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Barbara Clarke McCurdy (Admitted pro hac vice) barbara.mccurdy@finnegan.com Naveen Modi (Admitted pro hac vice) naveen.modi@finnegan.com FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue, N.W. Washington, D.C. 20001 Telephone: (202) 408-4000 Facsimile: (202) 408-4400 Tina E. Hulse (State Bar No. 232936) tina.hulse@finnegan.com FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. Stanford Research Park 3300 Hillview Avenue Palo Alto, California 94304 Telephone: (650) 849-6600 Facsimile: (650) 849-6666 Attorneys for Defendant RAMBUS INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

INTERNATIONAL BUSINESS MACHINES CORPORATION, Plaintiff,

Case No. C 10-04017-JSW (Related Case: C 10-03736-JSW (terminated)) DEFENDANT RAMBUS INC.S NOTICE OF MOTION AND MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT Date: Time: Place: Judge: December 2, 2011 9:00 a.m. Courtroom 11, 19th Floor The Honorable Jeffrey S. White

19 v. 20 RAMBUS INC., 21 Defendant. 22 23 24 25 26 27 28

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1 2 3 4 5 6 7 B. 8 C. 9 III. 10 A. 11 B. 12 C. 13 14 15 IV. 16 17 18 19 20 21 22 23 24 25 26 27 28 D. SUMMARY OF ARGUMENT

TABLE OF CONTENTS

MEMORANDUM OF POINTS AND AUTHORITIES I. II. INTRODUCTION ...............................................................................................................1 STATEMENT OF RELEVANT FACTS ............................................................................3 A. The Board Has Considered IBMs Request to Add Rambuss Patents to the Interference on Three Occasions .............................................................................3 IBM Is Pursuing Interferences in the PTO with Rambuss Additional Patents .......5 Procedural History ...................................................................................................6

ARGUMENT .......................................................................................................................7 Legal Standard .........................................................................................................7 Authorizing Motions and Adding Patents to an Interference Is Discretionary ........8 The Board Did Not Abuse Its Discretion in Denying Authorization for IBMs Motions ..................................................................................................................10 IBM Has Failed to Raise Any Issues of Material Fact that Preclude Summary Judgment ................................................................................................................12

CONCLUSION ..................................................................................................................15

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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 STATUTES 26 CASES

TABLE OF AUTHORITIES PAGE(S)

Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ...................................................................................................................7 Burandt v. Dudas, 528 F.3d 1329 (Fed, Cir, 2008)................................................................................................10 Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ...................................................................................................................7 Dickinson v. Zurko, 527 U.S. 150 (1999) ...................................................................................................................8 Eli Lilly & Co. v. Board of Regents of University of Washington, 334 F.3d 1264, 1266 (Fed. Cir. 2003)..................................................................................8, 10 Ewing v. United States ex rel. Fowler Car Co., 244 U.S. 1 (1917) .......................................................................................................................2 Exigent Technology, Inc. v. Atrana Solutions, Inc., 442 F.3d 1301 (Fed. Cir. 2006)..................................................................................................7 In re Garner, 508 F.3d 1376 (Fed. Cir. 2007)............................................................................................9, 10 Louis v. Okada, 57 U.S.P.Q.2d 1430 (B.P.A.I. 2000)............................................................................10, 12, 13 Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (1986) ...................................................................................................................8 Quad Environmental Technologies v. Union Sanitary District, 946 F.2d 870 (Fed. Cir. 1991)..................................................................................................13 Star Fruits v. United States, 393 F.3d 1277 (Fed. Cir. 2005)................................................................................................10 In re Sullivan, 362 F.3d 1324 (Fed. Cir. 2004)............................................................................................8, 12 Thomas Jefferson University v. Shalala, 512 U.S. 504 (1994) .............................................................................................................9, 10 Winter v. Fujita, 53 U.S.P.Q.2d 1478 (B.P.A.I. 2000)......................................................................................2, 9

5 U.S.C. 706 ..................................................................................................................................8 27 35 U.S.C. 2(b)(2)(A) .....................................................................................................................8 28 - ii RAMBUS MOTION FOR SUMMARY JUDGMENT CASE NO. C 10-04017-JSW

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35 U.S.C. 135(a) ...................................................................................................................1, 2, 8 35 U.S.C. 146 ........................................................................................................................1, 2, 6 35 U.S.C. 291 ..........................................................................................................................3, 11 OTHER AUTHORITIES 37 C.F.R. 1.642 .................................................................................................................9, 12, 14 37 C.F.R. 41.1(b) ......................................................................................................................4, 8 37 C.F.R. 41.121(a)(1) ........................................................................................................2, 8, 14 37 C.F.R. 41.204(b) ......................................................................................................................8 68 F.R. 66648 (Nov. 26, 2003) ........................................................................................................9 Fed. R. Civ. P. 56(a) ........................................................................................................................7

