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2013-1623 (Reexamination No. 95/001,169) __________________________________________________________________ UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT __________________________________

IN RE RAMBUS, INC. _____________________________________________________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. _____________________________________________________________ PTOs MOTION FOR REMAND Appellee, the Director of the United States Patent and Trademark Office (PTO) respectfully moves to remand this case to the PTO to permit further proceedings before the agency. This is an appeal of a February 13, 2013 Patent Trial and Appeal Board (Board) decision which affirmed various rejections of Rambuss claims. In particular, the Boards decision maintained the rejection of certain reexamined claims of U.S. Patent No. 6,591,353 as anticipated by Hayes and also rejected various sets of claims of the 353 patent as obvious based on various combinations of references including the Farmwald 755 prior art reference. Subsequent to the Boards decision in this case, this Court reversed the Boards anticipation rejection of reexamined claims in the related Rambus 109

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patent based on the Farmwald 037 prior art reference. See Rambus Inc. v. Rea, 2013 WL 3242241 (Fed. Cir. 2013) (2012-1480 Rambus). In the 2012-1480 Rambus decision, this Court analyzed various aspects of Farmwald 037s disclosure as well as the specification of Rambuss 109 patent. Notably, Farmwald 755 (at issue in this case) and Farmwald 037 (discussed in the 20121480 Rambus decision) share the same specification. Id. at *3. Further, the 353 patent (at issue in this case) and the 109 patent (at issue in the 2012-1480 Rambus decision) share a similar specification. While the rejections in the two cases are not the same (e.g., the 2012-1480 Rambus decision involved an anticipation rejection based on Farmwald 037 alone and in this case the rejections are based on obviousness with various different references combined with Farmwald 755), there are similarities in the two cases indicating that review of this Courts 2012-1480 Rambus decision would be helpful and important to the Boards thorough analysis in this case. Accordingly, the Director believes it is in the best interest of the parties and this Court to remand the case back to the Board to reconsider its opinion currently on appeal and the pending claims in light of the Rambus 2012-1480 decision. A remand to permit further proceedings at the PTO at this juncture would prevent the Court, Rambus, and the PTO from needlessly expending additional resources. See, e.g., In re Gould, 673 F.2d 1385, 1387 (CCPA 1982). Undersigned counsel for the PTO

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contacted counsel for Rambus and Rambus indicated that it intends to oppose this motion A proposed Order accompanies this motion.

December 20, 2013

Respectfully submitted, /s/ WILLIAM La MARCA Nathan K. Kelley Solicitor William LaMarca Stacy B. Margolies Associate Solicitors Office of the Solicitor U.S. Patent and Trademark Office Mail Stop 8 P.O. Box 1450 Alexandria, Virginia 22313 (571) 272-9035 Attorneys for the Director of the United States Patent and Trademark Office

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2013-1623 (Reexamination No. 95/001,169) __________________________________________________________________ UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT __________________________________

IN RE RAMBUS, INC. _____________________________________________________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. _____________________________________________________________ ORDER

Upon consideration of the PTOs MOTION FOR REMAND, it is ORDERED that the motion is granted, and it is FURTHER ORDERED that this appeal is REMANDED.

FOR THE COURT Date: _______________ ______________________________ Daniel OToole, Clerk United States Court of Appeals For the Federal Circuit

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cc:

Office of the Solicitor U.S. Patent and Trademark Office Mail Stop 8 P.O. Box 1450 Alexandria, VA 22313-1450 (571) 272-9035 Gregg Gardella Scott McKeown Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. 1940 Duke Street Alexandria, Va 22314 (703) 413-3000

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CERTIFICATE OF SERVICE I hereby certify that on December 20, 2013, I electronically filed the foregoing PTOs MOTION FOR REMAND with the Court's CM/ECF filing system, which constitutes service, pursuant to Fed. R. App. P. 25(c)(2), Fed. Cir. R. 25(a), and the Court's Administrative Order Regarding Electronic Case Filing 6(A) (May 17, 2012), on counsel for the Appellant.

/s/ WILLIAM La MARCA William LaMarca Associate Solicitor Office of the Solicitor U.S. Patent and Trademark Office (571) 272-8741