Case3:10-cv-04017-JSW Document39 Filed02/11/11 Page1 of 10

1 Barbara Clarke McCurdy (Admitted Pro Hac Vice)

[Link]@[Link]
2 Naveen Modi (Admitted Pro Hac Vice)
[Link]@[Link]
3 Srikala P. Atluri (Admitted Pro Hac Vice)
[Link]@[Link]
4 FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
5 901 New York Avenue, N.W.
Washington, D.C. 20001
6 Telephone: (202) 408-4000
Facsimile: (202) 408-4400
7
Tina E. Hulse (CA Bar No. 232936)
8 [Link]@[Link]
FINNEGAN, HENDERSON, FARABOW,
9 GARRETT & DUNNER, L.L.P.
3300 Hillview Avenue
10 Palo Alto, California 94304-1203
Telephone: (650) 849-6600
11 Facsimile: (650) 849-6666

12 Attorneys for Defendant

Rambus Inc.
13

14 UNITED STATES DISTRICT COURT

15 NORTHERN DISTRICT OF CALIFORNIA

16 SAN FRANCISCO DIVISION

17

18 INTERNATIONAL BUSINESS MACHINES CASE NO. C 10-04017-JSW

CORPORATION, (Related Case: C 10-03736-JSW)
19
Plaintiff, ANSWER TO COMPLAINT
20
v.
21
RAMBUS INC.,
22
Defendant.
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ANSWER TO COMPLAINT
CASE NO. C 10-04017-JSW
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1 Defendant Rambus Inc. (“Rambus”), by its attorneys, hereby answers the Complaint of

2 International Business Machines Corporation (“IBM”) in the above-identified action as follows:

3 As to the introductory paragraph of the Complaint, Rambus admits that the United States

4 Patent and Trademark Office (“USPTO”) Board of Patent Appeals and Interferences (“Board”)

5 rendered certain decisions in Patent Interference No. 105,467 (“the Interference”) entitled “Richard

6 E. Perego, Stefanos Sidiropoulos and Ely Tsern, Junior Party v. Robert Allen Drehmel, Kent Harold

7 Haselhorst, Russell Dean Hoover and James Anthony Marcella, Senior Party.” Except as so

8 admitted, Rambus denies the allegations in the introductory paragraph of the Complaint. IBM is not

9 entitled to any relief.

10 THE PARTIES
11 1. Rambus admits that Robert Allen Drehmel, Kent Harold Haselhorst, Russell Dean

12 Hoover, and James Anthony Marcella (collectively, “Drehmel”) are named as the inventors of

13 United States Patent Application No. 11/203,652 (“the Drehmel ’652 Application”). Rambus

14 admits, on information and belief, that Drehmel assigned all rights in the Drehmel ’652 Application

15 to IBM as recorded by the USPTO at Assignment Reel No. 010412 and Frame No. 0260 and that

16 IBM is the legal owner of the Drehmel ’652 Application. Rambus admits, on information and belief,

17 that IBM is the real party of interest for purposes of this action. Except as so admitted, Rambus

18 denies the allegations of paragraph 1 of the Complaint.

19 2. Rambus admits, on information and belief, the allegations of paragraph 2 of the

20 Complaint.

21 3. Rambus admits that Richard E. Perego, Stefanos Sidiropoulos, and Ely Tsern

22 (collectively, “Perego”) are named as the inventors of the subject matter claimed in claims 1-49 of

23 United States Patent No. 6,502,161 (“the Perego ’161 Patent”). Rambus admits that Perego assigned

24 all rights in the Perego ’161 Patent to Rambus as recorded by the USPTO at Assignment Reel

25 No. 010490 and Frame No. 0902 and that Rambus is the legal owner of the Perego ’161 Patent.

26 Rambus also admits that Rambus is the real party of interest for purposes of this action. Except as so

27 admitted, Rambus denies the allegations of paragraph 3 of the Complaint.

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ANSWER TO COMPLAINT
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1 4. Rambus admits that Rambus is a California corporation, but that its principal place of

2 business is located at 1050 Enterprise Way, Suite 700, Sunnyvale, CA 94089.

3 JURISDICTION AND VENUE

4 5. Rambus denies the allegations of paragraph 5 of the Complaint.
5 6. Rambus denies the allegations of paragraph 6 of the Complaint in that IBM is not
6 entitled to any relief.

