Case 5:05-cv-00334-RMW Document 2535 Filed 11/14/2008 Page 1 of 8

1 Gregory P. Stone (SBN 078329) Rollin A. Ransom (SBN 196126)

Andrea Weiss Jeffries (SBN 183408) SIDLEY AUSTIN LLP
2 Fred A. Rowley, Jr. (SBN 192298) 555 West Fifth Street, Suite 4000
MUNGER, TOLLES & OLSON LLP Los Angeles, CA 90013-1010
3 355 South Grand Avenue, 35th Floor Telephone: (213) 896-6000
Los Angeles, CA 90071-1560 Facsimile: (213) 896-6600
4 Telephone: (213) 683-9100 Email: rransom@sidley.com
Facsimile: (213) 687-3702
5 Email: gregory.stone@mto.com Pierre J. Hubert (Pro Hac Vice)
Email: andrea.jeffries@mto.com Craig N. Tolliver (Pro Hac Vice)
6 Email: fred.rowley@mto.com McKOOL SMITH PC
300 West 6th Street, Suite 1700
7 Peter A. Detre (SBN 182619) Austin, TX 78701
Rosemarie T. Ring (SBN 220769) Telephone: (512) 692-8700
8 Jennifer L. Polse (SBN 219202) Facsimile: (512) 692-8744
MUNGER, TOLLES & OLSON LLP Email: phubert@mckoolsmith.com
9 560 Mission Street, 27th Floor Email: ctolliver@mckoolsmith.com
San Francisco, CA 94105
10 Telephone: (415) 512-4000
Facsimile: (415) 512-4077
11 Email: peter.detre@mto.com
Email: rose.ring@mto.com
12 Email: jen.polse@mto.com
13 Attorneys for RAMBUS INC.
14 UNITED STATES DISTRICT COURT
15 NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
16
RAMBUS INC., CASE NO.: C 05-00334 RMW
17
Plaintiff, OPPOSITION TO MANUFACTURERS’
18 DAUBERT MOTION NO. 2 (TO
vs. PRECLUDE TESTIMONY OF ROBERT
19 MURPHY REGARDING PTO
HYNIX SEMICONDUCTOR INC., et al., PROCEDURE AND PATENT FILE
20 HISTORIES)
Defendants.
21
Date: December 11, 2008
22 Courtroom: 6
Judge: Hon. Ronald M. Whyte
23
RAMBUS INC., CASE NO.: C 05-02298 RMW
24
Plaintiff,
25
vs.
26
SAMSUNG ELECTRONICS CO., LTD.,
27 et al.,
28 Defendants.
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2;
6331659.1
CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
 Case 5:05-cv-00334-RMW Document 2535 Filed 11/14/2008 Page 2 of 8

1
RAMBUS INC., CASE NO.: C 06-00244 RMW
2
Plaintiff,
3
vs.
4
MICRON TECHNOLOGY INC., et al.,
5
Defendants.
6

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2;
6331659.1
CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
 Case 5:05-cv-00334-RMW Document 2535 Filed 11/14/2008 Page 3 of 8

1 I. INTRODUCTION
2 In opining on validity, Rambus’s expert Mr. Murphy reviewed and relied on not only the

3 claims and written descriptions of the asserted patents, but also their prosecution histories. The

4 Manufacturers’ motion to preclude Mr. Murphy from testifying regarding matters gleaned from

5 his review of the file histories of the patents-in-suit and their ancestor applications rests on the

6 theory that only a so-called expert in patent law or PTO procedure is qualified to review and

7 opine on the file histories or what the Manufacturers describe as “PTO procedures.” The file

8 histories form part of the public record to which a person of ordinary skill would look in

9 understanding the patented invention. As an expert in electrical engineering, Mr. Murphy

10 therefore is well qualified to review and opine on the contents of the file histories and the events

11 during the prosecution reflected in them, and the Manufacturers’ argument to the contrary is

12 belied by their own technical experts’ reliance on the prosecution histories. The Manufacturers’

13 motion should be denied.

14 II. TECHNICAL EXPERTS ARE QUALIFIED TO REVIEW FILE HISTORIES

15 The Manufacturers’ motion must fail because its central premise, that only an expert

16 “qualified . . . in patent office procedure,” patent law, or patent prosecution can testify to the

17 content of file histories or implications that may be drawn from them, Br. at 3, is simply incorrect.