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SUMMARY OF ARGUMENT Because the Board of Patent Appeals and Interferences (Board) of the U.S. Patent and Trademark Office (PTO) properly applied its discretionary case management authority, Defendant Rambus Inc. (Rambus) respectfully moves for summary against Plaintiff International Business Machines Corporation (IBM). IBM filed this action pursuant to 35 U.S.C. 146 to appeal a single discretionary order issued by the Board in Interference No. 105,467 (the Interference) between an IBM patent application and one of Rambuss patents. Specifically, IBM only seeks reversal of the Boards order denying IBMs request to file seventeen motions related to adding fifteen more Rambus patents and applications and over 500 claims to the Interference. As the Board provides in its rules governing interferences, however, a party may file a motion, but only to the extent the Board authorizes. 37 C.F.R. 41.121(a)(1) (emphasis added). And in implementing its responsibility to secure the just, speedy, and inexpensive resolution of every proceeding before the Board, 37 C.F.R. 41.1(b), the Board must have discretion to circumscribe the scope of an interference. See Winter v. Fujita, 53 U.S.P.Q.2d 1478, 1489 (B.P.A.I. 2000) (precedential). Given this discretion, this Court reviews the Boards decision under the abuse of discretion standard. There is no genuine dispute as to any material fact that the Board did not abuse its discretion in denying IBMs request. First, the Board explicitly stated that it denied IBMs request because adding so many patents and claims to the Interference would bog down the proceedings and interfere with the speedy, inexpensive resolution of the Interference. That explanation alone is sufficient to dispose of this case on summary judgment. Moreover, as the Board recognized, separate interference proceedings involving the other Rambus patents and applications can be declared. And even if it were true that the over 500 additional Rambus claims are obvious variants of the count, neither the rules nor the case law require their inclusion in the same interference. See 37 C.F.R. 1.642 (2003); Louis v. Okada, 57 U.S.P.Q.2d 1430, 1435 (B.P.A.I. 2000) (precedential). Indeed, by denying IBMs discovery requests on this issue, this Court has recognized that such allegations are irrelevant to whether the Board abused its discretion. Order [Dkt. No. 42] at 5. Thus, there is no question that the Board did not abuse its discretion in rendering its decision. As such, judgment should be entered against IBM.
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NOTICE OF MOTION PLEASE TAKE NOTICE that, on December 2, 2011, at 9:00 a.m. in Courtroom 11, located on the 19th Floor of the above-entitled court at 450 Golden Gate Avenue, San Francisco, California, or as soon thereafter as the matter may be heard before the Honorable Jeffrey S. White, Defendant Rambus Inc. (Rambus) will and hereby does move this Court for an order granting summary judgment against Plaintiff International Business Machines Corporation (IBM). This motion is based upon this Notice of Motion and Memorandum of Points and Authorities, the Declaration of Tina E. Hulse in Support of Defendant Rambus Inc.s Motion for Summary Judgment (Hulse Decl.), other papers and pleadings on file, and on such additional argument and evidence as may be presented to the Court at or prior to the hearing on this motion. STATEMENT OF RELIEF REQUESTED Rambus respectfully moves for summary judgment because there is no genuine dispute as to any material fact that the Board properly applied its discretion in rendering its decision to not consider IBMs preliminary motions. IBM has brought a complaint under 35 U.S.C. 146 (Complaint) seeking reversal of a purely discretionary case management ruling by the Board of Patent Appeals and Interferences (Board) of the U.S. Patent and Trademark Office (PTO) to not permit IBM to file seventeen proposed preliminary motions and to remand to the Board for consideration of those motions. Specifically, IBM complains that the Board improperly denied its request to file seventeen motions that would add fifteen Rambus patents and over 500 claims to the Interference at issue. The record is clear, however, that the Board rightfully exercised its discretion to manage the scope of the Interference, and, therefore, IBMs case should be dismissed on summary judgment. MEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION When the PTO finds that a patent application claims the same invention as the patent or pending application of another party, it can institute patent interference proceedings under the authority provided in 35 U.S.C. 135(a). The purpose of an interference is to determine priority of inventionwhich party invented the invention first. However, the declaration of an interference is -1RAMBUS MOTION FOR SUMMARY JUDGMENT CASE NO. C 10-04017-JSW

