Case5:00-cv-20905-RMW Document4234 Filed01/11/13 Page1 of 8

1 2 3 4 5 6 7 8 9 10 11

Gregory P. Stone (SBN 078329) Fred A. Rowley, Jr. (SBN 192298) Jeffrey Y. Wu (SBN 248784) MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, 35th Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 Email: Gregory.Stone@mto.com Email: Fred.Rowley@mto.com Email: Jeffrey.Wu@mto.com Peter A. Detre (SBN 182619) MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105-2907 Telephone: (415) 512-4000 Facsimile: (415) 512-4077 Email: Peter.Detre@mto.com Attorneys for RAMBUS INC.

Rollin A. Ransom (SBN 196192) SIDLEY AUSTIN LLP 555 West Fifth Street, Suite 4000 Los Angeles, CA 90013-1010 Telephone: (213) 896-6000 Facsimile: (213) 896-6600 Email: rransom@sidley.com

12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
RAMBUSS SUPPLEMENTAL BRIEF RE REEXAMINATION PROCEEDINGS CASE NO. 00-20905-RMW

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

SK HYNIX INC., et al., Plaintiffs, vs. RAMBUS INC., Defendant.

CASE NO. CV 00-20905 RMW RAMBUS INC.S SUPPLEMENTAL BRIEF RE REEXAMINATION PROCEEDINGS Submitted pursuant to the Courts December 19, 2012 Order

Case5:00-cv-20905-RMW Document4234 Filed01/11/13 Page2 of 8

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Patent 5,915,105 6,034,918 6,324,120 6,378,020 6,426,916 6,452,863

Rambus respectfully submits this supplemental brief pursuant to the Courts direction at the December 19, 2012 hearing, that the parties brief the issues of (1) when Hynix could have filed ex parte reexamination requests relating to the patents tried in this matter, and (2) whether, and, if so, when, Hynix could have filed inter partes reexamination requests relating to those same patents. I. BACKGROUND Claims from six patents were tried during the Patent Trial. These patents, along with their application and issue dates, are set forth in the table below:

Application Date November 26, 1997 February 19, 1999 February 8, 2001 April 10, 2000 February 27, 2001 January 27, 2000

Issue Date June 22, 1999 March 7, 2000 November 27, 2001 April 23, 2002 July 30, 2002 September 17, 2002

The 105 and 918 patents were included in Hynixs original declaratory judgment complaint filed on August 29, 2000. The remaining four patents, the 120, 020, 916 and 863, were added in Rambuss amended counterclaim filed on November 25, 2002. II. HYNIX DELAYED IN FILING ITS REEXAMINATION REQUESTS A. Hynix Could Have Filed Ex Parte Reexamination Requests with Respect to Each Patent at Any Time after Issuance. Hynix could have filed requests for ex parte reexamination of each of the tried patents, as well as any other Rambus patent, at any time after the patent issued. 35 U.S.C.A. 302 (2001) (Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301 of this title.)1; Tr. (12/19/12) at 60:8-11 (Hynix counsel agreeing that there is no statutory restriction as
1

The statutory scheme for ex parte reexaminations has remained essentially unchanged since instituted by

