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UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

NOTICE OF ENTRY OF

JUDGMENT ACCOMPANIED BY OPINION

OPINION FILED AND JUDGMENT ENTERED: 09/24/2013

The attached opinion announcing the judgment of the court in your case was filed and judgment was entered on

the date indicated above. The mandate will be issued in due course.

Information is also provided about petitions for rehearing and suggestions for rehearing en banc. The questionsand answers are those frequently asked and answered by the Clerk's Office.

Costs are taxed against the appellee in favor of the appellant under Rule 39. The party entitled to costs isprovided a bill of costs form and an instruction sheet with this notice.

The parties are encouraged to stipulate to the costs. A bill of costs will be presumed correct in the absence of atimely filed objection.

Costs are payable to the party awarded costs. If costs are awarded to the government, they should be paid tothe Treasurer of the United States. Where costs are awarded against the government, payment should be made tothe person(s) designated under the governing statutes, the court's orders, and the parties' written settlementagreements. In cases between private parties, payment should be made to counsel for the party awarded costs or, if

the party is not represented by counsel, to the party pro se. Payment of costs should not be sent to the court. Costsshould be paid promptly.

If the court also imposed monetary sanctions, they are payable to the opposing party unless the court's opinionprovides otherwise. Sanctions should be paid in the same way as costs.

Regarding exhibits and visual aids: Your attention is directed Fed. R. App. P. 34(g) which states that the clerkmay destroy or dispose of the exhibits if counsel does not reclaim them within a reasonable time after the clerk givesnotice to remove them. (The clerk deems a reasonable time to be 15 days from the date the final mandate is issued.)

FOR THE COURT

/s/ Daniel E. O'Toole

Daniel E. O'TooleClerk

cc: James R. BarneyJ. Michael JakesNathan K. KelleyWilliam LaMarca

Molly R. SilfenCoke Stewart

12-1634 - Rambus Inc. v. ReaUnited States Patent and Trademark Office, Case No. 95/001,134

Case: 12-1634 Document: 48-1 Page: 1 Filed: 09/24/2013 (1 of

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United States Court of Appeals

for the Federal Circuit______________________

RAMBUS INC.,Appellant,

v.

TERESA STANEK REA, Acting Director, UnitedStates Patent and Trademark Office,

Appellee.______________________

2012-1634______________________

Appeal from the United States Patent and TrademarkOffice, Board of Patent Appeals and Interferences inReexamination No. 95/001,134.

______________________

Decided: September 24, 2013

______________________

JAMES R. BARNEY, Finnegan, Henderson, Farabow,

Garrett & Dunner, LLP, of Washington, DC, argued for

appellant. With him on the brief were J.MICHAEL JAKES

and MOLLYR.SILFEN.

WILLIAM LAMARCA, Associate Solicitor, United States

Patent and Trademark Office of Alexandria, Virginia,

argued for appellee. With him on the brief were NATHANK.KELLEY, Deputy Solicitor, and COKE MORGAN STEWART,

Associate Solicitor.


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RAMBUS INC. v. REA2

______________________

Before MOORE,LINN,and OMALLEY,Circuit Judges.

MOORE,Circuit Judge.

Rambus Inc. appeals from the decision of the Board of

Patent Appeals & Interferences (Board) holding invalidvarious claims of U.S. Patent No. 6,260,097 (097 patent)for anticipation and obviousness. Rambus challenges theBoards claim construction and its obviousness decision.

Because the Board correctly construed the claims buterred in its obviousness decision, we affirm-in-part,

vacate-in-part, and remand.

BACKGROUND

This case relates to memory circuits known as dynam-

ic random-access memory (DRAM). Conventional memorycircuits transfer all of the data upon request, asynchro-

nously. Each transfer can tie up the computer system forextended periods of time and create a bottleneck that

slows down computer operations.