18 The Manufacturers offer no support for this position, which is contrary to well-established

19 principles of patent law. The file histories form an integral part of the public record of an issued

20 patent. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (file “history

21 contains the complete record of all the proceedings before the Patent and Trademark Office,

22 including any express representations made by the applicant regarding the scope of the claims”).

23 As such, they are part of the background information that the public, and persons of ordinary skill

24 in the art, may consult to understand the teachings of the patent and what it claims. Id.; see also

25 Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (noting that “the

26 prosecution history can often inform the meaning of the claim language by demonstrating how

27 the inventor understood the invention and whether the inventor limited the invention in the course

28 of prosecution, making the claim scope narrower than it would otherwise be”). Indeed, the file

RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2;

6331659.1 -1- CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
 Case 5:05-cv-00334-RMW Document 2535 Filed 11/14/2008 Page 4 of 8

1 history is so important a part of this inquiry that when determining the meaning the claims would
2 carry to a person of ordinary skill, courts presume such a person of ordinary skill would review
3 the file history to make such a judgment. Computer Docking Station, Corp. v. Dell, Inc., 519
4 F.3d 1366, 1373-74 (Fed. Cir. 2008) (noting that “the person of ordinary skill is deemed to read
5 the claim terms in the context of the entire patent, including the specification and prosecution
6 history”). As an expert in electrical engineering, Mr. Murphy is more than qualified to review
7 and opine upon the file histories of the patents-in-suit, all of which relate to inventions falling
8 within his area of technical expertise.
9 The Manufacturers themselves have recognized that technical experts appropriately can
10 rely and opine on file histories. Like Mr. Murphy, their technical experts have reviewed and
11 relied upon the prosecution histories of the patents in suit. Declaration of Jennifer Polse in
12 Support of Rambus’s Opposition to Manufacturers Daubert Motion No. 2 (hereinafter, “Polse
13 Decl.”), Exh. A (Exhibit 4 to the Expert Report of William K. Hoffman Regarding
14 Noninfringement); Exh. B (Appendix B to the Expert Report of Michael Runas Regarding Non-
15 Infringement of U.S. Patent Numbers 6,182,184; 6,266,285; 6,314,051; 6,324,120; 6,378,020;
16 6,426,916; 6,452,863; 6,546,446; 6,584,037; 7,751,696); Exh. C (Exhibit B to the Expert Report
17 of David Taylor Regarding Claim Construction, submitted on November 1, 2001 in Case No. 00-
18 CV-20905); Exh. D, (Attachment N to the Corrected Expert Report of Joseph McAlexander
19 Regarding Invalidity of U.S. Patent Numbers 6,038,195; 6,182, 184; 6,266,285; 6,314,120; 6,378,
20 020; 6,426,916; 6,452,863; 6,546,446; 6,584,037; 6,697,285; 6,715,020; 7,751,696; 6,493,789;
21 6,496,897). Consistent with the well-established practice of technical experts reviewing and
22 opining on the prosecution history, Mr. McAlexander previously has offered extensive testimony
23 on the prosecution histories of the patents in suit, Confidential Declaration of Jennifer Polse in
24 Support of Rambus’s Opposition to Manufacturers’ Daubert Motions Nos. 1 & 2 (hereinafter
25 Confidential Polse Decl.), Exh. 1, Rebuttal Report of Joseph McAlexander Regarding
26 Noninfringement of Rambus Patents, January 19, 2001, Rambus, Inc. v. Infineon, Case No.
27 00CV524 (E.D. VA) at 11-21, and lists the file histories as material he considered in reaching the
28 opinions to which the challenged portions of Mr. Murphy’s report respond, see Polse Decl., Exh.
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2;
6331659.1 -2- CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
 Case 5:05-cv-00334-RMW Document 2535 Filed 11/14/2008 Page 5 of 8

