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UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, D.C.

In the Matter of:

CERTAIN SEMICONDUCTOR CHIPS AND

PRODUCTS CONTAINING SAME

Investigation No. 337-TA-753

SUMMARY OF COMPLAINANTS PETITION FOR REVIEW

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TABLE OF CONTENTS

I. Introduction ......................................................................................................................... 1II. The Prior Art Does Not Invalidate Any Asserted Dally or Barth Claim ............................ 1

A. The ALJ Erred in Placing a Burden on Rambus to Provide RebuttalEvidence .................................................................................................................. 1

B. The Prior Art Does Not Invalidate the Asserted Claims of the DallyPatents ..................................................................................................................... 21. The Widmer Article Does Not Invalidate the Asserted Dally

Claims ......................................................................................................... 22. The SL500 Art Does Not Invalidate the Asserted Dally Claims ................ 33. Output Frequency Corresponds to One Half the Value of the

Output Data Rate ....................................................................................... 3C. The Prior Art Does Not Invalidate the Asserted Claims of the Barth I

Patents ..................................................................................................................... 41. NextBus, Harriman and Hayes Do Not Anticipate ..................................... 42. Dan and Yano Do Not Anticipate ............................................................... 53. The Barth I Claims Are Not Obvious ......................................................... 5

III. The Barth I Patents Are Not Unenforceable for Unclean Hands ........................................ 6A. The ALJs Anticipation of Litigation Analysis is Erroneous ................................. 6B. The ALJ Erred in Finding that Litigation on the Barth I Patents Was

Reasonably Foreseeable at Least by July 1998....................................................... 7C. The ALJ Erred in Finding Bad Faith Destruction of Barth I Documents ............... 8D. Respondents Were Not Prejudiced by Any Document Destruction ....................... 9E. The Harsh Sanction of Dismissal Is Unwarranted and Contrary to Law ................ 9

IV. The Record Does Not Support the ALJs Finding of Patent Exhaustion ......................... 10V. Conclusion ........................................................................................................................ 10

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I. IntroductionComplainant Rambus Inc. petitions for review of the March 2, 2012 Initial Determination

which found no violation of Section 337 as to all five of the asserted patents, i.e., U.S. Patent Nos.

6,470,405, 6,591,353, and 7,287,109 (collectively the Barth I patents) and U.S. Patent Nos.

7,602,857 and 7,715,494 (collectively the Dally patents). The ID erroneously found all asserted

claims invalid as anticipated by or obvious in view of alleged prior art. The ID erroneously found the

Barth I patents unenforceable due to unclean hands arising out of Rambuss alleged spoliation of

evidence. The ID also erroneously found that Rambus had exhausted its rights in the Barth I patents

directed to memory controllers on a subset of accused products from Respondent

II. The Prior Art Does Not Invalidate Any Asserted Dally or Barth ClaimThe ALJ committed errors of law, fact, and policy in finding the asserted claims invalid. The

errors began with erroneously placing a burden on Rambus to present rebuttal evidence, forcing

Rambus to prove validity as opposed to Respondents. The errors continued by ignoring or

misunderstanding key legal and factual issues regarding anticipation and obviousness, as well as their

related claim construction issues. For the reasons identified below and explained more fully in

Rambuss Petition for Review, the Commission should review the ALJs invalidity holdings.

A. The ALJ Erred in Placing a Burden on Rambus to Provide Rebuttal EvidenceThe ALJ required Rambus to present rebuttal evidence on validity, stating that once a

challenger has presented a prima facie case of invalidity, the patentee has the burden of going

forward with rebuttal evidence. ID at 86 (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1360

(Fed. Cir. 2007)). Immediately after the passage quoted by the ALJ, the Federal Circuit explained,

however, that a patentee is not requiredto present rebuttal evidence but would be well advised to

do so. The ALJs erroneous holding that Rambus was required to provide rebuttal evidence infected

his entire validity analysis. The ALJ then compounded that error by failing to address the evidence

Rambus presented establishing that the prior art does not invalidate the Dally and Barth claims.

