Rambus Inc. v. Rea
Addressing a a finding of obviousness by the U.S. Patent and Trademark Office, Board of Patent Appeals and Interferences (Board), the U.S. Court of Appeals for the Federal Circuit reversed the Board's obviousness ruling, finding that the Board failed to properly account for the importance of objective evidence of non-obviousness. Rambus Inc. v. Rea, Case No. 12-1634 (Fed. Cir., Sept. 24, 2013) (Moore, J.).
Rambus owned a patent directed to a synchronous memory system that transfers data on both rising and falling edges in a cycle of an external clock signal, thus enabling double the speed of conventional systems that only transferred once per cycle. During an inter partes reexamination, the Board found that certain claims were anticipated by an unexamined Japanese patent Application and that other claims were rendered obvious by an Intel iAPX system manual in light of the unexamined application.
On appeal, Rambus first took issue with the Board's construction of the terms "external clock signal" and "write request." The Federal Circuit rejected Rambus' argument that "external clock signal" was required to operate continuously, finding no such requirement in the intrinsic evidence. The Court also rejected Rambus' argument that there was a conflict between the Board's construction permitting a single-bit "write request" and the Federal Circuit's earlier construction of "a series of bits." Because the earlier dispute did not address the number of bits, the Court held that there was no conflict and concluded that requiring more than one bit would improperly read out the preferred embodiment. Anticipation turned on the Rambus' claim construction arguments and was affirmed.
Turning to obviousness, the Federal Circuit concluded that the Board improperly shifted the burden of proof when it concluded that Rambus had failed to demonstrate that skilled artisans would not have been able to arrive at the claimed invention. The Court next held that the Board impermissibly relied on new findings without issuing a new ground of rejection when it provided additional ways to combine after admitting that the examiner was incorrect in concluding that the iAPX system did not use all of the edges of the clock signal.
Finally, the Federal Circuit held that the Board erred by rejecting Rambus' objective evidence of non-obviousness. Stating that such evidence is often "the most probative and cogent evidence in the record," the Federal Circuit concluded that it was "beyond dispute" that the claimed functionality enabled the praise by others, including competitors, relied on by Rambus. The Court also rejected the Board's rejection of licenses as evidence of non-obviousness, holding that there was no evidence that the licenses were related to anything other than the invention. Finally, the Court took issue with the Board's finding that the evidence only tied to aspects in the prior art and, noting that obviousness centers on the claims as a whole, instructed the Board to only parse out evidence solely directed to prior art functionality.
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