Tuesday, July 02, 2013

Rambus wins in an appeal of re-examination 95/001,166

In Rambus v. [Acting Director] Rea, one had [former solicitor] Whealan appearing at the CAFC on behalf of the appellant Rambus.

This appeal arises from an inter partes reexamination proceeding before the United States Patent and Trademark Office (PTO). The Board of Patent Appeals and Interferences (Board) affirmed the Examiner’s rejection of all 25 claims of U.S. Patent No. 7,287,109 (the ’109 Patent) under 35 U.S.C. § 102(a). Because substantial evidence does not support the Board’s conclusion, this court reverses.

Within the CAFC decision:

Notwithstanding the above, the Board found in the present case that Farmwald anticipates the ’109 Patent. In other words, a reference that was overcome during initial examination, distinguished as prior art in the patent specification, and found not to anticipate by at least two different tribunals, now—according to the Board—discloses each and every element of the claims. The result is somewhat surprising, especially with nothing in the record indicating whether the Board considered these prior decisions. Upon comparison of the relevant claims, this court concludes that Farmwald does not anticipate the ’109 Patent’s claims.


The central issue is whether Farmwald discloses the step of “providing a signal to the memory device, wherein the signal indicates when the memory device is to begin sampling write data.”

The Board construed the term “signal” broadly to mean “the physical representation of data,” and concluded that Farmwald discloses such a signal. The Board’s construction of the term “signal” is unreasonably overbroad.

Of the ordering of steps in a method claim:

While the steps of a method are not limited to a specific order unless the claim explicitly or implicitly so requires, Baldwin Graphics Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008), here, a plain reading of claim 1 evinces a specific order. The first step of claim 1 “specifies that a write operation be initiat- ed in the memory device,” and the second step “indicates when the memory device is to begin sampling write data.” ’109 Patent cl. 1. It would make no sense for the second step to be performed first—telling the memory device to begin sampling write data—before the memory device was even instructed to perform a “write” operation. Therefore, the Board’s finding is clearly erroneous.

Kotzab is cited:

The Board stated that “skilled artisans would have considered . . . comparing [Farmwald’s delay value] to a clock value . . . as also constituting ‘providing a signal,’ as recited in claim 1.” J.A. 14. However, nowhere did the Board identify where Farmwald discloses this compari- son; nor did the Board explain how “comparing” a delay value to a clock value equates to a “signal,” particularly under the Board’s construction of “signal” to mean “the physical representation of data.” This court has made clear that “[b]road conclusory statements standing alone are not evidence.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). In this case, the Board does not show that comparing a delay value to a clock signal anticipates the claim.

Judge Wallach dissented:

The Board’s conclusion that the patent is anticipated is supported by substantial evidence, and therefore I dissent from the majority’s decision.

Of ordering of steps:

However, it is not clear, as a matter of “logic or grammar,” that all of the steps in claim 1 must be performed in the order written. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–71 (Fed. Cir. 2003). “[A]lthough a method claim necessarily recites the steps of the method in a particular order, as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008).


The role of this court is not to determine if the record could support a different outcome, but to determine if the Board’s findings are supported by substantial evidence. In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002) (If “the evidence in [the] record will support several reasonable but contradictory conclusions,” then this court “will not find the Board’s decision unsupported by substantial evidence simply because the Board chose one conclusion over another plausible alternative.”). Because the Board’s findings on anticipation are supported by substantial evidence, I respectfully dissent.


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