United States: Federal Circuit Vacates PTAB Decision Invalidating Rambus Patent

In Rambus, Inc. v. Rea, the Federal Circuit found several legal and procedural errors in the decision of the USPTO Patent Trial and Appeal Board (PTAB) that invalidated certain claims of the Rambus patent as obvious. While the technology at issue goes beyond the scope of PharmaPatentsBlog, the decision makes several important points of general interest.

The USPTO Proceedings

This case arose from an inter partes reexamination of Rambus' U.S. Patent 6,260,097, which is directed to memory circuits known as dynamic random-access memory (DRAM). The Examiner found certain claims to be invalid as anticipated or obvious. The PTAB affirmed the rejections, and Rambus appealed.

The Federal Circuit Decision

The Federal Circuit opinion is authored by Judge Moore and joined by Judge Linn and Judge O'Malley.

Because the claims at issue are directed to DRAM, and my background is in chemistry and biotechnology, I will leave a discussion of the technical issues (such as claim construction) to others, and focus on the points of more general relevance that caught my attention.

The Burden Of Proof In Reexamination Proceedings

The Federal Circuit found that the PTAB "erroneously placed the burden on Rambus to prove that its claims were not obvious," noting that "[i]n reexamination proceedings, 'a preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application.'" Instead of following this law, the PTAB affirmed the obviousness rejections because "'Rambus ha[d] not demonstrated that skilled artisans . . . would not have been able to arrive at the broadly claimed invention.'" According to the Federal Circuit, "That was legal error."

Affirmance Versus New Ground Of Rejection

The Federal Circuit found that the PTAB erred by "supply[ing] its own reasons" to combine the cited prior art references." As the court explained, once the PTAB had determined that the finding underlying the Examiner's stated basis for combining the references "was erroneous" but identified other reasons for rejecting the claims, it should have followed the procedures "for issuing a new ground of rejection in appeals of inter partes reexaminations," which would have given Rambus an opportunity to respond.

We cannot let the Board shortcut this procedure and deprive appellants of their due process rights.

Objective Evidence Of Nonobviousness

The Federal Circuit found that the PTAB erred in not giving sufficient weight to Rambus' objective evidence of nonobviousness.

The court found that the PTAB had not addressed relevant evidence:

The Board erred when it found that Rambus's objective evidence of nonobviousness lacked a nexus because it related to unclaimed features. Rambus presented uncontested evidence of long-felt need and industry praise due to the claimed dual-edge data transfer functionality claimed in the '097 patent. .... The Board did not address any of this evidence.

The court found that the PTAB had been too strict in its requirement for "commensurate" evidence:

The Board also erroneously found that Rambus's evidence relating to high-speed memory systems was not commensurate with the scope of the claims because the claims "do not recite a specific clock speed and therefore embrace slow memory devices." .... Such a strict requirement was improper. Objective evidence of nonobviousness need only be "reasonably commensurate with the scope of the claims," and we do not require a patentee to produce objective evidence of nonobviousness for every potential embodiment of the claim.

The court found that the PTAB overlooked objective evidence that related to the patented invention as a whole:

The Board's finding that all of Rambus's evidence lacked a nexus because dual-edge functionality was already disclosed in Inagaki, and therefore "not novel," is also erroneous. .... While objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was "known in the prior art," ... the obviousness inquiry centers on whether "the claimed invention as a whole" would have been obvious, 35 U.S.C. § 103. Rambus's objective evidence of nonobviousness was not limited to the dual-edge functionality in Inagaki that transferred a single bit each half-cycle of an external clock. .... At least some of Rambus's objective evidence of nonobviousness pertained to Rambus's overall memory device architecture. On remand, the Board should be careful to parse the evidence that relates only to the prior art functionality and the evidence that touted Rambus's patented design as a whole.

The court therefore affirmed-in-part, vacated-in-part, and remanded the case back to the USPTO.

Improving The Quality Of USPTO Decisions

The USPTO must recognize that the quality of its decisions at all levels—from the examining corps to the PTAB—is essential to a strong patent system. As the number of ex parte and inter partes appeals pending before the PTAB is increasing on a daily basis, it is disturbing to see that the PTAB continues to make new grounds of rejection on appeal in the face of several recent Federal Circuit decisions highlighting the legal error and injustice of that "shortcut." Perhaps the PTAB is trying to mitigate the consequences of examiner errors, but doing so not only deprives applicants of due process, it also misses an opportunity to improve examination quality by providing direct feedback from the PTAB to the examining corps.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions