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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

rambus itc2

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