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UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
Before The Honorable Theodore R. Essex
Administrative Law Judge_________________________________________
In the Matter of )
)
CERTAIN SEMICONDUCTOR CHIPS ) Inv. No. 337-TA-753
AND PRODUCTS CONTAINING THE SAME )
_________________________________________ )
RESPONDENTS CONTINGENT PETITION FOR REVIEW
OF THE INITIAL DETERMINATION
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TABLE OF CONTENTS
Page
SUMMARY OF PETITION ............................................................................................................1I. INTRODUCTION ...............................................................................................................7II. PARTIES .............................................................................................................................8III. PROCEDURAL HISTORY .................................................................................................9IV. LEGAL STANDARD FOR REVIEW ..............................................................................10V. ISSUES UPON WHICH REVIEW IS SOUGHT .............................................................11
A. Barth Patents ..........................................................................................................11B. Dally Patents ..........................................................................................................12C. Importation .............................................................................................................13D. Domestic Industry ..................................................................................................13
VI. BARTH PATENTS CONDITIONAL REVIEW OF SELECT FINDINGS ..................14A. Respondents Proved That the Asserted Barth Claims Are Invalid For Lack
of Written Description Support ..............................................................................151. The ALJ Erred in Finding That Sampling Is Disclosed in the
Barth Patent Specification..........................................................................15 2. The ALJ Erred in Finding that the Strobe Signal and Signal
Elements are Timing Signals Used to Sample Data ..................................183. The Lack of Written Description Support for the Subsequently
Added Sampling Claims Is Corroborated by Rambus Pattern and
Practice of Stretching the Reach of Pending ContinuationApplications to Read on Competitive Technologies, Including
JEDEC........................................................................................................22 B. Rambus Did Not Meet Its Burden to Prove a Violation of Section 337
Based on Infringement of the Barth Patents ..........................................................231. Because All the Asserted Barth Claims Are Method Claims,
Rambus Cannot Prove a Violation of Section 337 Based on Direct
Infringement ...............................................................................................23
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2. The ALJ Erred in Finding That the Accused Products IndirectlyInfringe the Asserted Claims of the Barth Patents .....................................24
C. The Barth Patents Are Invalid................................................................................25 1. Farmwald 037 Anticipates the Asserted Claims of the 109 Patent .........262. SyncLink Anticipates Certain Claims of the 353 and 109 Patents .........29
D. The Barth Patents Are Unenforceable Due to Inequitable Conduct ......................321. The ALJ Erred in Finding that SyncLink/RamLink is Cumulative
of the Farmwald Prior Art ..........................................................................322. Respondents Presented Substantial Circumstantial Evidence
Demonstrating Rambus Intent to Deceive the Patent Office ....................34VII.
DALLY PATENTS CONDITIONAL REVIEW OF SELECT FINDINGS ..................36
A. Rambus Lacks Standing to Assert the Dally Patents .............................................37
1. The ALJ Erred in Finding That Rambus Has Standing to Assert theDally Patents and That UNC Has No Rights to Those Patents ..................37
B. Claim Construction Issues .....................................................................................421. The ALJ Erroneously Construed Transmitter Circuit /
Transmitter to Include Conventional FIR Filters ...................................42C. Respondents Do Not Infringe the Dally Patents ....................................................46
1. Under the Proper Construction of Transmitter Circuit /Transmitter the Accused Products Do Not Infringe the Dally
Patents ........................................................................................................462. The ALJ Erred in Finding that Rambus Proved Infringement of the
Dally Patents by LSI/Seagate Products......................................................463. The Accused Products Cannot Infringe When the Accused
Transmitter Is Not Connected and Therefore Not Operable ......................48D. Rambus Did Not Meet Its Burden of Proof as to Indirect Infringement of
the Dally Patents ....................................................................................................481. The ALJ Erred in Finding That the Accused Products Indirectly
Infringe the Dally Patents ..........................................................................48
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2. Because Rambus Has Failed to Prove Indirect Infringement, It HasFailed to Prove Direct Infringement of Any of the Method Claims
of the Dally Patents ....................................................................................49E. The Dally Patents Are Invalid................................................................................50
1. Respondents Request Clarification of the ALJs Conclusions ofLaw, Nos. 8 and 10 ....................................................................................50
2. The ALJ Erred in Excluding the LSI/Seagate Prior Art Witnesses ...........513. Respondents Did Not Waive Their Arguments with Respect to
Prior Art References ..................................................................................564. Invalidity Based on Widmer Article ..........................................................605. Invalidity Based on LSI Logic SeriaLink CWSL500 Technology ............64
VIII. IMPORTATION ................................................................................................................66A. The ALJ Erred in Finding That STMicro NV Imported into the United
States ......................................................................................................................66IX. DOMESTIC INDUSTRY ..................................................................................................66
A. The ALJ Erred in Finding that Rambus Established a Domestic Industryfor the Barth and Dally Patents ..............................................................................661. Whether an Investment in Licensing Is Substantial Must Be
Decided in Light of the Strength or Weakness of RambusShowing on the Garmin Factors ................................................................68
2. Rambus Reliance on Its Overall Licensing Efforts ForeclosesSatisfying the Garmin Factors ...................................................................69
3. Rambus Failed to Prove the Asserted Patents Are an Important Partof Its Firm-Wide Licensing Efforts ............................................................69
4. The ALJs Domestic Industry Finding Should Be Reversed .....................72X. CONCLUSION ..................................................................................................................72
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TABLE OF AUTHORITIES
Page
CASES
Altiris, Inc. v. Symantec Corp.,318 F.3d 1363 (Fed. Cir. 2003)......................................................................................... 28
Amgen Inc. v. Hoechst Marion Roussel, Inc.,314 F.3d 1313 (Fed. Cir. 2003)......................................................................................... 21
Certain Multimedia Display and Navigation Devices and Systems, Components Thereof,and Products Containing Same,Inv. No. 337-TA-694, Corrected Public Version of Comm'n Op. (Aug. 8, 2011) ........... 67
Certain Semicond. Chips & Products Containing Same,Inv. No. 337-TA-753, Notice of Inv., 75 Fed. Reg. 384 (Jan. 4, 2011) .............................. 9
DSU Med. Corp. v. JMS Corp. Ltd.,471 F.3d 1293 (Fed. Cir. 2006)................................................................................... 24, 48
In re Chatani,2007 U.S. App. LEXIS 26745 (Fed. Cir. Nov. 19, 2007) ................................................ 34
In the Matter of Certain Electronic Devices With Image Processing Systems, ComponentsThereof, and Associated Software,Investigation No. 337-TA-724, Commn Op. (Dec. 2, 2011) ............................... 23, 24, 49
Interactive Gift Express, Inc. v. Compuserve Inc.,256 F.3d 1323 (Fed. Cir. 2001)......................................................................................... 22
Leighton Tech., L.L.C. v. Oberthur Card Sys., S.A. ,2007 WL 2230157 (S.D.N.Y. July 11, 2007) ................................................................... 39
Markman v. Westview Instruments, Inc.,52 F.3d 967 (Fed. Cir. 1995)(en banc),affd517 U.S. 370 (1996) ................................................................................................. 45
Muther v. United Shoe Machinery Corp.,14 F.2d 808 (3rd Cir. 1926) .............................................................................................. 39
SciMed Life Sys., Inc. v. Adv. Cardio. Sys., Inc .,242 F.3d 1337 (Fed. Cir. 2001)......................................................................................... 42
VEC Tech., L.L.C. v. Acrylon Plastics, Inc.,2004 WL 2595894 (D. Minn. Nov. 12, 2004) .................................................................. 39
STATUTES
19 C.F.R. 210.43 .................................................................................................................... 6, 10
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19 C.F.R. 210.43(b) ..................................................................................................................... 7
19 C.F.R. 210.43(b)(1)(i) ........................................................................................................... 10
19 C.F.R. 210.43(b)(1)(ii) .......................................................................................................... 10
19 C.F.R. 210.43(b)(1)(iii) ......................................................................................................... 10
19 C.F.R. 210.43(d)(2) ............................................................................................................... 10
19 C.F.R. 210.45(c).................................................................................................................... 11
19 U.S.C. 1337 ............................................................................... 7, 8, 11, 12, 22, 23, 24, 49, 72
19 U.S.C. 1337(a)(3) .................................................................................................................. 70
19 U.S.C. 1337(a)(3)(C) ...................................................................................................... 67, 68
19 U.S.C. 337(a)(1)(B) .......................................................................................................... 9, 23
35 U.S.C. 102(e) ........................................................................................................................ 25
35 U.S.C. 103 ............................................................................................................................. 57
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List of Abbreviations:
Abbreviation Source
CDX Complainants demonstrative exhibit
CIB Complainants initial post-hearing brief
CPX Complainants physical exhibitCPHB Complainants pre-hearing brief
CRB Complainants reply post-hearing brief
CX Complainants exhibit
JX Joint Exhibit
RDX Respondents demonstrative exhibit
RIB Respondents corrected initial post-hearing brief
RPX Respondents physical exhibit
RPHB Respondents pre-hearing brief
RRB Respondents reply post-hearing brief
RRX Respondents rebuttal exhibit
RX Respondents exhibitSIB Staffs initial post-hearing brief
SRB Staffs reply post-hearing brief
Tr. Hearing Transcript
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SUMMARY OF PETITION
The ALJs findings of no violation are sound and should not be subject to review by the
Commission. Should the Commission decide to review the Initial Determinations findings,
however, Respondents respectfully request the review of a select number of issues. A summary
of the issues for which Respondents respectfully seek contingent review follows.
