# Appendix — Infineon Technologies AG v. Rambus, Inc.

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386015_1789%3A02

## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 2003
- **Citation:** 540 U.S. 874

## Text

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,
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Opinion of the District Court Construing
the Patent Claims under Markman,
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Opinion of the District Court Granting in
Part and Denying in Part Rambus’
Motion for Judgment as Matter of Law,
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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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386015_1789%3A02. Public record. Not legal advice.