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Case 5:05-cv-00334-RMW Document 2422 Filed 10/24/2008 Page 1 of 11

1 [Attorney list on signature page]

5
UNITED STATES DISTRICT COURT
6
NORTHERN DISTRICT OF CALIFORNIA
7
SAN JOSE DIVISION
8
RAMBUS INC., Case No. C 05-00334 RMW
9 Plaintiff,
v. MANUFACTURERS’ NOTICE OF
10 MOTION AND DAUBERT MOTION
HYNIX SEMICONDUCTOR INC., et al., NO. 2 (TO PRECLUDE TESTIMONY
11 OF ROBERT MURPHY REGARDING
Defendants. PTO PROCEDURE AND PATENT
12 FILE HISTORIES)

13

14 Date: December 2, 2008


Time: 2:00 p.m.
15 Location: Courtroom 6
Judge: Hon. Ronald M. Whyte
16

17
RAMBUS INC., Case No. C 06-00244 RMW
18
Plaintiff,
19
v.
20
MICRON TECHNOLOGY, INC., and
21 MICRON SEMICONDUCTOR PRODUCTS,
INC.,
22
Defendants.
23

24 RAMBUS INC., Case No. C 05-02298 RMW


Plaintiff,
25 v.
26 SAMSUNG ELECTRONICS CO., LTD.,
et al.,
27
Defendants.
28
MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
(PRECLUDE MURPHY TESTIMONY RE PTO FINDINGS)
CASE NO. 05-00334 RMW
Case 5:05-cv-00334-RMW Document 2422 Filed 10/24/2008 Page 2 of 11

1 TO ALL PARTIES AND THEIR COUNSEL OF RECORD:

2 PLEASE TAKE NOTICE that on December 02, 2008, at 2:00 p.m., or as soon

3 thereafter as the matter may be heard, in the Courtroom of the Honorable Ronald M. Whyte,

4 United States District Court for the Northern Discovery of California, located at 280 First Street,

5 San Jose, California, 95110, the Manufacturers will and hereby do move for an order precluding

6 Rambus’s expert witness, Mr. Robert J. Murphy, from testifying about United States Patent and

7 Trademark Office (“PTO”) procedure, the PTO examiners’ findings and the Patent file histories

8 as identified in his September 26, 2008 Expert Rebuttal Report.

9 This motion is made on the grounds that Mr. Murphy’s is not qualified to testify

10 about PTO procedure. Mr. Murphy does not provide technical expert analysis of the underlying

11 evidence but rather summarizes excerpts from patent file histories. Mr. Murphy provides no

12 technical expert opinion and should not be permitted to usurp the Court’s role in instructing the

13 jury about the law or serve as a voice for attorney argument.

14 This motion is based on this Notice of Motion, the accompanying Memorandum of

15 Points and Authorities, the Declaration of Jacob M. Heath in Support thereof, the proposed order

16 submitted herewith, all papers and pleadings on file in this action, and all matters of which the

17 Court may take judicial notice.

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MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
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CASE NO. 05-00334 RMW
Case 5:05-cv-00334-RMW Document 2422 Filed 10/24/2008 Page 3 of 11

1 I. INTRODUCTION.

2 Rambus’s technical expert – Robert Murphy – is not an expert in U.S. Patent and

3 Trademark Office (“PTO”) procedure. Mr. Murphy therefore is not qualified to provide

4 testimony regarding a PTO Examiner’s findings and any import thereof. Beyond his assessment

5 of the PTO’s findings, Mr. Murphy does not provide any technical expert analysis of the

6 underlying evidence and instead merely summarizes excerpts from patent file histories.

7 Mr. Murphy provides no technical expert opinion and should not be permitted to usurp the

8 Court’s role in instructing the jury about the law or serve as a voice for attorney argument. For

9 the reasons explained below, Mr. Murphy should be precluded from testifying about (i) the

10 prosecution of the Farmwald patents and the presumption of invalidity; (ii) whether a particular

11 prior art reference or combination of prior art references was considered by the PTO, (iii) any

12 purported PTO determination regarding the written description requirement, and (iv) any PTO

13 determination in connection with a restriction requirement.