The 097 patent solves this problem using a synchro-

nous memory system to transfer the data. In synchronous

systems, a clock signal that alternates between a digitalvalue of 0 and 1 synchronizes the operations within thesystem. The change in the clock signal from a 0 to a 1 is

referred to as the rising edge of the clock, and thechange in the signal from a 1 to a 0 is referred to as the

falling edge of the clock. Figure 14 of the 097 patent

depicts an exemplary clock signal:

In conventional synchronous memory systems, the da-

ta transmitted to the memory ties up the system for a fullcycle of the clock signal. In contrast, the 097 patent


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RAMBUS INC. v. REA 3

claims what Rambus refers to as the dual-edge / double-data-rate functionality because the system transfers data

at twice the rate by employing both the rising and fallingedges of the clock signal. Specifically, the invention

separates the data into multiple portions and then trans-fers a portion during the rising edge of the clock signal

and a portion during the falling edge of the clock signal.097 patent, at [57]. Claim 1 of the 097 patent is repre-sentative of the claims at issue:

A method of controlling a synchronous memory

device . . . compris[ing]:

issuing a write request to the memory device . . . ;

providing a first portion of data to the memory

device synchronously with respect to a rising edgetransition of an external clock signal; and

providing a second portion of data to the memory

device synchronously with respect to a falling

edge transition of the external clock signal.

097 patent claim 1 (emphases added). The United StatesPatent and Trademark Office (PTO) initiated an inter

partes reexamination of the 097 patent claims and ulti-

mately found that the reexamined claims were not pa-tentable over two references: Unexamined JapanesePatent Application No. 56-88987 (Inagaki) and the Intel

iAPX system manual and specification (iAPX).

The following facts regarding Inagaki and iAPX arenot in dispute. Inagaki discloses a memory system that

transmits one bit during each half-cycle of the externalclock. J.A. 295558. The half-cycle system disclosed inInagaki is a modification of a conventional full-cyclesystem. Id. Inagaki achieves the half-cycle functionality

by generating two clock signals based on the rising and

falling edge of the external clock. Id. The two internalclock signals, in turn, synchronize the transfer of data

during the two halves of the system clock cycle. Id.


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RAMBUS INC. v. REA4

The iAPX manual and specification disclose a systemthat transfers data based on the rising or falling edges of

two system clocks. J.A. 3285, 3331. The system, howev-er, utilizes the full clock cycle for each data transfer. Id.

Thus, because the iAPX system employs a full clock cycleto transfer data to the memory device, the system cannot

use both edges of the clock signal to synchronize thetransfer of data portions to memory. However, Inagakidiscloses a mechanism for converting a conventional full-

cycle system into a half-cycle system. J.A. 295558.

The examiner rejected claims 1, 2, 7, 8, 10, and 14 asanticipated by Inagaki and rejected claims 15, 7, 8, 10

12, 14, 26, 2832, and 35 as obvious in light of the iAPXsystem in view of Inagaki. The Board upheld the examin-

ers rejections. Rambus appeals. We have jurisdictionunder 28 U.S.C. 1295(a)(4)(A).

DISCUSSION

I.Applicable Law

We review the Boards factual findings for substantialevidence and its legal conclusions de novo. In re Kotzab,

217 F.3d 1365, 1369 (Fed. Cir. 2000). Whether a claimwould have been obvious under 35 U.S.C. 103(a) is a

legal conclusion based on underlying factual determina-tions. Id. The factual determinations include (1) thescope and content of the prior art; (2) the differencesbetween the claims and the prior art; (3) the level of

ordinary skill in the art; and (4) objective evidence ofnonobviousness. Graham v. John Deere Co. of Kansas

City, 383 U.S. 1, 1718 (1966). [W]hether there is areason to combine prior art references is a question offact. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688

F.3d 1342, 1367 (Fed. Cir. 2012).

[C]laim construction by the PTO is a question of lawthat we review de novo . . . . In re Baker Hughes Inc., 215F.3d 1297, 1301 (Fed. Cir. 2000). While claims are


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generally given their broadest possible scope duringprosecution, the Boards review of the claims of an expired

patent is similar to that of a district courts review. In reRambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (citations

omitted).

II.Anticipation

The Board upheld the examiners finding that Inagakianticipates a number of the 097 patent claims. As part ofthat decision, the Board construed the terms external

clock signal and write request. Rambus challenges theBoards construction of these claim terms.

