Scott Daniels | December 7, 2012
The comparative strength of inter partes reexamination, over ex parte reexamination, was demonstrated anew today when the Patent Trial & Appeal Board rejected claims 1and 4 of Rambus’ U.S. Patent No. 6,751,696. (95/001,133). The ‘696 patent is one of the famous Farmwald patents that claim synchronous memory devices and that have been the subject of a number of ITC and District Court proceedings.
The examiner had initially confirmed the claims as being valid over a proposed combination of prior art references. Micron, one of the parties that had requested reexamination, appealed to the Board, and the Board has now found that those claims are invalid over the cited references, reversing the examiner. Of course, in an ex parte reexamination, the requester would not have been able to appeal the examiner’s initial confirmation of the claims.
In a bit of “inside baseball” that might interest reexamination practitioners, the Board rejected Rambus’ argument that Micron had no standing to pursue the appeal was not proper. Rambus correctly pointed out that Samsung, not Micron, had proposed the specific combination of prior art in a separate reexamination request that was merged with the reexamination requested by Micron.
The Board disagreed with Rambus. First, it stated that 35 U.S.C. § 315(b) allows a requester to appeal of any final decision favorable to patentability. Second, the Board has its own discretion to enter new grounds of rejection regardless of the initial source of those grounds. And third, 37 C.F.R. § 41.77(a) gives the Board “authority to consider appeals from decisions of examiners.”
All is not lost for Rambus, however. Since the Board’s finding is considered a new ground for rejection, the Rambus patent goes back to the examiner for further prosecution.