Case3:10-cv-04017-JSW Document63

Filed12/12/11 Page1 of 6

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18

Barbara Clarke McCurdy (Admitted Pro Hac Vice) barbara.mccurdy@finnegan.com Naveen Modi (Admitted Pro Hac Vice) naveen.modi@finnegan.com FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue, N.W. Washington, D.C. 20001 Telephone: (202) 408-4000 Facsimile: (202) 408-4400 Tina E. Hulse (CA Bar No. 232936) tina.hulse@finnegan.com FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 3300 Hillview Avenue Palo Alto, California 94304-1203 Telephone: (650) 849-6600 Facsimile: (650) 849-6666 Attorneys for Defendant Rambus Inc. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

INTERNATIONAL BUSINESS MACHINES CORPORATION, Plaintiff,

CASE NO. C 10-04017-JSW (Related Case: C 10-03736-JSW (terminated)) RAMBUS INC.S RESPONSE TO ORDER REGARDING SUPPLEMENTAL BRIEFING [DKT. NO. 61]

19 v. 20 RAMBUS INC., 21 Defendant. 22 23 24 25 26 27 28

RAMBUS RESPONSE TO ORDER RE SUPP. BRIEFING CASE NO. C 10-04017-JSW

Case3:10-cv-04017-JSW Document63

Filed12/12/11 Page2 of 6

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

The parties filed cross-motions for summary judgment on the sole issue in this case whether the Administrative Patent Judge (APJ) at the Board of Patent Appeals and Interferences (Board) of the U.S. Patent and Trademark Office (PTO) abused her discretion in denying Plaintiff International Business Machines Corporations (IBM) request to file seventeen motions related to adding Defendant Rambus Inc.s (Rambus) fifteen other patents and applications and over 500 claims to the involved interference. The Court recently issued an order requesting supplemental briefing. Order Regarding Supplemental Briefing [Dkt. No. 61] (Order). Specifically, the Court noted that both parties appear to agree that the PTO has discretion to determine whether a party may or may not file a motion. Id. at 1. But the Court also noted that 37 C.F.R. 41.121(a) is silent as to whether the PTO has discretion to authorize a party to file a miscellaneous motion, which is the form for a motion to add an application or patent to an interference. Id. at 1. Accordingly, the Court ordered the parties to clarify on what legal authority they rely for the proposition that the PTO has discretion to not allow a party to file a miscellaneous motion. Id. at 2. In short, there is ample legal authority to support the Boards discretion. The Code of Federal Regulations (the Rules), the PTOs comments on the Rules, and the Boards Standing Order governing interferences all support the understanding that opposed miscellaneous motions must be authorized by the APJ. I. ARGUMENT In its Order, the Court notes the difference in wording between 37 C.F.R. 41.121(a)(1)-(2) and 41.121(a)(3), and specifically the absence of an express statement regarding authorization to file a miscellaneous motion. However, a review of the related Rules, the PTOs comments on the Rules, and the Boards Standing Order governing interferences clarifies the requirement that IBM had to obtain authorization from the APJ to file its proposed miscellaneous motions. For example, the Standing Order clearly states that contested miscellaneous motions (like those requested by IBM) require prior Board authorization: Relief on the merits of a case must be sought through a substantive or responsive motion. Miscellaneous motions are for seeking procedural relief. All motions require prior Board authorization except unopposed miscellaneous motions, SO 123. -1RAMBUS RESPONSE TO ORDER RE SUPP. BRIEFING CASE NO. C 10-04017-JSW

