Hyundai Electronics, et al v. Rambus, Inc.

Filing 3892

ORDER DENYING 2067 MOTION for Judgment as a Matter of Law MOTION for New Trial filed by Hynix Semiconductor Deutschland GmbH, Hynix Semiconductor America Inc., Hynix Semiconductor U.K. Ltd, Hynix Semiconductor Inc. Signed by Judge Ronald M. Whyte on 1/27/2009. (rmwlc1, COURT STAFF) (Filed on 1/27/2009)

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF

E-filed:

1/27/2009

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH, Plaintiffs, v. RAMBUS INC., Defendant. No. C-00-20905 RMW ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT [Re Docket No. 2067]

Following a trial on infringement and validity, the jury returned a verdict that Hynix1 infringed certain Rambus patents and that Hynix had not proven that those patents were invalid. Docket No. 2054 (Apr. 26, 2006). The court deferred ruling on post-trial motions from the patent trial until a jury determined Hynix's antitrust and fraud claims. On March 26, 2008, a different jury found that Rambus did not monopolize various technology markets or commit fraud. Docket No. 3613. The court has denied Hynix's motion for a new trial with respect to those claims. Hynix Semiconductor Inc. v. Rambus Inc., 2008 WL 2951341 (N.D. Cal. Jul. 24, 2008).
1

The court collectively refers to the four Hynix entities as "Hynix."

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

The court now returns to the post-trial motions from the patent case. This order addresses Hynix's motion for judgment as a matter of law or for a new trial on the basis that Rambus's asserted claims do not meet the written description requirement of 35 U.S.C. § 112, ¶ 1. Hynix argues that the record developed at trial entitles it to judgment as a matter of law. In the alternative, Hynix moves for a new trial, assigning error to the court's instruction to the jury regarding the written description requirement and two evidentiary rulings. Hynix also argues that the jury's verdict went against the clear weight of the evidence. Rambus opposes the motion. The court has reviewed the papers and considered the arguments of counsel. For the reasons set forth below, the court denies the motion. I. LEGAL STANDARDS A. Judgment as a Matter of Law

Under Fed. R. Civ. P. 50(a) judgment as a matter of law is warranted where "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." Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133, 149 (2000). Judgment as a matter of law may be granted where "the evidence, construed in the light most favorable to the nonmoving party, permits only one reasonable conclusion, and that conclusion is contrary to that of the jury." White v. Ford Motor Co., 312 F.3d 998, 1010 (9th Cir. 2002). A court reviews all the evidence in the record, but it disregards evidence favorable to the moving party that the jury is not required to believe: [I]n entertaining a motion for judgment as a matter of law, the court should review all of the evidence in the record. . . . [T]he court must draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence. Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge. Thus, although the court should review the record as a whole, it must disregard all evidence favorable to the moving party that the jury is not required to believe. That is, the court should give credence to the evidence favoring the nonmovant as well as that evidence supporting the moving party that is uncontradicted and unimpeached, at least to the extent that that evidence comes from disinterested witnesses. Reeves, 530 U.S. at 150 (quotations and citations omitted). In other words, the court may only grant Hynix's motion for judgment as a matter of law if
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 2

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

"(1) the movant has established its case by evidence that the jury would not be at liberty to disbelieve and (2) the only reasonable conclusion is in the movant's favor." Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 1065 (Fed. Cir. 1998) (citation and quotations omitted). B. Motion for a New Trial

After a jury has returned its verdict, the court may grant a new trial "for any reason for which a new trial has heretofore been granted in an action at law in federal court." Fed. R. Civ. P. 59(a)(1)(A). Hynix's motion for a new trial rests on a number of grounds, including that the verdict was against the weight of the evidence. Such a motion may be granted if "the verdict is contrary to the clear weight of the evidence[.]" United States v. 4.0 Acres of Land, 175 F.3d 1133, 1139 (9th Cir. 1999). "[A] district court may not grant or deny a new trial merely because it would have arrived at a different verdict." Id. While there is no formulaic test for determining whether a verdict is contrary to the clear weight of the evidence, "[i]f, having given full respect to the jury's findings, the judge on the entire evidence is left with the definite and firm conviction that a mistake has been committed, it is to be expected that he will grant a new trial." Landes Constr. Co., Inc. v. Royal Bank of Canada, 833 F.2d 1365, 1372 (1987). In forming that conviction, the court may consider the credibility of witnesses and persuasiveness of the evidence. Id. Hynix also argues that a new trial is justified based on an erroneous jury instruction and the court's failure to exclude allegedly improper testimony. If prejudicial, these grounds also could justify a new trial. See 11 WRIGHT, MILLER & KANE, FEDERAL PRACTICE AND PROCEDURE § 2805, at 55 (2d ed. 1995) (noting that "any error of law, if prejudicial, is a good ground for a new trial" and listing other common reasons for holding a new trial). In considering whether Hynix was prejudiced, the court examines the cumulative weight of any errors. Jerden v. Amstutz, 430 F.3d 1231, 1240-41 (9th Cir. 2005). II. THE JURY INSTRUCTION ON WRITTEN DESCRIPTION The court instructed the jury regarding the written description requirement as follows: A patent claim is invalid if the patent does not contain a written description of each and every requirement of that claim. As I have previously explained to you, to obtain a patent one must file an application with the Patent and Trademark Office. The
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 3