A. Barth Patents
Respondents respectfully submit that Respondents have met their burden of proof in
establishing that the asserted claims lack written description support and ask that the
Commission review the ALJs findings. While the ALJ found that Respondents failed to prove
by clear and convincing evidence that the asserted claims of the Barth Patents are invalid for
failure to satisfy the written description requirement, Respondents submit that they have shown
by clear and convincing evidence that: (1) sampling is not described in the Barth specification;
(2) neither the strobe signal nor signal elements are timing signals used to sample data; and
(3) the Barth specification does not describe how a strobe can be used in a write operation.
Rambus lack of credible expert testimony, the Barth specifications use of the word samples,
and the ALJs misplaced reliance on a statement about latching in the Barth specification all
demonstrate that the Barth Patent inventors possessed nothing beyond a memory interface
system that used a strobe to initiate data transfersand in particular, to indicate when the
DRAM was to begin sending data over the bus in response to a read operation request.
Respondents respectfully submit that Rambus failed to establish by preponderance of the
evidence each of the requisite elements of contributory and induced infringement of the asserted
claims. Because all the asserted Barth Patent claims are method claims, Rambus cannot prove a
violation of Section 337 based solely on direct infringement. Since Rambus did not prove
indirect infringement, no violation of Section 337 can be foundRambus reliance on testing is
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insufficient, and because Respondents lack culpable conduct, Rambus has also failed to show
induced infringement. The evidence the ALJ relied on for inducementsuch as advertising,
technical and software support, and marketing materialswould at mostestablish Respondents
intent to cause ordinary use of the products. It does not prove that respondents engaged in
culpable conduct to encourage anothers infringement, particularly in light of Respondents
objectively reasonable belief that the asserted claims of the Barth Patents were non-infringed,
unenforceable, and invalid.
Respondents submit that the Farmwald 037 patent anticipates all of the asserted claims
of the 109 Patent. Respondents respectfully disagree with the ALJs finding that Farmwald
037 does not anticipate the asserted claims of the 109 patent. Rather, Respondents submit that
Farmwald 037 does disclose a signal that indicates when the memory is to begin sampling.
More specifically, although the ALJ concluded that Respondents arguments as to the Farmwald
037 are substantially the same as arguments made by NVIDIA in the prior 661 Investigation,
Respondents have identified a completely separate signal disclosed in Farmwald 037 that
constitutes the signal claimed in the asserted 109 patent claims.
Respondents also respectfully disagree with the ALJs finding that SyncLink does not
anticipate claims 11-13 of the 353 patent and claims 1, 20, and 24 of the 109 patent. In
concluding that SyncLink does not anticipate claims 11-13 of the 353 patent and claims 1, 20,
and 24 of the 109 patent, the ALJ stated that the evidence shows that the flags signal in
SyncLink merely indicates intermediary bytes, such as address information, and thus fail to
initiate sampling in the manner called for in the asserted claims. On the contrary, SyncLink
discloses (a) a method of controlling a memory device with plurality of memory cells / memory
core (RX-4270C.0015); (b) issuing a write command (RX-4270C.0044, Table 4); (c) a delay
period (RX-4270C.0043, Fig. 19); (d) transferring two portions of data and sampling during odd
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and even phases of a common clock cycle (RX-4270.0043, Fig. 19). For these reasons,
SyncLink anticipates claims 11-13 of the 353 patent and claims 1, 20, and 24 of the 109 patent.
Finally with respect to the Barth patents, Respondents submit that Rambus intended to
deceive the USPTO by not disclosing SyncLink and RamLink prior art references. Although the
ALJ concluded that the SyncLink/RamLink prior art was cumulative of the Farmwald prior art
that was considered during prosecution of the Barth Patents and that Respondents failed to
introduce sufficient evidence of specific intent to deceive the USPTO, Respondents respectfully
ask that the Commission review these findings on the grounds that they are erroneous. First, the
strobe signal and clock shown in RamLink and SyncLink, respectively, are not cumulative to the
Farmwald 755 patent that was before the USPTO. Second, the ALJ ignored that the BPAIs
recent decision invalidating all the claims of the 109 patent in view of Farmwald 037 included
a number of grounds that were not considered by the prior examiner (during prosecution) or the
ALJ (during the 661 Investigation) in finding the asserted claims of the 109 patent valid over
the Farmwald 755. Third, the ALJ overlooked the fact that Draft 1.0 of the RamLink standard,
which is dated December 13, 1993, discloses that [t]he incoming signals are source-
synchronous; the datas strobeIn signal, not the clock RefIn signal, provides thesample timing
for the incoming data. (RIB at 211; RX-4274C.0058 (emphases added).) Respondents also
presented multiple undisputed facts that show Rambus proclivity towards misuse of the patent
system and patent prosecution. Therefore, Respondents respectfully ask that the Commission
review and ultimately overturn the ALJs finding as to no inequitable conduct.
B. Dally Patents
Respondents respectfully submit that Rambus lacks standing to assert the Dally Patents.
The ALJ found that Rambus had standing. However, Respondents showed at the hearing that
based on Article 10 of the UNC-MIT subcontract, Rambus neither owns, nor holds, an exclusive
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license to the Dally Patents and thus lacks standing to assert infringement. Because the claimed
inventions of the Dally Patents were reduced to practice at UNC using funds from, and during
the effective period of, the UNC Subcontract, Respondents submit that all rights, title and
interests to those inventions automatically vested in UNC, leaving MIT with at best a non-
exclusive license. Therefore, Respondents respectfully submit that the (1) it was error to find
that the Dally Patents were not developed under the UNC Subcontract; and (2) it was also error
to rely on after-the-fact conduct of the parties as proof of Rambus rights.
Respondents submit that the ALJs adoption of Rambus construction for transmitter
circuit was incorrect. Under the ALJs construction, transmitter circuit includes conventional
FIR filters. Respondents submit, however, that the evidence supports a finding that transmitter
circuit excludes conventional FIR filters. Under the proper construction of transmitter circuit,
Rambus has failed to establish infringement by the Accused Products of the Dally Patents.
Respondents submit that Rambus failed to establish by a preponderance of the evidence
that the accused LSI/Seagate products that include infringe the
independent claims of the Dally Patents. The evidence showed, however, that despite apparent
similarity in appearance in their outputs, the manner of operation of LSIs
and the claims of the Dally Patents is fundamentally different. Each of the asserted Dally claims
cover a transmitter circuit that uses a current bit and one or more preceding bits to calculate the
output signal level. In contrast, LSIs
to perform pre-emphasis.
Respondents submit that Rambus failed to establish by a preponderance of the evidence
each of the requisite elements of contributory and induced infringement of the asserted Dally
claims. There can be no indirect infringement by Respondentseither contributory or
inducedif there is no direct infringement of the asserted claims by the end users of the accused
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products. For the reasons stated herein, Respondents submit that Rambus failed to show direct
infringement by the end users. As to induced infringement, inducement requires evidence of
culpable conduct, directed to encouraging anothers infringement, not merely that the inducer
had knowledge of the direct infringers activities. Respondents submit that the evidence the ALJ
relied on for inducement fails to show anything more than Respondents intent to cause proper
use of the products. It does not, however, show that any Respondents engaged in the requisite
culpable conduct. Similarly, Rambus failed to make a showing of contributory infringement.
Therefore, the ALJs finding of infringement of the Dally Patents was error.
Respondents also submit that the accused Cisco products in which the accused transmitter
is not connected to anything elseand thus not operable to transmit and receive signalsand do
not infringe the asserted claims;
Respondents submit that the ALJ erroneously granted Rambus Motion in Limine No. 3
to exclude the testimony of four witnesses: Drs. Kenneth Szajda and Shoba Krishnan and
Messrs. Bruce Johnson and Michael Miller, as well as the expert testimony of Dr. Ali Hajimiri
relying on these witnesses testimony. Rambus argued that Respondents did not effectively
disclose certain witnesses that they intended to call to testify at the hearing. However,
Respondents complied with all requirements for disclosing potential witnesses. Therefore, the
testimony of these witnesses should not have been excluded.
