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Edward Kmett (CA Bar No. 204374) ekmett@fchs.com FITZPATRICK, CELLA, HARPER & SCINTO 650 Town Center Drive Suite 1600 Costa Mesa, CA 92626 Telephone: (714) 540-8700 Facsimile: (714) 540-9823 Anthony M. Zupcic (Pro Hac Vice) azupcic@fchs.com Robert H. Fischer (Pro Hac Vice) rfischer@fchs.com Douglas Sharrott (Pro Hac Vice) dsharrott@fchs.com FITZPATRICK, CELLA, HARPER & SCINTO 1290 Avenue of the Americas New York, New York 10112 Telephone: (212) 218-2100 Facsimile: (212) 218-2200 Kenneth R. Adamo (Pro Hac Vice) kradamo@kirkland.com KIRKLAND & ELLIS LLP 300 North LaSalle Chicago, IL 60654 Telephone: (312) 862-2000 Facsimile: (312) 579-2200 Attorneys For Plaintiff International Business Machines Corporation UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA ) ) ) ) ) ) ) ) ) ) )

INTERNATIONAL BUSINESS MACHINES CORPORATION, Plaintiff, v. RAMBUS INC, Defendant.

Case No. C 10-04017 JSW PLAINTIFF IBMS SUBMISSION IN RESPONSE TO ORDER REGARDING SUPPLEMENTAL BRIEFING Judge: Hon. Jeffrey S. White

CV 10-04017 PLAINTIFF IBMS SUBMISSION IN RESPONSE TO ORDER REGARDING SUPPLEMENTAL BRIEFING

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Plaintiff, IBM Corporation (IBM), provides the following in response to the Order Regarding Supplemental Briefing dated November 28, 2011 (docket no. 61), directing the parties to clarify the legal authority for the proposition that the Patent and Trademark Office (PTO) has discretion to not allow a party to file a miscellaneous motion. 1. The federal regulation at issue here, 37 C.F.R. 41.203(d), grants a party to an

interference a suggestion right; i.e., the rule permits a party to suggest the addition of patents and patent applications to a pending interference. A partys suggestion right under this rule is implemented by bringing a miscellaneous motion during the interference. (Standing Order (SO) 203.1, 203.2; Hulse Decl. Exh. J). A miscellaneous motion is one of the three types of motions permitted under the contested case practice of the Board of Patent Appeals and Interferences (Board). See 37 C.F.R. 41.121(a). 2. The plain meaning of Rule 41.203(d) at issue here, particularly when read in

the context of the other rules in the CFR, is that its suggestion right is unconditional.1 See IBM Cross Motion (docket no. 55) III.C.1, at 17; id. at 16; IBM Reply (docket no. 59) B, at 6-7; C.1, at 9. The fact that a suggestion right under Rule 41.203(d) is implemented by bringing a miscellaneous motion further demonstrates that, under the facts at hand, IBMs suggestion right is unconditional and not subject to authorization by the Board.2 3. The Court correctly notes that 37 C.F.R. 41.121 accords the Board no basis

to decline to hear miscellaneous motions. Under that rule, Board authorization is a predicate for
1

It is also IBMs position that there was no substantial evidence to support the APJs refusal to hear IBMs motion, and that her action constituted an abuse of any discretion that may be deemed applicable to her action. See IBM Cross Motion III; IBM Reply (passim).
2

Each of the IBM suggestions to add the Rambus patents and applications to the interference were identified as miscellaneous motions in IBMs Oct. 3, 2006 motions list to the Board. (See Metz Decl. Exh. K; specifically motions 3-17, citing Bd.R. 121(a)(3), i.e., 37 C.F.R. 41.121(a)(3); and Bd.R. 203(d), i.e., 37 C.F.R. 41.203(d)). CV 10-04017 PLAINTIFF IBMS SUBMISSION IN RESPONSE TO ORDER REGARDING SUPPLEMENTAL BRIEFING 1

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filing only substantive motions and responsive motions. See 37 C.F.R. 41.121(a)(1),(2). In contrast, the rule does not require Board authorization to file miscellaneous motions. See id.(3). Thus no Board authorization is required under Rule 41.121(a) to bring miscellaneous motions, such as a miscellaneous motion to exercise the suggestion right set forth in Rule 41.203(d). 4. The only rule requiring a party to obtain Board authorization prior to filing a

miscellaneous motion, 37 C.F.R. 41.123(b)(1)(ii), has no application to the facts of this case and does not grant the Board discretion to refuse the filing of a miscellaneous motion in this instance. Rule 41.123(b)(1)(ii) provides that if no time for filing a miscellaneous motion is provided elsewhere in Part 41 (concerning practice before the Board) or in a Board order, and a non-movant plans to oppose, then the movant may not file the motion without Board authorization. Here, IBMs proposed motions were set forth in the motions list to bring them to the attention of the Board for purposes of scheduling, see SO 104.2.1 (first bullet), so that the times for filing could be discussed in the initial conference call with the APJ, and then set forth in the initial order concerning motion times, see SO 104.2. Rule 41.123(b)(1)(ii) in contrast was intended for miscellaneous motions arising following that initial order, where proceedings had already gone forward. The rule therefore does not apply here. 5. Notably, even where Rule 41.123(b)(1)(ii) does apply, the Board cannot

decline to hear a miscellaneous motion if a non-movant does not oppose. In that case, the movant has an absolute right to file a miscellaneous motion without Board authorization. Thus Rule 41.123(b)(1)(ii) was intended to safeguard only the interests of a party that might be prejudiced by the filing of a miscellaneous motion, as for example might be caused by delay once proceedings had