-1-

RAMBUSS SUPPLEMENTAL BRIEF RE REEXAMINATION PROCEEDINGS CASE NO. 00-20905-RMW

Case5:00-cv-20905-RMW Document4234 Filed01/11/13 Page3 of 8

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

to when you can file [an ex parte] reexamination other than the fact that you cant file a reexamination later than six years after the patent expires.). Thus, by no later than September 17, 2002, when the last tried patent issued, Hynix could have filed ex parte reexamination requests for each of the six patents in suit. B. Hynix Could Have Filed Inter Partes Reexamination Requests with Respect to the 120, 020, 916, and 863 Patents at Any Time after Issuance. Inter partes reexamination became available as of November 29, 1999 for patents that issued from applications filed after that date. 35 U.S.C.A. 311 (2001), Historical and Statutory Notes. Hynix thus could have filed inter partes requests with respect to any Rambus patent with a post-November 29, 1999 application date at any time after the patent issued. 35 U.S.C.A. 311 (Supp. 2012) (Any third party requester at any time may file a request for inter partes reexamination by the Office of a patent . . . .). 2 For the four tried patents that issued from applications filed after November 29, 1999 the 120, 020, 916 and 863 patents Hynix could have filed an inter partes request for reexamination after each patent issued, and thus could have filed inter partes reexamination requests on all four patents no later than September 17, 2002, when the last of the four issued. Or, Hynix could have waited another month and a half, until the relevant statutes were amended, effective November 2, 2002, after which time Hynix could be assured that it would be able to appeal to the Federal Circuit if it suffered an adverse result in any inter partes reexamination. 35 U.S.C.A. 315 (Supp. 2012), Historical and Statutory Notes. Thus, at any time after these four patents were added to this case on November 25, 2002, Hynix could have filed requests for inter partes reexamination with Federal Circuit appeal rights. See Tr. (12/19/12) at 61:9-11 (Hynix counsel acknowledging that Hynix probably could have filed inter partes reexaminations on those four patents sometime in [] late 2002).

statute in 1980. See 35 U.S.C.A. 302-307 (Supp. 2012), Historical and Statutory Notes.
2

Inter partes reexamination has been replaced by the new inter partes review procedure as of September 16, 2012 pursuant to the America Invents Act. 35 U.S.C.A. 311 (Supp. 2012), Historical and Statutory Notes (indicating that amendments would take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011]).

-2-

RAMBUSS SUPPLEMENTAL BRIEF RE REEXAMINATION PROCEEDINGS CASE NO. 00-20905-RMW

Case5:00-cv-20905-RMW Document4234 Filed01/11/13 Page4 of 8

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

C.

Hynix Ultimately Filed Ex Parte Reexamination Requests in 2009 and 2010. Hynix could have filed ex parte requests on any of the tried patents, and inter

partes requests on four of them, at any time after the patents issued. But Hynix waited until 2009, over eight years after it filed this lawsuit, to file its first reexamination requests. In 2009, Hynix filed ex parte reexamination requests with respect to the 105 and 918 patents. See Rambuss Consolidated Opp. To Hynixs Motions filed 11/20/12 (Rambus Opp.), Dkt. #4193, at 8, 11.3 The following year, Hynix filed ex parte reexamination requests with respect to three other tried patents, the 120, 020, and 916 patents. Id. at 8-11. Hynix never filed inter partes reexamination requests with respect to any of these patents, even though it could have done so with full appeal rights any time after November 2, 2002. Hynix has never filed a reexamination request, ex parte or inter partes, with respect to the 863 patent. III. THE STANDARD FOR GRANTING REEXAMINATION DID NOT PREVENT HYNIX FROM FILING REEXAMINATION REQUESTS BEFORE OR AFTER MICRON AND SAMSUNG DID A. Hynix Could Have Filed Ex Parte Requests With Respect to Any of the Tried Patents Before or After Samsung and Micron Filed Their Requests on Some of Those Patents. The PTO will grant an ex parte reexamination request if it determines that a substantial new question of patentability affecting any claim of the patent concerned is raised by the request. 35 U.S.C. A. 303-04 (2001). The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office. 35 U.S.C.A. 303 (Supp. 2012). Under these standards, Hynix could have filed ex parte reexamination requests on any of the tried patents at any time. Indeed, Hynix did file ex parte reexamination requests in February 2009 on the 105 and 918 patents that had not previously been the subject of reexamination proceedings, and in May 2010 on the 120, 020, and 916 patents, even though Samsung and Micron had both

The timing of the relevant reexamination requests is shown in the timeline Rambus used at the hearing and submitted to the Court. See Ex. A to Letter from Gregory P. Stone to Judge Whyte, Dec. 26, 2012 (Dkt. No. 4228-1), at 3. Another copy of that timeline is attached as Exhibit A hereto for the Courts convenience.

