  United States Court of Appeals
      for the Federal Circuit
               __________________________

                 IN RE RAMBUS INC.
               __________________________

                       2011-1247
               __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences in
Reexamination No. 90/010,420.
              __________________________

                  Decided: August 15, 2012
               __________________________

    J. MICHAEL JAKES, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, argued for
appellant. On the brief was KATHLEEN A. DALEY, of New
York, New York. Of counsel on the brief were PAUL M.
ANDERSON, Paul M. Anderson, PLLC. of Austin, Texas;
and RICHARD G. TARANTO, Farr & Taranto, of Washing-
ton, DC; and PETER A. DETRE, Munger, Tolles & Olson,
LLP, of San Francisco, California; and FRED A. ROWLEY,
JR. and JEFFREY Y. WU, Munger, Tolles & Olson, LLP, of
Los Angeles, California.

     THOMAS W. KRAUSE, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With him on the brief were RAYMOND
T. CHEN, Solicitor, and BRIAN T. RACILLA, Associate Solici-
tor.
2                                             IN RE RAMBUS

               __________________________

      Before RADER, Chief Judge, LINN and DYK, Circuit
                        Judges.
LINN, Circuit Judge.

     Appellant Rambus Inc. (“Rambus”) appeals a final de-
cision of the United States Patent and Trademark Office
(“PTO”) Board of Patent Appeals and Interferences
(“Board”) in a reexamination in which claim 18 of Ram-
bus’s U.S. Patent No. 6,034,918 (“’918 Patent”) was found
invalid as anticipated. Because substantial evidence
supports the PTO’s determination that claim 18, as cor-
rectly construed reads on the “memory module” in the
prior art iAPX 432 Interconnect Architecture Reference
Manual published by Intel Corp. in 1982 (“iAPX Man-
ual”), this court affirms.

                       I. BACKGROUND


                   A. The ’918 Patent

     The ’918 patent is titled “Method of Operating a
Memory Having a Variable Data Output Length and
Programmable Register” and is one of a family of patents
that claim priority to U.S. Patent Application No.
07/510,898 (“’898 Application”). The patents derived from
the ’898 Application collectively make up the “’898 fam-
ily.” The ’898 Application has a priority date of April 18,
1990, and thus, the ’918 Patent is now expired.

    By the early 1990’s, companies had begun developing
synchronous memory devices and related technology. In
contrast to the prior asynchronous memory devices,
synchronous memory devices read and write data with
reference to an external clock signal, allowing greater
IN RE RAMBUS                                               3
control and faster data storage and retrieval. Previous
memory devices would output all of the data located at a
requested address, and that data would be filtered so only
the desired data would be passed on to the processor. The
’918 Patent describes a method where synchronous mem-
ory devices output only a specified amount of data in
response to a request.

    Claim 18 of the ’918 Patent, at issue in this appeal,
reads as follows:

    A method of operation of a synchronous memory
    device, wherein the memory device includes a plu-
    rality of memory cells, the method of operation of
    the memory device comprises:

    receiving an external clock signal;

    receiving first block size information from a bus
    controller, wherein the first block size information
    defines a first amount of data to be output by the
    memory device onto a bus in response to a read
    request;

    receiving a first request from the bus controller;
    and

    outputting the first amount of data corresponding
    to the first block size information, in response to
    the first read request, onto the bus synchronously
    with respect to the external clock signal.

’918 Patent col. 26 ll. 13-27.

               B. District Court Proceedings

   In 2005, Rambus sued Hynix Semiconductor, Inc.
(“Hynix”) and several other chip manufacturers, including
4                                               IN RE RAMBUS

Micron Technology, Inc. (“Micron”) in the United States
District Court for the Northern District of California
alleging infringement of several patents in the ’898 fam-
ily. The district court consolidated the cases and consid-
ered the construction of the term “memory device.” The
district court initially construed “memory device” broadly
as “a device in which information can be stored and
retrieved electronically.” See Order Clarifying the Court’s
Construction of “Memory Device” at 2 Rambus Inc. v.
Micron Tech., Inc. (“Micron”), No. 06-cv-00244 (N.D. Cal.
Nov. 21, 2008), ECF No. 1381 (“Micron Order”).