Case3:10-cv-04017-JSW Document63

Filed12/12/11 Page3 of 6

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

Declaration of Tina E. Hulse in Support of Defendant Rambus Inc.s Motion for Summary Judgment [Dkt. No. 54] (Hulse Decl.), Ex. J 121 (emphasis added). The Standing Order stems from the Rules set forth in Part 41 of Chapter 37 of the Code of Federal Regulations. Like the Standing Order, the Rules support the Boards discretion to authorize or not authorize the filing of miscellaneous motions. For example, 37 C.F.R. 41.123(b)(1)(ii) similarly states that the movant must obtain Board authorization for any opposed miscellaneous motions: (b) Miscellaneous motions. (1) If no time for filing a specific miscellaneous motion is provided in this part or in a Board order: (i) The opposing party must be consulted prior to filing the miscellaneous motion, and (ii) If an opposing party plans to oppose the miscellaneous motion, the movant may not file the motion without Board authorization. Such authorization should ordinarily be obtained through a telephone conference including the Board and every other party to the proceeding. Delay in seeking relief may justify a denial of the motion. 37 C.F.R. 41.123(b)(1) (2006) (second emphasis added). Further, in its comments on both the proposed and final Rules, the PTO explained that filing miscellaneous motions requires prior Board authorization. Regarding proposed Rule 123(b), the PTO explained that a conference call is required before a miscellaneous motion is filed because most relief requested can be granted (or denied) in a conference call. 68 Fed. Reg. 66648, 66660 (Nov. 26, 2003). When the Rules were made final, the PTO provided its answers to various comments it had received on the new Rules. The PTO noted in response to one comment regarding miscellaneous motions that [a]n opposed motion must be authorized, 41.123(b)(1)(ii). 69 Fed. Reg. 49960, 49988 (Aug. 12, 2004). Thus, the PTO has been consistent throughout the Rules and the Standing Order that contested miscellaneous motions require prior authorization. 1 When IBM proposed filing these miscellaneous motions related to adding fifteen other Rambus patents and applications and over 500 claims to the interference, Rambuss counsel made clear that Rambus opposed the motions. See Hulse Decl., Ex. A at 36:1-11 (stating by Rambuss This distinction between contested and uncontested miscellaneous motions is likely why Rule 121(a)(3) is silent as to the requirement for authorization, unlike Rule 121(a)(1)-(2). -2RAMBUS RESPONSE TO ORDER RE SUPP. BRIEFING CASE NO. C 10-04017-JSW
1

Case3:10-cv-04017-JSW Document63

Filed12/12/11 Page4 of 6

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

counsel that there were many other reasons [the Rambus patents and applications are] not appropriately brought in, but since [the APJ is] not authorizing those motions, well save those arguments for another day). Thus, there can be no dispute that the motions were opposed, and, therefore, under the Rules, IBM was required to obtain authorization to file these seventeen opposed miscellaneous motions. A. IBM Fails to Cite Any Authority in Support of Its Position

In contrast to the authority above, IBM presents nothing but attorney argument to assert that it had an absolute right to file its miscellaneous motions. Plaintiff IBMs Submission in Response to Order Regarding Supplemental Briefing [Dkt. No. 62] (IBM Response) 5. Nothing in the Standing Order, the Rules, or the PTOs comments on the Rules suggests that the Board was obligated to hear IBMs miscellaneous motions. In addition to the legal authority discussed above, IBMs counsel and IBMs declarant both have interpreted the rules to require authorization for miscellaneous motions. For example, IBMs counsel has given presentations regarding interference motions practice and explicitly stated that [f]iling a motion is not a matter of right. Supplemental Declaration of Tina E. Hulse [Dkt. No. 58], Ex. K at Slide 3. And IBMs declarant, Mr. Andrew Metz, agrees that IBM had no such absolute right. In his declaration, Mr. Metz undercuts IBMs current position, stating: there is now no absolute right for any party to bring any motion, and under 37 C.F.R. 41.120(a)(i) [sic] motions are permitted only to the extent the Board authorizes. Declaration of Andrew Metz [Dkt. No. 56] (Metz Decl.) 26. IBM now attempts to discredit Mr. Metz by stating that to the extent his declaration is interpreted to be inconsistent with the law, it is not controlling. IBM Response 9. But IBMs disavowal of Mr. Metzs statements on authorizing motionswhich are consistent with the Boards Rules and Standing Ordermerely highlights the meritless nature of IBMs position. 2

It is also telling that IBM never argued to the APJ during the interference that it had an absolute right to file its motions to add the Rambus patents and applications, including in its Motions List that it submitted to the APJ to consider for authorization (Hulse Decl., Ex. D), during the conference call with the APJ to discuss which of the proposed motions would be authorized, or by requesting reconsideration of the APJs decision to not authorize the motions. -3RAMBUS RESPONSE TO ORDER RE SUPP. BRIEFING CASE NO. C 10-04017-JSW

