95001128 (P.T.A.B. Aug. 21, 2013)

Ex Parte 6378020 et al

Patent Trial and Appeal BoardAug 21, 2013

95001128 (P.T.A.B. Aug. 21, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,128 12/15/2008 6378020 8963.002.020 1029 22852 7590 08/21/2013 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER ESCALANTE, OVIDIO ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/21/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,026 01/31/2008 6378020 38512.9 1090 22852 7590 08/21/2013 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER ESCALANTE, OVIDIO ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/21/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MICRON TECHNOLOGY, INC. Requester, Appellant v. RAMBUS INC. Patent Owner, Respondent ____________ Appeal 2012-001976 Inter Partes Reexamination Control No. 95/001,026 & 95/001,128 Patent 6,378,020 B2 Technology Center 3900 ____________ Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and STEPHEN C. SIU, Administrative Patent Judges. EASTHOM, Administrative Patent Judge. DECISION ON (MICRON’s) REQUEST FOR REHEARING Micron seeks relief from the Decision of the Patent Trial and Appeal Board in its Third Party Requester’s Request for Rehearing Pursuant to Appeal 2012-001976 Reexamination Control 95/001,026 & 95/001,128 Patent 6,378,020 2 37 C.F.R. § 41.79.1 In response, Rambus filed Patent Owner’s Opposition to Third-Party Requester’s Request for Rehearing. In a rehearing request, appellants “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52 (a)(1). Micron has not made the requisite showing. Rambus’s Comments persuasively address Micron’s contentions not specifically addressed below. Micron asserts that the Decision misapprehends its argument and evidence concerning the public dissemination of the SCI-B document (Schanke). (See Micron Rehear. Req. 2-7.) Rambus persuasively addresses Micron’s assertions and shows that the Decision does not overlook or misapprehend that issue. (See Rambus’s Comments 1-6.) As Rambus points out, contrary to Micron’s argument, the Board and the Examiner applied the proper evidentiary standard. (See Micron’s Rehear. Req. 3; Rambus Comments 2-3.) For the reasons provided in the Board’s PTAB 2012-001639 Decision,2 which the instant Decision incorporated by reference (Dec. 10) and which involves the same evidence and the same or similar arguments as to this issue of public dissemination of SCI-B (and another document, SCI-A), Micron does not show that it was more likely than not that SCI-B was publically available prior to the ‘020 patent’s priority date. (See PTAB 2012-001639 Dec. at 29-32.) 1 Decided December 10, 2012 after an oral hearing on September 12, 2012. 2 Decided September 27, 2012 (reexamination control numbers 95/001,109 & 95/001,155). Appeal 2012-001976 Reexamination Control 95/001,026 & 95/001,128 Patent 6,378,020 3 To support its position, Micron argues that the Board misapprehends its evidence and argument related to Gustavson’s November 9-11, 1988 conference letter. That date is prior to the date listed on the SCI-B (Schanke) document, “SCI-5May89-doc77.” Micron asserts that its point about the earlier Gustavson letter is that it is corroborative of dissemination of the SCI-B document because “the fact that the SCI group publicly disclosed the key feature of SCI-B [i.e., both clock edges of a 250 MHz clock active] in 1988 further supports the notion that SCI-B was not kept secret for 11 months but that it was more likely than not that SCI-B was publically available prior to April 18, 1990.” (Micron Rehear. Req. 6.) As the PTAB 2012-001639 decision explains, the Gustavson letter does not corroborate dissemination (PTAB 2012-001639 Dec. 32), even under Micron’s new theory about publishing a key non-secret. The Gustavson letter is prior to the SCI-B document; therefore, at least some information about the dual clock edges was discussed other than through the SCI-B document, according to Micron and according to the timing of the Gustavson letter and the SCI-B document date. However, this does not show one way or the other whether SCI-B was published. Micron also does not establish that the dual clock was even a “key” feature. It is also equally plausible that further details about the clock as discussed in the SCI-B document would have been kept secret. Setting secrecy aside, SCI-B may or may not have been published for any number of reasons. Micron does not establish that all SCI documents with a date nomenclature were published as a matter of routine business practice or what the date nomenclature signifies. Micron also now relies on the “Scheduling Letter” in an attempt to show a correspondence between a future meeting date, May 8-9, 1989, and Appeal 2012-001976 Reexamination Control 95/001,026 & 95/001,128 Patent 6,378,020 4 the SCI-B document date nomenclature, May 5, 1989. (See Micron’s Rehear. Req. 5.) Micron does not present evidence that any future meeting actually or even probably occurred