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B. The Prior Art Does Not Invalidate the Asserted Claims of the Dally Patents1. The Widmer Article Does Not Invalidate the Asserted Dally Claims

The asserted Dally claims require a specific on-chip equalization technique. For a reference

to invalidate those claims, it must provide an enabling disclosure of this on-chip technique such that

a person of ordinary skill in the field of the invention can practice the subject matter based on the

reference, without undue experimentation. Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082

(Fed. Cir. 2008). The Widmer Article, containing only two short columns of text and few relevant

figures, does not provide an enabling disclosure. The ALJ found to the contrary, erroneously basing

his finding on testimony from Respondents expert that an undergraduate student could implement

the Widmer Articles equalization circuitry on a chip and that a different reference, the Widmer

Patent, provides an example of how equalization could be implemented on a chip.

Respondents experts testimony cannot be credited, however, because the Widmer Article

discloses non-functional circuitry. If one were to implement the Widmer Articles circuitry as

shown, it would not perform any equalization, let alone the particular form of equalization recited in

the asserted Dally claims. Id. The Widmer Patent does not make up for the Widmer Articles

lacking disclosure, as it was filed in the 1970s, operates orders of magnitude slower than the Widmer

Articles disclosed rate, is implemented in discrete components as opposed to on a chip, and uses an

entirely different equalization mechanism than the Widmer Article. Even if one were to incorrectly

assume that the Widmer Article contains an enabling disclosure, it still does not disclose the claimed

on-chip equalization circuitry because critical signals in its equalization mechanism are generated

off-chip, thus not satisfying the claims.

The ALJ also erred in combining the Widmer Article with Ewen in invalidating the

dependent Dally claims that recite an output frequency of at least 1 GHz and differential signaling.

The ALJs obviousness analysis, which is two paragraphs long, ignores numerous facts that compel a

finding of nonobviousness. For example, the Widmer Article says that it already incorporates

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relevant features from Ewen, so one of ordinary skill in the art would not have attempted to

incorporate additional features from it. Another example is that the Widmer Article was authored by

the same team who wrote Ewena team that had at least one member possessing exceptional skill in

the artyet even that team could not achieve the combination that the ALJ contends one ofordinary

skill would have achieved. These and other errors warrant review and reversal of the ALJs

obviousness findings related to the Widmer Article.

2. The SL500 Art Does Not Invalidate the Asserted Dally ClaimsThe ALJ found that the asserted Dally claims were invalid in light of what he referred to as

the SL500 Arta collection of technology that LSI allegedly reduced to practice, offered for sale,

and publicly used in the mid-1990s. While Respondents contend that some of the SL500 Art

contained the claimed equalization circuitry, it is undisputed that some implementations were

designed to permanently disable that circuitry. Despite acknowledging this fact, the ALJ concluded

that it was not relevant for him to determine which product was actually made. This was clear

error because defenses based on prior reduction to practice, public use, and offer for sale always

depend on the particular product at issue and whether it meets the requirements of the claims.

Not only did the ALJ err in not determining which specific product was allegedly prior art, he

essentially acknowledged that it was impossible to perform that analysis. In particular, he admitted

that the particular circuit diagrams/layouts of the equalization circuitry that LSI ultimately chose to

implement within the SL500 may not be of record. Without any evidence of the final designs

actually used in the products alleged to be prior art, it is impossible to determine whether the product

meets the requirements of the claims. Respondents cannot, therefore, meet their burden of proving

invalidity by clear and convincing evidence and the ALJs invalidity finding cannot stand.

3. Output Frequency Corresponds to One Half the Value of the OutputData Rate

In the context of the Dally patents, output frequency relates to the rate at which a signal is

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capable of transitioning and, thus, how fast it can transmit data. It is measured in Hertz, and the

record demonstrates that in one Hertz two bits of data may be transmitted. Hence, output

frequency corresponds to one half the value of the data rate, as Rambus proposed. The ALJ,

however, erroneously concluded that output frequency means output data rate (i.e., the output

frequency has a 1:1 relationship to the data rate as opposed to the correct 1:2 relationship). One

reason the ALJ reached an incorrect result was his focus on actual data patterns, which will vary

depending on what data is being transmitted, as opposed to the capability of the signal to transmit

data. But the critical question is how fast the signal is capable of transitioning, not how fast it

actually transitions when transmitting a particular data pattern. Due to the ALJs misdirected focus

and other errors, the Commission should review the ALJs construction of output frequency and

adopt Rambuss construction.