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

application includes what is called a "specification," which must contain a written description of the claimed invention telling, among other things, what the invention is and how it works. That "specification" may then be carried forward into later patent applications that are based on the original application. The claims in those later patent applications may be amended claims from the original application or new claims and those amended or new claims may narrow or broaden the scope of the originally filed claims. The purpose of the written description requirement is to make sure that the inventor had in mind, that is, had invented at the time the original patent application was filed, the full scope of the invention as finally claimed in a later patent which is based upon the original specification. In this case, the original patent application was filed April 18, 1990. Therefore, the question for you is whether that original patent application describes each requirement of the Asserted Claims, specifically each requirement of claim 34 of the '105 patent, claims 24 and 33 of the '918 patent, claim 33 of the '120 patent, claims 32 and 36 of the '020 patent, claims 9, 28 and 40 of the '916 patent and claim 16 of the '863 patent. The written description requirement is not satisfied if a person of ordinary skill in the field reading the original specification would not recognize that the specification describes the invention as finally claimed in the amended or new claims. Although the original patent application must describe each and every requirement of a patent claim, it need not use the exact words found in the claim or the specific words "the invention is." Further, a requirement in a claim need not have been specifically disclosed in the original patent application if persons of ordinary skill in the field reading that application would understand the missing requirement must necessarily be present. The written description test is an objective test: does the patent application as originally filed support the claim in question? In this case, you must decide whether the original patent application filed on April 18, 1990 would have disclosed to one of ordinary skill in the art each and every requirement of the Asserted Claims. Since the specification for each of the Patents-in-Suit is substantively the same as the specification filed on April 18, 1990, you can decide the written description question by examining the patent's specification and determining whether it describes each and every requirement of the patent claim at issue. If you find that Hynix has proved that any of the Asserted Claims is not supported by the original patent application filed April 18, 1990, then you must find that the written description for that claim has not been met. Docket No. 2050, 17-18 (Apr. 20, 2006).2 The court's instruction accords with various model instructions regarding the written description requirement. See, e.g., Model Patent Jury Instructions

Each juror received a copy of all of the jury instructions and a copy of the special verdict form to assist them in their deliberations. See Trial Tr. 3182:24-3183:8 (Apr. 12, 2006).
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 4

2

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

for the N.D. Cal. 4.2a (Nov. 29, 2007);3 AIPLA's Model Patent Jury Instructions 9 (2008);4 Fed. Cir. Bar Ass'n Draft Model Patent Jury Instructions 5.2 (Dec. 5, 2008).5 Nonetheless, Hynix objected to the emphasized portion of the instruction. Trial Tr. 2949:202952:5 (Apr. 11, 2006). To Hynix, "[d]isclosure in the specification of the requirements of the claims is a necessary, but not sufficient condition for compliance with the written description requirement." Mot. 20:11-12. The second condition envisioned and proposed by Hynix is that "[a] broad claim is invalid where the entirety of the specification indicates that the invention is of a much narrower scope than what is claimed." Id. 2951:17-21. Hynix draws this language from Cooper Cameron Corp. v. Kvaerner Oilfield Products, Inc. 291 F.3d 1317, 1323 (Fed. Cir. 2002). But in the same opinion, the Federal Circuit remarked that "[u]se of particular language explaining a decision does not necessarily create a new legal test." Id. This guidance applies here. The language from Cooper Cameron requested by Hynix did not create a new test for determining whether the written description requirement is met. It used the language merely to explain the court's prior holding in Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998), and to distinguish it. Id. And the distinction reveals the correctness of the instruction given to the jury here. The Federal Circuit explained that in Gentry Gallery "there was no description or support whatever in the . . . patent [for the claimed invention]." Id. On the other hand, "Cooper's claims to the location of the workover port in the '119 patent are supported by the figures showing that the workover port is in fact above the tubing hanger and below the BOP bore." Id. The figure in Cooper's patent demonstrated that the inventor possessed the claimed invention, while in Gentry Gallery, the specification's lack of any support for the claimed invention proved that the inventor did not possess the claimed invention. Hence, the test applied in Copper Cameron as to http://www.cand.uscourts.go v / CAND/FAQ.nsf/60126b66e42d004888256d4e007bce2 9/4b43c2137e17e03a88257393007bac13/$FILE/NDModel.nov07.pdf h t t p : / / w w w . a i p l a . o r g / C o n t e n t / C o n t e n t G r o u p s / Pu b l i c a t i o n s 1 / P u b l i c a t i o n s _ a v a i l a b l e _ f or_viewing1/2008_03_27_AIPLA_Model_Jury_Instructions.pdf http://memberconnections.com/olc/filelib/LVFC/cpages/9008/Library/National%20Ju ry%20Instructions.pdf
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 5
5 4 3

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

whether the patentee met the written description requirement was simply whether the specification disclosed enough "to convince a person of skill in the art that the inventor possessed the invention." LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Disclosure of each limitation of the claimed invention satisfies this test. To be sure, the challenged jury instruction does not make explicit every nuance of the written description doctrine. For example, it is a general rule that "[a] claim will not be invalidated on section 112 grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language." Id. This leniency arises from the assumption that patents are read by persons of ordinary skill in the art, and that these persons do not need well-known background material recited over and over. Id. But "a patentee cannot always satisfy the requirements of section 112, in supporting expansive claim language, merely by clearly describing one embodiment of the thing claimed." Id. at 1346. Where an art is unpredictable, for example, a person of ordinary skill might recognize from the specification that the inventor possessed only a single species of a thing, and not the entire genus. See id. at 1346 (explaining cases); Rambus Inc. v. Hynix Semiconductor, Inc., 569 F. Supp. 2d 946, 994-96 (N.D. Cal. 2008). The court's instruction can be read to encompass this notion, but it does not call attention to the issues raised by using a species-disclosure to support a genus-claim. Nevertheless, any error in omitting this wrinkle in written description law did not prejudice Hynix. Hynix did not propose a jury instruction along these lines; instead, Hynix proposed an instruction similar to the court's but with an improper emphasis on the inventors' mental state. See Docket No. 1998 at 18 (Apr. 10, 2006). Given that the court's instruction on written description accurately reflected the law and that Hynix's proposed instruction was flawed, the court finds no error in the instruction and denies the motion for a new trial on this ground. III. THE HIGHLIGHTED SPECIFICATIONS Hynix also seeks a new trial based on the alleged prejudice Hynix suffered when inventor Dr. Mark Horowitz and former Rambus engineer Joel Karp testified about the specification's
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 6

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

disclosure and displayed highlighted and annotated copies of the specification to the jury.6 To explain why the court admitted this testimony, a certain amount of background is required. A. Background 1. Rambus's Motion in Limine to Exclude Inventor Testimony