1 D. The Manufacturers’ present attempt to apply a different rule to Mr. Murphy than that followed
2 by their own experts should be rejected.
3 III. MR. MURPHY IS QUALIFIED TO OPINE ON THE FACTS AND INFERENCES
THAT CAN BE DRAWN FROM THE FILE HISTORIES OF THE PATENTS-IN-
4 SUIT
5 As noted above, as an expert in electrical engineering, Mr. Murphy is qualified to review
6 and analyze the public record of the patents-in-suit, which concern technology within his field of
7 expertise. Furthermore, his testimony regarding the file histories falls squarely within the scope
8 of his expertise. He does not opine on the minutia of patent prosecution or PTO practice. Rather,
9 the majority of the testimony to which the Manufacturers object consists of Mr. Murphy’s
10 opinions regarding facts that a person of ordinary skill would appreciate based on his or her
11 review of the patents and file histories. These include the filing, issuance, and priority dates of
12 the asserted patents,1 see Expert Report of Robert J. Murphy Regarding Patent Validity,2
13 (hereinafter “Murphy Report”) ¶¶ 90-99, the identity of prior art disclosed to the patent office
14 during prosecution, id. ¶¶ 103-104, 106, 109-111, 114-116, 118-122, 126-130, 132, 134-136, 138-
15 139, 141-148, and 150-151, examples of office actions in which the examiner required the
16 applicants to identify support in the written description for particular limitations, id. ¶¶ 209-219, a
17 statement in an office action demonstrating an understanding of a claimed “bus” that does not
18 require multiplexing, id. ¶¶ 227-228, and information gleaned from Mr. Murphy’s search and
19 review of the numerous patents Rambus has sought and obtained that claim priority to the ’898
20 application as well as basic background information concerning the filing and prosecution history
21 of the original ’898 application, id. ¶ 41.3
22 1
The Manufacturers object to Mr. Murphy’s statement that each patent issued “after a period of
evaluation.” Br. at 4. The Manufacturers do not explain why recognizing that the patent office
23 evaluated the patents prior to issuance requires any expertise in patent law or procedure. That the
PTO evaluated the patents prior to issuance is readily apparent to any person of ordinary skill
24 upon review of the file histories, which contain correspondence to and from the PTO reflecting an
evaluation of the patents.
25 2
A copy of the Murphy Report was attached as Exhibit 1 to the Omnibus Declaration of Sven
26 Raz in Support of the Manufacturers’ Summary Judgment And Daubert Motions, filed by the
Manufacturers on October 24, 2008.
27 3
The Manufacturers also seek to preclude Mr. Murphy from testifying regarding paragraph 281
of his report, notwithstanding the fact that that paragraph primarily sets forth Mr. Murphy’s
28 technical opinion regarding support in the written description for the DLL. Br. at 7. Such
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2;
6331659.1 -3- CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
 Case 5:05-cv-00334-RMW Document 2535 Filed 11/14/2008 Page 6 of 8

1 The Manufacturers’ objection to Mr. Murphy’s discussion of whether particular references

2 were cited to the examiner is particularly inappropriate in light of their own expert’s explicit
3 statement that, in rendering his opinions on invalidity, he considered the file histories “inclusive
4 of cited references.” Polse Decl., Exh. D. Furthermore, the references cited to the examiner form
5 part of the public record that a person of ordinary skill uses to understand the patented invention.
6 Phillips, 415 F.3d at 1317 (“The prosecution history, which we have designated as part of the
7 ‘intrinsic evidence,’ consists of the complete record of the proceedings before the PTO and
8 includes the prior art cited during the examination of the patent.”); Vitronics, 90 F.3d at 1583
9 (holding that “within an analysis of the file history may be an examination of the prior art cited
10 therein”), citing Autogiro Co. of Am. v. United States, 384 F.2d 391, 399 (1967) (“In its broader
11 use as source material, the prior art cited in the file wrapper gives clues as to what the claims do
12 not cover.”). The identity and disclosure of such references therefore is an appropriate subject for
13 testimony for a technical expert.
14 Nor is it true, as the Manufacturers claim, Br. at 5, that Mr. Murphy adds no technical
15 analysis in the portions of his report that they seek to exclude. To the contrary, the paragraphs
16 describing the testimony the Manufacturers seek to exclude, together with the referenced
17 attachments4 and exhibits, set forth Mr. Murphy’s technical opinions regarding various invalidity
18 theories raised in Mr. McAlexander’s report. See, e.g., Murphy Report ¶ 110 (“[a]s I explain in
19 my Attachment A (in response to McAlexander Attachment A), I disagree that SCI in
20 combination with any other reference identified by Mr. McAlexander, renders obvious claim 33
21 of the ’120, claim 3 or 4 of the ’446, or claim 34 of the ’037 patent,” and noting that “[r]egardless
22 of whether SCI was considered by the patent office, it is my opinion that this reference does not
23 render obvious” the claims); id. ¶ 281 (explaining where support exists in the specification for the
24
testimony from a technical expert is entirely proper. To the extent the Manufacturers seek only to
25 preclude Mr. Murphy from implying “that the PTO has rendered an additional opinion on the
patents’ validity” by stating that he “agrees with the PTO” that the written description is met, Br.
26 at 7 n. 4, Rambus does not intend to elicit that statement from Mr. Murphy.
4
27 Attachments A-G to Mr. Murphy’s report, which set forth in detail his analysis of the various
prior art references cited by Mr. McAlexander, are attached to the Confidential Polse Declaration
28 as Exhibit 2.

RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2;

6331659.1 -4- CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
 Case 5:05-cv-00334-RMW Document 2535 Filed 11/14/2008 Page 7 of 8

1 DLL limitation); id. ¶ 227 (explaining the technical differences between two groups of claims).
2 Viewed in context, Mr. Murphy’s discussion of the file histories simply form one part of his
3 overall analysis of the prior art and other invalidity issues raised in Mr. McAlexander’s report.
4 In short, Mr. Murphy’s testimony reflected in paragraphs 41, 90-99, 103-104, 106, 109-
5 111, 114-116, 118-122, 126-130, 132, 134-136, 138-139, 141-148, 150-151, 209-219, 227-228
6 and 281 is appropriate based on his technical expertise and his review of the file histories, the
7 patents-in-suit, and the other materials on which he relied. The Manufacturers’ motion to exclude
8 his testimony on the prosecution-history related matters described in those paragraphs of his
9 report should be denied. 5
10 IV. MR. MURPHY’S TESTIMONY REGARDING LEGAL STANDARDS RESPONDS
TO MR. MCALEXANDER’S TESTIMONY ON LEGAL STANDARDS
11

12 The remainder of the testimony that the Manufacturers seek to exclude concerns Mr.
13 Murphy’s understanding of the legal principles bearing on the areas on which he opines. See
14 Murphy Report ¶¶ 88-89, 101-102, & 203-208. These and other explanations of the applicable
15 law contained in Mr. Murphy’s report resemble those contained in the expert report to which Mr.
16 Murphy’s validity report responds. See Corrected Expert Report of Joseph McAlexander
17 Regarding Invalidity, ¶¶ 23-43.6 Rambus agrees that expert witnesses should not testify at trial
18 regarding their understanding of the law, and seeks in its Daubert Motion No. 1, filed on October
19 24, 2008, to preclude Mr. McAlexander from testifying regarding the various legal opinions set
20 forth in his report. See also Rambus’s Daubert and Motion in Limine No. 2 to Exclude Certain
21 Testimony of Peter Heuser, Case No. 05-cv-00334, Docket No. 2432. Should the Court deny
22 Rambus’s Daubert Motion No. 1 and permit Mr. McAlexander to testify regarding his legal
23
5
It is unclear whether, by this motion, the Manufacturers seek to exclude Mr. Murphy from
24 testifying as to all of the material contained in the paragraphs they deem objectionable as
referencing the prosecution or file histories. Br. at 8. Even if exclusion of testimony relating to
25 the prosecution history were appropriate, which it is not, the Manufacturers provide no ground for
excluding Mr. Murphy’s testimony on the other matters raised in the objected-to paragraphs of his
26 report.
6
27 A copy of the pertinent portions of Mr. McAlexander’s report is attached as Exhibit A to the
Declaration of Peter Detre filed on October 24, 2008 in support of Rambus’s Daubert Motion No.
28 1.

RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2;

6331659.1 -5- CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
 Case 5:05-cv-00334-RMW Document 2535 Filed 11/14/2008 Page 8 of 8

1 opinions, Mr. Murphy should be allowed to respond in kind, including by setting forth his
2 understanding of legal principles that informed his analysis.
3 V. CONCLUSION
4 For the reasons explained above, the Manufacturers’ Daubert Motion No. 2 should
5 be denied.
6

7 DATED: November 14, 2008 MUNGER, TOLLES & OLSON LLP

8 SIDLEY AUSTIN LLP
9 McKOOL SMITH PC
10

11
By: /s/ Jennifer Polse
12 Jennifer Polse
13 Attorneys for Plaintiff RAMBUS INC.
14

15

16

17

18

19

20

21

22

23

24

25

26

27

28
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2;
6331659.1 -6- CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW