PUBLIC VERSION

UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C.

In the Matter of CERTAIN SEMICONDUCTOR CHIPS AND PRODUCTS CONTAINING SAME Inv. No. 337-TA-753

REPLY SUBMISSION OF THE OFFICE OF UNFAIR IMPORT INVESTIGATIONS TO THE NOTICE OF COMMISSION DETERMINATION TO REVIEW IN THE ENTIRETY A FINAL DETERMINATION FINDING NO VIOLATION OF SECTION 337

OFFICE OF UNFAIR IMPORT INVESTIGATIONS Lynn I. Levine, Director David O. Lloyd, Supervisory Attorney Daniel L. Girdwood, Investigative Attorney U.S. International Trade Commission 500 E Street, S.W. Suite 401 Washington, D.C. 20436 202.205.3409 (ph) 202.205.2158 (fax) Public Version: Conf. Version: June 12, 2012 June 1, 2012

i TABLE OF CONTENTS

I.

QUESTION 1 - CLAIM CONSTRUCTION (DALLY PATENTS)..................... 1 A. Construing Output Frequency To Mean A Number Of Cycles-PerSecond Would Not Affect The Prior Art Invalidity Issues That Remain In Dispute ........................................................................................................................... 2 B. LSIs Alternative Construction Was Properly Rejected In The ID And Has Since Been Waived ........................................................................................................ 4 C. Respondents Indefiniteness Argument Was Properly Rejected In The ID And Has Since Been Waived ........................................................................................ 5 D. Respondents Noninfringement Arguments Are Outside The Scope Of The Notice .............................................................................................................................. 5

II. QUESTION 2 - VALIDITY ..................................................................................... 6 A. Barth I Validity Issues ....................................................................................... 6 1. The IDs Obviousness Analysis Considered The Claimed Inventions As A Whole .......................................................................................................................... 6 2. The ID Properly Combined The NeXTBus Specification (RX-4265) With Farmwald-Horowitz (RX-4269) ............................................................................... 10 3. The ID Properly Combined Yano (RX-4261) With Farmwald-Horowitz (RX4269) 12 4. The ID Properly Rejected Rambuss Evidence Of Secondary Considerations Of Nonobviousness ................................................................................................... 13 B. Dally Validity Issues ......................................................................................... 17 1. The ID Properly Combined The Widmer Article (RX-4109) With Ewen (RX4125) 17 2. Rambus Waived Secondary Considerations Of Nonobviousness Regarding The Dally Patents ...................................................................................................... 21 III. QUESTION 3 - INFRINGEMENT .................................................................... 24 A. The Accused Cisco Products Directly Infringe The Asserted Apparatus Claims Of The Dally Patents ...................................................................................... 24 B. The Accused LSI Products Directly Infringe The Asserted Apparatus Claims Of The Dally Patents ...................................................................................... 27 C. The Respondents Induce Infringement Of The Asserted Method Claims Of The Dally Patents ........................................................................................................ 29 IV. QUESTION 4 - UNCLEAN HANDS (Barth patents) ...................................... 30 A. The Respondents Burden Shifting Arguments Were Rejected By The Commission In The 661 Investigation And Fall Outside The Scope Of The Notice 30 PUBLIC VERSION

ii B. The Limited Factual Distinctions On Which The Respondents Rely Do Not Support A Contrary Finding Of Prejudice In This Investigation .......................... 31 1. The Additional Barth Trial Testimony Does Not Show Prejudice ................. 32 2. The Additional Deposition and Trial Testimony From Rambus Executives Does Not Show Prejudice ......................................................................................... 37 3. The Additional Testimony From In-house Counsel Neil Steinberg Does Not Show Prejudice ......................................................................................................... 38 4. A. B. Conclusion ...................................................................................................... 39 SyncLink (RX-4270C) Is Cumulative With Farmwald-Horowitz (RX-4269) 40 The ID Correctly Distinguished The Clock Signal In SyncLink (RX-4270C) 42 V. QUESTION 5 - INEQUITABLE CONDUCT (Barth patents)........................... 39

C. The 353 And 405 Patents Are Not Unenforceable Under The Doctrine Of Infectious Unenforceability ........................................................................................ 43 VI. VIII. QUESTION 6 - DOMESTIC INDUSTRY ........................................................ 45 QUESTION 8 - STANDING (Dally patents) ................................................. 47 VII. QUESTION 7 - PATENT EXHAUSTION (Barth patents) ............................. 46 A. The Evidence Of Record Fails To Show That Rambus Was On Inquiry Notice Of The MIT-UNC Subcontract Or Otherwise Unable To Rely On The Bona Fide Purchaser Provision Of 35 U.S.C. 261 ................................................. 47 B. IX. A. Rambus Has Not Addressed Relevant Precedent On Laches ...................... 49 REMEDY .............................................................................................................. 50 A General Exclusion Order Is Not Warranted ............................................. 50

B. A Limited Exclusion Order Should Encompass All Downstream Products Of The Respondents That Include An Infringing Semiconductor Chip Manufactured By Or On Behalf Of LSI And/Or STM .......................................... 51 C. D. 1. Cease and Desist Orders Are Appropriate As To Certain Respondents .... 55 Bonding ............................................................................................................. 57 Rambus Has Failed To Show That A 100% Bond Is Warranted ................... 57

2. Respondents Arguments In Favor Of No Bond Or, Alternatively, That Bond Be Set Based On The Value Of An Accused Semiconductor Chip Should Be Rejected..................................................................................................................... 58 E. The Public Interest ........................................................................................... 59 X. CONCLUSION ....................................................................................................... 59

PUBLIC VERSION

iii TABLE OF AUTHORITIES

Cases ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307 (Fed. Cir. 2007) ............ 25, 26 Adv. Fiber Techs. Trust v. J&L Fiber Servs., 674 F.3d 1365 (Fed. Cir. 2012) .................. 3 AGFA Corp. v. Creo Prods. Inc., 451 F.3d 1366 (Fed. Cir. 2006)................................... 44 Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed. Cir. 2008) .................................. 15 Certain Dynamic Random Access Memories, Components Thereof, and Products Containing Same, Inv. No. 337-TA-242, Errata to Commn Action & Order, 1987 ITC LEXIS 170 (Nov. 1987).......................................................................................... 10, 13 Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, Commn Op., EDIS Doc. ID 467105 (Dec. 21, 2011) ....................................................................................................................... 29 Certain Multimedia Display and Navigation Devices, Inv. No. 337-TA-694, Commn Op., 2011 ITC LEXIS 1416 (July 22, 2011) ........................................................................ 45 Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Commn Op., 2011 ITC LEXIS 2689 (August 10, 2010)........................................................... 15, 51, 56, 58 Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002)25, 27 FilmTec Corp. v. Hydranautics, 982 F.2d 1546 (Fed. Cir. 1992) .................................... 49 FilmTec. Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991) ............................ 48 Geo M. Martin Co. v. Alliance Mach. Sys. Intl LLC, 618 F.3d 1294 (Fed Cir. 2010) .... 24 In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, --F.3d ---, 2012 U.S. App. LEXIS 7571 (Fed. Cir. Apr. 16, 2012) ........................... 15, 16 In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011) .................................................... 15 Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir. 2004) .............. 14, 22 Larson Mfg. Co. v. Aluminart Prods., Ltd., 559 F.3d 1317 (Fed. Cir. 2009) ................... 42 Leviton Mfg. Co. v. Universal Sec. Instruments, Inc., 606 F.3d 1353 (Fed. Cir. 2010) ... 42 Micron Tech., Inc. v. Rambus Inc., 645 F.3d 1311 (Fed. Cir. 2011) ................................ 30 Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) ............................ 24 Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) ..................... 23 Sibia Neurosciences, Inc. v. Cadus Pharma. Corp., 225 F.3d 1349 (Fed. Cir. 2000) 14, 23 Silicon Graphics v. ATI Tech., Inc., 607 F.3d 784 (Fed. Cir. 2010) ........................... 25, 27 Stanford v. Roche, 583 F.3d 832, 838-839 (Fed. Cir. 2009), affd 131 S. Ct. 2188 (2011) ....................................................................................................................................... 50 Stemcells, Inc. v. Neuralstem, Inc., 2012 WL 1184545 (D. Md. Apr. 6, 2012) ............... 49 Therasense Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) 44 Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) ................................. 14, 15, 22

PUBLIC VERSION

iv Statutes 19 U.S.C. 1337 ............................................................................................................... 57 Rules 19 C.F.R. 210.43 .............................................................................................. 4, 5, 21, 54

PUBLIC VERSION

1 Pursuant to the Notice of Commission Determination to Review in the Entirety a Final Initial Determination Finding No Violation of Section 337, 77 Fed. Reg. 27249 (May 2012) (Notice), the Office of Unfair Import Investigations (OUII) respectfully submits this response to the initial briefs of the private parties.1 Reference should also be made to OUIIs briefs in response to the private parties petitions for review, to OUIIs pre- and post-hearing briefs, and to other relevant pleadings submitted during the course of the investigation.2 I. QUESTION 1 - CLAIM CONSTRUCTION (DALLY PATENTS) The first question seeks briefing on the proper interpretation of the output frequency term in certain dependent claims of the Dally patents, which the parties proposed construing as follows:

See Respondents Response to the Commissions Notice of Review, EDIS Doc. ID 480643 (May 18, 2012) (Resp. Review Br.); Respondents Submission on Remedy and Bond, EDIS Doc. ID 480720 (May 18, 2012) (Resp. Remedy Br.); Complainant Rambus Inc.s Response to the Commissions Notice to Review in the Entirety a Final Initial Determination Finding no Violation of Section 337, EDIS Doc. ID 480704 (May 18, 2012) (Rambus Review Br.); Complainant Rambus Inc.s Submission on the Issues of Remedy, the Public Interest, and Bonding, EDIS Doc. ID 480702 (May 18, 2012) (Rambus Remedy Br.); see also Response of the Office of Unfair Import Investigations to the Notice of Commission Determination to Review in the Entirety a Final Determination Finding no Violation of Section 337, EDIS Doc. ID 480643 (May 18, 2012) (OUII Review Br.). In addition to the abbreviations for the briefs cited above, the abbreviations used in the OUII Review Br. will be used in this brief except where expressly noted otherwise. Omission of a detailed response in this brief to a particular argument raised by one or more of the private parties in their initial brief should not be interpreted as OUII agreeing with or adopting that argument. Rather, reference should be made to the OUII Review Br., to OUIIs prior submissions in this investigation (e.g., pre-trial brief, initial post-trial brief, reply post-trial brief, opposition to the private parties petitions for review, etc.) and to the opposing private partys brief as they relate to that argument.
2

PUBLIC VERSION

2 Complainant Rambus one half the value of the output data rate See CX-9542C, Singer Direct Q/A 117 ID, OUII, Respondent STM output data rate Respondent LSI frequency content of the output signal See RX-5430C, Hajimiri Direct Q/A 35.

See RX-5431C, Hassoun Direct Q/A 54

In particular, the Commission has sought briefing on an alternative construction that omits reference to a specified data rate and on the application of that construction to the Section 102 and 103(a) invalidity issues that remain in dispute. As discussed below, OUII respectfully submits that the IDs interpretation of output frequency as meaning output data rate and its corresponding application of that construction to the prior art of record should be affirmed. See ID at 24-34 (construing output frequency), 153 (discussing Ewen), 192-193 (discussing the SL500 art). However, should the Commission construe the term to mean a number of cycles per second as proposed in Question 1(a), OUII submits that clear and convincing evidence nonetheless supports a finding of invalidity for essentially the same reasons as articulated in the ID. Certain of the private parties arguments in response to Question 1 are addressed below. A. Construing Output Frequency To Mean A Number Of Cycles-Per-Second Would Not Affect The Prior Art Invalidity Issues That Remain In Dispute

The parties appear to agree that, should the Commission interpret the phrase an output frequency of at least 1 GHz to mean at least 1x109 cycles-per-second, it would simply shift the parties existing dispute over the meaning of frequency in the claim language to an analogous dispute over the meaning of cycle in the proposed construction, and thus have no real effect on the invalidity issues that remain in dispute.3 More specifically, the prior art of
3

See Rambus Review Br. at 1 (Rambus expressed its construction in terms of an equivalent data rate (i.e., at least 2 Gb/s) as opposed to cycles per second because the number of bits transmitted per cycle impacts the validity analysis.); Resp. Review Br. at 1-2 (The parties agree that Hertz generally refers to a number of cycles per second, but cycles can be interpreted in different ways depending on context. A person of ordinary skill would understand that cycles, in the context of Dallys digital transmitters, refers to data rate.); OUII Review Br. at PUBLIC VERSION

3 record (as well as the accused products) quantify the relevant aspect of their output signal in terms of bits-per-second (bps), not cycles-per-second. See ID at 153-154 (discussing Ewen); id. at 192-193 (discussing the SL500 art). Thus, cycles per second must first be converted into bits per second (or baud) before one can discern whether a given system practices the output frequency limitation under a cycles-per-second type construction. This conversion can be addressed directly by construing output frequency in terms of data rate in accordance with the parties proposed constructions, or indirectly by further construing cycles per second in terms of bits per second. See Adv. Fiber Techs. Trust v. J&L Fiber Servs., 674 F.3d 1365, 1373-76 (Fed. Cir. 2012) (construing a disputed word within an agreed upon construction of a claim term). Either way, the Section 102 and 103(a) validity issues on the output frequency claims distill down to the same basic dispute i.e., the minimum data rate (specified in bps or baud) on which the output frequency claims can be read. See ID at 24-34 (construing output frequency to mean output data rate), 153 (discussing Ewen), 192-193 (discussing the SL500 art). Consistent with the intrinsic record, OUII and the Respondents argue that the Dally patents equate a 1:1 ratio between frequency and bps, such that one bit is transmitted per cycle. See OUII Review Br. at 3-4; Resp. Review Br. at 3-9. Under this interpretation, the limitation an output frequency of at least 1 GHz corresponds to an output data rate of at least 1 Gbps, and reads on the 1.062 Gbps output signals of Ewen (RX-4125) and the SL500 art (multiple exhibits). See RX-5431C, Hassoun Direct Q/A 160; RX-5430C, Hajimiri Direct Q/A 402 (discussing SL500 art). By contrast, Rambus argues that the Dally patents equate a 1:2 ratio between frequency and bps, such that two bits are transmitted per cycle. See Rambus Review Br. at 1-7. 4-5 (OUII submits that such a construction would likely implicate the parties existing dispute over data rates even though the proposed construction does not explicitly call for a particular data rate. Thus, OUII does not believe that the adopted construction will significantly affect (or resolve) the corresponding validity disputes at issue in this investigation.).

