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2013-1087, - 1088 (Reexamination Nos. 95/001,108 & 95/001,154) - in The United States Court of Appeals For The Federal Circuit

Rambus filed a motion to dismiss Micron's cross-appeal in a patent case. Rambus argued that Micron, as the prevailing party, does not have standing to bring a cross-appeal under 35 U.S.C. §§ 141 & 315(b)(1) because it was not dissatisfied with the Patent Trial and Appeal Board's decision rejecting the only claim at issue. Additionally, Rambus asserted that Micron's cross-appeal violates the Federal Circuit's rules because it seeks only to present additional arguments to support the judgment, rather than challenge it. Micron does not oppose the motion to dismiss its cross-appeal.

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223 views8 pages

2013-1087, - 1088 (Reexamination Nos. 95/001,108 & 95/001,154) - in The United States Court of Appeals For The Federal Circuit

Rambus filed a motion to dismiss Micron's cross-appeal in a patent case. Rambus argued that Micron, as the prevailing party, does not have standing to bring a cross-appeal under 35 U.S.C. §§ 141 & 315(b)(1) because it was not dissatisfied with the Patent Trial and Appeal Board's decision rejecting the only claim at issue. Additionally, Rambus asserted that Micron's cross-appeal violates the Federal Circuit's rules because it seeks only to present additional arguments to support the judgment, rather than challenge it. Micron does not oppose the motion to dismiss its cross-appeal.

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sabatino123
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© Attribution Non-Commercial (BY-NC)
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Case: 13-1088

Document: 3

Page: 1

Filed: 12/07/2012

2013-1087, -1088 (Reexamination Nos. 95/001,108 & 95/001,154) ____________________________ IN THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT _____________________

RAMBUS, INC., Appellant, v. SAMSUNG ELECTRONICS CO., LTD., Appellee, and MICRON TECHNOLOGY, INC., Cross Appellant. _________________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. _________________________ RAMBUS INC.S UNOPPOSED MOTION TO DISMISS MICRON TECHNOLOGY, INC.S CROSS-APPEAL

I.

Introduction Appellant Rambus Inc. (Rambus) respectfully moves to dismiss appeal no.

2013-1088, the cross-appeal filed by Micron Technology, Inc. (Micron), for lack of jurisdiction. This Court lacks jurisdiction over Microns cross-appeal because a

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third-party requester may only appeal a final decision favorable to the patentability of any . . . claim. 35 U.S.C. 315(b)(1); see also 35 U.S.C. 141 (to appeal, a party must be dissatisfied with the final decision). Moreover, Microns cross-appeal violates this Courts rules. Under the Practice Notes to Federal Circuit Rule 28.1 and this Courts jurisprudence, a party may not file a cross-appeal merely to present arguments in support of the judgment. In the consolidated reexamination on appeal, the Board of Patent Appeals and Interferences (Board) rejected claim 34 of U.S. Patent No. 6,584,037, the only claim that was at issue in the appeal at the Board. The Board did not adopt all of the proposed rejections of claim 34 that Micron advocated in its appeal; it only adopted some of them. Nevertheless, the judgment was entirely favorable to Micron, as claim 34 currently stands rejected. Thus, any argument Micron may make that the Board properly rejected claim 34 on the grounds it chose or that the Board should also have rejected claim 34 on additional grounds would be an argument[ ] in support of the judgment of invalidity of claim 34. Microns cross-appeal is therefore improper and should be dismissed. II. Background Rambus owns the 037 patent. After Rambus accused Samsung Electronics Co., Ltd. (Samsung) and Micron in district court of infringement of claim 34 of the 037 patent, they each initiated inter partes reexaminations of only that claim.

Case: 13-1088

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Those reexaminations were assigned Control Nos. 95/001,108 and 95/001,154, respectively. Ultimately, the reexaminations were merged, and after that, Samsung and Rambus settled. Micron, however, continued pursuing the reexamination of claim 34. Micron alleged, among other combinations, that claim 34 was rendered obvious by U.S. Patent No. 4,734,909 (Bennett) in view of U.S. Patent No. 5,159,676 (Wicklund) or U.S. Patent No. 5,301,278 (Bowater). Micron also ultimately alleged, based on a rejection that had initially been proposed by Samsung,1 that claim 34 was anticipated by Joint Electron Device Engineering Council Standard No. 21-C, Revision 9 (JEDEC) and was rendered obvious by U.S. Patent No. 5,590,086 (Park) in view of JEDEC. After the examiner

confirmed the patentability of claim 34, Micron appealed the above combinations (Bennett in view of Wicklund or Bowater, JEDEC, and Park in view of JEDEC) to the Board. The Board reversed, concluding that claim 34 was rendered obvious by Bennett in view of Wicklund and Bennett in view of Bowater. The Board,

however, found that Micron had not demonstrated examiner error with respect to the proposed rejections based on JEDEC and Park. The Board therefore did not Rambus argued and will continue to argue on appeal that Micron does not have standing to argue issues that were originally proposed only by Samsung, not Micron. Rambuss argument is properly raised in the substantive briefing in this case, however, and will not be addressed in this motion.
1

