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KENNETH L. NISSLY (SBN 77589) knissly@omm.com SUSAN van KEULEN (SBN 136060) svankeulen@omm.com SUSAN ROEDER (SBN 160897) sroeder@omm.com MISHIMA ALAM (SBN 271621) malam@omm.com OMELVENY & MYERS LLP 2765 Sand Hill Road Menlo Park, California 94025 Telephone: (650) 473-2600 Facsimile: (650) 473-2601 KENNETH R. OROURKE (SBN 120144) korourke@omm.com OMELVENY & MYERS LLP 400 South Hope Street Los Angeles, California 90071 Telephone: (213) 430-6000 Facsimile: (213) 430-6407 THEODORE G. BROWN, III tbrown@kilpatricktownsend.com KILPATRICK TOWNSEND & STOCKTON LLP 1080 Marsh Road Menlo Park, California 94025 Telephone: (650) 324-6353 Facsimile: (650) 618-2029 Attorneys for Plaintiffs SK HYNIX INC., SK HYNIX AMERICA INC., SK HYNIX U.K. LIMITED, and SK HYNIX DEUTSCHLAND GmbH UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

SK HYNIX INC., SK HYNIX AMERICA INC., SK HYNIX U.K. LIMITED, and SK HYNIX DEUTSCHLAND GmbH, Plaintiffs, v. RAMBUS INC., Defendant.

Case No. C-00-20905 RMW SK HYNIXS BRIEF REGARDING AVAILABILITY OF REEXAMINATION FOR RAMBUSS CLAIMS-IN-SUIT

SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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1 2 3 4 5 6 7 8 9 10 11 12 V. 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 IV. III. I. II.

TABLE OF CONTENTS Page INTRODUCTION .............................................................................................................. 1 THERE WERE LEGAL AND PRACTICAL LIMITATIONS ON HYNIXS ABILITY TO SEEK REEXAMINATION OF THE CLAIMS-IN-SUIT .......................... 3 A. Availability to Hynix of reexamination prior to initiation of reexaminations by Samsung and Micron ......................................................................................... 3 1. Inter partes reexamination .......................................................................... 3 2. Ex parte reexamination ............................................................................... 4 B. Availability to Hynix of reexamination after initiation of reexaminations by Samsung and Micron .............................................................................................. 5 HYNIX IS ENTITLED TO THE BENEFIT OF THE BOARDS REEXAMINATION DECISIONS DESPITE HAVING CHALLENGED THE VALIDITY OF RAMBUSS PATENTS IN LITIGATION .............................................. 7 HYNIX IS ENTITLED TO SUMMARY JUDGMENT OF INVALIDITY ON ALL TEN CLAIMS-IN-SUIT BASED ON THE RESULTS OF THE REEXAMINATIONS INITIATED BY SAMSUNG AND MICRON ............................ 11 CONCLUSION ................................................................................................................. 12

-i-

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CASES

TABLE OF AUTHORITIES Page

Amado v. Microsoft Corp., 517 F.3d 1353 (Fed. Cir. 2008) ................................................................................................ 10 Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971) ............................................................................................................. 2, 10 Cooper Techs. Co. v. Dudas, 536 F.3d 1330 (Fed. Cir. 2008) .................................................................................................. 3 Ethicon v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988) .................................................................................................. 9 Exxon Chem. Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475 (Fed. Cir. 1998) ................................................................................................ 12 In re Baxter Intl, Inc., 678 F.3d 1357 (Fed. Cir. 2012) .............................................................................................. 8, 9 In re Constr. Equip. Co., 665 F.3d 1254 (Fed. Cir. 2011) .................................................................................................. 8 In re Contl Gen. Tire, Inc., 81 F.3d 1089 (Fed. Cir. 1995) ................................................................................................ 2, 9 In re Etter, 756 F.2d 852 (Fed. Cir. 1985) .................................................................................................... 7 In re Opprect, 868 F.2d 1264 (Fed. Cir. 1989) .................................................................................................. 7 In re Recreative Techs., 83 F.3d 1394 (Fed. Cir. 1996) .................................................................................................... 6 In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008) .................................................................................................. 8 Mendenhall v. Barber-Greene Co., 26 F.3d 1573 (Fed. Cir. 1994) ........................................................................................ 2, 10, 12 Patlex Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985) .................................................................................................. 10 Tan v. Integrated Silicon Solutions, Inc., No. C07-06166 WHA, 2008 WL 2340217 (N.D. Cal. June 5, 2008) ...................................... 12 - ii SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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1 2 3 4 5 6 7 8 9 STATUTES

