Rambus Inc. v. Rea , 731 F.3d 1248 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
RAMBUS INC.,
Appellant,
v.
TERESA STANEK REA, Acting Director, United
States Patent and Trademark Office,
Appellee.
______________________
2012-1634
______________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences in
Reexamination No. 95/001,134.
______________________
Decided: September 24, 2013
______________________
JAMES R. BARNEY, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, argued for
appellant. With him on the brief were J. MICHAEL JAKES
and MOLLY R. SILFEN.
WILLIAM LAMARCA, Associate Solicitor, United States
Patent and Trademark Office of Alexandria, Virginia,
argued for appellee. With him on the brief were NATHAN
K. KELLEY, Deputy Solicitor, and COKE MORGAN STEWART,
Associate Solicitor.
2 RAMBUS INC. v. REA
______________________
Before MOORE, LINN, and O’MALLEY, Circuit Judges.
MOORE, Circuit Judge.
Rambus Inc. appeals from the decision of the Board of
Patent Appeals & Interferences (Board) holding invalid
various claims of U.S. Patent No. 6,260,097 (’097 patent)
for anticipation and obviousness. Rambus challenges the
Board’s claim construction and its obviousness decision.
Because the Board correctly construed the claims but
erred in its obviousness decision, we affirm-in-part,
vacate-in-part, and remand.
BACKGROUND
This case relates to memory circuits known as dynam-
ic random-access memory (DRAM). Conventional memory
circuits transfer all of the data upon request, asynchro-
nously. Each transfer can tie up the computer system for
extended periods of time and create a “bottleneck” that
slows down computer operations.
The ’097 patent solves this problem using a synchro-
nous memory system to transfer the data. In synchronous
systems, a clock signal that alternates between a digital
value of 0 and 1 synchronizes the operations within the
system. The change in the clock signal from a 0 to a 1 is
referred to as the “rising edge” of the clock, and the
change in the signal from a 1 to a 0 is referred to as the
“falling edge” of the clock. Figure 14 of the ’097 patent
depicts an exemplary clock signal:
In conventional synchronous memory systems, the da-
ta transmitted to the memory ties up the system for a full
cycle of the clock signal. In contrast, the ’097 patent
RAMBUS INC. v. REA 3
claims what Rambus refers to as the “dual-edge / double-
data-rate” functionality because the system transfers data
at twice the rate by employing both the rising and falling
edges of the clock signal. Specifically, the invention
separates the data into multiple portions and then trans-
fers a portion during the rising edge of the clock signal
and a portion during the falling edge of the clock signal.
’097 patent, at [57]. Claim 1 of the ’097 patent is repre-
sentative of the claims at issue:
A method of controlling a synchronous memory
device . . . compris[ing]:
issuing a write request to the memory device . . . ;
providing a first portion of data to the memory
device synchronously with respect to a rising edge
transition of an external clock signal; and
providing a second portion of data to the memory
device synchronously with respect to a falling
edge transition of the external clock signal.
’097 patent claim 1 (emphases added). The United States
Patent and Trademark Office (PTO) initiated an inter
partes reexamination of the ’097 patent claims and ulti-
mately found that the reexamined claims were not pa-
tentable over two references: Unexamined Japanese
Patent Application No. 56-88987 (Inagaki) and the Intel
iAPX system manual and specification (iAPX).
The following facts regarding Inagaki and iAPX are
not in dispute. Inagaki discloses a memory system that
transmits one bit during each half-cycle of the external
clock. J.A. 2955–58. The half-cycle system disclosed in
Inagaki is a modification of a conventional full-cycle
system. Id. Inagaki achieves the half-cycle functionality
by generating two clock signals based on the rising and
falling edge of the external clock. Id. The two internal
clock signals, in turn, synchronize the transfer of data
during the two halves of the system clock cycle. Id.4 RAMBUS INC. v. REA
The iAPX manual and specification disclose a system
that transfers data based on the rising or falling edges of
two system clocks. J.A. 3285, 3331. The system, howev-
er, utilizes the full clock cycle for each data transfer. Id.Thus, because the iAPX system employs a full clock cycle
to transfer data to the memory device, the system cannot
use both edges of the clock signal to synchronize the
transfer of data portions to memory. However, Inagaki
discloses a mechanism for converting a conventional full-
cycle system into a half-cycle system. J.A. 2955–58.