C. The Prior Art Does Not Invalidate the Asserted Claims of the Barth I PatentsThe ALJ erred in holding Barth I claims anticipated by NextBus, Harriman, Hayes, Dan, and

Yano. The ALJ further erred in concluding that Barth I claims are obvious in view of 12

combinations of prior art. Those errors were compounded by the ALJs legal error in repeatedly

following and citing the PTO in the on-going reexaminations, ID at 94, 108, 109, 118, 120, and 212,

despite stating that, I am not going to follow what the Board does. I am not going to cite what the

Board does, HTr. 2713:7-10, because of the different standards applied by the PTO.

1. NextBus, Harriman and Hayes Do Not AnticipateThe ALJ erred as a matter of law in finding the NextBus specification prior art. The only

evidence showing publicly accessibility is a website not created until 2005, a decade after the Barth I

1995 filing date. Respondents recognized this problem when they unsuccessfully tried to introduce

evidence, arguing that a person should testify because he is the one person that can really

authenticate for us the public availability of NextBus documentation. Because no one authenticated

the public availability of the NextBus specification, the ALJ erred in finding that it is prior art.

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The ALJ legally erred in construing memory device (a term in every Barth I claim) as

unbounded and including structure with a memory controller, a memory board or a memory system.

In doing so, the ALJ relied on an extrinsic dictionary definition of device without considering the

intrinsic evidence refuting that construction. Thus, as with his construction of write command,

again based on dictionary definitions of write and command, the ALJ took the approach of Texas

Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) rejected by the en banc

Federal Circuit as plac[ing] too much reliance on extrinsic sources such as dictionaries . . . and too

little on intrinsic sources, in particular the specification and prosecution history. Phillips v. AWH

Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005). Absent that erroneous construction, NextBus,

Harriman and Hayes do not anticipate.

2. Dan and Yano Do Not AnticipateThe ALJ erred because he did not differentiate between the asynchronous memory systems of

Dan and Yano and the synchronous memory systems of the Barth I patents. Synchronous systems

like the Barth I patents operate very differently than the asynchronous systems of Dan and Yano.

Most strikingly, asynchronous memory devices in Dan and Yano do not receive a clock signal that

governs the timing of operations. The Dan and Yano memory devices also do not sample a

command or data at a discrete point in time. Instead, operations are controlled with a sequence of

signals and data simply flows into the memory device over the duration of the write operation.

3. The Barth I Claims Are Not ObviousIn just thirteen pages of the ID, the ALJ found that 12 different prior art combinations render

obvious all of the asserted claims of the Barth I patents. In that short discussion, the ALJ failed to

address the inquiries the Supreme Court has mandated in an obviousness analysis. Graham v. John

Deere Co., 383 U.S. 1, 17-18 (1966) (identifying the required factual inquiries of establishing the

scope and content of prior art, the differences between the prior art and the claims at issue, and the

level of ordinary skill in the art).

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Instead, the ALJ erred by grouping references without discussing or distinguishing what they

disclose. The ALJ also erred by grouping claim features (double data rate, precharge, multiple

memory bank, and sense amplifier) without addressing the claimed inventions as a whole. KSR

Intl v. Teleflex, 550 U.S. 398 (2007) (a determination of obviousness is made with respect to the

claimed subject matter as a whole.) The ALJ also improperly relied on hindsight. Aided by the

Barth I claims, he pointed to where the alleged prior art supposedly discloses individual claimed

features. In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (reversing an obviousness finding

based on improper hindsight reasoning.) Here, the ALJs rationale for the combinations is

improved speed and faster data access. That generic benefit would make any prior art

combination in the electronics field obvious and is refuted by the evidence, including the references

themselves. For example, NextBus and Harriman disclose slow systems; the alleged strobe there

would not increase speed even if it was obvious to use it in a different system. Likewise, nothing in

Dan or Yano suggests that the alleged strobes increase speed even if it was obvious to use them in a

different system. The ALJ, however, failed to address these and most of Rambuss arguments and

evidence refuting obviousness. In holding the claims invalid, the ALJ should have addressed

Rambuss arguments and evidence.

III. The Barth I Patents Are Not Unenforceable for Unclean HandsThe ALJs unclean hands decision distorts the spoliation doctrine, rests on legal error and

clearly erroneous findings of fact, and establishes an irrebuttable presumption of prejudice that

precluded Rambus from addressing the degree of prejudice, much less the complete lack of

prejudice, stemming from the destruction of documents in 1998 and 1999.

A. The ALJs Anticipation of Litigation Analysis is ErroneousThe ID broadens the scope of anticipated litigation for spoliation purposes far beyond the

bounds of any precedent, holding that Rambus reasonably foresaw litigation on its asserted Barth I

patents by July 1998. The ALJ based that holding on Rambus having anticipated litigation on its

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Farmwald patents. But the IDs dismissal sanction rests entirely on the supposed prejudice

suffered from the alleged loss of emails concerning the Barth I patents and documents relating to

the prosecution of the Barth I patents, none of which were relevant to the Farmwald litigation.

Rambus had no duty to preserve such Barth Idocuments simply because Farmwald litigation

might have been foreseen.

B. The ALJ Erred in Finding that Litigation on the Barth I Patents WasReasonably Foreseeable at Least by July 1998

The ALJs holding that Rambus not only could foresee, but was planning litigation

involving the Barth Patents as early as July 1998 obliterates the distinction between anticipating

litigation generally, which does not give rise to a duty to preserve, and anticipation of a specific

litigation, which does give rise to such a duty. Rambus had no duty to preserve documents from the

mere existence of a potential claim or the distant possibility of litigation. The ALJs finding that

Rambus anticipated litigation at least by July 1998 is clearly erroneous in view of the Federal

CircuitsMicron decision, which declined to find that Rambus anticipated litigation on its Farmwald

patents by December 1998 on the same evidence and which relied on several key events occurring in

the Summer of 1999, such as issuance of an asserted patent, to find Rambus anticipated litigation on

the Farmwald patents by August 26, 1999.

The ALJ clearly erred in concluding that [a]lthough the Barth Patents were not mature

during the relevant time period, it is evident that Rambus intended to use the Barth Patents as part of

its long term litigation plan: the Barth Patents were part of Rambus patent minefield. Having or

desiring a patent minefield does not equate to an intent to litigate. Indeed, despite the district court

having repeatedly relied on the minefield, the Federal CircuitMicron decision makes no mention

of it. Moreover, the documents show that Rambus relied on the minefield for defensive purposes and

that Rambus was willing and able to license its patents, rather than litigate.

Contrary to the ALJs conclusions, Rambuss general document retention policy based off a

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standard policy provided by outside counsel does not evidence an intent to litigate on all patents.

That is especially true where the documents reflecting Rambuss licensing and litigation strategy are

directed to enforcement of the Farmwald patents, and not later patent families.

The ALJ clearly erred in holding that Rambus anticipated litigation on whatever claims might

ultimately issue from the nascent Barth I patent applications based on products the Respondents

might produce years later that might incorporate features of a JEDEC standard that did not exist in

July 1998. Several key facts demonstrate that Rambus did not have notice of potential infringement

of the Barth I patents before 2000. First, none of the asserted Barth I patents had even been filed.

Second, Rambus had not begun any strategic prosecution of any Barth I application to cover features

incorporated into standardized memory in 1998 or 1999, as Respondents admit. Third, the infringing

memory controller products were not yet on the market in 1998 and 1999. Fourth, the earliest

JEDEC standard upon which those products are based did not issue until June 2000. The ALJs

acknowledgement that the activity may not have been infringing vastly understates the situation.

There was no activity at the timeinfringing or otherwisegiven the nonexistence of the products,

standard, and patents. Rambus was not on notice of Barth I infringing activity, and speculation about

possible future infringement and enforcement is insufficient to trigger a duty to preserve.