TABLE OF AUTHORITIES (continued) Page

35 U.S.C. 303 ................................................................................................................................ 5 35 U.S.C. 307(a) ........................................................................................................................... 6 35 U.S.C. 312(a) ........................................................................................................................... 5 35 U.S.C. 315(e)(2) ....................................................................................................................... 8 35 U.S.C. 316(a) ........................................................................................................................... 6 35 U.S.C. 317 ................................................................................................................................ 8

10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 RULES 27 Fed. R. Civ. P. 59(a)....................................................................................................................... 12 28 - iii SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

OTHER AUTHORITIES Greg H. Gardella & Emily A. Berger, United States Reexamination Procedures: Recent Trends, Strategies And Impact On Patent Practice, 8 J. Marshall Rev. Intell. Prop. L. 381 (2009).......................................................................................................... 4 H.R. Rep. No. 96-1307, 96th Cong., 2d Sess. 3 (1980) ................................................................... 6 Restatement 2d, Judgments, 16 ................................................................................................... 11 U.S. Patent & Trademark Office Manual of Patent Examining Procedure 2216 (8th ed. 2001) ............................................................................................................................. 6 U.S. Patent & Trademark Office Manual of Patent Examining Procedure 2242 (8th ed. 2001) ............................................................................................................................. 5 U.S. Patent & Trademark Office Manual of Patent Examining Procedure 2279 (8th ed. 2001) ............................................................................................................................. 7 U.S. Patent & Trademark Office Manual of Patent Examining Procedure 2611 (8th ed. 2001) ............................................................................................................................. 3 U.S. Patent & Trademark Office Manual of Patent Examining Procedure 2616 (8th ed. 2001) ............................................................................................................................. 6 U.S. Patent & Trademark Office Manual of Patent Examining Procedure 2642 (8th ed. 2001) ............................................................................................................................. 5

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1 2 3 4 5 6 7 8 9 REGULATIONS

TABLE OF AUTHORITIES (continued) Page

37 C.F.R. 1.501 ............................................................................................................................. 7 37 C.F.R. 1.550(g) ........................................................................................................................ 5 37 C.F.R. 1.902 ............................................................................................................................. 7 37 C.F.R. 1.905 ............................................................................................................................. 7 37 C.F.R. 1.907 ............................................................................................................................. 8 37 C.F.R. 1.913 ............................................................................................................................. 3

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37 C.F.R. 41.31(a)(2) .............................................................................................................. 5, 12

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I.

INTRODUCTION The Patent Trial and Appeals Board (Board) has issued decisions that render invalid the