-3-

RAMBUSS SUPPLEMENTAL BRIEF RE REEXAMINATION PROCEEDINGS CASE NO. 00-20905-RMW

Case5:00-cv-20905-RMW Document4234 Filed01/11/13 Page5 of 8

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

already filed inter partes reexamination requests with respect to those same patents. See Ex. A.4 The reexamination requests that Hynix ultimately filed included citations to art that had been previously considered by the PTO. For example, the ex parte reexamination request that Hynix filed with respect to the 120 patent relied on Novak (U.S. Patent No. 4,663,735) and Bennett (U.S. Patent No. 4,734,909). The former had been cited during the original prosecution of the patent and the latter had been previously cited by Micron in inter partes reexamination proceedings involving the same patent. See Hynixs Request for Ex Parte Reexamination (attached hereto as Exhibit B) at 8, 11, 16. Hynix argued, however, that substantial new questions of patentability were nevertheless raised because Novak allegedly was never appreciated nor considered on its merits, while Bennett had not been considered in combination with other prior art cited by Hynix. Id. B. Hynix Could Have Filed Inter Partes Requests With Respect to the 120, 020, 916, and 863 Patents Before or After Samsung and Micron Filed Their Requests. As with ex parte reexaminations, during the relevant time periods, the PTO would institute an inter partes reexamination proceeding if it determined that a substantial new question of patentability affecting any claim of the patent concerned is raised by the request. 35 U.S.C.A. 312-13 (2001).5 Again, like ex parte reexaminations, [t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office. 35 U.S.C. 312 (Supp. 2012). Hynixs counsel suggested during the hearing that, after Samsung and Micron filed their inter partes reexamination requests in late 2006 through early 2009, they had used up essentially all the best [art] and it becomes very difficult at that point to file yet another request for reexamination whether or not inter partes or ex parte and be able to raise a significant new
The reexamination requests that Hynix filed with respect to the 105, 918, 120, and 020 patents resulted in the tried claims being confirmed, while the PTO rejected Hynixs request with respect to the 916 patent on the ground that it did not in fact raise a substantial new question of patentability. Rambus Opp. at 8-12. For inter partes reexamination requests filed after September 16, 2011, the substantial new question of patentability standard was replaced by a requirement that there be a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. 35 U.S.C.A. 312 (Supp. 2012).
5 4

-4-

RAMBUSS SUPPLEMENTAL BRIEF RE REEXAMINATION PROCEEDINGS CASE NO. 00-20905-RMW

Case5:00-cv-20905-RMW Document4234 Filed01/11/13 Page6 of 8

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

question of patentability. Tr. (12/19/12) at 62:5-11. That does not explain why Hynix filed no inter partes reexamination requests in the more than six years between Hynixs complaint and the first Samsung request at issue, nor why Hynix failed to file a single inter partes request during the two-years-plus period when Samsung and Micron each filed separate requests on four of the tried patents. See Ex. A. In any event, as noted above, with respect to three of the four tried patents that were the subject of inter partes reexamination proceedings initiated by Samsung and Micron, Hynix did file additional reexamination requests purporting to raise substantial new questions of patentability. See MPEP 2642 (The substantial new question of patentability may be based on art previously considered by the Office if the reference is presented in a new light or a different way that escaped review during earlier examination.). Hynix could have made those precise arguments in requests for inter partes reexamination, but chose to file the requests ex parte rather than inter partes.6 Likewise, Hynix could have filed an inter partes request (or an ex parte request) with respect to the fourth patent at issue in Samsungs and Microns requests, the 863 patent, and argued that the art it cited raised a substantial new question of patentability even if the art had already been cited by Samsung and/or Micron. C. As a Result of Hynixs Delay, Had Hynix Initiated Inter Partes Proceedings, They Would Likely Have Been Dismissed or Suspended by the PTO. The explanation for Hynixs decision to file ex parte rather than inter partes reexamination requests with respect to the 120, 020, and 916 patents, and thereby forego the right to appeal the PTOs decisions, most likely lies in a concern with the statutory estoppel built into the inter partes reexamination scheme. Congress intended for inter partes reexamination to be an alternative to civil litigation, not a supplement that would give accused infringers two bites at the invalidity apple. See Rambus Opp. at 27. Under the controlling statutory scheme, an inter partes reexamination proceeding initiated by Hynix could not be maintained by the PTO [o]nce
Once the PTO has instituted an inter partes reexamination, the third party requester and its privies are barred from filing a subsequent request for inter partes reexamination until an inter partes reexamination certificate has issued. 35 U.S.C. 317(a) (2001). Hynix has, however, denied being in privity with Samsung or Micron.
6

-5-

RAMBUSS SUPPLEMENTAL BRIEF RE REEXAMINATION PROCEEDINGS CASE NO. 00-20905-RMW

Case5:00-cv-20905-RMW Document4234 Filed01/11/13 Page7 of 8

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

a final decision has been entered in this case that Hynix had not sustained its burden of proving the invalidity of the claims at issue. 35 U.S.C. 317(b) (Supp. 2012) (text of statute prior to Sept. 16, 2012). At the time that Hynix filed its reexamination requests with respect to the 120, 020, and 916 patents, a final judgment upholding the validity of the tried Rambus patent claims had been entered by this Court, Final Judgment, 3/10/09, Dkt. #3911, and Hynixs appeal to the Federal Circuit had been argued.7 Hynix was likely concerned that the Federal Circuit would uphold the validity of Rambuss claims as, in fact, it did well before an inter partes proceeding could be concluded. Hynix must also have been aware that the PTO could have suspended any inter partes reexamination proceeding Hynix initiated pending its appeal of this Courts validity ruling. Manual of Patent Examining Procedure 2686.04. Indeed, the PTO has stayed inter partes reexamination proceedings in analogous situations where the reexamination proceedings were only at their beginning stages, while the concurrent litigation was potentially near its final resolution and where the requester had chosen to permit the District Court litigation to proceed for three years before filing its requests for reexamination, the filing taking place only after judgment was entered in patent owners favor in the litigation. Id.; see also Sony Computer Enter. Amer. Inc. v. Dudas, 2006 WL 1472462 (E.D. Va. May 22, 2006) (upholding PTO decision to suspend inter partes reexamination pending Federal Circuit appeal where jury had rejected challenge to patent validity and request for inter partes reexamination had been filed on same day that district court denied post-verdict motions). In light of its lengthy delay in filing its reexamination requests, Hynix likely concluded that the PTO would suspend or dismiss any inter partes proceedings that it initiated and, so, chose to file ex parte requests with no opportunity to appeal if the PTO confirmed the claimsas it did. IV. CONCLUSION Hynix could have filed ex parte or inter partes reexamination requests at any time after the tried patents issued, before or after Samsung and Micron had filed their separate
The Federal Circuit appeal was initially argued on April 5, 2010, the month before Hynix filed its reexamination requests with respect to the 120, 020, and 916 patents, though the appeal was subsequently re-argued.
7

-6-

RAMBUSS SUPPLEMENTAL BRIEF RE REEXAMINATION PROCEEDINGS CASE NO. 00-20905-RMW

Case5:00-cv-20905-RMW Document4234 Filed01/11/13 Page8 of 8

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

requests. But Hynix chose to assert its invalidity arguments in this Court. Hynix first filed reexamination requests only on the eve of the Courts entry of Final Judgment, over eight years after it filed this action. Although four of the tried patents could have been subject to inter partes reexamination, Hynix never filed a single inter partes reexamination request. When Hynix did finally file reexamination requests, Hynix did so ex parte with no right of appeal, presumably recognizing that inter partes proceedings would likely not be maintained by the PTO as a result of Hynixs lengthy delay. Hynix should not be permitted to obtain indirectly (as a result of Micron and Samsungs filings) what it deliberately chose not to seek directly. Dated: January 11, 2012 MUNGER, TOLLES & OLSON LLP SIDLEY AUSTIN LLP

By: /s/ Gregory P. Stone Gregory P. Stone Attorneys for RAMBUS INC.

-7-

RAMBUSS SUPPLEMENTAL BRIEF RE REEXAMINATION PROCEEDINGS CASE NO. 00-20905-RMW