Ex Parte 6546446 et al

Patent Trials and Appeals BoardSep 26, 2012

95001155 - (R) (P.T.A.B. Sep. 26, 2012)

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. 95/001,155 03/11/2009 6546446 8963.002.446 7688 22852 7590 07/10/2013 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 07/10/2013 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. 95/001,109 11/11/2008 6546446 38512.20 9305 22852 7590 07/10/2013 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 07/10/2013 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 2012-001639 Inter Partes Reexamination Control No. 95/001,109 & 95/001,155 United States Patent 6,546,446 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 2012-001639 Reexamination Control 95/001,109 & 95/001,155 Patent 6,546,446 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. 2-6.) 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 Decision, Micron does not show that it was more likely than not that SCI-B was publically available prior to the ‘446 patent’s priority date. (See Bd. Dec. 30-32.) 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 1 Decided Sept. 27, 2012 after an oral hearing on June 6, 2012. Appeal 2012-001639 Reexamination Control 95/001,109 & 95/001,155 Patent 6,546,446 3 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. 5.) As the Decision explains, the Gustavson letter does not corroborate dissemination (Bd. Dec. 32), even under Micron’s 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. 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 also now relies on the Scheduling Letter. (Micron’s Rehear. Req. 5.) However, Micron does not point the Board to a discussion of this letter in its Appeal Brief, and it does not appear that a discussion of the letter occurs there, so the Board could not have overlooked it. As such, Micron waives any reliance on it. Micron does not present evidence showing that merely placing the SCI date nomenclature on a document signifies likely mailing. It is not clear if the date nomenclature was placed on documents that were not to be mailed, such as secret documents. As the 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 the document probably occurred. (See Dec. 30.) Micron does not Appeal 2012-001639 Reexamination Control 95/001,109 & 95/001,155 Patent 6,546,446 4 show that the SCI-B document had such an attached mailing list. Micron also does not present other corroborating evidence. 2 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 Bd. Dec. 31-32.) Rambus persuasively argues that more evidence of actual dissemination must corroborate the generic evidence of mailing practices. (See Rambus’s Comments 5 (citing Norian Corp. V. Stryker Corp., 363 F.3d 1321, 1330 (Fed. Cir. 2004).) REHEARING DECISION We decline to modify the Decision. DENIED ak 2 In distinction to the SCI-B document, the 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 testimony about its actual dissemination. (See Bd. Dec. 30-32, n.26.) Appeal 2012-001639 Reexamination Control 95/001,109 & 95/001,155 Patent 6,546,446 5 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 Third Party Requesters: Haynes & Boone, LLP IP Section 2323 Victory Avenue Suite 700 Dallas, TX 75219 Novak Druce & Quigg, LLP 1000 Louisiana Street 53 rd Floor Houston, TX 77002