ten Rambus claims-in-suit, and Hynix seeks summary judgment of invalidity based on the collateral estoppel effect of the Boards decisions. In response, Rambus has made the novel, legally unsupported, and illogical argument that Hynix should be denied the legal effect of the Boards invalidity decisions, which were issued in reexaminations requested by Samsung and Micron, because Hynix allegedly could have filed requests for reexamination before Samsung and Micron did so. Rambus does not contend that the outcome of the reexaminations would have been any different had Hynix, rather than Samsung and Micron, initiated the reexaminations. Instead, Rambuss point appears to be that the Board might have come to the same invalidity conclusions somewhat earlier than it did, in which case Rambus speculates that some of the effort necessitated by this ongoing litigation might have been avoided. In the context of this argument by Rambus, the Court posed the following question to counsel for Hynix at the hearing on December 19, 2012: I would like to hear the position again as to when you could have filed ex parte reexam request and when you could, if you could have filed, inter partes requests. Hrg Tr. 59:14-16 December 19, 2012. Hynix submits this brief in response to the Courts question. This case began in August 2000, but it was not until January 2005 that Rambus elected which of the more than 500 claims in the patents-in-suit it would try. (D.E. 693.) Although it might have been possible for Hynix to seek inter partes and/or ex parte reexamination of some of the claims-in-suit once Rambus elected the claims for trial, it was not practical for Hynix to do so. Inter partes reexamination was not available for some of the claims-in-suit, and inter partes reexaminations were not widely used until procedures were refined and improved during the mid2000s. Ex parte reexaminations do not afford an accused infringer the right of participation or appeal, making those procedures disfavored as well. Once Samsung and Micron initiated reexaminations beginning in October 2006, Hynix could not seek reexamination based on the same prior art or arguments already being advanced by those other parties because the PTO does -1SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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not permit duplicative reexamination proceedings. More importantly, even if it was possible for Hynix to have requested reexaminations, the Federal Circuit has held that there is no requirement for an accused infringer to do so. See In re Contl Gen. Tire, Inc., 81 F.3d 1089, 1093 (Fed. Cir. 1995). Under the statutory reexamination scheme that was in place during the relevant time period, an accused infringer was entitled to attack patent validity both in litigation and in reexamination, subject only to the statutory estoppel effect of an unsuccessful inter partes reexamination.1 There was no time limit within which reexaminations were required to be brought, and an accused infringer was (and is) entitled to the benefit of cancellation during reexamination brought by itself or others, even if it had previously unsuccessfully litigated the issue of validity, at least where (as here) the litigation had not yet reached completion. Rambus seeks to inject a fault-based threshold inquiry into the application of collateral estoppel based on PTO invalidity determinations in reexaminations filed by third parties. Imposing such a requirement would be inconsistent with well-established statutory and case law and would be bad public policy. See Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 331 (1971) (noting problems inherent in permitting patentees to relitigate patents once held invalid). The actions that Hynix did or did not take in seeking reexamination of the claims-in-suit do not justify denying Hynix the collateral estoppel effect of the Board determinations that those claims are invalid. Federal Circuit law is clear that a party in pending litigation is entitled to the benefit of an invalidity determination rendered in another proceeding, even if the party did not succeed on its own invalidity defense. See Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1580-81 (Fed. Cir. 1994). Rambus does not seriously dispute that it would be improper for the Court to enter judgment in its favor on the four claims-in-suit that the Board has directly held to be invalid. This tacit recognition of the binding force of the Board decisions thus requires the The Leahy-Smith America Invents Act (AIA), which was enacted in 2011 and the provisions of which began to take effect in September 2012, included changes to post-grant review procedures, including provisions that replaced the previous inter partes reexamination procedures. Because the Courts question related to what reexamination options were available to Hynix while this case was initially being litigated in this Court, this brief discusses reexamination procedures under pre-AIA law. -2SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW
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Court to determine the effect of other Board invalidity determinations on the remaining six claims-in-suit. As Hynix has demonstrated, there are no patentably significant differences between the remaining claims-in-suit and claims rejected by the Board. Rambus has not even attempted to rebut Hynixs showing on this issue with expert testimony, as it was required to do. Accordingly, because all the other requirements of collateral estoppel are met, Hynix is entitled to summary judgment of invalidity on all ten claims-in-suit. II. THERE WERE LEGAL AND PRACTICAL LIMITATIONS ON HYNIXS ABILITY TO SEEK REEXAMINATION OF THE CLAIMS-IN-SUIT Rambus elected to try ten claims from six patents, and it is those ten claims that are invalid by operation of the Boards reexamination decisions. Hynix thus focuses on the availability of reexamination with respect to the ten claims-in-suit. A. Availability to Hynix of reexamination prior to initiation of reexaminations by Samsung and Micron 1. Inter partes reexamination

Hynix could not have sought inter partes reexamination of the two claims-in-suit from the 105 and 918 patents. Inter partes reexamination was available only for patents based on original applications filed on or after November 29, 1999, the effective date of the American Inventors Protection Act of 1999. See 37 C.F.R. 1.913 and U.S. Patent & Trademark Office Manual of Patent Examining Procedure (MPEP) 2611 (first paragraph) (8th ed. 2001).2 The application for the 105 patent was filed on November 26, 1997, and the application for the 918 patent was filed on February 19, 1999. Thus, inter partes reexamination has never been available for the 105 and 918 patents. The other claims-in-suit are from patents for which the original applications were filed after November 1999. Thus, in principle Hynix could have filed inter partes reexaminations after those other patents issued in late 2001 and 2002.
2

