Appendix — Infineon Technologies AG v. Rambus, Inc.

APPENDIX

TABLE OF CONTENTS

Opinion of the Court of Appeals,

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Order of the Court of Appeals Denying

Petition for Panel Rehearing and

Rehearing En Banc,

Bs osha teceandincicoricterinrersicess inner 67a

Opinion of the District Court Construing

the Patent Claims under Markman,

SE Sng a oer aa sh us iecun beaker? 69a

Opinion of the District Court Granting in

Part and Denying in Part Rambus’

Motion for Judgment as Matter of Law,

PE Es fins. cocterdastasenerenpcsintesnnnintacennies l3la

Opinion of the District Court Granting

Infineon’s Motion for Attorneys’

Fees and Costs,

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United States Court of Appeals for the Federal Circuit

01-1449, -1583, -1604, -1641, 02-1174, -1192

RAMBUS INC.,

Plaintiff-Appellant,

V.

INFINEON TECHNOLOGIES AG,

INFINEON TECHNOLOGIES NORTH AMERICA CORP.,

and INFINEON TECHNOLOGIES HOLDING NORTH

AMERICA INC.,

Defendants-Cross Appellants.

DECIDED: January 29, 2003

Before RADER, BRYSON, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge RADER.

Dissenting opinion filed by Circuit Judge PROST.

RADER, Circuit Judge.

During trial, the United States District Court for the Eastern

District of Virginia granted judgment as a matter of law

(JMOL) and held that Infineon Technologies AG, Infineon

Technologies North America Corp., and Infineon Technologies

Holding North America Inc. (collectively Infineon) did not

infringe Rambus Inc.’s patents. The jury later found Rambus

liable for fraud associated with standard-setting activities on

two computer memory technologies. On post-trial JMOL

motions, the district court set aside a verdict of fraud on one of

2a

the memory technologies, but permitted the fraud verdict to

stand on the other technology. The court then issued an

injunction against Rambus and awarded Infineon attorney fees.

Because the district court erred in its claim construction, this

court vacates the grant of JMOL of noninfringement and

remands for consideration under the revised claim construction.

Additionally, because substantial evidence does not support the

implicit jury finding that Rambus breached the relevant

disclosure duty during its participation in the standards

committee, this court reverses the denial of JMOL that let the

fraud verdict stand. Based on the record evidence, the district

court properly set aside the fraud verdict on the remaining

technology. These holdings render the injunction moot and

require this court to vacate and remand the attorney fees award

for reconsideration in light of this opinion. The record evidence

supports the district court’s grant of JMOL Accordingly, this

court vacates-in-part, reverses-in-part, affirms-in-part, and

remands.

I.

Rambus develops and licenses memory technologies to

companies that manufacture semiconductor memory devices.

Rambus does not manufacture any memory devices itself, but

relies instead on licensing its patent portfolio for revenue. In

April 1990, Rambus filed U.S. Patent Application Serial No.

07/510,898 (’898 application) with claims directed to a

computer memory technology known as dynamic random

access memory (DRAM). The United States Patent and

Trademark Office (PTO) determined that the 898 application

covered multiple independent inventions. The PTO issued an

eleven-way restriction requirement requiring Rambus to elect

one invention to pursue in the ’898 application. dn response,

Rambus filed numerous divisional and continuation

applications based on the original ’898 application—at least

thirty-one of which have issued. Many of these patents claim

aspects of a memory technology known as Rambus DRAM

3a

(RDRAM). In April 1991, Rambus filed a patent application

under the Patent Cooperation Treaty (WIPO application)

claiming priority to the ’898 application.

In December 1991, Rambus attended a Joint Electron

Devices Engineering Council (JEDEC) meeting as a guest.

Rambus officially joined JEDEC in February 1992. JEDEC isa

standard-setting body associated with the Electronic Industries

Association (EIA).' JEDEC member companies participate on

various committees to develop standards for semiconductor

technologies. Committee JC-42.3 drafts standards for random

access memory (RAM), a common component in computers,

printers, and other electronic devices. JEDEC meetings are

open meetings, but nonmembers must receive an invitation to

attend. Minutes of the JEDEC meetings and copies of the

published JEDEC standards are available to members and

nonmembers alike. Both JEDEC and EIA have a written

patent policy encouraging the adoption of standards free of

patented items or processes. At least by 1993, the ELA/JEDEC

patent policy required members to disclose patents and patent

applications “related to” the standardization work of the

committees.

During Rambus’s membership on committee JC-42.3,

JEDEC adopted a standard for synchronous dynamic random

access memory (SDRAM). SDRAM increases the speed at

which a central processing unit (CPU) can read or write

memory by synchronizing itself with the CPU’s clock speed.

JEDEC incorporated four technologies into its SDRAM

standard that are relevant to this case: programmable CAS

latency, programmable burst length, externally supplied

reference voltage, and two-bank designs. JEDEC adopted and

Since 1991, both JEDEC and EIA have changed their names. JEDEC now

is known as the JEDEC Solid State Technology Association. EIA is known

as the Electronic Industries Alliance.

4a

published its SDRAM standard in early 1993. Since 1993,

JEDEC has published several revisions of the standard.

Rambus attended its last JEDEC meeting in December 1995,

and officially withdrew from JEDEC in June 1996. In

December 1996, JEDEC began work on a standard for double

data rate-SDRAM (DDR-SDRAM), the successor to SDRAM.

DDR-SDRAM doubles the transfer rate between the CPU and

memory device by supporting data transfers on both the rising

and falling edge of each clock cycle. The JEDEC DDR-

SDRAM standard ultimately incorporated four technologies

that had been discussed in general before Rambus’s withdrawal

in 1996. Those technologies include: source-synchronous

clocking, low-voltage swing signaling, dual clock edge, and on-

chip phase locked loop/delay locked loop (PLL/DLL). JEDEC

adopted and published the DDR-SDRAM standard in 2000.

In September 1993, Rambus disclosed its first issued

RDRAM patent, U.S. Patent No. 5,243,703 (703 patent), a

divisional of the °898 application, to JEDEC during a

committee meeting. As a divisional, the written description of

the ’703 patent is substantially identical to that of the ’898

application. At that same meeting, another JEDEC member

also disclosed Rambus’s WIPO application to the committee.

Rambus did not disclose any patent applications to JEDEC.

After leaving JEDEC Rambus filed more divisional and

continuation applications based on the 898 application. Four

of the patents that issued from those applications are at issue in

the present case, namely U.S. Patent Nos. 5,954,804 (804

patent), 5,953,263 (°263 patent), 6,034,918 (°918 patent), and

6,032,214 (°214 patent). Rambus filed the applications that

ripened into these four patents between February 1997 and

February 1999. Again, the written description of each of these

patents is substantially identical to that of the ’703 patent and

the ’898 application. The first of these four patents issued in

1999.

5a

In late 2000, Rambus sued Infineon, a manufacturer of

semiconductor memory devices (including SDRAM and DDR-

SDRAM) and a member of JEDEC, for infringement of the

patents-in-suit. Rambus alleged infringement of fifty-seven

claims in the four patents. Infineon counterclaimed for fraud

under Virginia state law. Infineon alleged that Rambus

committed fraud by not disclosing to JEDEC its patents and

patent applications “related to” the SDRAM and DDR-SDRAM

standards. After construing the claims, the district court granted

JMOL of noninfringement in favor of Infineon under Rule 50(a)

of the Federal Rules of Civil Procedure. Fed. R. Civ. P. 50(a);

Rambus, Inc. v. Infineon Techs. AG, No. 3:00CV524, slip op. at

1-2 (E.D. Va. May 2, 2001); Rambus, Inc. v. Infineon Techs.

AG, No. 3:00cv524, slip op. at 1-2 (E.D. Va. May 30, 2001).

infineon’s fraud counterclaims were tried to a jury. The jury

found that Rambus committed fraud during SDRAM and DDR-

SDRAM standardization. Rambus moved for JMOL of no

fraud on both the SDRAM and DDR-SDRAM verdicts.

Alternatively, Rambus requested a new trial. The district court

denied JMOL on the SDRAM fraud verdict. The court granted

JMOL on the DDR-SDRAM fraud verdict, holding that

substantial evidence did not support the jury’s verdict because

Rambus left JEDEC before work officially began on the DDR-

SDRAM standard. Rambus, Inc. v. Infineon Techs. AG, 164

F. Supp. 2d 743, 767 (E.D. Va. 2001). The district court also

denied Rambus’s request for a new trial on the SDRAM

verdict, but conditionally granted a new trial on DDR-SDRAM

should this court reverse that grant of JMOL. The court issued

an injunction against Rambus, Rambus, Inc. v. Infineon Techs.

AG, No. 3:00cv524, slip op. at 35 (E.D. Va. Aug. 9, 2001), and

awarded Infineon attorney fees, Rambus, Inc. v. Infineon Techs.

AG, 155 F. Supp. 2d 668, 691 (E.D. Va. 2001).

Both parties appealed to this court, which has jurisdiction

under 28 U.S.C. § 1295(a)(1) (2000). Rambus appeals the

denial of JMOL and the denial of a new trial on the SDRAM

6a

verdict. Additionally, Rambus appeals the court’s claim

construction, the grant of JMOL of noninfringement, the

injunction on domestic suits, and the attorney fees award.

Infineon cross-appeals the grant of JMOL on the DDR-SDRAM

verdict and the court’s refusal to enjoin Rambus’s pending

foreign suits against Infineon.

Il

This court reviews a grant or denial of JMOL without

deference by reapplying the JMOL standard. Cybor Corp. v.

FAS Techs., Inc., 138 F.3d 1448, 1454, 46 USPQ2d 1169, 1172

(Fed. Cir. 1998) (en banc); Dennis v. Columbia Colleton Med.

Ctr., Inc., 290 F.3d 639, 644-45 (4th Cir. 2002); Fed. R. Civ. P.

50(a)(1). For matters submitted to and decided by a jury, this

court will affirm a grant or reverse a denial of JMOL only “if

the jury’s factual findings are not supported by substantial

evidence or if the legal conclusions implied from the jury’s

verdict cannot in law be supported by those findings.” Cybor

Corp., 138 F.3d at 1454; Havird Oil Co. v. Marathon Oil Co.,

149 F.3d 283, 289 (4th Cir. 1998). This court draws all

reasonable inferences in favor of the prevailing party without

substituting its view of conflicting evidence for that of the jury.

SIBIA Neurosciences, Inc. v. Cadus Pharmaceutical Corp., 225

F.3d 1349, 1355, 55 USPQ2d 1927, 1930 (Fed. Cir. 2000);

Dennis, 290 F.3d at 645.

Before deciding whether an accused device infringes asserted

claims, a court must first construe the claim language to

determine the meaning and scope of the claims. Cybor Corp.,

138 F.3d at 1454. This court reviews claim construction

without deference. /d. at 1456.

This court reviews state law causes of action under the

applicable state law for matters not committed to this court’s

exclusive jurisdiction. Univ. of W. Va. Bd. of Trustees v.

Vanvoorhies, 278 F.3d 1288, 1296, 61 USPQ2d 1449, 1453

(Fed. Cir. 2002); Hunter Douglas, Inc. v. Harmonic Design,

Inc., 153 F.3d 1318, 1338, 47 USPQ2d 1769, 1783 (Fed. Cir.

7a

1998). Thus, this court applies Virginia commonwealth law to

the fraud actions.

Although Virginia has not stated clearly whether detectin

the existence of a duty to disclose is a question of law or fact,

the district court considered the issue a question of fact. As

such, the jury had the responsibility to interpret and construe the

written EIA/JEDEC patent policy. On appeal, neither party

contests the district court’s submission of this issue to the jury.

Therefore, this court will analyze the existence of a duty to

disclose as a question of fact.”

2 Two cases provide limited insight on this issue. The first—a Fourth

Circuit case reviewing a Virginia fraud action—states that “[t]he duty to

disclose and the reasonableness of reliance” are questions decided by the

jury in light of various factors. Bank of Montreal v. Signet Bank, 193 F.3d

818, 834 (4th Cir. 1999). Notably, however, the Fourth Circuit supports its

statement with only two case citations—one to a Fourth Circuit case from

South Carolina and one to a Fifth Circuit case—neither of which say the

existence of a duty to disclose is a factual question. In the second case a

Virginia court states that whether a duty to speak exists “under the

circumstances” i. an issue for the fact-finder. Hiett v. Barcroft Beach, Inc.,

22 Va. Cir. 240, 242 (Va. Cir. €t. 1990). Even so, a jury determination that

a duty exists “under the circumstances” does not mean the existence of the

duty is a factual question. See, e.g., State Farm Fire & Cas. Co. v. Owen,

729 So.2d 834, 839-40 (Ala. 1998) (“[T]he jury . . . determine[s] only the

disputed facts upon which the alleged duty rests, not the existence of the duty

itself. ... If the judge finds that the circumstances as alleged would be

enough to create a legal duty, then he should instruct the jury as to what that

duty would be if these circumstances did exist. The jury then decides

whether those circumstances indeed existed.”).

. While this court reviews this as a factual question, a review of the relevant

law of other states and Virginia’s law on other tort duties strongly suggests

that this issue may well be a legal question with factual underpinnings. For

example, according to the Restatement, “whether there is a duty to the other

to disclose the fact in question is always a matter for the determination of the

court.” Restatement (Second) of Torts § 551 cmt. m@ (1976 Main Vol.).

Moreover, Virginia, like most states, considers contrect construction a legal

question for the court, Craig v. Dye, §26 8.£.2d 9, 11 (Va. 2000), and the

asserted duty in this case arises from a written contract. A number of states

treat the existence of a disclosure duty as a question of law, and the breach of

8a

A district court may award a prevailing party attorney fees

under 35 U.S.C. § 285 in exceptional cases. This court reviews

without deference the district court’s application of the proper

legal standard under § 285. Brasseler, U.S.A. I, L.P. v. Stryker

Sales Corp., 267 F.3d 1370, 1378, 60 USPQ2d 1482, 1487

(Fed. Cir. 2001); cf. Reactive Metals & Alloys Corp. v. ESM,

Inc., 769 F.2d 1578, 1582, 226 USPQ 821, 824 (Fed. Cir.

1985). In reviewing a §285 award, this court reviews

underlying factual findings, including whether a case is

exceptional; for clear error and underlying legal conclusions

without deference. Molins PLC v. Textron, Inc., 48 F.3d 1172,

1186, 33 USPQ2d 1823, 1833 (Fed. Cir. 1995). If the case is

found to be exceptional, the district court enjoys broad

discretion to make an award, a determination that this court

reviews for an abuse of discretion. Brasseler, 267 F.3d at 1379.

If the factual or legal underpinnings of the award partially are

reversed, this court may vacate the award and remand for

further evaluation by the district court. Molins, 48 F.3d at 1186.

III. Claim Construction and Infringement

After construing the asserted claims, the district court

granted JMOL in favor of Infineon, holding that Infineon did

not infringe the claims as construed. On appeal, Rambus

contests the construction of five terms in the four patents-in-

suit, namely: “integrated circuit device,” “read request,” “write

request,” ‘transaction request,” and “bus.” The parties agree

that, with one exception, the terms have the same meaning in

each claim at issue. The only exception is the term “integrated

circuit device,” which Infineon argues has a different meaning

that duty as a question of fact. See, e.g., Streeks, Inc. v. Diamond Hill

Farms, Inc., 605 N.W.2d 110, 121 (Neb. 2000); State Farm Fire, 729 So.2d

at 839-40; cf. Bradford v. Vento, 48 S.W.3d 749, 755 (Tex. 2001); Carter

Lincoln-Mercury, Inc. v. EMAR Group, Inc., 638 A.2d 1288, 1294 (N.J.

1994). Finally, Virginia treats many tort duties as questions of law. Burns v.

Johnson, 458 S.E.2d 448, 451 (Va. 1995) (“The question whether a duty of

care exists in a negligence action is a pure question of law.”); Acme Markets,

Inc. v. Remschel, 24 S.E.2d 430, 434 (Va. 1943).

9a

in the ’804 patent because of representations made to the PTO

during prosecution of that patent.

Patent claim language defines the scope of the invention.

SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227

USPQ 577, 585 (Fed. Cir. 1985) (en banc). As a general rule,

claim language carries the meaning of the words in their normal

usage in the field of the invention. Toro Co. v. White Consol.

Indus., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir.

1999). In other words, a claim term means “what one of

ordinary skill in the art at the time of the invention would have

understood the term to mean.” Markman v. Westview

Instruments, Inc., 52 F.3d 967, 986, 34 USPQ2d 1321, 1335

(Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370 (1996).

Nevertheless, inventors may act as their own lexicographers and

use the specification to supply implicitly or explicitly new

meanings for claim terms. Jd. at 980; Bell Atl. Network Servs.,

Inc. v. Covad Communications Group, Inc., 262 F.3d 1258,

1268, 59 USPQ2d 1865, 1870 (Fed. Cir. 2001) (“[A] claim

term may be clearly redefined without an explicit statement of

redefinition.”); Scimed Life Sys., Inc. v. Advanced

Cardiovascular Sys., Inc., 242 F.3d 1337, 1344, 58 USPQ2d

1059, 1065 (Fed. Cir. 2001). Thus, to help determine the

proper construction of a patent claim, a construing court

consults the written description and the prosecution history.

Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344,

47 USPQ2d 1418, 1424 (Fed. Cir. 1998).

While claims often receive their interpretative context from

the specification and the prosecution history, courts may not

read limitations into the claims. Comark Communications, Inc.

v. Harris Corp., 156 F.3d 1182, 1186, 48 USPQ2d 1001, 1005

(Fed. Cir. 1998). “This court has repeatedly and clearly held

that it will not read unstated limitations into claim language.”

N. Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1290,

55 USPQ2d 1065, 1072 (Fed. Cir. 2000); see also Renishaw

P" Cv. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248, 48

10a

USPQ2d 1117, 1120 (Fed. Cir. 1998); Markman, 52 F.3d at

981.

A. Integrated Circuit Device

The district court construed “integrated circuit device” in

claim 26 of the ’804 patent to include a device identification

register, interface circuitry, and comparison circuitry.

Claim 26 recites:

26. An integrated circuit device having at least one

memory section which includes a plurality of

memory cells, wherein the integrated circuit device

outputs data on an external bus synchronously with

respect to first and second external clock signals,

the integrated circuit device comprises:

a first internal register to store a value which is

representative of a number of clock cycles to

transpire before the integrated circuit device

responds to a read request;

delay locked loop circuitry to generate an internal

clock signal using the first and second external

clock signals;

an interface circuitry, coupled to the external bus

to receive a read request, the interface circuitry

includes a plurality of output drivers, coupled to the

external bus, to output data on the external bus in

response to the internal clock signal, synchronously

with respect to the first and second external clock

signals and in accordance with the value stored in

the first internal register.

’804 patent, col. 28, Il. 1-21. Nothing in the claim language

indicates that “integrated circuit device” necessarily includes a

device identification register, interface circuitry, and

comparison circuitry. The terms “comparison circuitry” and

“device identification register” do not appear anywhere in the

lla

text of claim 26.* “Comparison circuitry” is different from the

“delay locked loop circuitry” limitation recited in claim 26.

Likewise, a “device identification register” is different from the

limitation “first internal register to store a value which is

representative of a number of clock cycles.” Thus, the claim

does not require comparison circuitry or a device identification

register. The district court’s construction did not merely clarify

or construe the actual words of the claim. Without any claim

language addressing comparison circuitry or a device

identification register, the court’s construction reads into the

claim two new limitations not required by the claim language.

See N. Telecom, 215 F.3d at 1290.

The district court erred by placing too much emphasis on a

single introductory comment in the prosecution history of the

"804 patent. This comment appeared in the prosecution history

after the examiner rejected the pending claims in light of U.S.

Patent No. 4,458,357. Responding to the rejection, the patentee

submitted twenty-six new claims, four of which were

independent claims. In accompanying remarks, the patentee

stated:

These newly submitted claims are directed to a

memory device (or an integrated circuit having

memory) having (1) an internal register for storing

an identification value, (2) interface circuitry to

receive a request on an external bus, and

(3) comparison circuitry to determine whether the

identification information in the request

* Claim 26 does recite an “interface circuitry” limitation. While it is proper

to construe claim 26 as requiring interface circuitry, it technically is not

proper to read the “interface circuitry” limitation into the meaning of the

term “integrated circuit device” itself. The generic term “integrated circuit

device” has a broad and accepted meaning within the art that does not

depend on the limitations of claim 26. Therefore, in construing the meaning

of this broad generic term, this court does not include limitations from

specific patent claims.

12a

corresponds to the identification value in the

internal register—wherein when the identification

information corresponds to the identification value,

the memory device responds to the request.

While the first three independent claims (issued claims 1, 15,

and 23) recited, with some modifications, the three limitations

listed above, the fourth independent claim (issued claim 26)

recited only one of the above listed limitations. Specifically,

claim 26, the claim at issue here, includes only the “interface

circuitry” limitation. Claim 26, however, contains two other

limitations not listed above: an internal register to store a value

representative of a number of clock cycles and delay locked

loop circuitry.

The prosecution history statement introduces in general

terms the new claims. In this sense, the statement properly

introduces three features that appear in some of the claims.

This general introductory statement, however, is not correct in

suggesting that these features appear in each of the new claims.

This incorrect statement in the prosecution history does not

govern the meaning of the claims. Therefore, consistent with

Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d

1050, 12 USPQ2d 1474 (Fed. Cir. 1989), the imprecise

statement in the prosecution history does not limit claim 26.

The claim language itself controls the bounds of the claim, not a

facially inaccurate remark during prosecution.

The patent at issue in Intervet involved a vaccine for a

poultry disease. Jd. at 1051. In that case the examiner rejected

the pending claims because they were not limited to a single

vaccination. The examiner said that a single vaccination

limitation would distinguish the invention ovey the prior art. Id.

at 1053-54. The prosecuting attorney amended three of the

claims to recite “single administration,” but did not so amend

the remaining claims. Jd. at 1054. In accompanying remarks,

the attorney inaccurately described all the claims as “restricted

to a single vaccination scheme.” Jd. After this erroneous

13a

remark, the examiner had two interviews with the attorney and

made two examiner’s amendments before allowing the claims.

Id. Reviewing this prosecution history, this court in /ntervet

held that the claims control over a loose remark in the course of

prosecution:

When it comes to the question of which should

control, an erroneous remark by an attorney in the

course of prosecution of an application or the

claims of the patent as finally worded and issued by

the [PTO] as an official grant, we think the law

allows for no choice. The claims themselves

control.... [I]t is not for the courts to say that they

contain limitations which are not in them.

Id. The Intervet court thus did not restrict all of the claims to a

single vaccination. /d.; see also Hockerson-Halberstadt v. Avia

Group Int’, 222 F.3d 951, 957, 55 USPQ2d 1487, 1491 (Fed.

Cir. 2000).

The present case parallels Jntervet. Here, claim 26 does not

contain all the limitations found in claims 1, 15, and 23 of the

”804 patent. The prosecuting attorney’s incorrect description of

the four new claims does not govern over the language of those

claims. Moreover, in- this case, the examiner made an

examiner’s amendment and amended each of the claims—

including claim 26—after this untrue remark by the prosecuting

attorney. In this context, a reasonable competitor would not

rely on an untrue statement in the prosecution history over the

express terms of the claims. In the present case, like Intervet,

this court perceives no justification for reading unstated

limitations into claim 26. -

The term “integrated circuit device,” as used in claim 26,

instead receives its ordinary meaning to one of skill in this art

as a “circuit constructed on a single monolithic substrate,

commonly called a ‘chip.’” See Rambus, Inc. v. Infineon Techs.

AG, No. 3:00cv524, slip op. at 70 (E.D. Va. March 15, 2001)

14a

(Rambus argues for this construction.); cf. The New IEEE

Standard Dictionary of Electrical and Electronic Terms 662

(Sth cd. 1993); IBM Dictionary of Computing 347 (10th ed.

1994); see also Texas Digital Sys., Inc. v. Telegenix, Inc., 308

F.3d 1193, 1202, 64 USPQ2d 1812, 1818 (Fed. Cir. 2002).

B. Read Request

The district court construed “read request” to mean “a series

of bits transmitted over the bus that contain multiplexed address

and control information needed to request a read of data from a

memory device.” The court similarly construed “write request”

and “transaction request” by replacing the language “needed to

request a read of data from a memory device” with “needed to

request a write of data from a memory device” and “needed to

perform a transaction over the bus with a memory device.”

Claim 18 of the ’918 patent is representative of the claims

reciting a “read request:”

18. A method of operation of a synchronous

memory device, wherein the memory device

includes a plurality of memory cells, the method of

operation of the memory device comprises:

receiving an external clock signal;

receiving first block size information from a bus

controller, wherein the first block size information

defines a first amount of data to be output by the

memory device onto a bus in response to a read

request,

receiving a first request from the bus controller;

and

outputting the first amount of data corresponding to

the first block size information, in response to the

first read request, onto the bus synchronously with

respect to the external clock signal.

15a

’918 patent, col. 26, ll. 13-27 (emphases added). The relevant

claim language thus recites only that data is output onto a bus in

response to a “read request.”

Both parties agree that the term “read request” has no

unambiguous ordinary meaning to one of skill in the art.

Infineon argues that because the claims contemplate a response

to a “read request,” the “read request” must contain all

information necessary to perform the requested read. Thus,

Infineon argues that the “read request” must include both

address and control information. Rambus agrees that in order

to actually perform a read the device must be given address and

control information. Rambus asserts, however, that such

address and control information is part of the “request packet,”

not the “read request.” Rambus argues that “read request”

refers only to an instruction to the memory device to perform a

read action. According to Rambus, the “read request” is one

component of the “request packet”—-comprising the first four

bits of the packet. Figure 4 of the ’918 patent illustrates a

“request packet:”

REGULAR ACCESS

ADORVALID BUSDATAO:7} CYC

4 ey Cte . SE; isi i et ' qT

al 1 | : MASTER(0:3} 0- EVEN

ADORESS}O:8] 2s |1-000

2— ADDRESSIS:17] 2

ADORESS{ 16:25} 3

ADORESS{(27:35} 26 14

mri o | ADORESS{36:39} : BLOCKSIZE}0:3} 6

As shown above, the “request packet” has multiple fields,

including an AccessType field, Address fields, and a BlockSize

field. Rambus contends that the four-bit AccessType field

contains the “read request.” The first bit instructs the memory

device to perform a read; the next three bits tell the device what

16a

type of read to perform (e.g., page read, normal access read,

etc.).

The district court interpreted the claim language requiring a

response to a “read request” to mean that the “read request”

must include address and control information. To the contrary,

the claim language itself shows the fallacy of holding that

outputting data in response to a “read request” necessarily

implies that the read request must contain all information

necessary for a memory device to respond. Claim 18 recites

receiving a “block size” that defines an amount of data to be

output onto a bus in response to a read request. By specifying

the “block size” as separate from the “read request,” claim 18

indicates that the block size is not part of the read request.

Nevertheless, block size, which tells the device how much data

to read, is necessary to permit the device to respond to a read

request.” Thus, even though the device needs a block size to

respond, such block size is not part of the read request. See

°918 patent, col. 24, 1. 58-col. 25, 1. 3 (Claim 1 recites

providing a “block size” to the memory device in one limitation

and issuing a “read request” to the memory device in another

limitation.).

In addition, the district court’s interpretation of “read

request” conflicts with other passages of the specification.

While the memory device must respond to a read request, the

specification indicates that the address and control information

is part of the request packet—not the read request. In other

words, the specification does not use read request and request

packet interchangeably. Rather, it shows a difference between a

read request and a request packet. Each reference to address

and control information consistently indicates that such

5 To tell the memory device what data to read, the controlling device (e.g.,

the CPU) may provide a start and stop point for the data location, or provide

a start point and a value for how much data to read (i.e., block size). The

claimed invention uses the “block size” method.

17a

information is a part of the request packet, which the

specification defines as “a contiguous series of bytes containing

address and control information.” ’918 patent, col. 8, 1. 59-col.

9, 1. 4; see also col. 9, ll. 2443; col. 6, ll. 61-62 (defining

request packet as “a sequence of bytes comprising address and

control information”); col. 9, ll. 11-13 (request packet has

control information). Other than in the abstract and the claims,

the term “read request” appears only twice in the specification.

See id., col. 9, 1. 2 & col. 12, ll. 33-35. Neither reference to

“read request” suggests the presence of address and control

information. The specification merely indicates that the “read

request” requests data from a memory device and specifies what

type of read (e.g., page mode, normal mode, etc.) to perform.

See id., col. 9, 1. 39-col. 10, 1. 39; col. 8, 1. 66—col. 9, 1.3 &

Figure 4.

Moreover, the dependent claims demonstrate that a read

request is distinct from a request packet. Dependent claims 27

and 28, which depend from claim 18, recite:

27. The method of claim 18 wherein the first block

size information and the first read request are

included in a request packet.

~ 28. The method of claim 27 wherein the first block

size information and the first read request are

included in the same request packet.

id., col. 27, ll. 6-11. Although one of ordinary skill would

know that a memory device needs a block size and address and

control information to respond, the claims do not state that such

information forms a part of the read request. In fact, the claims

do not even require that such information be part of the same

request packet. Even though the memory device needs this

information, the claims need not recite every component

necessary to enable operation of a working device. Rodime

PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303, 50 USPQ2d

1429, 1435 (Fed. Cir. 1999) (applicant need not claim every

18a

feature of a working device). The district court’s construction

would render claim language in dependent claims 27 and 28

meaningless. This court disfavors such a construction. Comark

Communications, 156 F.3d at 1187; Wright Med. Tech., Inc. v.

Osteonics Corp., 122 F.3d 1440, 1445, 43 USPQ2d 1837, 1841

(Fed. Cir. 1997).

_ The district court also relied on a statement made during

prosecution as an admission by Rambus that a “transaction

request” includes “identification information.” At the time of

this statement, however, pending claim 186 (issued claim 1 of

the 918 patent) referred to “a transaction request including

identification information.” The examiner amended the claim

by inserting the word “packet” after each occurrence of

“request” in pending claim 186, which in fact clarifies that

identification information is part of a request packet, not a

“transaction request.” Notably, the examiner did not make such

amendments to pending claims 200 and 208, which recited

“identification information and a read request.” See also °804

patent, col. 26, ll. 4-5.

Finally, this court perceives no justification for including

multiplexing as a part of the meaning of “read request.”

Multiplexing, if necessitated by the claims, is applicable to the

construction of the term “bus,” not “read request.” The claims

do not support reading multiplexing into “read request.”

From the correct perspective of one of skill in the art at the

time of invention, the term “read request” means a series of bits

used to request a read of data from a memory device where the

request identifies what type of read to perform. The terms

“write request” and “transaction request” mean, respectively, a

series of bits used to request a write of data to a memory device

and a series of bits used to request performance of a transaction

with a memory device.

19a

C. Bus

The district court construed “bus” to mean “a multiplexed set

of signal lines used to transmit address, data and control

information.” In its Markman opinion, the district court note:

Rambus’s proposed ordinary meaning of “bus,” but held that

the patentees acted as their own lexicographer by redefining

“bus” to be a multiplexed bus. Multiplexing refers to the

sharing of a single set of lines to send multiple types of

information. Under the district court’s construction, the “bus”

carries three types of information: address, data, and control

information.

The term “bus” is very common in the electrical arts and has

a well-recognized meaning in such arts, namely, a set of signal

lines (e.g., copper traces on a circuit board) to which a number

of devices are connected, and over which information is

transferred between devices. The New IEEE Standard

Dictionary of Electrical and Electronic Terms 141 (5th ed.

1993). The claims generally recite outputting data over a “bus.”

The claims do not specify that the bus multiplexes address,

data, and control information. See ’918 patent, col. 26, Il. 19-

27. Nothing in the claims compels a definition different from

the ordinary meaning of “bus.” Before according “bus” this

meaning, however, this court must consider the usage and

meaning of the term as used in the relevant context of the

specification.

In general, most references to “bus” in the specification do

not limit the ordinary meaning of this term. Only two

references potentially limit the meaning of “bus” in the context

of the specification. In the Summary of the Invention, the

patentee stated that the “present invention” includes a bus for

carrying substantially all address, data, and control information.

°918 patent, col. 3, ll. 50-60. The patentes further stated that

“the bus carries device-select information without the need for

20a

separate device-select lines connected directly to individual

devices.” Id. In the Detailed Description, the patentee stated:

The present invention is designed to provide a high

speed, multiplexed bus for communication between

processing devices and memory devices .... The

bus carries substantially all address, data and

control information needed by devices for

communication with other devices on the bus. In

many systems usirig the present invention, the bus

carries almost every signal between every device in

the entire system. There is no need for separate

device-select lines since device-select information

for each device on the bus is carried over the bus.

There is no need for separate address and data lines

because address and data information can be sent

over the same lines.

°918 patent, col. 5, ll. 36-46. See also ’918 patent, col. 5, Il. 52-

53. While clear language characterizing “the present invention”

may limit the ordinary meaning of claim terms, see Scimed, 242

F.3d at 1343; Bell Atlantic, 262 F.3d at 1268, such language

must be read in context of the entire specification and the

prosecution history. Although the above references, taken

alone, may suggest some limitation of “bus” to a multiplexing

bus, the remainder of the specification and prosecution history

shows that Rambus did not clearly disclaim or disavow such

claim scope in this case. See Inverness Med. Switz. Gmbh v.

Princeton Biomeditech Corp., 309 F.3d 1365, 1372, 64

USPQ2d 1926, 1932 (Fed. Cir. 2002) (statements made during

prosecution were not a clear and unambiguous disclaimer of a

° The multiplexed bus eliminates device-select (point-to-point) connections

by multiplexing control information with address and data information. This

elimination of point-to-point connections is one focus of the multiplexed bus.

See ’918 patent, col. 2, Il. 12-15 (While some prior art buses multiplexed

address and data information, they retained point-to-point connections for

control information.); col. 2, ll. 16-19, 26-34, 36-42, and 44-49.

2la

claim scope). Thus, Rambus did not limit the ordinary meaning

of “bus” in the patents-in-suit.

In this case, the prosecution history shows that a

multiplexing bus is only one of many inventions disclosed in

the *898 application. Although some of Rambus’s claimed

inventions require a multiplexing bus, multiplexing is not a

requirement in all of Rambus’s claims. A careful review of the

prosecution histories of the patents-in-suit shows that Rambus

expressly recited multiplexing in the claim language for claims

limiting the bus to the inventive multiplexing bus. For

example, original claim | of the ’898 application recites a “bus

including a plurality of bus lines for carrying substantially all

address, data and control information needed by said memory

device.” Other original claims further require that the “bus

carry| ] device-select information without the need for separate

device-select lines connected directly to individual

semiconductor devices.” This claim language indicates that

Rambus did not redefine “bus” in the specification to be a

multiplexing bus. Indeed, it is because Rambus viewed “bus”

under its ordinary meaning that Rambus specified—in the claim

language—that the inventive multiplexing bus _ carries

substantially all address, data, and control information and that

the bus operates without the need for device-select lines.

Several restriction requirements issued by the PTO also

clarify that some of the inventions described in the °898

application did not require the multiplexing bus. The PTO

issued an-eleven-way restriction requirement during prosecution

of the °898 application. Later, during prosecution of U.S.

Patent No. 5,841,580 (the grandparent of the °918 patent and

the parent of the ’263 patent), the PTO issued a two-way

restriction, dividing the claims into two distinct groups: a

multiplexing bus group (Group I) and a latency invention group

(Group II). That two-way restriction stated:

[T]he memory device in Group I does not require

the access-time register of Group II, and the

22a

semiconductor device in Group II does not require

the plurality of conductor [sic] being multiplexed

to receive an address as claimed in Group I.

Rambus elected to prosecute the latency claims from Group

II in the ’580 patent. Therefore, the claims of the °580 patent

do not require a multiplexing bus. The claims of the ’580

patent, however, do recite a “bus.” See 580 patent, col. 24., |.

46. By stating that the latency claims, which recited a “bus,” do

not require multiplexing, the PTO demonstrated an

understanding of “bus” that is not limited to a multiplexing bus.

The specification and prosecution histories, taken in their

entirety, convince this court that Rambus did not redefine “bus”

to be a multiplexing bus in the patents-in-suit. None of

Rambus’s statements constitute a clear disclaimer or disavowal

of claim scope. In these patents, the term “bus” carries its

ordinary meaning as a set of signal lines to which a number of

devices are connected, and over which information is

transferred between devices.

In sum, the district court erred in its construction of each of

the disputed terms. In light of the revised claim construction,

this court vacates the grant of JMOL of noninfringement and

remands for the district court to reconsider infringement.

IV. Fraud

The jury found that Rambus committed actual fraud by not

disclosing to JEDEC patents and patent applications related to

the SDRAM and DDR-SDRAM standards. The district court

denied JMOL on the SDRAM fraud verdict, but granted JMOL

of no fraud on the DDR-SDRAM fraud verdict. Rambus

appeals the denial of JMOL on the SDRAM verdict, arguing it

did not have patents or applications related to the SDRAM

standard while at JEDEC. Infineon cross-appeals the grant of

JMOL on the DDR-SDRAM verdict, arguing that the court did

not give proper deference to the jury verdict.

23a

To prove fraud in Virginia, a party must show by clear and

convincing evidence: 1) a false representation (or omission in

the face of a duty to disclose), 2) of a material fact, 3) made

intentionally and Knowingly, 4) with the intent to mislead, 5)

with reasonable reliance by the misled party, and 6) resulting in

damages to the misled party. /7T Hartford Group, Inc. v. Va.

Fin. Assocs., Inc., 520 S.E.2d 355, 361 (Va. 1999); Bank of

Montreal v. Signet Bank, 193 F.3d 818, 826 (4th Cir. 1999). A

party’s silence or withholding of information does not

constitute fraud in the absence of a duty to disclose that

information.’ Bank of Montreal, 193 F.3d at 827. Generally,

“‘fraud must relate to a present or a pre-existing fact, and

cannot ordinarily be predicated on unfulfilled promises or

statements as to future events.”” Patrick v. Summers, 369

S.E.2d 162, 164 (Va. 1988) (quoting Soble v. Herman, 9S.E.2d

459, 464 (Va. 1940)); see also ITT Hartford Group, 520S.E.2d

at 361. In some cases, however, misrepresentations about a

party’s present intentions also may give rise to fraud. Elliott v.

Shore Stop, Inc., 384 S.E.2d 752, 756 (Va. 1989). Failure to

” The dissent suggests that Rambus is liable for fraud on the basis that it had

relevant superior knowledge and a duty to disclose that knowledge because

of a special relationship with other JEDEC members. Virginia courts have

recognized that the duty to disclose may arise from a contractual or fiduciary

relationship. Cohen v. Mastie, 31 Va. Cir. 96, 99 (1993); see also Devansky

v. Dryvit Sys., Inc., 52 Va. Cir. 359, 361 (2000); Allen Realty Corp. v.

Holbert, 227 Va. 441 (1984) (plaintiff's accountant failed to disclose offers

for the purchase of plaintiff's assets). In the present appeal, the parties do

not argue that Rambus’s duty was based on a fiduciary or confidential

relationship with Infineon. Even absent waiver of such an argument, a

disclosure duty based on a fiduciary relationship seems unlikely. Rambus

and Infineon are competitors. There is no basis for finding that Rambus and

Infineon shared a fiduciary relationship solely by virtue of their JEDEC

membership. Indeed, the implications of holding that mere membership

forms a fiduciary duty among all JEDEC members could be substantial and

raise serious antitrust concerns. Here, the parties argued the existence of a

duty based on only Rambus’s act of joining JEDEC with awareness of the

EIA/JEDEC policy. There is no other proper basis for finding the existence

of a disclosure duty.

24a

prove even one of the elements of fraud—such as existence of a

duty to disclose—defeats a fraud claim. Bank of Montreal, 193

F.3d at 826.

A. Duty to Disclose

Before determining whether Rambus withheld information

about patents or applications in the face of a duty to disclose,

this court first must ascertain what duty Rambus owed JEDEC.

Mr. John Kelly, EIA’s general counsel since 1990 and the

person responsible for implementing the EIA/JEDEC patent

policy, testified that three manuals, namely, EP-3-F, EP-7-A,

and JEP 21-I, contain the patent disclosure policy. Before

1993, JEDEC’s policy discouraged the adoption of standards

that “call for the exclusive use of a patented item or process.”

The policy also discouraged standards referring to a “patented

item or process” unless the committee knew “the technical

information covered by the patent” and the patentee agreed to

license the patent under reasonable terms.

JEP 21-I, published in October 1993, stated:

EIA and JEDEC standards . . . that require the use

of patented items should be considered with great

care. . . . [C]omittees should ensure that no

program of standardization shall refer to a product

on which there is a known patent unless all the

relevant technical information covered by the

patent is known ....

The manual also included a policy revision expressly adding

“pending patent[s]” to the policy language. The manual further

stated:

The Chairperson . . . must . . . call attention to the

obligation of all participants to inform the meeting

of any knowledge they may have of any patents, or

pending patents, that might be involved in the work

they are undertaking. Appendix E (Legal

Guidelines Summary) provides copies of

25a

viewgraphs that should be used at the beginning of

he meeting to satisfy this requirement.

Appendix E read, in relevant part, as follows :

EIA/JEDEC PATENT POLICY SUMMARY

Standards that call for the use of a patented item or

process may not be considered by a JEDEC

committee unless all of the relevant technical

information covered by the patent or pending

patent is known to the committee, subcommittee,

or working group.

Appendix E also provided that patentees or applicants must

agree to license others to use the patent “for the purpose of

implementing the standard(s).” Thus, Appendix E prohibited

standards that “call for use of a patented item or process” unless

all information “covered by the patent or pending patent” was

known and a “license . . . for the purpose of implementing the

standard(s)” was available under reasonable terms.

Mr. Willibald Meyer, Infineon’s JEDEC representative,

explained how members learned of the ELA/JEDEC patent

policy. He testified:

Q. In your experience in the years you have

attended JEDEC, Mr. Meyer, how is it that

members learn what the patent policy is? Is it from

reading manuals?

A. Very unlikely.

Q. How is it that members of JEDEC learn of the

patent policy? .

A. Well, you go to the meetings, you attent [sic] a

couple of times, and you learn from how the

meeting works and how things are dealt with.

Mr. Meyer further testified that the “patent policy” was

discussed orally at each JC-42.3 meeting. Mr. Reese Brown, a

JEDEC consultant who edited the standards and maintained the

26a

activity log for committee JC-42, also testified that he learned

of the patent policy from the Appendix E viewgraphs shown at

the meetings. He testified:

Q. When you went to the JC-42.3 meetings, did

you look up on the wall when they put the patent

policy on the wall?

A. Yes, I read it on the screen.

Q. And that’s what you understood the patent

policy to be?

A. Yes.

Q. And when you look at the minutes, they would

have a copy of that patent policy attached to the

minutes so in case you were dozing or doodling or

typing on your computer, you could read the patent

policy if you wanted?

A. One could if they wanted to.

Q. So in any event, that’s where you got your

understanding of the patent policy?

A. Yes.

According to the written minutes of committee JC-42.3,

JEDEC members were shown the “patent policy” as essentially

recorded in Appendix E at each of the committee meetings. For

example, the minutes of a July 21, 1992 meeting in Denver,

Colorado, entitled “EIA/JEDEC Minutes of Meeting No. 63,”

indicate that members were shown the patent policy as

contained in Attachment A to the minutes. Attachment A

reads:

EIA Policy

3.4 Patented Items or Processes

Avoid requirements in the EIA Standards that call

for use of a patented item or process. No program

standard shall refer to a patented item or process

27a

unless all of the technical information covered by

the patent is known to the formulating committee

or working group....

Other committee minutes indicate that this same language

was displayed at meetings held in December 1993, in San

Diego, California, and again in December 1995, in Dallas,

Texas. The record does not indicate that the directive to the

chairman was shown to JEDEC members. Instead, the record

indicates that the only “patent policy” ever shown members was

the policy as recorded in Appendix E.

The language of these policy statements actually does not

impose any direct duty on members. While the policy language

advises JEDEC as a whole to avoid standards “calling for the

use of” a patent and the manual obligates the chairperson to

remind members to inform the meeting of any patents or

applications relevant to the work of the committee, this court

finds no language—in the membership application or manual

excerpts—expressly requiring members to disclose information.

There is no indication that members ever legally agreed to

disclose information.

Nevertheless, because JEDEC members treated the language

of Appendix E as imposing a disclosure duty, this court

likewise treats this language as imposing a disclosure duty.

Assuming such a duty, however, the directive to the chairperson

was not intended as a statement of the duty, but as a

requirement on the chairperson to point members to the duty in

Appendix E. Nothing in this record suggests that the directive

to the chairperson is broader than the policy shown to members

by the viewgraphs of Appendix E. Only the language of

Appendix E was shown to members. Appendix E prohibited

standards that “call for use of a patented item or process” and

encouraged disclosure of information “covered by the patent or

pending patent.” It was that language that the chairperson was

instructed to show members to inform them of their duty. That

language links the disclosure duty to patents or applications

28a

whose claims cover the proposed J EDEC standard. Further, the

JEDEC policy permitted adoption of a standard covered by a

patent if the claimed technology was available under reasonable

license terms. Thus, JEDEC’s policy identifies the duty to

disclose based on the scope of claimed inventions that would

cover any standard and cause those who use the standard to

infringe.

Although the JEDEC policy does not use the language

“related to,” the parties consistently agree that the JEDEC

policy language requires disclosure of patents “related to” the

standardization work of the committee. Infineon, however,

argues this language also requires disclosure of patent

applications “related to” the committee’s work. While both

parties repeatedly treat the “related to” language as coextensive

with the policy language, the parties differ in their interpretation

of “related to.” Rambus argues that “related to” means patents

that read on or cover the standard. Although advocating a

“more is better” interpretation, the necessary implication of

Infineon’s arguments also is that whether a patent or application

‘5 “related to” the standard depends on the claims of the patent

or application.

Rambus disclosed the *703 patent in September 1993.

JEDEC also learned of Rambus’s WIPO application at the same

meeting. Infineon argues that the 703 patent disclosed to

JEDEC did not “relate to” the SDRAM standard, but that other

undisclosed applications did “relate to” the SDRAM standard.

Additionally, Mr. Meyer, Infineon’s JEDEC representative,

testified that he read the ’703 patent and the WIPO application

and concluded that they did not “relate to” the SDRAM

standard. This conclusion is telling because the written

description and drawings of the undisclosed patents and

applications are identical to the disclosed ’703 patent. The only

material difference between the disclosed 703 patent and the

undisclosed patents and applications appears in the claims.

Accepting, as the jury also must have, Infineon’s argument that

29a

the ’703 patent is unrelated to the JEDEC standard but that

undisclosed patents and applications (with the same written

description and drawings) are related to the standard, whether a

patent or application is “related to” the standard necessarily

must depend on the claims of the patent or application.

Indeed, other Infineon arguments evince that this

interpretation of “related to” is correct. For example, Infineon

states that the ’703 patent “contained claims relating only to...

RDRAM” and did not indicate that Rambus might file

“applications based on the same specification, but with

SDRAM-related claims.” Accepting Infineon’s arguments,

again as the jury must have, the necessary implication of those

arguments is that “related to”—and thus the disclosure duty—

focuses on the claims.

Infineon’s witnesses also imparted this meaning to the

disclosure duty. Mr. Gordon Kelley, committee chairman for

JC-42.3 and IBM’s JEDEC representative, testified:

Q. Under what circumstances would a patent need

to be disclosed to JEDEC?

A. If a member representing a company .. . is

aware of a patent that their company holds that

reads to or applies to a patent or patent claims or a

[sic] application of patent or patent claims, then it

is the obligation of that member to bring that

information to the committee.

Q. And what do you mean by reads to or applies

to?

A. That the patent—that if you exercised the

design or production of the component that was

being standardized would require the use of that

patent.

In later testimony Mr. Kelley reemphasized the role of the

claims in the disclosure duty, stating:

30a

It violates the JEDEC policy . . . of notifying the

committee when there are patents issued that

have—that read on or apply directly to the

activities of a standards process without notifying

the committee.

When asked what information should be disclosed to satisfy

the disclosure requirement, Mr. Kelley responded:

In my case and I think in most cases I would

paraphrase what I understood the claims of the

patent or patent application to be. Inever actually

brought patents and distributed them. ... I always

felt it was the responsibility of the companies if I

identified a patent for them to get the information.

But I would paraphrase the claims as I understood

them and why or how they applied to the proposal

subject.

Moreover, Mr. Meyer, Infineon’s JEDEC representative,

testified similarly:

Q. What was your understanding of the

relationship that a patent had to have in order to

be disclosed under JEDEC’s patent policy?

A. Well, it had to be related to the work at JEDEC

in the sense that it described features that were

necessary to meet the standard.

Q. In other words, in order to practice a standard,

it would be necessary to use the feature that was

patented, right?

A. Yes.

Q. So if the patent would not be required to be

used in order to practice the standard, it didn’t have

to be disclosed, right?

A. If it was—as I said, if it was a circuit, which

could be done differently, then no.

3la

Infineon’s arguments and Infineon’s witnesses provide

evidence of the members’ understanding of the JEDEC policy.

Both indicate that the relevant disclosure duty hinges on

whether the issued or pending claims are needed to practice the

standard.® This construction accords with the primary JEDEC

goal of adopting open standards that can be practiced without

unreasonable license fees or terms. Infineon provides no

evidence that the policy required (or that JEDEC members

understood the policy to require) disclosure of patents and

applications not necessary to practice the standard. On this

record, a reasonable jury could find only that the duty to

disclose a patent or application arises when a license under its

claims reasonably might be required to practice the standard.

To the extent Infineon may argue that the duty to disclose

also encompasses situations where an application describes (but

does not claim) technologies under discussion at JEDEC, this

court notes that Rambus disclosed the ’703 patent and thus

satisfied such a construction of the duty. With disclosure of the

°703 patent, JEDEC had the written description for all the

undisclosed patents and applications. Indeed, all JEDEC

members had notice of the written description of all of

Rambus’s patents before adopting its SDRAM standard. The

only thing Rambus did not disclose to JEDEC—and thus the

necessary focus of the fraud inquiry—was the claims in those

patents and applications. The inquiry, therefore, is claim-

specific and standard-specific.

Thus, Rambus’s duty to disclose extended only to claims in

patents or applications that reasonably might be necessary to

practice the standard. In other words, this duty encompassed

any patent or application with claims that a competitor or other

8 The dissent quotes testimony where Mr. Kelley stated that JEDEC

members should disclose patents “that applied to a proposed standard.” As

noted above, however, Mr. Kelley later testified that when he said “reads to

or applies to” he meant that “the design or production of the component that

was being standardized would require the use of that patent.”

32a

JEDEC member reasonably would construe to cover the

standardized technology. This does not require a formal

infringement analysis. Members are not required to perform a

limitation-by-limitation comparison or conduct an equivalents

analysis. Rather, the disclosure duty operates when a

reasonable competitor would not expect to practice the standard

without a license under the undisclosed claims. Stated another

way, there must be some reasonable expectation that a license 1s

needed to implement the standard. By the same token, the

disclosure duty does not arise for a claim that recites individual

limitations directed to a feature of the J EDEC standard as long

as that claim also includes limitations not needed to practice the

standard. This is so because the claim could not reasonably be

read to cover the standard or require a license to practice the

standard.

To hold otherwise would contradict the record evidence and

render the JEDEC disclosure duty unbounded. Under such an

amorphous duty, any patent or application having a vague

relationship to the standard would have to be disclosed. JEDEC

members would be required to disclose improvement patents,

implementation patents, and patents directed to the testing of

standard-compliant devices—even though the standard itself

could be practiced without licenses under such patents. The

record contains further evidence suggesting that the JEDEC

members did not perceive the disclosure duty to include

obligations of that breadth. For example, the record contains a

tracking list showing only five disclosed applications and sixty

disclosed patents from a committee membership of over fifty

companies. Those companies include many leading

manufacturers heavily involved in memory technology, such as

IBM, Toshiba, Intel, AMD, Samsung, Siemens, Hyundai,

Micron, Sun Microsystems, Hewlett-Packard, Hitachi,

Motorola, LG Semicon, and Fujitsu. If these members

perceived the duty to encompass any patent or application with

a vague relationship to the J EDEC standard, the record would

33a

likely contain a substantially greater number of disclosed

patents and applications. Even Infineon’s own actions

demonstrate that the disclosure duty was not so broad because

Infineon itself did not disclose to JEDEC an application on

testing SDRAM. Presumably, it did not disclose that

application because it was not necessary to practice the

SDRAM standard.

To weigh the legal sufficiency of the jury verdict, this court

also must consider when the duty to disclose arises. This

inquiry will show whether Rambus participated in JEDEC

proceedings at a time when it had a duty to disclose. The

JEDEC policy itself does not state when a committee member’s

duty arises. Infineon argues that discussions before formal

consideration of a standard trigger the disclosure duty. To the

contrary, Mr. Gordon Kelley, the committee chairman and

IBM’s JEDEC representative, testified that the disclosure duty

arose at formal balloting of a proposed standard. Formal ballots

include a check box next to a statement certifying that the voter

is not aware of any patents involved in the ballot. Mr. Kelley

did not testify that the EIA/JEDEC policy required or that

members understood the policy to require disclosures before

formal balloting. Mr. Kelley’s testimony does not support

Infineon’s position that the disclosure duty arises before formal

consideration of a standard.

The other witness Infineon relies on for the position that

JEDEC imposes the duty before formal votes is Mr. Reese

Brown. Mr. Brown, a JEDEC consultant who edits the

standards and maintains the activity log for committee JC-42,

testified that the disclosure duty arises only if the “material

[being discussed] is described as part of a legitimate proposal

that’s aimed at a standard.” Giving Infineon the benefit of all

reasonable inferences, Mr. Brown’s testimony at most indicates

that the disclosure duty arises when proposals are aimed at a

particular standard. Infineon proffers no substantial evidence

that the disclosure duty applicable to one standard is triggered

34a

by discussion of proposals aimed at a different standard. As

discussed above, the disclosure inquiry here is claim-specific

and standard-specific. Substantial evidence does not support

Infineon’s position that the duty arises before legitimate

proposals are aimed at the standard (i.e., before work formally

begins on the standard). The most a reasonable jury could

conclude is that the disclosure duty is triggered when work

formally begins on a proposed standard.

The record does not show that JEDEC applied the disclosure

duty to a member’s plans or intentions. The patent policy

requires disclosure of certain “patents or pending patents”—not

disclosure of a member’s intentions to file or amend patent

applications. Indeed, Mr. Kenneth McGhee, secretary of

committee JC-42, Mr. John Kelly, and Mr. Meyer all testified

that the policy did not address a member’s intentions to file

future patent applications. Mr. Kelly further testified that

because antitrust laws discourage direct competitors from

discussing market-driving innovations, members “were not

supposed to reveal their future plans.” Further, Mr. Meyer

testified that the disclosure duty did not require members to

disclose plans to modify applications. Thus, the record

supports ony the conclusion that a member’s intentions to file

or amend applications do not fall within the scope of JEDEC’s

disclosure duty.”

In this case there is a staggering lack of defining details in

the ELA/JEDEC patent policy. When direct competitors

participate in an open standards committee, their work

necessitates a written patent policy with clear guidance on the

committee’s intellectual property position. A policy that does

not define clearly what, when, how, and to whom the members

9 Because JEDEC’s minutes are available to non-members and because

there are no confidentiality agreements between individual members, a

member’s revelations of future intentions to file an application likely would

jeopardize some foreign patent rights.

35a

must disclose does not provide a firm basis for the disclosure

duty necessary for a fraud verdict. Without a clear policy,

members form vaguely defined expectations as to what they

believe the policy requires—whether the policy in fat so

requires or not.'° JEDEC could have drafted a patent policy

with a broader disclosure duty. It could have drafted a policy

broad enough to capture a member’s failed attempts to mine a

disclosed specification for broader undisclosed claims. It could

have. It simply did not.

B. Breach of Duty to Disclose

This court next reviews the record for substantial evidence to

support the jury’s verdict that Rambus breached the JEDEC

duty during both SDRAM and DDR-SDRAM standardization.

Because the patents-in-suit were filed after Rambus left JEDEC

in 1996, Infineon relies on other applications Rambus had

pending before its 1996 withdrawal from JEDEC. The only

thing not disclosed to JEDEC was the claims in these

applications. As discussed above, Infineon had to show by

clear and convincing evidence that these undisclosed claims

reasonably read on or cover the particular standard under

consideration by JEDEC. In other words, Infineon had to

present clear and convincing evidence that there is a reasonable

expectation that the standard cannot be practiced without a

license under the undisclosed claims.

1. SDRAM Standard

In its opinion denying JMOL, the district court identified

several patents and applications that it said had claims directed

to the SDRAM standard. Specifically, the district court stated

that Rambus had pending claims “related to” five technologies:

-'° Just as lack of compliance with a well-defined patent policy would chill

participation in open standard-setting bodies, after-the-fact morphing of a

vague, loosely defined policy to capture actions not within the actual scope

of that policy likewise would chill participation in open standard-setting

bodies.

36a

two-bank designs, externally supplied reference voltage, PLLs,

programmable CAS latency, and programmable burst length.

The trial court stated that the ’898 application contained

claims related to two-bank design and burst length technology.

Further, the trial court identified patent application number

07/954,945 (°945 application), filed in September 1992, as

having claims directed toward programmable burst length. This

application issued in June 1994 as U.S. Patent No. 5,319,755

(°755 patent). The court also identified application numbers

07/847,651 (°651 application), filed in March 1992, and

07/847,961 (°961 application), filed in March 1992 but later

abandoned, as having claims directed toward CAS latency. The

°651 application issued in February 1997 as U.S. Patent No.

5,606,717. The court held that patent application 07/847,692

(692 application), filed in March 1992 but later abandoned,

had PLL claims. Finally, the court stated that application

number 07/847,532 (’532 application), filed in March 1992,

contained claims directed to an externally supplied reference

voltage. This application issued as U.S. Patent No. 5,473,575

(’575 patent) in December 1995.

This court has examined the claims of the cited applications

as well as the relevant portions of the SDRAM standard. Based

on this review, this court has determined that substantial

evidence does not support the finding that these applications

had claims that read on the SDRAM standard. The claims in

the 945 application, which issued as the ’755 patent, recited a

multiplexed bus and a device identifier feature, neither of which

are present in the SDRAM standard. For example, original

claim 151 of the ’945 application (issued claim 1) recited a bus

“for carrying control information, addresses, and the data.”

Original claim 151 further stated that the control information

provided for memory selection “without using any separate

memory select line.” Therefore, a manufacturer may practice

the SDRAM standard without a license under the claims of the

°755 patent. Similarly, claims in the °961 application were

37a

limited to the device identifier feature and claims in the 651

application required the multiplexed bus. Thus, licenses under

the claims of these applications or the ’717 patent would not be

necessary to practice the SDRAM standard.

To continue with this inquiry, the SDRAM standard does not

use PLL technology, making the ’692 application irrelevant.

The claims of the ’532 application, which the court identified as

directed to an externally supplied reference voltage, recited

voltage swings of less than one volt and did not read on the 3.3

volt voltage swing specified by the SDRAM standard.

Therefore, a manufacturer could practice the SDRAM standard

without a license under any claims of the ’532 application.

Substantial evidence does not support a finding that any of

these patents or applications therefore fell within Rambus’s

disclosure duty. Finally, the district court stated that the ’898

application had claims related to two-bank design and burst

length. This court has reviewed ali 209 claims in the ’898

application. There is no substantial evidence to support a

holding that the ’898 application had claims that reasonably

would be needed to practice the SDRAM standard. To the

extent that the district court said there was evidence showing

that Rambus had claims “relating to [two-bank and burst length

technology],” this statement is true only if “related to” is

construed more broadly than the duty as determined by this

court.

Moreover, specific to this record, Rambus alleges that

Infineon admitted at trial that the °755 and ’575 patents were

not related to the SDRAM standard. If Rambus is correct, this

assertion further shows that no SDRAM manufacturer

following the JEDEC standard would need a license under any

of Rambus’s undisclosed patents or applications.

Rambus asserts in its opening brief to this court that “no

builder of an SDRAM under the JEDEC standard would need a

license under any of the patents and applications relied on by

the [trial] court.” Rambus made this same argument in its

38a

renewed JMOL motion, stating that it did not have “a single

undisclosed patent claim, issued or pending, that any J EDEC

member would have been required to license (even arguably) to

practice the JEDEC standards at issue.” Despite Rambus’s

repeated assertions (e.g., in its renewed JMOL motion, its

opening brief to this court, and at panel hearing before this

court) that these claims were not necessary to practice the .

SDRAM standard, Infineon does not directly address Rambus’s

arguments. Rather than deny Rambus’s assertions, Infineon

states only that “Rambus’ argument is, at best, disingenuous,

since . .. documents amply demonstrate that Rambus believed

its pending patents covered the SDRAM standard.” In effect,

Infineon argues that Rambus’ mistaken belief that its claims

read on the SDRAM standard made its actions fraudulent. In

other words, Infineon would expand the EIA/JEDEC patent

policy to add a subjective belief component to the disclosure

duty.

The JEDEC policy, though vague, does not create a duty

premised on subjective beliefs. JEDEC’s disclosure duty erects

an objective standard. It does not depend on a member’s

subjective belief that its patents do or do not read on the

proposed standard. Otherwise the standard would exempt a

member from disclosure, if it truly, but unreasonably, believes

its claims do not cover the standard. As discussed above, the

JEDEC test in fact depends on whether claims reasonably might

read on the standard. A member’s subjective beliefs, hopes,

and desires are irrelevant. Hence, Rambus’s mistaken belief

that it had pending claims covering the standard does not

substitute for the proof required by the objective patent policy.

The record shows that Rambus’s claimed technology did not

fall within the JEDEC disclosure duty. The record shows at

most that Rambus wanted to obtain claims covering the

SDRAM standard. Some of that evidence does not put Rambus

in the best light. Rambus thought it could cover the SDRAM

standard and tried to do so while a member of an open

39a

standards-setting committee. While such actions impeach

Rambus’s business ethics, the record does not contain

substantial evidence that Rambus breached its duty under the

EIA/JEDEC policy.

If evidence of Rambus violating its duty to disclose exists,

Infineon did not place it in the record or provide it to this court.

Infineon bore the burden of proving the existence of a

disclosure duty and a breach of that duty by clear and

convincing evidence. Infineon did not meet that burden.

Infineon did not show any expectation that the patents and

applications identified by the district court covered the SDRAM

standard. '! Instead, the record shows that, despite Rambus’s

best efforts, Rambus did not obtain SDRAM claims. Because

there is no expectation that the undisclosed claims are necessary

to implement the standard, these claims did not trigger

Rambus’s disclosure duty. Rambus’s actions might constitute

fraud under a different patent policy; however, they do not

constitute fraud under this policy.

In sum, substantial evidence does not support the jury’s

verdict that Rambus breached its duties under the ELA/JEDEC

policy. Infineon did not show the first element of a Virginia

fraud action and therefore did not prove fraud associated with

the SDRAM standard. No reasonable jury could find otherwise.

The district court erred in denying JMOL of no fraud on the

SDRAM verdict. Because of these holdings, the new trial and

injunction issues are moot.

'' The dissent argues that Rambus bore the burden of showing that it “did

not actually have any pending claims that read on the standard” as a defense

to rebut Infineon’s fraud case. Whether Rambus had claims that reasonably

might read on the standard, however, goes to the question of whether

Rambus breached its disclosure duty. It is not a defense for Rambus to

prove, but an element of Infineon’s fraud case.

40a

2. DDR-SDRAM Standard

In granting JMOL of no fraud on the DDR-SDRAM verdict,

the disirict court held that substantial evidence did not support

the jury’s verdict because Rambus withdrew from JEDEC

before formal consideration of the DDR-SDRAM standard.

Rambus attended its last JEDEC meeting on December 6,

1995, and formally withdrew from JEDEC by a letter dated

June 17, 1996. JEDEC did not begin formal work on the DDR-

SDRAM standard until December 1996. JEDEC adopted and

published the DDR-SDRAM standard in 2000.

Infineon argues that because some technologies that

ultimately made their way into the DDR-SDRAM standard

were discussed before Rambus’s withdrawal, Rambus had a

duty to disclose patents and applications “related to” the DDR-

SDRAM standard. This court appreciates the building-block

nature of such standard-setting activities. As indicated above,

however, the disclosure duty, as defined by the EIA/JEDEC

policy, did not arise before legitimate proposals were directed to

and formal consideration began on the DDR-SDRAM standard.

None of the evidence relied on by Infineon (e.g., survey ballot,

technology proposals on the SDRAM standard) provides

substantial evidence for the implicit jury finding that Rambus

had patents or applications “related to” the DDR-SDRAM

standard that should have been disclosed before the standard

came under formal consideration.

Because Infineon did not show that Rambus had a duty to

disclose before the DDR-SDRAM standard-setting process

formally began, the district court properly granted JMOL of no

fraud in Rambus’s favor on the DDR-SDRAM verdict.

V. Attorney Fees

The district court held that Infineon was entitled to

$7,123,989.52 in attorney fees and expenses under 35 US.C.

§ 285 as a prevailing party in the patent infringement suit and

$2,382,782.87 in attorney fees for prevailing on its fraud

4la

counterclaim. Because the attorney fees under § 285 and

Virginia law were duplicative, the court awarded a total amount

of $7,123,989.52 to Infineon.

The trial court based its finding of exceptionality on:

Rambus’s claim construction and infringement positions, the

asserted fraud as inequitable conduct, and litigation misconduct.

The court expressly found that each of these grounds

individually supported finding this case exceptional. Because

the award was not based solely on litigation misconduct, the

court held that it was not necessary for Infineon to show a

relationship between the requested fees and the litigation

misconduct.

Given this court’s modifications to the appealed claim

construction and reversal of the SDRAM fraud verdict, neither

the claim construction nor the fraud provides a basis for the

§ 285 award. The sole remaining ground for awarding fees

under § 285 is the alleged litigation misconduct. The district

court found that Rambus’s misconduct included: failure to list

documents on its privilege log, false and misleading testimony

by Rambus executives, obfuscatory discovery responses,

refusing to admit facts not genuinely at issue (e.g., date of

Rambus’s JEDEC membership), and destroying documents

before suit but after sending cease and desist letters to Infineon.

Although arguing that the award of fees was improper under

§ 285, Rambus addresses only the claim construction and the

fraud grounds. In sum, Rambus does not contest the district

court’s holding of litigation misconduct.

Litigation misconduct and unprofessional behavior may

suffice, by themselves, to make a case exceptional under § 285,

Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d

1022, 1034, 61 USPQ2d 1470, 1479 (Fed. Cir. 2002). Indeed,

the district court found that Rambus’s misconduct alone

supported the determination that this case was exceptional.

Rambus has not shown that this holding is clearly erroneous. In

cases deemed exceptional only on the basis of litigation

42a

misconduct; however, the amount of the award must bear some

relation to the extent of the misconduct. Read Corp. v. Portec,

Inc., 970 F.2d 816, 831, 23 USPQ2d 1426, 1438 (Fed. Cir.

1992), abrogated in part on other grounds by Markman, 52

F.3d 967; see also Beckman Instruments, Inc. v. LKB Produkter

AB, 892 F.2d 1547, 1553-54, 13 USPQ2d 1301, 1306-07 (Fed.

Cir. 1989).

In sum, given this court’s holdings on claim construction and

fraud and the lack of apportionment between the award and the

misconduct, this court vacates the attorney fees award and

remands to the district court. On remand, the district court may

consider whether Infineon remains a prevailing party, and if so,

whether an award is warranted. If the court determines that an

award is warranted, it will have the opportunity to set the

amount of the award to redress the litigation misconduct.

Finally, because this court has reversed the SDRAM fraud

verdict, Virginia common law no longer forms a basis for the

award of fees. Thus, this court’s reversal of the SDRAM fraud

verdict compels a reversal of the $2,382,782.87 awarded to

Infineon on its fraud counterclaim.

CONCLUSION

Because the district court erred in its claim construction, this

court vacates the grant of JMOL of noninfringement and

remands for consideration under the revised claim construction.

Because substantial evidence does not support the jury’s verdict

that Rambus committed fraud associated with the SDRAM

standard, this court reverses the denial of JMOL on the

SDRAM fraud verdict. This court affirms the grant of JMOL

on the DDR-SDRAM fraud verdict because the district court

properly determined that substantial evidence did not support

the implicit jury finding that Rambus had a duty to disclose

patents and applications before formal consideration of a

standard. Finally, this court vacates and remands the attorney

fees award under § 285 and reverses the fee award under

43a

Virginia common law. These holdings render the injunction

and the new trial issues moot. Accordingly, this court vacates-

in-part, reverses-in-part, affirms-in-part, and remands to the

district court.

COSTS

Each party shall bear its own costs.

AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-

IN-PART, and REMANDED

44a

United States Court of Appeals for the Federal Circuit

01-1449, -1583, -1604, -1641, 02-1 174, -1192

RAMBUS INC.,

Plaintiff-Appellant,

INFINEON TECHNOLOGIES AG, INFINEON

TECHNOLOGIES NORTH AMERICA CORP., and INFINEON

TECHNOLOGIES HOLDING NORTH AMERICA INC.,

Defendants-Cross Appellants.

PROST, Circuit Judge, dissenting-in-part.

I respectfully dissent from section IV of the majority’s

opinion reversing the district court’s denial of Rambus’s motion

for judgment as a matter of law on the issue of fraud. In my

opinion, substantial evidence supports the jury’s verdict that

Rambus committed actual fraud under Virginia state law.

“The species of fraud are numberless, and like a chameleon,

fraud is always colored by the context from which it arises. For

that reason, it is usually for the jury to determine from the facts

of a specific case, whether a fraud was committed.” Hirschberg

y. G.W. Motors, Inc., 34 Va. Cir. 55, 60 (1994).

Fraud is seldom, if ever, provable by direct

testimony, but usually must be shown by

circumstances which are sufficient to convince fair-

minded men that they would not have occurred

without the existence of a fraudulent purpose and

iis i sl Sn ea a alias eee

45a

design. Fraud is a mixed question of law and fact

but, in most cases, is a jury question.

French v. Beville, 62 S.E.2d 883, 889 (Va. 1951); Hirschberg,

34 Va. Cir. at 60. In this case, the jury heard direct and

circumstantial evidence supporting the conclusion that Rambus

committed fraud in the context of its membership in the JEDEC

standard setting organization.

Rambus attended its first JEDEC meeting in December 1991

and became a member in February 1992. At the time Rambus

joined JEDEC, it had several pending patent applications

derived from the ’898 patent application, which has spawned

more than a thousand claims in dozens of continuation and

divisional applications. Rambus also had a specific plan for

using its pending patent applications against anyone using the

SDRAM standard. According to Rambus’s June 18, 1992,

business plan:

[W]e believe that Sync DRAMs infringe on some

claims in our filed patents; and that there are

additional claims we can file for our patents that

cover features of Sync DRAMs. Then we will be

in position to request patent licensing (fees and

royalties) from any manufacturer of Sync DRAMs.

Our action plan is to determine the exact claims

and file the additional claims by the end of Q3/92.

Then to advise Sync DRAM manufacturers in

Q4/92.

Rambus did not, in fact, inform anyone at JEDEC about its

pending patent applications by the end of 1992. Instead,

Rambus continued to attend JEDEC meetings for three more

years, watching the SDRAM standard evolve and then

amending its patent applications to try to cover features of the

standard. Richard Crisp, Rambus’s JEDEC representative,

testified at trial about how “Rambus was intentionally drafting

claims to intentionally cover the JEDEC SDRAMs”:

46a

Q. [Y]ou’ll agree as an initial matter, right, that

over the years ’92, °93, °94 and ’95 while you were

attending meetings, JEDEC meetings for Rambus,

at least during a portion of that time you were also

working with the Rambus patent iawyers to change

the claims in these applications? Right?

A. Yes.

Q. And you'll agree, won't you, sir, that at least on

some occasions you went to a JEDEC meeting and

then met with the Rambus patent lawyer? Right?

A. Yes. That’s right.

Q. And you'll agree, won't you, that in the

meetings you had with Rambus patent lawyers after

a JEDEC meeting, that one source of the

information for changing the Rambus patent claims

was what you had seen at JEDEC with respect to

the SDRAM standardization? Right?

A. Yes. That’s right.

*k*k

Q. And what you did in those meetings was work

on new claims for the Rambus pending patent

applications, and your intent was to make them

broad enough that they would cover an SDRAM

using the features that you had seen at the prior

meetings. Isn’t that a fact?

A. In some cases that was true.

The record is replete with additional and specific instances of

Rambus employees attending JEDEC meetings, taking notes of

what was discussed, identifying instances where Rambus

already had claims covering what was discussed, and then

seeking claims to cover what they learned at the JEDEC

meetings. Yet Rambus “did not tell the people at JEDEC that

what they were proposing for standardization infringed [its]

47a

patents.” Instead, after considering whether to “walk into the

next JEDEC meeting and simply provide a list of patent

numbers which have issued,” Rambus concluded that it was

better to remain silent because “we may not want to make it

easy for all to figure out what we have, especially if nothing

looks really strong.” Rambus was even advised by its patent

attorneys “to stop attending JEDEC” and that “if you go to the

JEDEC meetings and stay silent and don’t do anything else, you

still have a risk that your patents will be unenforceable if you let

the standard go forward and you don’t tell them you have

patents.” Rambus was explicitly warned in 1992 that “you

cannot mislead JEDEC into thinking that Rambus will not

enforce its patent.”

In 1995, members of JEDEC suspected that Rambus may

have intellectual property rights related to the SDRAM

standard. Richard Crisp “was asked [at a JEDEC meeting] to

make a comment about the Rambus intellectual property

position as it may relate to [a particular] proposal.” Rambus

responded in writing on September 11, 1995, that “[a]t this

time, Rambus elects to not make a specific comment on our

intellectual property position.” Rambus attended its last

JEDEC meeting in December 1995, and on June 17, 1996,

Rambus formally withdrew from JEDEC. In its farewell letter

to JEDEC, Mr. Crisp stated: “Recently at JEDEC meetings the

subject of Rambus patents has been raised. Rambus plans to

continue to license its proprietary technology on terms that are

consistent with the business plan of Rambus, and those terms

may not be consistent with the terms set by standards bodies,

including JEDEC.” Even after withdrawing from JEDEC,

Rambus continued to furtively pursue its scheme to patent the

evolving SDRAM standard by receiving reports from

undisclosed attendees at JEDEC meetings named “Deep

Throat” and “Secret Squirrel.”

Rambus also tried to destroy the evidence of its plan to draft

patent claims to cover the SDRAM standard. Rambus

48a

implemented a “document retention policy” in 1998 in part “for

the purpose of getting nid of documents that might be harmful

in litigation.” It also attempted to prevent discovery of relevant

documents by failing to list them on its privilege log in this

case. Having believed that they had destroyed or disguised the

documents evidencing their plan to patent the SDRAM

standard, Rambus’s witnesses initially provided “false or

misleading testimony.” Rambus, Inc. v. Infineon Techs. AG,

155 F. Supp. 2d 668, 681 (E.D. Va. 2001). The false testimony

was exposed after the court pierced the attorney-client privilege,

compelling Rambus to produce previously concealed

documents. Jd. Once the Rambus witnesses were “confronted

with documents obtained after the piercing of the attorney-client

privilege” and “prodded by reference to the belatedly obtained

documents,” they were compelled to admit that they had in fact

participated in the prosecution of Rambus’s patent applications

based on information learned at JEDEC mee .ings. Id.

The jury found that Rambus’s thus exposed scheme

amounted to fraud under Virginia state law. In Virginia, “(t]he

elements of actual fraud are: (1) a false representation, (2) ofa

material fact, (3) made intentionally and knowingly, (4) with

intent to mislead, (5) reliance by the party misled, and

(6) resulting damage to the party misled.” Spence v. Griffin,

372 S.E.2d 595, 598 (Va. 1988). Fraud may arise from

“deliberate concealment or a relationship, contractual or

otherwise, that would give rise to a duty to disclose.” Devansky

v. Dryvit Sys., Inc., 52 Va. Cir. 359, 361 (2000). “For purposes

of an action for fraud, concealment, whether accomplished by

word or conduct, may be the equivalent of a false

representation, because concealment always involves deliberate

nondisclosure designed to prevent another from learning the

truth.” Spence, 372 S.E.2d at 599; see also Norris v. Mitchell,

495 S.E.2d 809, 812 (Va. 1998). When fraud is based on a

violation of a duty to disclose, the scope of that duty “depends

upon the circumstances of each case and the relationship

49a

between the parties.” Hirschberg, 34 Va. Cir. at 57. The duty

can arise in many ways:

The principle is basic in the law of fraud, as it

relates to nondisclosure, that a charge of fraud is

maintainabie where a party who knows material

facts is under a duty, under the circumstances, to

speak and disclose his information, but remains

silent. Situations evoking the duty of disclosure

may arise in various ways in different cases.

Generally speaking, however, in the conduct of

various transactions between persons involving

business dealings, commercial negotiations, or

other relationships relating to property, contracts,

and miscellaneous rights, there are times and

occasions when the law imposes upon a party a

duty to speak rather than remain silent in respect of

certain facts within his knowledge, and thus to

disclose information, in order that the party with

whom he is dealing may be placed on an equal

footing with him. In such a case a failure to speak

amounts to a suppression of a fact which should

have been disclosed, and is a fraud. In such

circumstances, a failure to state a fact is actually

equivalent to fraudulent concealment and amounts

to fraud just as much as an affirmative falsehood.

Among other ways, the obligation to communicate

facts may arise from the fact that one of the parties

has superior knowledge or means of knowledge;

from the fact that confidential relations exist

between them; from the fact that a party does

something or says something which, for want of the

disclosure, is false and deceptive; from the fact that

he is placed or places himself in a position where

his silence will convey a false impression; or from

the fact that a statement or representation has been

50a

made in the bona fide belief that it is true, and

before it is acted on, the party who has made it

discovers that it is untrue.

Id. at 57-58 (quoting 37 Am. Jur. 2d, Fraud and Deceit, § 146).

Applying this Virginia state law, we must determine whether

Rambus has shown on appeal that it is entitled to judgment as a

matter of law that it did not commit actual fraud as found by the

jury. Judgment as a matter of law is appropriate when “a party

has been fully heard on an issue and there is no legally

sufficient evidentiary basis for a reasonable jury to find for that

party on that issue.” Fed. R. Civ. P. 50(a)(1). As the appellant,

Rambus “must show that the jury's findings, presumed or

express, are not supported by substantial evidence or, if they

were, that the legal conclusion(s) implied from the jury's verdict

cannot in law be supported by those findings.” Perkin-Elmer

Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ

669, 673 (Fed. Cir. 1984). Because the jury returned a general

verdict on the ultimate legal question of whether Rambus

committed fraud, “the law presumes the existence of findings

necessary to support the verdict the jury reached.” Id. at 893,

221 USPQ at 673. There are two issues underlying whether

Rambus is entitled to judgment as a matter of law: the scope of

Rambus’s duty to disclose and whether Rambus violated this

duty.

I.

According to the majority, “a reasonable jury could only find

that the duty to disclose a patent or application arises when a

license under its claims reasonably might be required to practice

the standard.” The majority then proceeds to apply this

standard by determining de novo whether Rambus had any

pending or issued claims while it was a member of JEDEC that

read on the final JEDEC standard.

I believe that the evidence in this case supports a broader

duty than the one applied by the majority. According to the

Sla

October 1993 JEDEC Manual of Organization and Procedure,

section 9.3.1. titled “Committee Responsibility Concerning

Intellectual Property”:

The Chairperson of any JEDEC committee,

subcommittee, or working group must call. to the

attention of all those present the requirements

contained in the EIA Legal Guides, and call

attention to the obligation of all participants to

inform the meeting of any knowledge they may

have of any patents, or pending patents, that might

be involved in the work they are undertaking

(emphasis added).

In my opinion, this portion of the manual clearly states the

duty of disclosure required by all members of JEDEC, which is

different from the duty applied by the majority in at least two

respects. First, the statement “might be involved in” the

standard is much broader than requiring disclosure of only

claims reading on the standard. Second, the majority applies

the duty to the final standard adopted by JEDEC, whereas the

manual requires disclosure based on the “work they are

undertaking,” which is much more expansive than the final,

completed standard resulting from the work undertaken. The

majority’s comparison of pending claims to the final standard

does not take into account the possibility that, during the course

of its work, the committee considers, debates, rejects and

amends various proposals as the standard evolves.

' - trial, the parties disputed whether the duty to disclose pending

applications existed prior to October 1993, when JEDEC revised its manual

to explicitly require disclosure of both patents and pending applications.

Witnesses testified at trial that the duty required disclosure of patent

applications prior to October 1993. I therefore focus on the issue of whether

the duty to disclose was limited to claims reading on the standard, as

discussed by the majority opinion, or to patents and applications that might

be involved in the work on a standard.

52a

Documents and witness testimony show that the members of

JEDEC understood the JEDEC policy to require that its

membcrs disclose patents and pending patent applications that

might be involved in the standard setting process. For example,

during the development of the SDRAM standard, the committee

discussed and then voted on many different features. The

ballots for these votes stated that “[i]f anyone receiving this

ballot is aware of patents involving this ballot, please alert the

Committee accordingly during your voting response” (emphasis

added). One witness interpreted the language on the voting

ballot as requiring disclosure of “intellectual property that is

related to that ballot or to the content of that ballot” (emphasis

added). ' Similarly, the committee’s stated “patent tracking”

procedure included “review[ing] items identified as of potential

patent interest at each meeting” (emphasis added). In addition,

the minutes from the December 6, 1995, committee meeting

state that “MOSAID noted that they had a pending patent on

DLL and noted that it was a particular implementation and may

not be required to use the standard.” Gordon Kelley, the

committee chairman and IBM’s JEDEC representative, testified

about Rambus’s particular kind of conduct and whether it

violated JEDEC’s policies:

Q. As the chairman at least during some period of

time of some of the relevant JEDEC committees

that we’ve talked about here today, did you think it

was—or did you have any understanding as to

whether it was acceptable practice for a JEDEC

member to attend JEDEC meetings and then write

claims to cover proposals in the JEDEC standards

without disclosing those—those patent applications

or patents that contain those claims?