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gone forward.3 (See Metz Decl. 67). Given that an unopposed miscellaneous motion must be heard, there is no discretion not to hear a miscellaneous motion for considerations specific to the Board, however important or cogent the Board or a particular Administrative Patent Judge (APJ) might consider them. Compare 37 C.F.R. 41.121(a)(1), (2) and id. 41.121(a)(3). 6. In the facts at hand, the Order of the APJ in denying IBM permission to bring

its motions makes no mention of prejudice to defendant, Rambus Inc. (Rambus; referred to as Perego, its named inventor, in the interference). (Metz Decl. Exh. L at 3-4). In fact, in its discussion of IBMs proposed motions (IBM was referred to as Drehmel, its first named inventor in the interference), the Order makes no mention at all of Rambuss interests at issue, or even its position on the matter. (Id.). Likewise in the conference call preceding the Order, the discussion concerning the proposed motions was entirely between the APJ and IBMs counsel. The APJ focused on considerations specific to the PTO, and did not even seek Rambuss position on the proposed motions. (Hulse Declaration, Exh. A at 32-36). 7. Further, the question of whether Rambus would be prejudiced by IBMs

motions was expressly raised in the pending summary judgment motions. IBM specifically asserted that there would be no prejudice were the Board to hear IBMs motions, and Rambus was unable to meaningfully refute this assertion. IBM Cross Motion III.C.4 at 20; Rambus Reply (docket no. 57) B.3 at 12, 13; IBM Reply C.3 at 11-12. There is no genuine dispute that Rambus would not be legitimately prejudiced if IBMs proposed motions were to be heard. 8. In summary, IBMs suggestion right under 37 C.F.R. 41.203(d) is

unconditional, and does not require any Board authorization. See 1-2 above. Further, the fact that the Standing Order calls for a Rule 41.203(d) suggestion right to be brought as a miscellaneous
3

For miscellaneous motions within the scope of Rule 41.123(b)(1)(ii), the rule states that [d]elay in seeking relief may justify a denial of the motion. Id. (last sentence). CV 10-04017 PLAINTIFF IBMS SUBMISSION IN RESPONSE TO ORDER REGARDING SUPPLEMENTAL BRIEFING 3

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motion further demonstrates that the APJ erred in refusing to allow IBM to bring its proposed motions. The rules themselves show that Board authorization for a miscellaneous motion applies only to those situations where a non-movant would be prejudiced, and does not extend to considerations specific to the Board. The general rule set forth in 37 C.F.R. 41.121(a)(3) accordingly applies to IBMs proposed miscellaneous motions.4 Under that rule, no prior authorization is required for IBM to bring its proposed miscellaneous motions to exercise its suggestion right under Rule 41.203(d), and for this reason also, the APJ erred in refusing to hear IBMs proposed motions. 9. Finally, paragraph 26 of Mr. Metzs declaration was intended to emphasize the

expanded use of the authorization procedure under the current rules governing motions relative to the practice under the prior 600 Rules.5 To the extent that or any other paragraph is interpreted to be inconsistent with the law, it is not controlling.

Dated: December 5, 2011 By:

Respectfully submitted, s/ Edward A. Kmett Edward A. Kmett (CA Bar No. 204374) FITZPATRICK, CELLA, HARPER & SCINTO 650 Town Center Drive Suite 1600 Costa Mesa, CA 92626 Telephone: (714) 540-8700 Facsimile: (714) 540-9823

It is further noted that 37 C.F.R. 41.121(c)(3) permits the Board to order additional showings or explanations as a condition for filing a motion. The Standing Order makes clear this general rule has no application to miscellaneous motions subject to 37 C.F.R. 41.121(a)(3). See SO 121.
5

The reference in 26 of Mr. Metzs Declaration was intended to cite to 37 C.F.R. 41.121(a)(1). CV 10-04017 PLAINTIFF IBMS SUBMISSION IN RESPONSE TO ORDER REGARDING SUPPLEMENTAL BRIEFING 4

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Anthony M. Zupcic (Pro Hac Vice) Robert H. Fischer (Pro Hac Vice) Douglas Sharrott (Pro Hac Vice) FITZPATRICK, CELLA, HARPER & SCINTO 1290 Avenue of the Americas New York, New York 10104-3800 Telephone: (212) 218-2100 Facsimile: (212) 218-2200 Kenneth R. Adamo (Pro Hac Vice) KIRKLAND& ELLIS LLP 300 North LaSalle Chicago, IL 60654 Telephone: (312) 862-2000 Facsimile: (312) 579-2200 Attorneys for Plaintiff International Business Machines Corporation

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CERTIFICATE OF SERVICE I hereby certify, under penalty of perjury, that on December 5, 2011 a true and correct copy of the foregoing was filed electronically via the Courts ECF system, pursuant to Civil L.R. 5-4, and served electronically, pursuant to Civil L.R. 5-5(b) and this Courts General Order No. 45(IX), on all counsel of record, including: Counsel for Defendant, Rambus Inc. Tina E. Hulse tina.hulse@finnegan.com Barbara Clarke McCurdy barbara.mccurdy@finnegan.com Naveen Modi naveen.modi@finnegan.com Date: December 5, 2011 /s/_Edward A. Kmett__________

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