Although all of the patents in suit claim priority to Rambuss initial April 1990 application, the Federal Circuit has approved the PTOs construction of original application to be any new application, including a continuation or divisional application. Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1331 (Fed. Cir. 2008). -3SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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3

There were, however, a number of practical reasons why Hynix was reasonable in not pursuing inter partes reexamination at that time. Prior to January 21, 2005, when Rambus narrowed its claims to the ten claims to be tried in the 2006 patent trial (D.E. 693), there were fifteen patents-in-suit containing in excess of 500 claims.3 Until Rambus identified which

claims were truly at issue, it would have been an unnecessary and unreasonable burden on Hynix to seek reexamination of all of the 500-plus claims potentially at issue. Moreover, the inter partes reexamination procedures available during the early 2000s had significant drawbacks. Until 2002, a third party who initiated an inter partes reexamination had no right to appeal. See Greg H. Gardella & Emily A. Berger, United States Reexamination Procedures: Recent Trends, Strategies And Impact On Patent Practice, 8 J. Marshall Rev. Intell. Prop. L. 381, 390-91 (2009), and authorities cited therein. In addition, prior to formation of the Central Reexamination Unit (CRU) in July 2005, all reexamination requests (whether ex parte or inter partes) were simply assigned to the examiner that had been responsible for the original application; the CRU was formed with specialized, experienced examiners that did nothing but handle reexaminations, and teams of three examiners are assigned to every request. Id. at 391-92. Since the CRUs formation, the use of inter partes reexamination became seen as a much more viable option. Id. at 394-396. Accordingly, Hynixs ability to request inter partes reexamination was limited both by statutory and practical constraints, and its decision not to initiate inter partes reexamination before Samsung and Micron requested reexamination was consistent with common practice at the time. 2. Ex parte reexamination

Prior to the time when Samsung and Micron initiated reexaminations, Hynix could have filed ex parte reexaminations of any of the claims-in-suit. Ex parte reexamination is disfavored, Eleven of these fifteen patents were the subject of Hynixs initial Declaratory Judgment Complaint; Rambus designated 29 of the claims of the initial eleven patents as representative on July 16, 2001. (D.E. 123.) Rambuss Amended Counterclaim of November 25, 2002, added an additional four patents (120, 020, 916, and 863), and designated an additional 30 claims from these four patents for pretrial proceedings. (D.E. 249.) -4SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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however, because the requestor has no right to participate in an ex parte reexamination or to appeal any reexamination decision. See 37 C.F.R. 41.31(a)(2) (permitting only the patent owner to appeal); 37 C.F.R. 1.550(g) (prohibiting participation by third party requestor in reexamination proceedings). As a result, Hynixs decision not to request ex parte reexaminations prior to the initiation of the Samsung and Micron reexaminations was entirely reasonable. B. Availability to Hynix of reexamination after initiation of reexaminations by Samsung and Micron