PUBLIC VERSION

4 Because neither Ewen nor the SL500 art discloses an output signal over 2 Gbps, they fail to meet a cycles-per-second construction under Rambuss interpretation of the claims. See CX-10764C, Singer Rebuttal Q/A 120 (Ewen), 370 (SL500 art). Thus, the Section 102 and 103(a) invalidity issues resolved by the output data rate construction adopted in the ID are essentially the same as the issues the parties now raise based on the cycles-per-second construction proposed in Question 1(a). Because the ID appropriately construed the term output frequency to mean output data rate and because its reasoning equally applies even under an alternative cycles-per-second construction, OUII respectfully submits that the Commission should affirm the finding in the ID that claims 2, 31, and 49 of the 857 patent and claim 3 of the 494 patent are invalid in view of the prior art. B. LSIs Alternative Construction Was Properly Rejected In The ID And Has Since Been Waived

Contrary to the data rate constructions proposed by OUII, Rambus, and its coRespondents STM, nVidia, and Broadcom, Respondent LSI at one point argued that the output frequency term should be construed to mean a frequency content of the output signal, and it re-asserts that construction in Response to Question 1(b). See Resp. Review Br. at 10-12. However, LSI waived the issue by failing to petition for review of the IDs rejection of that construction. See 19 C.F.R. 210.43(b)(2) (Any issue not raised in a petition for review will be deemed to have been abandoned by the petitioning party . . . .); Resp. Pet. at 42-46 (seeking review of the IDs construction of the transmitter limitation, but not the output frequency limitation). Thus, the Commission need not address LSIs alternative construction.4 See Notice
4

LSIs alternative construction is also contrary to statements made in the Respondents review brief that suggest even LSI now recognizes that its output frequency construction is not viable. See Resp. Review Br. at 2 (Accordingly, Rambus, all 34 Respondents, the Staff, the PUBLIC VERSION

5 at 3 (The parties submissions should be limited to issues they have properly preserved . . . .). Should the Commission nonetheless consider LSIs alternative construction, OUII submits that it was correctly rejected in the ID as contrary to the weight of the evidence. See ID at 24-34 (construing the term output frequency in terms of output data rate); see also RX-5431C, Hassoun Direct Q/A 54-70 (same). C. Respondents Indefiniteness Argument Was Properly Rejected In The ID And Has Since Been Waived

In addition to addressing Section 102 and 103(a) invalidity issues in their brief, the Respondents also address indefiniteness under Section 112. See Resp. Review Br. at 3, 9-10. While the Respondents previously asserted an indefiniteness defense in pre- and post-trial briefing, they abandoned that defense after it was rejected in the ID. See 19 C.F.R. 210.43(b)(2) (Any issue not raised in a petition for review will be deemed to have been abandoned by the petitioning party . . . .); ID at 240-242 (rejecting the Respondents indefiniteness defense as to the Dally patents); Resp. Pet. at 15-23 (seeking review of the Section 112 findings solely regarding the Barth I patents). Thus, the Respondents should not have raised this defense in their review brief. See Notice at 3 (The parties submissions should be limited to issues they have properly preserved . . . .). If the Commission nonetheless addresses indefiniteness, OUII submits that this defense was appropriately considered and rejected in the ID. See ID at 240-242. D. Respondents Noninfringement Arguments Are Outside The Scope Of The Notice

Finally, the Respondents also raise a noninfringement issue that similarly falls outside the scope of the Notice. See Resp. Review Br. at 10-12. Specifically, the Notice states that [t]he parties have been invited to brief only [the] discrete issues, as enumerated in the eight experts, and ultimately the ALJ, uniformly agreed that any construction of output frequency must specify a particular data rate per cycle.) (emphasis added).

PUBLIC VERSION

6 Commission questions. Notice at 5 (emphasis added). The discrete issue enumerated in Question 1(b) is explicitly limited to prior art invalidity issues. Id. at Question 1(b). Yet, the Respondents have briefed an infringement issue purportedly in response to this question. See Resp. Review Br. at 10-12 (arguing that Rambus has not proven infringement of the output frequency claims under a construction that omits reference to a particular data rate). Because this infringement issue falls outside the scope of the Notice, OUII does not substantively address it in this reply or otherwise speculate as to how the proposed construction of output frequency would apply to the infringement evidence of record. II. QUESTION 2 - VALIDITY The second question seeks briefing on four issues that generally relate to the IDs findings on anticipation and obviousness under 35 U.S.C. 102 and 103(a), three of which relate to the Barth I patents and one of which relates to both the Barth I patents and the Dally patents. OUII addresses below certain of the private parties arguments in response to this question. A. Barth I Validity Issues 1. The IDs Obviousness Analysis Considered The Claimed Inventions As A Whole

The Section 103(a) combinations regarding the Barth I patents involve only a subset of the asserted claims, i.e., claims that recite double-data-rate (DDR), autoprecharge, sense amplifier, or multiple memory bank functionality. In challenging the IDs finding of obviousness as to these claims, Rambus argues that [t]he ALJ . . . legally erred by not considering the claimed invention as a whole. Rambus Review Br. at 12. OUII disagrees. As background, several prior art references (e.g., Yano (RX-4261), Dan (RX-4262) and Hayes (RX-4268)) on which the Respondents rely anticipate solely claim 11 of the 353 patent,

PUBLIC VERSION

7 which is the broadest of the asserted Barth I claims as interpreted in the ID. See Resp. Initial Br. at 43 (table summarizing anticipation arguments). This claim reads: 11. A method of controlling a memory device that includes a plurality of memory cells, the method comprising: issuing a first write command to the memory device, the memory device being configured to defer sampling data that corresponds to the first write command until a strobe signal is detected; delaying for a first time period after issuing the write command; and after delaying for the first time period, issuing the strobe signal to the memory device to initiate sampling of a first portion of the data by the memory device. 353 patent, 41:29-41. Ultimately, the ID found that this broad claim is anticipated by the prior art, and thus invalid under 35 U.S.C. 102. See ID at 90-99 (anticipation analysis regarding Yano); id. at 104-117 (anticipation analysis regarding the NeXTBus Specification). The ID then turned to the narrower Barth I claims which the Respondents alleged would have been obvious in view of but not anticipated by the same prior art references previously discussed in the context of anticipation. See, e.g., ID at 210-217 (obviousness using Yano (RX4261) as a primary reference), 219-222 (obviousness using the NeXTBus Specification (RX4265) as a primary reference). The ID found for the Respondents on this issue as well, i.e., that these narrower claims would have been obvious to a person skilled in the art and thus invalid under 35 U.S.C. 103(a). Notably, the ID grouped its obviousness analysis on an invention-byinvention basis (i.e., individually addressing claimed inventions that utilize DDR, autoprecharge, sense amplifier, and/or multiple memory bank functionality) rather than on a claim-by-claim basis. However, this grouping in the ID does not support Rambuss conclusion that the ID ignored the invention as a whole or otherwise committed reversible error. As an example, the only material difference between the inventions of DDR claims 12 and 13 of the 353 patent and that of independent claim 11 is the addition of DDR functionality in those dependent claims. See CX-9543C, Przybylski Direct Q/A 364 (Rambuss expert PUBLIC VERSION

8 arguing that claim 12 is essentially adding to claim 11 the requirement that data is sampled during an odd phase and even phase of an external clock signal.). Claim 12 is representative. It reads: 12. The method of claim 11, further comprising issuing the first portion of the data and a second portion of the data to the memory device, wherein the first portion of the data is sampled during an odd phase of an external clock signal, and the second portion of the data is sampled during an even phase of the external clock signal. 353 patent, 41:42-47. Because the inventions of claims 12 and 13 are essentially claim 11 plus DDR functionality, the IDs obviousness analysis as to these two dependent claims appropriately focused on whether it would have been obvious to a person of skill in the art to add DDR functionality to a prior art system that anticipates claim 11 (e.g., Yano (RX-4261) or the NeXTBus Specification (RX-4265)). See ID at 213-214 (discussing Yano); id. at 220 (discussing the NeXTBus Specification). In short, the Judge recognized the only difference between the primary reference (e.g., Yano (RX-4261)) and the inventions of the DDR claims 12 and 13, and analyzed whether a person of skill in the art would nonetheless have been motivated to combine other prior art of record with that primary reference so as to achieve a system that included DDR functionality as claimed. Similarly, the only material difference between the inventions of the autoprecharge claims in the 405 patent and claim 11 of the 353 patent is the addition of autoprecharge functionality. See CX-9543C, Przybylski Direct Q/A 395 (Rambuss expert arguing that the one exception to the overlapping infringement analysis as to the asserted 353 and 405 patent claims pertains to a feature known as automatic precharge, or as I will refer to it today, autoprecharge. The 405 patent claims all require use of an autoprecharge feature, while the claims of the 353 patent do not have that requirement.). Claim 11 of the 405 patent is representative. It reads: PUBLIC VERSION

9 11. A method of controlling a semiconductor memory device, wherein the memory device includes an array of memory cells, the method comprises: providing a plurality of control codes to the memory device wherein the plurality of control codes include a first code which specifies that a write operation be initiated in the memory device and a second code which specifies that a precharge operation be initiated automatically after initiation of the write operation; delaying for an amount of time after providing the plurality of control codes; and issuing an external strobe signal to the memory device after delaying for the amount of time, to signal the memory device to sample data, wherein the data is to be written to the array during the write operation. 405 patent, 41:56-42:04 (emphasis added). Because the invention of claim 11 of the 405 patent is essentially claim 11 of the 353 patent plus autoprecharge functionality, the IDs obviousness analysis focused on whether it would have been obvious to a person of skill in the art to add autoprecharge functionality to a system that anticipates claim 11 of the 353 patent (e.g., Yano (RX-4261) or the NeXTBus Specification (RX-4265)). See ID at 214-215 (discussing Yano); id. at 220-221 (discussing the NeXTBus Specification). Thus, here again the Judge recognized the only difference between the primary reference (e.g., Yano (RX-4261)) and the invention of the autoprecharge claims in the 405 patent, and analyzed whether a person of skill in the art would nonetheless have been motivated to combine other prior art of record with that primary reference so as to achieve a system that included autoprecharge functionality as claimed. The ID similarly addressed the invention as a whole in its analysis of the multiple memory banks and sense amplifier claims, which are essentially claim 11 of the 353 patent with the addition of these features. See, e.g., ID at 215-217 (obviousness using Yano as a primary reference), 221-222 (obviousness using the NeXTBus Specification as a primary reference). Thus, the ID neither ignored the invention as a whole nor otherwise committed reversible error based on its invention-by-invention analysis. Rather, the ID carefully considered the evidence of

PUBLIC VERSION

10 record as to each individual claim at issue and appropriately found them to be obvious in view of the prior art. 2. The ID Properly Combined The NeXTBus Specification (RX-4265) With Farmwald-Horowitz (RX-4269)

With respect to the specific combinations of prior art that are addressed in the private parties briefs, Rambus seeks to overturn the IDs finding of obviousness based on the NeXTBus Specification (RX-4265) in view of Farmwald-Horowitz (RX-4269) as premised on three erroneous factual findings: (1) whether a person skilled in the art would increase the clock frequency in the NeXTBus Specification rather than implement a dual edge clocking scheme; (2) whether the external CPU memory controller on the NeXTBus CPU Board would keep track of the low-level information necessary to implement autoprecharge, bank selection, and sense operations; and (3) whether the internal memory controller on the NeXTBus Memory Board that purportedly keeps track of this low-level information issues signals to the board on which it is mounted. See Rambus Review Br. at 18. In OUIIs view, the ID did not commit reversible error in adopting the contrary interpretation of the relevant facts proposed by Respondents expert Dr. Jacobs, whose opinion is supported by clear and convincing evidence of record. See OUII Review Br. at 15-26; ID at 219-222; RX-5429C, Jacobs Direct Q/A 463-542. Indeed, Rambuss position on this issue is largely based on the conclusory testimony of its expert Dr. Przybylski even though the ID found that he has serious credibility problems that taint his entire validity analysis. See ID at 305-309. This credibility determination is entitled to deference, and bolsters the related obviousness findings set forth in the ID. See Certain Dynamic Random Access Memories, Components Thereof, and Products Containing Same, Inv. No. 337-TA-242, Errata to Commn Action & Order, 1987 ITC LEXIS 170 at *69 (Nov. 1987) (DRAMS) (Because the

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11 ALJs conclusions were based on the ALJs credibility determination, the Commission defers to the ALJs conclusion.). To the extent that Rambus also challenges the IDs findings on motivation to combine the NeXTBus Specification (RX-4265) with Farmwald-Horowitz (RX-4269), its challenge similarly lacks merit. See Rambus Review Br. at 19. For example, Rambus argues that the ID fails to explain why one of ordinary skill would have looked to the slow systems of NextBus and Harriman to improve the speed of the much faster . . . Farmwald systems. Id. Rambus further argues that Farmwald already has a mechanism for determining when data is available on its bus and thus would not have benefited from the addition of a NeXTBus style DSTB* strobe signal. Id. These arguments address the proposed combination solely from the perspective of Farmwald-Horowitz (RX-4269) as a primary reference. When the proposed combination is examined from the opposite perspective (i.e., using the NeXTBus Specification as the primary reference), Rambuss arguments support the proposed combination. Namely, assuming that Rambus is correct insofar as Farmwald-Horowitz discloses a faster system than NeXTBus, one of skill in the art would have naturally looked to that reference for guidance as to the feasibility of and ways to further improve upon the slower NeXTBus system. See RX-5429C, Jacobs Direct Q/A 502-519, 528-531. Moreover, purported drawbacks in modifying FarmwaldHorowitz to use a strobe based sampling technique are irrelevant to this proposed combination because a strobe signal is already explicitly disclosed in the NeXTBus Specification and thus need not be added to the NeXTBus system. See id. at Q/A 178-179, 296; RX-4265.0025. For at least these reasons, OUII respectfully submits that the IDs obviousness findings based on the NeXTBus Specification (RX-4265) in view of Farmwald-Horowitz (RX-4269) are supported by clear and convincing evidence and should be affirmed.