A. External Clock SignalThe Board held that the external clock signal only

requires the clock to be periodic during the data input

phases, as opposed to being periodic for all system opera-tions. Rambus, Inc. v. Nvidia Corp., No. 2012-000171

(B.P.A.I. June 11, 2012) (Board Opinion). It reachedthis construction based on the established industry mean-ing of the term clock and the failure of the specificationto disclose a computer clock that runs forever or that

cannot be turned off. Id. at 7-8.

Rambus contends that the intrinsic record requiresthe external clock signal to be continuously periodic. Itargues that the claims contain this requirement because

they recite a synchronous memory device, and a clocksignal synchronizes all operations in a synchronous

device. Rambus contends that, consistent with theclaims, the specification only discloses a periodic clocksignal. Lastly, Rambus argues that, during prosecution ofa related patent, the inventors distinguished the prior art

on the basis that it did not teach a periodic clock signal.

The PTO counters that the claim language requires

only that the memory device receive data synchronouslywith respect to a rising edge transition and the fallingedge transition of an external clock signal. According


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RAMBUS INC. v. REA6

to the PTO, this language shows that the external clocksignal synchronizes data transfer and need not be period-

ic for all time.

We agree with the PTO. The claimed clock signal

synchronizes data transfer to the memory device. Theclaimed method provides a first portion of data synchro-nously with respect to a rising edge transition of anexternal clock signal and then provides a second portion

of data synchronously with respect to a falling edgetransition of the external clock signal. 097 patent claim

1. Thus, while the external clock signal must be period-ic during data transfer, nothing in the claim language

requires the signal to be periodic for all time. The specifi-cation also shows that the external clock signal is periodic

during the transfer of data. Id. fig. 14. Nothing in thespecification limits the external clock signal to a clock

that is periodic for all time. Nor does the prosecutionhistory upon which Rambus relies require a narrowerconstruction. There, consistent with the plain language ofthe claims, the inventors explained that the external

clock signal is a periodic signal used to orchestratetiming events. J.A. 2700 n.2 (emphasis omitted). Ac-

cordingly, we conclude that the Board properly construed

the term external clock signal.B. Write Request

The Board concluded that the claimed write requestcould include the state of a signal, which is usually

represented by a single bit. Board Opinion at 1113. TheBoard held that its construction comported with ourholding in a prior case involving the same family of pa-tents as the 097 patent, Rambus Inc. v. Infineon Technol-ogies AG, 318 F.3d 1081, 1093 (Fed. Cir. 2003). In thatcase, we construed the term write request to mean a

series of bits used to request a write of data. Id.Rambus argues that the Board erroneously construed

write request to cover conventional, transition-based


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control signals and disregarded our construction fromInfineon. It asserts that the specification clearly shows

that a write request includes multiple bits because eachrequest carries at least two pieces of information.

The PTO responds that the Board properly declined tolimit the term write request to a sequence of multiplebits. It argues that the plain and ordinary meaning of theterm allows for a one-bit signal. The PTO also points to

the specifications disclosure of an embodiment in which asingle bit determines whether the system requests a read

operation or a write operation. Lastly, the PTO arguesthat the Boards construction is not inconsistent with the

construction in Infineon because that case did not decideif such a series of bits could include one bit or a signal.

We agree with the PTO that the Board correctly con-

strued write request. As an initial matter, we do notfind that the Board disregarded our construction in In-

fineon. In Infineon, the dispute centered on the accusedinfringers contention that the claimed request mustinclude both address and control information. 318 F.3d at1091. We rejected that argument. Id. at 109193. At no

point did we resolve the claim-scope dispute presented inthis appeal: whether the write request can be a single

bit. Indeed, it appears that the parties in Infineon did notdispute the series of bits portion of the district courtsclaim construction, id. at 109192, and we generallydecline to raise an issue sua sponte that the parties have

not presented, WMS Gaming Inc. v. Intl Game Tech.,184 F.3d 1339, 1347 n.2 (Fed. Cir. 1999).

We conclude that write request is not limited to amultiple-bit request. The plain language of the claim

does not contain that requirement. The claims require awrite request be issued to the memory device and that,

in response to the request, the device sample portions ofdata. 097 patent claim 1. Moreover, the specificationexpressly discloses that write request can be embodied


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RAMBUS INC. v. REA8

in a single bit. 097 patent col. 9 ll. 3864. The specifica-tion discloses a preferred embodiment in which a single

bit acts as a Read/Write switch: if its value is a 1, thesystem requests a read; if its value is a 0, the system

requests a write. Id. A claim construction that excludesthe preferred embodiment is rarely, if ever, correct and

would require highly persuasive evidentiary support.Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp.v. Conceptronic, Inc., 90 F.3d 1576, 158384 (Fed. Cir.

1996)). There is no such evidentiary support here, andRambus points to nothing in the intrinsic record that

limits the claims to multi-bit requests. We conclude that

the Board properly construed write request.

* * * * *

Because the Board correctly construed the externalsignal and write request limitations, we affirm the

Boards finding that Inagaki anticipates claims 1, 2, 7, 8,

10, and 14 of the 097 patent.

III.Obviousness

The Board held that the reexamined claims wouldhave been obvious in view of iAPX in combination with

Inagaki. The Board concluded that one of skill in the artcould have modified the existing circuitry in the iAPXsystem to use both edges of the clock signal to transferdata at twice the rate based on Inagaki. Board Opinion at

2128. The Boards particular findings, however, differedfrom those of the examiner. The examiner found that one

of skill in the art would have been motivated to modifythe iAPX system to transfer data on both the rising andfalling edges of the clock signal because the system doesnot show that all edges are used. J.A. 1113. All parties

appear to agree on appeal that this fact finding was

erroneous and that iAPX employs both the rising andfalling edges.


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The Board found that a skilled artisan easily couldhave modified the iAPX system in view of Inagakis clock-

ing scheme by dropping, instead of replacing, manyfunctions. Board Opinion at 24. It found that a skilled

artisan could have achieved data transfer on both clockedges by using a slower clock in Inagaki as a trigger for

the faster clocks disclosed in iAPX. Id. at 2425. TheBoard provided a number of reasons why skilled artisanswould modify the iAPX system to hold data for less thanone full cycle, enabling it to transfer data on both the

rising and falling edges of its clocks. Id. at 2527.

The Board then addressed Rambuss objective evi-

dence of nonobviousness, concluding that it lacked anexus to the 097 patent claims. Id. at 2832. The Board

found that Rambuss evidence was not commensuratewith the scope of the claims and related to claim limita-

tions that were disclosed in the prior art. Id. The Boardfound that Rambuss licensing evidence lacked a nexusbecause it is well established that competitors havemany reasons for taking licenses which are not necessari-

ly related to unobviousness (i.e., litigation costs, etc.). Id.at 30.

Rambus argues that the Board erred in its obvious-

ness decision. It contends that the Board erroneouslyplaced the burden on Rambus to demonstrate nonobvi-ousness. It asserts that, rather than rely on the examin-ers flawed findings, the Board relied on unsubstantiated

conjecture that one could combine iAPX and Inagaki intoan operable system. Rambus contends that the reference

actually teaches away from using both clock edges totransfer data. It argues that strong objective evidence ofnonobviousness, including praise for the dual-edge func-tionality in industry publications and the licensing of the

097 patent, supports a conclusion that the claims would

not have been obvious.


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RAMBUS INC. v. REA10

The PTO counters that the Board properly held thatthe claims would have been obvious. It contends that the

only claim limitation that iAPX does not disclose is thesynchronous writing of data to memory during the rising

and falling edges of a clock signal. It argues that Inagakiexpressly discloses that missing feature. The PTO argues

that a skilled artisan would have combined iAPX andInagaki because, even if the combination required furthermodifications to the combined system, both referencesseek to increase the speed and efficiency of memory-

writing operations. Regarding Rambuss arguments thatthe Board improperly relied on its own conjecture, the

PTO asserts that the Board is entitled to make its own

fact findings when interpreting prior art references and ispermitted to rely on common sense.