Once Samsung and Micron filed for inter partes reexamination of all of the claims-in-suit for which inter partes reexamination was available, Hynixs ability to file additional requests for reexamination, whether inter partes or ex parte, was curtailed. This results from the statutory requirement that any reexamination request present a substantial new question of patentability, frequently referred to as an SNQ. 35 U.S.C. 303 (ex parte reexamination) and 312(a) (preAIA version regarding inter partes reexamination). As interpreted by the PTO, this means that any new reexamination request must present an issue of patentability that is new (and substantial) over all prior questions that have been raised at the time of a new request, including both those raised in the original examination and those raised in all previously filed reexamination proceedings. See MPEP 2242, second paragraph (ex parte reexamination) and 2642 (inter partes reexamination) (in order for the second or subsequent request for reexamination to be granted, the second or subsequent requester must independently provide a substantial new question of patentability which is different from that raised in the pending reexamination for the claims in effect at the time of the determination.). Samsungs requests for reexamination of the claims-in-suit were based on the iAPX and Budde references with additional references to show particular features not disclosed in iAPX or Budde. Exs. C, E, G, I to Declaration of Kenneth L. Nissly in support of SK hynixs Brief re Availability of Reexamination (Nissly Decl.). Most of Microns requests for reexamination of the claims-in-suit were based on the Bennett or SCI references as primary references. Exs. D, F, H, J to Nissly Decl. In order for Hynix to raise a new SNQ in any subsequent request, it would have had to use different prior art references or, at a minimum, cast the iAPX or Bennett -5SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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references in a new light by pointing out something that the examiner had failed to appreciate in these references (as opposed to an area of disagreement). See MPEP 2216, 2616. Hynix could not simply offer the same arguments that were in the Samsung or Micron reexaminations because those would not have presented SNQs. Indeed, the PTO rejected a portion of one of Microns reexamination requests on this ground. The PTO reexamined the 184 patent at issue in this case based on two reexamination requests: one filed by Samsung (Reexamination Control No. 95/000,183) and a later one filed by Micron (Reexamination Control No. 95/001,112). Microns request included some prior art that was not present in the reexamination initiated by Samsung, but also included some references that were present in the Samsung-initiated reexamination. Although the Examiner granted Microns request for reexamination based on the new prior art, the Examiner denied those portions of Microns request that were based on the art involved in the Samsung-initiated reexamination because it found that the old art failed to present new, non-cumulative technological teachings that were not previously considered and thus did not present SNQs. Ex. K to Nissly Decl. (Order Granting Request for Inter Partes Reexamination from Reexamination Control No. 95/001,112 (mailed Jan. 16, 2009)) at 14. Congress instituted the SNQ requirement to prevent third party requesters from harassing patent owners with duplicative requests for reexamination. H.R. Rep. No. 96-1307, 96th Cong., 2d Sess. 3 (1980); see also In re Recreative Techs., 83 F.3d 1394, 1397 (Fed. Cir. 1996). For Rambus to now argue that every litigation opponent should file its own request for reexamination of the same patent with the same question of patentability flies in the face of the rule and the rules purpose. Once the USPTO addresses a question of patentability, there is no need for it to consider the same question of patentability from a second party. This is so because when the time for appeal has expired or any appeal proceeding has terminated, the Director will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable. 35 U.S.C. 307(a) and 316(a) (pre-AIA version). There is no need for multiple reexaminations of the same patent on substantially similar issues, and indeed the PTO is prevented from doing so by statute, because the result of reexamination is not merely an affirmative defense available only to the requester, but a determination that the patent is invalid as to the world. -6SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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Hynix also could not have joined or intervened in the existing reexamination proceedings. All of the Samsung and Micron reexaminations on the claims-in-suit were inter partes reexaminations. In inter partes reexaminations, intervention is not authorized in the relevant statutes, regulations, or guidance of the MPEP. Moreover, intervention appears to be effectively forbidden. With one exception, submissions by a third party (i.e., a party other than the patent owner or the party that requested the reexamination) are not allowed in inter partes reexaminations. 37 C.F.R. 1.905. The one exception is that third parties may submit prior art under 37 C.F.R. 1.501, but any prior art submitted will not be considered until issuance of a Reexamination Certificate (i.e., after all appeals have been exhausted). 37 C.F.R. 1.902. Intervention in ex parte proceedings is theoretically possible, see MPEP 2279, and it has only occasionally been permitted under exceptional circumstances. See In re Etter, 756 F.2d 852 (Fed. Cir. 1985). Intervention is not authorized, however, and it is routinely denied. See In re Opprect, 868 F.2d 1264 (Fed. Cir. 1989). Indeed, Rambus successfully opposed Hynixs Motion for Leave to File an Amicus Brief in its appeal from the BPAI decision regarding the 918 patent. See Ex. A to Nissly Decl. (Order denying Hynix Semiconductor, Inc.s motion for leave to file a brief amicus curiae issued on September 2, 2011in the In re Rambus, Inc.; United States Court of Appeals for the Federal Circuit; Case No. 2011-1247 (Reexamination No. 90/010,420)). As the Samsung and Micron reexaminations moved forward on certain claims, it became possible for Hynix to file ex parte requests on some of the claims-in-suit, and Hynix did so. Hynixs motion for summary judgment is not based on the ex parte reexaminations it initiated, however, and the unreviewed Examiner decisions in those reexaminations are no bar to Hynixs ability to rely on Board decisions in the Samsung and Micron reexaminations. See Section IV, infra. III. HYNIX IS ENTITLED TO THE BENEFIT OF THE BOARDS REEXAMINATION DECISIONS DESPITE HAVING CHALLENGED THE VALIDITY OF RAMBUSS PATENTS IN LITIGATION At the December 19 hearing, Rambuss counsel argued that Hynix did not challenge anybody inter partes because if they had, they cant do that and litigate the claims at the same time. Congress said you get to make a choice. . . . They chose trial. Having lost at trial, they now -7SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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. . . want to piggy back on inter partes exams that others have done. Hrg Tr. 46:12-19 December 19, 2012. Rambuss contention that Congress requires a party to choose between litigation and reexamination is simply wrong. The law is clear that a party challenging the validity of issued patents need not choose between litigation and reexamination. See, e.g., In re Baxter Intl, Inc., 678 F.3d 1357, 1365 (Fed. Cir. 2012) (Congress has provided for a reexamination system that permits challenges to patents by third parties, even those who have lost in prior judicial proceedings), In re Constr. Equip. Co., 665 F.3d 1254, 1256 n.3 (Fed. Cir. 2011) (holding that accused infringer was not barred from initiating reexamination despite previous failure to prove patent invalid in litigation), In re Swanson, 540 F.3d 1368, 1379 (Fed. Cir. 2008) (affirming PTO holding that reexamination could be instituted on the strength of a reference that the requesting party had unsuccessfully asserted as prior art in litigation involving same patent, even where Federal Circuit had affirmed district courts judgment of validity.) An accused infringer is not foreclosed from also seeking inter partes reexamination unless and until after a final decision in a civil action is entered against [that] party. 35 U.S.C. 317 (pre-AIA version) and 37 C.F.R. 1.907.4 Similarly, a party who initiates inter partes reexamination may concurrently litigate the validity issue; the only limitation is that at the conclusion of the reexamination (including all appeals), the requester is estopped in district court from raising prior art that it used, or could have used, in the reexamination. 35 U.S.C. 315(e)(2). Thus, where both litigation and inter partes reexamination proceed in parallel, it is not until one of these parallel proceedings reaches finality that the other avenue may be foreclosed. Here, the litigation remains pending, and Hynix is therefore entitled to the effect of the Boards reexamination rulings. The result Rambus advocates for here would effectively force all parties who might be accused of infringement to pursue reexamination or else be at risk of losing the benefit of PTO cancellation of the patents in reexaminations initiated by other parties. Not only is there no statutory support for such a requirement, it is contrary to the statutory scheme imposing an SNQ
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This provision has not been triggered in this case because there has been no final judgment. -8SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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requirement, under which duplicative reexamination proceedings are not permitted. See Section II.B., supra. Such a rule would be contrary to Federal Circuit precedent, which holds that a district court does not have the authority to compel any party to request reexamination. In re Contl Gen. Tire, 81 F.3d at 1093 (granting petition for writ of mandamus). A partys choice whether to request reexamination, like the patentees choice whether to seek reissue, should remain undisturbed by the courts. Id. at 1092.5 Just as the Court did not have the power to force Hynix to choose reexamination before trial, it does not now have the power to deny Hynix the effect of the Board determinations in reexaminations instituted by others. Even if Hynix had filed reexamination requests immediately after Rambus identified the claims-in-suit in January 2005, the Board would not have issued decisions in time to avoid the patent and conduct trials in this case. The Board decisions upon which Hynixs motions rely issued in 2012, in reexaminations initiated by Samsung and Micron beginning in 2006. There is no reason to think that the Board would have decided a Hynix-initiated reexamination in significantly less than the three to five years that it took to decide the Samsung and Micron reexaminations. Thus, even if Hynix had requested reexamination in early 2005, as soon as Rambus identified the claims-in-suit, the patent and conduct trials almost certainly would have been completed before the Board would have issued a decision in the reexamination. Moreover, even if now denying Hynix the effect of the Board decisions could somehow mitigate or justify the resources already devoted to the litigation, concerns for judicial efficiency and economy cannot override the limitations of statutory authority. In re Contl Gen. Tire, 81 F.3d at 1092. In any event, Rambus has not suggested that Hynixs decision not to immediately seek reexamination lulled Rambus into a false sense that its patents were safe from reexamination or in any way prejudiced Rambus. Nor could Rambus credibly make such an argument. Patents are never safe from repeated validity attacks, whether by a losing litigant or by others. See In re Baxter Intl, 678 F.3d at 1365; Ethicon v. Quigg, 849 F.2d 1422, 1429 n.3 (Fed. Cir. 1988);
5