[objection]

A. So, for the part of your question with regard to

write claims, are you suggesting that someone

attended the JEDEC meetings and then subsequent

ial

:

Ry

=

ee

=.

Ps

&

53a

to the JEDEC meeting went and wrote claims that

he or she learned at the JEDEC meeting? Is that

what you mean?

Q. Exactly, or modified existing patents to cover

what was proposed at the JEDEC meetings?

[objection]

Q. And my question is did you have—did you

have any understanding at the time as a JEDEC

participant and also as the chairman whether that

was acceptable behavior or not?

[objection]

A. This letter in January of 1994 to Buf Slay I

think documents my position on that, that that

cannot be allowed. It’s in complete violation of

JEDEC requirements of openness and fairness with

regard to notification of patents and pending

patents. }

In addition, John Kelly, EIA’s general counsel and the person

responsible for implementing the EIA/JEDEC patent policy,

testified that the JEDEC patent policy “required the early

disclosure of patents and patent applications that are or may be

required to comply with the standard” (emphasis added).

Willibald Meyer, Infineon’s JEDEC représentative, likewise

testified to a disclosure duty that was not limited to claims that

read on the standard:

The question is, sir, what was your understanding

of the JEDEC patent policy in July, June and July

1992?

THE WITNESS: The understanding was that the

holders of a patent or an application should make

the committee aware in the case that they were

aware of that, the application of the patent which

they held or had filed was in relationship to the

54a

work in JEDEC that we were doing (emphasis

added).

Evidence also shows that even Rambus understood that it

was required to disclose something more than only those claims

reading on the SDRAM standard. Rambus timely disclosed

only one of its patents to JEDEC: the ’703 patent. However,

Rambus admitted that the ’703 patent “did not relate to

JEDEC’s SDRAM work but [was] directed to the

- implementation of Rambus’[s] RDRAM products.” Rambus’s

compulsion to disclose this one patent is evidence that it

broadly interpreted its duty of disclosure (although at the time,

Rambus allegedly thought its duty was limited to issued patents,

not pending applications).”

Certainly the majority opinion has identified testimony that

can be interpreted to support its framing of the duty to disclose.

However, the majority has applied the duty as being limited to

the issue of whether claims read on the final standard, which is

not consistent with the broader duty stated in the JEDEC

manual or the other evidence identified above. Having

identified substantial evidence supporting a sufficiently broad

duty of disclosure to support the jury’s verdict, our job is done.

The applicable standard of review does not permit us to go

further, reweighing the evidence and determining de novo that

the duty should be defined or applied in a different manner. See -

Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182,

1192-93, 48 USPQ2d 1001, 1010 (Fed. Cir. 1998); Hybritech

2 The majority opinion states that to the extent the duty to disclose may

encompass situations where an application describes but does not claim

technologies under discussion at JEDEC, Rambus satisfied that duty by

disclosing the ’703 patent. I do not necessarily agree. Rambus’s disclosure

of a patent with clearly irrelevant claims does not absolve it of disclosing

other applications with the same disclosure that might have relevant claims.

I also note that there is evidence that Rambus’s disclosure of the ’703 patent

was deceptive because JEDEC members were led to believe that Rambus |

had nothing else of relevance to disclose.

55a

Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375, 231

USPQ 81, 87 (Fed. Cir. 1986). I respectfully submit that the

evidence described above compels us to conclude that there was

sufficient evidence for the jury to find that Rambus had a duty

to disclose pending and issued patents that might be involved in

the development of the SDRAM standard, as stated in section

9.3.1 of the JEDEC manual.

The majority rejects the plain meaning of this section of the

JEDEC manual for two reasons. First, the majority interprets

Appendix E, not section 9.3.1, as giving rise to the duty to

disclose. Second, according to the majority, a plain reading of

section 9.3.1 of the manual would “render the JEDEC

disclosure duty unbounded. Under such an amorphous duty,

any patent or application having a vague relationship to the

standard would have to be disclosed.” I disagree with each of

these reasons for not following the duty of disclosure stated in

section 9.3.1 of the JEDEC manual.

With respect to the majority’s first reason for rejecting the

plain language of the manual, the majority relies on various

testimony about the JEDEC “patent policy” to arrive at the

conclusion that the members of JEDEC “treated the language of

Appendix E as imposing a disclosure duty.” This conclusion is

contrary to testimony at trial showing that members of JEDEC

understood Appendix E to describe the procedures to be applied

once JEDEC has learned of a relevant patent, which is different

from the requirement for disclosing relevant patents and patent

applications. For example, Reese Brown testified that the

“patent policy” has two distinct components:

Q.. Can you tell me what the patent policy is?

A. Well, there are two parts. One that says that

whenever material comes up in the committee for

discussion and for voting, any members who are

aware of any patent position or potential patent

positions on the material should and are obligated

56a

to reveal that to the committee at that time... .

The other portion of the policy has to do with if a

specific patent material has been—or patent

positions have been identified in connection with a

proposal that is in the process of being approved

for a ballot of standardization ....

John Kelly’s testimony likewise distinguished between the

disclosure requirement and the requirement for obtaining

“assurances” from a patentee once JEDEC has learned of a

relevant patent. Gordon Kelley had a similar view:

Q. Between 1991 and 1996 what do you believe

that patent policy in JEDEC to be?

A. The stated policy was that, first of all, all

member companies would notify the committee of

patents that they were aware of that applied to a

proposed standard. And another requirement was

that they would agree that their licensing practice to

all other member companies of JEDEC would be

all companies would be licensed, excepting none,

and that the license would be either free or offered

at reasonable rates, without exception.

Later in his testimony, Mr. Kelley outright rejected the theory

that the disclosure duty comes from the language describing

what is to happen when JEDEC learns of a relevant patent:

Q. About one line down at the end of the sentence

it starts with the word if, if the committee

determines that the standard requires the use of

patented items, then the committee chairperson

must receive a written assurance, and it continues.

A. Yes.

Q. Sir, does that language accurately reflect your

understanding of when a patent needed to be

disclosed?

4

ie

iy

;

57a

A. No. The language that I’m seeing here refers to

a patent issue that has been raised in the

committee. . . .

Thus, according to the understanding of these witnesses, the

language of Appendix E is only one part of the “patent

policy”—the part that describes the appropriate procedures that

the committee must apply once a disclosure has been made.

Appendix E does not describe the second part of the patént

policy: the obligation to disclose relevant patents and patent

applications, as stated in section 9.3.1 of the JEDEC manual.

Moreover, the testimony quoted above from Reese Brown

specifically refers to the duty to disclose when voting. The

voting ballot parrots the language of section 9.3.1, requiring

members to disclose patents and applications “involving th[e]

ballot.” The ballot therefore confirms the separate duty of

disclosure as stated in section 9.3.1, not Appendix E.

The majority also implies that the members of JEDEC do not

use their own manual to learn about the rules they must follow,

including the duty of disclosure. This conclusion, too, is not

supported by the testimony at trial. Rambus’s Mr. Crisp

described the manual as what “was used to tell people what the

rules were.” In addition, both Mr. Kelly and Mr. Brown

testified that they learned about the rules of membership from

the JEDEC manual. Mr. Kelly testified as follows:

Q. So in the time period of 1991 through

September of 1993, if we wanted to know the rules

in JEDEC, we would look to [manual] JEP-21-H;

is that right?

A. Yes, sir.... The manual contains—without

reference to this text, I can tell you that the manual

contains a reference to our patent policy EIA

JEDEC patent policy, which required the early

disclosure of patents and patent applications that

are or may be required to comply with the standard.

58a

kkk —

Q. In that manual, under 9.3.1, Committee

Responsibility Concerning Intellectual Property,

were the members of JEDEC told that the

chairperson of any JEDEC committee,

subcommittee or working group must call attention

to the obligations of all participants to inform the

meeting of any knowledge they may have of any

patents or pending patents that might be involved

in the work they are undertaking?

A. Yes, sir, it was.

Mr. Brown confirmed that the JEDEC manual is the

appropriate place to look for the JEDEC patent policy. Shortly

before the testimony quoted by the majority, Mr. Brown

testified as follows: :

Q. Okay. Now, is a patent policy in writing so

other people can know what it is?

A. I believe that it is in writing.

Q. Where would we find it?

A. Probably in a document called “JEDEC”— q

something—‘“21” followed by a letter, which is a

council-created documents which is a set of rules.”

In spite of this testimony, the majority concludes that members

of JEDEC only learned about the disclosure duty from the

viewgraphs displayed during meetings, and that there was no

evidence that anything other than Appendix E was displayed at

those meetings. Richard Crisp testified to the contrary:

Q. You’re aware, ar2n’t you, sir, that as of October

1993, JEDEC published a new manual for the

memory committee, right?

> The particular JEDEC manual referred to herein is manual JEP-21-I,

“JEDEC Manual of Organization and Procedure.”

SSR EB

59a

A. Yes, I know that now.

Q. And you know that in the manual, it specifically

States that patent applications have to be disclosed

as part of the JEDEC application, don’t you?

A. Yes, I do know that.

Q. And during the time that you were going to

these meetings, including in 1992 and in 1993, that

new language was put up on the overhead projector

at the meetings and dicussed by Jim Townsend,

wasn’t it?

A. I think it was.

**k*

Q. You were aware that the chairman of the

committee put up on the overhead projector at the

meetings the new language of the policy which

specifically required the disclosure of patent

applications, right?

[objection]

A. Yes.

Based on my reading of the record, I therefore believe that

there was more than substantial evidence for the jury to have

concluded that the disclosure duty is stated in section 9.3.1. of

the JEDEC manual, not Appendix E, and that the members of

JEDEC knew about this duty from the manual, voting ballots,

and meetings.

The majority also rejects the language of section 9.3.1 as

being overly broad and ambiguous. However, JEDEC was free

to formulate whatever duty it desired and it is not this court’s

job to rewrite or reinterpret the duty on the basis that it is

unbounded (which I do not think it is). JEDEC clearly knows

how to draft rules and procedures with specificity when it so

chooses. This point is amply demonstrated by the language of

60a

Appendix E and other sections of the manual describing in

detail the rules that must be followed once JEDEC learns of a

relevant patent or patent application. The fact that JEDEC

chose not to use the same kind of language when stating the

duty of disclosure indicates that it did not desire to have a bright

line rule, such as the one the majority has now imposed upon it.

Instead of creating a duty that it believes JEDEC should have

adopted, the court need only determine that there was sufficient

evidence of what the duty is such that a jury could apply the

duty to the conduct at issue and determine whether the duty was

violated. In my opinion, there was sufficient evidence for the

jury to have concluded that the duty to disclose was stated by

the plain text of section 9.3.1 of the JEDEC manual, requiring

the disclosure of patents and pending applications that might be

involved in the work of the committee.

II.

Given the duty to disclose as stated in section 9.3.1 of the

JEDEC manual, the next issue is whether substantial evidence

supports a finding that Rambus failed to disclose pending and

issued patents that might be involved in the development of the

SDRAM standard. In my opinion, there is an abundance of

such evidence.

The jury heard repeated admissions from Rambus that it had

pending claims that not only related to the developing SDRAM

standard, but even covered particular features of the standard.*

For example, Rambus’s business plan stated that “Sync

DRAMs infringe claims in Rambus’ {s] filed patents and other

claims that Rambus will file in updates later in 1992.” Ina

March 14, 1995, email, Richard Crisp wrote from a JEDEC

meeting that “[t]aken along with the fact that they rely on an

externally bussed reference, this should be anticipated by some

Thus, even under the duty to disclose as defined and applied by the

majority, I believe that substantial evidence shows that Rambus violated that

duty.

we pi POP Fate eR

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6la

of our claims. I would say that the proposal may well infringe

our work.” Mr. Crisp wrote many emails during JEDEC

meetings noting instances where he believed Rambus had

pending claims that covered features of the evolving standard.

In one such email, he wrote: “Note that many of the SDRAMs

use an externally supplied reference voltage in the input buffers.

I believe we have a claim we added to cover this configuration.”

Later in that same email, he said:

Suggested that one NC be used for a Vref for a

high performance interface. (again we need to

check claims about “DRAM with input receivers

using an externally supplied reference voltage”).

We may be able to slow down or stop (or at least

collect from) all of the CTT, GTL, and HSTL

devices if this claim is allowed (Allen, I believe

this is one of the claims you, Lester, Tracy and-I

wrote up in late °91, right?)

A 1993 document reporting on the status of drafting new

Claims derived from the ’898 application stated: “(1) Writable

configuration register permitting programmable CAS latency{.]

This claim has been written up and filed. This is directed

against SDRAMs. .. . (4) DRAM with multiple open rows... .

This is directed against SDRAMs.” At trial, Richard Crisp

testified at length about a particular instance of a claim drafted

to read on a low voltage swing feature of the SDRAM standard

proposed at one of the JEDEC meetings:

Q. So when we look at this here, we see Texas

Instruments made a presentation for a synchronous

DRAM 16 megabit, right?

A. Yes.

Q. If you look at one of [the] features they had on

their 16 megabit presentation, it talks about they

wanted a low voltage swing. Do you see that?

A. Yes.

62a

x***

Q. And then a few days later, Jim Gasbarro fa

Rambus engineer] is meeting with the Rambus

patent lawyer talking about low swing signals on a

DRAM. Do you see that?

A. Yes.

zx**

Q. Then in February of 1992, the lawyer sends you

the draft amendment to the claims, correct? If you

want to refresh your recollection, you can look at

Defendants’ Trial Exhibit 1531. You'll see it’s a

February 19th, 1992, letter... . And he refers to

the enclosed revised draft preliminary amendment.

Do you see that?

A. Yes, I do.

*x**e*

Q. So if you look at the preliminary amendment [at

Plaintiff s Trial Exhibit 26], this is the final version

that was filed on March Sth, 1992. Do you see

that?

A. Yes.

Q. And if you look at the claims that were being

added on March Sth, 1992, particularly claim 151,

and if you look at the B element, it talks about low

voltage swing signals, right?

A. Yes, it does.

Crisp also testified that in May of 1992, he met with

Rambus’s patent attorney to “add claims to our patent

application broad enough to cover the SDRAM if the SDRAM

uses mode register and programmable CAS latency.” In

perhaps the clearest admission of the case, Crisp testified that

the features of double edge transfer, mode register,

63a

programmable CAS latency, programmable burst length and

PLL, DLL “were discussed there [at the JEDEC committee

meetings] in some form or another, and we certainly had patent

applications that covered aspects of those, of those

technologies.”

In my opinion, this evidence, which is just a portion of what

Infineon presented at trial, is more than sufficient to support the

finding that Rambus did in fact have pending patent claims

related to, and even reading on, aspects of the SDRAM

standard.’ The majority, however, requires a different kind of

proof than the clear admissions Rambus made through witness

testimony and internal documents. By limiting the application

of the duty to disclose to the issue of whether pending claims

read on the final standard, the majority requires an element-by-

element comparison of the limitations of a pending claim to the

text of the SDRAM standard.° Infineon did not call an expert

> The majority discounts Infineon’s evidérice that Rambus believed it had

pending claims covering the standard. According to the majority, the

JEDEC standard does not have a subjective belief component and a

“member’s subjective beliefs, hopes, and desires are irrelevant.” |

respectfully disagree. Rambus’s statements that it believed it had pending

claims covering the SDRAM standard is evidence that Rambus did in fact

have claims covering the SDRAM standard. Moreover, Rambus’s belief is a

critical component of the overall fraud action, which includes the component

of an intent to mislead. Rambus’s beliefs about the scope of its duty are also

relevant to what that duty actually is, just as the testimony cited in this

dissent and in the majority opinion—where witnesses explain what they

believe the duty to mean—is evidence of what the duty actually is.

The majority states that its disclosure duty does not “require a formal

infringement analysis,” even though the majority then proceeds to determine

whether the pending claims read on the standard. While determining

whether there is a “reasonable expectation that a license is needed to

implement the standard” allows some degree of latitude beyond a rote

comparison of pending claims to the relevant standard, the majority’s

application of its standard is narrower than the duty it has defined. Its

application of the duty is confined to consideration of whether or not

pending claims read on the final standard.

In my opinion, the evidence I have identified in this opinion is sufficient to

64a

witness at trial to make such a comparison; nor does it appear

that Rambus presented a witness to prove the negative—that

none of its pending claims ever read on any feature of the

SDRAM standard discussed at the JEDEC meetings.

The district court, however, did identify six instances where

Rambus had pending claims related to the SDRAM standard.