The PTO contends that Rambuss objective evidence of

nonobviousness cannot overcome the strong showing ofobviousness. It asserts that Rambuss evidence lacks anexus to the 097 patent claims because the claims do notrequire a specific clock speed. The PTO further argues

that Rambuss patent licenses were not cogent evidence ofcommercial success because they involved a portfolio of

patents, not simply the 097 patent. It argues that Ram-

bus never showed that the value exchanged in the licens-es was tied to the value of the invention claimed in the097 patent, as opposed to the other patents in the portfo-

lio or the licensees desire to avoid litigation costs.

We agree with Rambus that the Board committedmultiple errors in its obviousness decision. Due to these

errors, we vacate the Boards decision and remand forfurther proceedings. We address each of these errors

below.

A. Burden of Proof

The Board erroneously placed the burden on Rambusto prove that its claims were not obvious. In reexamina-tion proceedings, a preponderance of the evidence must


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show nonpatentability before the PTO may reject theclaims of a patent application. Ethicon, Inc. v. Quigg,

849 F.2d 1422, 1427 (Fed. Cir. 1988); see alsoIn re Jung,637 F.3d 1356, 136566 (Fed. Cir. 2011) (explaining that

while the applicant must identify to the Board what theexaminer did wrong, . . . the examiner retains the burden

to show invalidity). The Board instead concluded thatRambus ha[d] not demonstrated that skilled arti-sans . . . would not have been able to arrive at the broadlyclaimed invention. Board Opinion at 27; see also id. at

24 (holding that Rambus fail[ed] to present evidence thatskilled artisans would have been unable to modify iAPX

to achieve the claimed invention). That was legal error.

B. New Fact Findings

The Board also exceeded its limited role to review of

the examiners decisions during prosecution. In re Ste-pan Co., 660 F.3d 1341, 1344 (Fed. Cir. 2011). Under the

Administrative Procedure Act, the PTO must ensure thatthe parties before it are fully and fairly treated at theadministrative level. In re Leithem, 661 F.3d 1316, 1319(Fed. Cir. 2011). Namely, the PTO must provide prior

notice to the applicant of all matters of fact and lawasserted prior to an appeal hearing before the Board.

Stepan, 660 F.3d at 1345 (quoting 5 U.S.C. 554(b)(3)).

This framework limits the Boards ability to rely on

different grounds than the examiner. The Board may notrel[y] on new facts and rationales not previously raised to

the applicant by the examiner. Leithem, 661 F.3d at1319. Of course, the Board is not required to recite andagree with the examiners rejection in haec verba in orderto ensure that the PTO has provided adequate notice. Id.

And the Board may elaborate on the examiners findings,so long as the appellant had an adequate opportunity to

respond to the Boards findings during the PTO proceed-ing. In re Adler, 723 F.3d 1322, 1328 (Fed. Cir. 2013).The ultimate criterion is whether the appellant has had


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before the PTO a fair opportunity to react to the thrust ofthe rejection. Jung, 637 F.3d at 1365 (quoting In re

Kronig, 539 F.2d 1300, 130203 (CCPA 1976)) (internalquotation marks omitted). If that condition is not met,

the Board must designate its decision a new ground ofrejection and provide the appellant with an opportunity to

respond. See Stepan, 660 F.3d at 1346; 37 C.F.R. 41.77(b). Failure to do so violates the appellants noticerights and warrants vacatur of the Boards decision.Stepan, 660 F.3d at 1346. Whether the Board relied on a

new ground of rejection is a legal issue that we review denovo. Id. at 1343.

The Board erred when it supplied its own reasons tocombine iAPX and Inagaki. The examiner issued a specif-

ic findingthat one of skill in the art would have beenmotivated to modify the iAPX system to transfer data on

both the rising and falling edges of the clock signal be-cause the system does not show that all edges are used.J.A. 1113. The PTO does not dispute that this findingwas erroneous. iAPX quite clearly employed both the

rising and falling edges of the clock signal. Recognizingthis problem, the Board instead found that a skilled

artisan would have been able to drop functionality that

iAPX discloses as occurring during the rising and fallingedges of the clock. Board Opinion at 2324. It also pro-vided additional ways to combine iAPX and Inagaki to

create a half-cycle system that could transfer data on boththe rising and falling edges of its clocks. Id. at 2427.