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within the discretion of the PTO. See 35 U.S.C. 135(a) (stating if the parties in the opinion of the Director are determined to have interfering claims, an interference may be declared) (emphasis added); Ewing v. United States ex rel. Fowler Car Co., 244 U.S. 1, 10-11 (1917) (It is to be remembered that the law gives the Commissioner both initial and final power [to determine whether claims interfere].). The Board likewise has discretion as to the scope of the proceeding and whether any motions preliminary to the determination of priority may be filed. See Winter v. Fujita, 53 U.S.P.Q.2d 1478, 1489 (B.P.A.I. 2000) (precedential) (stating any preliminary motion must be filed when authorized by the boardnot at any time); 37 C.F.R. 41.121(a)(1) (noting a party may file a motion to the extent the Board authorizes it). In this case, IBM sought interference proceedings with fifteen Rambus patents and applications.1 In its discretion, the PTO Board declared Interference No. 105,467 (the Interference) between one IBM application and one Rambus patent, and an Administrative Patent Judge (APJ) was assigned to preside over the case. During the Interference, IBM asked for leave to bring a series of motions to add the other Rambus patents that had been excluded from the Interference. After hearing IBMs request in a conference call on the parties proposed motions, the APJ declined to allow the filing of motions to add the 500 claims from these other patents and applications, explaining that adding so many extra claims really bogs down the proceeding, an expensive result and that the Interference would be unmanageable if it were expanded in the manner sought by IBM. Hulse Decl., Ex. A at 32:11-14, 33:15-18. Ultimately, the Board awarded priority of invention to IBM for the Count, which defines the interfering subject matter, and Rambus brought an action under 35 U.S.C. 146 (see Case No. C 10-03736 JSW (now terminated)). Two weeks later, IBM brought this cross-action. IBMs Complaint is based solely on the ground that the Board allegedly erred in refusing to permit IBM to file motions seeking to add the hundreds of other Rambus claims to the Interference. The only relief sought by IBM is a remand to the PTO requiring the Board to receive and consider such motions. But there is no genuine dispute of material fact that supports IBMs claim. Whether to permit IBM
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All of the Rambus applications that are identified in IBMs complaint have issued as patents, except for one, which was abandoned. Hulse Decl. 3-4. -2RAMBUS MOTION FOR SUMMARY JUDGMENT CASE NO. C 10-04017-JSW

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to file a motion seeking to add patents was discretionary, and it is undisputed that the Board was not obligated to include the additional Rambus patents and applications, either when it originally declared the Interference or later during the Interference. Granting summary judgment here is particularly compelling because the Boards action was merely related to case management, was expressly intended to avoid enlarging the scope of the Interference in an unmanageable manner, and does not preclude IBM from requesting interferences in other patent applications with any or all of the additional Rambus patents and applications. Indeed, IBM cannot fairly complain, and in fact does not complain, that it has somehow been deprived of the opportunity or right to pursue potential interferences with the other Rambus patents and applications that it seeks to add. IBM already has at least one pending patent application not involved in the Interference in which it has copied claims from the very same Rambus patents and applications that it tried to bring into the Interference, presumably with the intent to provoke additional interferences with those Rambus patents and applications. The PTO process should be allowed to run its course in accordance with the PTOs own management of its cases. In the end, there are no disputed facts that provide any basis for this Court to override the Boards discretionary decisions as to the manner in which the Interference was to be conducted. IBMs Complaint seeks relief that it is not entitled to. Rather, the appropriate relief for IBM is through its further prosecution of applications before the PTO to request interferences or, if interfering patents are issued, in the statutory provision for interferences between patents, 35 U.S.C. 291. For these reasons, as further explained below, Rambus respectfully requests that the Court grant summary judgment against IBM. II. STATEMENT OF RELEVANT FACTS A. The Board Has Considered IBMs Request to Add Rambuss Patents to the Interference on Three Occasions

During prosecution of its involved reissue U.S. Patent Application No. 11/203,652 (the IBM 25 Application), IBM copied claims from and added variations of the claims of Rambuss U.S. Patent 26 No. 6,502,161 (the 161 Patent). IBM then submitted a Request for Declaration of Interference 27 (Request for Interference) in which it suggested an interference between the IBM Application and 28 the 161 Patent. In addition to the 161 Patent, IBM requested that fifteen other Rambus patents and -3RAMBUS MOTION FOR SUMMARY JUDGMENT CASE NO. C 10-04017-JSW