Respondents also submit that the ALJ erred in determining that Respondents waived their
arguments with respect to prior art references U.S. Patent No. 3,806,807 (Nakamura) and U.S.
Patent No. 5,541,957 (Lau). Respondents set forth the contentions in their Post-Trial Brief
with sufficient detail as to adequately inform Rambus of their positions regarding the invalidity
of the asserted Dally Patents in light of these references. Through the testimony of their expert,
Respondents presented detailed analysis of the obviousness of the Dally Patents in light of the
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disclosures of Nakamura, in combination with other prior art. For similar reasons, Respondents
did not waive their arguments regarding the obviousness of the Dally Patents in view of Lau and
other prior art.
Respondents submit that the Widmer Article anticipates the claims related to the
additional transmitter and output frequency limitations, under the construction of all parties.
Respondents further submit that claims 11-13, 32-34, and 50-52 of the 857 Patent and
claims 26 and 40 of the 494 Patent are anticipated by the LSI Logic SeriaLink CWSL500
Technology. Although the ALJ found that Respondents failed to identify a common processor
coupled to the multiple core Shemp design, and that anticipation is not shown for this reason,
Respondents submit that expert testimony and other evidence show that these claims were more
than obviousthey were anticipated.
C. Importation
Respondents STMicroelectronics, Inc. and STMicroelectronics N.V. respectfully seek
review of the ALJs finding that the importation requirement was satisfied as to
STMicroelectronics N.V. Specifically, there is no evidence in the record that ST N.V. imports
any of the Accused Products into the United States. None of the evidence cited by Rambus, the
Staff or the ALJ in the ID support a finding to the contrary.
D. Domestic Industry
Respondents also appeal the ALJs findings that Rambus established the existence of a
domestic industry as to the Barth and Dally Patents. Based on the Commissions ruling in
Investigation No. 337-TA-694, Respondents submit that the ALJ incorrectly assessed the
Commissions factors on which the ALJ found the existence of a domestic licensing industry
based on portfolio licensing. In particular, Rambus did not dispute that it had no way of
determining how much of its revenue from licenses, or its investment in negotiating the licenses,
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is attributable to the asserted patents because Rambus does not even know if its licensees make
products that practice the patents. Respondents therefore respectfully request that the
Commission reverse the ALJs determinations on domestic industry.
I. INTRODUCTION
In the Initial Determination issued March 2, 2012, Administrative Law Judge Theodore
R. Essex found that there was no violation of section 337 of the Tariff Act of 1930, as amended,
19 U.S.C. 1337, by any named respondents as to the five patents asserted by Rambus. With
respect to the three Barth Patents, the asserted claims were correctly found to be invalid as
anticipated and obvious in light of the prior art references cited by respondents. Those patents
also were correctly found to be unenforceable due to unclean hands arising from Rambus bad
faith destruction of evidence. Similarly, with respect to the two Dally Patents, the asserted
claims were found to be invalid as anticipated and obvious in view of the prior art. All of these
findings by the ALJ are supported by well-reasoned and complete analyses of the arguments and
evidence presented by the parties, devoid of legal and factual errors or abuses of discretion, and
will have no effect on Commission policy. As such, they do not present any of the grounds
enumerated in 19 C.F.R. 210.43(b) and should not be subject to review by the Commission.
Although the ultimate conclusion of the ALJ and the findings underlying that conclusion
are fundamentally sound, Respondents1
respectfully seek review of a handful of issues, should
the Commission decide to review the ALJs Initial Determination. Chief among them are the
ALJs findings that (i) the Barth Patent specification discloses adequate written description for
the asserted claims; (ii) Rambus met its burden to show all of the elements of indirect
1 The remaining respondents in this Investigation are as follows: ASUSTek Computer, Inc.;
Asus Computer International, Inc; Audio Partnership Plc.; Cisco Systems, Inc.; Garmin
International Inc.; Hewlett-Packard Company; Hitachi Global Storage Technologies, Inc.; LSI
Corporation; MediaTek, Inc.; Oppo Digital, Inc.; Seagate Technology; STMicroelectronics, Inc.;and STMicroelectronics, N.V.
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infringement; (iii) the Farmwald 037 Patent and SyncLink reference are not anticipatory of the
Barth Patents; (iv) the Barth Patents are not unenforceable due to inequitable conduct; and finally
(v) Rambus has established a domestic industry for the Barth and Dally Patents. In Respondents
view, these conclusions were made in error, and therefore Respondents respectfully seek their
review (as well as the review of a limited number of other issues) by the Commission.
As to the Dally Patents, Respondents seek only conditional review should the
Commission grant review of the ALJs findings as to invalidity of those patents. If the
Commission determines to review those findings, Respondents seek contingent review of issues
relating to standing, claim construction, direct and indirect infringement, and invalidity as
enumerated below.
Pursuant to 19 C.F.R. 210.43, Respondents therefore submit this contingent petition to
the Commission respectfully requesting limited review of the Initial Determination on Violation
of Section 337 and Recommended Determination on Remedy and Bond issued by the ALJ in this
Investigation.
II. PARTIES
The Complainant in this Investigation is Rambus, Inc. (Rambus). (RIB at 4.) Rambus
only designs and licenses technologies; it does not make or sell goods. (Id.)
Rambus named six suppliers of semiconductor technology in its initial complaint as
respondents. (Id. at 4-6.) As of the hearing, five of those Supplier Respondents remained in
the Investigation: Broadcom Corp. (Broadcom), LSI Corporation (LSI), MediaTek, Inc.
(MediaTek), NVIDIA Corp. (NVIDIA), and STMicroelectronics, Inc. and
STMicroelectronics N.V. (collectively, STMicro). The two dozen or so remaining
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respondents2
were named because they purchase certain accused products from one or more of
the Supplier Respondents. They are referred to collectively as the Customer Respondents.
III. PROCEDURAL HISTORY
The Commission initiated this Investigation on December 28, 2010 in response to
Rambus December 1, 2010 Complaint. Certain Semiconductor Chips & Products Containing
Same, Inv. No. 337-TA-753, Notice of Inv., 75 Fed. Reg. 384 (Jan. 4, 2011). The Investigation
was instituted to determine whether any of the named respondents violated Section 337(a)(1)(B)
by importing, selling for importation, or selling after importation into the United States products
that infringed one or more claims of certain patents allegedly owned by Rambus. See id. The
target date for the Investigation is set for May 4, 2012. (Order No. 14 (Feb. 15, 2011).)
Rambus Complaint alleged infringement of six patents, which fall into two distinct
patent families: the Barth Patents and the Dally Patents. (Id. at 2.) On Rambus motion, the ALJ
issued an Initial Determination terminating the Investigation as to one of the Dally Patents on
August 10, 2011, leaving five asserted patents. (Order No. 42.)
Rambus and Respondents filed their pre-hearing briefs on September 21, 2011, and the
Staff filed its pre-hearing brief on October 5, 2011. On October 11, 2011, a pre-hearing
conference was conducted before the ALJ, along with the parties respective technical tutorials
2Asus Computer International, Inc. (Asus); Audio Partnership Plc (Audio Partnership);
Biostar Microtech (U.S.A.) Corp. (Biostar); Cisco Systems, Inc. (Cisco); Elitegroup
Computer Systems Co., Ltd. (ECS); EVGA Corp. (EVGA); Galaxy Microsystems Ltd.
(Galaxy); Garmin International, Inc. (Garmin); G.B.T. Inc. and Giga-Byte Technology Co.,Ltd. (collectively, Giga-Byte); Gracom Technologies (Gracom); Hewlett-Packard Co.
(HP); Hitachi Global Storage Technologies, Inc. (Hitachi); Jaton Corp. and Jaton
Technology TPE (Jaton); Micro-Star International Company, Ltd. (Micro-Star); MotorolaMobility, Inc. (MMI); MSI Computer Corp. (MSI); Oppo Digital, Inc. (Oppo); Palit
Microsystems Ltd. (Palit Microsystems); Palit Multimedia Inc. (Palit Multimedia); PINE
Technology Holdings, Ltd. (PINE); Seagate Technology LLC (Seagate); Sparkle Computer
Company, Ltd. (Sparkle); and Zotac International (Macao Commercial Offshore) Limited andNALA Sales, Inc., f/k/a Zotac USA, Inc. (collectively, Zotac).
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and opening statements. The evidentiary hearing was conducted from October 12 to October 20,
2011.
