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2013-1623 (Reexamination No. 95/001,169)

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

IN RE RAMBUS, INC.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.

PTO'S REPLY IN SUPPORT OF ITS MOTION FOR REMAND

The United States Patent and Trademark Office ("PTO") respectfully submits this Reply in support of its Motion for Remand and in response to Rambus's Opposition. As explained in the PTO' s opening motion, this case is an appeal from a February 13,2013 Board decision affirming various rejections ofRambus's reexamined claims in U.S. Patent No. 6,591,353 ('353 patent). AI-177.1 The Board maintained the rejection of certain claims of the '353 patent as anticipated

This case is an appeal from an inter-partes reexamination proceeding. After third party requester, NVIDIA, withdrew from this appeal, the PTO intervened. Prior to PTO' s intervention, Rambus filed a blue brief. Citations to the Rambus's brief and addendum will be referred to as "Br. at " and "A ."
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by Hayes (A45; A136-137) and issued several new grounds of rejection for various sets of claims of the '353 patent as obvious over various combinations of references, including the Farmwald '755 reference. A134-135. After the Board's decision, this Court issued a decision in a related reexamination appeal. See
Rambus Inc. v. Rea, 2013 WL 3242241 (Fed. Cir. 2013) ("2012-1480 Rambus").

There, this Court analyzed various aspects of the Farmwald '037 disclosure as well as the specification of the '109 patent. 2 Since this Court's 2012-1480 Rambus decision issued after the Board's decision in this case, the PTO asked this Court to remand this case back to the agency so the Board could re-consider its decision in light of 2012-1480 Rambus. See PTO Motion to Remand. In its opposition to the PTO's motion, Rambus asserts that this Court's
2012-1480 Rambus decision "has no absolutely [sic] bearing on the majority of the

grounds at issue in this appeal." Opp. at 7. However Rambus's assertion is in direct contrast to the arguments Rambus makes in its blue brief, which state that both "Hayes and Farmwald fail to meet the claim" under this Court's holding in the 2012-1480 Rambus decision. Br. at 18. Further, Rambus asserts that "[t]his

As noted in the PTO's opening motion, Farmwald '755 (in this case) and Farmwald '037 (in 2012-1480 Rambus) share the same specification. Id. at *3. And, the '353 patent (in this case) and the '109 patent (in 2012-1480 Rambus) share a similar specification.
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appeal involves a patent which is directly related to the patent which was the subject of Ram b us, Inc. v. Rea, Appeal No. 2012-1480" and "the patents involved in this appeal and Appeal No. 2012-1480 are in the same family, share the same specification and claim benefit to the same parent patent." See Br. at vi. In fact, Rambus focuses the majority of the arguments in its blue brief on a claim construction dispute over features in representative claim 1 and the application of both Farmwald '755 and Hayes in light of this Court 2012-1480 Rambus decision. 3
See, e.g., Br. at 12 (disputing representative claim l's construction in light of the 2012-1480 Rambus decision and disputing the application of Hayes and

Farmwald '755 in light of its argued construction); see also Br. at 15-18. Thus, a core criticism raised in Rambus's blue brief is that the Board's decision is inconsistent with this Court's related 2012-1480 Rambus decision. But, the PTO's remand motion seeks to provide Rambus with a remedy to address that precise alleged deficiency, i. e., to have the Board re-consider its decision in

In the related 2012-1480 Rambus decision, this Court provided claim construction analysis in light of the '109 patent disclosure (see 2013 WL 3242241 at *4-6) and analyzed the Farmwald '037 disclosure. Id. at *3-6. Yet the Board never had access to this Court's 2012-1480 Rambus decision when it issued the decision on appeal in this case. For this Court to review the Board's decision here without the Board first considering the related 2012-1480 Rambus decision would be contrary to this Court's observation that the Board should consider related decisions if available to them. See, e.g., id. at *3 (criticizing Board for failing to consider pertinent prior decisions that were inconsistent with the Board decision).
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light of this Court's subsequently issued decision. Rambus' s assertion in its opposition that a remand at this juncture would be inefficient is wrong. Allowing the Board to first consider this Court's related 2012-1480 Rambus decision would actually save resources and promote judicial efficiency by eliminating unnecessary review of a Board decision that does not account for that decision. See In re

Gould, 673 F.2d 1385, 1386 (CCPA 1982) ("After our decision ... the Patent
Office can always reopen prosecution ... in which limited sense our mandates amount to remands" (quoting with approval In re Fisher, 448 F .2d 1406, 1407 (CCPA 1971))). As the case law cited by Rambus makes clear, "an agency may seek a remand because of intervening events outside of the agency's control, for example, a new legal decision .... " Opp. at 6 (quoting SKF USA Inc. v. Us., 254 F.3d 1022, 1028-29 (Fed. Cir. 2001)). Moreover, "[a] remand is generally required if the intervening event may affect the validity of the agency action," id., as Rambus argues is the case here. See Br. at 12, 15-18. Thus, the Board should have an opportunity to consider the 2012-1480 Rambus decision before this Court engages in appellate review. Accordingly, the Director believes it is in the best interest of the parties and more efficient for this Court to remand this case back to the Board to reconsider its
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decision in light of the guidance provided in Rambus 2012-1480. A remand to permit further proceedings at the PTO at this juncture would prevent the Court, Rambus, and the PTO from needlessly expending additional resources on this appeal. See, e.g., Gould, 673 F.2d at 1387. A proposed Order accompanied the PTO' s opening motion.

February 3, 2014 Respectfully submitted, /s/ William La Marca NATHANK. KELLEY Solicitor WILLIAM La MARCA STACY B. l\llARGOLIES Associate Solicitors Office of the Solicitor U.S. Patent and Trademark Office Mail Stop 8 P.O. Box 1450 Alexandria, Virginia 22313 (571) 272-9035

Attorneys for the Director of the United States Patent and Trademark Office

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CERTIFICATE OF SERVICE

I hereby certify that on February 3,2014, I electronically filed the foregoing PTO'S REPLY IN SUPPORT OF ITS MOTION FOR REMAND with the Court's
CMIECF filing system, which constitutes service, pursuant to Fed. R. App. P.

25(c)(2), Fed. Cir. R. 25(a), and the Court's Administrative Order Regarding Electronic Case Filing 6(A) (May 17,2012), on counsel for the Appellant.

lsi William La Marca WILLIAM La MARCA Office of the Solicitor U.S. Patent and Trademark Office (571) 272-8741