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12 3. The ID Properly Combined Yano (RX-4261) With Farmwald-Horowitz (RX-4269)

Rambus also seeks to overturn the IDs finding of obviousness based on the combination of Yano (RX-4261) with Farmwald-Horowitz (RX-4269). In particular, Rambus argues that the ID ignored an important distinction between the asserted claims, which allegedly treat as important decoupling the timing between a command and data transfer through use of a strobe signal, and Yano, which allegedly do[es] not treat that decoupling as important and in fact do[es] not decouple. See Rambus Review Br. at 15 (citing CX-10765C, Przybylski Rebuttal Q/A 147-197); see also id. at 13 (The claimed strobe signal/signal . . . is a signal not found in previous generation SDRAM devices and, among other things, is part of what makes the Barth claims a significant departure from earlier asynchronous systems.). There are at least two flaws in this argument. First, Rambuss primary support for its decoupling argument is the witness statement testimony (CX-10765C) of its expert, Dr. Przybylski, who conceded on cross examination that none of the asserted Barth I claims contains a decoupling limitation: Q. My question is simply this: Is it your opinion in this case that the asserted claims of the Barth patent require the strobe signal to decouple the timing of the write command from the timing of data transfer? Yes or no. A. Give me a moment, please. I want to check my witness statement to see if there is something that might help me on this specific question. The asserted claims of the Barth I patents do not specifically recite the decoupling that you are requiring. Q. Can you answer my question yes or no or are you unable to today? A. I believe I have answered your question. Q. And the answer is no? A. No, the claims don't recite the decoupling element that you are implying.

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13 Przybylski, Tr. 869:21-870:14. To the extent that Rambus nonetheless still relies on Dr. Przybylskis contrary witness statement testimony, OUII is of the view that the Judge acted within his discretion in rejecting that testimony on credibility grounds. See ID at 305-309 (finding Dr. Przybylski lacks credibility); see also DRAMS, 1987 ITC LEXIS 170 at *69 (Because the ALJs conclusions were based on the ALJs credibility determination, the Commission defers to the ALJs conclusion.). Second, Yano (RX-4261) discloses a data strobe (DS) signal that initiates the sampling of data in the same manner as claimed in the Barth I patents: [T]he memory cell corresponding to the bit in which writing is performed is discriminated with address signals (AB0 ~ AB15) and with the bit enable signal (BEx) on the side of memory 2, the data strobe signal (DS) creates the active state, the write data is transmitted by the databus (DBx) corresponding to this bit and the data is written to this bit. RX-4261.0004; see also RX-5429C, Jacobs Direct Q/A 228-243, 246-248. Thus, even if Rambus is correct insofar as the asserted Barth I claims require a strobe signal that decouples the sampling of data from the issuance of a write command, the IDs finding that Yano teaches this feature is supported by clear and convincing evidence of record. For at least these reasons, OUII respectfully submits that the IDs obviousness findings based on Yano (RX-4261) in view of Farmwald-Horowitz (RX-4269) should be affirmed. 4. The ID Properly Rejected Rambuss Evidence Of Secondary Considerations Of Nonobviousness

According to Rambus, the ALJ also failed to properly consider the evidence of secondary considerations as to the asserted Barth claims, which were relied on in the 661 investigation as further demonstrat[ing] that the asserted 353 patent claims are not obvious. Rambus Review Br. at 27-28. In particular, Rambus argues that the entire industry adopted Rambuss technology when it developed controllers for DDR memory, which for the

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14 first time issued a strobe signal to initiate sampling. Id. at 28. This argument is flawed for at least three reasons. First, the mere fact that others in the industry adopted strobe signal based technology is insufficient to show secondary considerations of nonobviousness. See Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (quoting Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)) (Not every competing product that arguably falls within the scope of a patent is evidence of copying; otherwise, every infringement suit would automatically confirm the nonobviousness of the patent.) (Wyers). Rather, the record must contain evidence of efforts to replicate a specific product, which may be demonstrated through internal company documents, direct evidence such as disassembling a patented prototype, photographing its features, and using the photograph as a blueprint to build a replica, or access to the patented product combined with substantial similarity to the patented product. Id. Rambuss brief identifies no such evidence of record in this investigation.5 Second, insofar as Rambus relies on prior findings regarding secondary considerations in the 661 investigation, there is a critical distinction between the two investigations as they relate to this issue. Namely, numerous references on which the 753 Respondents rely disclose the claimed strobe signal technology, whereas no such reference was identified or relied upon by the 661 respondents. See, e.g., ID at 90-99 (discussing Yano (RX-4261)); id. at 104-117 (discussing the NeXTBus Specification (RX-4265)); Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. Similar problems exist with respect to Rambuss attempt to broadly rely on its licensing activities, the mere existence of which is not sufficient in light of the strong showing of prima facie obviousness. See Sibia Neurosciences, Inc. v. Cadus Pharma. Corp., 225 F.3d 1349, 1358 (Fed. Cir. 2000)) (The mere existence of . . . licenses is insufficient to overcome the conclusion of obviousness, as based on the express teachings in the prior art that would have motivated one of ordinary skill to modify . . . cells to be used with unknown compounds.) (Sibia).
5

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15 No. 337-TA-661, Commn Op., 2011 ITC LEXIS 2689 at *118 (August 10, 2010) (661 Commn Op.) (holding none of the prior art of record in the 661 investigation disclosed the use of a strobe signal). Rambus cannot make the required showing of a nexus between its purported evidence of secondary considerations and the asserted claims where the relevant technology at issue is fully disclosed in the prior art. See, e.g., In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.) (citations omitted) (emphasis in original) (Kao); Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) ([E]ven though commercial embodiments of the 421 invention may have enjoyed commercial success, Asysts failure to link that commercial success to the features of its invention that were not disclosed in Hesser undermines the probative force of the evidence pertaining to the success of Asysts and Jenoptiks products.) (Asyst). Finally, secondary considerations of nonobviousness--considered here by the [presiding Judge]--simply cannot overcome a strong prima facie case of obviousness. Wyers, 616 F.3d at 1246. To the extent that Rambus nonetheless argues for reversal of the ID based on what it perceives to be errors in when that evidence was reviewed and how it was characterized in the ID, its arguments lack merit. See Rambus Review Br. at 20 (citing In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, --- F.3d ---, 2012 U.S. App. LEXIS 7571 (Fed. Cir. Apr. 16, 2012) (Cyclobenzaprine)) (arguing that the ID improperly required Rambus to rebut a prima facie showing of obviousness with its evidence of secondary considerations). A Judge does not commit reversible error merely by characterizing evidence of secondary considerations in terms of a patent holder overcoming a prior finding of prima facie

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16 obviousness. See Cyclobenzaprine, 2012 U.S. App. LEXIS 7571 at *35. So long as placement of the burden and the timing of the Judges consideration of that evidence are not determinative, the label ascribed to the analysis of secondary considerations is irrelevant. See id. Here, the Judge recognized that the burden of proving invalidity always rests with Respondents not with Rambus: Respondents have the burden of overcoming the presumption that the asserted patents are valid and must prove invalidity by clear and convincing evidence in order to do so. Respondents burden of persuasion never shifts to Rambus; the risk of decisional uncertainty remains on the respondent. Thus, it is Respondents' burden to prove by clear and convincing evidence that any of the alleged prior art references anticipate or render obvious the asserted claims of the patents in suit. Failure to do so means that Respondents lose[] on this point. ID at 84-85 (internal citations omitted) (emphasis in original). Thus, placement of the burden was not determinative. Likewise, while the ID discussed secondary considerations after first discussing the scope and content of the prior art and distinctions between the prior art and the asserted claims, the ID expressly states that the limited evidence of secondary considerations was balanced against the Respondents otherwise strong showing of obviousness. See ID at 226227. The ID thus recognized that secondary considerations must be considered along with all of the other evidence of record, such that the timing of the Judges consideration of the secondary considerations was not determinative of any of the obviousness findings in the ID. In short, the Judge did not commit reversible error based on how or when he considered Rambuss evidence of secondary considerations. For at least this reasons, OUII respectfully submits that the IDs obviousness findings regarding the Barth I patents should be affirmed irrespective of Rambuss limited evidence of secondary considerations of nonobviousness.

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17 B. Dally Validity Issues 1. The ID Properly Combined The Widmer Article (RX-4109) With Ewen (RX-4125)

Turning to the Dally patents, the most pertinent obviousness combination in dispute involves the Widmer Article (RX-4109) in view of Ewen (RX-4125). More specifically, Rambus seeks to overturn the finding in the ID that it would have been obvious to a person of ordinary skill in the relevant art to combine these two references is such a manner as to achieve: (1) a system with the specified output frequency of dependent claims 2, 31, and 49 of the 857 patent and dependent claim 3 of the 494 patent; and (2) a system that uses differential signaling as recited in independent claims 25 and 39 of the 494 patent. See Rambus Review Br. at 8-12. Rambuss primary arguments regarding these two issues are discussed below. a. The Relationship Between The Two Articles Supports The Proposed Combination

It is undisputed that the Widmer Article (RX-4109) and secondary reference Ewen (RX4125) are related - the Widmer Article states that its design adopts techniques from Ewen, the two articles include an overlapping set of authors, and the two articles both disclose transmitter circuitry. However, the parties dispute the affect that this relationship has on the proposed combination. Citing the testimony of its expert Dr. Singer, Rambus argues that those of ordinary skill would not have expected to improve on their design by incorporating other features from Ewen when Widmers team had already used their higher level of skill to incorporate what they could. Rambus Review Br. at 9; see also CX-10764C, Singer Rebuttal Q/A 120-122 (discussing the proposed combination of the Widmer Article with Ewen). By contrast, the ID, OUII, and the Respondents rely on the contrary opinion of Respondents expert Dr. Hassoun that these same facts would have led a person or ordinary skill to Ewen for suggestions on how to modify (and the feasibility of modifying) the system disclosed in the Widmer Article to be more

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18 suitable for other purposes such as implementations where a greater emphasis is placed on high data rates than the particular design constraints (e.g., reduced pin-count) addressed by the specific implementation disclosed in the Widmer Article. See RX-5431C, Hassoun Direct Q/A 158-160, 163-164, 194; ID at 147-154; OUII Review Br. at 9-11; Resp. Review Br. at 12-15. In short, the parties raised a factual dispute as to how a person of ordinary skill in the art would view the relationship between the Widmer Article and Ewen for purposes of an obviousness analysis. In OUIIs view, the ID did not commit error in adopting the position of Dr. Hassoun over that of Dr. Singer as it relates to this issue. Indeed, the ID specifically notes that Dr. Singer has serious credibility problems that taint his entire analysis. ID at 143; see also DRAMS, 1987 ITC LEXIS 170 at *69 (Because the ALJs conclusions were based on the ALJs credibility determination, the Commission defers to the ALJs conclusion.). Because the IDs underlying factual determinations on the Widmer Article / Ewen combination are supported by the testimony of Dr. Hassoun, OUII respectfully submits that the Commission should affirm the IDs finding that the relationship between the Widmer Article (RX-4109) and Ewen (RX-4125) supports the relevant obviousness combinations involving these two references. b. The ID Properly Distinguished The Use Of Single Ended Signaling In The Widmer Article (RX-4109)

Turning to the differential signaling limitation in particular, clear and convincing evidence supports the finding in the ID that it would have been obvious to modify the system disclosed in the Widmer Article (RX-4109) to implement differential signaling as disclosed in Ewen (RX-4125) and called for in claims 25 and 39 of the 494 patent. See ID at 147-150. Rambuss arguments to the contrary are not meritorious. See Rambus Review Br. at 11.

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19 More specifically, Rambus argues that the Widmer Article (RX-4109) teaches away from the use of differential signaling based on its reference to a design constraint that the authors sought to address with their system. See Rambus Review Br. at 11 (The Widmer Article teaches away from differential signaling by stressing the need to reduce wire count to avoid wire congestion.). However, Dr. Hassoun explained at trial that this application specific design constraint implicates a matter of routine design choice that would be readily modified by a person of ordinary skill in the relevant art when different design constraints are at play: Q. Would a person of ordinary skill in the art choose to implement single-ended signaling versus differential signaling in some contexts? A. Yes absolutely. Q. Why? A. Well it depends on your constraints. For example -- or what problems are you going to solve? For example if you look at the Widmer article, they made a choice to implement single-ended because they had wiring constraint. They were designing the chip for a particular application that had that particular constraint. If you didnt have that constraint you might choose to implement differential signaling in there, to make, for example, your receiver design a little bit easier. It doesnt have to work so hard at figuring out the high and the low. It can use differential signaling. So there is -- those are examples of considerations you would have whether you would use differential or singleended. Hassoun, Tr. 1552:25-1553:23. For example, a person of ordinary skill would choose to implement differential signaling in place of single-ended signaling so as to provide better immunity to signal noise (RX-5431C, Hassoun Direct Q/A 194) and/or to simplify receiver design (Hassoun, Tr. 1552:20-1553:23) in circumstances in which such advantages outweigh the alternative advantages of single-ended signaling, such as reduced pin-count (RX-4109.0001). Thus, even though the Widmer Article discloses the use of single ended signaling for a particular implementation with particular design constraints, this fact does not contradict the finding in the

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20 ID that the use of differential signaling would nonetheless have been an obvious modification to one of ordinary skill in the relevant art. For at least these reasons, OUII respectfully submits that the IDs obviousness findings as regarding the differential signaling claims should be affirmed. c. The ID Properly Addressed The 500 Mbaud Output Signal Of The Widmer Article

The next limitation not taught by the Widmer Article (RX-4109) standing alone is the output frequency limitation previously discussed in response to Question 1. See ID at 150-152. According to the ID, the corresponding claims are nonetheless invalid because it would have been obvious to a person of skill in the art to modify the transmitter circuitry of the Widmer Article based on the corresponding circuitry in Ewen (RX-4125), which discloses this limitation. See ID at 153-154; RX-5431C, Hassoun Direct Q/A 158-160, 163-168. OUII respectfully submits that Rambuss arguments to the contrary should be rejected. See Rambus Review Br. at 9-10. In particular, Rambus argues that [i]t was error for the ALJ to rely almost exclusively on the goal of increasing speed without adequately considering why or how the Widmer Article/Ewen combination would have been made, particularly given the technology at issue. Rambus Review Br. at 9-10. To the contrary, the ID recognized that the goal of improving speed and the relationship between the Widmer Article (RX-4109) and Ewen (RX-4125) would have motivated a person skilled in the art to look to Ewen for suggestions on how to modify (and the feasibility of modifying) the system disclosed in the Widmer Article to be more suitable for other purposes such as implementations where a greater emphasis is placed on high data rates than the particular design constraints (e.g., reduced pin-count) addressed by the specific implementation disclosed in the Widmer Article. See ID at 153-154; see also RX-5431C,

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21 Hassoun Direct Q/A 158-160, 163-168. While Dr. Hassoun did not provide an exemplary circuit diagram combining the Widmer Article with Ewen, he did confirm the feasibility of the proposed combination and motivation for making that combination. See RX-5431C, Hassoun Direct Q/A 158-160, 163-168; Hassoun, Tr. 1501:08-15. Thus, the record contains evidence concerning the goal of increased speed along with other evidence tending to support the proposed combination as part of the overall obviousness analysis pertaining to these two references. For at least these reasons, OUII submits that clear and convincing evidence supports the IDs combination of the Widmer Article with Ewen so as to achieve the invention of the output frequency claims under 35 U.S.C. 103(a). 2. Rambus Waived Secondary Considerations Of Nonobviousness Regarding The Dally Patents

According to Rambus, the ID also failed to give due weight to the secondary considerations of nonobviousness regarding Dally patents. See Rambus Review Br. at 21-27. However, Rambus abandoned the issue after issuance of the ID. See 19 C.F.R. 210.43(b)(2) (Any issue not raised in a petition for review will be deemed to have been abandoned by the petitioning party . . . .); ID at 227-231 (rejecting Rambuss evidence of secondary considerations of nonobviousness regarding the Dally patents); Rambus Pet. at 55-56 (seeking review of the secondary considerations of nonobviousness findings solely regarding the Barth I patents). Thus, the issue is outside the scope of the Notice and need not be addressed by the Commission. See Notice at 3 (The parties submissions should be limited to issues they have properly preserved . . . .). To the extent that the Commission nonetheless addresses the merits of Rambuss arguments on secondary considerations, OUII agrees with the Respondents that the limited

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22 evidence of record was appropriately considered and rejected in the ID. See Resp. Review Br. at 22-25; ID at 227-231 (rejecting Rambuss evidence of secondary considerations of nonobviousness regarding the Dally patents). For example, Rambus relies on the significant sales volumes of the Accused Products in the United States as purportedly showing secondary considerations of non-obviousness. See Rambus Review Br. at 23. However [n]ot every competing product that arguably falls within the scope of a patent is evidence of copying; otherwise, every infringement suit would automatically confirm the nonobviousness of the patent. Wyers, 616 F.3d at 1246 (quoting Iron Grip, 392 F.3d at 1325). Rather, these sales volumes are typically afforded significant weight only where the record contains evidence of a concerted effort by the Respondents to replicate one or more of the patentees products that is covered by the asserted claims. See id. Rambus fails to identify such evidence of record in this investigation.6 Rambus also relies on what it claims to be a long-felt need for the technology of the asserted Dally claims. See Rambus Remedy Br. at 24. Specifically, Rambus cites to Dr. Poultons testimony that Dallys notion that a fairly simple mechanism built into the CMOS chip could overcome a really horrible problem with signaling, a really fundamental problem . . . was clearly a good thing to do. Id. at 24 (quoting JX-99C.0023 at 75:1-12). However, Rambus cites no evidence explaining how long this need was felt, or when the problem first arose. Nor has Rambus provided empirical evidence that explains how the Dally See, e.g., Rambus Review Br. at 22 (addressing similarities between various commercial products and an embodiment described in a 1996 Hot Interconnects paper on which inventor Dally is listed as an author, but failing to identify any evidence of a particular company having obtained a copy of that paper or attempting to replicate the embodiment described therein); id. at 26-27 (arguing that LSI Logic, Hewlett Packard, AT&T, and Toshiba expressed interest in the technology following the presentation and publication of the Hot Interconnects paper, but failing to identify any evidence of concerted efforts by these companies to replicate the embodiment described therein).
6

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23 invention purportedly met such a need. Rambus has thus failed to show that the patented invention alleviated a long-felt, unmet need.7 Indeed, the SL500 art of record confirms that high speed transmitter circuitry with pre-emphasis functionality i.e., what Rambus claims to be Dallys patented invention was known in the art prior to the critical date of the Dally patents.8 See ID at 192-193 (discussing the SL500 art). Rambus also relies on companies having expressed an interest in and having obtained licenses to the Dally patents as purportedly showing the nonobviousness of the asserted claims. See Rambus Review Br. at 25-26. However, [t]he mere existence of . . . licenses is insufficient to overcome the conclusion of obviousness. Sibia, 225 F.3d at 1358. As the Respondents correctly explain in their brief, Rambus failed to cite any evidence that anyone acquiesced to the validity of the Dally patents or specifically entered into those licenses to acquire rights to the asserted Dally patents. Resp. Review Br. at 24. Stated another way, the evidence of record fails to show the requisite nexus between Rambuss license agreements and the purported nonobviousness of the asserted Dally patent claims. Finally, Rambus argues that [m]embers of the industry have praised the Dally technology and thus implicitly recognized the nonobviousness of the asserted Dally patent claims. See Rambus Review Br. at 26-27. However, to be afforded significant weight the [i]ndustry praise must . . . be linked to the patented invention. Geo M. Martin Co. v. Alliance

Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332 (Fed. Cir. 2009) (Even assuming, as we must for summary judgment, that Perfect Web is factually correct about the drawbacks of oversending, Perfect Web fails to show that these drawbacks constituted a long-felt, unmet need alleviated by the patent. Perfect Web provided no evidence to explain how long this need was felt, or when the problem first arose.). See Kao, 639 F.3d at 1068 (Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.) (citations omitted) (emphasis in original).
8

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24 Mach. Sys. Intl LLC, 618 F.3d 1294, 1305 (Fed Cir. 2010). Here, the praise on which Rambus relies appears be attributable to a particular transition filter and multiplexing transmitter set of preferred embodiments. Poulton, Tr. 1770:01-1771:24. Because the asserted Dally patent claims are not limited to these preferred embodiments (see, e.g., ID at 34-43 (interpreting the transmitter limitation as broadly encompassing conventional FIR filter based systems)), Rambus has again failed to show the requisite nexus between the scope of the claims and this industry praise for this evidence to be afforded significant weight. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 (Fed. Cir. 2008) (holding the patentee failed to show a requisite nexus to the scope of the claims that encompassed both a prior art technique and a preferred embodiment where the evidence of praise was directed solely at the preferred embodiment). For these additional reasons, OUII respectfully submits that the IDs obviousness findings regarding the Dally patents should be affirmed irrespective of the limited evidence of record on secondary considerations of nonobviousness. III. QUESTION 3 - INFRINGEMENT The Commission has requested briefing on four issues that generally relate to the IDs infringement findings, three of which relate to the Dally patents and one of which relates to the Barth I patents. See ID at 47-67 (infringement findings as to the Barth I patents); id. at 68-85 (infringement findings as to the Dally patents). OUII addresses below certain of the private parties arguments in response to this question. A. The Accused Cisco Products Directly Infringe The Asserted Apparatus Claims Of The Dally Patents

Rambus has asserted apparatus claims 1, 2, 4-6, 9-13, 24-28, 31-36, 39-44, 47, and 49-53 of the 857 patent and 1-3, 6, 8, 25, 26, and 30 of the 494 patent. These claims call for circuitry

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25 that performs a particular function, i.e., a transmitter circuit with pre-emphasis functionality. Claim 1 of the 857 patent is exemplary in this regard, and reads in pertinent part: a transmitter circuit within the chip, the transmitter circuit being coupled to the processor to accept a digital input signal including a plurality of digital values from the processor, the transmitter circuit being operable to send an output signal including a series of signal levels representing the digital values and to emphasize high frequency components of the output signal relative to low frequency components of the output signal 857 patent, 8:48-55. The parties dispute whether certain of the accused Cisco products in which the relevant transmitter circuitry with pre-emphasis functionality is not coupled to an output infringe the asserted apparatus claims. In OUIIs view, Ciscos reliance on ACCO as support for its position on this issue and its corresponding attempt to distinguish Silicon Graphics and Fantasy Sports lacks merit.9 Specifically, in ACCO the Federal Circuit analyzed claims that were directed at locking systems used to inhibit the theft of personal computers and the like. See ACCO, 501 F.3d at 1310. One representative claim cited in the opinion reads: A locking system comprising: a portable electronic device including an exterior wall defining a security slot; cable means for attaching to a first object other than to the portable electronic device; a housing, proximate to said electronic device and including a slot engagement member having a slot engaging portion provided with a locking member having a peripheral profile complementary to preselected dimensions of said security slot to thereby permit said locking member to extend into said slot, said slot engagement member being rotatable between an unlocked position wherein said locking member is removable from the slot, and a locked position wherein said locking member is retained within the slot;

See ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307 (Fed. Cir. 2007) (ACCO); Silicon Graphics v. ATI Tech., Inc., 607 F.3d 784 (Fed. Cir. 2010) (Silicon Graphics); Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002) (Fantasy Sports).

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26 a pin, coupled through said housing, for extending into said security slot proximate said slot engaging portion when said slot engagement member is in said locked position to thereby inhibit rotation of said slot engagement member to said unlocked position; and means, coupled to said housing, for attaching said cable to said housing. Id. (quoting U.S. Patent No. 5,502,989, Reexamination Certificate at 2:13-37)) (emphasis in original). As highlighted in the claim language above, the asserted claims at issue in ACCO required a particular structure i.e., a pin mechanism arranged in a configuration in which a pin extends through a security slot after a slot engagement member is rotated to its locked position, thus prohibiting rotation into its unlocked position. See ACCO, 501 F.3d at 1310-11. While a user of the accused products could theoretically rearrange the pin mechanism therein by operating the lock in such a manner as to achieve the infringing configuration, there was no evidence of the defendant instructing its customers to use the accused products in this manner or of the defendant selling an accused product with a pin mechanism prearranged in that configuration. See id. at 1313. In fact, aside from testing of accused products as manipulated by plaintiffs expert, there was no evidence of even a single accused product with its pin mechanism arranged in an infringing configuration. See id. at 1313-14. The Court thus found the record insufficient to support a finding of infringement. See id. at 1314. Unlike the defendant in ACCO and the claims at issue in that case, Cisco does not appear to dispute the fact that its products already include the relevant structure of the Dally patent claims i.e., transmitter circuitry with pre-emphasis functionality as imported, sold for importation, and/or sold after importation. See Resp. Review Br. at 28 (The accused transmitters reside on components made by Supplier Respondents. Those components are in turn

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27 integrated into larger Cisco products.). Instead, Cisco argues that the mere presence of transmitter circuitry with pre-emphasis functionality is insufficient because that circuitry is not connected to an output in certain of its accused products. See id. As discussed in OUIIs initial brief, this argument closely resembles arguments that were made to and rejected by the Federal Circuit in Silicon Graphics and Fantasy Sports. See OUII Review Br. at 40-44. Namely, because a user does not have to modify the accused Cisco products (e.g., by manipulating them in a particular manner as in ACCO) to include transmitter circuitry with pre-emphasis functionality as claimed, the mere presence of that circuitry in those products is sufficient to support a finding of infringement irrespective of the fact that it must be coupled to an output to enable that functionality. See Silicon Graphics, 607 F.3d at 793-795 (holding the presence of circuitry for performing the claimed functionality was sufficient to show direct infringement even though that circuitry standing alone lacked a component i.e., an operating system that was necessary to enable that functionality); Fantasy Sports, 287 F.3d at 1111 (holding software with the capability to carry out claimed functionality directly infringes the asserted claims regardless of whether a given user actually used the software to carry out that functionality). For at least these reasons, OUII respectfully submits that the Commission should affirm the IDs finding that the accused Cisco products, all of which include transmitter circuitry with pre-emphasis functionality, directly infringe the asserted apparatus claims of the Dally patents. B. The Accused LSI Products Directly Infringe The Asserted Apparatus Claims Of The Dally Patents

According to LSI, the Commission should reverse the IDs finding of infringement as to certain of its accused products (i.e., [ ]) that can be operated in

a noninfringing mode that utilizes a succeeding bit to perform pre-emphasis. See Resp. Review Br. at 28-29. For similar reasons as discussed above with respect to the accused Cisco

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28 products and as further discussed in OUIIs opposition to the Respondents petition for review, this argument should be rejected. See OUII Pet. Resp. at 60-61. More specifically, the succeeding bit taps in LSIs [ [ ] are

]. See ID at 75 (citing Tracy, Tr. 1404:14-1405:04). LSI recognizes that there is an ] and its

undeniable similarity between its purportedly non-infringing [ infringing [ argues that a [ evaluation of a [

]. See Resp. Pet. at 47. LSI nonetheless ] remains operable and continues to perform based on ], in contrast to the filter claimed in the Dally Patents. See id. In

essence, LSI argues that transmitter circuitry using pre-emphasis functionality with a disabled successive bit is still outputting a signal where that bit is considered but given no weight, whereas the Dally patents allegedly prohibit such a bit be considered at all (regardless of whether it is given any weight). See id. However, LSIs position is refuted by its own documentation, [ ]. See CX-9208C.0009 to 0010; see also CX-9542C, Singer Direct Q/A 260 (describing same excerpt as reproduced in CDX-1689C). An LSI witness verified this fact at his deposition. See JX-137, Tracy Tr. 180:02-12; id. at 225:07-226:12; id. at 268:09-269:22; CX-9542C, Singer Direct Q/A 260 (discussing testimony of Mr. Tracy as reproduced in CDX-1691C). Thus, the evidence of record supports the conclusion reached in the ID that LSIs [ the [ ] only take into consideration [ ] when

]. Because this evidence is sufficient to show

infringement under Silicon Graphics and Fantasy Sports i.e., due to the presence of transmitter circuitry with infringing pre-emphasis functionality LSIs noninfringement argument as to its [ ] should be rejected.