The issue of who can testify about what a specification discloses first arose with Rambus's motion in limine to exclude certain deposition testimony of the inventors, Drs. Michael Farmwald and Mark Horowitz. See Docket No. 1612 (Jan. 27, 2006). Rambus argued that a claim's written description support should be determined from "the face of the application" alone. See id. at 2, fn.2 (quoting New Railhead Mfg. LLC v. Vermeer Mfg. Co., 298 F.3d 1290, 1295 (Fed. Cir. 2002). Hynix strenuously opposed the motion. Docket No. 1669 (Feb. 9, 2006). It argued that "extrinsic evidence, including inventor testimony, is frequently used in determining whether the written description requirement is met." Id. at 2. "The finder of fact typically evaluates extrinsic evidence ­ including testimony of inventors, qualified experts, and others skilled in the art ­ in determining whether the written description requirement is met." Id. at 3 (emphasis in original). Hynix noted that Drs. Farmwald and Horowitz had not been qualified as expert witnesses, but maintained that "their testimony, which characterizes their 'inventions' and the disclosures of the initial application, is probative of what one of ordinary skill in the art would understand from reading the patent." Id. at 8. The court heard lengthy argument on the motion. See generally Hrg. Tr. 57:2-75:14 (Feb. 28, 2006). The hearing culminated with the following discussion between the court and counsel: The Court: Well, unless I'm missing something, then, I don't think you and Mr. Detre agree, or disagree. You're both saying that the inventors could testify as one skilled in the art as to what the disclosure shows. Right. But he can't testify to an undisclosed -- he can't say, "well, I really meant to talk about delayed lock loop." He has to say, "I read the spec and it's there." Right.

Mr. Furniss:

The Court:
6

The demonstratives were marked as Exhibits 5703 and 5705. The court did not admit them into evidence. The jury did not have these demonstratives during its deliberations.
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 7

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 The Court: Mr. Furniss: The Court: Mr. Detre: The Court: Id. 73:3-75:13.

... But if the question were, "is this disclosed in your specification," that's okay? Yes. Okay.

Following the hearing, the court denied Rambus's motion. Docket No. 1790 (Mar. 1, 2006). The court noted that extrinsic evidence is admissible to establish what a person of ordinary skill would perceive from reading the specification. Id. at 18 (citing Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004)). Thus, because Drs. Farmwald and Horowitz possessed (at least) ordinary skill in the art, their testimony was relevant to ascertain what the specification would disclose to a person of ordinary skill. Id. 2. Discussion on the First Day of Trial

A portion of the first day of trial was sacrificed to resolving evidentiary objections. See generally Tr. 1-144 (Mar. 15, 2006). Rambus noted that various exhibits were only relevant "if we have Dr. Farmwald find support for the various inventions in the specification. We don't intend to do that with Dr. Farmwald . . . ." Id. 125:21-126:4. Hynix responded that "if he doesn't ask where it is in the spec, I am sure I am going to ask [but not during] our case-in-chief." Id. 126:5-9. Rambus agreed that Hynix could ask such a question, but that such questions would have to wait for Hynix's rebuttal case because Rambus did not "intend to open the door with Dr. Farmwald." Id. 126:13-17. Hynix answered incredulously: Mr. Furniss: So the inventor himself isn't going to specify that the spec supports his patent. I'll be moving for a JMOL at that point. If the inventor doesn't say the spec supports the invention, I don't know how these claims can be valid. That's what I was going to ask. If he doesn't touch it, are you going to want to? I might save it for when I recall him, but I'm certainly going to ask the inventors where the support is in the spec for these inventions, yes, I will call them in advance. Whether it comes in in the their case-in-chief or whether I call him in recall, it depends on the direct.

ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 8

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Id. 126:18-127:8. At that point, Rambus clarified that it would "put in evidence in support of the spec . . . just not through Dr. Farmwald." Id. 127:12-14. The court ended the discussion, informing the parties that the issue would be determined as the evidence developed and that Hynix should seek permission before pursuing such a line of questioning with Dr. Farmwald during Rambus's case-inchief. Id. 127:15-17. 3. Mr. Karp's Testimony

Hynix called former Rambus Vice-President of Intellectual Property Joel Karp during its invalidity case. See Trial Tr. 2305:17-23 (Apr. 5, 2006). Prior to Hynix's calling Mr. Karp, Rambus moved to limit the scope of his examination to preclude Hynix from questioning him about written description support for the asserted claims. Docket No. 1939 (Mar. 29, 2006). Hynix opposed the motion. Docket No. 1949 (Mar. 30, 2006). Hynix argued: "the Federal Circuit has never limited the range of evidence that may be considered probative on this issue." Id. 3:13-14. "Testimony of experts, inventors, and other skilled artisans have been evaluated in determining the sufficiency of a written description." Id. 3:15-16. To be clear, Hynix's position was that "Mr. Karp and Mr. Steinberg are not being called as experts, but as percipient witnesses, so any concerns in Rambus's motion relating to this issue are moot." Id. 1:8-9. The court granted in part and denied in part Rambus's motion. Docket No. 2026, Ex. 5 (Apr. 18, 2006) (email ruling of April 2, 2006). "Karp and Steinberg can be questioned on why they sought the amended claims, where in the specification there is support for the claims in suit and whether they talked with the inventors about the applications." Id. at 1. The court rejected Rambus's argument that testimony by Mr. Karp about written description support for the claimed inventions would be expert testimony. Id. at 2. Against this backdrop, Hynix began to question Mr. Karp. Hynix first established Mr. Karp's technical background and experience in the DRAM industry. Trial Tr. 2307:9-2311:7 (Apr. 5, 2006). Mr. Karp is an engineer, not a lawyer; nonetheless, Hynix also established his background and experience dealing with patents. Id. 2311:8-2317:1. Hynix then began to question Mr. Karp

ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 9

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

about the contents of the patents' specification. E.g., id. 2332:13-19; 2333:22-2334:14 (discussing figures); 2336:16-2339:9 (discussing the "summary of invention" portion of the specification). After "enough patent reading for the day," id. 2340:15-16, the trial adjourned. Hynix concluded its examination of Mr. Karp the next day, and Rambus began its crossexamination. See Tr. 2369:1-6 (Apr. 6, 2006). Mr. Karp further explained his history in the DRAM field, his experience as an inventor, and his dealings with patent prosecutors. Id. 2382:22-2387:1. Rambus finally turned to the subject of the patents' specification and how Mr. Karp first read it in the early nineties as a published patent application while he was a Samsung employee. Id. 2391:132393:15. At that point, Mr. Karp testified that he recalled recognizing in the early nineties a DLL circuit disclosed in Figure 12 of the specification. Id. 2394:7-2395:13. Hynix did not object. See id. Rambus continued to question Mr. Karp about the specification. The following exchange marks the beginning of the testimony Hynix feels unfairly prejudiced its right to a fair trial: Q: Mr. Karp, do you understand that one of the issues involved in this case is a contention as to whether the specification of the patent application supports the claims involved in this suit? Yes. And last week did I ask you to take a copy of the application and find the support in the application that you could find for various features? Yes. Did you do that on your own? I did. How long did it take you to do it? Less than three hours, but more than two hours. Somewhere in that time frame. Okay. And what did you do? I just read the application, and as you say things that related to specific features -- I think there were five features that I was looking for. Okay.

A: Q: A: Q: A: Q: A: Q: A: Q:

ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 10

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

A: Q: A:

Five or six. I brought my markup with me. Okay. So you have a copy of what you did? Yes. ...

Q: A: Q: A:

What did you look at in order to perform this exercise? I looked at the original PCT application, the one that I'd seen in 1991. Why did you pick that one? Well, I don't know. Well, it's really the same. It's really the same disclosure that was ­ that was used in all follow-on patents.

Id. 2413:3-2414:22. After a lengthy sidebar on an unrelated topic, Rambus offered Mr. Karp's marked-up patent application, at which point Hynix objected on the basis that such testimony would be improper expert opinion testimony. See id. 2452:12-2453:1. Mr. Karp testified that he searched the specification for support for "the DLL," "the access time register, the latency register," "auto-precharge," "dual edge clocking," and "block size." Id. 2454:24-2455:6. He explained that what he marked in the specification "reflect[ed] the support in the specification that [he] was aware of during the time [he] worked at Rambus, including October of 1998." Id. 2455:19-2456:7. Over the next fifteen minutes, Rambus questioned Mr. Karp on where he found support in the application for various features, and Mr. Karp used the highlighted specification to identify for the jury the specific language he felt provided written description support for the five features listed above. Id. 2456:17-2467:23. The highlighted specification was not admitted into evidence and was only used for demonstrative purposes. 4. Dr. Horowitz's Testimony

Rambus called Dr. Horowitz in rebuttal to Hynix's invalidity case. See Trial Tr. 2866:1-13 (Apr. 11, 2006). As with Mr. Karp, Rambus asked Dr. Horowitz a number of questions about the specification. See id. 3024:21-3026:16 (Apr. 12, 2006). Similarly, Rambus provided Dr. Horowitz with a copy of the specification and asked him to find written support for a number of features. Id. 3029:23-3030:17. Dr. Horowitz then testified for approximately forty-five minutes regarding where
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 11

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

he found written description support for the features discussed by Mr. Karp. Id. 3030:18-3066:12. Hynix did not object during Dr. Horowitz's testimony. See id. Prior to Dr. Horowitz's testimony, however, Hynix objected that to any untimely, improper expert testimony. Id. 3003:19-25. Hynix conceded that it intended to examine Dr. Horowitz on the written description support for the claims and that its objection was "to the use of this on direct with Professor Horowitz." Id. 3008:7-20. Hynix also suggested that "[i]f it's going to be something that ends up potentially being marked as a demonstrative and is properly used in light of testimony that is elicited by [Hynix] from Dr. Horowitz, then I think that might address our concerns." Id. 3003:2025. The court permitted Rambus to address the subject on its direct examination of Dr. Horowitz to streamline the presentation of evidence. See id. 3008:7-20; see also 3067:3-3068:15 (explaining the percipient nature of Dr. Horowitz's testimony). B. Waiver and Estoppel

The bulk of Rambus's opposition argues that Hynix waived any objection to the testimony using the highlighted specifications for demonstrative purposes and that Hynix should be judicially estopped from objecting to such testimony based on its arguments earlier in the trial. 1. Waiver

To assign error to an evidentiary ruling, a "timely objection or motion to strike" must appear in the record that "stat[es] the specific ground of objection, if the specific ground was not apparent from the context." Fed. R. Evid. 103(a)(1). a. Hynix's Objections to Mr. Karp's Testimony

With respect to Mr. Karp's testimony, Hynix filed a motion to strike the testimony the day after it occurred. Docket No. 1988 (Apr. 7, 2006). Hynix also objected to the use of the highlighted demonstrative during Mr. Karp's testimony. Trial Tr. 2452:22-2453:18 (Apr. 6, 2006). Rambus argues that Hynix's waiver occurred during the court's resolution of the motion to strike. The court tentatively ruled that Mr. Karp's testimony was admissible "to negate an inference that Clark [sic, Karp] didn't believe the specification supported the disclosure of certain material that turns out to be in the claim." Id. 2556:20-2557:5 (Apr. 7, 2006). The court also stated that it would
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 12

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

not admit the highlighted specification into evidence. Id. 2557:8-19. The court then permitted counsel to argue, at which point Hynix stated, "We're satisfied with the tentative." Id. 2602:22-23. Rambus grumbled about the demonstrative not coming into evidence, but Hynix made no further argument. See id. 2602:10-2604:22. Hynix argues that its "acquiescence in the rulings of the Court was not a waiver of these objections." Reply at 7:21. The court has found no Ninth Circuit authority on point, but persuasive out-of-circuit authority undermines Hynix's position. "When an objecting lawyer withdraws his objection after the judge rules, the judge has no reason to reconsider his ruling, and the other side's lawyer has no reason to propose an alternative course of action." United States v. Rogers, 918 F.2d 207, 212 (D.C. Cir. 1990). "If, therefore, a lawyer has acquiesced in a ruling he once claimed was erroneous, the lawyer must reassert his prior objection if he expects to preserve it for appeal." Id.; see also United States v. Schartner, 426 F.2d 470, 476 (3d Cir. 1970) (suggesting that withdrawal of an objection waives any right to raise the objection again). Given the adverse nature of the court's tentative ruling, the court is inclined to treat Hynix's statement as acquiescence to the court's ruling and the lack of any further objection as a waiver of Hynix's ability to object to Mr. Karp's testimony. Nevertheless, prudence dictates continuing on to the merits of Hynix's objection. E.g., United States v. Washington, 12 F.3d 1128, 1137 (D.C. Cir. 1994) (remarking in dictum that "the utterance of the word 'okay' does not always constitute a withdrawal of an objection"). b. Hynix's Objections to Dr. Horowitz's Testimony