and the letter itself indicates that any future meeting “‘dates should be viewed with suspicion,’” as Rambus points out. (Rambus Comments 5 (quoting Scheduling Letter).) While the Scheduling Letter renders the dissemination call closer, as Rambus points out, Micron did not timely present this specific evidence to the Board. (See Rambus Comments 4.) Micron now argues that the Examiner considered the Scheduling Letter in a Right of Appeal Notice (RAN, see Micron’s Request 5), but Micron’s Briefs do not discuss the Scheduling Letter. In addition, Rambus points out that “Micron incorrectly asserts that these statements were made in the RAN associated with these proceedings.” (Rambus Comments 4, n.3.)3 More importantly, in this rehearing request, Micron now attempts to explain the Scheduling Letter’s significance with new arguments which attempt to tie a tentative future May 8-9, 1989 SCI meeting date with the SCI-B May 5, 1989 date nomenclature. Micron does not point the Board to 3 The examiner’s RAN underlying the PTAB 2012-001639 decision discusses the Scheduling Letter. See reexamination control nos. 95/001,109 & 95/001,155, RAN at 59. Notwithstanding the Scheduling Letter, the examiner in that case concluded that SCI-B was not publically disseminated. (See ‘109 & ‘105 RAN 62.) As Rambus also points out, contrary to Micron’s characterization, the examiner in the ‘109 & ‘105 RAN at pages 57-59 appears to be paraphrasing or copying Micron’s assertions and Rambus’s, as opposed to adopting either position, and then the examiner analyzes the respective positions in a later portion of the RAN at pages 60- 62. (See Rambus Comments 4; ‘109 & ‘105 RAN 57-62.) In a similar rehearing request in the PTAB 2012-001639 appeal, the Board denied Micron’s requested relief. Appeal 2012-001976 Reexamination Control 95/001,026 & 95/001,128 Patent 6,378,020 5 a discussion of the Scheduling Letter in its Appeal Brief or Rebuttal Brief, let alone any significance to the letter’s tentative meeting dates, and it does not appear that any discussion of the letter occurs there, so the Board could not have overlooked it. As such, Micron waives this new reliance on it.4 As indicated, Micron does not present evidence showing that merely placing the SCI date nomenclature on a document signifies likely mailing. Micron does not establish why or when date nomenclature was placed on documents as a matter of routine practice, or that the date was placed on a document as routine preparation for a meeting. See In re Lister, 583 F.3d 1307, 1316-1317 (Fed. Cir. 2009) (copyright registration date insufficient evidence of public accessibility. “[I]n this case the government has not identified any evidence of the general practice of the Copyright Office, Westlaw, or Dialog with regard to database updates.”) As the PTAB 2012- 001639 decision discusses, testimony by at least one witness, Moussouris, indicates that an attached mailing list, in conjunction with date nomenclature on a document, signified to him that mailing of another document, the SCI- A document, probably occurred. (See PTAB 2012-001639 Dec. 30.) Micron does not show that the SCI-B document had such an attached mailing list or present other corroborating evidence.5 4 At this late stage, considering the new evidence and the SCI-B document would cause the Board and parties to revisit substantial issues including the SCI-B teachings as applied to the claims and run counter to the “special dispatch” mandate for conducting “all reexamination proceedings” under 35 U.S.C. § 305. 5 In distinction to the SCI-B document, the PTAB 2012-001639 decision relies on other corroborative evidence of publication for the SCI-A document, such as a citation thereto by the Kristiansen et al. article and Appeal 2012-001976 Reexamination Control 95/001,026 & 95/001,128 Patent 6,378,020 6 Micron has not shown the Board overlooked or misapprehended a material point upsetting the conclusion that Micron did not establish that it is more likely than not that SCI-B was published. (See PTAB 2012-001639 Dec. 31-32.) Rambus persuasively argues that more evidence of actual dissemination must corroborate the generic evidence of mailing practices in the situation such as here where the generic evidence lacks in terms of material routine practices. (See Rambus’s Comments 5-6 (citing Norian Corp. V. Stryker Corp., 363 F.3d 1321, 1330 (Fed. Cir. 2004).) REHEARING DECISION We decline to modify the Decision. DENIED peb testimony about its actual dissemination. (See PTAB 2012-001639 Dec. 30- 32, n.26.) Appeal 2012-001976 Reexamination Control 95/001,026 & 95/001,128 Patent 6,378,020 7 PATENT OWNER: FINNEGAN, HENDERSON, F ARAB OW, GARRETT & DUNNER LLP 901 New Y ork Avenue, NW Washington DC, 200001-4413 THIRD PARTY REQUESTER: David M. O'Dell HAYNES AND BOONE, LLP, IP SECTION 2323 Victory Avenue, Suite 700 Dallas, TX 75219 and NOVAK DRUCE & QUIGG, LLP NDQ REEXAMINATION GROUP 1000 Louisiana Street, 53rd Floor Houston, TX 77002