7 7. Rambus admits that it filed action No. C 10-03736-JCS (now No. C 10-03736-JSW)

8 against IBM in this Court on August 23, 2010, and that the action was filed under 35 U.S.C. § 146 so

9 that Rambus could appeal certain decisions by the Board in the Interference. Except as so admitted,

10 Rambus denies the allegations of paragraph 7 of the Complaint.

11 8. Rambus admits that IBM filed the Complaint on or before 14 days after the service of
12 the complaint Rambus filed in action No. C 10-03736-JCS. Except as so admitted, Rambus denies
13 the allegations of paragraph 8 of the Complaint.
14 9. Rambus admits that this Court has personal jurisdiction over Rambus for purposes of
15 this action. Rambus admits that it is authorized to engage in and transacts business in this District
16 and that it has availed itself of the benefits and protections of the laws of California. Except as so
17 admitted, Rambus denies the allegations of paragraph 9 of the Complaint. IBM is not entitled to any
18 relief.
19 10. Rambus denies the allegations of paragraph 10 of the Complaint.

20 INTRADISTRICT ASSIGNMENT
21 11. Rambus admits that this action relates to an Intellectual Property matter and should be

22 assigned on a district-wide basis. Except as so admitted, Rambus denies the allegations of

23 paragraph 11 of the Complaint. IBM is not entitled to any relief.

24 ALLEGED FACTS GIVING RISE TO THE COMPLAINT

25 12. Rambus admits the allegations of paragraph 12 of the Complaint.

26 13. Rambus admits the allegations of paragraph 13 of the Complaint.

27 14. Rambus admits that United States Patent No. 6,526,469 (“the ’469 patent”) was

28 surrendered on December 30, 2003, and that United States Patent Application No. 10/747,820 (“the

ANSWER TO COMPLAINT
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1 Drehmel ’820 application”), a reissue application, was filed, which included original claims 1-10 of

2 the ’469 patent and claims 11-59. Rambus further admits that some of the claims in the Drehmel

3 ’820 application correspond exactly or substantially to the claims of the Perego ’161 Patent. Except

4 as so admitted, Rambus denies the allegations of paragraph 14 of the Complaint.

5 15. Rambus admits the allegations of paragraph 15 of the Complaint.

6 16. Rambus admits that claims 11-59 of the Drehmel ’652 Application were indicated as

7 allowable; that IBM requested the USPTO to declare an interference under 35 U.S.C. § 135(a)

8 between claims 11-59 of the Drehmel ’652 Application and claims 1-49 of the Perego ’161 Patent;

9 and that “priority of invention” refers to who was the first to invent the subject matter of an

10 interference, as determined by U.S. patent laws. Except as so admitted, Rambus is without

11 knowledge or information sufficient to form a belief as to the truth of the remaining allegations of

12 Paragraph 16, and therefore denies the same.

13 17. Rambus admits that the Board declared the Interference on August 15, 2006.

14 18. Rambus admits the allegations of paragraph 18 of the Complaint.

15 19. Rambus admits that the subject matter of an interference is the invention or

16 inventions as to which priority is to be determined; that the Board designated Drehmel ’652

17 Application claim 11 and Perego ’161 Patent claim 1, which are identical, to be “Count 1” of the

18 Interference (hereinafter, the “Count”); and that the Count reads as follows:

19 A memory system comprising:

20 a memory controller having an interface that includes a plurality of memory

21 subsystem ports;

22 a first memory subsystem including:

23 a buffer device having a first port and a second port, and

24 a plurality of memory devices coupled to the buffer device via the

25 second port, wherein data is transferred between at least one memory device of the plurality

26 of memory devices and the memory controller via the buffer device; and

27 a plurality of point-to-point links, each point-to-point link of the plurality of

28 point-to-point links having a connection to a respective memory subsystem port of the

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1 plurality of memory subsystem ports, the plurality of point-to-point links including a first

2 point-to-point link to connect the first port to a first memory subsystem port of the plurality

3 of memory subsystem ports.

4 Except as so admitted, Rambus denies the allegations of paragraph 19 of the Complaint.

5 20. Rambus admits that the Board determined that Drehmel ’652 Application claims

6 11-59 and Perego ’161 Patent claims 1-49 all “correspond” to the Count and that they were all

7 subject to the Board’s priority determination. Except as so admitted, Rambus denies the allegations

8 of paragraph 20 of the Complaint.

9 21. Rambus admits that by April 16, 2006, there were fifteen continuation and

10 continuation-in-part patent applications claiming benefit of priority directly or indirectly to the

11 Perego ’161 Patent. Rambus further admits that of these fifteen patent applications, four had issued

12 as United States Patent Nos. 7,000,062, 7,003,618, 7,010,642, and 7,017,002, and the remaining

13 patent applications included United States Patent Application Nos. 10/272,024, 10/625,276,

14 10/766,131, 10/848,369, 10/889,799, 10/889,852, 10/890,001, 11/119,031, 11/128,904, 11/130,734,

15 and 11/136,995. Except as so admitted, Rambus denies the allegations of paragraph 21 of the

16 Complaint.

17 22. Rambus admits that IBM requested that an interference be declared to involve the

18 fifteen patents and patent applications listed in paragraph 21 of the Complaint and that apart from the

19 Perego ’161 Patent, the Board did not include the fifteen patents and patent applications in declaring

20 the Interference, so none of the claims from those fifteen patents or patent applications were

21 involved in the Interference. Except as so admitted, Rambus denies the allegations of paragraph 22

22 of the Complaint.