The examiner rejected claims 1, 2, 7, 8, 10, and 14 as
anticipated by Inagaki and rejected claims 1–5, 7, 8, 10–
12, 14, 26, 28–32, and 35 as obvious in light of the iAPX
system in view of Inagaki. The Board upheld the examin-
er’s rejections. Rambus appeals. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
I. Applicable Law
We review the Board’s factual findings for substantial
evidence and its legal conclusions de novo. In re Kotzab,
217 F.3d 1365, 1369 (Fed. Cir. 2000). Whether a claim
would have been obvious under 35 U.S.C. § 103(a) is a
legal conclusion based on underlying factual determina-
tions. Id. The factual determinations include (1) the
scope and content of the prior art; (2) the differences
between the claims and the prior art; (3) the level of
ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 17–18 (1966). “[W]hether there is a
reason to combine prior art references is a question of
fact.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
F.3d 1342, 1367 (Fed. Cir. 2012).
“[C]laim construction by the PTO is a question of law
that we review de novo . . . .” In re Baker Hughes Inc., 215
F.3d 1297, 1301 (Fed. Cir. 2000). “While claims are
RAMBUS INC. v. REA 5
generally given their broadest possible scope during
prosecution, the Board’s review of the claims of an expired
patent is similar to that of a district court’s review.” In re
Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (citations
omitted).
II. Anticipation
The Board upheld the examiner’s finding that Inagaki
anticipates a number of the ’097 patent claims. As part of
that decision, the Board construed the terms “external
clock signal” and “write request.” Rambus challenges the
Board’s construction of these claim terms.
A. “External Clock Signal”
The Board held that the “external clock signal” only
requires the clock to be periodic during the data input
phases, as opposed to being periodic for all system opera-
tions. Rambus, Inc. v. Nvidia Corp., No. 2012-000171
(B.P.A.I. June 11, 2012) (“Board Opinion”). It reached
this construction based on the established industry mean-
ing of the term “clock” and the failure of the specification
to disclose “a computer clock that runs forever or that
cannot be turned off.” Id. at 7-8.
Rambus contends that the intrinsic record requires
the “external clock signal” to be continuously periodic. It
argues that the claims contain this requirement because
they recite a “synchronous memory device,” and a clock
signal synchronizes all operations in a synchronous
device. Rambus contends that, consistent with the
claims, the specification only discloses a periodic clock
signal. Lastly, Rambus argues that, during prosecution of
a related patent, the inventors distinguished the prior art
on the basis that it did not teach a periodic clock signal.
The PTO counters that the claim language requires
only that the memory device receive data “synchronously
with respect to a rising edge transition” and the “falling
edge transition” of “an external clock signal.” According
6 RAMBUS INC. v. REA
to the PTO, this language shows that the “external clock
signal” synchronizes data transfer and need not be period-
ic for all time.
We agree with the PTO. The claimed clock signal
synchronizes data transfer to the memory device. The
claimed method provides a first portion of data “synchro-
nously with respect to a rising edge transition of an
external clock signal” and then provides a second portion
of data “synchronously with respect to a falling edge
transition of the external clock signal.” ’097 patent claim
1. Thus, while the “external clock signal” must be period-
ic during data transfer, nothing in the claim language
requires the signal to be periodic for all time. The specifi-
cation also shows that the external clock signal is periodic
during the transfer of data. Id. fig. 14. Nothing in the
specification limits the external clock signal to a clock
that is periodic for all time. Nor does the prosecution
history upon which Rambus relies require a narrower
construction. There, consistent with the plain language of
the claims, the inventors explained that the “external
clock signal” is “a periodic signal used to orchestrate
timing events.” J.A. 2700 n.2 (emphasis omitted). Ac-
cordingly, we conclude that the Board properly construed
the term “external clock signal.”
B. “Write Request”
The Board concluded that the claimed “write request”
could include “the state of a signal,” which is usually
represented by a single bit. Board Opinion at 11–13. The
Board held that its construction comported with our
holding in a prior case involving the same family of pa-
tents as the ’097 patent, Rambus Inc. v. Infineon Technol-
ogies AG, 318 F.3d 1081, 1093 (Fed. Cir. 2003). In that
case, we construed the term “write request” to mean “a
series of bits used to request a write of data.” Id.Rambus argues that the Board erroneously construed
“write request” to cover conventional, transition-based
RAMBUS INC. v. REA 7
control signals and disregarded our construction from
Infineon. It asserts that the specification clearly shows
that a “write request” includes multiple bits because each
request carries at least two pieces of information.
The PTO responds that the Board properly declined to
limit the term “write request” to a sequence of multiple
bits. It argues that the plain and ordinary meaning of the
term allows for a one-bit signal. The PTO also points to
the specification’s disclosure of an embodiment in which a
single bit determines whether the system requests a read
operation or a write operation. Lastly, the PTO argues
that the Board’s construction is not inconsistent with the
construction in Infineon because that case did not decide
if such a “series of bits” could include one bit or a signal.
We agree with the PTO that the Board correctly con-
strued “write request.” As an initial matter, we do not
find that the Board disregarded our construction in In-
fineon. In Infineon, the dispute centered on the accused
infringer’s contention that the claimed “request” must
include both address and control information. 318 F.3d at
1091. We rejected that argument. Id. at 1091–93. At no
point did we resolve the claim-scope dispute presented in
this appeal: whether the “write request” can be a single
bit. Indeed, it appears that the parties in Infineon did not
dispute the “series of bits” portion of the district court’s
claim construction, id. at 1091–92, and we generally
“decline to raise an issue sua sponte that the parties have
not presented,” WMS Gaming Inc. v. Int’l Game Tech.,
184 F.3d 1339, 1347 n.2 (Fed. Cir. 1999).
We conclude that “write request” is not limited to a
multiple-bit request. The plain language of the claim
does not contain that requirement. The claims require a
“write request” be issued to the memory device and that,
in response to the request, the device sample portions of
data. ’097 patent claim 1. Moreover, the specification
expressly discloses that “write request” can be embodied
8 RAMBUS INC. v. REA
in a single bit. ’097 patent col. 9 ll. 38–64. The specifica-
tion discloses a preferred embodiment in which a single
bit acts as a “Read/Write switch”: if its value is a 1, the
system requests a read; if its value is a 0, the system
requests a write. Id. “A claim construction that excludes
the preferred embodiment ‘is rarely, if ever, correct and
would require highly persuasive evidentiary support.’”
Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616
F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir.
1996)). There is no such evidentiary support here, and
Rambus points to nothing in the intrinsic record that
limits the claims to multi-bit requests. We conclude that
the Board properly construed “write request.”
*****
Because the Board correctly construed the “external
signal” and “write request” limitations, we affirm the
Board’s finding that Inagaki anticipates claims 1, 2, 7, 8,
10, and 14 of the ’097 patent.
III. Obviousness
The Board held that the reexamined claims would
have been obvious in view of iAPX in combination with
Inagaki. The Board concluded that one of skill in the art
could have modified the existing circuitry in the iAPX
system to use both edges of the clock signal to transfer
data at twice the rate based on Inagaki. Board Opinion at
21–28. The Board’s particular findings, however, differed
from those of the examiner. The examiner found that one
of skill in the art would have been motivated to modify
the iAPX system to transfer data on both the rising and
falling edges of the clock signal because the system “does
not show that all edges are used.” J.A. 1113. All parties
appear to agree on appeal that this fact finding was
erroneous and that iAPX employs both the rising and
falling edges.
RAMBUS INC. v. REA 9
The Board found that a skilled artisan “easily could
have modified the iAPX system in view of Inagaki’s clock-
ing scheme by dropping, instead of replacing, many
functions.” Board Opinion at 24. It found that a skilled
artisan could have achieved data transfer on both clock
edges by using a slower clock in Inagaki as a “trigger” for
the faster clocks disclosed in iAPX. Id. at 24–25. The
Board provided a number of reasons why skilled artisans
would modify the iAPX system to hold data for less than
one full cycle, enabling it to transfer data on both the
rising and falling edges of its clocks. Id. at 25–27.
The Board then addressed Rambus’s objective evi-
dence of nonobviousness, concluding that it lacked a
nexus to the ’097 patent claims. Id. at 28–32. The Board
found that Rambus’s evidence was not commensurate
with the scope of the claims and related to claim limita-
tions that were disclosed in the prior art. Id. The Board
found that Rambus’s licensing evidence lacked a nexus
because “it is well established that competitors have
many reasons for taking licenses which are not necessari-
ly related to unobviousness (i.e., litigation costs, etc.).” Id.
at 30.