See Rambus, Inc. v. Infineon Techs. AG, 164 F. Supp. 2d 743,

752-53 (E.D. Va. 2001). Rambus argues on appeal, and the

majority accepts the argument, that none of these pending

claims actually reads on the SDRAM standard. The majority

has gone so far as to make a de novo comparison of the pending

claims to the JEDEC standard in order to conclude that no

claims could possibly read on the standard. I do not believe that

we, as an appellate court of review, are in a position to make

this finding because neither party appears to have given the jury

the necessary evidence to make such an analysis in the first

instance. See Fromson v. W. Litho Plate & Supply Co., 853

F.2d 1568, 1570, 7 USPQ2d 1606, 1608 (Fed. Cir. 1988)

“Obviously, a finding not made cannot be reviewed{.]”).

Rambus points to no trial testimony supporting the argument it

now makes on appeal. See Shell Petroleum, Inc. v. United

States, 182 F.3d 212, 218 n.13 (3d Cir. 1999) (“The appellant is

required to provide a record to support the claims it makes on

appeal.”). Certainly it was Infineon’s burden to prove up fraud

by clear and convincing evidence, and I believe Infineon did so

based in part on Rambus’s admissions; | do not believe Infineon

was limited to proving its case by a limitation-by-limitation

claim analysis. To the extent Rambus wanted to rebut

Infineon’s fraud case on the theory that Rambus did not actually

show that a competitor might reasonably expect that it should obtain a

license from Rambus, regardless of whether or not any claim reads on the

standard. For example, a reasonable competitor could conclude that Rambus

could obtain claims reading on the standard or that Rambus had a plausible

claim construction or doctrine of equivalents theory that is not readily

apparent from a simple reading of the claims.

65a

have any pending claims that read on the standard, then it was

incumbent on Rambus to prove this point at trial. It does not

appear from the record before us that Rambus did so.

In addition, Rambus’s briefing on appeal only addresses five

of the six instances of relevant pending claims identified by the

district court. Rambus makes no challenge to the district

court’s conclusion that “the evidence shows that, when JEDEC

discussed adding a 2-bank design and burst-length technology

to the SDRAM standard, Rambus had pending claims relating

to those technologies pending in its first patent application, the

"898 application.” Rambus, 164 F. Supp. 2d at 752. Absent

any argument to the contrary from Rambus, I presume that the

district court is correct, notwithstanding the majority’s

independent conclusion based on its review of the pending

claims, which in my opinion is beyond the scope of our review.

See Fromson, 853 F.2d at 1570, 7 USPQ2d at 1608 (“This is

the eighty-fourth case in which the court has been forced, ad

nauseum, to remind counsel that it is a court of review, i.e., that

it will not find the facts de novo, that it is not a place for

counsel to retry their cases, [and] that its judges do not

participate as advocates to fill gaps left by counsel at

trial... .”); Atl. Thermoplastics Co. v. Faytex Corp., 5 F.3d

1477, 1479, 28 USPQ2d 1343, 1345 (Fed. Cir. 1993) (“Fact-

finding by the appellate court is simply not permitted.”).

Moreover, the majority concedes that the ’898 application has

claims relating to two-bank and burst length technology so long

as “related to” is “construed more broadly than the duty” as

defined by the majority.

Thus, in my opinion, substantial evidence supports a finding

that Rambus failed to disclose pending patent applications that

might be involved in the SDRAM standard. Rambus made

numerous, unambiguous admissions to that effect and failed to

prove anything to the contrary at trial.

66a

CONCLUSION

This case is not an easy one, and I appreciate the majority’s

efforts to find a bright line rule for what constitutes fraud in the

context of standard setting organizations. But the majority’s

application of its rule, that only claims reading on the standard

need be disclosed, is not the JEDEC standard. JEDEC’s

disclosure policy required its members to disclose patents and

pending applications that “might be involved in the work they

are undertaking.” While the majority rejected this standard as

unbounded, nothing required JEDEC to formulate its policy

with precision and clarity. And, while the majority may believe

that JEDEC’s “might be involved” standard is_ impossibly

amorphous, the majority’s restatement of the JEDEC policy

might prove impossibly complex. The majority’s application of

its rule arguably requires a Markman claim construction,

application of the doctrine of equivalents, a Festo analysis, and

perhaps even a Johnson & Johnston analysis before anyone can

say for sure whether a claim reads on a standard. Asa result, an

action for fraud will become more a federal patent case than a

case arising under state law.

In any event, as I read the record, there is more than

sufficient evidence upon which the jury could have concluded

that Rambus had a duty to disclose pending and issued patents

that might be involved in JEDEC’s development of the

SDRAM standard and that Rambus violated that duty. I

respectfully submit that the jury’s verdict should stand and I

would therefore affirm the district court’s denial of Rambus’s

motion for judgment as a matter of law.

67a

UNITED STATES COURT OF APPEALS FOR

THE FEDERAL CIRCUIT

01-1449, -1583, -1604, -1641, 02-1174, -1192

RAMBUS INC.,

“Plaintiff-Appellant,

V.

INFINEON TECHNOLOGIES AG,

INFINEON TECHNOLOGIES NORTH AMERICA CORP.,

and INFINEON TECHNOLOGIES HOLDING NORTH

AMERICA INC., ~

Defendants-Cross Appellants.

ORDER

68a

United States Court of Appeals

for the Federal Circuit

ORDER

A combined petition for panel rehearing and for rehearing en

banc having been filed by the CROSS- APPELLANTS,’ and a

response thereto having been invited by the court and filed by

the APPELLANT, and the petition for rehearing having been

referred to the panel that heard the appeal, and thereafter the

petition for rehearing en banc and response having been

referred to the circuit judges who are in regular active service,

UPON CONSIDERATION THEREOF, it is

ORDERED that the petition for panel rehearing be, and the

same hereby is, DENIED and it is further

ORDERED that the petition for rehearing en banc be, and the

same hereby is, DENIED.

The mandate of the court will issue on April 11, 2003.

FOR THE COURT,

Dated: April 4, 2003

Jan Horbaly

cc: William K.West,Jr. —- | Clerk

Kenneth W. Starr

Jay I. Alexander, Robert L. Harmon

Andrew Updegrove, Don W. Martens

RAMBUS INC V INFINEON TECHNOLOGIES, 01-1449, -

1583, -1604, -1641, 02-1174, -1192 (DCT - 00-CV-524)

' N.B. Four amicus/amici curiae briefs were filed (see order of March 7,

2003).

4

is

69a

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

Richmond Division

RAMBUS, INC.,

Plaintiff,

-* Civil Action No. 3:00cv524

INFINEON TECHNOLOGIES AG

and INFINEON TECHNOLOGIES

NORTH AMERICA CORP.

Defendants.

MEMORANDUM OPINION

This action involves four patents and fifty-seven claims. All

four patents in suit descend from a common progenitor, the

specification of which controls the patents in suit. The parties

are in agreement that construction of the claims here at issue is

confined to construction of eight disputed terms (“bus,” “block

size,” “read request,” “write request,” “transaction request”

“first external clock signal,” “second external clock signal” and

“integrated circuit device”) each of which, with but one

exception,’ has the same meaning in each claim in issue in all

four patents in suit. Hence, the agreed upon scope of claim

construction is to construe the eight terms.

The parties have briefed the issues, have presented evidence

at a hearing conducted pursuant to the requirements of

' The parties agree that all the terms have the same meaning throughout with

the exception of “integrated circuit device.” The Defendants contend that

this term has a different meaning in one patent due to representations made

to the Patent and Trademark Office during the prosecution of that patent.

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70a

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996),

and have argued orally. Against this background, the eight

disputed terms, and hence the claims, are accorded the

constructions set forth below.

BACKGROUND

In 1990, the co-founders of Rambus, Inc. (“Rambus”), Mark

Horowitz and Paul Michael Farmwald, filed a patent

application describing numerous inventions designed to

increase the operating speed of memory devices in computers.

The Patent Office determined that this application, U.S. Patent

App. No. 07/510,898 (“the °898 application”), actually

contained 11 independent and distinct inventions, required

Rambus to select only one of those inventions to pursue in the

°898 application, and allowed Rambus to file divisional

applications on the remaining inventions described in the *898

application. Rambus did precisely that, electing to pursue one

invention within the ’898 application and thereafter filing ten

more applications in the next six_months. Subsequently,

continuation and divisional applications are filed on these ten

applications; and thus, to date, Rambus has been granted 31

patents based on the 1990 898 application. Numerous

applications are currently pending.

By way of background, the patented inventions have to do

with computer memory devices called Dynamic Random

Access Memory (“DRAM”) and a system and devices for

increasing the speed at which data or information is transferred

between the DRAM and the Central Processing Unit (“CPU”)

of a computer. The DRAM is a high-seed, short-term memory

device where information being used by the CPU is stored. The

patents in suit describe numerous inventions respecting the

memory interface and a new type of “bus” which carries

information or data. The “Field of Invention” section of the :

specification, common to all patents in suit, gives the following

overview of the inventions: :

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[a]n integrated circuit bus interface for computer

and video systems is described which allows high

speed transfer of blocks of data, particularly to and

from memory devices, with reduced power

consumption and increased system reliability. A

new method of physically implementing the bus

architecture is also described.

U.S. Patent No. 6,034,918 (issued March 7, 2000) (“the 918

patent”), col. 1, 11. 20-25.”

On August 8, 2000, Rambus instituted this action for the

infringement of four of its patents against Infineon

Technologies AG (a German corporation), Infineon

Technologies, Inc. (a German corporation) Infineon

Technologies North American Corp. (a Delaware corporation)

and Infineon Technologies Holding North America, Corp. (a

Delaware corporation) (collectively referred to as “Infineon”).

The first of the patents in suit, U.S. Patent No. 5,953,263

(issued Sept. 14, 1999) (“the ’263 patent”), claims a latency

invention which involves the use of a programmable register on

the DRAM chip to store a value representative of a time delay.

The latency invention makes the DRAM response time more

predictable because the CPU knows precisely when it will

receive data from the DRAM in response to a transaction

request, thereby allowing the system to plan for transfers and

improving overall traffic flow over the bus.*> Claims 1-5, 14,

? All the patents in suit, and all the patents springing from the 1990 898

application, contain the same specification. For each of citation, all

references to the specification will be to the 918 patent.

> Claim 1 of the ’263 patent is representative of this invention:

1. Asynchronous semiconductor memory device having at least

one memory section which includes a plurality of memory cells,

the memory device comprises:

a programmable register to store a value which is representative

of a delay time after which the memory device responds to a read

request. ;

72a

16-19, 21, 23-25, 27-28, 30 and 32-33 of the ’263 patent are at

issue in hi action.

Secondly, in U.S. Patent No. 5,954,804 (issued Sept. 21,

1999) (“the °804 patent”), Rambus claims a delayed lock loop

(DLL) on a DRAM chip, which allows precise timing of the

output of data. In essence, the DLL allows the DRAM chip to

collect the data from the memory cells and then paces the

release of that information over the bus. The DLL becomes

useful when operating the DRAM at high rates of speed.‘

Claim 26 of the ’804 patent is the only claim involving this

invention at issue in this action.

The third patent, U.S. Patent No. 6,034,918 (issued Mar. 7,

2000) (“the 918 patent”), covers the variable block size

invention, which involves the use of circuitry to allow for the

output of variable-sized blocks of data over the bus in response

to a transaction request. The additional circuitry allows a user,

such as a CPU, to select differing sizes or blocks of data,

* Claim 26 of the °804 patent describes DLL in combination with the

latency invention:

26. An integrated circuit device having at least one memory

section which includes a plurality of memory cells, wherein the

integrated circuit device outputs data on an external bus

synchronously with respect to first and second external clock

signals, the integrated circuit device comprises:

a first internal register to store a value which is representative of a

number of clock cycles to transpire before the integrated circuit

device responds to a read request;

delay locked loop circuitry to generate an internal clock signal

using the first and second external clock signals; and

interface circuitry, coupled to the external bus to receive a read

request, the interface circuitry includes a plurality of output

drivers, coupled to the external bus, to output data on the external

bus in response to the internal clock signal, synchronously with

respect to the first and second external clock signals and in

accordance with the value stored in the fist internal register.

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73a

instead of a single piece of data.” Claims 1-2, 6, 8-9, 13, 15-20,

24-25, 29-31, 33 and 34 of the ’918 patent are at issue in this

action.

Lastly, U.S. Patent No. 6,032,214 (issued Feb. 29, 2000)

(“the °214 patent”) claims double data rate (“DDR”) as the

invention. In general, memory devices send and receive

information according to a clock contained within the computer

system. Clocks are a common, but important, feature of all

computer systems. Before the DDR invention, information was

transferred only on the “tick” of the clock. The memory device

using that type of transfer regulator is called a Synchronous

DRAM, or “SDRAM.” The DDR invention allows information

from the SDRAM to be sent out on both the “tick” and the

“tock” (or the rising and falling edges) of the computer’s

internal clock, thereby doubling the data output of the SDRAM

for a given clock rate.° Claims 1-2, 4, 6, 9-11, 14-16, 18-19,

21, 24-26 and 29 of the ’214 patent are at issue in this action.

> Claim 18 of the °918 patent describes this invention as:

18. A method of operation of a synchronous memory device,

wherein the memory device includes a plurality of memory cells,

the method of operation of the memory device comprises:

receiving an external clock signal;

receiving first block size information from a bus controller, where

the first block size information defines a first amount of data to

be output by the memory device onto a bus in response to a read

request;

receiving a first request from the bus controller; and

outputting the first amount of data corresponding to the first

block size information, in response to the first read request, onto

the bus synchronously with respect to the external clock signal.

. Claim 15 of the ’214, which is representative of this invention, covers this

invention in combination with the variable block size described in the ’918

patent:”

A method of operation of a synchronous memory device, where

in the memory device includes a plurality of memory cells, the

method comprising;

74a

Infineon makes, uses, sells or offers to sell, and imports

SDRAM devices, DDR SDRAM devices’ and Synchronous

Grapisics RAM (“SGRAM”) devices, as well as products, such

as computers, servers, automated teller machines, telephones

and telephone systems and point of sale terminals, all of which

contain SDRAM, DDR SDRAM or SGRAM devices. Rambus

alleges that all of those devices and the products and modules

into which they are incorporated infringe some or all of the

patents in suit. Infineon denies that its products infringe any of

those patents.

DISCUSSION

I. The Legal Standard

Patent infringement analysis involves two steps: ascertaining

the proper construction of the patent claim and determining

whether the accused method or product infringes the properly

construed claim. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d

1576, 1582 (Fed. Cir. 1996). A patent contains two distinct

elements: “First, it contains a specification describing the

invention ‘in such full, clear, concise and exact terms as to

enable any person skilled in the art . . . to make and use the

same.” 35 U.S.C. § 112... . Second, a patent includes one or

more ‘claims,’ which ‘particularly poin{t] out and distinctly

clai[m] the subject matter which the applicant regards as his

receiving first block size information, wherein the first block size

information defines a first amount of data to be output onto a bus

in response to a read request,

receiving a first read request; and

outputting the first amount of data corresponding to the first

block size information, in response to the first read request, onto

the bus synchronously with respect to a first and a second

external clock signal wherein a first portion of the fist amount of

data is output synchronously with respect to the first external

clock signal and a second portion of the first amount of data is

output synchronously with respect to the second external clock

signal.

75a

invention.” Markman v. Westview Instr., Inc., 517 U.S. 370,

373 (1996).

The construction or interpretation of a claim is a question of

law. Markman v. Westview, 52 F.3d 967, 979 (Fed. Cir. 1995)

(en banc), aff'd 517 U.S. 370 (1996). “{I]n interpreting an

asserted claim, the court should look first to the intrinsic

evidence of record, i.e., the patent itself, including the claims,

the specification and, if in evidence, the prosecution history.

Such intrinsic evidence is the most significant source of the

legally operative meaning of disputed claim language.”

Vitronics, 90 F.3d at 1582 (internal citations omitted). If the

intrinsic evidence is insufficient to resolve ambiguity in the

meaning of claims, the court may rely upon extrinsic evidence

to understand the technology and to construe the claims. Jd. at

1584. “Extrinsic evidence is that evidence which is external to

the patent and file history, such as expert testimony, inventor

testimony, dictionaries, and technical treatises and articles.” Jd.

Extrinsic evidence, however, may no be used to contradict the

claim language or the meanings established in the specification.

Id. “Any other rule would be unfair to competitors whe niust

be able to rely on the patent documents themseives, without

consideration or expert opinion that then does noi even exist, in

ascertaining the scope of a patentee’s rights to exclude.” /d.

(quoting Southwall Tech. Inc. v. Cardinal IG Co., 54 F.3d 1570,

1578 (Fed. Cir. 1995), cert. denied, 516 U.S. 987 (1995)).