The ALJ issued the Notice of Initial Determination on March 2, 2012. Before the
issuance of the Initial Determination but after the evidentiary hearing, Rambus reached
settlements with Supplier Respondents Broadcom and NVIDIA. Both were subsequently
terminated from the Investigation, along with the Customer Respondents that were supplied
solely by NVIDIA. 3 (Order Nos. 60, 62.) All of the accused products of the Customer
Respondents containing Broadcom or NVIDIA accused products were terminated from the
Investigation as well. (Id.) On the same day the Notice of Initial Determination was filed,
Customer Respondent Motorola Mobility Inc. was terminated in light of the Broadcom and
NVIDIA settlements pursuant to a joint motion. (Order No. 64.) After the issuance of the Initial
Determination, Supplier Respondent MediaTek reached a settlement and a joint motion to
terminate MediaTek and its customers Oppo and Audio Partnership was filed thereafter.
IV. LEGAL STANDARD FOR REVIEW
Pursuant to 19 C.F.R. 210.43, a party seeking review of an Initial Determination must
specify the issues upon which review is sought and, with respect to each such issue, must specify
one or more of the following grounds for review: (1) that a finding or conclusion of material
fact is clearly erroneous; (2) that a legal conclusion is erroneous, without governing precedent,
rule of law, or constitutes an abuse of discretion; or (3) that the determination is one affecting
3 Biostar Microtech (U.S.A.) Corp. (Biostar); Elitegroup Computer Systems Co., Ltd.
(ECS); EVGA Corp. (EVGA); Galaxy Microsystems Ltd. (Galaxy); Garmin International,
Inc. (Garmin); G.B.T. Inc. and Giga-Byte Technology Co., Ltd. (Giga-Byte); GracomTechnologies (Gracom); Jaton Corp. and Jaton Technology TPE (Jaton); Micro-Star
International Company, Ltd. (Micro-Star); MSI Computer Corp. (MSI); Palit Microsystems
Ltd. (Palit Microsystems); Palit Multimedia Inc. (Palit Multimedia); PINE Technology
Holdings, Ltd. (PINE); Sparkle Computer Company, Ltd. (Sparkle); and Zotac International(Macao Commercial Offshore) Limited and NALA Sales, Inc., f/k/a Zotac USA, Inc. (Zotac).
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Commission policy. 19 C.F.R. 210.43(b)(1)(i)-(iii).
A petition for review will be granted if an error or abuse of the type described in
paragraph b(1) of this section is present or if the petition raises a policy matter connected with
the initial determination, which the Commission thinks it necessary or appropriate to address.
19 C.F.R. 210.43(d)(2).
Commission review is conducted de novo. In re Certain EPROM, EEPROM, Flash
Memory, and Flash Microcontroller Semiconductor Devices, and Prods. Containing Same, Inv.
No. 337-TA-395, Notice of Final Determination, 2000 ITC LEXIS 318, at *8-9 (Oct. 16, 2000).
Once review is granted, the Commission may affirm, reverse, modify, set aside or remand for
further proceedings, in whole or in part, the initial determination of the administrative law judge .
. . [and] may also make any findings or conclusions that in its judgment are proper based on the
record in the proceeding. 19 C.F.R. 210.45(c).
V. ISSUES UPON WHICH REVIEW IS SOUGHT
A. Barth Patents
Respondents respectfully seek the Commissions review of the following issues regarding
the Barth Patents, should the Commission decide to review the Initial Determinations findings
with respect to those patents:
1. Whether Rambus identified written description support for the sampling
elements of the asserted claims in the specification when the evidence shows that those claims
were improperly broadened to read on competitive technologies, including JEDEC;
2. Whether Rambus established by preponderance of the evidence each of the
requisite elements of contributory and induced infringement of the asserted claims sufficient to
support a finding of a Section 337 violation if all other elements of a violation are met;
3. Whether the Farmwald 037 patent (RX-4269) anticipates all of the asserted
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claims of the 109 Patent;
4. Whether the SyncLink reference (RX-4270C) anticipates claims 11-13 of the 353
Patent and claims 1, 20, and 24 of the 109 Patent; and
5. Whether the SyncLink (RX-4270C) and RamLink (RX-4272C; RX-4274C) prior
art references are cumulative of the Farmwald 037 Patent and whether Rambus intended to
deceive the PTO by not disclosing those references to the USPTO, and thus whether the Barth
Patents are unenforceable due to inequitable conduct.
B. Dally Patents
Respondents respectfully seek the Commissions review of the following issues regarding
the Dally Patents, should the Commission decide to review the Initial Determinations findings
of invalidity with respect to those patents:
1. Whether MIT transferred sufficient rights in the Dally Patents to confer standing
on Rambusand particularly whether the claimed inventions of the Dally Patents were not
developed under the then-existing subcontract between UNC and MIT despite the finding that
those inventions were reduced to practice during the course of, and pursuant to, that subcontract;
2. Whether the transmitter circuit and transmitter limitations include
conventional FIR filters, and as a result, whether the accused products infringe the asserted
claims;
3. Whether Rambus established by preponderance of the evidence that the accused
LSI/Seagate products infringe the asserted claims;
4. Whether Rambus established by preponderance of the evidence each of the
requisite elements of contributory and induced infringement of the asserted claims sufficient to
support a finding of a Section 337 violation if all other elements of a violation are met;
5. Whether the accused Cisco products in which the accused transmitter is not
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connected to anything elseand thus not operable to transmit and receive signalsinfringe the
asserted claims;
6. Whether the LSI/Seagate prior art witnesses were properly excluded
notwithstanding that the witnesses were timely disclosed pursuant to the procedural schedule;
7. Whether Respondents waived their arguments with respect to two prior art
referencesU.S. Patent No. 3,806,807 (Nakamura) (RX-4114) and U.S. Patent No. 5,541,957
(Lau) (RX-4106);
8. Whether claims 11-13, 32-34 and 50-52 of the 857 patent are anticipated by the
Widmer Article (RX-4109);
9. Whether claims 2, 31 and 49 of the 857 patent and claim 3 of the 494 patent are
anticipated by the Widmer Article when applying the ALJs construction of output frequency;
10. Whether claims 2, 31 and 49 of the 857 patent and claim 3, 30 and 42 of the 494
patent are invalid when applying Rambus construction of output frequency; and
11. Whether claims 11-13, 32-34, and 50-52 of the 857 Patent and claims 26 and 40
of the 494 Patent are anticipated by the LSI Logic SeriaLink CWSL500 Technology 4.
C. Importation
Should the Commission grant review, Respondents STMicroelectronics, Inc. and
STMicroelectronics N.V. seek review of the ALJs finding that the importation requirement was
satisfied as to STMicroelectronics N.V.
D. Domestic Industry
4 (RX-4520C; RX-4176C; RX-4175C; RX-4130C; RX-4116C; RX-4094C; RX-4092C; RX-4128C; RX-4156C; RDX-348; RDX-347; RDX-350; RDX-4076; RX-4144C; RX-4143C; RX-
4156C; RX-4167C; RX-4149; RX-4150C; RX-4136; RX-2202; RX-4091; RX-4118; RX-4122;
RX-4141; RX-4143; RX-4170; RX-4171; RX-4506C; RX-4507C; RX-4511C; RX-4512C; RX-
4513C; RX-4514C; RX-4516C; RX-4518C; RX-4519C; RX-4520C; see also RX-5430C at Q51,368-496.)
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Finally, in addition to the above, should the Commission grant review, Respondents seek
review of the findings that Rambus established the existence of a domestic industry as to the
Barth and Dally Patents.
VI. BARTH PATENTS CONDITIONAL REVIEW OF SELECT FINDINGS
Rambus asserted U.S. Patent Nos. 6,591,353 (the 353 Patent), 6,470,405 (the 405
patent), and 7,287,109 (the 109 patent) against the Respondents in this Investigation. These
patents were also asserted in the 661 Investigation. The 353 Patent, the 405 Patent, the 109
Patent are referred to here as the Barth Patents, after Richard Barth, an inventor common to all
three. Rambus asserted claims 11-13 of the 353 patent; 11-13, 15, and 18 of the 405 Patent;
and 1, 2, 4, 5, 12, 13, 20, 21, and 24 of the 109 Patent.
As summarized by the ALJ, [t]he Barth Patents are generally directed at memory
devices and their associated memory controllers as used, for example, in personal computers
(PCs), gaming consoles, mobile devices, and the like. (ID at 7.) The particular focus of this
Investigation is on the memory controllers of consumer electronics that interface with memory
devices compliant with industry standards promulgated by the Joint Electron Device Engineering
Council (JEDEC). (Id.)
In the Initial Determination, the ALJ found no violation of Section 337 based on the
asserted claims of the Barth Patents because those claims are invalid as anticipated and obvious
in view of numerous references. (Id. at 89-123.) In addition, the ALJ found that the Barth
Patents are unenforceable due to unclean hands arising from Rambus bad faith spoliation of
evidence with intent to prejudice Respondents. (Id. at 254-316.) Although these findings are
sound and should not be subject to review by the Commission, Respondents respectfully request
that the Commission grant review of the issues raised below, should the Commission decide to
review the Initial Determinations findings with respect to the Barth Patents.
