBM is currently barred from seeking further interferences, since the PTO has suspended prosecution of the IBM applications in which the Rambus patent claims were copied, pending the outcome of the current proceeding. Thus for the foreseeable future, IBM has no remedy.
(89)
Furthermore, once the prosecution of the IBM applications are permitted to resume, it is
possible that the Board will simply institute one interference at a time, each involving one Rambus patent, plus the IBM application in which the Rambus claims were copied, and possibly require a new count. Thus, each interference might involve a new motions phase to determine which claims correspond to the count, as well as a new priority determination, in the event of any difference in the count relative to the count utilized in the interference below. Given the number of Rambus patents at issue, the result would delay full resolution for years, and it may be that the patents will expire before all the interferences could be resolved or that the technology of the patents in suit might have become obsolete. It is also unclear what the status of pending interferences will be in light of the recent passage of the Leahy-Smith America Invents Act (H.R. 1249), which in a contest between parties contending to have invented the same invention abolished issuing a patent to the first to invent in favor of issuing a patent to the first to file.
(90)
As to the public, it is now put in the position of being presented with claims of two different
parties, each party purporting to be the first inventor of the subject matter of the claims. It is also presented with multiple claims in the different Rambus patents, all possibly directed to the same invention as that contested in the interference. This of course is inconsistent with the essential premise of the patent system, that there should be only one patent issued to the first inventor for the same invention. In addition, insofar as a party files multiple patent applications in an attempt to sidestep the interference process and retain claims to the same subject matter as involved in the interference, it frustrates the purpose of the interference procedure. 35
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24
CERTIFICATE OF SERVICE I hereby certify, under penalty of perjury, that on September 30, 2011 a true and correct copy of the foregoing was filed electronically via the Courts ECF system, pursuant to Civil L.R. 5-4, and served electronically, pursuant to Civil L.R. 5-5(b) and this Courts General Order No. 45(IX), on all counsel of record, including: Counsel for Plaintiff, Rambus Inc. Tina E. Hulse tina.hulse@finnegan.com A courtesy copy of the foregoing was also served by e-mail on counsel for Plaintiff listed below: Barbara Clarke McCurdy barbara.mccurdy@finnegan.com Naveen Modi naveen.modi@finnegan.com Date: September 30, 2011 /s/_Edward A. Kmett________
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Case3:10-cv-04017-JSW Document56

Case No. C 10-04017 JSW DECLARATION OF ANDREW METZ

The proceeding for determining priority of inventorship in the PTO is referred to as an

sentence), but per 37 C.F.R. 41.203(b) that authority is delegated to an APJ.

Once an interference is declared in the PTO, it is currently conducted pursuant to a portion of

An interference proceeding is an adversarial proceeding, in which each party has a right to

Accordingly, in part to reduce the attempted use of an interference as a cancellation

Once it is determined to add the claims of an additional application or patent to an ongoing

In my experience, the purpose of adding additional applications or patents to the ongoing

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