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applications, whose claims had not been copied into the IBM Application, be included in the Interference. Hulse Decl., Ex. B at 1-2. While the Board granted IBMs request to declare an interference, the scope of the Interference was limited to the IBM Application and the 161 Patent from which the IBM Application had copied claims. Hulse Decl., Ex. C at 3. After the institution of the Interference, IBM submitted a list of proposed preliminary motions that it sought authorization to file. Specifically, IBM identified eighteen motions, seventeen of which related to its request to add to the Interference the fifteen other Rambus patents and applications and all of their respective claims. Hulse Decl., Ex. D at 2-5. During a conference call in which the arguments for and against the various proposed motions were heard, the APJ (Judge Medley) explained that she had considered whether to include the other Rambus patents and applications when she initially reviewed IBMs Request for Interference before declaring the Interference. Hulse Decl., Ex. A at 32:8-10. She had concluded at that time that the fifteen additional Rambus patents and applications should not be part of the Interference. She advised that the Board tr[ies] to keep things flowing pretty quickly in the trial division and adding so many extra claims really bogs down the proceeding, an expensive result. Id. at 32:11-14. IBM then explained its argument to the APJ why it should be permitted to file its motions to add the other Rambus patents and applications. Id. at 32:15-35:17. But the APJ maintained her position that adding the patents would be unmanageable and complicate things far too much, noting that it is very rare when we have so many other claims that well add to an interference. Id. at 33:16-18, 35:14-16. Moreover, the APJ noted that IBM had other remedies available to it outside of the Interference to address the other Rambus patents and applications. Id. at 35:1-10. Consistent with the APJs statements during the conference call, the Boards Order denied IBMs request to file its seventeen motions and explained that adding so many claims and issues to the interference would be contrary to the Boards policy to secure the just, speedy and inexpensive resolution of the interference. Hulse Decl., Ex. E at 3 (quoting 37 C.F.R. 41.1(b)2). The Board

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reasoned that [a]dding over five hundred claims to the interference would be unreasonable and unnecessary for determination of priority of invention. Id. at 4. The Board ultimately found for IBM on priority with respect to the involved IBM Application and the 161 Patent and entered judgment in IBMs favor. Hulse Decl., Ex. F at 2. After the Board entered judgment, IBM once again approached the Board, asking the Board to consider the additional Rambus patents. Hulse Decl., Ex. G at 3-5. The Board, however, was once again unpersuaded by IBMs arguments. The Board noted that adding the Rambus patents to the interference was premature because the Board did not know if the examiner would declare an interference with those claims. Id. at 5-6. Thus, for the third time, the Board rejected IBMs attempts to add the over 500 additional Rambus claims to the interference. B. IBM Is Pursuing Interferences in the PTO with Rambuss Additional Patents

Concurrent with the Interference and this action, IBM has been pursuing a reissue application that has copied all of the claims from the other Rambus patents and applications that the APJ decided not to include as part of the Interference. Hulse Decl. 11-12. As of this writing, IBM has no allowed claims in the reissue application, i.e., claims that are ready to be patented, and therefore it has not reached the stage where an interference could be declared. Hulse Decl. 13. However, it is clear that, through the reissue application, IBM is availing itself of the opportunity to seek one or more interferences involving the Rambus patent claims that it tried to have included in the Interference. Hulse Decl. 12. At this time, prosecution of the reissue application has been suspended in view of the concurrent litigation. The examiner stated that the application is stayed until it is evident to the examiner that (1) a stay of the litigation is in effect, (2) the litigation has been terminated, (3) there are no significant overlapping issues between the application and the litigation, or (4) applicant requests that the application be examined. Hulse Decl., Ex. H at 2. Although the examiner indicated that prosecution may proceed if the applicant requests that the application be examined, IBM has not made any such requests.

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C.

Procedural History

On August 23, 2010, Rambus filed an action under 35 U.S.C. 146 (related case C-10-3736 JSW (terminated Aug. 25, 2011)), seeking review of the Boards substantive decisions against Rambus, including the decision on Rambuss motions addressing the patentability of IBMs application and the decision on priority finding Rambus had failed to show conception.3 On September 7, 2010, IBM filed this action as a purported cross-action pursuant to 35 U.S.C. 146 to appeal the Boards decision denying authorization of its seventeen motions to add the fifteen other Rambus patents and over 500 claims to the Interference. Complaint [Dkt. No. 1] (Complaint) at 1. In its Complaint, IBM alleges that the other Rambus patents contain obvious variations in the wording of certain claims of the [Rambus] 161 Patent. Id. 21. IBM also notes that, despite IBMs request that these fifteen patents and applications be included in its formal Request for Interference, the Board did not include those patents in the Interference. Id. 22. IBM contends that the Boards refusal to allow the motions is erroneous, id. 32, but its claim for relief only requests that the Court [r]everse the Boards October 11, 2006 decision denying IBMs request to file its proposed Preliminary Motions 1-17, and remand to the Board to reopen the Interference solely for the purpose of consideration of those motions. Id. at 8. Contrary to the implication in IBMs Complaint, the Boards procedural ruling has not deprived IBM of the possibility of bringing the other Rambus patent claims into a proceeding where priority of invention can be determined. Indeed, the Complaint fails to acknowledge IBMs separate steps taken in the PTO to attempt to provoke one or more interferences with the remaining claims of the Rambus patents and applications, independent of the Interference. Rambus moved to dismiss IBMs complaint for lack of jurisdiction, which the Court denied. Order Denying Defendant Rambus Inc.s Motion to Dismiss Complaint [Dkt. No. 37] at 6. But at the Case Management Conference following the Courts decision, the Court recognized that, in this particular case, there was no need for invalidity contentions, claim construction, or discovery. Hulse Decl., Ex. I at 3:3-14, 6:14-7:8. The Court also stated that the only thing we need to do is have

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summary -- dispositive motion[s], id. at 7:13-15, because hopefully that will resolve the case, id. at 11:1-2. After the Case Management Conference, the parties submitted a joint letter to the Court in which IBM renewed its request for discovery in this case. Joint Letter to Court, dated Mar. 25, 2011 [Dkt. No. 41]. IBM sought discovery regarding, among other things, Rambuss motives for filings its multiple related patent applications. Id. at 2. IBM asserted that the discovery was directly relevant to whether the Rambus patents and patent applications claim essentially the same subject matter as in the interference, and in turn whether the Board was wrong not to consider IBMs motions. Id. The Court denied IBMs request, finding that the proposed discovery is not reasonably calculated to lead to the discovery of admissible evidence that would be relevant to the issue whether the Board of Patent Appeals and Interferences abused its discretion in denying the motions that are the subject of IBMs claim for relief. Order [Dkt. No. 42] at 5. III. ARGUMENT As reflected by the Courts decision not to allow discovery, there are no factual disputes relevant to this case. Rather, the only dispute that exists is IBMs contention that the PTO decision was improper. But the mere fact that IBM disagrees with the outcome of the Boards decision is an insufficient basis to overturn the Boards proper exercise of its discretionary authority to manage its cases. Accordingly, summary judgment against IBM is proper in this case. A. Legal Standard

Summary judgment is appropriate if the movant shows that there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). During this analysis, all reasonable inferences should be drawn in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). But on issues in which the nonmovant bears the burden of proof, the movant need not produce evidence showing the absence of a genuine dispute of material factthe burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence to support the nonmoving partys case. Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986); Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1307-08 (Fed. Cir. 2006). Rather, the nonmoving party must present specific evidence to -7RAMBUS MOTION FOR SUMMARY JUDGMENT CASE NO. C 10-04017-JSW

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demonstrate that a genuine dispute of material fact exists. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585-87 (1986). Decisions of the Board are reviewed under the standard set forth in the Administrative Procedure Act, 5 U.S.C. 706 (the APA). Dickinson v. Zurko, 527 U.S. 150, 154 (1999). Under the APA, the Boards decision may be set aside only if it is arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law. In re Sullivan, 362 F.3d 1324, 1326 (Fed. Cir. 2004). In particular, decisions made pursuant to the permissive rules governing interference proceedings are reviewed for an abuse of discretion. Eli Lilly & Co. v. Bd. of Regents of Univ. of Wash., 334 F.3d 1264, 1266 (Fed. Cir. 2003); see also Order [Dkt. No. 42] at 5 (stating the issue in this case was whether the Board abused its discretion in denying IBMs request). B. Authorizing Motions and Adding Patents to an Interference Is Discretionary

35 U.S.C. 135(a) makes clear that interferences are not declared as a matter of right to anyone seeking to provoke them. Rather, the statute states that if, in the opinion of the Director, the claims of an application interfere with those of another, an interference may be declared. 35 U.S.C. 135(a) (emphasis added). Moreover, Congress granted the PTO authority to establish regulations that shall govern the conduct of proceedings in the PTO. 35 U.S.C. 2(b)(2)(A). The PTOs rules governing interferences provide the Board with broad discretion to oversee an interference in any manner to secure [a] just, speedy, and inexpensive resolution. 37 C.F.R. 41.1(b). The Board has applied that rule and guiding objective in managing interferences. In an interference, the parties present their various arguments to the Board through motions. While various potential motions may be proposed by the parties, only those motions authorized by the APJ can be filed; a party cannot file any motion it chooses as a matter of right. 37 C.F.R. 41.121(a)(1) ([T]o the extent the Board authorizes, a party may file a motion . . . ) (emphasis added). Procedurally under the rules and the Boards Standing Order, the parties must first submit their respective lists of proposed motions to the Board. 37 C.F.R. 41.204(b); Hulse Decl., Ex. J 104.2.1, 204. The Board uses the motions list to determine whether the listed motions are both necessary and sufficient to resolve the issues raised. Hulse Decl., Ex. J 104.2.1. It is a tool for planning the course of the proceeding, eliminating unnecessary costs and delay, and avoiding -8RAMBUS MOTION FOR SUMMARY JUDGMENT CASE NO. C 10-04017-JSW

