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EXHIBIT A
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SK hynix Inc., et al. v. Rambus Inc.
Rambus Demonstratives re Hynixs Motions
Case No. CV 00-20905 RMW December 19, 2012
Case5:00-cv-20905-RMW Document4228-1 Filed12/26/12 Page3 of 19
Timeline
APR 2006 Rambus prevails in patent trial AUG 2000 Hynix sues Rambus in this Court FEB 2009 Hynix requests ex parte reexam of 918 and 105 patents MAR 2009 Entry of final judgment MAY 2010 Hynix request ex parte reexam of 020, 916, and 120 patents
OVER 8 YEARS BEFORE HYNIX REQUESTS PATENT REEXAMINATIONS
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
2011
AUG 2000 Micron sues Rambus in Delaware
OCT 2006 Samsung requests inter partes reexam of 120 patent AUG 2007 Samsung requests inter partes reexam of 916 and 863 patents
FEB 2009 Micron requests inter partes reexam of 120 patent NOV/DEC 2008 Micron requests inter partes reexam of 020, 916, 863 patents JAN 2008 Samsung requests inter partes reexam of 020 patent
G50
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Hynixs Invalidity Defenses Were Rejected by the Jury
G51
Six of the Ten Claims Tried Have Been Finally Confirmed by the PTO on Reexamination
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105 Patent Claim 34 Three separate Hynix ex parte reexamination requests
Two resulted in claim being confirmed Third rejected: no substantial new question of patentability Not subject to appeal
G52
Six of the Ten Claims Tried Have Been Finally Confirmed by the PTO on Reexamination
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918 Patent Claims 24 and 33 Hynix ex parte reexamination request
Claims confirmed Not subject to appeal
G53
Six of the Ten Claims Tried Have Been Finally Confirmed by the PTO on Reexamination
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916 Patent Claims 9 and 40 Hynix ex parte reexamination request
Request rejected: no substantial new question of patentability
Micron/Samsung inter partes reexamination requests
Claims confirmed Confirmations not appealed
G54
Six of the Ten Claims Tried Have Been Finally Confirmed by the PTO on Reexamination
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020 Patent Claim 32 Hynix ex parte reexamination request
Claim confirmed Not subject to appeal
Micron/Samsung inter partes reexamination requests
Claim confirmed Confirmation not appealed
G55
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The Six Confirmed Claims Cover SDRAM and DDR
SDRAM
DDR SDRAM
G56
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No Claim-in-Suit Has Been Cancelled
Reexaminations are pending for the four claims rejected by the Board. Rambus is challenging the rejections. Reexaminations pending until exhaustion of all appeals. 35 U.S.C. 316(a) (2011).
G57
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Hynix is Trying to Circumvent the Reexamination Process
Congress has provided specific procedures for reexamining a previously issued patent claim. Through that process, the PTO has confirmed most claims-in-suit. But Hynix wants to get around that result.
G58
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Hynix Improperly Conflates Distinct Legal Concepts
Statutory Cancellation
Cancellation of a previously issued patent claim. No claim has been cancelled.
Collateral Estoppel
Prevents re-litigation of the precise issue that has been fully and finally decided in another case.
G59
Different Legal Standards Defeat Preclusion on All Claims
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In reexamination, the PTO has the burden of finding unpatentability by a preponderance of the evidence.
That standard is substantially lower than in a civil case. In re Swanson, 540 F.3d at 1377. That the PTO has satisfied a lower standard does not mean the higher standard controlling in this case has been met.
G61
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Inconsistent Decisions
If issues are identical, then inconsistent decisions weigh against preclusion.
Federal Circuit held the claims not invalid.
The PTO confirmed six claims.
The Court is not an appellate tribunal that determines whether the PTO erred in confirming the claims.
G63
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Lack of Diligence Precludes a New Trial
Both ex parte and inter partes reexams were available before trial.
Hynix did not request its first ex parte reexams until 2009. Lack of diligence is sufficient to deny a new trial under Rule 59, Rule 60, or the mandate rule. See,
e.g., Amado, 517 F.3d at 1363 (Rule 60).
G64
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Reexaminations Are Not Admissible Evidence
Courts generally exclude non-final reexaminations.
Reexamination evidence would confuse the jury. Trial would end up focusing on PTO proceedings. Trial would end up focusing on claims that are not in suit.
G65
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Memory Device Is No Ground for a New Trial
Hynix stipulated to the Courts construction. Hynix did not appeal either memory device or integrated circuit device.
Joint Claim Construction and Prehearing Statement, 9/12/2003 (D.E. 326).
No Prejudice
PTO confirmed 918 claims-in-suit under broad construction of memory device.
G66
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The Reexaminations Have No Impact on Damages
Because the damages calculation at trial was not predicated on the infringement of particular claims, and because we have upheld the jurys verdict that all of the accused devices infringe , we affirm the damages award .
TiVo, 516 F.3d at 1312 (affirming damages award after reversing infringement finding as to some claims).
G72
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Hynix Waived Claim-by-Claim Damages
Hynixs proposed verdict form contemplated product-based royalties.
Joint Pretrial Statement for the Patent Trial, 2/2/2006 (D.E. 1649), Ex. 14 at 7.
Hynix never argued at trial that damages depended on the number of infringed claims.
G73