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A. Respondents Proved That the Asserted Barth Claims Are Invalid For Lack
of Written Description Support
The ALJ found that Respondents failed to prove by clear and convincing evidence that
the asserted claims of the Barth Patents are invalid for failure to satisfy the written description
requirement. (ID at 232.) Respondents respectfully submit that they have met their burden of
proof in establishing that the asserted claims lack written description support and seek contingent
review of the ALJs findings. Respondents have shown by clear and convincing evidence that:
(1) sampling is not described in the Barth specification; (2) neither the strobe signal nor
signal elements are timing signals used to sample data; and (3) the Barth specification does not
describe how a strobe can be used in a write operation. (RIB at 21-29; RRB at 2-6; Tr. at
1036:24-1038:10, 2674:25-2675:8.)
1. The ALJ Erred in Finding That Sampling Is Disclosed in the Barth
Patent Specification
The ALJs finding that the Barth specification adequately describes sampling is based
on three considerations: (1) Rambus expert, Dr. Steven Przybylski, testified that data transfer
includes both putting data on the bus and taking data off the bus, (ID at 232); (2) the word
samples is used in the Barth specification in a manner consistent with usage of the related term
sampling in the asserted claims where, for example, the specification refers to bus samples
which the Appendices show are taken twice per clock cycle, (id. at 234); and (3) the Barth
specification describes signals that cause a memory device to latch data on transitions thereof,
(id. at 234).5
5 The ALJ also found that a person of ordinary skill in the relevant art would understand that
during a write operation, the memory controller is the data transferring device and the memorydevice is the data receiving device, such that the memory controller writes data to the memory
device and that [b]y contrast, during a read operation, the memory device is the data
transferring device and the memory controller is the data receiving device, such that the memorycontroller reads data from the memory device. (ID at 233 (emphasis in original).)
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First, Rambus expert testimony should be disregarded. Przybylskis trial testimony on
the meaning of data transfer vis--vis sampling is directly opposed to testimony he gave
during his deposition. (RRB at 4, fn 4; RDX-3297; RDX-3299; Tr. 2667:17-2669:23.) At his
deposition, Przybylski testified that data transfer is putting data on the bus and he agreed that
transferring data is not sampling data. (Id. (emphasis added).) Yet, at trial, Przybylski
changed his tune, stating in his witness statement that the act of transferring data involves both
putting data on the bus and retrieving that data off the busby sampling it. (CX-10765C.0020
(emphasis added).) At deposition, transferring data was not sampling data; at trial,
transferring data was sampling data. As the ALJ correctly concluded with respect to
Przybylski:
Where an expert can no longer explain apparent inconsistencies or
contradictions, but merely asserts that his answer is what a person
of ordinary skill in the art would give, the witness ceases to act as
an expert. He provides no useful testimony to the ALJ or theCommission.
(ID at 306.) Przybylskis testimony on data transferlike the rest of his inconsistent and
contradictory testimonyshould be disregarded in its entirety.
Second, the Barth specifications use of the word samples cannotin contextbe said
to disclose sampling that is triggered by the receipt of a strobe signal as is required in the Barth
claims. (See, e.g., JX-4 (353 Patent) at 24:19-21 (Timing information proceeds down the
template, with each horizontal row representing a clock cycle or two bus samples.) (emphasis
Respondents agree with these findings. Respondents contend, however, that these findings (and
the evidence relied upon by the ALJ in making them) supports Respondents claim that the
invention described in the Barth specification is focused exclusively on how the datatransferring device is to know when to put data on the bus so it can be received by the data
receiving device at some later time. The purported invention described in the Barth
specification, therefore, is a scheduling method for use in a memory system that utilizes a
strobe or other signal to inform the data transferring device when to push data out to thebus.
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added).) The statement in the specification merely equates bus samples with clock cycles.
But the asserted Barth claims require use of a strobe to initiate sampling; thus, the
specifications equating bus samples to clock cycles actually teaches away from the
invention claimed in the asserted Barth claims.
Third, the ALJs reliance on a statement about latching in the Barth specification is
misplaced because that statement is in the Background section of the specification and is a
reference to the prior art; it has nothing to do with a description of the invention in the Barth
specification or with the invention as claimed in the asserted Barth claims. (See, e.g., JX-4 at
2:25-26 (All address, data, and control inputs [in prior art Synchronous DRAMS] are latched on
the rising edge of the clock.).) Rambus infringement theory (and hence its characterization of
the asserted Barth claims), however, is that the DQS signal in the accused devicesnot the
clockis used to time the latching of data. (CIB at 27.) Here again, the disclosure in the
specification relied on by the ALJ actually teaches away from the alleged invention claimed in
the asserted Barth claims.
The point of novelty that is described in the Barth specification has to do with the use of
data transfer start information (a strobe signal) sent from the controller to indicate when the
DRAM is to begin sending data, and data transfer end information (terminate signal) to indicate
when the DRAM is to stop sending data. (JX-4 at 8:55-65; RRB at 3-4.) This disclosure in the
Barth specification clearly explains how the strobe is used to indicate to the DRAM when to
begin sending data. Ifas the ALJ implicitly foundthe Barth inventors had in mind as part
of their invention the use of the same strobe signal to indicate to the DRAM when to begin
receiving data (off the bus or otherwise), one would expect to see some description to that
effect. Yet, nowhere in the specification is there any statement that links the use of a strobe to
indicate to a memory device such as a DRAM when to begin sampling (receiving) data. Yet,
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nowhere in the specification is there any statement that links the use of a strobe to tell a
memory device such as a DRAM when to begin sampling (receiving) data. This complete
absence of written description alone is compelling evidence that the Barth inventors were not in
possession of the invention claimed in the asserted Barth Patents. Additionally, however,
Respondents expert, Dr. Bruce Jacob, confirmed that the Barth Patents do not disclose how
transferred data is to be captured or removed from the bus by the recipient or target device. (Tr.
at 1036:24-1038:10; 1052:7-1053:13.) The absence of such disclosure is quite surprising
considering that the asserted claims are directed to an alleged invention that uses a strobe to
initiate the removal of data off the bus by the target memory device.
The lack of any written description directed to the use of a strobe to trigger sampling (the
capturing of data off the bus), combined with the testimony of Jacob is clear and convincing
evidence that the inventors identified on the Barth Patents were not in possession of such an
invention at the time the original specification was filed in 1995, and the evidence relied upon by
the ALJ is insufficient to rebut this showing.
2. The ALJ Erred in Finding that the Strobe Signal and Signal
Elements are Timing Signals Used to Sample Data
As an independent basis for finding lack of written description support for the asserted
claims, Respondents argued thatin view of the construction of the strobe signal and signal
elements as timing signals in the prior 661 Investigationthe asserted claims lacked written
description support. (RRB at 25-26.)6
The ALJ rejected Respondents argument, finding that
6 Respondents have argued all along that, if the terms strobe and signal as used in the Barth
patent claims are given a broad meaning consistent with the plain and ordinary meaning, then the
Barth claims lack written description support because there is no description or disclosure in theoriginally filed Barth specification of a strobe signal that can act as a timing signal to directly
control sampling in the way the DQS signal does in the JEDEC-compliant systems. So, while
the Respondents agree with the ALJs construction of the claims and his resulting finding thatthe claims are invalid over the prior art, Respondents disagree with the ALJs finding that such a
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the Barth Patents disclose at least two distinct ways in which a strobe signal can initiate
sampling as part of the write operation in the asserted claims of the Barth Patents. (ID at 234.)
The ALJ asserts that in a first configuration, the strobe signal indirectly initiates
sampling of data as in the case of the preferred embodiments that are configured to sample
data during a programmable number of clock cycles after first detecting the strobe signal. (Id.
at 234-35.) In this configuration, according to the ALJ, a transition of the clock signal directly
controls the actual sampling of data by the memory device and the strobe signal preceding the
data indirectly initiates that process by informing the memory device when sampling is to begin
based on the clock signal.
7
(Id. at 235 (emphasis in original).)
In a second configuration, however, a strobe signal mayaccording to the ALJdirectly
initiate sampling by itself controlling the actual sampling of data by a memory device. (ID at
236.) The ALJ cites to the accused JEDEC methodology as an example of this type of system.8
(Id.) According to the ALJ, [t]his direct control configuration differs from the preferred
embodiments described previously in that the memory device need not utilize a clock signal to
capture data because the DQS signal transitions at the appropriate time. (Id.)
Ultimately, the ALJ concludes that a key similarity between the two configurations
the direct control configuration utilized in JEDEC-compliant memory system and the indirect
broad scope of the asserted claims has written description support. Should the Commission
decide to review the ALJ's construction of the strobe and signal elements and determine thatthe construction needs to be altered in order to preserve validity under Section 112, Respondents
products do not infringe the asserted claims of the Barth Patents for the reasons set forth byRespondents at the hearing and in their post-hearing briefs, and Respondents reserve the right toreassert their non-infringement positions.
7 As demonstrated previously, the Barth specification has no textual description whatsoever of
the use of a strobe signal to initiate sampling.
8 Although the ALJ contends that both configurations are disclosed in the Barth Patents, (ID at
234), the ALJ cites to no portion of the Barth specification in support of the ALJs contentionthat this direct strobe configuration is disclosed in the Barth Patents, (id. at 236-37).
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control configuration of certain preferred embodiments in the Barth Patentsis that both
configurations utilize a strobe signal to initiate the sampling of data by a memory device as part
of a write operation. (ID at 237 (italics in original).) According to the ALJ, [t]he evidence
shows that this broad concept, i.e., the use of a strobe signal to initiate sampling, is adequately
disclosed by the specification for written description purposes. (Id.) For the following reasons,
the Respondents respectfully submit that the ALJs findings are not supported by the evidentiary
record.
First, as shown above, the use of a strobe to indirectly initiate sampling or to directly
control actual sampling is nowhere described in the original Barth specification to which the
asserted claims claim priority. Rather, the only explanation provided in the Barth specification is
exclusively limited to the use of the strobe signal to indirectly indicate to the DRAM when it is
to begin sending data to the controller in response to a read request. (JX-4 at 8:55-65.) It is
undisputed that sending data to the controller does not happen in a write transaction nor does it
involve the sampling of data by the memory device. Thus, the ALJs findings are without
specification support.
Second, the evidence relied on by the ALJ is insufficient to rebut the complete absence of
specification support for either of the configurations identified by the ALJ. In support of his
conclusion, the ALJ relies primarily on the testimony of Przybylski and Appendix A of the Barth
specification.9
9 In Respondents view, the ALJ is also inherently relying on the asserted sampling claims
themselves to provide the written description support for the two configurations. Absent the
claims themselves, there is no written description or explanation of how the strobe inAppendix A is used in the context of a write transaction. If the claims themselves are necessary
to satisfy the written description requirement, the claims are entitled to a priority date no earlier
than the date on which sampling claims were first added, which in this case is May 10, 2000.(RIB at 21 n.11.) Should the Commission determine that the proper priority date for the asserted
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As shown above, however, Przybylski is not a credible witness, and he has offered
contradictory testimony on the differences between data transfer and sampling. Thus,
Przybylskis testimony should be disregarded and is insufficient to rebut Respondents showing
that the Barth specification as originally filed provided no explanation of how to use the strobe
to indirectly initiate sampling or to directly control it.
As for Appendix A, the original Barth specification never discusses the process of
initiating sampling, nor does it describe how to use a strobe to indicate when data is to be
removed from the bus in either a write or read transaction. Rather, the sole textual description
concerning the strobe in the original Barth specification focused exclusively on its use to
indicate when the DRAM is to begin sending data. (JX-4 at 8:55-65.) Without the text of the
new sampling claims added in 2000, there is no written description for one of skill in the art in
1995looking just at the originally filed Barth specificationto determine how the strobe
listed in Appendix A is to be used in connection with a write transaction. It is left entirely to
supposition.
Had the written description associated the use of a strobe with the process of indicating to
the DRAM when data on the bus is ready for sampling, one of skill in the art would appreciate
that such a configuration was in the possession of the Barth inventors at the time the patent was
filed. As shown, however, no such disclosure or explanation appears in the original
specification. Thus, there is nothing in the specification to inform one of skill in the art that the
Barth inventors were in possession of the presently asserted claims which describe a system
wherein a strobe signal is used to initiate sampling of data. To the contrary, the written
description makes it clear that the Barth Patent inventors possessed nothing beyond a memory
Barth claims is May 10, 2000, Respondents reserve the right to argue that the claims are invalidin view of the originally draft JEDEC DDR standard available in 1999. (Id.)
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interface system that used a strobe to initiate data transfersand in particular, to indicate when
the DRAM was to begin sending data over the bus in response to a read operation request.
3. The Lack of Written Description Support for the Subsequently Added
Sampling Claims Is Corroborated by Rambus Pattern and Practiceof Stretching the Reach of Pending Continuation Applications to Read
on Competitive Technologies, Including JEDEC
As further evidence in support of their written description defense, Respondents have
presented clear and convincing evidence that Rambus has an established practice of monitoring
standards organizations and filing continuation applications with claims specifically tailored to
features adopted by such organizations. The very purpose of the written description requirement
is to prevent an applicant from later asserting that he invented that which he did not. Amgen Inc.
v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003). Here, the evidence
shows that Rambus broadened the Barth claims in the early 2000s to track JEDEC standards that
used a strobe signal for sampling, contrary to the Barth specification and Rambus own
Concurrent RDRAM products which used a clock signal for sampling. (Tr. at 2285:17-2286:4,
2677:13-25, 2683:1-2684:25.) As Rambus witnesses testified, Rambus participated in JEDEC
meetings in the 1990s and, even after withdrawing from JEDEC, continued to monitor
developments relating to DRAM technology through secret sources such as Deep Throat and
Secret Squirrel. (Tr. at 407:2-408:4; id. at 1324:17-1325:8.) Rambus actively sought to patent
JEDEC developments by filing continuations and adding claims to pending applications, despite
the fact that such claims lack written description in the Barth specifications. (Id. at 440:11-18,
475:25-477:7, 1324:17-1325:8, 2284:19-2285:16.) Rambus, for example, learned that JEDEC
intended to include a DQS strobe signal in the JEDEC DDR standard, and immediately amended
its Barth applications to add claims to cover the use of DQS to sample data. (See id. at 2285:17-
2287:23; 2684:1-25.) With the final JEDEC DDR standard to be released in June 2000 (an
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initial draft of which had been made available in April 1999), Rambus filed Appl. No. 9/480,767
on May 1, 2000. (See id. at 1324:17-1325:8, 1371:17-1373:16.) That application eventually
issued as the 353 patent.
The ALJ, after hearing this evidence, concluded that Rambus actions were not a
process of invention, but of entrapment of competitors. (ID at 296.) While Rambus was
ultimately able to obtain the sampling claims now asserted against Respondents, the original
Barth specification filed in 1995 provides no written description support for those claims. The
claims should therefore be held invalid on the additional ground that they lack written
description support.
B. Rambus Did Not Meet Its Burden to Prove a Violation of Section 337 Based
on Infringement of the Barth Patents
1. Because All the Asserted Barth Claims Are Method Claims, Rambus
Cannot Prove a Violation of Section 337 Based on Direct Infringement
Because all the asserted Barth Patent claims are method claims, Rambus cannot prove a
violation of Section 337 based solely on direct infringement. See In the Matter of Certain
Electronic Devices With Image Processing Systems, Components Thereof, and Associated
Software, Investigation No. 337-TA-724, Commn Op, at 10-20 (Dec. 2, 2011) (Image
Processing Systems) Rather, the Commission analyzes a violation of section 337(a)(1)(B)(i)
based on [a] method claim . . . under the statutory rubrics of indirect infringement. Id. at 18. 10
Since Rambus did not prove indirect infringement, no violation of Section 337 can be found.
Merely importing a device that may be used to perform a patented method does not
constitute direct infringement of a claim to that method. Id. at 17. This is because the act of
importation is not an act that practices the steps of the asserted method claim. Id. Proof of any
10As the ID notes, the Commission issued its opinion in Image Processing Systems after the
post-hearing briefing in this Investigation had been completed. (ID at 20.)
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domestic use of the patented method by Respondents without more, is not a sufficient base for a
violation of section 337(a)(1)(B)(i). Id. at 19.
Testing alone by the respondent of the accused products after importation is not a
sufficient ground to find a violation of Section 337 based on direct infringement of a method
claim. Id. at 18. Likewise, sales of the accused products in the United States do not constitute
direct infringement of method claims. Id. at 18.
While the ID correctly recognized that all the asserted Barth claims are method claims,
(ID at 8-11), and that the Commission requires under Image Processing Systems that a Section
337 violation based on a method claim be analyzed under the rubrics of indirect infringement,
(ID at 21), the ID wrongly concluded that Respondents directly infringed those claims in any
way that could support of Section 337 violation. (See ID at 20-21, 62-64.) The ID
impermissibly based its conclusion on alleged sales, use and testing by respondents of the
accused products after importation into the United States; actions the Commission found in
Image Processing Systems cannot be the sole basis for violation based on direct infringement of
a method claim.
Because as shown below the ID also erred in finding that Respondents indirectly
infringed the asserted claims of the Barth Patents, there can be no finding of Section 337
violation under any circumstances.
2. The ALJ Erred in Finding That the Accused Products Indirectly
Infringe the Asserted Claims of the Barth Patents
As to induced infringement, Respondents do not deny that they have had knowledge of
the content of the Complaint since it was filed. (ID at 65.) However, inducement requires
evidence ofculpable conduct, directed to encouraging anothers infringement, not merely that
the inducer had knowledge of the direct infringers activities. DSU Med. Corp. v. JMS Corp.
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Ltd., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (emphasis added). The evidence the ALJ relied on
for inducementsuch as advertising, technical and software support, and marketing materials
would at mostestablish respondents intent to cause ordinary use of the products. It does not
prove that respondents engaged in culpable conduct to encourage anothers infringement,
particularly in light of Respondents objectively reasonable belief that the asserted claims of the
Barth Patents were non-infringed, unenforceable, and invalid. (See ID (finding Barth Patents
invalid and unenforceable and Dally Patents invalid).) The ALJ finding of inducement therefore
was error.
As to contributory infringement, beyond knowledge of the patents, Rambus also had to
prove by a preponderance of the evidence that Respondents knew that the combination for
which its components were especially made was both patented and infringing, (RIB at 39).
Rambus did notand could not due to Respondents objectively reasonable beliefs in their
defenses. The ALJ committed legal error in ignoring this requirement.
The ALJ also erred in finding that Respondents components have no substantial non-
infringing uses. (ID at 67.) The Accused Products are staple articles of commerce that have
numerous functions, not all of which are accused of infringement. (RIB at 40.) The ALJ does
not dispute, for example, that write commands are non-infringing. (ID at 67.) Finally, some of
the accused products can also be used with other non-accused memory such as SDR memory.
(RIB at 40 n.28.)
C. The Barth Patents Are Invalid
As the ALJ correctly held, the asserted claims of the Barth Patents are invalid in light of a
number of prior art references. (ID at 89-121, 210-23.) Respondents agree with the ALJs
findings regarding the invalidity of the asserted claims of the Barth Patents in the Initial
Determination in virtually all material aspects. Respondents raise only two narrow issues for
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review by the Commission concerning ALJs Barth invalidity findings, should the Commission
decide to review the Initial Determinations findings of invalidity of the Barth Patents. First,
Respondents respectfully disagree with the ALJs finding that Farmwald 037 (RX-4269) does
not anticipate the asserted claims of the 109 patent. Second, Respondents respectfully disagree
with the ALJs finding that SyncLink (RX-4270C) does not anticipate claims 11-13 of the 353
patent and claims 1, 20, and 24 of the 109 patent.
1. Farmwald 037 Anticipates the Asserted Claims of the 109 Patent
The ALJs analysis concerning the anticipation by Farmwald 037 of the asserted 109
patent claims is correct in most respects. In particular, the ALJ correctly determined that
Farmwald 037 is prior art under 102(e). (ID. at 121.) The ALJ also correctly recognized
the concession by Rambus expert that the vast majority of the elements from the asserted claims
of the Barth Patents are disclosed in Farmwald 037. (See id.) Finally, the ALJ correctly
determined that the only issue in dispute with respect to the asserted claims of the 109 patent is
whether Farmwald 037 discloses the elements concerning the signal (or code) that indicates
when the memory is to begin sampling. (See id.) Respondents only challenge to the ALJs
findings regarding Farmwald 037 is the ALJs finding that Farmwald 037 does not disclose a
signal that indicates when the memory is to begin sampling.
In evaluating whether Farmwald 037 discloses this signal limitation of the asserted
claims of the 109 patent, the ALJ concluded that Respondents arguments as to the Farmwald
037 are substantially the same as arguments made by NVIDIA in the prior 661 Investigation.
(Id.) While NVIDIA also alleged anticipation of the same 109 patent claims by a related
Farmwald patent in the 661 Investigation (the Farmwald 755 patent), closer inspection reveals
that there are critical differences between the arguments and evidence submitted in the prior 661
Investigation and the arguments and evidence presented to the ALJ with respect to Farmwald
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037 in the present Investigation. When considered on their merits and not conflated with the
arguments and evidence from the 661 Investigation, the arguments and evidence presented in
this Investigation prove by clear and convincing evidence that the claims of the 109 patent are
anticipated by Farmwald 037.
In the 661 Investigation, the ALJ considered NVIDIAs argument that the AccessType
[1:2] signal from Farmwald 755 (not Farmwald 037) constituted the signal element of the
asserted claims of the 109 patent. (See 661 ID at 53; ID at 121.) Respondents have not
repeated this same argument in this Investigation as suggested by the Staff and adopted by the
ALJ. (See ID at 121.) Instead, Respondents have identified a completely separate signal
disclosed in Farmwald 037 that constitutes the signal claimed in the asserted 109 patent
claims. Specifically, Respondents and their expert, Dr. Jacob, identified the signal that
indicates when the memory device is to begin sampling write data as required in the 109
claims is the storing of the delay value in the access register in Farmwald 037, which specifies
when the memory device can receive write data after the issuance of the write command. (RX-
4269.0022; RX-5429C at Q374.) This storing of the delay value in the access register is separate
and distinct from the AccessType[1:2] bits NVIDIA identified as the claimed signal
disclosed in Farmwald 755 during the 661 Investigation. (See 661 ID at 53.)
Equally important, this storing of the delay value in the access register in Farmwald 037
is a separate and distinct signal from the AccessType[0] signal disclosed in Farmwald 755.
Therefore, the ALJs observation imported from the 661 Investigation that the AccessType[0]
code cannot be considered separate and distinct from AccessType[1:3] bits, (ID at 122; see
661 ID at 55), has no bearing on Respondents present argument, because Respondents do not
argue that the AccessType[1:2] bits are the claimed signal in the 109 patent claims as
nVidia did in the 661 Investigation.
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Moreover, Rambus own infringement arguments in this Investigation show that the 109
patent claims are broad enough to encompass the signal from Farmwald 037 that Respondents
identify as anticipating (i.e., the storing of a delay value in the access register). For example,
Rambus expert Przybylski opined in this Investigation that products complying with JEDEC
DDR2 protocols infringe the asserted claims of the 109 patent, even though the latency period in
the accused JEDEC DDR2 products is programmed into mode registers, (see tr. at 876:9-12)
just like the delay value is stored in the access register in Farmwald 037.11 Therefore, the
reasoning imported by the ALJ from the 661 Investigation that the Barth Patent specification
specifically distinguishes the claimed invention from prior art systems where the timing of data
transfer is dictated by the timing of the request for the data transfer based on a value stored in a
register, (ID at 122; see 661 ID at 55), should not have been adopted in this Investigation in
light of Rambus infringement allegations in this Investigation.
In addition, the ALJs finding that claim 1 of the 109 patent does require a specific order
is incorrect for two reasons. (ID at 122.) First, nothing in claim 1 of the 109 patentrequires the
first two steps to be performed in a specific order. In such cases, Federal Circuit case law is
clear that the steps of a method claim need not be performed in any specific order. See Altiris,
Inc. v. Symantec Corp., 318 F.3d 1363, 1370 (Fed. Cir. 2003); Interactive Gift Express, Inc. v.
Compuserve Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001); In re Chatani, 2007 U.S. App.
LEXIS 26745 (Fed. Cir. Nov. 19, 2007). Second, Rambus accusations in this Investigation that
products complying with JEDEC DDR2 protocols infringe the 109 patent (i.e., products that
store a latency period in a mode register prior to sending a signal to begin a write operation)
demonstrate that the asserted claims of the 109 patent do not require a specific order.
11 Similar arguments were made by Przybylski in this Investigation regarding products
complying with JEDEC DDR protocols which utilize an inflexible fixed latency period. (Tr. at873:11-17.)
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Finally, the BPAI agreed with Respondents argument that the storing of a delay value in
the access register constitutes the signal claimed in the 109 patent claims. Specifically, the
BPAI found that Farmwald 037 anticipated all the claims of the 109 patent because, inter alia,
skilled artisans would have considered . . . storing the delay value in the access-register . . . as
also constituting providing a signal, as required in the asserted claims of the 109 patent.
(RX-5356.0014.)
Therefore, when viewed strictly in the context of this Investigation and not conflated with
different arguments from the prior 661 Investigation, Respondents arguments demonstrate by
clear and convincing evidence that Farmwald 037 anticipates claims 1, 2, 4, 5, 12, 13, 20, 21,
and 24 of the 109 patent.
2. SyncLink Anticipates Certain Claims of the 353 and 109 Patents
In concluding that SyncLink does not anticipate claims 11-13 of the 353 patent and
claims 1, 20, and 24 of the 109 patent, the ALJ stated that the evidence shows that the flags
signal in SyncLink merely indicates intermediary bytes, such as address information, and thus
fail to initiate sampling in the manner called for in the asserted claims. (ID at 123.)