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29 C. The Respondents Induce Infringement Of The Asserted Method Claims Of The Dally Patents

While the vast majority of the asserted Dally patent claims are apparatus claims, Rambus has also asserted three method claims, i.e., claims 39, 40, and 42 of the 494 patent. See Notice, Question 3(c). In OUIIs view, a preponderance of the evidence shows indirect infringement of these claims with respect to substantially all of the accused products. See OUII Review Br. at 45-47 (arguing that the only products for which indirect infringement was not shown consist of a small subset of the accused Cisco products); see also Rambus Review Br. at 46-48 (addressing infringement of the asserted method claims). However, one point that Rambus raises as to these claims is notable and discussed below. According to Rambus, the evidence of record also shows a violation of Section 337 as to the asserted method claims based on the named Respondents domestic use of the accused products, e.g., by testing and/or demonstrating the accused products. See Rambus Review Br. at 47-48. However, in Electronic Devices the Commission held, with respect to method claims, that a violation of Section 337 cannot be based on a named respondents domestic use of an accused product.10 Instead, a violation as to asserted method claims can only be based on indirect infringement, if at all. See Electronic Devices at 19 (S3G might have proved a violation of section 337 if it had proved indirect infringement of method claim 16.). Thus, the IDs finding of infringement as to method claims 39, 40, and 42 of the 494 patent is supportable under 35 U.S.C. 271(b) (inducement), but not under 271(a) (direct infringement).11

See Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, Commn Op., EDIS Doc. ID 467105 at 12-20 (Dec. 21, 2011) (Electronic Devices).
11

10

Rambus does not allege infringement of the asserted Dally patent claims under 35 U.S.C. 271(c) (contributory infringement). See Pretrial Tr. 23:03-13, 50:11-16 (counsel for Rambus PUBLIC VERSION

30 IV. QUESTION 4 - UNCLEAN HANDS (Barth patents) The Commission has requested briefing on two issues that generally relate to the IDs finding that the asserted Barth I patents are unenforceable due to spoliation of evidence. See ID at 254-317. OUII addresses below certain of the private parties arguments in response to this question. A. The Respondents Burden Shifting Arguments Were Rejected By The Commission In The 661 Investigation And Fall Outside The Scope Of The Notice

In Question 4(b), the Commission seeks briefing on the factual distinctions between the records of the 661 investigation and the 753 investigation, with respect to the prejudice suffered or allegedly suffered by the respondents by reason of Rambuss destruction of documents. Notice at Question 4(b). Despite the question being explicitly limited to distinctions between the two records, the Respondents nonetheless argue that the common evidence of record supports a finding of unclean hands under the burden-shifting precedent of Micron, which issued while the Commissions 661 opinion was pending on appeal to the Federal Circuit.12 This argument should be rejected for two reasons. First, the Respondents burden shifting argument falls outside the scope of the Notice. See Resp. Review Br. at 10-12. Specifically, the Notice states that [t]he parties have been

confirming that it does not allege contributory infringement with respect to the asserted Dally patent claims). See, e.g., Resp. Review Br. at 71 (citing Micron Tech., Inc. v. Rambus Inc., 645 F.3d 1311 (Fed. Cir. 2011) (Micron)) (As to the second question, it should be noted at the outset that the legal standard for prejudice applied in this investigation was based on the Federal Circuits intervening Micron II decision and differed significantly from the standard applied in the 661 Investigation.); id. at 81 (It bears mentioning that the legal standard regarding prejudice differed between the two investigations such that, even if the facts had been the same, a different result would have been justified.); id. at 86 (As a bad faith spoliator, Rambus had to show the destroyed documents could not have been relevant.).
12

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31 invited to brief only [the] discrete issues, as enumerated in the eight Commission questions. Notice at 5 (emphasis added). The discrete issue enumerated in Question 4(b) is explicitly limited to distinctions between the two investigations, and thus does not encompass the Respondents arguments which involve evidence that is common to both investigations. Id. at Question 4(b). Second, the 661 respondents made an analogous burden-shifting argument that the Commission considered and rejected during the appellate proceedings before the Federal Circuit. Specifically, the Commission submitted a Rule 28j letter to the Court in which it explained that reconsideration of the 661 respondents unclean hands defense under Micron was unnecessary because the lack of prejudice was so clear that placement of the burden is immaterial. See CX7583.0002 (May 16, 2011 Rule 28j letter to the Federal Circuit). The Respondents burdenshifting arguments appear to suffer from the same deficiencies. For at least these reasons, OUII respectfully submits that the Commission should reject the Respondents burden-shifting arguments as outside the scope of the Notice and as contrary to a position taken by the Commission during the 661 appellate proceedings. B. The Limited Factual Distinctions On Which The Respondents Rely Do Not Support A Contrary Finding Of Prejudice In This Investigation

With respect to distinctions between the 661 and 753 evidentiary records, the Respondents have identified the following six distinctions (not all of which are evidentiary) that purportedly support different prejudice findings in the two investigations: (1) live 753 trial testimony of Rambuss outside patent-prosecution counsel, Lester Vincent (Resp. Review Br. at 82-83); (2) live 753 trial testimony from lead inventor Richard Barth (id. at 83-85); (3) live and deposition 753 testimony from Rambus executives (id. at 85); (4) 753 deposition testimony from Rambuss inhouse counsel Neil Steinberg (id. at 86); (5) credibility determinations in the 753 ID PUBLIC VERSION

32 as to certain Rambus witnesses (id. at 86); and (6) affirmative defenses in the 753 investigation that were not raised in the 661 investigation (id. at 87). In OUIIs view, these distinctions are insufficient (alone or as a collective) to support the IDs contrary finding of prejudice in this investigation. Certain of the Respondents arguments in this regard are addressed in greater detail below.13 1. The Additional Barth Trial Testimony Does Not Show Prejudice

According to the Respondents, lead inventor Richard Barth testified in this investigation that versions of his conceptual tree documents were not retained, but rather were destroyed in one of the shred days. Resp. Review Br. at 83. The Respondents further contend that other aspects of Mr. Barths testimony confirm that some of his emails, copies of JEDEC meeting minutes in which SyncLink was discussed, and backup tapes containing conception information were also destroyed. Id. at 83-84. While the Commission found Mr. Barths live and deposition testimony in the 661 investigation insufficient to support a finding of prejudice in that investigation, the Respondents assert that this new testimony from Mr. Barth supports a contrary prejudice finding in this investigation. See id. OUII disagrees, and addresses each of these three instances of purportedly new testimony below. Conception Tree Documents Turning first to Mr. Barths testimony regarding his conception tree documents, it is undisputed that at least a subset of these documents were preserved and produced by Rambus in Reference should also be made to OUIIs prior briefs that address alleged distinctions between the 661 and 753 investigations as they relate to the Respondents unclean hands defense. See, e.g., OUII Review Br. at 55-62 (discussing prejudice allegations involving the testimony of Lester Vincent, the Barth I patent prosecution files, and Respondents SyncLink based affirmative defenses); OUII Initial Br. at 95-103 (arguing that Respondents were not prejudiced by Rambuss document destruction activities); OUII Reply Br. at 50-54 (same); see also Rambus Review Br. at 53-62 (same).
13

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33 both this investigation and in the prior 661 investigation. See Resp. Review Br. at 83. Instead, the Respondents argue that Mr. Barth confirmed for the first time in this investigation that the preserved copies do not reference the Barth I patents and infer that Rambus must have destroyed relevant copies in which those particular patents were referenced. See id. Respondents assertions notwithstanding, this is not a new fact. The 661 respondents raised essentially the same argument in their petition for review of the 661 ID, which addressed the same conception tree documents on which the 753 Respondents again rely: Mr. Barth also created a conceptual tree document that compared concepts necessary for high-performance memory systems to the claims of Rambus patents and patent applications. (Barth, Tr. 1048:1-1051:15.) The conceptual tree document included the Barth I and Barth II family of patents along with Mr. Barths understanding of what these patents covered. (Barth, Tr. 1092:20-25, 1055: 18-22.) Mr. Barths conceptual tree document was also kept in his filing cabinet. (Barth, Tr. 1055:13-17.) Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Respondents Petition for Review of Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond, EDIS Doc. ID 418745 at 60 (Feb. 12, 2010) (nVidia Petition); see also id. at 59-60 (arguing that Mr. Barth was unable to confirm whether copies of conception tree documents and other materials regarding the Barth I patents were preserved and produced by Rambus). Thus, the Respondents arguments concerning the conception tree documents were effectively considered and rejected by the Commission in the 661 investigation. Moreover, the surviving copies of the conception tree documents confirm that they merely provide a high-level identification of features in various patent applications. See, e.g., RX-2471C; Barth, Tr. 480:03-22. For example, one copy states that [t]his document merely contains references to various technology and is not an interpretation of the referenced patent, including but not limited to, the scope of the claim language. RX-2471C. OUII is unaware of PUBLIC VERSION

34 any evidence to suggest that the allegedly destroyed copies would have had more detail, or would otherwise have provided any relevant information regarding the validity, infringement, claim construction, and other disputed issues involving the Barth I patents. In fact, Mr. Barth testified that he was unaware of any unique documents conceptual tree or otherwise that called into question the patentability of the Barth I patents and have been destroyed. See Barth, Tr. 474:09-14, 475:09-13. As a result, the Respondents argument that other versions of the conceptual tree documents would necessarily have impacted the inventions ultimately claimed in the Barth I patents is speculative at best, and contradicted by both the preserved copies and by Mr. Barths testimony. Emails & JEDEC Meeting Minutes With respect to Mr. Barths emails and his personal copies of JEDEC meeting minutes, Mr. Barth testified in both investigations that he did not destroy his email, patent prosecution files, or prior art. Compare 661 Barth, Tr. 1103:25-1104:11 with 753 CX-10766C, Barth Rebuttal Q/A 25-68 and 753 Barth, Tr. 475:09-22. Even if one were to assume that someone else destroyed some of these documents after Mr. Barth left Rambus, his email would largely have been duplicative of other witnesses email with whom he regularly communicated, witnesses that along with Mr. Barth produced a considerable body of email in this investigation and in the 661 investigation. See, e.g., RX-435C (contains numerous emails referencing SyncLink, RamLink, and JEDEC and was an exhibit in 661); RX-440C (contains numerous emails referencing SyncLink, RamLink, and JEDEC and was an exhibit in 661); CX7243C (email from Mr. Barth regarding patent application covering the use of a strobe signal as claimed in the Barth I patents). Thus, there does not appear to be any new evidence of destroyed Barth I emails that could be used to support a finding of prejudice in this investigation.

PUBLIC VERSION

35 The Respondents assertion that Mr. Barth first revealed during cross examination in this investigation that he had access to JEDEC meeting minutes that have since been destroyed by Rambus is similarly without merit. See Resp. Review Br. at 85 (Respondents also learned from Barth on cross-examination that Rambus JEDEC representative, Richard Crisp, had provided him with copies of JEDEC meeting minutes, including minutes discussing Synclink, which is prior art to the Barth patents.). Mr. Barth previously testified on this issue in the 661 investigation as follows: Q And Rambus was a member of JEDEC while you were there? A During some portion of my time there, Rambus, I believe, was a JEDEC member, yes. Q And Richard Crisp was Rambus JEDEC representative? A I remember Richard going to JEDEC meetings. Q And he would attend those meetings on behalf of Rambus? A Presumably so. Q So Mr. Crisp would go to these meetings and he would come back and provide meeting minutes and notes to you, right? A He came by and dropped off various documents he acquired at the JEDEC meetings, yes. Q Dropped them off at your cubicle. A Thats correct. 661 Barth, Tr. 1084:04-20. Thus, Mr. Barths purportedly new testimony regarding JEDEC meeting minutes was not, in fact, new or otherwise unique to this investigation. Moreover, it is unclear how the Respondents were prejudiced by the alleged destruction of Mr. Barths JEDEC related materials. Many of the Respondents claim to have been JEDEC members, and thus would have had access to such documents to the extent that they ever existed. See Resp. Pre-trial Br. at 411. And the publicly available documents that were preserved and PUBLIC VERSION

36 produced in this investigation confirm that the Respondents JEDEC-based affirmative defenses fail as a matter of law. See, e.g., ID at 122-123 (rejecting the Respondents invalidity arguments involving SyncLink which was allegedly discussed during various JEDEC meetings); id. at 246247 (rejecting the Respondents inequitable conduct defense); id. at 317-321 (rejecting the Respondents equitable estoppel defense). Thus, there does not appear to be any new evidence of destroyed JEDEC-related materials that could be used to support a finding of prejudice in this investigation. Backup Tapes With Conception Documents Finally, the Respondents argue that the trial testimony of Rambus witnesses confirmed in this investigation that Mr. Barth had access to and used backup tapes that would have contained information useful for determining the conception date(s) of the inventions claimed in Rambus patent applications. See Resp. Review Br. at 84. However, the testimony on which the Respondents rely for this point appears to be directed at the non-asserted Farmwald-Horowitz patent family that was the sole focus of Rambuss patent enforcement efforts in the late 1990s. See Karp, Tr. 2015:25-2016:04, 2025:09-2017:14, 2034:07-2035:03; CX-10770C, Karp Rebuttal Q/A 30-33. Thus, the cited testimony does not raise any new issue involving the destruction of conception information involving the Barth I patent family, which was first asserted a decade later (in the 661 investigation). Moreover, it is unclear how the Respondents were allegedly prejudiced by Rambuss purported destruction of conception related information as conception was never truly in dispute -- Rambus did not attempt to antedate prior art based on an earlier conception date, or otherwise rely on its pre-filing activities. While Respondents imply that conception information is nonetheless relevant to their derivation-based invalidity defense under 35 U.S.C. 102(f) and

PUBLIC VERSION

37 their written description invalidity defense under 35 U.S.C. 112, the facts suggest otherwise. See Resp. Review Br. at 87. On derivation, the significant distinctions between SyncLink (and other allegedly prior art JEDEC technologies) versus the Barth I patents strongly suggest that the claimed invention(s) was not derived from JEDEC based technologies. See, e.g., infra Section V(A). Moreover, the Respondents access to such documents as JEDEC members or members of the public weighs against the likelihood that Rambus destroyed the sole copy of documents that would have addressed this shortcoming in their derivation defense. On written description, this defense is to be evaluated based on the four corners of the as-filed specification, which is undisputedly of record and which confirms the claimed inventions find adequate written description support for Section 112 purposes. See ID at 232-237 (rejecting the Respondents written description invalidity defense as to the Barth I patents). It is thus unclear how the allegedly destroyed conception documents could have materially impacted a claim or defense in this investigation. For at least these reasons, OUII respectfully submits that none of the purportedly new evidence pertaining to inventor Richard Barth that the Respondents have identified supports a prejudice finding in this investigation. 2. The Additional Deposition and Trial Testimony From Rambus Executives Does Not Show Prejudice

According to the Respondents, testimony from Rambus founder Mark Horowitz and from former Chief Executive Officer Geoff Tate confirm the breadth and extent of the destruction of materials from the files of persons at the highest level of Rambus and provide plausible, concrete suggestions of the types of documents e.g., emails on inventions, patents, competitive products or standards, and JEDEC that once existed but have since been destroyed. See Resp. Review Br. at 85. However, this new evidence is not unique to the 753 investigation.

