Case 5:05-cv-00334-RMW Document 2615 Filed 11/25/2008 Page 1 of 11

1 Gregory P. Stone (SBN 078329) Rollin A. Ransom (SBN 196126)

Andrea Weiss Jeffries (SBN 183408) SIDLEY AUSTIN LLP
2 Fred A. Rowley (SBN 192298) 555 West Fifth Street, Suite 4000
MUNGER, TOLLES & OLSON LLP Los Angeles, CA 90013-1010
3 355 South Grand Avenue, 35th Floor Telephone: (213) 896-6000
Los Angeles, CA 90071-1560 Facsimile: (213) 896-6600
4 Telephone: (213) 683-9100 Email: rransom@sidley.com
Facsimile: (213) 687-3702
5 Email: gregory.stone@mto.com Pierre J. Hubert (Pro Hac Vice)
Email: andrea.jeffries@mto.com Craig N. Tolliver (Pro Hac Vice)
6 Email: fred.rowley@mto.com McKOOL SMITH PC
300 West 6th Street, Suite 1700
7 Peter A. Detre (SBN 182619) Austin, TX 78701
Rosemarie T. Ring (SBN 220769) Telephone: (512) 692-8700
8 Jennifer L. Polse (SBN 219202) Facsimile: (512) 692-8744
MUNGER, TOLLES & OLSON LLP Email: phubert@mckoolsmith.com
9 560 Mission Street, 27th Floor Email: ctolliver@mckoolsmith.com
San Francisco, CA 94105
10 Telephone: (415) 512-4000
Facsimile: (415) 512-4077
11 Email: peter.detre@mto.com
Email: rose.ring@mto.com
12 Email: jen.polse@mto.com
13 Attorneys for RAMBUS INC.
14 UNITED STATES DISTRICT COURT
15 NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
16 RAMBUS INC., CASE NO. C 05-00334 RMW
17 Plaintiff, RAMBUS INC.’S REPLY IN
v. SUPPORT OF ITS MOTION FOR
18 SUMMARY JUDGMENT OF NO
HYNIX SEMICONDUCTOR INC., et al, INEQUITABLE CONDUCT
19
Defendants. Date: December 10, 2008
20 Time: 2:00 p.m.
Location: Courtroom 6
21
Judge: Hon. Ronald M. Whyte
22 Trial Date: January 19, 2009

23 RAMBUS INC., CASE NO. C 06-00244 RMW

24 Plaintiff,

25 v.

26 MICRON TECHNOLOGY INC., et al,

27 Defendants.

28
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1 MEMORANDUM OF POINTS AND AUTHORITIES

2 I. INTRODUCTION

3 The Manufacturers’ opposition to Rambus’s motion for summary judgment of no

4 inequitable conduct seeks to preserve only four of the numerous inequitable conduct theories they
5 have pled against the asserted patents.1 The Manufacturers’ failure to make any showing in
6 support of the majority of their theories is a concession that they had not even “the slenderest
7 grounds” for their allegations. Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed.
8 Cir. 1988) (“the habit of charging inequitable conduct in almost every major patent case has
9 become an absolute plague”).
10 The Manufacturers’ opposition fares no better with respect to the four theories that
11 they attempt to preserve: inequitable conduct based on the alleged nondisclosure of the (1) Budde
12 ’307 patent, (2) iAPX432 references, (3) SCI references, and (4) CVAX reference. Although the
13 Manufacturers argue that each reference is material and was withheld by Rambus from the PTO
14 with deceptive intent, they do not offer any evidence to raise genuine disputes as to the facts that
15 mandate summary judgment in favor of Rambus.
16 With respect to the Budde ’307 patent, the Manufacturers do not dispute that it was
17 disclosed by Rambus to the PTO during the prosecution of a parent application to the asserted
18 patents against which the Manufacturers claim inequitable conduct based on the Budde ’307
19 patent. This precludes a finding of inequitable conduct based on the Budde ’307 patent because
20 the law is clear that information submitted during the prosecution of a parent application need not
21 be resubmitted during the prosecution of its descendant applications. See ATD Corp. v. Lydall,
22 Inc., 159 F.3d 534, 547 (Fed. Cir. 1998).
23 As to the iAPX432, SCI, and CVAX references alleged withheld by Rambus from
24 the PTO, the Manufacturers failed to introduce any evidence to dispute the opinions of their own
25 expert witness that these references disclosed the same concepts as numerous other prior art
26 references that were submitted by Rambus to the PTO. Consequently, the Manufacturers have no
27
1
28 As used herein, “the Manufacturers” refers to Hynix, Micron, and Nanya.