Rambus argues that the Board erred in its obvious-
ness decision. It contends that the Board erroneously
placed the burden on Rambus to demonstrate nonobvi-
ousness. It asserts that, rather than rely on the examin-
er’s flawed findings, the Board relied on unsubstantiated
conjecture that one could combine iAPX and Inagaki into
an operable system. Rambus contends that the reference
actually teaches away from using both clock edges to
transfer data. It argues that strong objective evidence of
nonobviousness, including praise for the dual-edge func-
tionality in industry publications and the licensing of the
’097 patent, supports a conclusion that the claims would
not have been obvious.
10 RAMBUS INC. v. REA
The PTO counters that the Board properly held that
the claims would have been obvious. It contends that the
only claim limitation that iAPX does not disclose is the
synchronous writing of data to memory during the rising
and falling edges of a clock signal. It argues that Inagaki
expressly discloses that missing feature. The PTO argues
that a skilled artisan would have combined iAPX and
Inagaki because, even if the combination required further
modifications to the combined system, both references
seek to increase the speed and efficiency of memory-
writing operations. Regarding Rambus’s arguments that
the Board improperly relied on its own conjecture, the
PTO asserts that the Board is entitled to make its own
fact findings when interpreting prior art references and is
permitted to rely on common sense.
The PTO contends that Rambus’s objective evidence of
nonobviousness cannot overcome the strong showing of
obviousness. It asserts that Rambus’s evidence lacks a
nexus to the ’097 patent claims because the claims do not
require a specific clock speed. The PTO further argues
that Rambus’s patent licenses were not cogent evidence of
commercial success because they involved a portfolio of
patents, not simply the ’097 patent. It argues that Ram-
bus never showed that the value exchanged in the licens-
es was tied to the value of the invention claimed in the
’097 patent, as opposed to the other patents in the portfo-
lio or the licensees’ desire to avoid litigation costs.
We agree with Rambus that the Board committed
multiple errors in its obviousness decision. Due to these
errors, we vacate the Board’s decision and remand for
further proceedings. We address each of these errors
below.
A. Burden of Proof
The Board erroneously placed the burden on Rambus
to prove that its claims were not obvious. In reexamina-
tion proceedings, “a preponderance of the evidence must
RAMBUS INC. v. REA 11
show nonpatentability before the PTO may reject the
claims of a patent application.” Ethicon, Inc. v. Quigg,
849 F.2d 1422, 1427 (Fed. Cir. 1988); see also In re Jung,
637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining that
while “the applicant must identify to the Board what the
examiner did wrong, . . . the examiner retains the burden
to show invalidity”). The Board instead concluded that
“Rambus ha[d] not demonstrated that skilled arti-
sans . . . would not have been able to arrive at the broadly
claimed invention.” Board Opinion at 27; see also id. at
24 (holding that “Rambus fail[ed] to present evidence that
skilled artisans would have been unable to modify” iAPX
to achieve the claimed invention). That was legal error.
B. New Fact Findings
The Board also exceeded its limited role to “review of
the examiner’s decisions during prosecution.” In re Ste-
pan Co., 660 F.3d 1341, 1344 (Fed. Cir. 2011). Under the
Administrative Procedure Act, the PTO must ensure that
the parties before it are “fully and fairly treated at the
administrative level.” In re Leithem, 661 F.3d 1316, 1319
(Fed. Cir. 2011). Namely, the PTO must “provide prior
notice to the applicant of all ‘matters of fact and law
asserted’ prior to an appeal hearing before the Board.”
Stepan, 660 F.3d at 1345 (quoting 5 U.S.C. § 554(b)(3)).
This framework limits the Board’s ability to rely on
different grounds than the examiner. The Board may not
“rel[y] on new facts and rationales not previously raised to
the applicant by the examiner.” Leithem, 661 F.3d at
1319. Of course, the Board is not required to “recite and
agree with the examiner’s rejection in haec verba” in order
to ensure that the PTO has provided adequate notice. Id.And the Board may elaborate on the examiner’s findings,
so long as the appellant had an adequate opportunity to
respond to the Board’s findings during the PTO proceed-
ing. In re Adler, 723 F.3d 1322, 1328 (Fed. Cir. 2013).