     Rambus then explained to the court that defendants
would seek to invalidate Rambus’s patents based on prior
art memory systems, and moved the court to reconsider
its construction. The court clarified its construction of
“memory device,” explaining that while a memory device
is not restricted to a single chip, it is limited “in scale to
being a component in a memory subsystem.” Micron
Order at 2-3. With respect to the memory device’s func-
tion, the district court noted that “memory devices” are
distinct from “processing devices,” but explained that a
memory device is a “complete, independent memory
subsystem with all the functionality of a prior art memory
board in a conventional backplane-bus system.” Micron
Order at 3. Thus, the district court concluded that a
“‘memory device’ does not include a microprocessor like a
CPU or memory controller. It connects to a bus as a
component in a larger system. While its size is not explic-
itly defined, it is on the order of a single chip, and smaller
than a ‘memory board.’” Id.

               C. Reexamination Proceedings

    In 2009, the district court entered final judgment find-
ing that Hynix infringed claims 24 and 33 of the ’918
patent. See Final Judgment, Hynix Semiconductor, Inc. v.
IN RE RAMBUS                                             5
Rambus Inc., No. 00-cv-20905 (N.D. Cal. Mar. 10, 2009),
ECF No. 3911 (“Hynix”) (not discussing claim 18). Shortly
thereafter Hynix sought ex parte reexamination of claims
18, 24, and 33 of the ’918 Patent. During reexamination,
the examiner construed the term “memory device” broadly
as a “device[] that allows for the electronic storage and
retrieval of information.” Ex parte Rambus, Inc., Reex-
amination No. 90/010,420, slip op. at 19 (B.P.A.I. Jan. 12,
2011) (“Board Op.”). Under this construction, the exam-
iner found the ’918 Patent’s “memory device” analogous to
the memory module disclosed in the iAPX Manual, which
consists of a passive array of chips (“Array”) and a mem-
ory control unit (“MCU”). The examiner confirmed claims
24 and 33, but with the iAPX memory module satisfying
the memory device element, he rejected claim 18 as
anticipated by the iAPX Manual.

    Rambus appealed the examiner’s rejection to the
Board. On appeal, the Board defined the key issue as
“whether the memory ‘device’ recited in claim 18 reads on
the memory ‘module’ disclosed in the iAPX Manual.”
Board Op. at 3. Figure 1-2 from the iAPX Manual depicts
the iAPX 432 Interconnect Topology as:
6                                              IN RE RAMBUS

    The Board then framed “[t]he central dispute [as]
whether the claimed term ‘device’ is limited to a single
‘chip’ embodiment or also embraces a ‘memory stick’ [or
transceiver device] embodiment as disclosed in the ’918
patent.” Id. Accordingly, the Board’s analysis focused on
the specification’s teaching that “[i]n general, each teach-
ing of this invention which refers to a memory device can
be practiced using a transceiver device and one or more
memory devices.” ’918 Patent col. 20 ll. 5-8. Rambus
pointed to the prosecution history, specification, and
expert declarations to support its contention that a skilled
artisan would interpret a memory device as a single chip
component.

    The Board agreed with the district court in Micron
that “claim 18 does not recite a chip device and the pat-
entee must live with the broader memory device term
recited.” The Board also agreed that a memory device as
used in the ’918 Patent cannot be defined by the exact
number of chips it is composed of—but that number does
not have to be restricted to one. The Board also noted
that the memory stick embodiment does not appear to
have a CPU or microprocessor. The Board then cited to
Rambus’ expert declaration that the MCU in the iAPX
Manual merely receives and translates instructions from
the Bus Interface Unit (“BIU”) and concluded that the
MCU is not a microprocessor or CPU. Therefore, the
Board equated the iAPX “memory module” with the ’918
Patent’s “memory device” and affirmed the examiner’s
rejection of claim 18 as anticipated by the iAPX Manual.
Rambus timely appealed. This court has jurisdiction
pursuant to 28 U.S.C. §1295(a)(4)(A).