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1 evidence to establish that the iAPX432, SCI, and CVAX references are not merely cumulative.
2 This precludes a finding of inequitable conduct because cumulative information is not material.
3 Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1574-75 (Fed. Cir. 1997) (“even where
4 an applicant fails to disclose an otherwise material prior art reference, that failure will not support
5 a finding of inequitable conduct if the reference is ‘simply cumulative to other references,’ i.e., if
6 the reference teaches no more than what a reasonable examiner would consider to be taught by
7 the prior art already before the PTO”).
8 To survive Rambus’s motion for summary judgment of no inequitable conduct, the
9 Manufacturers had to introduce evidence by which a trier of fact could find by clear and
10 convincing evidence that intentionally undisclosed information was material. Abbott Labs. v.
11 TorPharm, Inc., 300 F.3d 1367, 1379 (Fed. Cir. 2002). The Manufacturers’ utter failure to
12 contest the evidence of the cumulativeness of the iAPX432, SCI, and CVAX references thus
13 mandates summary judgment in favor of Rambus. See, e.g., First Years, Inc. v. Munchkin, Inc.,
14 No. 07-cv-558-bbc., 2008 WL 4168205, at *18 (W.D. Wis. Sep. 9, 2008) (granting partial
15 summary judgment; stating that accused infringer’s nondisclosure theories are “non-starters”
16 because it made “no effort to establish that an examiner would have considered the additional
17 prior art important, given the [at least 36 other] references already before it”); 3M Co. v. Moldex-
18 Metric, Inc., No. 03-5292 (MJD/AJB), 2008 WL 3371257, at *4-*5 (D. Minn. Aug. 8, 2008)
19 (granting summary judgment where court found that the allegedly undisclosed prior art reference
20 was cumulative of another reference that was disclosed); ResQNet.com v. Lansa, Inc., No. 01 Civ.
21 3578(RWS), 2006 WL 3408435, at *9-*11 (S.D.N.Y. Nov. 22, 2006) (same).
22 II. ARGUMENTS IN REPLY

23 A. Budde ’307 patent

1. Rambus’s disclosure of the Budde ’307 patent during the prosecution
24 of a parent application of the asserted patents precludes a finding of
inequitable conduct.
25

26 The Manufacturers alleged in their answers that Rambus committed inequitable

27 conduct by failing to disclose the Budde ’307 patent to the PTO during the prosecution of the

28 ’037, ’696, ’120, ’8,020, ’916, and ’863 asserted patents. See Op. Br. at 7. Of these patents, the

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1 Manufacturers now contend that Rambus had a duty to disclose the Budde ’307 patent during the
2 prosecution of only the ’037 and ’696 patents. Opp. at 8. The Manufacturers have thus conceded
3 that there is no basis for their inequitable conduct claims based on the Budde ’307 patent as to the
4 ’120, ’8,020, ’916, and ’863 asserted patents, and summary judgment must be granted in favor of
5 Rambus accordingly.
6 The Manufacturers’ remaining claims based on the Budde ’307 patent also fail as a
7 matter of law. The Manufacturers do not dispute that the Budde ’307 patent was disclosed by
8 Rambus, and considered by the examiner, during the prosecution of U.S. Patent No. 5,841,580
9 (“the ’580 patent”). The Manufacturers also do not dispute that the ’580 patent is a common
10 ancestor to the ’037 and ’696 patents (as well as to the ’120, ’8,020, ’916, and ’863 patents). This
11 alone is sufficient to defeat the Manufacturers’ claims of inequitable conduct with respect to the
12 Budde ’307 patent because the disclosure of a prior art reference during the prosecution of a
13 patent application precludes a finding that the applicant committed inequitable conduct in not
14 disclosing it again for the descendants of that application. ATD, 159 F.3d at 547.
15 In ATD, the Federal Circuit held that “it can not be inequitable conduct for an
16 applicant not to resubmit, in [a] divisional application, the information that was cited or submitted
17 in the parent application.” Id. at 547. The Federal Circuit’s holding was based on Section 609 of
18 the Manual of Patent Examination Procedure (“MPEP”), which provided in part:
19 [T]he patent examiner will consider information cited or submitted
to the Office in a parent application when examining a continuing
20 application, and a list of the information need not be submitted in
the continuing application unless applicant desires the information
21 to be printed on the patent.
22 Id. (emphasis added).2 Because MPEP § 609 effectively makes any information disclosed in a
23 parent application part of the record of a child application, an applicant does not breach its duty of
24 “candor, good faith, and honesty” to the PTO in not resubmitting information that it has
25 previously disclosed for the parent application. Intex Recreation Corp. v. Team Worldwide
26