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38 Rather, in the 661 investigation Rambus effectively conceded the fact that documents of this nature were indeed destroyed during one or more of the relevant shred days.14 Moreover, witnesses confirmed this fact by way of deposition and prior trial testimony admitted in the 661 record. See, e.g., 661 JX-93C, EDIS Doc. ID 555919 at 718:1-24, 719:1-24 (Tate depo transcript designations); 661 JX-55C, EDIS Doc. ID 537446 at 1309:07-24 (Tate transcript designations from Hynix trial). For at least these reasons, OUII respectfully submits that the alleged new evidence pertaining to Rambus executives does not in fact support a finding of prejudice in this investigation. 3. The Additional Testimony From In-house Counsel Neil Steinberg Does Not Show Prejudice

According to the Respondents, Rambuss former in-house counsel Neil Steinberg disclosed that due to the document retention policy, the Rambus litigation team could not find certain documents that would have connected Rambus 1990 patent application, the concurrent technology and DRAM and logic (controller) companies. Resp. Review Br. at 86 (citing Steinberg, Tr. 1249:13-16, 1249:24-1251:15). However, the cited portion of Mr. Steinbergs testimony was specifically directed at looking for documentation tying the original 1990 application from the Farmwald-Horowitz patent family, which Rambus was attempting to enforce in the late 1990s, to Rambuss concurrent RDRAM technology. See, e.g., Steinberg, Tr. 1249:24-50:03 ([W]e were trying to connect -- to collect that information to draw the
14

See, e.g., Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Complainant Rambus Inc.s Initial Post-Hearing Brief, EDIS Doc. ID 413996 at 77 (Nov. 5, 2009) (arguing that while a broad range of documents were indeed destroyed by Rambus personnel, none of the destroyed documents was relevant to the investigation); id. at 87 (admitting that Rambus conducted two shred days in 1998 and 1999); id. at 100 (admitting that Rambus erased backup tapes pursuant to its document retention policy); id. at 102-103 (admitting that Rambus destroyed a large volume of documents during its two shred days in 1998 and 1999). PUBLIC VERSION

39 connection between the 1990 application, the concurrent technology, and certain folks in the memory semiconductor industry.). Nothing in the cited testimony appears to suggest that Rambus destroyed or could not otherwise locate materials relevant to the Barth I patents which were first asserted a decade later in the 661 investigation. Nor would Mr. Steinberg have been aware of the extent to which Rambus destroyed such documents as he joined the company after the 1998 and 1999 shred days took place. See Steinberg, Tr. 1222:14-18, 1241:03-48:12. For at least these reasons, OUII respectfully submits that the alleged new evidence pertaining to in-house counsel Neil Steinberg does not in fact support a finding of prejudice in this investigation. 4. Conclusion

As discussed above and in OUIIs prior briefs, the evidentiary record of this investigation as it relates to unclean hands does not appear to be materially different from the 661 evidentiary record, which the Commission found inadequate to support a finding of prejudice, even under the Federal Circuits Micron precedent. OUII thus respectfully submits that the IDs finding of unclean hands, which is premised on its contrary finding of prejudice, should be rejected as inconsistent with the Commissions stated position in the 661 investigation. V. QUESTION 5 - INEQUITABLE CONDUCT (Barth patents) The Commission has requested briefing on four issues that generally relate to the IDs finding that the asserted Barth I patents are not unenforceable due to inequitable conduct arising out of the applicants failure to disclose SyncLink (RX-4270C) during prosecution of the 109 patent. See ID at 243-248; OUII Review Br. at 62-71. OUII addresses below certain of the private parties arguments in response to this question.

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40 A. SyncLink (RX-4270C) Is Cumulative With Farmwald-Horowitz (RX-4269)

In OUIIs view, one of the most significant shortcomings in the Respondents inequitable conduct defense involves the cumulative nature of SyncLink (RX-4270C) with FarmwaldHorowitz prior art (e.g., RX-4269) that was submitted during prosecution of the 109 patent, used by the Examiner to reject claims, and overcome by the applicants. See OUII Review Br. at 67-68; Rambus Review Br. at 71-72. Indeed, the Respondents appear to concede the fact that SyncLink (RX-4270C) and Farmwald-Horowitz (RX-4269) are similar in that the systems disclosed in both references use request packets to provide information to a memory device as part of a read or write operation:

RX-4269 at Figure 4 (above left, Farmwald-Horowitz request packet); RX-4270C.0043 at Figure 19 (above right, SyncLink request packet); Resp. Pet. at 33 (arguing that SyncLink and Farmwald-Horowitz are similar references). However, the Respondents nonetheless dispute the extent to which SyncLink is cumulative of the similar Farmwald-Horowitz prior art. See Resp. Review Br. at 67-69. OUII submits that the ID correctly rejected the Respondents position on this issue. See ID at 246-247. Specifically, the Respondents attempt to distinguish the request packet embodiments of SyncLink (RX-4270C) from those of Farmwald-Horowitz (RX-4269) based on SyncLinks disclosure of a flag signal that is transmitted to a memory device, whereas the analogous signal in Farmwald-Horowitz (i.e., the AddValid bit) is instead allegedly transmitted to an intervening PUBLIC VERSION

41 transceiver. See Resp. Br. at 69. According to the Respondents, [h]ad the Farmwald 755 disclosed the AddrValid bit without the presence of the intervening transceiver, the claims (in the form presently asserted) likely would never have issued. See id. In so arguing, the Respondents misinterpret Farmwald-Horowitz. As the Commission previously held in the 661 investigation, Farmwald-Horowitz (RX4269) discloses a TrncvrRW signal that is transmitted to an intervening transceiver, and differs from the asserted Barth I claims which require the signal be transmitted to a memory device. See 661 Commn Op., 2011 ITC LEXIS 2689 at *115-121; see also 661 ID at 81-82. By contrast, Farmwald-Horowitzs AddrValid bit is transmitted to a memory device, and thus cannot be distinguished from the asserted Barth I claims on this basis:

RX-4269 at Figure 2 (see ADDRVALID bit line coupled to memory devices 12-14); see also 661 ID at 50-52 (discussing AddrValid bit 27). The Respondents mistaken argument that the AddrValid bit 27 is transmitted to an intervening transceiver rather than a memory device does not distinguish Farmwald-Horowitz from SyncLink. The Respondents have thus failed to demonstrate error in the IDs finding that SyncLink is cumulative with Farmwald-Horowitz.

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42 As a cumulative reference, SyncLink cannot support a finding of inequitable conduct. See Leviton Mfg. Co. v. Universal Sec. Instruments, Inc., 606 F.3d 1353, 1359 (Fed. Cir. 2010) (quoting Larson Mfg. Co. v. Aluminart Prods., Ltd., 559 F.3d 1317 (Fed. Cir. 2009)) ([A] withheld otherwise material reference is not material if it is merely cumulative to, or less relevant than, information already considered by the examiner.). Thus, the Commission should affirm the finding in the ID that the Respondents failed to present clear and convincing evidence in support of their inequitable conduct defense. B. The ID Correctly Distinguished The Clock Signal In SyncLink (RX-4270C)

In an argument related to the flags/AddrValid issue discussed above, the Respondents further contend that SyncLink (RX-4270C) is functionally equivalent to preferred embodiments of the Barth I patents in that the SyncLink flag signal initiates the sampling of data (allegedly corresponding to the Barth I strobe signal) and the SyncLink strobe signal subsequently clocks in that data (allegedly corresponding to the Barth I clock signal). See Resp. Br. at 68. In this respect, the Respondents appear to be characterizing the signal termed a strobe in SyncLink as a clock signal (using the terminology of the Barth I patents) and the signal termed a flag in SyncLink as a strobe signal (again using the terminology of the Barth I patents). This latter part, i.e., whether the SyncLink flag qualifies as the Barth I strobe signal, is contrary to the weight of the evidence. More specifically, the weight of the evidence confirms the finding in the ID that the flags signal in SyncLink (RX-4270C) is analogous to the AddrValid bit of Farmwald-Horowitz (RX-4269). See discussion supra in Section V(A). This flag signal thus is not the claimed strobe signal of the Barth I patents for the same reasons discussed in the 661 ID with respect to the analogous AddrValid bit in Farmwald-Horowitz. See 753 ID at 122-123; 661 ID at 50-53; see also CX-10765C, Przybylski Rebuttal Q/A 413-418 (distinguishing the flag signal in PUBLIC VERSION

43 SyncLink from the strobe signal of the 353 and 405 patents). Because SyncLink does not disclose or suggest the claimed strobe signal, it likewise fails to disclose or suggest a system that is functionality equivalent to the strobe signal/clock signal embodiments of the Barth I patents. For these additional reasons, the Respondents have failed to show by clear and convincing evidence that SyncLink is material to the asserted Barth I patent claims. C. The 353 And 405 Patents Are Not Unenforceable Under The Doctrine Of Infectious Unenforceability

While similar in some respects to the signal limitation of the asserted 109 patent claims, the 353 and 405 patents recite an arguably narrower strobe signal limitation. See OUII Review Br. at 64-66. Question 5(d) appears to be premised on the assumption that this distinction between the 109 patent and the related 353 and 405 patents is significant should the Commission find SyncLink to be material solely to the signal limitation of the asserted 109 patent claims. See Notice at Question 5(d); OUII Review Br. at 68-71. The Respondents do not appear to have addressed this issue in their brief, even though they acknowledge the arguably different scope between the 109 and related 353 and 405 patents as construed by the PTO. See Resp. Review Br. at 67 ([T]he signal element of the 109 claims are broader in scope [as construed by the PTO] than the strobe signal elements of the 353 and 405 claims.). Rather, with respect to the 353 patent the Respondents argue that they have shown that SyncLink anticipates claims 11-13 of the 353 patent for the same reasons previously discussed with respect to the 109 patent. Resp. Review Br. at 69-70. To the contrary, SyncLink (RX4270C) fails to disclose or suggest the claimed strobe signal as discussed above in Sections IV(A) and (B). Thus, SyncLink does not anticipate any of the asserted 353 patent claims, and the Respondents have failed to show the materiality of this reference as it relates to the 353 patent.

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44 Turning to the 405 patent, the Respondents argue that overlapping disclosure between SyncLink and the Barth I specification is sufficient to show the materiality of SyncLink to the 405 patent. See Resp. Review Br. at 70 ([B]ecause SyncLink discloses the preferred, strobe embodiment of the Barth patents an embodiment also claimed in the asserted 405 patent claims the claims of the 405 patent should likewise be held unenforceable.). However, a proper inequitable conduct analysis necessarily focuses on the claimed invention, not the disclosed embodiments. See AGFA Corp. v. Creo Prods. Inc., 451 F.3d 1366, 1379 (Fed. Cir. 2006) (discussing situations in which the related patent claims subject matter sufficiently distinct from the application in which inequitable conduct took place so as to preclude a finding of infectious unenforceability). Thus, even if one were to assume that SyncLink and the Barth I specifications overlap to a certain extent, this fact alone cannot form the basis of a finding of infectious unenforceability regarding the narrower strobe signal claims of the 405 patent, which are materially different from the 109 patent claims for the reasons previously discussed. Finally, the Respondents imply that the materiality of SyncLink (RX-4270C) to both the 353 and 405 patents should be inferred from Rambuss intent to obtain patent coverage over SyncLink technology. See Resp. Br. at 70. However, the materiality and intent prongs of an inequitable conduct analysis are separate and must be separately proven one cannot infer materiality from intent, and vice versa. See Therasense Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) ([D]istrict court should not use a sliding scale, where a weak showing of intent may be found sufficient based on a strong showing of materiality, and vice versa.). Moreover, the Respondents requested inference is contrary to the weight of the evidence. The Farmwald-Horowitz patent family was a more likely candidate for obtaining coverage over SyncLink than the Barth I patent family given: (1) the cumulative nature of

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45 SyncLink with the disclosure in Farmwald-Horowitz (thus providing written description support for claims directed at SyncLink); and (2) SyncLink materials potentially predate the Barth I patents but not the Farmwald-Horowitz patents (thus insulating the Farmwald-Horowitz patents from a prior art challenge to SyncLink type claims that could potentially be made as to any such claims in the later Barth I patents). In short, neither the facts nor the law support the Respondents arguments that materiality should be inferred based on the alleged wrongful intent. For these additional reasons, OUII respectfully submits that the Commission should affirm the IDs rejection of the Respondents inequitable conduct defense as it relates to the 353 and 405 patents. VI. QUESTION 6 - DOMESTIC INDUSTRY The Commissions next question asks for briefing on the IDs finding that Rambus has made substantial investments in a licensing-based domestic industry as to the Barth I and Dally patents. See ID at 341-364; OUII Review Br. at 71-74. In response, the Respondents acknowledge that [t]he Commissions decision in Investigation No. 337-TA-694 set out the test to determine when portfolio licensing activities may constitute a substantial investment in licensing the asserted patents pursuant to Section 337(a)(3)(C), which the ID considered and applied. Resp. Review Br. at 89-90 (citing Certain Multimedia Display and Navigation Devices, Inv. No. 337-TA-694, Commn Op., 2011 ITC LEXIS 1416 (July 22, 2011) (Multimedia Display)); ID at 345-346 (summarizing Multimedia Display). Tellingly, this opinion favorably cites to the 661 DI Op. on the same Barth I patents reasserted in this investigation as exemplary

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46 of how an alleged portfolio-based licensing industry should be evaluated under a Multimedia Display type analysis.15 See OUII Review Br. at 71-74. After applying this precedent to the evidence of record, the ID found that Rambus has again shown a licensing-based domestic industry for many of the same reasons as set forth in the 661 DI Op. See OUII Review Br. at 71-74; see also ID at 347-364; Rambus Review Br. at 74-82. Because this precedent appears to be dispositive as to the allocation/domestic industry issue presented in Question 6 and because this precedent was properly considered and applied in the ID, OUII submits that the Commission should affirm the IDs finding of a licensing-based domestic industry. VII. QUESTION 7 - PATENT EXHAUSTION (Barth patents) The Commission has requested briefing on two issues that generally relate to the IDs finding that Rambus has exhausted its rights in the Barth I patents as to certain [ ] products

that include licensed Samsung memory devices. See ID at 330-339; OUII Review Br. at 75-80. On the first issue, i.e., whether licensed Samsung memory products substantially embody the Barth I patents, OUII respectfully submits that these products indeed substantially embody the asserted claims of the Barth I patents for reasons discussed in prior briefs submitted in this investigation as well as in the 661 investigation.16 On the second issue, i.e., what evidence of
15

In a Rule 28j letter to the Federal Circuit in which Multimedia Display is discussed at length, the Commission expressly rejected the Respondents position that the Commissions recent decision in the 694 Investigation has raised substantial doubt regarding whether Rambus portfolio licensing practice is sufficient to meet the domestic industry requirement. Resp. Remedy Br. at 5; OUII Review Pet. at 74 (summarizing the Commissions Rule 28j letter). Indeed, this position is nonsensical given Multimedia Display favorably cites to and relies upon the 661 DI Op. for several points. See OUII Review Br. at 73 (quoting excerpts from Multimedia Display in which the 661 DI Op. is cited and/or discussed).