14 II. ARGUMENT.

15 A. Federal Rule Of Evidence 702 Limits Who Is Permitted To Provide


Expert Testimony.
16

17 Federal Rule of Evidence 702 requires that a purported expert be “qualified as an

18 expert.” The Supreme Court has explained that Rule 702 grants “expert witnesses testimonial

19 latitude unavailable to other witnesses on the ‘assumption that the expert’s opinion will have a

20 reliable basis in the knowledge and experience of his discipline.’” Kumho Tire Co. v.

21 Carmichael, 526 U.S. 137, 138 (1999) (emphasis added) (citing Daubert v. Merrell Dow

22 Pharms., Inc., 509 U.S. 579, 592 (1993)).

23 Because an “added aura of reliability” necessarily attaches to testimony offered by

24 an expert witness, United States v. Lumpkin, 192 F.3d 280, 289 (2d Cir. 1999), Federal Rule of

25 Evidence 702 “places limits on the areas of expertise and the methodologies of analysis which

26 may be covered and used by an expert witness.” DSU Med. Corp. v. JMS Co., 296 F. Supp. 2d

27 1140, 1146 (N.D. Cal. 2003). See also Mukhtar v. California State University, 299 F.3d 1053,

28 1063-1064 (9th Cir. 2002) (“Maintaining Daubert’s standards is particularly important


MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
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Case 5:05-cv-00334-RMW Document 2422 Filed 10/24/2008 Page 4 of 11

1 considering the aura of authority experts often exude, which can lead juries to give more weight

2 to their testimony.”)

3 Rule 702 permits an expert witness with “scientific, technical, or other specialized

4 knowledge” to testify in the form of an opinion only “if (1) the testimony is based upon sufficient

5 facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the

6 witness has applied the principles and methods reliably to the facts of the case.” Fed. R. Evid.

7 702. Under Daubert, the court acts as a “gatekeeper” to ensure, with respect to each proposed

8 expert witness and subject of expert opinion testimony, that “the reasoning or methodology

9 underlying the testimony is scientifically valid” and “can be properly applied to the facts at

10 issue.” DSU Med. Corp., 296 F. Supp. 2d at 1146 (quoting Daubert, 509 U.S. at 592-93).

11 B. Mr. Murphy Is Not A Qualified Expert In Patent Office Procedure.

12 Mr. Murphy is not qualified to testify as an expert in patent prosecution, PTO

13 procedure or patent law. Mr. Murphy has not taken the Patent Bar exam and is not registered to

14 practice before the PTO. Ex. A (Murphy Dep. (Oct. 10, 2008)) at 268:20-25. Mr. Murphy is not

15 a patent attorney or patent agent, and has never worked at the PTO. Id. at 268:20-25; Ex. B (CV)

16 at 1.1[1] Mr. Murphy also is not a named inventor of any issued patent. See Ex. A at 269:1-3.

17 It therefore should come as no surprise that Mr. Murphy does not consider himself

18 an expert in patent prosecution or patent law. Id. at 268:17-19. Mr. Murphy has not testified in a

19 court of law as an expert in patent law and has not been offered as an expert in patent law. Ex. C

20 (Murphy Oct. 8, 2007 Dep.) at 16:5-22. Nor has Rambus previously characterized Mr. Murphy
21 as an expert in PTO procedure, patent prosecution or patent law. See, e.g., Ex. D (Rambus’s

22 Revised Patent Trial Witness List in Hynix v. Rambus, Inc., Case No. C-00-20905 RMW (March

23 10, 2006).

24 C. Mr. Murphy Should Be Precluded From Providing Testimony Regarding


Patent Office Procedure And Patent File History Evidence.
25

26 Even though Mr. Murphy is not an expert in PTO practice or procedure, he opines

27 about various portions of the file history of the asserted Farmwald and related patents, including

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MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
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CASE NO. 05-00334 RMW
Case 5:05-cv-00334-RMW Document 2422 Filed 10/24/2008 Page 5 of 11

1 the PTO’s determination regarding cited prior art, the PTO’s determination regarding written

2 description, and the PTO’s determination regarding the original restriction requirement.