27 2
Similar language appears in the versions of the MPEP in effect during the prosecution of the
28 asserted patents.

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1 Corp., 390 F. Supp. 2d 21, 26 (D.D.C. 2005); see also Advanced Respiratory (D. Minn. Oct. 22,
2 2002). “An applicant can not be guilty of inequitable conduct if the reference was cited to the
3 examiner.” Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1327 (Fed. Cir. 2000).
4 The Manufacturers contend that “there is no indication that the examiners of the
5 later-filed applications had any knowledge of the Budde ’307 patent, let alone considered it in
6 determining the patentability of the claims.” Opp. at 8. However, whether the examiners of the
7 later-filed applications considered the Budde ’307 patent is irrelevant to whether Rambus acted
8 wrongfully. See Intex, 390 F. Supp. 2d at 26 (an applicant has no duty to resubmit information
9 that was submitted in a parent application). In any event, MPEP § 609 requires an examiner to
10 review the disclosures made during the prosecution of a parent application, and the PTO is
11 presumed to have discharged its duties properly. See N. Telecom, Inc. v. Datapoint Corp., 908
12 F.2d 931, 939 (Fed. Cir. 1990) (“It is presumed that public officials do their assigned jobs.”). The
13 Manufacturers certainly have introduced no evidence to rebut this presumption. J.P. Stevens &
14 Co. v. Lex Tex Ltd., 747 F.2d 1553, 1564 (Fed. Cir. 1984), cited by the Manufacturers, is
15 inapposite because it does not involve the situation in which a prior art reference is cited in a
16 parent application.
17 The Manufacturers’ suggestion that Rambus was required to resubmit the Budde
18 ’307 patent to the PTO after Rambus received “more recent, undisclosed indications of its
19 materiality” in Case No. CV 00-20905 RMW3 and in a proceeding before the German PTO, see
20 Opp. at 8, also finds no support in the case law. To the contrary, “[a]n applicant is not required to
21 tell the PTO twice about the same prior art, on pain of loss of the patent for inequitable conduct.”
22 Fiskars, 221 F.3d at 1327.
23 Because it is undisputed that Rambus disclosed the Budde ’307 patent during the
24 prosecution of the ’580 patent, summary judgment of no inequitable conduct based on the Budde
25

26 3
The Manufacturers contend that Hynix served invalidity contentions that “explained” the
relevance of the Budde ‘037 patent to the patentability of certain claims at issue in the ’905 case,
27
see Opp. at 5, but they fail to mention that none of the claims asserted in that case was determined
28 to be invalid over the Budde ’307 patent.

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1 ’307 patent must be entered with respect to its descendant applications. Although the
2 Manufacturers’ opposition contains a lengthy discussion, with which Rambus disagrees, of the
3 purported materiality of the Budde ’307 patent and Rambus’s deceptive intent in not resubmitting
4 it to the PTO, see Opp. at 4-8, the Manufacturers’ arguments are beside the point because the
5 Court need not reach the issues of materiality and intent. See Intex, 390 F. Supp. 2d 21 (a factual
6 determination that allegedly undisclosed prior art reference was not material is not necessary to
7 dismiss an inequitable conduct claim on the basis that it was submitted for a parent application).
8 B. iAPX432 references