The ultimate criterion is whether the appellant has had
12 RAMBUS INC. v. REA
before the PTO a “fair opportunity to react to the thrust of
the rejection.” Jung, 637 F.3d at 1365 (quoting In re
Kronig, 539 F.2d 1300, 1302–03 (CCPA 1976)) (internal
quotation marks omitted). If that condition is not met,
the Board must designate its decision a new ground of
rejection and provide the appellant with an opportunity to
respond. See Stepan, 660 F.3d at 1346; 37 C.F.R.
§ 41.77(b). Failure to do so violates the appellant’s notice
rights and warrants vacatur of the Board’s decision.
Stepan, 660 F.3d at 1346. Whether the Board relied on a
new ground of rejection is a legal issue that we review de
novo. Id. at 1343.
The Board erred when it supplied its own reasons to
combine iAPX and Inagaki. The examiner issued a specif-
ic finding—that one of skill in the art would have been
motivated to modify the iAPX system to transfer data on
both the rising and falling edges of the clock signal be-
cause the system “does not show that all edges are used.”
J.A. 1113. The PTO does not dispute that this finding
was erroneous. iAPX quite clearly employed both the
rising and falling edges of the clock signal. Recognizing
this problem, the Board instead found that a skilled
artisan would have been able to drop functionality that
iAPX discloses as occurring during the rising and falling
edges of the clock. Board Opinion at 23–24. It also pro-
vided additional ways to combine iAPX and Inagaki to
create a half-cycle system that could transfer data on both
the rising and falling edges of its clocks. Id. at 24–27.
These findings were completely new; the Board did not
elaborate on the examiner’s findings with “more detail.”
See Adler, 723 F.3d at 1328. While the Board’s findings
may ultimately be correct, we will not affirm a Board
rejection, like this one, which essentially provides a new
motivation to combine the references.
The Board has a procedure for issuing a new ground
of rejection in appeals of inter partes reexaminations. 37
C.F.R. § 41.77(b). This procedure ensures that appellants
RAMBUS INC. v. REA 13
have an appropriate opportunity to respond and, if neces-
sary, supplement the record before the examiner. We
cannot let the Board shortcut this procedure and deprive
appellants of their due process rights. To be clear, we are
not passing judgment on the merits of the Board’s find-
ings regarding the motivation to combine.
C. Objective Evidence of Nonobviousness
We also agree with Rambus that the Board erred in
its treatment of objective evidence of nonobviousness.
Such objective evidence can establish that “an invention
appearing to have been obvious in light of the prior art
was not.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 1538 (Fed. Cir. 1984). In some cases, that evidence
is “the most probative and cogent evidence in the record.”
Id. It helps “turn back the clock and place the claims in
the context that led to their invention.” Mintz v. Dietz &
Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012). “For
objective evidence . . . to be accorded substantial weight,
its proponent must establish a nexus between the evi-
dence and the merits of the claimed invention.” In re Kao,
639 F.3d 1057, 1068 (Fed. Cir. 2011) (quoting Wyers v.
Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010))
(emphasis omitted) (internal quotation marks omitted).
The Board erred when it found that Rambus’s objec-
tive evidence of nonobviousness lacked a nexus because it
related to unclaimed features. Rambus presented uncon-
tested evidence of long-felt need and industry praise due
to the claimed dual-edge data transfer functionality
claimed in the ’097 patent. For example, an article in the
Microprocessor Report stated that Rambus “ha[d] un-
veiled its radical new processor-to-memory interface and
DRAM architecture, which promise to create the most
significant change in processor/memory system architec-
ture since the introduction of the DRAM two decades
ago.” J.A. 2633. The article explains that the technology
“operat[es] with a 250-MHz clock and transfer[s] a byte of
14 RAMBUS INC. v. REA
data on each clock edge,” an approach that was “some-
what counter-intuitive.” Id. A press release issued by
Micron Technology, Inc., a Rambus competitor, referred to
the dual-edge data transfer functionality as a “revolution-
ary and pioneering technology” that “vastly improv[ed]”
the performance of memory chips. J.A. 1711. The Board
did not address any of this evidence.