Hynix did not file a motion to strike Dr. Horowitz's testimony. Nor did Hynix object during the testimony. Following the testimony, the court explained its reasons for permitting the testimony, and again Hynix said nothing. See Trial Tr. 3066:20-3069:18 (Apr. 12, 2006). It did, however, complain prior to Dr. Horowitz's testimony about the demonstrative and the possibility of untimely, improper expert testimony. See id. 3003:7-3008:20. The record is not perfectly clear, but Hynix's final statement of its grievance was not the subject area of Dr. Horowitz's testimony but "the use of this [demonstrative] on direct with Professor Horowitz." Id. 3008:15-17. It is counsel's responsibility to make objections clearly. Cf. Fed. R. Evid. 103(a)(1)
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 13

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

(objection must "stat[e] specific ground"); United States v. Khan, 993 F.2d 1368, 1377 (9th Cir. 1993) ("[T]o avail himself of the benefit of a continuing objection, [counsel] was required to request that his earlier objection apply to all other like evidence."). But the court is not blind to the reality of complex litigation, where trial attorneys must burn the candle at both ends night after night. For example, Hynix's counsel learned of the demonstrative (and the likely substance of Dr. Horowitz's testimony) at 10:15 p.m. on the eve of the testimony at issue. Trial Tr. 3003:9-13. Hynix phrased its objection the next morning between 8:05 and 8:15. See id. By then, the parties had been in trial for four weeks. At that point, a slight slippage in the clarity of an objection is understandable. Here, Hynix articulated some concern that the demonstrative and accompanying testimony might be improper expert testimony. Although Hynix failed to make a timely and clear objection to Dr. Horowitz's testimony, the court will nevertheless examine the merits of the objection as if Hynix clearly made it 2. Estoppel

Rambus argues that Hynix should be judicially estopped from arguing that Dr. Horowitz and Mr. Karp's testimony is inadmissible based on Hynix's arguments before and during trial that inventors and persons of skill in the art may testify to what a specification discloses. Judicial estoppel exists to prevent parties from gaining an advantage by flip-flopping or "the manipulative assertion of inconsistent positions, factual or legal." Helfand v. Gerson, 105 F.3d 530, 535 (9th Cir. 1997). It can be appropriate where a party takes a "clearly inconsistent" position, the party succeeded in persuading the court of its prior position, and the change in position would give an unfair advantage. Biomedical Patent Management Corp. v. Cal. Dept. of Health Servs., 505 F.3d 1328, 1341 (Fed. Cir. 2007). Hynix's sole argument in opposition is that Rambus's invocation of judicial estoppel "misses the point." Reply at 7:22. This is not very persuasive. Until Mr. Karp testified, Hynix urged that testimony from persons of skill in the art about what they perceive in a specification is admissible evidence relevant to the written description inquiry. Rambus disagreed, but the court sided with Hynix. Adapting to the court's rulings, Rambus offered the testimony of Mr. Karp and Dr. Horowitz
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 14

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

as to what they perceived in the specification and Hynix now complains that such testimony is inadmissible expert testimony. Cries for the application of judicial estoppel greatly outnumber the instances in which it is appropriate, but the doctrine appears to apply here. Nonetheless, the court will address the merits of Hynix's objections. C. The Percipient Nature of the Testimony

Hynix argues that it deserves a new trial because the testimony of Dr. Horowitz and Mr. Karp was expert testimony. Hynix's motion, however, is conclusory on this point and does not explain why their testimony falls under Federal Rule of Evidence 702's definition of expert testimony. The Federal Rules of Evidence do not explicitly define "expert testimony." Rule 702 encompasses any helpful "scientific, technical, or other specialized knowledge," whether presented in the form of an opinion "or otherwise." Fed. R. Evid. 702. This suggests that expert testimony extends to all fact and opinion testimony touching on "scientific, technical, or other specialized knowledge." For example, in this case even simple questions like "What is a DRAM?" or "What is a bit?" could be construed as calling for testimony that draws on "technical" or "specialized knowledge." Read literally, this rule is astonishingly broad, especially in the context of patent litigation. Indeed, the Federal Circuit recently remarked that "a witness not qualified in the pertinent art" may not testify to "anticipation, or any of the underlying questions, such as the nature of the claimed invention, what a prior art references discloses, or whether the asserted claims read on the prior art reference" or "obviousness, or any of the underlying technical questions, such as the nature of the claimed invention, the scope and content of prior art, the differences between the claimed invention and the prior art, or the motivation of one of ordinary skill in the art to combine these references to achieve the claimed invention." Sundance, Inc. v. DeMonte Fabricating Ltd., --- F.3d ----, 2008 WL 5351734, *6 (Fed. Cir. 2008). The Federal Circuit has also held that evidence of infringement via the doctrine of equivalents must typically come from a qualified expert. AquaTex Industries, Inc. v. Techniche Solutions, 479 F.3d 1320, 1329 (Fed. Cir. 2007). It further suggested that "expert infringement testimony is generally required in cases involving complex technology."
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 15

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Id. at 1329, fn.7. However, there are limits to what constitutes "expert" testimony subject to advance disclosure, written reports, Daubert gatekeeping, and so on. If there were not, patent litigation would be more astronomically expensive than it already is. The historical practice has been to treat a witness' factual testimony, i.e., testimony about what a witness did or did not do or observed or did not observe, as not being "expert" testimony. Compare with Gomez v. Rivera Rodriguez, 344 F.3d 103, 113 (1st Cir. 2003) (holding that expert testimony "does not encompass a percipient witness who happens to be an expert"). As discussed in Gomez, this interpretation follows from the Federal Rules' example of how the rules apply to a treating physician's testimony; while a treating physician's observations all derive from specialized knowledge, his testimony is not "expert testimony." Id. In the same vein, the court does not believe it is "expert" testimony for an inventor to explain the process by which he made his discoveries, for an engineer to describe the products he has built, or for a scientist to explain what he knew at a certain point in time. These examples clearly draw on "technical" knowledge, yet they are not expert testimony. As a general rule of thumb, the court understands "expert testimony" to be testimony that a witness prepares, as opposed to testimony of what a witness observes. For example, it includes opinion testimony based upon a witness' analysis of facts using methods based on specialized knowledge. To be sure, this interpretation of Rule 702 does not literally fit with the portion of the rule's text that reads "in the form of an opinion or otherwise." But it harmonizes well with the threeprong inquiry that is the heart of Rule 702, namely, that expert testimony (1) be "based upon sufficient facts or data," (2) result from "reliable principles and methods," and (3) reflect the reliable application of the principles and methods to the facts. It borders on the absurd to apply this threepronged inquiry to factual questions like "How did you come up with the invention?" or "What parts did you include in your prototype?" or "How did you solve this problem before the existence of the claimed invention?" Instead, this interrogation about foundation and methodology applies sensibly

ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 16

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

only to a witness' prepared conclusions or research.7 With this understanding of the meaning of "expert testimony," the court turns to the testimony challenged by Hynix. 1. Mr. Karp

Rambus's questioning of Mr. Karp was carefully calibrated not to seek opinion testimony. Mr. Karp's testimony reflected his understanding of what the specification disclosed when he assisted in drafting the claims at Rambus in 1998. See Trial Tr. 2453:18-2456:7 (Apr. 6, 2006). Because the testimony reflected Mr. Karp's understanding in 1998 and the basis for the claims he helped to draft, and not an opinion he formed in 2006 (though his understanding does not appear to have wavered), it was percipient, fact-based testimony. 2. Dr. Horowitz

As with Mr. Karp, Rambus tried to limit its questioning of Dr. Horowitz to elicit only percipient witness testimony. See Trial Tr. 3029:22-3030:1 ("Okay, did ­ you don't really ­ let me see how to ask this, did I ask you to find the support in the specification that you wrote for certain of the features that I told you were involved in this case?"). At certain points, he testified only to past occurrences. E.g., id. 3035:19-3031:17 (testimony about how Drs. Farmwald and Horowitz identified relevant prior art).8 Dr. Horowitz did testify, however, that he annotated his specification to "try to find support for many of the features in dispute" and to identify "references to things in the prior art that I thought were indicative that we thought this was an important feature since we cited it in some prior art[.]:" Id. 3030:4-5; 3031:11-15. This testimony appears to reflect to some extent his current opinion of what his specification discloses and not exclusively what in 1990 he believed was

The court's distinction between opinion and factual observation also draws textual support from Rules 703, 704, and 705. All of these rules address the procedure for exposing the foundation of an expert's opinion (which may be based upon inadmissable hearsay). These rules do not speak to the percipient observations of a person of skill (which are not plagued by the admissibility issues underlying opinion testimony). Mr. Stone refined this line of questioning in a later phase of trial. See, e.g., Trial Tr. 4118:6-18 (inquiring about what alternatives Dr. Horowitz considered when he and Dr. Farmwald developed the Rambus DRAM and filed the original patent application); 4138:13-19 (inquiring about what Dr. Horowitz did while writing the specification) (Mar. 5, 2008).
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 17
8

7

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

disclosed the specification. However, there is no suggestion that there is a difference between what he considered in 1990 and what in the specification he currently believes offers support for the subject features. The court did not err in permitting Rambus to elicit this testimony even if it is deemed expert testimony. Hynix repeatedly sought to question Dr. Horowitz about his opinions regarding the specification and what it did or did not disclose to a person of ordinary skill in the art. When Hynix raised its objection to Dr. Horowitz's use of the highlighted specification, the court explained its inclination to permit the testimony if used to rebut questioning by Hynix, but to exclude it otherwise. See Trial Tr. 3007:3-3008:18 (Apr. 12, 2006). The court had "understood, and maybe I'm wrong, that Hynix wanted to examine Mr. -- Dr. Horowitz on support for the claims at issue in the specification." Id. 3007:3-7. Rambus shared that understanding. Id. 3007:8-9. And Hynix confirmed it. Id. 3008:15-17 ("Your Honor, we do."). The court then ruled that because Hynix intended to examine Dr. Horowitz on written description support, Rambus could go into the subject on direct examination. Id. 3008:18-19. This ruling was correct because Hynix opened the door to Dr. Horowitz testifying regarding his opinion about the contents of the specification. E.g., Burgess v. Premier Corp., 727 F.2d 826, 834 (9th Cir. 1984) ("Premier's counsel waived this objection by first raising the subject himself on cross-examination. . . . Thus, while Tilton's testimony did indeed contain a legal conclusion, Premier et al. waived its right to object."). To be sure, the court permitted Rambus to question Dr. Horowitz on this subject during its direct examination before Hynix questioned him on it, but it did so following Hynix's representation that it intended to ask such questions. This ruling fell within the court's power to control the order of interrogation and was permissible to "avoid needless consumption of time." Fed. R. Evid. 611(a)(2). The trial was drawing to a close (Dr. Horowitz was the second-to-last witness to testify and April 12 was the last day of testimony) and Hynix was not harmed by a slight inversion in the order of examination. D. Claim Limitation Shorthand

Hynix also complains that Mr. Karp and Dr. Horowitz's testimony should have been
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 18

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

excluded pursuant to Rules 402 and 403 because of its limited relevance. Specifically, Hynix complains that because Mr. Karp and Dr. Horowitz conceded that they had not examined the claims but were testifying only about "features," the testimony was not relevant. Hynix's objection9 overlooks the parties' conduct in explaining complex technology to the jury. The parties throughout the litigation have referred to various claim limitations as "features." Indeed, Hynix's motion refers to limitations by shorthand like "delay locked loop," "block size information," and "operation code." At trial, Mr. Taylor (Hynix's expert) testified in the same manner as Mr. Karp and Dr. Horowitz, making shorthand references to various features and opining that claims reciting limitations including such features were invalid. E.g., 1740:8-12 ("operation code"); 1742:22-25 ("The delay locked loop element is not adequately described."); 1743:8-10 ("For the '918 patent, claim 24, neither the access time register nor the block size information is adequately described in the patent."). This practice reduced juror confusion by preventing the proceedings from getting mired in the complexities of the claim language where there was general agreement that certain shorthand applied to certain limitations. The court therefore cannot agree with Hynix that this testimony should have been excluded because the witnesses' testified about features without being familiar with specific claim language. Nevertheless, Hynix's objection demonstrates the reduced relevance of Mr. Karp and Dr. Horowitz's testimony. The relevance of identifying "features" in the specification is as follows: (1) a witness has identified a "feature" in the specification; (2) his identification of a "feature" corresponds to a claim limitation; (3) the identification of a claim limitation in the specification tends to prove that a claim has written description support. Because Mr. Karp and Dr. Horowitz did not reference the claim language, but only the "features in dispute," the second link in the chain of reasoning was weak and essentially left to the jury to decide whether the witnesses' discussion of features correlated with specific claim limitations. This link was not so weak that the evidence should have been excluded, but it did affect the weight of their testimony.

Hynix's motion to strike Mr. Karp's tesimony raised this issue. See Docket No. 1988, 2-3. Any objection to Dr. Horowitz's testimony on 402/403 grounds was less clear.
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 19

9

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

IV. EVIDENCE AND ANALYSIS REGARDING WRITTEN DESCRIPTION Hynix took two approaches to the written description issue. It first contended that the specification disclosed only a narrow, multiplexed bus architecture and that any claim that was not limited to such an architecture was invalid. It next contended that various limitations ­ "access time register," "delay locked loop," "block size information," and "operation code" ­ were not adequately described. Testimony touching on whether or not Rambus's claims satisfied the written description requirement came from five witnesses: Hynix's expert David Taylor, Rambus's expert Robert Murphy, inventor Dr. Mark Horowitz, and Rambus's two vice-presidents of intellectual property when the claims were filed, engineer Joel Karp and attorney Neil Steinberg. The court addresses the issues as framed at trial by Hynix. A. The Absence of Limitations Drawn to a Packetized, Multiplexed Bus

From the beginning, the overarching issue in this litigation has been whether or not Rambus's claims are limited to the packetized, multiplexed bus architecture discussed in the specification. E.g., Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1094-98 (Fed. Cir. 2003) (construing claims as not so limited). The claims-in-suit do not recite limitations drawn to a narrow, multiplexed bus architecture or to the use of a packet-based protocol. Accordingly, Hynix argues that each claim-in-suit is invalid because the written description discloses devices and methods without such limitations. 1. The Written Description Requirement

A patent must include "a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same." 35 U.S.C. §112, ¶ 1. This disclosure is the consideration the public receives in exchange of the patentee's right to exclude. LizardTech, 424 F.3d at 1344. This clause embeds two distinct legal requirements. See id. at 1344-45. First, a patentee's specification must "enable a person of skill in the art to make and use the full scope of the invention without undue experimentation." Id. at 1345. Second, the specification must "describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 20

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

invention at the time of the application, i.e., that the patentee invented what is claimed." Id.10 Although not precisely defined, the scope of written description law has some parameters. A claim that is obvious in light of the disclosed invention (and presumably enabled by the disclosure) does not satisfy the written description requirement unless it is also described in the specification. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Yet the inventor's description of the invention need not slavishly copy the words used in the claims. Id. ("Although the exact terms need not be used in haec verba, . . . the specification must contain an equivalent description of the claimed subject matter."). Thus, it is somewhere between the specification that describes the claimed invention using the same words as the claim and the specification that describes a closely related invention (but not the claim-in-suit) that a claim goes from valid to invalid. To distinguish between these extremes, the Federal Circuit has suggested what test shall not be used. The court should not hold a claim-in-suit invalid for simply "omitting" an element of the invention described in the specification. Reiffin v. Microsoft Corp., 214 F.3d 1342, 1347 (Fed. Cir. 2000) (Newman, J., concurring) ("[N]either law nor policy requires that the claim contain all the elements described in the specification as part of the new machine or method."); Bayer AG v. Sony Elecs., Inc., 229 F. Supp. 2d 332, 360 (D. Del. 2002) (rejecting the "omitted element" test); cf. Cooper Cameron, 291 F.3d at 1323 (explaining that in Gentry Gallery "we did not announce a new 'essential element' test mandating an inquiry into what an inventor considers to be essential to his invention and requiring that the claims incorporate those elements"). This follows from permitting inventors to write claims of varying scope and content. Reiffin, 214 F.3d at 1347 (discussing claiming conventions). Indeed, it is precisely the result Congress intended by permitting the These two requirements normally "rise and fall together." LizardTech, 424 F.3d at 1345. Nonetheless, Hynix does not assert that the claims-in-suit are invalid for lack of enablement. This litigation posture embodies the concern articulated by scholars that the rise of the amorphous written description requirement comes at the expense of inquiring into whether or not the claims are enabled. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1326 n.6 (Fed. Cir. 2003) (Rader, J., concurring) (citing Mark D. Janis, "On Courts Herding Cats: Contending with the 'Written Description' Requirement (and Other Unruly Patent Disclosure Doctrines)" 2 Wash. U.J.L. & Pol'y 55, 62, 107 (2000)).
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 21
10

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

inventor to file a chain of dependent claims, with each claim adding more specificity, i.e., elements of the claimed invention. See 35 U.S.C. § 112, ¶¶ 3-5. The benefit of this approach is to reduce the risk borne by the inventor who lacks perfect knowledge of the prior art. This claiming practice allows the inventor to draft a broad but likely weak claim and follow it with stronger but narrower claims incorporating more of the elements of the disclosed invention. Thus, no matter what prior art is later uncovered, the inventor will likely retain some benefit for sharing his invention with society in the form of the narrowest, valid claim. The "omitted element" approach to the written description requirement contravenes this statutory purpose. The rejection of the omitted element test allows a patentee to disclose a "species" of an invention yet write a claim to the invention's "genus." See Bilstad v. Wakalopulos, 386 F.3d 1116, 1123-25 (Fed. Cir. 2004). Thus, a claimed invention that is held together with a screw may support claims that recite a generic "fastener" limitation. E.g., Lizardtech, Inc. v. Earth Resource Mapping, Inc., 433 F.3d 1373, 1380-81 (Fed. Cir. 2006) (Rader, J., dissenting from denial of rehearing en banc). And yet, in some situations, omitting an important aspect of the invention disclosed in the specification will render a claim invalid. Bilstad, 386 F.3d at 1125-26. The Federal Circuit has recognized two exceptions to "the general rule that disclosure of a species provides sufficient written description support for a later filed claim directed to the genus." Id. at 1125. The first exception is for unpredictable fields, like areas of polymer chemistry, where possession of a species does not suggest that the patentee had possession of the entire genus. Id. at 1125 (citing In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004)). The second exception is for cases where the inventor expressly disclaims the other members of the genus. Id. at 1125-26 (citing Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998)); Rambus Inc. v. Hynix Semiconductor, Inc., 569 F. Supp. 2d 946, (N.D. Cal. 2008). This second exception may provide a home for cases like Gentry Gallery v. Berkline Corp. as well. 2. The Packetized, Multiplexed Bus Architecture