As the Federal Circuit noted in In re Contl Gen. Tire, a patentee such as Rambus could have sought reexamination itself [i]f it considered reexamination to be a desirable expedient in this case but having chosen not to do so, it has no right to force its opponent to take an action which it has declined to do. In re Contl Gen. Tire, 81 F.3d at 1093. -9SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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Mendenhall, 26 F.3d at 1580-81. Rambus knew that its litigation war against the DRAM industry made its patents vulnerable to repeated attacks in the courts and the PTO. If Rambuss proposed approach -- in which accused infringers are granted or denied the benefit of PTO invalidity decisions based on the perceived degree of diligence of those parties in seeking reexamination -- were to become the general rule, it would simply multiply litigation in the already complex situation where litigation and reexamination are proceeding concurrently. This would waste far more judicial and party resources in the long run than would be saved by denying Hynix the collateral estoppel effect of the Board decisions here. Rambus may point to Amado v. Microsoft Corp., 517 F.3d 1353 (Fed. Cir. 2008) -- in which a court denied a motion to set aside a judgment under Rule 60 to introduce evidence of statements made by the patent holder during a reexamination filed by the defendant after entry of judgment -- for the proposition that a partys decision to delay or forego reexamination may have consequences. But Amado is of no help to Rambus because it does not address the issue in this case: reexaminations filed by others resulting in the claims-in-suit being invalidated. Rambus has not identified any cases supporting the drastic consequence it seeks to impose here, under which the Court would enter judgment against Hynix on claims that the PTO has determined to be invalid. Such a fault-based scheme would improperly limit the force and effect of PTO determinations of patent invalidity, which are of great public importance. See Blonder-Tongue Labs., 402 U.S. at 350 (holding that patentee whose patent is held invalid against one alleged infringer may be precluded from asserting validity of that patent as against others); Patlex Corp. v. Mossinghoff, 758 F.2d 594, 604 (Fed. Cir. 1985) (reexamination results in removal of patents that should have never been granted). Rambuss reexamination laches or reexamination waiver argument crumbles in light of the statutory scheme, and similarly the Courts concern about timing of filing reexamination requests is misplaced. Simply put, Rambus is upset that, after a long and expensive legal battle for all involved, the Farmwald/Horowitz claims tried here have been determined to be invalid by the Board. But the position Rambus now finds itself in is the not the result of any action or inaction by Hynix. Hynix acted in accordance with the statutory scheme and practical, real- 10 SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW

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world considerations. In sum, Hynix has done nothing wrong and should not be forced to be the only party in the world to defend against Rambuss invalid patent claims, just as Hynix should not be the only party against whom Rambus may enforce its patents despite its spoliation of evidence. See the January 2, 2013 Memorandum Opinion issued by the Honorable Sue L. Robinson in the Micron Technology, Inc. v Rambus Inc.; Civ. No. 00-792-SLR;, attached to letter from Kenneth L. Nissly to Honorable Judge Whyte dated January 2, 2013. (D.E. 4229.) IV. HYNIX IS ENTITLED TO SUMMARY JUDGMENT OF INVALIDITY ON ALL TEN CLAIMS-IN-SUIT BASED ON THE RESULTS OF THE REEXAMINATIONS INITIATED BY SAMSUNG AND MICRON As discussed more fully in Hynixs pending motions,6 the Boards reexamination decisions are preclusive on the issue of the invalidity of the claims-in-suit. Rambus does not seriously contend that the Court should now enter judgment in its favor on the four claims-in-suit that have been directly rejected as invalid by the Board. If the Court were to do so, it would be directly contrary to the Congressional scheme of reexamination. The only argument Rambus offers with regard to those four claims is that the Board decisions are still subject to appeal, although Rambus has neither committed to appeal the Board decisions nor advanced any argument as to why an appeal will be successful. The prospect of an appeal should not prevent the Court from entering judgment. See generally Restatement 2d, Judgments, 16. If, however, the Court is concerned about finality, it should stay the case, not enter judgment on invalid patent claims. The Boards decisions are just as preclusive with respect to the remaining six claims-insuit. Hynix has presented unrebutted expert testimony establishing that for each of those six remaining claims, the Board has found invalid claims that are not patentably distinct. See Hynixs Mot. for Summ. J. 17-22 (D.E. 4164); see also Decl. of David Taylor in Supp. of Hynixs Mot. for Summ. J. (D.E. 4169). Those Board decisions are entitled to collateral estoppel effect notwithstanding the existence of unreviewed Examiner decisions confirming the validity of