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reject claim 34 based on JEDEC or Park. Rambus and Micron both requested rehearing from the Board, which the Board denied. Inter Partes Rambus Inc. v. Samsung Elecs. Co., Appeal No. 2012-00142, 2012 WL 3561847 (Aug. 16, 2012). Rambus filed a notice of appeal in this Court on October 15, 2012. Micron then filed a notice of cross-appeal in this Court on October 29, 2012. III. Argument As the prevailing party on the only claim on appeal, Micron does not have standing to bring a cross-appeal. Only a party dissatisfied with the final decision of the Board may appeal. 35 U.S.C. 141; see also 35 U.S.C. 315(b)(1) (a thirdparty requester may only appeal a final decision favorable to the patentability of any . . . claim). The decision referred to in the statute has been interpreted as the final judgment, not every issue addressed by the Board. See In re Priest, 582 F.2d 33, 37 (CCPA 1978) (stating that a decision of the court is its judgment, distinguishing a decision from an opinion); see also Klemperer v. Price, 271 F.2d 743, 730 (CCPA 1959). Because the Boards judgment was entirely favorable to Micron, i.e., the only claim on appeal stands rejected, Micron cannot be dissatisfied with the Boards final decision under 35 U.S.C. 141 & 315(b)(1). This Court therefore lacks jurisdiction to entertain a cross-appeal by Micron.

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Indeed, the Courts rules further support dismissing Microns cross-appeal. As this Court has repeatedly held, where all of the patent claims at issue have been held invalid, there is no basis for a cross-appeal as to . . . additional claims for invalidity. Aventis Pharma S.A. v. Hospira, Inc., 637 F.3d 1341, 1343 (Fed. Cir. 2011) (quoting TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1156-57 (Fed. Cir. 2004)); see also id. at 1344 (indicating that improper use of cross-appeal may meet with sanctions). This Courts rules therefore support the impropriety of Microns cross-appeal. IV. Conclusion In light of the above, Rambus respectfully requests that the Court dismiss Microns cross-appeal. Counsel for Rambus has conferred with Henry Petri, counsel for crossappellant Micron, who indicated that Micron will not oppose the motion to dismiss the cross-appeal. Because Rambus has settled with Samsung and Samsung does not intend to participate in the appeal, Rambus did not seek Samsungs position on this motion.

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Dated: December 7, 2012

Respectfully submitted, /s/ Molly R. Silfen J. Michael Jakes James R. Barney Molly R. Silfen Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Ave., NW Washington, DC 20001 Telephone: (202) 408-4000 Attorneys for Appellant Rambus Inc.

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UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT


RAMBUS, INC. V SAMSUNG ELECTRONICS CO. Appeal Nos. 2013-1087, -1088 (Reexamination Nos. 95/001,108 & 95/001,154)

CERTIFICATE OF INTEREST Pursuant to Federal Circuit Rules 26.1 and 47.4, counsel for Appellant Rambus Inc. certify the following: 1. The full name of every party or amicus represented by us is: Rambus Inc. 2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by us is: Rambus Inc. 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of any party represented by us are: None 4. The names of all law firms and the partners or associates that appeared for the parties now represented by us in the trial court or are expected to appear in this court are: J. Michael Jakes, James R. Barney, Naveen Modi, Molly R. Silfen FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP

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CERTIFICATE OF SERVICE I hereby certify that copies of the foregoing UNOPPOSED MOTION TO DISMISS MICRON TECHNOLOGY, INC.S CROSS-APPEAL were served upon registered counsel by operation of the Courts CM/ECF system on this 7th day of December, 2012. Raymond T. Chen, Solicitor United States Patent and Trademark Office MDW 8A15 P.O. Box 1450 Mail Stop 8 Alexandria, VA 22213-1450 [email protected] David L. McCombs Haynes and Boone, LLP 2323 Victory Avenue, Suite 700 Dallas, Texas 75219-7672 [email protected] Tracy W. Druce Novak Druce & Quigg, LLP 1000 Louisiana Ave., 53rd Floor Houston, Texas 77002 [email protected] /s/ Molly R. Silfen Molly R. Silfen

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