Case3:10-cv-04017-JSW Document63

Filed12/12/11 Page5 of 6

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

Because it has no legal authority to support its position, IBM rehashes the attorney arguments made in its cross-motion for summary judgment, relying again on 37 C.F.R. 41.203(d) as alleged support that it has an unconditional right to suggest the addition of patents and applications to an interference. IBM Response 1-2. As Rambus explained in its Reply Brief, however, Rule 203(d) implies the contrary by stating that a party may suggest the addition of a patent or application to the interference. 37 C.F.R. 41.203(d) (emphasis added). Nothing in the rule suggests that the APJ must authorize such a motion. See Defendant Rambus Inc.s Reply in Support of Motion for Summary Judgment and Opposition to Plaintiff IBMs Cross Motion for Summary Judgment [Dkt. No. 57] at 9-11. B. IBMs Interpretation of Rule 123(b) Is Unsupported

IBM acknowledges that Rule 123(b)(1)(ii) expressly states that contested miscellaneous motions require prior Board authorization. IBM, however, attempts to distinguish this rule from the present case by asserting that the rule was only intended for filing miscellaneous motions that arise following the initial conference call with the APJ. IBM Response 4. Once again, IBM fails to cite any legal authority in support of its attorney argument. This failure is not surprising because nothing in the language of the Rules, the PTOs comments on the Rules, or the Boards Standing Order imposes such a limitation on the Boards discretion. Rather, the PTO simply stated that Rule 123(b) would provide requirements for miscellaneous motions. 68 Fed. Reg. at 66660. The PTO made no distinction between miscellaneous motions requested before or after the initial conference call, as IBM suggests. IBM also convolutes Rule 123(b)(1)(ii) in an attempt to import a prejudice requirement into the analysis. See IBM Response 5-8. IBM argues that because an unopposed miscellaneous motion does not require authorization, the rule was intended to safeguard only the interests of a party that might be prejudiced by the filing of a miscellaneous motion. Id. 5 (emphasis in original). However, nothing in the plain language of the Rule suggests the prejudice requirement IBM advocates, and IBM again fails to cite any authority that supports its interpretation of the rule. Id. The rule, the comments on the rule, and the Standing Order only state that authorization is needed if Rambus opposes IBMs motions. No qualification of that oppositionespecially not the -4RAMBUS RESPONSE TO ORDER RE SUPP. BRIEFING CASE NO. C 10-04017-JSW

Case3:10-cv-04017-JSW Document63

Filed12/12/11 Page6 of 6

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

one suggested by IBMis enumerated. As explained above, Rambus opposed the motions and expressed its opposition during the teleconference with the APJ. See supra pp. 2-3. Thus, the motion was opposed, IBM was required to request authorization to file its miscellaneous motions, and the APJ properly exercised her discretion in rejecting IBMs request. Because there is no prejudice requirement for determining whether authorization is necessary, IBMs arguments regarding prejudice are irrelevant. II. CONCLUSION In sum, the rules governing interferences are clear. Contested miscellaneous motionslike the motions requested by IBM in the interferencerequire prior Board authorization. 37 C.F.R. 41.123(b)(1)(ii); 68 Fed. Reg. at 66660; 69 Fed. Reg. at 49988; Hulse Decl., Ex. J 121. Accordingly, the Board had full legal authority to not authorize IBMs requested motions to add the Rambus patents and applications to the interference below. Respectfully submitted, Dated: December 12, 2011 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. By: /s/ Tina E. Hulse Tina E. Hulse (CA Bar No. 232936) tina.hulse@finnegan.com FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 3300 Hillview Avenue Palo Alto, California 94304-1203 Telephone:(650) 849-6600 Facsimile: (650) 849-6666 Barbara Clarke McCurdy (Admitted Pro Hac Vice) barbara.mccurdy@finnegan.com Naveen Modi (Admitted Pro Hac Vice) naveen.modi@finnegan.com FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue, N.W. Washington, D.C. 20001 Telephone:(202) 408-4000 Facsimile: (202) 408-4400 Attorneys for Defendant, Rambus Inc.

-5-

RAMBUS RESPONSE TO ORDER RE SUPP. BRIEFING CASE NO. C 10-04017-JSW