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the remaining six claims-in-suit.7 The Board has held that each of the five features that Rambus claims to have invented, as well as various combinations of those features, are obvious. The Court cannot rely on the Examiners confirmations, prior to the Board decisions, of the remaining six claims-in-suit without also considering the effect of the Board decisions, which rejected the Examiners reasoning as to the confirmed claims and established the obviousness of the features that are the subject of those claims.8 At a minimum, the Board decisions are new evidence warranting a new patent trial. See Fed. R. Civ. P. 59(a); see generally Hynixs Mot. for New Trial 5-10 (D.E. 4166). Hynixs earlier unsuccessful validity challenge in this case is no bar to affording collateral estoppel effect to the Boards invalidity determinations. See Mendenhall, 26 F.3d at 1580-81. The Board decisions satisfy all requirements for application of collateral estoppel. See Tan v. Integrated Silicon Solutions, Inc., No. C07-06166 WHA, 2008 WL 2340217, at *4 (N.D. Cal. June 5, 2008); and see generally Hynixs Mot. for Summ. J. 11-23 (D.E. 4164). This Court can and should consider the Board decisions on the merits, and it is not foreclosed from doing so by the mandate rule. See Exxon Chem. Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475, 1478 (Fed. Cir. 1998). V. CONCLUSION Hynix is entitled to the benefit of recent Board decisions that have established that Rambuss claims-in-suit are invalid. For all the reasons set forth in Hynixs pending motions, the At the December 19, 2012 hearing, the Court expressed concern that in the ex parte reexaminations initiated by Hynix, Rambus cant appeal that decision or didnt appeal that decision. Hrg Tr. 59:18-22 December 19, 2012. Rambus had no reason to appeal the Examiners decisions confirming Rambuss claims, however. It was Hynix that was unable to appeal the Examiner confirmations due to the fact that a third party that initiates an ex parte reexamination has no right to appeal. See 37 C.F.R. 41.31(a)(2) (permitting only the patent owner to appeal). Rambus had the right to appeal any adverse decisions in the ex parte reexaminations initiated by Hynix, and in fact Rambus has done so. See Ex. B to Nissly Decl. (December 27, 2011 Notice of Appeal Under 37 C.F.R 41.31 from the United States Patent and Trademark Office re U.S. Patent No. 6,324,120 (Control No. 90/011,005)). 8 The chart at pp. 9-10 of Hynixs Consolidated Reply on its Motion for Summary Judgment and other motions (D.E. 4200) explains more fully how the Examiners analysis in ex parte reexaminations brought by Hynix has been rejected in subsequent Board decisions. Hynix notes that there was a typographical error in that chart: the reference to claim 33 of the 020 patent at p. 10:7 should have been a reference to claim 32 of that patent. - 12 SK HYNIXS BRIEF RE AVAILABILITY OF REEXAMINATION CV 00-20905 RMW
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Court should grant summary judgment of invalidity on all claims-in-suit based on collateral estoppel. If the Court is unwilling to do so, it should order a new patent and damages trial and/or stay these proceedings. In any event, the Court should permit Hynix to supplement its reply to add a collateral estoppel defense. Dated: January 11, 2013 By: /s/ Kenneth L. Nissly Kenneth L. Nissly KENNETH L. NISSLY SUSAN van KEULEN SUSAN ROEDER OMELVENY & MYERS LLP KENNETH R. OROURKE OMELVENY & MYERS LLP THEODORE G. BROWN III KILPATRICK TOWNSEND & STOCKTON LLP Attorneys for Plaintiffs SK HYNIX INC., SK HYNIX AMERICA INC., SK HYNIX U.K. LIMITED, and SK HYNIX DEUTSCHLAND GmbH
OMM_US:71223071.4

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