C. The ALJ Erred in Finding Bad Faith Destruction of Barth I DocumentsThe ALJs misconceptions regarding the scope of Rambuss duty to preserve fueled a flawed

analysis of bad faith that ignores objective evidence of good faith and rests on adverse credibility

determinations grounded on facts that are demonstrably wrong. The ALJ failed to proceed with

caution, or apply the requisite exacting standard, in finding bad faith based on (1) the same

fundamental errors of law and fact made in assessing anticipation of litigation, (2) demonstrably

wrong assertions that there is no written evidence that Mr. Karp relied on advice from outside

counsel to form the document retention policy, (3) a misunderstanding of patent prosecution that

compelled an erroneous conclusion that Mr. Barth was a copyist, and (4) adverse credibility

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determinations infected by these erroneous views of law and fact, including an irrelevant critique of

the testimony of Rambuss technical expert.

D. Respondents Were Not Prejudiced by Any Document DestructionThe ALJs analysis of prejudice is a single sentence: Email correspondence, from Mr. Barth

alone, could have provided support for Respondents invalidity contentions. The ALJ applies both

an erroneous legal standardcould have provided supportand insufficient explanation. Indeed,

the ALJs thin analysis of prejudice is less than that of the deficient analysis provided by the district

court inMicron, which prompted remand.

Rambus satisfied even the heaviest burden it could have properly expected to bear by

showing that Respondents defenses were not materially prejudiced, either because the allegedly

destroyed documents are irrelevant, still exist, or were redundant of retained documents. The

demonstrative lack of prejudice is clear as to the only type of defense the ALJ identified as being

prejudicedinvalidity. By its nature, invalidity depends on public prior art documents or the four

corners of the specification and cannot be illuminated by evidence of a non-public nature, e.g., by

internal Rambus documents. Thus the only two invalidity defenses Respondents pledinvalidity

based on written description and prior artwere not impacted by any alleged lost emails.

E. The Harsh Sanction of Dismissal Is Unwarranted and Contrary to LawDismissal is a harsh sanction that should be imposed only in particularly egregious

situations where a party has engaged deliberately in deceptive practices that undermine the integrity

of judicial proceedings. The ALJs numerous errors of law and fact made in determining

anticipation of litigation, bad faith, and prejudice skewed any assessment of degree of fault or

prejudice and undermined an objective determination of an appropriate sanction. The evidence

showed that the degree of fault as to destroyed Barth I documents is low and does not warrant

imposing a dispositive sanction. Moreover, the ALJ never considered that Respondents invalidity

defenses were not dependent on documents unique to Rambus or that any prejudice was mitigated by

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the existence of retained documents containing the kind of information reflected in the allegedly

destroyed documents.

The ALJs circular reasoning that lesser sanctions are not appropriate because there is bad

faith spoliation would require dismissal in every case of bad faith spoliation. Micron makes clear

that is not the law. Micron requires that, in determining the appropriate sanction, the court must

select the least onerous sanction corresponding to the willfulness of the destructive act and the

prejudice suffered by the victim. The ALJ erred in not following that mandate.

IV. The Record Does Not Support the ALJs Finding of Patent ExhaustionThe ALJ erred in finding that authorized sales from Samsung to occurred in the

U.S., a requirement for finding exhaustion. Fujifilm Corp. v. Benun, 605 F.3d 1366, 1371-72 (Fed.

Cir. 2010). had the burden of establishing that the allegedly exhausting sales took place

within the U.S., but offered only speculation based on that

contradicts all other evidence, as well as common sense.

The ALJ also erred in relying on the sale of DRAMs, i.e. memory devices, instead of

identifying any authorized sale of a memory controller, contrary to precedent. Because there has

been no finding of an authorized sale of a memory controller or product that incorporates such

memory controllers, Rambuss patent rights in the memory controller cannot have been exhausted.

The ALJ also erred in concluding that Samsung/Elpida memory devices substantially

embody the Barth I Patents. Rather than determining whether the DRAMs purchased from Samsung

and Elpida substantially embody the asserted claims as the Supreme Court requires, the ALJ

inexplicably assessed whether the claims exclude memory devices. But that does not establish that

the DRAMs substantially embody the claimed invention.

V. ConclusionRambus requests Commission review of the ALJs determinations on invalidity and the

related claim construction issues, unenforceability, and exhaustion.

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