These findings were completely new; the Board did notelaborate on the examiners findings with more detail.See Adler, 723 F.3d at 1328. While the Boards findingsmay ultimately be correct, we will not affirm a Board

rejection, like this one, which essentially provides a newmotivation to combine the references.

The Board has a procedure for issuing a new groundof rejection in appeals of inter partes reexaminations. 37C.F.R. 41.77(b). This procedure ensures that appellants


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have an appropriate opportunity to respond and, if neces-sary, supplement the record before the examiner. We

cannot let the Board shortcut this procedure and depriveappellants of their due process rights. To be clear, we are

not passing judgment on the merits of the Boards find-ings regarding the motivation to combine.

C. Objective Evidence of Nonobviousness

We also agree with Rambus that the Board erred inits treatment of objective evidence of nonobviousness.

Such objective evidence can establish that an inventionappearing to have been obvious in light of the prior art

was not. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d

1530, 1538 (Fed. Cir. 1984). In some cases, that evidenceis the most probative and cogent evidence in the record.Id. It helps turn back the clock and place the claims in

the context that led to their invention. Mintz v. Dietz &Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012). For

objective evidence . . . to be accorded substantial weight,its proponent must establish a nexus between the evi-dence and the merits of the claimed invention. In re Kao,639 F.3d 1057, 1068 (Fed. Cir. 2011) (quoting Wyers v.

Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010))(emphasis omitted) (internal quotation marks omitted).

The Board erred when it found that Rambuss objec-tive evidence of nonobviousness lacked a nexus because it

related to unclaimed features. Rambus presented uncon-tested evidence of long-felt need and industry praise due

to the claimed dual-edge data transfer functionalityclaimed in the 097 patent. For example, an article in theMicroprocessor Report stated that Rambus ha[d] un-veiled its radical new processor-to-memory interface and

DRAM architecture, which promise to create the mostsignificant change in processor/memory system architec-

ture since the introduction of the DRAM two decadesago. J.A. 2633. The article explains that the technologyoperat[es] with a 250-MHz clock and transfer[s] a byte of


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data on each clock edge, an approach that was some-what counter-intuitive. Id. A press release issued by

Micron Technology, Inc., a Rambus competitor, referred tothe dual-edge data transfer functionality as a revolution-

ary and pioneering technology that vastly improv[ed]the performance of memory chips. J.A. 1711. The Board

did not address any of this evidence.

The Board also erroneously found that Rambuss evi-

dence relating to high-speed memory systems was notcommensurate with the scope of the claims because the

claims do not recite a specific clock speed and thereforeembrace slow memory devices. Board Opinion at 2930.

Such a strict requirement was improper. Objective evi-dence of nonobviousness need only be reasonably com-

mensurate with the scope of the claims, and we do notrequire a patentee to produce objective evidence of nonob-

viousness for every potential embodiment of the claim.Kao, 639 F.3d at 1068; In re Glatt Air Techniques, Inc.,630 F.3d 1026, 1030 (Fed. Cir. 2011) ([W]e have consist-ently held that a patent applicant need not sell every

conceivable embodiment of the claims in order to relyupon evidence of commercial success.) (quoting In re

DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008)). Moreover,

Rambuss evidence shows beyond dispute that the claimeddual-edge data transfer functionality is what enabled thepraised high-speed transfer of data. A Byte Magazine

article explained that, by using both edges of a 250-MHzclock, Rambuss memory chips will deliver a tenfold

increase in component throughput. J.A. 2623. TheElectronic Engineering Times likewise described the dual-edge functionality as designed to burst the bottleneckbetween processors and DRAMs in desktop systems. J.A.

262425. The Board did not point to any contrary evi-dence, and we have not found any in the record.

Nor is there substantial evidence to support theBoards finding that Rambuss licensing evidence lacked anexus to the reexamined claims. Rambuss undisputed


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evidence linked its commercial success to the claimeddual-edge data transfer functionality. For example, an

Electronic Engineering Times article relayed that FujitsuLtd., NEC Corp., and Toshiba Corp. had paid substantial

license fees to participate in the technology. J.A. 2624.The article noted that a key part of Rambuss licensed

memory technology is the memory bus that moves onebyte on each clock edge. J.A. 2625. By the mid-1990s,Rambus also obtained licenses from Hitatchi, Ltd., OkiElectric Industry Co., Lucky Goldstar, and Intel Corp.