In the examination of the intrinsic evidence, “there is a

hierarchy of analytical tools. The actual words of the claim are

the controlling focus.” Digital Biometrics, Inc. v. Identix, Inc.,

149 F.3d 1335, 1344 (Fed. Cir. 1998). Thus, a court should

first “look to the words of the claims themselves, both asserted

and nonasserted, to define the scope of the patented invention.”

Vitronics, 90 F.3d at 1582. See Pitney Bowes, Inc. v. Hewlett-

Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“The

starting point for any claim construction must be the claims

themselves.”); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362

76a

(Fed. Cir. 1999) (“We begin, of course, with the language of the

claims”).

“The general rule is that terms in the claim are to be given

their ordinary and accustomed meaning.” Jd. See also

Vitronics, 90 F.3d at 1582. “It is the person of ordinary skill in

the field of the invention through whose eyes the claims are

construed. Such person is deemed to read the words used in the

patent documents with an understanding of their meaning in the

field, and to have knowledge of any special meaning and usage

in the field.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133

F.3d 1473, 1477 (Fed. Cir. 1998). Notwithstanding that terms

in the claim and specification are presumed to carry the

ordinary meaning that they would have to one of ordinary skill

in the field, “a patentee may choose to be his own lexicographer

and use terms in a manner other than their ordinary meaning, as

long as the special definition of the term is clearly stated in the

patent specification or file history.” Vitronics, 90 F.3d at 1582.

See also Hoescht Celanese Corp. v. BP Chems. Ltd., 78 F.3d

1575, 1578 (Fed. Cir. 1996), cert. denied, 519 U.S. 911 (1996)

(“A technical term used in a patent document is interpreted as

having the meaning that it would be given by persons

experienced in the field of the invention, unless it is apparent

from the patent and the prosecution history that the inventor

used the term with a different meaning”).

That is, the ordinary and accustomed meaning of a

disputed claim term is presumed to be the correct

one, subject to the following. First, a different

meaning clearly and deliberately set forth in the

intrinsic materials—the written description or the

prosecution history—will control. Second, if the

ordinary and accustomed meaning of a disputed

term would deprive the claim of clarity, then

further reference must be made to the intrinsic—or

in some cases, extrinsic—evidence to ascertain the

proper meaning. In either case, a party wishing to

77a

alter the meaning of a clear claim term must

overcome the presumption that the ordinary and

accustomed meaning is the proper one,

demonstrating why such an alteration is required.

K-2 Corp., 191 F.3d at 1362-63 (internal citations omitted).

See Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed.

Cir. 1993) (“Although a patentee can be his own lexicographer,

as we have repeatedly said, the words of a claim will be given

their ordinary meaning, unless it appears that the inventor used

them differently.” (internal quotations omitted)). Cf. Johnson

Worldwide Assoc. Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed.

Cir. 1999) (indicating that the patentee must set “forth an

explicit definition for a claim term”). “Thus, second, it is

always necessary to review the specification to determine

whether the inventor has used any terms in a manner

inconsistent with their ordinary meaning.” Vitronics, 90 F.3d at

1582 (emphasis added); CVI/Beta Ventures, Inc. v. Tura LP,

112 F.3d 1146, 1153 (Fed. Cir. 1997), cert. denied 522 US.

1109 (1998) (same). See also Toro Co. v. White Consolidated

Indus., Inc., 199 F.3d 1295, 1299 (Fed. Cir. 1999) (“words of

ordinary usage must nonetheless be construed in the context of

the patent documents”).

The specification acts as a dictionary when it

expressly defines terms used in the claims or when

it defines terms by implication.... The

specification contains a written description of the

invention which must be clear and complete

enough to enable those of ordinary skill in the art to

make and use it. Thus, the specification is always

highly relevant to the claim construction analysis.

Usually, it is dispositive; it is the single best guide

to the meaning of a disputed term.

Vitonics, 90 F.3d at 1582 (emphasis added). The ordinary

meaning of claim terms is a “heavy presumption” to be

overcome. Johnson Worldwide, i175 F.3d at 989.

78a

As the third category of intrinsic evidence, “the court may

also consider the prosecution history of the patent, if in

evidence. This history contains the complete record of all the

proceedings before the Patent and Trademark Office (“PTO”),

including any express representations made by the applicant

regarding the scope of the claims.” Vitronics, 90 F.3d at 1583

(internal citations omitted). “[AJrguments made during

prosecution regarding the meaning of a claim term are relevant

to the interpretation of that term in every claim of the patent

absent some clear indication to the contrary.” Southwall Tech.,

54 F.3d at 1579. “The prosecution history limits the

interpretation of claim terms so as to exclude any interpretation

that was disclaimed during prosecution.” Jd. at 1576. “Claims

cannot be construed in one way to obtain their allowance and in

2 different way against accused infringers.” Jd. See Digital

Biometrics, 149 F.3d at 1344 (“The prosecution history is

relevant because it may contain contemporaneous exchanges

between the patent applicant and the PTO about whai the claims

mean”).

When consideration of these three sources resolves the

disputes over the asserted claim terms (as it generally should),

reliance on extrinsic evidence to construe the claim is improper.

Vitronics, 90 F.3d at 1583. This is because the claims,

specification and file history comprise the public record of the

patentee’s claim, and to allow the public record (upon which

competitors are entitled to rely when investigating the scope of

the patentee’s claimed invention), to be altered or changed by

extrinsic evidence is to undermine the notice function of the

public record. Jd.

The preference for intrinsic evidence, however, does not

preclude a court from considering or relying upon extrinsic

evidence:

Vitronics does not prohibit courts from examining

extrinsic evidence, even when the patent document

is itself clear .. . . Moreover, Vitronics does not set

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forth any rules regarding the admissibility of expert

testimony into evidence.... Rather, Vitronics

merely warned courts not to rely on extrinsic

evidence in claim construction to contradict the

meaning of claims discernible from thoughtful

examination of the claims, the written description,

and the prosecution history—the intrinsic evidence.

Pitney Bowes, 182 F.3d at 1308 (emphasis in original). See

also Bell & Howell Document Mngmt. Prods. Co. v. Altek Sys.,

132 F.3d 701, 706 (Fed. Cir. 1997) (“Use of expert testimony to

explain an invention may be useful. But reliance on extrinsic

evidence to interpret claims is proper only when the claim

language remains genuinely ambiguous after consideration of

the intrinsic evidence. . . .”).

This is especially the case with respect to technical

terms, as opposed to non-teciinical terms in general

usage or terms of art in the claim-drafting art ....

Indeed, a patent is both a technical and a legal

document. While a judge is well-equipped to

interpret the legal aspects of the document, he or

she must also interpret the technical aspects of the

document, and indeed its overall meaning, from the

vantage point of one skilled in the art.

Pitney Bowes, 182 F.3d at 1309.

Within the category of extrinsic evidence, some types of

evidence are preferred over others: “prior art documents and

dictionaries, ... are more objective and reliable guides (than

expert testimony]. Unlike expert testimony, these sources are

accessible to the public in advance of litigation... . Indeed,

opinion testimony on claim construction should be treated with

the utmost caution, for it is no better than opinion testimony on

the meaning of statutory terms.” Jd. at 1585.

These fundamental precepts inform and guide the

construction of the claims at issue in this action. As mentioned

80a

previously, there are 57 different claims being asserted under

the four patents in suit and each of those claims are in dispute

and therefore must be construed. However, in their claim

construction briefs the parties have circumscribed that rather

daunting task by identifying eight terms to be interpreted. At

the Markman hearing, the parties agreed that (with a previously

noted exception) these eight terms have the same meaning in

each of the 57 asserted claims. As a result, the claim

construction task in this action reduces to construing the eight

disputed terms. That task is undertaken seriatim.

II. Claim Construction

A. “Bus”

The parties dispute the meaning of “bus” as that term is used

throughout the claims of the patents in suit. Rambus argues that

“bus” means any “set of signal lines (for example, wires) to

which a number of devices are connected, and over which

information is transferred between devices.” According to

Rambus, “the term “bus” is old and very common in the

electrical arts” and, in the patents in suit, the term is used in its

ordinary and customary sense “as a set of signal lines over

which information is transferred.”’ To support the contention

that this is the ordinary and customary construction of the term

“bus,” as used in its patents, Rambus relies not upon intrinsic

evidence but upon the extrinsic evidence of the /EEE (Institute

of Electrical and Electronics Engineers) Standard Dictionary of

Electrical and Electronics Terms, Fourth Ed., JEEE Inc., New

York (1988), p. 116, to explain how one skilled in the art would

understand the term. The IEEE Dictionary defines a bus as “a

set of signal lines used by an interface system, to which a

number of devices are connected, over which information is

transferred between the devices.” Jd.®

” Plaintiff Rambus Inc.’s Markman Brief Concerning Claim Construction, p.

13.

8 of course, a court cannot use an inconsistent dictionary definition to

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Infineon, on the other hand, contends that “bus” actually has

a specialized meaning conferred by the specification of the

patents in suit, which describes and explains the bus and its use

with the other inventions as the Rambus “multiplexed bus.”

Before the ’898 application was filed in 1990, most buses

generally had point-to-point interfaces wherein the CPU would

communicate with different memory devices by different and

separate lines. Furthermore, within each bus in the prior art, the

lines would be dedicated to Carrying either data, address,

control or device-select information. In the new inventive

Rambus bus, a single bus is multiplexed so that the bus lines

carry all the address, control, data and device-select information

over a single bus. In Infineon’s view, the use of the term “bus”

throughout the claims is limited to the new inventive bus

described in the specification.

1. The Claim Language

The analysis begins at first considering the claim language.”

Most of the 57 claims at issue use the term “a bus” or “the bus”

or “an external bus.” None of the claims, however, expressly

define the term “bus,” nor do they dispositively support either

proposed definition. Rather, the claims saad speak of

outputting or inputting data over a bus.

contradict the meaning derived from the intrinsic evidence, but such

_ definition may be of some assistance to the court in interpreting technical

terms. See Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d

1370, 1372 (Fed. Cir. 2001) (“Although a dictionary definition may not

enlarge the scope of a term when the specification and the prosecution

history show that the inventor, or recognized usage in the field of the

invention, have given the term a limited or specialized meaning, a dictionary

is often useful to aid the court in determining the correct meaning to be

— to a term as it was used.”)

” The term “bus” is used in claims 1, 2, 6, 8, 16, 18, 19, 20, 24, 33, and 14

of the 918 patent, claims 1, 2, 4, 10, 15, 16, 18, and 25 of the 214 patent,

claims 2, 14, 27, and 30 of the ’263 patent and claim 26 of the ’804 patent.

82a P

Infineon urges the court to consider the language of claim 26

of the ’918 patent as illustrative of its view of the term:

26. An integrated circuit device having at least one

memory section which includes a plurality of |

memory cells, wherein the integrated circuit device

outputs data on an external bus synchronously with

respect to first and second external clock signals,

the integrated circuit device comprises:

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interface circuitry, coupled to the external bus to

receive a read request, the interface circuitry

includes a plurality of output drivers, coupled to the

external bus, to output data on the external bus in

response to the internal clock signal, synchronously

with respect to the first and second external clock

signals and in accordance with the value stored in

the first internal register.

’918 patent, Claim 26 (emphasis added). Infineon posits that

this claim calls for data to be output onto the bus, and a read

request to be received on the same bus, thus supporting its

conclusion that “bus” means a multiplexed bus.'° While the

language of this single claim somewhat supports Infineon’s

construction, the specification must be reviewed to determine

how the inventors used the term “bus” and whether they

intended the term to have a special meaning. See Watts v. XL

Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000) (“One purpose for

examining the specification is to determine if the patentee has

limited the scope of the claims”). “[E]ven if [the claims] were

clear on their face, [the court] must consult the specification to

10 The testimony of Infineon’s expert, Mr. Joseph McAlexander also

supports this conclusion. See Markman Hearing, Tr. Pg. 370 1. 13 to page

371, 1. 19 (explaining that claim 1 of the 918 patent clearly indicates that a

read request and output data are to travel across a single bus).

83a

determine if the patentee redefined any of those terms.” Jd. at

883.

2. The Specification

A close study of the patent specification reveals that, not only

did the inventors act as their own lexicographers in defining the

term “bus” to be the new inventive bus, but they also repeatedly

explained how their various inventions worked in conjunction

with the new bus, which they describe to be a centerpiece of the

systems they claim to have invented.

The specification clearly and unambiguously describes the

bus of the invention to be the inventive multiplexed bus. In the

“Summary of Invention” the specification states:

The present invention includes a memory

subsystem comprising at least two semiconductor

devices, including at least one memory device,

connected in parallel to a-bus where the bus

includes a plurality of bus lines for carrying

substantially all address, data and control

information needed by said memory devices, where

the control information includes device-select

information and the bus has substantially fewer bus

lines than the number of bits in a single address,

and the bus carries device-select information

without the need for separate device-select lines

connected directly to individual devices.

’918 patent, col. 3, 11. 50-60 (emphasis added). And again,

later in the same section, the specification states, “In this system

of this invention, DRAMs and other devices receive address

and control information over the bus and transmit or receive

requested data over the same bus. Each memory device

contains only a single bus interface with no other signal pins.”

918 patent, col. 4, lines 9-13 (emphasis added). See also ’918

patent col. 3, 1. 61 through col. 4 1. 1. (the DRAM “is modified

to use a wholly bus-based interface rather than the prior art

84a

combination of point-of-point and bus-based wiring used with

conventional versions of these devices. The new bus includes

clock signals, power and multiplexed address, data and control

signals”).

Throughout the “Detailed Description,” the specification

_ repeatedly explains the use of the new multiplexed bus:

The present invention is designed to provide a high

speed, multiplexed bus for communication between

processing devices and memory devices and to

provide devices adapted for use in the bus system.

* * *

The bus consists of a relatively small number of

lines connected in parallel to each device on the

bus. The bus carriers substantially all address, data

and control information needed by devices for

communication with other devices on the bus. In

many systems using the present invention, the bus

carries almost every signal between every device in

the entire system. There is no need for separate

device-select lines since device-select information

for each device on the bus is carried over the bus.

There is no need for separate address and data

lines because address and data information can be

sent over the same lines.

* * *

Virtually all the signals needed by the computer

system can be sent over the bus.

918 patent, col. 5, 11. 29-45 (emphasis added). The

inescapable lesson that emerges from comparing the claims of

the patents with the inventors’ fulsome textual description of

the invention is that the inventions include a new bus and new

devices that work with the inventive bus, all to the inventor’s

stated purpose, which is “to provide a high speed multiplexed

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bus for communication between processing devices and

memory devices and to provide devices adapted for use in the

bus system.” °918 Patent, col. 5, 11. 29-33 (emphasis added).

Additionally, not only does the specification define “bus” to

be a multiplexed bus, but it also sets a background for

explaining how the inventive multiplexed bus works with

various other features of Rambus’ inventions. Thus, the

explanaiion of the inventions also supports the conclusion that

the term “bus” means the multiplexed bus. For example, every

embodiment described in the specification involves the use of a

multiplexed bus.'’ Not once do the patents indicate that any of

the inventions can, or should be, used with the prior art

dedicated bus architecture.

This understanding is confirmed by the testimony of Mr.

Joseph McAlexander, Infineon’s expert, who explains that the

patents “describe several bus architectures. But in every

instance when they describe the bus of the invention it is always

a multiplexed address, data and control bus.” Markman

Hearing, Tr. p. 360, 1. 25 to p. 361, 1. 4. Rambus’ expert did

not refute this conclusion.

In Toro Co. v. White Consolidated Indus., Inc., 199 F.3d

1295 (Fed. Cir. 1999), the Federal Circuit found it significant

that the disputed patent contained only one embodiment of the

" See e.g., 918 patent, col. 4, 11. 1-4 (“Ina preferred implementation, 8

bus data lines and an AddressValid bus line carry address, data and control

information for memory addresses up to 40 bits wide.”) (emphasis added);

"918 patent, col. 5, 11. 59-64 (“In the preferred implementation, memory

devices are provided that have no connections other than the bus

connections described herein and CPUs are provided that use the bus of this

invention as the principal, if not exclusive, connection to memory and to

other devices on the bus.”) (emphasis added); ’918 patent, col. 8, 11. 17-25

(“The preferred bus architecture of this invention comprises 11 signals:

BusData [0:7]; AddrValid; Clk1 and Clk2; plus an input reference level and

power and ground lines connected in parallel to each device .... The bus

lines for BusData [0:7] signals form a byte-wide, multiplexed

data/address/control bus”).

This text is long and has been trimmed here. Open the source document for the complete record.