9 1. The Manufacturers did not introduce evidence showing that the

iAPX432 references are not cumulative of the Budde ’307 patent.
10
Hynix and Micron alleged in their answers that Rambus committed inequitable
11
conduct by failing to disclose the iAPX432 references to the PTO during the prosecution of the
12
’696, ’120, ’8,020, ’916, and ’863 asserted patents. See Op. Br. at 8. Of these patents, they now
13
contend that Rambus had a duty to disclose the iAPX432 references during the prosecution of
14
only the ’696 patent.4 Opp. at 11. They have thus conceded that there is no basis for their
15
iAPX432-based inequitable conduct claims as to the ’120, ’8,020, ’916, and ’863 asserted patents,
16
and summary judgment must be granted in favor of Rambus accordingly.
17
The sole remaining inequitable conduct claim based on iAPX432 also cannot
18
survive summary judgment. As set forth in Rambus’s opening brief, the experts retained by the
19
parties are in agreement that the iAPX432 references contain the same disclosures as the Budde
20
’307 patent, and as such, there is no dispute that the iAPX432 references are cumulative of the
21
Budde ’307 patent. Op. Br. at 8. Thus, because it is also undisputed that Rambus disclosed the
22
Budde ’307 patent during the prosecution of the ’580 patent and that the ’696 patent is a
23

24

25

26 4
The Manufacturers’ opposition also contends, for the first time, that Rambus had a duty to
disclose the iAPX432 references to the PTO during the prosecution of the ’037 patent. However,
27
because the Manufacturers did not plead inequitable conduct based on iAPX432 against the ’037
28 patent, they will not be able to pursue such a claim at trial.

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1 descendant of the ’580 patent, Rambus cannot be found to have committed inequitable conduct
2 with respect to the ’696 patent by the alleged nondisclosure of the iAPX432 references.5
3 In their opposition, the Manufacturers fail to point to any evidence showing that, in
4 fact, their experts were wrong and the iAPX432 references are not cumulative of the Budde ’307
5 patent. Although the Manufacturers now contend that there is only “some overlap” in the
6 disclosures of the iAPX432 references and the Budde ’307 patent and that the iAPX432
7 references provide “greater detail” than the Budde ’307 patent, Opp. at 10, they fail to back up
8 these attorney arguments with any evidence. They do not provide an analysis of the respective
9 levels of detail provided by the references. Nor do they offer declarations from their experts
10 stating that they were in fact mistaken when they previously stated that the iAPX432 references
11 and the Budde ’307 patent disclosed the same information. Moreover, the Manufacturers do not
12 contend that any purported additional detail in the iAPX432 references was material to the
13 patentability of the asserted patents. Any such contention would be contrary to the opinions of
14 their own experts that the Budde ’307 patent “describes the iAPX system as a whole” and that
15 “everything that’s important in iAPX432 is in Budde.” See Op. Br. at 8.
16 Although the Manufacturers offer a lengthy argument regarding the purported
17 materiality of the iAPX432 references, their failure to contest the cumulativeness of the iAPX432
18 references over the Budde ’307 patent renders their showing insufficient as a matter of law. Eli
19 Lilly & Co., 119 F.3d at 1574-75 (cumulative information is not material). The Manufacturers
20 have themselves introduced evidence, in the form of expert opinions, that show that the iAPX432
21 references are cumulative of the Budde ’307 patent. The Manufacturers failed to offer any
22 countervailing evidence in their opposition by which a trier of fact could find to the contrary, and
23 summary judgment of no inequitable conduct based on the nondisclosure of the iAPX432
24 references must thus be granted in favor of Rambus. See TorPharm, 300 F.3d at 1379.
25

26 5
It is also undisputed that the ’580 patent is also a common ancestor to the ’120, ’8,020, ’916,
and ’863 asserted patents for which the Manufacturers apparently have dropped their claims of
27
inequitable conduct based on the iAPX432 references and to the ’037 patent against which the
28 Manufacturers improperly raise such a claim for the first time in their opposition.

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1 C. SCI
2 1. The Manufacturers did not introduce evidence showing that the SCI
references allegedly undisclosed by Rambus are not cumulative of the
3 SCI references disclosed by Rambus.

4 Hynix and Micron alleged in their answers that Rambus committed inequitable

5 conduct by failing to disclose certain SCI references to the PTO during the prosecution of the

6 ’120, ’8,020, ’916, and ’863 asserted patents. See Op. Br. at 9.

