International Business Machines Corporation v. Rambus Inc
Filing
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ORDER REGARDING SUPPLEMENTAL BRIEFING. Signed by Judge Jeffrey S. White on 11/28/11. (jjoS, COURT STAFF) (Filed on 11/28/2011)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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INTERNATIONAL BUSINESS MACHINES
CORPORATION,
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For the Northern District of California
United States District Court
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No. C 10-04017 JSW
(Related case: C10-3736 JSW)
Plaintiff,
ORDER REGARDING SUPPLEMENTAL
BRIEFING
v.
RAMBUS INC.,
Defendant.
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The parties have filed cross-motions for summary judgment on the issue of whether the
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United States Patent and Trademark Office (“PTO”) erred in denying the request by Plaintiff
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International Business Machines Corporation (“IBM”) to file motions. Pursuant to the PTO’s
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Standing Order, “[a] suggestion to add an application or patent to an interference must be in the
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form of a miscellaneous motion.” (Declaration of Tina Hulse, Ex. J at ¶ 203.2.)
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37 C.F.R. § 41.121(a) provides:
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(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.
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Both parties appear to agree that the PTO has discretion to determine whether a party may or may
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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
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file a motion appears to apply only to substantive and responsive motions, not miscellaneous
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motions.1
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Therefore, the Court HEREBY DIRECTS the parties to file supplemental briefing to clarify
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on what legal authority they rely for the proposition that the PTO has discretion to not allow a party
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to file a miscellaneous motion. IBM shall file its response of no more than five pages by December
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5, 2011. Rambus shall file its response of no more than five pages by December 12, 2011. The
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Court HEREBY VACATES the hearing on the parties’ cross-motions for summary judgment
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currently set for December 2, 2011 and will reset it at a later date if necessary.
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IT IS SO ORDERED.
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For the Northern District of California
United States District Court
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Dated: November 28, 2011
JEFFREY S. WHITE
UNITED STATES DISTRICT JUDGE
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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.
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