                      II. Discussion


                  A. Standard of Review
IN RE RAMBUS                                              7
    Claim construction is a question of law that this court
reviews de novo. Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1451 (Fed. Cir. 1998) (en banc). While claims
are generally given their broadest possible scope during
prosecution, In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir.
2000), the Board’s review of the claims of an expired
patent is similar to that of a district court’s review, Ex
Parte Papst-Motoren, 1 USPQ.2d 1655, 1655-56 (B.P.A.I.
Dec. 23, 1986); see also MPEP § 2258 I.G (directing Exam-
iners to construe claims pursuant to Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), during
reexamination of an expired patent).

    Anticipation is a question of fact and we uphold the
Board’s factual determinations unless they are not sup-
ported by substantial evidence. Hyatt, 211 F.3d at 1371-
72.

                   B. Claim Construction

    The PTO contends that the Board correctly focused its
analysis on construction of the term “memory device” in
claim 18 of the ’918 Patent and affirmed the examiner’s
rejection based on a construction of this term as meaning
a “device[] that allows for the electronic storage and
retrieval of information.” Board Op. at 19. The Board
also discussed the district court’s construction of a “mem-
ory device” in Micron. The PTO argues that the Board
supported these constructions by relying on the specifica-
tion’s description of a memory stick embodiment, the
prosecution history, expert testimony, and language in
Rambus’s other patents.

    Rambus, on the other hand, argues that the Board
erred because a “memory device” has two relevant limita-
tions: (1) it is a single chip component and (2) it does not
have a memory controller. Rambus disputes the exam-
iner’s and Board’s construction because the Board consid-
8                                              IN RE RAMBUS

ered each word individually and then construed the
phrase to cover “multiple electronic appliances grouped
together, that allow[] information to be stored and re-
trieved.” Appellant’s Br. 21. According to Rambus, this
broad construction makes no sense in the context of the
’918 Patent. Instead, Rambus would define the term
“memory device” as necessarily consisting of only one chip
with no control function, and would not define the term by
what its two component words individually mean. We
consider each of the limitations Rambus suggests in turn.

                1. Single Chip Limitation

    Rambus relies on language from the specification, ex-
pert testimony, and the prosecution history of the ’918
Patent to support its argument that a “memory device”
must be a single chip device.

                   a. The Specification

    Rambus points to portions of the specification where
“memory device” refers to a single chip component. ’918
Patent col. 17 ll. 14-27, col. 3 ll. 61-63. Rambus then cites
Lisle Corp. v. A.J. Manufacturing, 298 F.3d 1306, 1314
(Fed. Cir. 2005), and argues that the stated goals of the
invention could be achieved only through a single chip
memory device. Finally, Rambus disagrees with the
weight the Board afforded the “memory stick” embodi-
ment disclosed in the specification. According to Rambus,
the disclosure of the memory stick as an alternative to a
memory device shows that they are two distinct embodi-
ments.

    The PTO concedes that the ’918 Patent specification
uses the term memory device to describe single chip
embodiments of the invention, but stresses that nothing
in the specification limits the invention to such devices.
The PTO agrees with the Board that the multichip mem-
IN RE RAMBUS                                             9
ory stick embodiment disclosed in the specification is an
example of a memory device and posits that this embodi-
ment proves these devices can consist of more than one
chip.

    This court agrees with the Board that the specifica-
tion does not restrict the invention to single chip memory
devices. There are no words of manifest exclusion or clear
disavowals of multichip devices—there are only preferred
embodiments and goals of the invention that Rambus
argues are better met by single chip devices. The specifi-
cation language Rambus cites shows only that the inven-
tion can be carried out with a single chip memory device,
it does not require the invention to be so performed. ’918
Patent col. 17 ll. 17-27 (referring to an embodiment where
a single RAM supplies all bits for a block request). Other
portions of the specification that Rambus cites are com-
pletely inapposite to the determination of the number of
chips in a memory device. Rambus stresses that the
invention allows “high-speed access to large blocks of data
from a single memory device.” Appellant’s Br. 27 (empha-
sis in original). But this in no way indicates that the
single memory device must be made of a single memory
chip. Rambus has not demonstrated that a “memory
device” is a term of art, and nothing indicates these other
“devices” are limited to single chips. To the extent Ram-
bus wanted to limit the memory device to a single chip
component, it could have expressly done so. It did not,
and this court will not do so here.

    The Board’s equating the multichip “memory stick”
with a “memory device” to support its conclusion that the
memory device is not limited to a single chip is, however,
incorrect. The specification could not be clearer that the
disclosed invention can be practiced with either a memory
device or with a memory stick. ’918 Patent col. 20 ll. 5-8.
While the Board was incorrect that a memory device and
10                                          IN RE RAMBUS

memory stick are the same, this does not mean that a
memory device must contain only one chip.

                  b. Expert Testimony

    Rambus cites testimony previously made on Hynix’s
behalf, which suggests a memory device is made of a
single chip. Rambus also points to a joint-stipulation it
previously made with Hynix during district court litiga-
tion. There the parties agreed that “memory device” in a
related patent meant “an integrated circuit device in
which information [could] be stored and retrieved elec-
tronically.” Joint Claim Construction and Prehearing
Statement at 1 Hynix Semiconductor Inc. v. Rambus, Inc.,
No. 00-20905 (N.D. Ca.). This court previously construed
“integrated circuit device” as a single chip. Rambus v.
Infineon Techs. Ag, 318 F.3d 1081, 1091 (Fed. Cir. 2003).
Thus, Rambus urges us to conclude that a skilled artisan
would interpret “memory device” as a single chip compo-
nent.

    The PTO counters that claim 18 of the ’918 Patent is
directed to broad subject matter and “memory” is more
accurately read as an adjective modifying “device.” The
PTO argues that the plain language of the claim does not
restrict “memory devices” to single chip components and
that the word “device” is broad enough to cover any com-
ponent for carrying out the memory functions of a com-
puter.

    We agree with the PTO. With respect to the meaning
of the term “memory device,” the expert testimony on
which Rambus relies directly conflicts with the testimony
on which the Board relies. The Board cites to Hynix
where Hynix’s expert specifically described how a memory
device might consist of more than one chip. In contrast,
Rambus stresses the joint stipulation in Hynix where
Hynix agreed to define a memory device as an integrated
IN RE RAMBUS                                           11
circuit device, and Hynix’s expert Desi Rhoden’s (“Rho-
den”) unrelated interference testimony that a memory
device is “typically not” a card with multiple memory
chips on it. According to Rambus, these are instances
where even its adversary recognized that a “memory
device” is understood to be a single chip component. But
Rhoden’s testimony stated only that a card with multiple
package memory chips on it is typically not a memory
device. She did not say that a memory device must be
made of a single chip. Ultimately, the expert testimony is
conflicting and unpersuasive.

       c. Prosecution History and Related Patents

    Rambus argues that it distinguished U.S. Patent No.
4,315,308 (“Jackson”) during prosecution of the ’918
Patent based on the number of chips in a memory device.
The PTO counters that the distinctions Rambus drew to
overcome Jackson did not limit the term to a single chip.
According to the PTO, Rambus distinguished Jackson on
other grounds. The PTO is correct; Rambus distinguished
Jackson during prosecution on the basis that the “memory
device” of the ’918 Patent did not perform the functions
performed by Jackson’s BIU—an argument we analyze in
more detail, infra, in connection with the “memory con-
troller” issue.

     The PTO also asserts a claim differentiation argu-
ment, directing the court to other patents in the ’898
family where Rambus used the term “memory device” in
some claims but specifically claimed single chip compo-
nents in others. The parties agree that “unless otherwise
compelled . . . the same claim term in the same patent or
related patents carries the same construed meaning.”
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334
(Fed. Cir. 2003). In related U.S. Patent No. 5,638,334
(“’334 Patent) independent claim 1 recites a “memory
12                                               IN RE RAMBUS

device” while dependent claim 6 covers memory devices
“formed on a single semiconductor substrate.” Compare
’334 Patent col. 25 ll. 2-17, with ’334 Patent col. 26 ll. 1-2.
Rambus argues that because dependent claim 6 adds the
limitation that the substrate be a semiconductor, the
word single does not necessarily limit the term “memory
device,” which, according to Rambus, already indicates a
single chip. But if a memory device were always a single
chip there would be no need to use the word “single” in
claim 6, but not claim 1, regardless of any limitation
regarding the substrate. Similarly, claim 1 of related U.S.
Patent No. 5,954,804 (“’804 Patent”) refers to a memory
device, and claim 15 refers to an “integrated circuit de-
vice” with a “plurality of memory cells” (i.e., a single chip).
Compare ’804 Patent col. 24 l. 43, with ’804 Patent col. 25
l. 62. See also Infineon, 318 F.3d at 1091; Appellant’s Br.
at 22.

    In sum, “memory device” is a broad term which has
been used consistently in the ’918 patent and in the
family of patents related to it to encompass a device
having one or more chips. Moreover, and consistent with
the district court’s opinion in Micron, there is no basis to
find a disavowal or redefinition that would limit the term
“memory device” to a single chip.

                   2. Memory Controller

    Rambus also disagrees with the examiner’s construc-
tion of the term “memory device” as encompassing devices
that perform a control function.

    As an initial matter, the PTO contends that Rambus
waived this argument because Rambus did not raise the
issue in its appeal to the Board. See In re Watts, 354 F.3d
1362, 1367-68 (Fed. Cir. 2004). We disagree. Rambus did
in fact raise this argument in its appeal brief before the
Board, maintaining that the memory device in claim 18 of
IN RE RAMBUS                                                13
the ’918 Patent consists of a single memory chip and
arguing that the examiner’s construction was even
broader than the district court’s construction, which
concluded that the memory device “does not include a
microprocessor like a CPU or memory controller.” Patent
Owner’s Appeal Br. at 15 Ex parte Rambus, Inc., Reex-
amination No. 90/010,420 (May 4, 2010).

     On the merits, Rambus argues that the term memory
device cannot include a memory controller and cites Lisle
to argue that the speed and efficiency goals of the inven-
tion described by the specification require that the mem-
ory devices be kept as simple as possible, thus excluding a
memory controller. 298 F.3d at 1314. Rambus also points
to portions of the specification indicating that control
functions are carried out by master devices, not slave
devices like the memory device. See ’918 Patent col. 7 ll.
32-65 (fault tolerance), col. 16 ll. 54-56 (error checking),
col. 14 ll. 38-44 (queuing requests), col. 14 ll. 59-67 (device
configuration). According to Rambus, these time consum-
ing control operations are carried out by the master
devices and do not slow the transfer of data from the slave
memory devices, which simply respond to signals. Ram-
bus also argues that the term “memory device” cannot be
construed to include a controller because Rambus’s “ar-
gument for allowance [over Jackson] hinged on the BIU—
a memory controller—not being part of the claimed mem-
ory device.” Appellant’s Br. 45 (emphasis in original).

    The PTO disagrees with Rambus’s master-slave anal-
ogy and instead argues that the specification makes clear
that the ’918 Patent’s memory device includes functions
like those performed by the iAPX manual’s MCU. The
PTO also agrees with the district court’s conclusion that
the memory device can, and indeed must, provide at least
the control functionality necessary to enable the memory
chip or chips to interface with the rest of the system,
similar to how the MCU controls the array in the iAPX
14                                             IN RE RAMBUS

Manual. The PTO argues this is true even if the argu-
ment to overcome Jackson resulted in a disclaimer of a
CPU or global bus controller.

    We agree with the PTO. Rambus’s construction
broadly excluding any memory controller that provides
more functionality than simple control logic fails. First,
claim 18 itself does not limit any “control” function that
the memory device might carry out. In fact, the claim
expressly calls for the memory device to provide the
control functionality of receiving block size requests and
outputting specific amounts of data. Nothing in the claim
prevents the memory device from consisting of a storage
chip and a device that facilitates the receiving and out-
putting from that storage chip. And at oral argument
Rambus conceded that the memory device must at mini-
mum have such control logic. See Oral Arg. at 12:20-
12:33, available at http://www.cafc.uscourts.gov/oral-argu
ment-recordings/2011-1247/all. Rambus only attempted
to exclude more complex controllers from the memory
device. Oral Arg. at 15:35-15:50. But excluding more
complex controllers does not eliminate all control func-
tionality.

     Nor does Lisle compel a different result. In Lisle, “an
object of the patented invention [was] to provide a single
tool that [could] be used on many different tie rod configu-
rations.” 398 F.3d at 1314. That goal informed the con-
struction of a claim limitation because a contrary
construction would have rendered the invention mechani-
cally incapable of meeting that goal. Id. Here, the gen-
eral speed and efficiency goals Rambus relies on do not
require a construction of “memory device” that excludes
all control functionality. Pursuant to claim 18, the mem-
ory device needs only to receive and output specific data,
functions it can perform even while exhibiting other
minor functionality, without wholly defeating the inven-
tion’s speed and efficiency goals. And while Rambus did
IN RE RAMBUS                                            15
exclude the functions of Jackson’s BIU during prosecu-
tion, this restriction only prevents the memory device
from containing a global bus controller or CPU, not from
containing a component that interfaces with the computer
system, even when that component provides some addi-
tional functionality.

     Finally, Rambus admits that a key part of the ’918
Patent’s invention was a device with “‘all the functional-
ity’ of prior art memory boards.” Appellant’s Br. 39.
Thus, a memory device is not just a functionless storage
chip. The memory device must have some functionality—
specifically the data receiving and outputting functions
described in claim 18. Thus, consistent with the specifica-
tion, prosecution history, and the Micron district court’s
construction, we construe a “memory device” as a compo-
nent of a memory subsystem, not limited to a single chip,
where the device may have a controller that, at least,
provides the logic necessary to receive and output specific
data, but does not perform the control function of a CPU
or bus controller.

                      B. Anticipation

    The parties entire anticipation dispute turns on
whether the memory device in claim 18 of the ’918 Patent
reads on the memory module in the iAPX Manual. We
conclude that substantial evidence supports the Board’s
decision that it does.

    The Board accepted Rambus’s characterization of the
iAPX Manual’s module as “contain[ing] at least 12 TTL
packaged chips, a memory controller chip, and several
DRAM chips” without further comment on the examiner’s
control function analysis. Board Op. at 12. Correctly
construed, the “memory device” described in claim 18 of
the ’918 Patent can contain more than one chip and may
contain a controller that provides the logic necessary for
16                                              IN RE RAMBUS

the memory device to receive and output specific data, but
that controller does not function like a CPU. Rambus
agreed at oral argument that the MCU in the memory
module of the iAPX Manual provided the necessary logic,
but tried to distinguish the MCU because it “does more
than that.” Oral Arg. at 15:22-15:35. But as the exam-
iner recognized, it is the bus controller (i.e., the “BIU”) of
the iAPX that is akin to the BIU that Rambus distin-
guished during prosecution, not the local “MCU” that is
within iAPX’s “memory module.” There is no suggestion
that the BIU of the iAPX is within the memory module,
rather it is clearly outside of the memory module, thus
satisfying the requirement that the memory module
receive a request from a bus controller. By not restricting
a memory device to a single chip or otherwise restricting
the necessary interface control logic function within the
claims, there is simply no principled way to distinguish
the iAPX Manual’s memory module, which contains
several chips and a controller that provides the logic for
those chips to function, from the ’918 Patent’s memory
device. Thus, substantial evidence supports the Board’s
conclusion that the iAPX memory module reads directly
on the ’918 Patent’s memory device.

                     III. CONCLUSION

    For the foregoing reasons, this court affirms the
Board’s rejection of claim 18 of the ’918 Patent as antici-
pated by the iAPX Manual.

                        AFFIRMED