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abusive practices. Id. 204. After the motions lists have been submitted, the APJ hears each partys arguments for why their respective motions should be authorized. Id. 104.2.1. The Board has characterized the prospective motions list as manifestly tentative and subject to how the APJ believes the interference can be resolved in an efficient manner. See Winter, 53 U.S.P.Q.2d at 1489. In Winter, the Board explained that the issues to be raised can be limited or clarified so that the interference may be resolved in a just, speedy and inexpensive manner. Id. The Board has therefore made clear that preliminary motions may only be filed when authorized by the boardnot at any time. Id. There is no statutory provision or Board rule that permits filing motions as a matter of right. Moreover, the Boards own interpretation of its rules as providing discretion in deciding whether motions may be filed is entitled to substantial deference, and should be accepted unless plainly erroneous. See, e.g., Thomas Jefferson Univ. v. Shalala, 512 U.S. 504, 512 (1994) (We must give substantial deference to an agencys interpretation of its own regulations.); see also In re Garner, 508 F.3d 1376, 1378-79 (Fed. Cir. 2007). One such motion that requires authorization is a motion to add patents or applications to an interference. See Hulse Decl., Ex. J 203. Importantly, in considering the discretionary nature of authorization, the underlying decision whether to add a patent to the interference is itself purely discretionary. Indeed, under the prior interference rules, the rules expressly stated that adding a patent to an interference was discretionary. 37 C.F.R. 1.642 (2003) (During the pendency of an interference, if the administrative patent judge becomes aware of an application or patent not involved in the interference which claims the same patentable invention as a count in the interference, the administrative patent judge may add the application or patent to the interference on such terms as may be fair to all parties.) (emphasis added). Although the rules changed in 2004 to omit this rule, the PTO made clear that the rule change was not meant to alter existing practice, unless explicitly provided. 68 F.R. 66648, 66649 (Nov. 26, 2003) (Proposed part 41 would better state the existing practice and should not be read to change the existing practice except as explicitly provided.); see also id. (stating the new part 41 was meant to permit consolidation of rules relating to Board practice and to simplify reference to such practices). Thus, while 37 C.F.R. 1.642 does

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not exist in the current rules, the discretionary practice of adding patents or applications to an interference remains. Consistent with the rules, in Louis v. Okada, 57 U.S.P.Q.2d 1430 (B.P.A.I. 2000) (precedential), the junior party patentee sought to add two of the senior party applicants patents to the interference.4 The Board denied the junior partys motions, stating that an interference, as defined by the rules, does not necessarily involve all applications and patents having a claim drawn to the same invention. Id. at 1435. Moreover, even if the Board were aware of multiple applications and patents claiming the same patentable invention, the Board noted that it may not be necessary to have all of them involved in an interference proceeding, much less the same interference. Id. Accordingly, Louis confirms that the Board has interpreted its rules to give itself discretion in deciding whether or not to add patents to an interference. See id. C. The Board Did Not Abuse Its Discretion in Denying Authorization for IBMs Motions