23 23. Rambus admits that on October 3, 2006, IBM submitted a list of motions and that

24 Exhibit A purports to be a copy of that list. Except as so admitted, Rambus is without knowledge or

25 information sufficient to form a belief as to the truth of the remaining allegations of paragraph 23,

26 and therefore denies the same.

27 24. Rambus admits that IBM submitted a list of motions that included a proposed

28 Preliminary Motion 1 that, on its face, requested “an expedited order requiring Perego to show cause

ANSWER TO COMPLAINT
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1 why any of its fifteen continuing patents and applications should not be added to this interference,

2 and why all of the claims of each of these continuing cases should not be designated as

3 corresponding to Count 1 in light of (i) the prima facie showing of obviousness for each continuing

4 case over Count 1 made by Drehmel in the Request for Interference, (ii) the similarity of the

5 continuing claims to the Perego claims already designated in the Declaration of Interference as

6 corresponding to Count 1, (iii) the PTO’s finding of obviousness-type double patenting in fourteen

7 out of the fifteen continuing cases, that finding not rebutted by Perego, and (iv) Perego’s submission

8 of terminal disclaimers in response to each of those fourteen obviousness-type double patenting

9 rejections.” Except as so admitted, Rambus denies the allegations of paragraph 24 of the Complaint.

10 25. Rambus admits that during prosecution at the USPTO, certain claims of the patent

11 applications that issued as United States Patent Nos. 7,000,062, 7,003,618, 7,062,597, No. 7,523,248

12 and No. 7,526,597 were rejected under the doctrine of non-statutory obviousness-type double

13 patenting as being unpatentable over claims 1-49 of the Perego ’161 Patent; that terminal disclaimers

14 were filed; and that allowance of the claims was obtained. Except as so admitted, Rambus denies

15 the allegations of paragraph 25 of the Complaint.

16 26. Rambus admits that IBM submitted a list of motions that included a proposed

17 Preliminary Motion 2 that, on its face, requested “an order suspending prosecution in each

18 continuing application listed in Drehmel Motions 9 to 17, and any other application(s) claiming

19 benefit directly or indirectly from Application No. 09/479,375 that matured into involved Perego

20 United States Patent No. 6,502,161, unless and until Perego has established separate patentability

21 over Count 1 of all claims in each such continuing application.” Except as so admitted, Rambus

22 denies the allegations of paragraph 26 of the Complaint.

23 27. Rambus admits that IBM submitted a list of motions that included proposed

24 Preliminary Motions 3-17 that requested to add to the Interference, respectively, each of the fifteen

25 continuation and continuation-in-part Perego patents and patent applications, and to designate all of

26 their claims as corresponding to the Count. Except as so admitted, Rambus denies the allegations of

27 paragraph 27 of the Complaint.

28 28. Rambus admits the allegations of paragraph 28 of the Complaint.

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1 29. Rambus admits that prosecution continued in the continuation and continuation-in-

2 part patent applications related to the Perego ’161 Patent during the course of the Interference; that

3 sixteen continuation and continuation-in part patent applications issued as patents; that claims of five

4 of the continuation and continuation-in-part patents were rejected during prosecution under the

5 doctrine of non-statutory obviousness-type double patenting as being unpatentable over claims 1-49

6 of the Perego ’161 Patent; that terminal disclaimers were filed during prosecution of five of the

7 continuation and continuation-in-part patents; and that there is a pending application that is related to

8 the Perego ’161 Patent. Except as so admitted, Rambus denies the allegations of paragraph 29.

9 30. Rambus admits the allegations of paragraph 30 of the Complaint.

10 31. Rambus denies the allegations of paragraph 31 of the Complaint.

11 32. Rambus admits that portions of the October 11, 2006, decision are erroneous. Except

12 as so admitted, Rambus denies the allegations of paragraph 32. IBM is not entitled to any relief.

13 33. Rambus admits that it has challenged certain aspects of the Board’s October 11, 2006,

14 decision. Except as so admitted, Rambus denies the allegations of paragraph 33.