J.A. 2099. The Board held that this evidence lacked anexus because competitors have many reasons for taking

licenses which are not necessarily related to unobvious-

ness, Board Opinion at 30, but this finding lacks anysupporting evidence. Similarly, there is no evidence inthe record to support the PTOs assertion that the com-

mercial value of the licenses stemmed from other licensedRambus patents. Indeed, the only evidence before the

Board points to a contrary conclusion.

The Boards finding that all of Rambuss evidence

lacked a nexus because dual-edge functionality wasalready disclosed in Inagaki, and therefore not novel, is

also erroneous. Id. at 2930. While objective evidence of

nonobviousness lacks a nexus if it exclusively relates to afeature that was known in the prior art, Ormco Corp. v.

Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006), the

obviousness inquiry centers on whether the claimedinvention as a whole would have been obvious, 35

U.S.C. 103. Rambuss objective evidence of nonobvious-ness was not limited to the dual-edge functionality inInagaki that transferred a single bit each half-cycle of anexternal clock. See J.A. 295558. At least some of Ram-

buss objective evidence of nonobviousness pertained toRambuss overall memory device architecture. On re-

mand, the Board should be careful to parse the evidencethat relates only to the prior art functionality and theevidence that touted Rambuss patented design as a


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whole. We decline to make these fact findings for the firsttime on appeal. We leave it to the PTO, for the 097

patent claims that remain on remand, to determine ifRambuss objective evidence of nonobviousness pertains to

the Rambus device or simply to the dual-edge functionali-ty disclosed in Inagaki.

* * * * *

The Board erred when it failed to provide Rambus anopportunity to respond to its new grounds for rejecting the

claims as obvious. The Board also erred in its analysis ofRambuss objective evidence of nonobviousness. Due to

these errors, we vacate the Boards decision that claims

35, 11, 12, 26, 2832, and 35 are unpatentable. Weexpress no opinion, however, as to whether those claims

should issue.

CONCLUSION

For the foregoing reasons, we affirm-in-part and va-cate-in-part the Boards decision and remand for further

proceedings.

AFFIRMED-IN-PART, VACATED-IN-PART, AND

REMANDED

COSTS

Costs to Appellant.


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UNITED STATES COURT OF APPEALSFOR THE FEDERAL CIRCUIT

Questions and Answers.Peti t ions for Panel Rehearing (Fed. Gir. R. 40)

andPetitions fo r Hearing or Rehearing En Bane (Fed. GiL R. 35)

When is a petition for paoel rehearing appropriate?Petitions for panel r ~ n e a r i n g a r ~ . r a f e I Y roilsidered

C o n s e q u e n t l y , i t i s e i 3 ~ i e ~ t t o f i r s tanswer whent it ion tor panel r e h ~ a i i n g i s n P t ; 3 ~ p " o P r i a t e . A petitiO I1

panel rehearing' shoiJld not be . ~ ~ ~ d l o r e a : r ! ; J u e issuesady briefed and orally arglJ;c1.lf ap'arty fail7d to.. .rsuade the court o n a r i s s u . } Q . t . t < ~ ~ r ? l i n ~ ~ n c ~ . they doget a second chanc:;e. TtiiS i ~ : ~ P ~ i b . i ~ . I ~ : S O Wheh the .

has entereda j U d g ( f ) e r l t . ? t f l m t , r r @ i ) ~ ~ \ N ' t h C ? u t o p i n i o nFed. Cir. R 3 6 , a \ a d j ~ R r 3 , i t i ( j [ i q l J h i s ~ ~ J u r e is usedwhen the a p p e l l a n t l P ~ t i t i O . n ~ r / : l . ~ " ~ ~ t ! ~ r 1 Y f a i i e d l o raise

y issues in the a p p e a l t h a i } ~ 9 . Q 1 r ~ . a h : ~ p i p i o n t ( ) b ein support of t h e t o u r t ' ? j u q g r p ~ f j ~ pf affirmance.

\lVhen is a petition for reheanng enhanc appropriate?banc decisions are eXlraofl:jillaryoccuiTeflces. Toly answer ' t h e q u e ~ t i o n ~ one n'lus[trstunaers'taria the

onsibility of ,a t h r e e ~ j u d g e (llerits panel of the court.. Theis charged with deciding individual appeals according

e law of the circuit as establishedin the court'sedential opinions. While each mentspanel is

to enter precedential opihibllS, the ultimate dutye court en banc is to set forth the law of the Federalit, which m ~ r i t s panels are obliged to follow.as a usual prerequisite, a merits panel of the court

have entered a precedential opinion in support of itsment for a petit ion for rehearing en banc to l?e

priate. In addition, the party seeking rehearing enmust show that either the merits panel has fai led todecisions of the Supreme Court of the United States

deral Circuit precedential opinions, or that

m e r i t ~ panel has followed circuit precedent:, which th e partyseeks to have overruled by the court en banco

Q. How frequenUy are petitions fo r panel rehearing grantedbymerits panels or petitions for rehearing en bane grantedby cout1?A The data regarding petitions fo f panel reheanng since1962 shows that merits panels granted some relief il l onlythree percent of the petitions filed. The relief granted'usuallyinvolved only minor corrections of factual m i s s t a t e m ~ n t s ,rarely resulting in a change of outcome in the decision.En banc petitions have been granted less frequently.Historically, the court has initiated en bane review in a fewof the appeals decided en bane since 1982.

Q. Is it necessary to have filed either of these petitionsbefore filing a petition for certioran in the U. S. SupremeCourt?A. No. Al l that i s needed is a final judgmenl of the Court ofAppeals.


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UNlTED STATES COURT OF APPEALS FOR THE FEDERAl CrnCUJT

!NFORMATlON SHEET

FILING A PETITION FOR A WRIT OF CERTJORARJ

There is no automatic right of appeal to 1he Supreme Court of the United States from judgmentsof the Federal Circuit. You must file a petition for a writ of certiorari wrucb the Supreme Courtwi)) gIant only when there are compe))ing reasons. (See Rule I0 of the Rules of the SupremeCourt of the United States, hereinafter called Rules.)Time. The petition must be filed in 1he Supreme Court of the United S1.Lltes within 90 days ofthe entry of judgment in tills Court or within 90 days of the denial of a timely petition forrehearing. The judgment is entered on the day the Federal Circuit issues a fmal decision in yourcase. rThe time does not run from the issuance of the mandate, which bas no effect on the righ1to pet it ion.] (See Rule J3 of the Rules.)Fees. Either the $300 docketing fee or a motion for leave to proceed in forma pauperis with anaffidavit in support thereof must accompany the petit ion. (See Rules 38 and 39.)

Filer. The petition must be filed by a member of the baJ of the Supreme Colli1 ofhe United States or by the petitioner representing himself or herself.

oj a Petition. The Rules are very specific about the order of the required informatIond should be consulted before you start drafting your petit ion. (See Rule 14.) Rules 33 and 34ould be consulted regarding type size and font, paper size, paper weight, margins, page l:iJnj1S,

~ e t f C c : : - .- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -of Copies. Forty copies of a pet it ion must be filed unJess the petitioner is proceeding in

rma pauperis, in wruch case an original and ten copies of the petition for wri t of certiorari andf the motion for leave to proceed in forma pauperis. (See Rule l2.)

to File. You must file your documents at the Supreme Court.Clerk

- - - - -- - --Supreme Cour1- of-the United-States] First Street , NE

Washing1on, DC 20543(202) 479-3000

documents are filed 311he Federal Cirelli. and u"'ie Federal C i r c u i ~ provides no ir..fGnna130n toSupreme Court unless the Supreme Court asks for the infonnation.

to the Rules . The current rules can be found in Title 28 of the United States Codeotated and other legal publications available in m,my public libraries.