3 Mr. Murphy lacks the expertise to testify on the meaning and import of various actions from the

4 Patent Office file histories and should be precluded from testifying on these subjects.2

5 1. Mr. Murphy Is Not Qualified To Testify About The Prosecution


Of The Farmwald Patents And The Presumption Of Validity.
6

7 Mr. Murphy discloses a host of improper opinions in a section of his rebuttal

8 expert report entitled “Prosecution of Patents and the Presumption of Validity.” Mr. Murphy

9 states that he intends to “discuss the patent examination process as it relates to the Rambus

10 patents-in-suit.” Ex. 1 (Murphy Rebuttal Report) to the Omnibus Declaration of Sven Raz In

11 Support of the Manufacturers’ Summary Judgment And Daubert Motions at ¶ 88. Mr. Murphy

12 improperly opines about the qualifications of a Patent Office Examiner and concludes that a

13 patent is “awarded to an inventor or inventors only if the United States Patent and Trademark

14 Office decides, after a period of evaluation, that the subject matter claimed is (1) not anticipated,

15 (2) not obvious, and (3) supported by adequate written description.” Id. at ¶ 89. Mr. Murphy also

16 opines that each of the asserted Farwmald patents was issued “after a period of evaluation” by the

17 Patent Office and offers a legal opinion about the presumption of validity. Id. at ¶¶ 90-100.

18 Each of these topics is within the realm of PTO procedure or patent law, neither of

19 which is Mr. Murphy’s area of expertise. His purported area of expertise is limited to the

20 technical arena and does not extend to how the Patent Office examines applications, the
21 qualifications of Patent Office employees, or the meaning of findings from the Patent Office. Nor

22 is Mr. Murphy qualified to speak about the legal principle of the presumption of validity or how it

23 applies to the patent application examination process. None of these topics relate to an

24 examination or analysis of technology.

25 In addition to being unqualified to address these topics, Mr. Murphy also did not

26 apply any reliable methodology in reaching his opinions. Mr. Murphy failed to cite to any

27 2
Mr. Murphy’s proposed testimony also should be precluded for reasons other than the failure to meet the Daubert
requirements. If necessary, the Manufacturers intend to a file motion in limine explaining these additional reasons
28 for preclusion.
MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
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CASE NO. 05-00334 RMW
Case 5:05-cv-00334-RMW Document 2422 Filed 10/24/2008 Page 6 of 11

1 authoritative sources on PTO procedure, such as the Manual of Patent Examining Procedure.

2 And Mr. Murphy has no meaningful experience examining or prosecuting patent applications on

3 which to draw. In a career that has spanned more than three decades (see Ex. B, p. 1),

4 Mr. Murphy has no issued patents. In fact, Mr. Murphy has only been involved in prosecuting a

5 single application (the status of which he is unaware).

6 Moreover, since Mr. Murphy did not apply any technical analysis to his opinions,

7 what remains is not proper subject matter for an expert witness. Mr. Murphy’s opinions trespass

8 on the Court’s province of instructing the jury as to the governing law and the jury’s fact-finding

9 role in applying the facts to the law of invalidity. The added aura of reliability that necessarily

10 surrounds expert testimony provides an added risk that the jury will defer to Mr. Murphy’s

11 statements about PTO findings rather than independently apply the facts under the correct legal

12 standards.

13 Accordingly, Mr. Murphy should be precluded from testifying on topics relating to

14 the prosecution of the Farmwald patents and the presumption of validity, as identified in

15 paragraphs 88-100 of his Rebuttal Expert Report.

16 2. Mr. Murphy Is Not Qualified To Testify About The PTO’s


Determinations Regarding Prior Art References.
17

18 Similarly, in a section of his expert report entitled “When Prior Art Is Considered

19 By The Patent Office,” Mr. Murphy discusses at length portions of the file histories of the

20 asserted Farmwald patents and related patents without any technical analysis of such evidence.
21 See Ex. 1 (Murphy Rebuttal Report) at ¶¶ 106, 109-111, 114-116, 118-122, 126-130, 132, 134-

22 136, 138-139, 141-148, and 150-151. Mr. Murphy repeatedly concludes that certain prior art

23 references “were already considered by the USPTO” (or words to that effect) and that he

24 “agree[s] with the USPTO’s determination.” Id. at ¶¶ 103-104, 106, 109-111, 114-116, 118-122,

25 126-130, 132, 134-136, 138-139, 141-148, and 150-151.3 Mr. Murphy also concludes that the

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Mr. Murphy also states that other references “that relate to the Scalable Coherent Interface Project” were disclosed
27 to the PTO, but provides no technical analysis of the disclosure in any of these addition references. Ex. 1 at ¶ 106.
Having provided no technical opinion, Mr. Murphy should be precluded from testifying regarding the citation of any
28 of these references to the PTO and any import thereof.
MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
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CASE NO. 05-00334 RMW
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1 PTO and PTO Examiners “had before them” certain “combination[s] of references and/or subject

2 matter.” Id. at ¶¶ 109, 110, 119, 120. Mr. Murphy further opines about the meaning of certain

3 entries in the file histories (see id. at ¶¶ 115-116) and reaches legal conclusions about the burden

4 of proof. See id. at ¶¶ 101-102.

5 As explained above, Mr. Murphy is not qualified to testify about the meaning of

6 entries on a PTO Information Disclosure Statement or what a PTO Examiner considered in

7 examining a patent application. In addition, he did not use a reliable methodology in reaching his

8 opinions, such as relying on well-known authorities regarding patent prosecution and patent law,

9 including the Manual of Patent Examining Procedure and the Chisum Patent Law treatise.

10 Mr. Murphy adds no special technical analysis that should permit him to address

11 the file history excerpts. It would be unfair to allow Rambus to use an unqualified expert – with

12 the attendant aura of reliability that surrounds an expert witness – to explain excerpts from the file

13 histories and the patent examination process. Any such testimony improperly impinges upon the

14 fact finding inquiries of the jury and the court’s role of instructing the jury about patent law and

15 burden of proof. Without the qualifications of a PTO expert and without applying his technical

16 expertise, Mr. Murphy’s testimony amounts to attorney argument and is not a proper area of

17 testimony.

18 Accordingly, Mr. Murphy should be precluded from testifying about the subject

19 matter raised in paragraphs 101-104, 106, 109-111, 114-116, 118-122, 126-130, 132, 134-136,

20 138-139, 141-148, and 150-151of his Rebuttal Expert Report.


21 3. Mr. Murphy Is Not Qualified To Testify About The PTO’s
Determinations Regarding Written Description.
22

23 Mr. Murphy also improperly reaches conclusions about patent law and file history

24 evidence without any technical analysis in a section of his rebuttal expert report entitled “Written

25 Description.” See id. at ¶¶ 207-219. Mr. Murphy opines that “the interpretation given by the

26 PTO to the claim terms of the asserted patents during prosecution was at least as broad as that

27 construction given by the Court in this case.” Id. at ¶ 208. Mr. Murphy also concludes that the

28 file history “shows that the examiner only allowed claims if he was satisfied that [the written
MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
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CASE NO. 05-00334 RMW
Case 5:05-cv-00334-RMW Document 2422 Filed 10/24/2008 Page 8 of 11

1 description requirement and other technical requirements of patentability] had been met.” Id. at

2 ¶ 208. Mr. Murphy addresses various file history excerpts that purportedly support his opinions.

3 Id. at ¶¶ 209-219, 281.

4 Again, this area of proposed testimony is beyond Mr. Murphy’s expertise. He is

5 not a registered patent attorney or patent agent and has never been an examiner at the PTO.

6 Mr. Murphy is not using any technical expertise in reaching conclusions about the PTO findings.

7 Moreover, Mr. Murphy’s conclusions are improper and misleading in that he is implying that the

8 PTO determined that the asserted claims, as construed by this Court, satisfy the written

9 description requirement.4

10 Mr. Murphy brings no special expertise to the table in addressing the file histories

11 and should not be permitted to testify as an expert at trial on these topics. Accordingly,

12 Mr. Murphy should be precluded from testifying about the subject matter raised in paragraphs

13 207-219 and 281 of his Rebuttal Expert Report.