The Board also erroneously found that Rambus’s evi-
dence relating to high-speed memory systems was not
commensurate with the scope of the claims because the
claims “do not recite a specific clock speed and therefore
embrace slow memory devices.” Board Opinion at 29–30.
Such a strict requirement was improper. Objective evi-
dence of nonobviousness need only be “reasonably com-
mensurate with the scope of the claims,” and we do not
require a patentee to produce objective evidence of nonob-
viousness for every potential embodiment of the claim.
Kao, 639 F.3d at 1068; In re Glatt Air Techniques, Inc.,
630 F.3d 1026, 1030 (Fed. Cir. 2011) (“[W]e have consist-
ently held that a patent applicant ‘need not sell every
conceivable embodiment of the claims in order to rely
upon evidence of commercial success.’”) (quoting In re
DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008)). Moreover,
Rambus’s evidence shows beyond dispute that the claimed
dual-edge data transfer functionality is what enabled the
praised high-speed transfer of data. A Byte Magazine
article explained that, “by using both edges of a 250-MHz
clock,” Rambus’s memory chips “will deliver a tenfold
increase in component throughput.” J.A. 2623. The
Electronic Engineering Times likewise described the dual-
edge functionality as “designed to burst the bottleneck
between processors and DRAMs in desktop systems.” J.A.
2624–25. The Board did not point to any contrary evi-
dence, and we have not found any in the record.
Nor is there substantial evidence to support the
Board’s finding that Rambus’s licensing evidence lacked a
nexus to the reexamined claims. Rambus’s undisputed
RAMBUS INC. v. REA 15
evidence linked its commercial success to the claimed
dual-edge data transfer functionality. For example, an
Electronic Engineering Times article relayed that Fujitsu
Ltd., NEC Corp., and Toshiba Corp. had paid “substantial
license fees to participate in the technology.” J.A. 2624.
The article noted that a “key part” of Rambus’s licensed
memory technology is the memory bus that “moves one
byte on each clock edge.” J.A. 2625. By the mid-1990s,
Rambus also obtained licenses from Hitatchi, Ltd., Oki
Electric Industry Co., Lucky Goldstar, and Intel Corp.
J.A. 2099. The Board held that this evidence lacked a
nexus because “competitors have many reasons for taking
licenses which are not necessarily related to unobvious-
ness,” Board Opinion at 30, but this finding lacks any
supporting evidence. Similarly, there is no evidence in
the record to support the PTO’s assertion that the com-
mercial value of the licenses stemmed from other licensed
Rambus patents. Indeed, the only evidence before the
Board points to a contrary conclusion.
The Board’s finding that all of Rambus’s evidence
lacked a nexus because dual-edge functionality was
already disclosed in Inagaki, and therefore “not novel,” is
also erroneous. Id. at 29–30. While objective evidence of
nonobviousness lacks a nexus if it exclusively relates to a
feature that was “known in the prior art,” Ormco Corp. v.
Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006), the
obviousness inquiry centers on whether “the claimed
invention as a whole” would have been obvious, 35
U.S.C. § 103. Rambus’s objective evidence of nonobvious-
ness was not limited to the dual-edge functionality in
Inagaki that transferred a single bit each half-cycle of an
external clock. See J.A. 2955–58. At least some of Ram-
bus’s objective evidence of nonobviousness pertained to
Rambus’s overall memory device architecture. On re-
mand, the Board should be careful to parse the evidence
that relates only to the prior art functionality and the
evidence that touted Rambus’s patented design as a
16 RAMBUS INC. v. REA
whole. We decline to make these fact findings for the first
time on appeal. We leave it to the PTO, for the ’097
patent claims that remain on remand, to determine if
Rambus’s objective evidence of nonobviousness pertains to
the Rambus device or simply to the dual-edge functionali-
ty disclosed in Inagaki.
*****
The Board erred when it failed to provide Rambus an
opportunity to respond to its new grounds for rejecting the
claims as obvious. The Board also erred in its analysis of
Rambus’s objective evidence of nonobviousness. Due to
these errors, we vacate the Board’s decision that claims
3–5, 11, 12, 26, 28–32, and 35 are unpatentable. We
express no opinion, however, as to whether those claims
should issue.
CONCLUSION
For the foregoing reasons, we affirm-in-part and va-
cate-in-part the Board’s decision and remand for further
proceedings.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Costs to Appellant.