15 FIRST AFFIRMATIVE DEFENSE

16 (Failure to State a Claim)
17 34. IBM’s Complaint fails to state a claim upon which relief may be granted.

18 SECOND AFFIRMATIVE DEFENSE

19 (Lack of Subject Matter Jurisdiction)
20 35. The Court lacks subject matter jurisdiction over IBM’s claims.

21 THIRD AFFIRMATIVE DEFENSE

22 (No Abuse of Discretion)
23 36. IBM is not entitled to the relief sought because the Board’s October 11, 2006,

24 decision denying IBM’s request to file proposed Preliminary Motions 1-17 did not constitute an

25 abuse of discretion.

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1 FOURTH AFFIRMATIVE DEFENSE

2 (Patentable Distinctness)
3 37. IBM is not entitled to the relief sought because the claims identified in IBM’s list of
4 proposed Preliminary Motions 1-17 do not define the same patentable invention as the subject matter

5 of the Interference.

6 FIFTH AFFIRMATIVE DEFENSE

7 (Lack of Standing)
8 38. IBM is not entitled to the relief sought because IBM’s involved claims 11-59 of the
9 Drehmel ’652 Application lack written description support, therefore stripping IBM of standing to be

10 in the Interference.
11 SIXTH AFFIRMATIVE DEFENSE
12 (Unpatentability under 35 U.S.C. § 112, ¶ 1)
13 39. IBM is not entitled to the relief sought because IBM’s involved claims 11-59 of the

14 Drehmel ’652 Application are unpatentable under 35 U.S.C. § 112, ¶ 1 for lack of written description

15 and enablement support.

16 SEVENTH AFFIRMATIVE DEFENSE

17 (Unpatentability under 35 U.S.C. § 112, ¶ 2)
18 40. IBM is not entitled to the relief sought because IBM’s involved claims 11-59 of the

19 Drehmel ’652 Application are unpatentable under 35 U.S.C. § 112, ¶ 2 for failure to claim what the

20 inventors regard as their invention.

21 EIGHTH AFFIRMATIVE DEFENSE

22 (Unpatentability under 35 U.S.C. § 251)
23 41. IBM is not entitled to the relief sought because IBM’s involved claims 11-59 of the

24 Drehmel ’652 Application are unpatentable under 35 U.S.C. § 251 for failure to meet the “error” and

25 “original patent” requirements of § 251.

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ANSWER TO COMPLAINT
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1 NINTH AFFIRMATIVE DEFENSE

2 (No Interference-in-Fact)
3 42. IBM is not entitled to the relief sought because IBM’s involved claims 48-59 of the
4 Drehmel ’652 Application do not interfere-in-fact with the claims of the Perego ’161 Patent and

5 IBM’s involved claims 11-47 are unpatentable for the reasons stated above.

6 TENTH AFFIRMATIVE DEFENSE

7 (Priority of Invention)
8 43. IBM is not entitled to the relief sought because Perego conceived of and reduced to
9 practice the invention of the Count before Drehmel.

10 PRAYER FOR RELIEF

11 WHEREFORE, IBM is not entitled to any relief, and therefore, Rambus prays for judgment

12 against IBM on each of its claims, including but not limited to the following:

13 A. IBM’s claims be dismissed in their entirety with prejudice.

14 B. Judgment be entered in favor of Rambus and against IBM on its claims;

15 C. IBM be denied all relief requested in its claims; and

16 D. Rambus be awarded any other and further relief as this Court may deem just and

17 proper.

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ANSWER TO COMPLAINT
8 CASE NO. C 10-04017-JSW
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1 Dated: February 11, 2011 FINNEGAN, HENDERSON, FARABOW,

GARRETT & DUNNER, L.L.P.
2

3 By: /s/ Tina E. Hulse

4 Tina E. Hulse (CA Bar No. 232936)

[Link]@[Link]
5 FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
6 3300 Hillview Avenue
Palo Alto, California 94304-1203
7 Telephone:(650) 849-6600
Facsimile: (650) 849-6666
8
Barbara Clarke McCurdy (Admitted Pro Hac Vice)
9 [Link]@[Link]
Naveen Modi (Admitted Pro Hac Vice)
10 [Link]@[Link]
Srikala P. Atluri (Admitted Pro Hac Vice)
11 [Link]@[Link]
FINNEGAN, HENDERSON, FARABOW,
12 GARRETT & DUNNER, L.L.P.
901 New York Avenue, N.W.
13 Washington, D.C. 20001
Telephone:(202) 408-4000
14 Facsimile: (202) 408-4400

15 Attorneys for Defendant,

Rambus Inc.
16

17

18

19

20

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22

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ANSWER TO COMPLAINT
9 CASE NO. C 10-04017-JSW