14 4. Mr. Murphy Is Not Qualified To Testify About The PTO's


Determinations In Connection With A Restriction Requirement.
15

16 Finally, in a section entitled “The ’898 Application,” Mr. Murphy again reaches

17 conclusions for which he has no expertise: that the PTO “determined that Rambus’s ’898

18 application contained claims drawn to not just one invention, but instead eleven independent and

19 distinct inventions.” Id. at ¶ 41. See also id. at ¶¶ 227-228. The meaning of a PTO restriction

20 requirement and the election of an “invention” in response to the restriction requirement is a


21 special area of PTO procedure on which Mr. Murphy is not qualified to opine. If Rambus had

22 sought to explain these PTO procedures in its affirmative case, it could have done so through a

23 qualified expert in patent office procedure. Rambus neglected to do so and should not be allowed

24 to use Mr. Murphy as a replacement. Accordingly, Mr. Murphy should be precluded from

25 testifying about the subject matter raised in paragraphs 41 and 227-228 of his Rebuttal Expert

26 Report.

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In Hynix I¸ this Court excluded Mr. Murphy’s statements that “he agrees” with the PTO that the claims comply with
the written description requirement because the statements “give the false impression that the PTO has rendered an
28 additional opinion on the patents’ validity.” Ex. E. at 6-7.
MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
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CASE NO. 05-00334 RMW
Case 5:05-cv-00334-RMW Document 2422 Filed 10/24/2008 Page 9 of 11

1 III. CONCLUSION.

2 For the foregoing reasons, the Manufacturers respectfully request that the Court

3 preclude Mr. Murphy from testifying at trial about topics relating to file history excerpts, Patent

4 Office procedure and patent law, as identified in the following paragraphs of his Rebuttal Expert

5 Report: 41, 88-100, 101-104, 106, 109-111, 114-116, 118-122, 126-130, 132, 134-136, 138-139,

6 141-148, and 150-151, 203-219, 227-28 and 281 (and any included footnotes).

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MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
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CASE NO. 05-00334 RMW
Case 5:05-cv-00334-RMW Document 2422 Filed 10/24/2008 Page 10 of 11

1 DATED: October 24, 2008 THEODORE BROWN III


TOWNSEND and TOWNSEND and CREW, LLP
2

3 By /s/ Theodore Brown III


THEODORE BROWN III
4
Attorneys for HYNIX SEMICONDUCTOR INC.,
5 HYNIX SEMICONDUCTOR AMERICA INC.,
HYNIX SEMICONDUCTOR
6 MANUFACTURING AMERICA INC., HYNIX
SEMICONDUCTOR U.K. LTD., and HYNIX
7 SEMICONDUCTOR DEUTSCHLAND GmbH
8 DATED: October 24, 2008 SVEN RAZ
WEIL, GOTSHAL & MANGES LLP
9

10 By: /s/ Sven Raz


SVEN RAZ
11
Attorneys for MICRON TECHNOLOGY INC.,
12 et. al.
13
DATED: October 24, 2008 ANNE CAPPELLA
14 WEIL, GOTSHAL & MANGES LLP
15
By: /s/ Anne Cappella
16 ANNE CAPPELLA
17 Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
18 INC., SAMSUNG SEMICONDUCTOR, INC.,
AND SAMSUNG AUSTIN SEMICONDUCTOR,
19 L.P.
20
DATED: October 24, 2008 VICKIE L. FEEMAN
21 ORRICK HERRINGTON & SUTCLIFFE LLP
22
By: /s/ Vickie L. Feeman
23 VICKIE L. FEEMAN
24 Attorneys for NANYA TECHNOLOGY
CORPORATION and NANYA TECHNOLOGY
25 CORPORATION USA
26

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MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
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CASE NO. 05-00334 RMW
Case 5:05-cv-00334-RMW Document 2422 Filed 10/24/2008 Page 11 of 11

1 Filer’s Attestation: Pursuant to General Order No. 45, §X(B), I attest under

2 penalty of perjury that concurrence in the filing of the document has been obtained from its

3 signatory.

4 Dated: Respectfully Submitted


5

6 /s/ Vickie L. Feeman


Attorney
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10 OHS West:260532137.1

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MANUFACTURERS’ NTC OF MTN AND DAUBERT MTN NO. 2
-1- (PRECLUDE MURPHY TESTIMONY RE PTO FINDINGS)
CASE NO. 05-00334 RMW

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