Rambus v. Rea: Board May Not Alter Examiner Grounds for Combination

Category: Administrative Law  
By: Jesus Hernandez, Blog Editor/Contributor 
TitleRambus, Inc. v. Rea, No. 2012-1634 (Fed. Cir. Sept. 24, 2013).
Issue[1] [Rambus] contends that the Board erroneously placed the burden on Rambus to demonstrate nonobviousness. [2] [Rambus also] asserts that, rather than rely on the examiner’s flawed findings, the Board relied on unsubstantiated conjecture that one could combine [the] iAPX and Inagaki [references] into an operable system.
Rambus, at *9 (text added).
[1] The Board erroneously placed the burden on Rambus to prove that its claims were not obvious. In reexamination proceedings, “a preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application.”
Rambus, at *10-11.
[2] The Board also exceeded its limited role to “review of the examiner’s decisions during prosecution.” [by changing the grounds for combining the iAPX and Inagaki references.] In re Stepan Co., 660 F.3d 1341, 1344 (Fed. Cir. 2011).
Id. at *11 (text added).

Procedural HistoryRambus Inc. appeals from the decision of the Board of Patent Appeals & Interferences (Board) holding invalid various claims of U.S. Patent No. 6,260,097 (’097 patent) for anticipation and obviousness. Rambus challenges the Board’s claim construction and its obviousness decision.
Rambus, at *2.


Legal Reasoning (Moore, Linn, O'Malley)
A. Improper Burden
Legal StandardIn re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining that while “the applicant must identify to the Board what the examiner did wrong, . . . the examiner retains the burden to show invalidity”)
Rambus, at *10-11.
Court FindingThe Board [improperly] concluded that “Rambus ha[d] not demonstrated that skilled artisans . . . would not have been able to arrive at the broadly claimed invention.” […] That was legal error.
Id. at *10-11 (text added).
B. New Fact Findings
Legal StandardUnder the Administrative Procedure Act, the PTO must ensure that the parties before it are “fully and fairly treated at the administrative level.” In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011). Namely, the PTO must “provide prior notice to the applicant of all ‘matters of fact and law asserted’ prior to an appeal hearing before the Board.” Stepan, 660 F.3d at 1345 (quoting 5 U.S.C. § 554(b)(3)). This framework limits the Board’s ability to rely on different grounds than the examiner. The Board may not “rel[y] on new facts and rationales not previously raised to the applicant by the examiner.” Leithem, 661 F.3d at 1319. Of course, the Board is not required to “recite and agree with the examiner’s rejection in haec verba” in order to ensure that the PTO has provided adequate notice. Id. And the Board may elaborate on the examiner’s findings, so long as the appellant had an adequate opportunity to respond to the Board’s findings during the PTO proceeding. […]
Rambus, at *11.
A Change in Motivation to Combine Amounts to a New FindingThe Board erred when it supplied its own reasons to combine iAPX and Inagaki. The examiner issued a specific finding—that one of skill in the art would have been motivated to modify the iAPX system to transfer data on both the rising and falling edges of the clock signal be- cause the system “does not show that all edges are used.” J.A. 1113. The PTO does not dispute that this finding was erroneous. […] Recognizing this problem, the Board instead found that a skilled artisan would have been able to drop functionality that iAPX discloses as occurring during the rising and falling edges of the clock. Board Opinion at 23–24. It also provided additional ways to combine iAPX and Inagaki […]. These findings were completely new; the Board did not elaborate on the examiner’s findings with “more detail.” […]
Id. at *12.
PTO Already has Procedure for New Grounds of RejectionThe Board has a procedure for issuing a new ground of rejection in appeals of inter partes reexaminations. 37 C.F.R. § 41.77(b). This procedure ensures that appellants have an appropriate opportunity to respond and, if necessary, supplement the record before the examiner. We cannot let the Board shortcut this procedure and deprive appellants of their due process rights.
Id. at *13.
C. Objective Evidence of Nonobviousness
Legal Standard
“For objective evidence . . . to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
Rambus, at *13.
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.
Id. at *14.
Adequate Showing of Long Felt Need and Industry praise for invention as a wholeThe 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. For example, an article in the Microprocessor Report stated that Rambus “ha[d] unveiled its radical new processor-to-memory interface and DRAM architecture, which promise to create the most significant change in processor/memory system architecture since the introduction of the DRAM two decades ago.”
Id. at *13.
[W]e affirm-in-part and vacate-in-part the Board’s decision and remand for further proceedings. AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED.
Rambus, at *16.


Editor's Note
This case also had a discussion on the construction of the terms "external clock signal" and "write request". For further reading on this issue, click here.


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