International Business Machines Corporation v. Rambus Inc

Filing 61

ORDER REGARDING SUPPLEMENTAL BRIEFING. Signed by Judge Jeffrey S. White on 11/28/11. (jjoS, COURT STAFF) (Filed on 11/28/2011)

1
2
3
4
5
6

IN THE UNITED STATES DISTRICT COURT

7
FOR THE NORTHERN DISTRICT OF CALIFORNIA

8
9

INTERNATIONAL BUSINESS MACHINES
CORPORATION,

11
For the Northern District of California

United States District Court

10

12
13
14

No. C 10-04017 JSW
(Related case: C10-3736 JSW)

Plaintiff,
ORDER REGARDING SUPPLEMENTAL
BRIEFING

v.
RAMBUS INC.,
Defendant.

15

/

16
17

The parties have filed cross-motions for summary judgment on the issue of whether the

18

United States Patent and Trademark Office (“PTO”) erred in denying the request by Plaintiff

19

International Business Machines Corporation (“IBM”) to file motions. Pursuant to the PTO’s

20

Standing Order, “[a] suggestion to add an application or patent to an interference must be in the

21

form of a miscellaneous motion.” (Declaration of Tina Hulse, Ex. J at ¶ 203.2.)

22

37 C.F.R. § 41.121(a) provides:

23

(1) Substantive motions. Consistent with the notice of relief, if any, and to the extent
the Board authorizes, a party may file a motion: ...
(2) Responsive motions. The Board may authorize a party to file a motion to amend or
add a claim, to change inventorship, or otherwise to cure a defect raised in a notice of
requested relief or in a substantive motion.
(3) Miscellaneous motions. Any request for relief other than substantive or responsive
must be filed as a miscellaneous motion.

24
25
26
27

Both parties appear to agree that the PTO has discretion to determine whether a party may or may

28

not file a motion. (Rambus’ Mot. at ; Declaration of Andrew Metz, ¶ 26.) However, according to
the plain language of this regulation, the PTO’s discretion to authorize, or not authorize, a party to

1

file a motion appears to apply only to substantive and responsive motions, not miscellaneous

2

motions.1

3

Therefore, the Court HEREBY DIRECTS the parties to file supplemental briefing to clarify

4

on what legal authority they rely for the proposition that the PTO has discretion to not allow a party

5

to file a miscellaneous motion. IBM shall file its response of no more than five pages by December

6

5, 2011. Rambus shall file its response of no more than five pages by December 12, 2011. The

7

Court HEREBY VACATES the hearing on the parties’ cross-motions for summary judgment

8

currently set for December 2, 2011 and will reset it at a later date if necessary.

9

IT IS SO ORDERED.

11
For the Northern District of California

United States District Court

10
Dated: November 28, 2011
JEFFREY S. WHITE
UNITED STATES DISTRICT JUDGE

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
1

28

Andrew Metz cites to 37 C.F.R. § 41.120(a)(i), which does not currently exist. It is not clear
whether this citation is a typographical error or refers to an earlier regulation that has since been
amended.
2