7 As set forth in Rambus’s opening brief, several SCI references were submitted by

8 Rambus to the PTO during the prosecution of the asserted patents (which the Manufacturers do

9 not dispute), and the Manufacturers’ own expert has opined that these references disclosed the

10 same information as other SCI references that Rambus allegedly did not submit to the PTO. Id. at

11 11-12. The evidence thus shows that the allegedly undisclosed SCI references are cumulative and

12 not material.

13 The Manufacturers’ opposition does not offer any contrary evidence to show that

14 the allegedly undisclosed SCI references are not cumulative. The Manufacturers now contend

15 that “[b]ecause each of the SCI references discloses a different combination of features, they are

16 each highly relevant to the patentability of Rambus’s patents.”6 Opp. at 14 (emphasis added).

17 However, the Manufacturers offer no evidence, in the form of an expert opinion or otherwise, to

18 support this assertion.

19 Further, contrary to the Manufacturers’ assertion that every single SCI reference

20 was unique and highly relevant, their opposition addresses the substance of only one such

21 reference, a May 1989 paper by Schanke (“SCI-B”), which they contend to “provide specific

22 details that were not provided in the other publications.”7 Opp. at 12, 14-15. The Manufacturers

23
6
On this basis, the Manufacturers make the remarkable contention that Rambus committed
24 inequitable conduct because it did not disclose each and every document related to SCI that it
might have ever received. Id. at 13 (“However, Rambus did not disclose all of the SCI
25
publications to the U.S. PTO even though Dr. Farmwald and Dr. Horowitz were on the SCI
26 mailing list and receiving all of the SCI publications beginning in at least November 1988.”).
7
The Manufacturers make the same claim as to the SCI-D and SCI-E references, but do not
27
identify any purportedly more detailed aspects of these references in their opposition. See Opp. at
28 14-15.

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1 must thus be deemed as having waived their inequitable conduct claims as to the alleged
2 nondisclosure of any other SCI reference. As to the SCI-B reference, the Manufacturers contend
3 that it contains more detailed explanations regarding the use of dual edge clocking and a DLL
4 than SCI-related references that Rambus submitted to the PTO. Id. at 14-15. However, the
5 Manufacturers do not contend that the purported additional details are material to the patentability
6 of Rambus’s asserted patents, nor do they offer any evidence that would support such a
7 contention. Id. at 14-15. As set forth in Rambus’s opening brief, the Manufacturers’ own expert
8 has opined that SCI-B is just one of several SCI-related publications that discussed dual edge
9 clocking and DLL. See Op. Br. at 10-11. The Manufacturers do not point to any opinion of their
10 expert regarding any particular importance or materiality of SCI-B. Thus, not only are the
11 Manufacturers’ unsupported attorney arguments regarding SCI-B contrary to their own expert’s
12 opinions, they are not evidence, and cannot preserve the Manufacturers’ baseless SCI-related
13 inequitable conduct claims.
14 Again, the Manufacturers themselves offered expert evidence showing that the SCI
15 references were cumulative, and their failure to introduce evidence to the contrary in their
16 opposition mandates summary judgment in favor of Rambus. See TorPharm, 300 F.3d at 1379.
17 2. The Manufacturers should not be allowed to expand their SCI-related
inequitable conduct allegations beyond the pled allegations.
18
As noted in Rambus’s opening brief, neither Hynix nor Micron adequately pled its
19
SCI-related inequitable conduct allegations, and the only asserted patents that either of them has
20
specifically identified in connection with their SCI-related inequitable conduct allegations are the
21
’120, ’8,020, ’916, and ’863 patents. Op. Br. at 9 n.7. Although Hynix and Micron do not
22
dispute in their opposition that their SCI-related allegations were as thus limited, they contend
23
that “Rambus had an obligation to disclose the SCI publications to the U.S. PTO during the
24
prosecution of each of its patents.” Opp. at 15 (emphasis added). To the extent that Hynix or
25
Micron intends to pursue SCI-related inequitable conduct claims at trial as to any asserted patents
26
other than the ’120, ’8,020, ’916, and ’863 patents, they should be barred from doing so because
27
they have not pled such allegations. See Central Admixture Pharmacy Servs., Inc. v. Advanced
28
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1 Cardiac Solutions, P.C., 482 F.3d 1347, 1356-57 (Fed. Cir. 2007) (inequitable conduct must be
2 pled with particularity).
3 D. CVAX

4 1. The Manufacturers did not introduce evidence showing that the

CVAX reference is not cumulative of the Budde ’307 patent and the
5 Bowater ’278 patent.