Mr. Taylor testified that none of the claims-in-suit satisfy the written description requirement. Tr. 1695:15-22 (Mar. 29, 2006). He opined that the only invention disclosed by the
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 22

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

specification was "a new bus interface and devices that are specifically altered to be able to match up with the operation of that bus." Id. 1696:9-17. He formed this opinion in part from the specification's discussion of prior art memory interfaces that were not multiplexed. See id. 1712:191715:5. He also based it on the specification's discussion of the objectives of the invention, and his opinion that all of the objects of the invention relate to the new bus interface. Id. 1719:8-1720:21. Were the "omitted element" test a viable approach to written description law, it seems highly likely that many of Rambus's claims would be invalid for excluding limitations drawn to prominent features of its disclosure. But as discussed above, it is not. Yet Mr. Taylor employed something similar to this approach to explain why he believed that Rambus's founders did not possess the claimed inventions that recite a "block size information" limitation at the time of filing: Q: And, in your opinion, is the concept of block size information described in the specification such that one of ordinary skill in the art would recognize block size information and the claims in which it appears as an inventive element? The only type of block size information that is described in the patent is block size information that is received by the part in the packet that I described to you earlier. There is no discussion whatsoever of receipt of block size information in any other way. ... Q: A: Q: A: Q: A: Q: A: And, as you understand it, are the claims at issue that include the term "block size information," are those claims limited to packets? No, they are not. And in terms of the claims that are disclosed in the Rambus patents, are those claims limited to a narrow multiplexed bus? No, they are not. Okay. Now, do you believe that the Rambus patent supports the claims for block size information outside of the context of a packet-based -- of packets? No, I do not. Why not? Because the -- the patent is describing only a single way of being able to receive block size information. If it's to be extended to other areas, then there has to be some description of what those other areas might be.

A:

Trial Tr. 1729:14-1731:15 (Mar. 29, 2006).
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 23

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Mr. Taylor testified likewise regarding claims with limitations drawn to an "access time register." Id. 1731:16-1733:10. Mr. Taylor conceded that the specification disclosed an access time register, but that the only disclosed access time register operated with the patent's "narrow bus," and that there was no disclosure of the access time register being used with another type of bus. Id. 1732:10-15. Thus, Mr. Taylor concluded that there was no written description support for Rambus's claims reciting an access time register without including a limitation reciting the narrow bus architecture. Similarly, Mr. Taylor testified that there was no written description support for claims reciting an "operation code" limitation because the specification's discussion of "operation codes" always occurred in the context of the packetized protocol and the multiplexed bus architecture. Id. 1735:18-1740:12. Hynix does not utter the phrase "omitted element" test in its argument. It retreats to arguments like "[a] narrow disclosure can limit the scope of the patentee's right to exclude" and "a broad claim is invalid if the entire specification clearly indicates that the invention has a much narrower scope." Mot. at 5:12-15. A fair summary, however, of Hynix's arguments is that the Farmwald/Horowitz specification discloses a very detailed, very particular bus architecture and that it cannot provide support for claims that lack limitations embodying the specialized bus architecture. This ignores the "general rule" that a specific disclosure may support more generic claims. See Bilstad, 386 F.3d at 1125. Hynix never argued or offered evidence that bus architectures are "unpredictable" or that possessing interface circuitry like an access time register adapted for use with a multiplexed bus does not also suggest possession of an access time register for use with other busses. Hynix has at times suggested that Rambus's claims should be deemed invalid under the Tronzo line of cases based on the inventors' statements in the specification about prior art busses, but that argument is not so compelling as to require judgment as a matter of law, see Rambus, 569 F. Supp. 2d at 997-1000, or a new trial where the jury has rejected it. Accordingly, Hynix's motion with respect to these claim limitations is denied. B. "Delay Locked Loop"

Hynix also challenges the written description support for claims reciting a "delay locked
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 24

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

loop" limitation. Unlike Hynix's arguments regarding "block size information," "access time register," and "operation code," Hynix's arguments regarding "delay locked loop" do not turn on the claims' failure to include limitations drawn to the bus architecture. Hynix instead challenges the substance of whether or not a delay locked loop is disclosed in the specification. 1. The Experts' Trial Testimony

Hynix relies on the testimony of a single witness, its technical expert David Taylor. Mr. Taylor opined that Rambus's specification did not adequately disclose a delay locked loop, and that various claims including a delay locked loop limitation were therefore invalid. See Tr. 1722:21726:22; 1742:19-1745:6. Mr. Taylor testified that the Farmwald/Horowitz specification does not mention the word "delay locked loop" or "DLL." Id. 1725:25-1726:7. And Rambus's expert, Mr. Murphy, agreed. Id. 2683:25-2684:4 (Apr. 10, 2006). Instead, Mr. Murphy concluded that support for claims reciting a DLL came from part of the specification's Figure 12 (reproduced below). Id. 2682:16-2683:3.

Mr. Taylor disagreed. To him, Figure 12 disclosed a circuit for generating a mid-point clock. Id. 1724:10-13. He complained that Rambus has "carved out a piece" of the circuit, but he conceded "[t]hat piece someone could call a delay locked loop." Id. 1724:3-9. Despite his concession, Mr. Taylor believed that one of skill in the art would not "recognize this piece of the patent as suggesting
ORDER DENYING HYNIX'S MOTION FOR JUDGMENT AS A MATTER OF LAW OR FOR A NEW TRIAL REGARDING THE WRITTEN DESCRIPTION REQUIREMENT -- C-00-20905 RMW TSF 25

1 2 3 4 5 6 7 8 9 10 United States District Court For the Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

that