Respondents respectfully disagree with this finding by the ALJ.
As shown in Figures 19 and 23, and as Jacob testified, SyncLink discloses how it initiates
sampling. (RIB at 77; RX-5429C at Q393-95, 402.) Specifically, a 0/1 in the flag signal
indicates the presence of the packet header, which includes the command (i.e., cmd). The flag
signal then switches to 1/0 to indicate intermediary bits, which as shown in Figure 23
includes data.
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Therefore, when the flag signal switches from 0/1 to 1/0 the memory knows that data is
following the command, and the data is then sampled using the strobe signal. Finally, as
shown in Figures 19 and 23, the flag signal switches to 1/1 to indicate that the end of the
packet and the sampling of data.
The flags signal is the strobe signal/signal limitations of Claims 11-13 of the 353
patent and 1, 20, 24 of the 109 patent because it is used to initiate sampling of a first portion of
data by the memory device (Claims 11-13 of the 353 patent) and indicate when the memory
device is to begin sampling write data (Claims 1, 20, 24 of the 109 patent). Specifically, as
Jacob testified:
[T]he SyncLink flags signal is precisely the same type of timingsignal as the Barth strobe signalit is a control signal that
indicates when an event is about to happen. In case of the
SyncLink flags, signal indicates when the header is finishedbeing transmitted and when the data portion of the packet
(indicated as intermediate bytes in Figure 19) is to appear on the
bus. The contents of the data portion of the packet depend on thecommand in the header.
(RX-5429C at Q404.) Moreover, the fact that the intermediate bytes does not prevent the
flags signal from initiating the sampling of data because the flag signal indicates when data is
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valid on the bus to be sampled. Jacob explained as follows:
[T]he contents of the data portion of the SyncLink packet beyond
the header depend upon the command transmitted in the header.For write packets, the first few bytes of the data portion are address
information, and these are followed by data. This does not detractfrom the fact that the flags signal indicates when they are validon the bus and are to be sampled.
(Id. at 405.) For these reasons, Respondents respectfully maintain the SyncLink does initiate
sampling in the manner called for in claims 11-13 of the 353 patent and claims 1, 20, and 24 of
the 109 patent.
While the ALJ did not set forth any findings regarding whether SyncLink discloses the
remaining elements of the claims 11-13 of the 353 patent and claims 1, 20, and 24 of the 109
patent, these elements are disclosed in SyncLink for the reasons set forth in the Respondents
post-hearing briefs and Jacobs testimony. (RIB at 75-77; RX-5429C at Q385-405.) Indeed,
Jacob provided a detailed claim chart to the Court. (Id. at Q402.) To summarize, SyncLink
discloses (a) a method of controlling a memory device with plurality of memory cells /memory
core (RX-4270C.0015); (b) issuing a write command (RX-4270C.0044, Table 4); (c) a delay
period (RX-4270C.0043, Fig. 19); (d) transferring two portions of data and sampling during odd
and even phases of a common clock cycle (RX-4270.0043, Fig. 19).
Finally, SyncLink also qualifies as prior art. SyncLink was published at least as early as
August 21, 1995 and was publically available. (RX-4270C.0015.) In fact, Rambus had
possession of SyncLink in May 1995, as their representative attended the May 1995 JEDEC
meeting at which SyncLink was disclosed. (RX-2048C.) Indeed, Rambus representative Crisp
had working knowledge of an earlier draft of the proposed SyncLink standard as least as early as
September 29, 1993. (RX-4287C.)
For these reasons, SyncLink anticipates claims 11-13 of the 353 patent and claims 1, 20,
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and 24 of the 109 patent.
D. The Barth Patents Are Unenforceable Due to Inequitable Conduct
The ALJ rejected Respondents assertion that the Barth Patents are unenforceable due to
inequitable conduct. (ID at 243-48.) The basis for the ALJs conclusion is (i) that the
SyncLink/RamLink prior art was cumulative of the Farmwald prior art that was considered by
the patent office during prosecution of the Barth Patents and (ii) that Respondents failed to
introduce sufficient evidence of specific intent to deceive the USPTO. (Id.) Respondents
respectfully ask that the Commission review these findings on the grounds that they are
erroneous.
1. The ALJ Erred in Finding that SyncLink/RamLink is Cumulative of
the Farmwald Prior Art
The ALJs reasoning as to why SyncLink/RamLink is not material was made in error.12
The ALJ found that SyncLink/RamLink disclose flags and a clock signal that are
substantially similar to the AddrValid bit and clock signal respectively, of the Farmwald prior
art, which was submitted and considered during prosecution. (ID at 246.) The ALJ concluded,
therefore, that Respondents cannot show that the RamLink and SyncLink prior art is but-for
material since the elements disclosed in those prior art references were already disclosed and
considered by the examiner during prosecution and the claims were still allowed. (Id. at 246-7.)
Respondents respectfully disagree for three reasons.
First, the strobe signal and clock shown in RamLink and SyncLink, respectively, are not
cumulative to the Farmwald 755 patent that was before the USPTO. (RIB at 105; SIB at 111;
RRB at 95-96.) In Farmwald, AddrValid is used to indicate when the bus is holding a valid
12 For the reasons set forth above in the Barth Patent invalidity section, the ALJ erred in finding
that SyncLink/RamLink do not anticipate claims 11-13 of the 353 patent and claims 1, 20, and24 of the 109 patent.
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address request, and instructs a slave to decode the bus data as an address and, if the address is
included on that slave, to handle the pending request. (RX-4269 at 8:32-36). In RamLink and
SyncLink, clocks and strobe, respectively, are transmitted at the same time as the data,
indicating that they are strobe signals used for sampling data. (RRB at 95-96.) The flags
signal is another strobe signal that indicates the beginning or end of a packet of datathat is,
when to initiate sampling of the data. (Id.)
Second, the ALJ ignored that the BPAIs recent decision invalidating all the claims of the
109 patent in view of Farmwald 037 included a number of grounds that were not considered by
the prior examiner (during prosecution) or the ALJ (during the 661 Investigation) in finding the
asserted claims of the 109 patent valid over the Farmwald 755. (See RIB at 43 n.30, 73; RX-
5356 at 22.) Just as the PTO examiner in the Barth 109 patent reexamination saw elements in
Farmwald 037 that the earlier examiner (and the ALJ) did not see in Farmwald 755, the
original Barth examiner reasonably could have seen elements in SyncLink/RamLink that the
examiner did not see when considering Farmwald 755. Moreover, given the alleged similarities
between Farmwald and SyncLink/RamLink, the rejection of one or more claims over Farmwald
037 by the BPAI is compelling evidence that a reasonable examiner would likewise have found
one or more claims of the 109 patent invalid in view of SyncLink/RamLink.
Third, the ALJ overlooked the fact that Draft 1.0 of the RamLink standard, which is dated
December 13, 1993, discloses that [t]he incoming signals are source-synchronous; the datas
strobeIn signal, not the clock RefIn signal, provides thesample timing for the incoming data.
(RIB at 211; RX-4274C.0058 (emphases added).) This sentence alone informs one of skill in the
art that in the RamLink interface a strobe signal may be used to time the sampling of incoming
data, which is precisely the direct control configuration the ALJ found is within the scope of
the asserted Barth patent claims. This alone renders SyncLink/RamLink non-cumulative of the
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Farmwald prior art and is clear evidence that certain of the asserted Barth claims would not have
issued had SyncLink/RamLink been submitted during prosecution.
2. Respondents Presented Substantial Circumstantial Evidence
Demonstrating Rambus Intent to Deceive the Patent Office
The ALJ asserts that Respondents merely allege that four of the named inventors and the
prosecuting attorney were aware of RamLink and/or SyncLink during prosecution of the Barth
Patents and that the lack of explanation as to why these references were not disclosed to the
PTO necessarily leads to the inference of intent to deceive . . . from the facts and circumstances
surrounding a knowing failure to disclose material information. (ID at 247.) The ALJ
concludes, therefore, that Respondents have failed to show by clear and convincing evidence
that the named inventors and the prosecuting attorney had the requisite specific intent to deceive
the PTO. (Id.) The ALJs assertion, however, is erroneous, and Respondents ask that the
Commission review and ultimately overturn the ALJs finding as to no inequitable conduct.
Respondents presented the following undisputed facts that show Rambus proclivity
towards misuse of the patent system and patent prosecution, each of whichwhen combined
with Rambus complete lack of explanation as to why the SyncLink/RamLink references were
withheld from the PTOcircumstantially demonstrates that Rambus had a specific intention to
deceive the PTO:
Rambus, the inventors, and the prosecuting attorneys all had knowledge of
SyncLink/RamLink prior to and throughout the prosecution of all of the Barthfamily patents, (ID at 246; RIB at 210-16);
Barth inventors and prosecuting attorneys had in their possession before andduring t