See OUII Review Br. at 76-78; Resp. Review Br. at 92-95; Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Respondents Supplemental Brief Regarding Patent Exhaustion, PUBLIC VERSION

16

47 record demonstrates [ ] purchase of licensed Samsung memory products in the United

States, OUII respectfully submits that certain purchases satisfy the territoriality requirement for reasons discussed in prior briefs submitted in this investigation.17 The Commission should thus affirm the finding in the ID that Rambus has exhausted its rights in the Barth I patents as to a subset of the accused [ ] products. See ID at 330-339.

VIII. QUESTION 8 - STANDING (Dally patents) Finally, the Commission has requested briefing on two issues that generally relate to the IDs finding that Rambus has standing to enforce the Dally patents based on an exclusive license agreement with the owner of record with the USPTO, i.e., the Massachusetts Institute of Technology (MIT). See ID at 326-330; OUII Review Br. at 80-87. OUII addresses below certain of the private parties arguments in response to this question. A. The Evidence Of Record Fails To Show That Rambus Was On Inquiry Notice Of The MIT-UNC Subcontract Or Otherwise Unable To Rely On The Bona Fide Purchaser Provision Of 35 U.S.C. 261

According to the Respondents, [t]he ALJ incorrectly determined that Rambus had standing to assert the Dally patents even though the Dally inventions were indisputably reduced to practice at the University of North Carolina (UNC) and subject to automatic assignment to UNC. Resp. Review Br. at 96. OUII disagrees. As discussed individually below, each of the Respondents three primary arguments lacks merit. First, the Respondents argue that [g]iven the commonplace nature of assignment provisions in high-tech collaborations, Rambus should have asked what interest UNC had in the EDIS Doc. ID 427026 at 17 (June 7, 2010); Brief of the Office of Unfair Import Investigations on Issues Under Review, EDIS Doc. ID 427025 at 5-9 (June 7, 2010); Reply of the Office of Unfair Import Investigation on Issues Under Review, EDIS Doc. ID. 427487 at 7-10 (June 15, 2010).
17

See OUII Review Br. at 78-80; Resp. Review Br. at 95-96.

PUBLIC VERSION

48 Dally patents after learning that UNC personnel worked with Dr. Dally on reducing the claimed invention to practice. See Resp. Review Br. at 97. Yet, the Respondents cite no evidence of record for this proposition. Nor does the record contain evidence to suggest that a reasonable investigation into Dallys statements about his work at UNC, or his and Poultons statements about funding for the Fast Links project, would have led to the UNC subcontract and its automatic assignment provision. Id. at 98 (emphasis added). To the contrary, unrebutted testimony confirms that: (1) the UNC subcontract was not identified in any of the materials made available to Rambus prior to acquiring rights in the Dally patents; and (2) the UNC personnel that worked with Dr. Dally believed that UNC had no ownership rights in those patents.18 Thus, a reasonable investigation would not have led Rambus to discover the UNCMIT subcontract and UNCs alleged ownership claim to the Dally patents. Second, the Respondents argue that the bona fide purchaser provision of 35 U.S.C. 261 cannot be used offensively to support a complainants standing to assert a patent. See Resp. Review Br. at 99. However, the Federal Circuit held to the contrary in FilmTec. Corp. v. AlliedSignal, Inc., 939 F.2d 1568 (Fed. Cir. 1991) (FilmTec I); see also OUII Review Br. at 84-85 (discussing FilmTec I). To date, the Respondents have failed to identify any post FilmTec I

Dr. Poulton and Mr. Quigg of UNC admitted at trial that neither of them had informed Rambus (or any other party) that UNC was the true owner of the Dally patents in the critical timeframe. See Poulton, Tr. 1708:20-23, 1779:15-1780:02; Quigg, Tr. 2137:07-14. Dr. Poulton further testified that he believed that MIT was the true owner of the Dally patents. See Pouton, Tr. at 1749:02-06, 1779:03-14. Rambus employee Mr. Smith similarly testified that Rambus was unaware of the UNC-MIT agreement prior to this investigation. CX-10768C, Smith Q/A 611. Finally, Dr. Dally testified that he was aware of the subcontract but could not remember the details of that agreement. JX-032C at 76:18-77:01.

18

PUBLIC VERSION

49 precedent that addresses this issue or otherwise casts doubt on a complainants ability to avail itself of the bona fide purchaser provision of 35 U.S.C. 261.19 Finally, the Respondents argue that the bona fide purchaser provision of 35 U.S.C. 261 is inapplicable to circumstances in which title was purportedly acquired from a party who had already transferred away its rights. See Resp. Review Br. at 99 (citing FilmTec Corp. v. Hydranautics, 982 F.2d 1546, 1553 (Fed. Cir. 1992) (FilmTec II)). As explained in OUIIs prior brief, FilmTec II interpreted and applied the Saline Water Conversion Act of 1971, Pub. L. No. 92-60, 85 Stat. 159, which includes a provision that governs the ownership of inventions developed under that particular act. See OUII Review Br. at 85 (citing FilmTec II, 982 F.2d at 1548-51). FilmTec II did not apply to, and provides no relevant guidance on, the bona fide purchaser provision of 35 U.S.C. 261 that is at issue in this investigation. The Respondents arguments on this issue are thus without sound legal support. For at least these reasons, OUII respectfully submits that Rambus has standing to assert the Dally patents at least as a bona fide purchaser of exclusive licensee rights under 35 U.S.C. 261. B. Rambus Has Not Addressed Relevant Precedent On Laches

According to Rambuss brief, UNCs claim of ownership is barred by laches. See Rambus Review Br. at 97-99. However, Rambus does not address controlling precedent in which the Federal Circuit found that laches cannot be used to preclude a party from raising an

19

The only recent opinion that OUII is aware of that potentially supports the Respondents position is a non-binding opinion issued by the United States District Court for the District of Maryland. See Stemcells, Inc. v. Neuralstem, Inc., 2012 WL 1184545 (D. Md. Apr. 6, 2012). This opinion holds that the bona fide purchaser provision can only be used to defend against an infringement allegation, but it does not address the directly contrary FilmTec I opinion of the Federal Circuit. See id. at *13-15. Because a district court cannot overrule controlling Federal Circuit precedent, Stemcells should be given no weight.

PUBLIC VERSION

50 affirmative defense of lack of standing. See Stanford v. Roche, 583 F.3d 832, 838-839 (Fed. Cir. 2009), affd 131 S. Ct. 2188 (2011); OUII Review Br. at 86-87 (discussing same); Resp. Review Br. at 100 (discussing same). Rambuss failure to address this precedent is particularly disconcerting given it was prominently featured in post-trial briefing in this investigation. See, e.g., Resp. Reply Br. at 52-53. There being no apparent reason why the Commission should not apply Stanford in the context of this investigation, OUII respectfully submits that Rambuss laches arguments should be rejected. IX. REMEDY The Commission has requested briefing on the remedy that should be ordered, effects of that remedy (if any) on the public interest, and the amount of bond that should be imposed, in the event that a violation of Section 337 is found. See Notice at 5. OUII addresses below certain of the arguments raised by the private parties in their remedy briefs. A. A General Exclusion Order Is Not Warranted

According to Rambus, [a] general exclusion order is necessary because (1) a limited exclusion order will be easily circumvented by Respondents, and (2) there is a pattern of violation of Section 337 and it is difficult to identify the source of the infringing product. Rambus Remedy Br. at 1-2. OUII disagrees. Turning first to Rambuss arguments regarding circumvention under 19 U.S.C. 1337(d)(2)(A), Rambus has failed to identify any evidence of likely circumvention by any of the remaining parties to this investigation. Instead, Rambuss purported evidence focuses solely on MediaTek, which was terminated from the investigation pursuant to a settlement agreement with Rambus. See Rambus Review Br. at 3-4; Notice at 2 (granting a motion to terminate the investigation as to MediaTek and its customers Audio Partnership and Oppo Digital). There being no evidence to suggest that the remaining Supplier Respondents LSI and STM or their PUBLIC VERSION

51 customers will likely attempt to circumvent a LEO, Rambus has failed to show that a general exclusion order is warranted under this subsection. See 661 Commn Op., 2011 ITC LEXIS 2689 at *125 (rejecting Rambuss request for a general exclusion order due to a lack of evidence that Respondents have circumvented, or aim to circumvent, an LEO). With respect to Rambuss arguments regarding a pattern of violation of Section 337 and difficulty in identifying the source of infringing products under 19 U.S.C. 1337(d)(2)(B), Rambus argues that it could not have readily identified the source of infringing downstream products because [m]any Respondents . . . refused to provide information regarding the identity of customers during discovery. See Rambus Review Br. at 4. However, the two remaining Supplier Respondents LSI and STM identified their customers during the discovery period. See RX-5608C (LSI); RX-5640C (STM). Even if Rambus now believes that this discovery was deficient, it did not seek to compel further discovery or otherwise preserve this issue for appeal. Rambus has thus failed to show that a general exclusion order is warranted under this subsection. See 661 Commn Op., 2011 ITC LEXIS 2689 at *126 (rejecting Rambuss request for a general exclusion order because identifying the source of infringing goods in this case appears straightforward). For the reasons discussed above, Rambus has failed to establish that a GEO is warranted under 19 U.S.C. 1337(d)(2)(A) or (B). OUII respectfully submits that the Commission should decline to issue a GEO in the event that a violation of Section 337 is found. B. A Limited Exclusion Order Should Encompass All Downstream Products Of The Respondents That Include An Infringing Semiconductor Chip Manufactured By Or On Behalf Of LSI And/Or STM

Turning to the scope of the proposed LEO, the Respondents argue that [n]one of the downstream products should be excluded here because this investigation is about the accused

PUBLIC VERSION

52 semiconductor chips of . . . [Supplier Respondents] LSI [and] STMicro . . . not the Customer Respondents products. Resp. Remedy Br. at 8. Alternatively, the Respondents argue that, if the Commission deems it necessary to include such products, the LEO should not include any products that do not contain a semiconductor chip from the Supplier Respondents. Id. On the latter point, all of the parties appear to agree that the LEO should extend only to infringing semiconductor chips manufactured by or on behalf of LSI and/or STM, and to downstream products that incorporate such a chip.20 Thus, there is no dispute on this issue, and OUII has included language to this effect in its proposed exclusion order. On the former point, OUII respectfully submits that the ID appropriately rejected the Respondents argument, which is the focus of the discussion below. See ID at 372-373. According to the Respondents, [e]xcluding the downstream respondents products along with the semiconductor chips does little, if anything, to provide relief to Rambus and will be highly disruptive to legitimate trade in the United States. Resp. Remedy Br. at 9. However, Rambus receives considerable revenue from its licensing activities, which presumably would increase if downstream products incorporating unlicensed chips were excluded from the marketplace. See ID at 349 (discussing revenue attributed to licenses to the Barth I patents); 363 (discussing revenue attributed to licenses to the Dally patents). In fact, the Customer Respondents could theoretically switch to a licensed supplier (e.g., one or more of former Supplier Respondents nVidia, Freescale, Broadcom, and MediaTek who have settled with
20

See Rambus Remedy Br. at 5 (A proposed LEO directed to the accused products that contain an accused semiconductor chip from the Supplier Respondents is attached hereto as Exhibit B.); OUII Review Br. at 88 n. 50 (OUII notes that its proposed exclusion order is explicitly limited to semiconductor chips containing an infringing memory controller or transmitter circuit manufactured by or on behalf of Supplier Respondents LSI or STM, and downstream products containing same that are manufactured by or on behalf of any one or more of the remaining Respondents.) (emphasis in original).

PUBLIC VERSION

53 Rambus) in the event that LSI/STM based products are excluded from entry, which would drive business to Rambuss licensees and thereby benefit Rambus.21 Alternatively, the Respondents have stated that they can avoid exclusion of the accused products at least with respect to the Barth I patents without changing suppliers by obtaining a pre-negotiated license to the asserted patents, thereby directly providing Rambus with increased licensing revenue. See Respondents Pretrial Br. at 314. Thus, the weight of the evidence shows that exclusion of the downstream products would provide meaningful relief to Rambus and is unlikely to be disruptive to the marketplace. To the extent that the Respondents further argue that their downstream products should nonetheless be exempted from a LEO because Rambus has provided no analysis whatsoever regarding whether or to what extent to include downstream products in a LEO, this argument mischaracterizes the record and the pre-trial proceedings in this investigation. Resp. Remedy Br. at 9. Namely, the Customer Respondents have stipulated that they do not alter, change, or disable operation of the relevant functionality of the infringing chip in their products, presumably so as to avoid the expenses and inconvenience that would otherwise stem from the adjudication of this issue at trial and/or the production of relevant discovery into the structure and operation of their downstream products. See [ ]; EDIS Doc. ID 460973 at 3 (Cisco);

EDIS Doc. ID 460646 at 3 (ASUS); EDIS Doc. ID 460653 at 3 (HP); EDIS Doc. ID 454292 at 3 (Hitachi). Thus, the Customer Respondents effectively conceded that Rambus need not provide a product specific infringement analysis as to any of their accused products. The only evidence cited in the Respondents brief that purportedly addresses the viability of noninfringing components is the witness statement testimony of Respondents domestic industry expert Seth Kaplan. See Resp. Remedy Br. at 7 (citing RX-6288C, Kaplan Direct at Q/A 167). However, the cited portion of Mr. Kaplans testimony says nothing about the viability of licensed chips. Instead, that testimony is devoted entirely to Rambuss ability to identify the source of infringing products. See RX-6288C, Kaplan Direct at Q/A 167.
21