6 The Manufacturers alleged in their answers that Rambus committed inequitable

7 conduct by failing to disclose the CVAX reference to the PTO during the prosecution of the

8 ’8,020 and ’696 asserted patents. See Op. Br. at 14. Of these patents, the Manufacturers now

9 contend that Rambus had a duty to disclose the CVAX reference during the prosecution of only

10 the ’696 patent.8 Opp. at 17. The Manufacturers have thus conceded that there is no basis for

11 their CVAX-based inequitable conduct claim as to the ’8,020 patent, and summary judgment

12 must be granted in favor of Rambus accordingly.

13 Moreover, as set forth in Rambus’s opening brief, the Manufacturers’ expert has

14 opined that the CVAX reference contained the same information as numerous other prior art

15 references, at least two of which, the Budde ’307 and Bowater ’278 patents, were disclosed by

16 Rambus to the PTO during the prosecution of the ’8,020 and ’696 patents. See Op. Br. at 14-15.

17 The Manufacturers do not dispute that the Bowater ’278 patent was disclosed by Rambus during

18 the prosecution of the ’8,020 and ’696 patents, and as explained above and in Rambus’s opening

19 brief, the Budde ’307 patent was disclosed for the purposes of the ’8,020 and ’696 patents by its

20 disclosure for the parent ’580 patent. See Op. Br. at 7. The Manufacturers also do not dispute in

21 their opposition that the CVAX reference is cumulative to the Budde ’307 and Bowater ’278

22 patents. Indeed, these two patents are not even mentioned in the opposition’s discussion of the

23 CVAX reference. See Opp. at 16-17. Summary judgment of no inequitable conduct based on the

24 CVAX reference must be granted in favor of Rambus.

25

26 8
The Manufacturers’ opposition also contends, for the first time, that Rambus had a duty to
disclose the CVAX reference to the PTO during the prosecution of the ’037 patent. However,
27
because the Manufacturers did not plead inequitable conduct based on CVAX against the ’037
28 patent in their answers, they will not be able to pursue such a claim at trial.

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1 E. The Manufacturers do not contest Rambus’s motion for summary judgment

of no equitable conduct with respect the vast majority of their inequitable
2 conduct claims.
3 As noted, the Manufacturers’ opposition contests only four of their inequitable
4 conduct allegations on which Rambus has moved for summary judgment. Summary judgment of
5 no inequitable conduct thus must be entered with respect to the inequitable conduct claims made
6 by the Manufacturers against the asserted patents based on the following prior art references:
7 • U.S. Patent No. 5,251,178 (“the Childers ’178 patent”);

8 • Cydra 5 Departmental Supercomputer Design Philosophies, Decisions, and

Tradeoffs (“Cydra 5”);
9
• U.S. Patent No. 5,021,985 (“the Hu ’985 patent”);
10 • Mark Johnson et al., A Variable Delay Line PLL for CPU–Coprocessor
Synchronization, IEEE J. Solid State Circuits, Vol. 22, No. 5, Oct. 1988
11
(“Johnson”);
12 • information regarding various products from MIPS Computer Systems,
Inc.;
13
• U.S. Patent No. 4,998,262 (“the Wiggers ’262 patent”);
14
• U.S. Patent No. 3,821,715 (“the Hoff ’715 patent”); and
15
• “the NuBus.”
16 See Op. Br. at 2-3.
17 III. CONCLUSION
18 For the foregoing reasons and the reasons stated in Rambus’s opening brief,
19 Rambus respectfully requests that the Court grant summary judgment that the asserted patents are
20 not unenforceable by reason of inequitable conduct.
21

22 DATED: November 25, 2008 MUNGER, TOLLES & OLSON LLP

23 SIDLEY AUSTIN LLP

24 McKOOL SMITH PC

25
By: /s/ David C. Yang
26 DAVID C. YANG

27 Attorneys for Plaintiff RAMBUS INC.

28
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