Given the discretionary nature of authorizing motions, this Court reviews the Boards 14 decision for an abuse of discretion. Eli Lilly Co., 334 F.3d at 1266. An abuse of discretion occurs 15 where the decision is based on an erroneous interpretation of the law, on factual findings that are 16 not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant 17 factors. Burandt v. Dudas, 528 F.3d 1329, 1332 (Fed, Cir, 2008) (quoting Star Fruits v. United 18 States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)). 19 Here, the Boards interpretation of its own rules is entitled to substantial deference by the 20 Court. See, e.g., Thomas Jefferson Univ., 512 U.S. at 512; In re Garner, 508 F.3d at 1378-79. As an 21 initial matter, IBM has never alleged that the Boards decision to deny authorization for IBM to file 22 its fifteen motions was based on an erroneous interpretation of the law. IBM has only asserted that 23 the Boards decision was based on factual findings that are not supported by substantial evidence or 24 that the Boards decision represents an unreasonable judgment in weighing relevant factors. Neither 25 is the case here. The Board rendered a purely procedural, discretionary decision that fell within the 26 27 28 When declaring an interference, the Board preliminarily decides the earliest filing date a party should be accorded. The party with the earlier date is labeled the senior party, whereas the party with the later date is labeled the junior party. - 10 RAMBUS MOTION FOR SUMMARY JUDGMENT CASE NO. C 10-04017-JSW
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Boards express authority to manage its case and provided evidence to supports its decision. IBM acknowledges that the APJ explained during the initial conference call that the Board denied IBMs request to add the other Rambus patents to the Interference because adding those patents and over 500 claims would bog[] down the proceeding, be unmanageable, and would complicate things far too much. Hulse Decl., Ex. A at 32:11-14, 33:16-18, 35:12-16. And it is undisputed that the Board expressly reasoned that adding the patents would be contrary to the Boards rule requiring a just, speedy and inexpensive resolution of the interference. Hulse Decl., Ex. E at 3. The number of patents and the number of claims that IBM requested to addcoupled with the Boards experience in managing interferenceswas the evidence that the Board relied on to support its decision not to grant IBMs request. Thus, the Boards decision is supported by substantial evidence and is completely reasonable in light of the relevant factors. Additionally, IBM cannot deny that alternative paths exist for IBM to obtain a priority contest with respect to the claims of the other Rambus patents and applications not involved in the Interference. In fact, IBM is currently seeking to provoke an additional interference or interferences through the prosecution of its reissue application in which IBM copied all of the claims from the other Rambus patents and applications. Hulse Decl. 12. Although prosecution for the reissue application has been suspended, the suspension may be lifted at IBMs request. See Hulse Decl., Ex. H at 2. Moreover, with the dismissal of the related Rambus v. IBM case, the PTO will grant a patent on IBMs involved application and IBM can alternatively seek an interference under 35 U.S.C. 291 with any issued Rambus patent. Thus, IBM may attempt to pursue its claims in other venues to obtain the ultimate relief it seeksone or more interference proceedings with the other Rambus patents and applications. Indeed, during the teleconference with the Board after the priority decision, the Board recognized that seeking such relief through other interferences was more appropriate than adding over 500 claims to the interference, as IBM repeatedly requested. See Hulse Decl., Ex. G at 10-12. As such, there can be no dispute that the Boards decision to not authorize IBMs seventeen additional motions (which, under the Boards procedural schedule, would all have been filed the same day) was fully within its discretion.

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Of note, now that the related case has been dismissed and priority has definitively been decided, the Board should not be required to consider IBMs motions. As the Federal Circuit has held, once priority is determined in an interference, the Board has discretion to terminate the interference without more. Sullivan, 362 F.3d at 1326-27 (finding that because the losing partys concession definitively settled the priority issue, the Boards termination of the interference without further consideration of other issues was not arbitrary, capricious, an abuse of discretion, unsupported by substantial evidence, or otherwise not in accordance with the law). In light of the priority determination, the Board has discretion whether to consider any other issues. Here, the Board has already decided on several occasions that it does not want to consider IBMs request to add Rambuss other patents and applications. Given the Boards clear discretion, IBMs avenue of relief lies with the examiner of its pending application to seek an interference with the other Rambus patents or an action under 35 U.S.C. 291. Thus, summary judgment is appropriate here. D. IBM Has Failed to Raise Any Issues of Material Fact that Preclude Summary Judgment

Even if taken as true, IBMs allegations fail to raise an issue of material fact. To argue that 15 the Boards decision was not supported by substantial evidence, IBM has cited two interferences 16 where multiple patents and claims were involved, and alleged that there is no rule that requires an 17 interference proceeding to be limited to two patent applications, or only one patent and one patent 18 application. Plaintiff IBMs Opposition to Defendant Rambus Inc.s Motion to Dismiss Complaint 19 [Dkt. No. 32] at 4. While Rambus does not dispute that such a rule does not exist (and has never 20 contended otherwise), this fact is irrelevant to the Boards ruling in this case that, for case 21 management reasons, it did not wish to add fifteen Rambus patents and applications and over 500 22 additional claims to the Interference. Just because in some instances the Board has exercised its 23 discretion to declare interferences with multiple patents and large numbers of claims does not lead to 24 the conclusion that the Board must grant every request to add multiple patents and large numbers of 25 claims to an interference. Indeed, there is no requirement that the Board conduct a single 26 interference that includes all possibly affected patents and applicationsto the contrary, the rules 27 and the case law permit the Board to conduct multiple interferences. See 37 C.F.R. 1.642; Louis, 28 57 U.S.P.Q.2d at 1435. - 12 RAMBUS MOTION FOR SUMMARY JUDGMENT CASE NO. C 10-04017-JSW