PUBLIC VERSION

54 To the extent that the Respondents rely on the testimony of their economic expert Dr.Vander Veen as support for exempting certain downstream products from a LEO, their reliance is misplaced. See Resp. Remedy Br. at 10. As an initial matter, Dr. Vander Veens testimony does not apply to Hitachi, who failed to provide timely notice of his opinions regarding the accused Hitachi products. See Tr. 92:20-98:16 (pretrial conference). Hitachi has since waived this issue by failing to petition for review of the exclusion of Dr. Vander Veens testimony as it relates to Hitachi. See 19 C.F.R. 210.43(b)(2) (Any issue not raised in a petition for review will be deemed to have been abandoned by the petitioning party . . . .). As for the remaining Customer Respondents, Dr. Vander Veen admitted at trial that he could not opine on the extent to which the infringing components within the downstream products contribute to the operation and functionality of those products. See Vander Veen, Tr. 1782:111783:25; ID at 372 to 373. He performed solely a quantitative analysis, and even this analysis is suspect given his: (1) use of inflated pricing information (Vander Veen, Tr. 1785:22-1791:13); (2) failure to distinguish certain downstream products (e.g., motherboards, server cards, hard drives, etc.) that are imported without being incorporated into larger downstream products (e.g., computers, servers, etc.) (Vander Veen, Tr. 1798:09-1801:07); and (3) assumption (without evidentiary support) that certain products for which he lacked pricing information can be treated the same as other products for which limited pricing information was provided (Vander Veen, Tr. 1801:08-1803:12). In OUIIs view, the ID thus properly considered and rejected Dr. Vander Veens testimony as it relates to this issue. See ID at 372-373. Finally, the Respondents argue that [t]he public interest factors, on balance, also weigh in favor of not including downstream products in an LEO. Resp. Remedy Br. at 13. In particular, the Respondents argue that [e]xcluding downstream products will negatively

PUBLIC VERSION

55 affect competitive conditions in the U.S. by taking downstream products off the market, thereby reducing product availability and consumer choice. Id. Yet, the Respondents cite no evidence to support this statement. Moreover, this statement is contrary to the Respondents prior assertion that they can avoid exclusion of at least the accused Barth I products by obtaining a pre-negotiated license to the Barth I patents. See Respondents Pretrial Br. at 314. This statement is also contradicted by the fact that licensed chips can be obtained from several manufacturers, including four of the six Supplier Respondents that were named in the Complaint and were at one point parties to this investigation. See Notice at 2 (explaining that the investigation has been terminated as to nVidia, Broadcom, Freescale, and MediaTek based on settlement and patent license agreements). In short, the weight of the evidence suggests that exclusion of the downstream products (based on their use of infringing chips from LSI and/or STM) will have little to no effect on competitive conditions in the United States, product availability, or consumer choice. For at least these reasons, OUII respectfully submits that the Commission should issue a LEO that encompasses all of the products of the remaining Respondents that include an infringing semiconductor chip manufactured by or on behalf of LSI or STM in the event that a violation of Section 337 is found.22 C. Cease and Desist Orders Are Appropriate As To Certain Respondents

The Respondents argue that cease and desist orders (C&Ds) are not warranted because Rambus has not adduced any evidence-for example, expert testimony-that any inventory level of the accused downstream products represent a commercially significant number. Resp.

22

Respondents assertions notwithstanding (Resp. Remedy Br. at 8 n.4), such an exclusion order should include STMicroelectronics N.V., which is responsible for the actions of its subsidiary corporations. See OUII Pet. Resp. at 95-96. PUBLIC VERSION

56 Remedy Br. at 14. The Respondents appear to particularly contest whether C&Ds are warranted as to Palit, Cisco, and STM. See id. at 14-15. OUII addresses each of these three entities in turn. Turning first to Palit, this particular entity was terminated from the investigation months ago. See Order No. 63 (Feb. 22, 2012) (terminating investigation as to Palit and other nVidia customer respondents). With none of the parties seeking a C&D as to entities that have since been terminated from the investigation, the Commission need not address the Respondents arguments as to Palit. An analogous issue exists with respect to Cisco and STM. Namely, Rambus no longer appears to seek a C&D as to either of these two Respondents. See Rambus Remedy Br. at 8 ([T]he Commission should issue a cease and desist order against Respondents Asus, Garmin, Hitachi, LSI, and Seagate.). In light of Rambuss decision not to pursue a C&D with respect to either Cisco or STM, there is no need for the Commission to address the issue as it relates to these two Respondents.23 With respect to the remaining Respondents -- Asus, [ ], Hitachi, LSI, and Seagate --

the evidence of record on commercially significant inventories appears to be analogous to the record before the Commission in the context of the 661 investigation in which it issued C&Ds as to similarly situated respondents. See, e.g., 661 Commn Op., 2011 ITC LEXIS 2689 at *11106 (cease and desist orders). In fact, Asus was one of the parties in the 661 investigation that received a C&D based on inventory levels involving a similar set of accused products. See id., 2011 ITC LEXIS 2689 at *63-72 (C&D as to Asus). OUII respectfully submits that a C&D as to

23

To be clear, OUII only seeks C&Ds as to the Respondents that Rambus has addressed in its remedy brief, i.e., Asus, [ ], Hitachi, LSI, and Seagate. See Rambus Remedy Br. at 8. OUII no longer recommends that the Commission issue a C&D as to other Respondents.

PUBLIC VERSION

57 these five Respondents is thus warranted for the same reasons in the event that a violation of Section 337 is found. See OUII Initial Br. at 92-93; Rambus Remedy Br. at 8-9; ID at 373-374. D. Bonding

If the Commission determines to enter an exclusion order and/or cease and desist orders in this investigation, the affected articles will still be entitled to entry and sale under bond during the 60-day Presidential review period. The amount of such bond must be sufficient to protect the complainant from any injury. 19 U.S.C. 1337 (j)(3); see also 19 C.F.R. 210.50(a)(3). In OUIIs view, a 2% bond is warranted. See OUII Review Br. at 95-97. The private parties arguments to the contrary are not meritorious for at least the reasons discussed below. 1. Rambus Has Failed To Show That A 100% Bond Is Warranted

According to Rambus, the Commission should set bond at 100% of entered value because any other bond, such as a reasonable royalty, would be manifestly unfair to Rambuss numerous legitimate licensees who have paid royalties for years while competing with the Respondents Accused Products. Rambus Remedy Br. at 11. This argument was previous made by Rambus in the 661 investigation, and rejected by the Commission. See, e.g., Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Complainant Rambus Inc.s Initial Post-Hearing Br., EDIS Doc. ID 413996 at 120 (Nov. 5, 2009) ([I]t is manifestly unfair to Rambuss numerous legitimate licensees who do manufacture and sell products in competition with the Respondents to merely charge Respondents essentially the same royalty rate these licensees have been paying for years.); 661 Commn Op., 2011 ITC LEXIS 2689 at *8 (setting bond at 2.65% of entered value despite Rambuss request for a 100% bond). There being no meaningful difference

PUBLIC VERSION

58 between the 661 and 753 investigations as they relate to this issue, OUII respectfully submits that the same reasoning applies here. 2. Respondents Arguments In Favor Of No Bond Or, Alternatively, That Bond Be Set Based On The Value Of An Accused Semiconductor Chip Should Be Rejected

According to the Respondents, no bond should be required because Rambus is a nonpracticing entity that will suffer no competitive injury during the presidential review period. See Respondents Remedy Br. at 16. Here again, this argument was made in the context of the 661 investigation, and rejected by the Commission. See, e.g., Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, Inv. No. 337-TA-661, Respondents Written Submission on the Issues on Review and on Remedy, Public Interest, and Bonding, EDIS Doc. ID 422325 at 160, (Apr. 6, 2010) ([B]ecause the sole intent of bonding is to offset the competitive advantage, no bond is required here because Rambus does not compete in the same market as NVIDIA or the other Respondents. Specifically, Rambus does not manufacture GPU s, chipsets, graphics cards, or computer systems.) (internal citations omitted) (nVidia Brief); 661 Commn Op., 2011 ITC LEXIS 2689 at *8 (setting bond at 2.65% of entered value despite the 661 respondents request for no bond). The Respondents alternative argument that any bond rate ordered by the Commission should be applied solely to the value of the infringing semiconductor chip rather than an accused downstream product was likewise made by the 661 respondents and rejected by the Commission. See Respondents Remedy Br. at 17 ([T]he bond paid should be consistently applied to the value of the accused component-not to the total value of the accused products themselves.). Specifically, nVidia argued to the Commission that: Rarnbuss Standard Controller License provides for a maximum 2.0% across-theboard royalty based on the sales price of the controller. The royalty is based on the net sales price of the memory controller and, when the memory controller is PUBLIC VERSION

59 integrated into other products, as is the case here with respect to all Respondents and all accused products, the 2.0% royalty is calculated as a percentage of the value of the controller alone (as opposed to the total product). nVidia Brief at 161. However, the Commission nonetheless imposed bond at a percentage of entered value of the accused product i.e., as opposed to a percentage of the value of the infringing semiconductor chip.24 See 661 Commn Op., 2011 ITC LEXIS 2689 at *132-133. There being no meaningful difference between the 661 and 753 investigations as they relate to this issue, OUII respectfully submits that the Respondents arguments on bonding should be rejected for the reasons set forth in the 661 Commn Op. E. The Public Interest

The Respondents did not include a separate section on public interest in their brief. Instead, they appear to address public interest factors solely in the context of whether downstream products should be included in an LEO. See Resp. Remedy Br. at 13. This argument lacks merit for the reasons discussed supra in Section IX(B). Rambuss arguments that the recommended relief is not contrary to the public interest are consistent with OUIIs position on this issue, and should be adopted by the Commission in the event that a violation of Section 337 is found. See Rambus Remedy Br. at 9-10; OUII Review Br. at 93-94. X. CONCLUSION As discussed above and in the OUII Review Br., OUII respectfully submits that the Commission should affirm the IDs conclusion that no violation of Section 337 exists as to any

Insofar as the Respondents dispute the exact percentage to be applied based on their view that Rambuss license agreements are unduly broad, their arguments similarly lack merit. See Resp. Remedy Br. at 16-17. License agreements of record in this investigation overlap with agreements that the Commission considered and relied upon as instructive in setting bond in the 661 investigation. See 661 Commn Op., 2011 ITC LEXIS 2689 at *132-133. The same reasoning thus applies as to the relevance of these agreements to the bond rate to be imposed in this investigation.

24

PUBLIC VERSION

60 of the asserted patents because the asserted claims are invalid as anticipated by or obvious in view of the prior art. The Commission should also affirm the IDs conclusion that a licensingbased domestic industry exists as to the Barth I and Dally patents, that the Barth I patents are not unenforceable due to inequitable conduct, that all of the accused products infringe asserted claims of the Barth I and Dally patents, and that Rambus has exhausted its rights as to a small subset of the accused [ ] products. OUII further submits that the Commission should affirm

the IDs conclusion that Rambus has standing to enforce the Dally patents, but add an alternative ground based on the bona fide purchaser provision of 35 U.S.C. 261. Finally, OUII respectfully submits that the Commission should reverse the IDs finding that the Barth I patents are unenforceable due to unclean hands. To the extent not already addressed above, all other conclusions reached in the ID should be affirmed. Finally, in the event that a violation of Section 337 is found, the Commission should issue a LEO directed at the accused products of the Respondents that include an infringing semiconductor chip manufactured by or on behalf of LSI. The Commission should also issue C&Ds directed at Respondents Asus, [ ], Hitachi, LSI, and Seagate, and set bond at 2% of

entered value for the presidential review period. Respectfully Submitted, /s/ Daniel L. Girdwood Lynn I. Levine, Director David O. Lloyd, Supervisory Attorney Daniel L. Girdwood, Investigative Attorney OFFICE OF UNFAIR IMPORT INVESTIGATIONS U.S. International Trade Commission 500 E Street S.W., Suite 401 Washington, D.C. 20436 Public Version: June 12, 2012 Conf. Version: June 1, 2012 202.205.3409 (ph) 202.205.2158 (fax)

PUBLIC VERSION

Certain Semiconductor Chips And Products Containing Same CERTIFICATE OF SERVICE

Inv. No. 337-TA-753

The undersigned certifies that on June 12, 2012, he caused the foregoing (PUBLIC VERSION) REPLY SUBMISSION OF THE OFFICE OF UNFAIR IMPORT INVESTIGATIONS TO THE NOTICE OF COMMISSION DETERMINATION TO REVIEW IN THE ENTIRETY A FINAL DETERMINATION FINDING NO VIOLATION OF SECTION 337to be filed with the Commission, served by hand (2 copies) on Judge Theodore R. Essex (including a courtesy .pdf copy to tamara.foley@usitc.gov), served by hand (1 copy) on Sidney Rosenzweig in the Office of the General Counsel (including a courtesy .pdf copy to sidney.rosenzweig@usitc.gov), and served upon the private parties (1 copy each) in the manner indicated below: Complainant Rambus Inc. Christine E. Lehman 901 New York Ave., N.W. Washington, D.C. 20001-4413 202.408.4000 (ph) 202.408.4400 (fax) ITC753-Service@finnegan.com Respondents Cisco Systems Inc. Thomas Pease c/o Quinn Emanuel 51 Madison Ave., 22nd Floor New York, N.Y. 10010 212.849.7000 212.849.7100 Via Email Via Email

Quinn-ITC-753@quinnemanuel.com ciscoITCclientTeam@winston.com (secondary counsel for Cisco) atessar@perkinscoie.com (secondary counsel for Cisco)

Respondents LSI Corp. and Seagate Technology Jonathan D. Link c/o Kilpatrick Townsend & Stockton LLP Suite 900 607 14th St., N.W. Washington, D.C. 20005 202.508.5800 (ph) 202.508.5858 (fax) lsirambusitc@kilpatricktownsend.com FM-LSI@fostermurphy.com Respondents ASUSTek Computer Inc., Asus Computer Intl Inc., and HewlettPackard Co., Andrew R. Kopsidas c/o Fish Richardson 1425 K Street, N.W. - 11th Floor Washington, D.C. 20005 202.783.5070 (ph) 202.283.7331 (fax) 337-753Fish@fr.com Respondents STMicroelectronics N.V. and STMicroelectronics Inc. Eric Rusnak c/o K&L Gates 1601 K Street, N.W. Washington, D.C. 20006 202.778.9000 (ph) 202.778.9100 (fax) STMicro_ITC753@klgates.com Via Email Via Email Via Email

Respondent Hitachi Global Storage Tech. Alexander J. Hadjis c/o Morrison & Foerster 2000 Pennsylvania Ave., N.W. Suite 600 Washington, D.C. 20006 202.887.1500 (ph) 202.887.0763 (fax) mofo753-service@mofo.com Respondent Garmin Intl Louis S. Mastriani c/o Adduci, Mastriani & Schaumberg LLP 1133 Connecticut Avenue, 12th Floor Washington, D.C. 20036 202.467.6300 (ph) 202.466.2006 (fax) GAR-3@adduci.com /s/ Daniel L Girdwood Office Of Unfair Import Investigations U.S. International Trade Commission 500 E Street, S.W., Suite 401 Washington, D.C. 20436 202.205.3409 202.205.2158 (Facsimile) Via Email Via Email