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IBM has also alleged that the additional Rambus patents are related and that Rambus acquiesced in the PTO examiners obviousness-type double patenting rejection in several of the patent applications by filing a terminal disclaimer. Dkt. No. 32 at 4-5. In doing so, IBM suggests that the Board erred in not adding these related patents. But IBMs contention is legally incorrect for several reasons. First, Rambus did not acquiesce in the examiners rejection. Filing a terminal disclaimer does not constitute an admission that the claims are patentably indistinct. Quad Environmental Techs. v. Union Sanitary District, 946 F.2d 870, 874 (Fed. Cir. 1991) (In legal principle, the filing of a terminal disclaimer simply serves the statutory function of removing the rejection of double patenting, and raises neither presumption nor estoppel on the merits of the rejection. It is improper to convert this simple expedient of obviation into an admission or acquiescence or estoppel on the merits.). Moreover, even assuming the claims are all patentably indistinct, that fact does not mandate adding the claims to the Interference at issue as opposed, for example, to having a later interference declared. It is also undisputed that the interference rules grant the Board discretion as to whether to authorize motions to add patents and claims to an interference, regardless of whether the patents are related or whether terminal disclaimers to the involved patent have been filed. If there were a requirement that the Board add any and all patents and claims, no matter how voluminous, then the Board would be stripped of its discretion to refuse authorization to file a motion to add patents. Accordingly, the Board has found that adding claims directed to the same patentable invention is discretionary. Louis, 57 U.S.P.Q.2d at 1435. Thus, IBMs allegation that the over 500 additional claims are mere obvious variants of the Count and under law cannot co-exist with claims 11-59 of the Drehmel 652 Application (Complaint 31)even if assumed trueis irrelevant to the question of whether the Board abused its discretion in deciding not to allow IBM to file its motions to add the fifteen patents and applications and over 500 claims to the Interference. Indeed, the Court has recognized this fact already by denying IBMs requests for discovery on this issue, finding that such discovery was not relevant to whether the Board abused its discretion in denying IBMs requested motions. Order [Dkt. No. 42] at 5.

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Finally, IBM has asserted that its request to add the Rambus patent claims to the Interference, by itself, would not necessarily result in an unduly complicated procedure and that the Board did not explain why adding them would present a purported insurmountable difficulty. Dkt. No. 32 at 6. Once again, IBMs assertion is irrelevant. First, the Board did not use the language insurmountable difficulty, and IBM has cited no authority to the effect that the Board can only decline to add other patents or applications to an interference proceeding if it finds an insurmountable difficulty. Second, the Board was not required to make such a detailed explanation to deny IBMs request for authorization. Nonetheless, the Board provided a reasonable, common-sense rationale for its decision, stating, among other things, that adding over 500 claims would bog[] down the proceeding and be expensive. Hulse Decl., Ex. A at 32:11-14. That explanation is more than sufficient to justify denying IBMs request. Finally, contrary to IBMs implicit assertion, even if IBM sought to add just a handful of claims from the Rambus patents, the Board was still not required to entertain IBMs motion or add them to the Interference. See 37 C.F.R. 41.121(a)(1); 37 C.F.R. 1.642. It is a discretionary option for the Board in addressing a partys request, and IBM has shown no abuse of that discretion here. In this case, IBM has failed to present facts sufficient to allege that it was not allowed a meaningful opportunity to present its case or that the Board abused its discretion in denying IBM the opportunity to files its motions. It is not sufficient to charge that on the merits, the Board could have found that the other Rambus patent claims were obvious from the Interference Count, and that the Board could have added the hundreds of such claims to the Interference if it so chose. Both the Examiner and the Board considered IBMs request to bring the many other Rambus patent claims into the interference on three separate occasionsbefore declaring the Interference, when IBM requested authorization to file its proposed motions 1-17, and again after the Board entered judgment in IBMs favor. After considering IBMs arguments, the Board elected not to complicate or bog down the Interference by adding over 500 claims from fifteen other patents and applications. Nothing about this decision was baseless or an abuse of discretion. Moreover, the Boards denial to consider IBMs motions does not prejudice IBMs ability to challenge priority of these other Rambus claims, patents, or applications. IBM has a pending - 14 RAMBUS MOTION FOR SUMMARY JUDGMENT CASE NO. C 10-04017-JSW

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continuing application where IBM intends to request additional interferences. Thus, the Boards decision was not an abuse of discretion, and there are no genuine disputes as to any material fact to show otherwise. IV. CONCLUSION For the foregoing reasons, Rambus respectfully requests that its motion for summary judgment be granted and judgment be entered against IBM.

Dated: September 16, 2011

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. By: /s/Tina E. Hulse Tina E. Hulse

Attorneys for Defendant RAMBUS INC.

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