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Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 1 of 163

1 Gregory P. Stone (State Bar No. 078329) Rollin A. Ransom (State Bar No. 196126)
Steven M. Perry (State Bar No. 106154) SIDLEY AUSTIN LLP
2 Sean Eskovitz (State Bar No. 241877) 555 West Fifth Street, Suite 4000
Keith R. D. Hamilton (State Bar No. 252115) Los Angeles, California 90013-1010
3 MUNGER, TOLLES & OLSON LLP Telephone: (213) 896-6000
355 South Grand Avenue, 35th Floor Facsimile: (213) 896-6600
4 Los Angeles, California 90071-1560 Email: rransom@sidley.com
Telephone: (213) 683-9100
5 Facsimile: (213) 687-3702 Pierre J. Hubert (Pro Hac Vice)
Email: gregory.stone@mto.com; Craig N. Tolliver (Pro Hac Vice)
6 steven.perry@mto.com; sean.eskovitz@mto.com; McKOOL SMITH PC
keith.hamilton@mto.com 300 West 6th Street, Suite 1700
7 Austin, Texas 78701
Peter A. Detre (State Bar No. 182619) Telephone: (512) 692-8700
8 Carolyn Hoecker Luedtke (State Bar No. 207976) Facsimile: (512) 692-8744
Jennifer L. Polse (State Bar No. 219202) Email: phubert@mckoolsmith.com;
9 MUNGER, TOLLES & OLSON LLP ctolliver@mckoolsmith.com
560 Mission Street, 27th Floor
10 San Francisco, California 94105
Telephone: (415) 512-4000
11 Facsimile: (415) 512-4077
Email: peter.detre@mto.com;
12 carolyn.luedtke@mto.com; jen.polse@mto.com
13 Attorneys for RAMBUS INC.
14 UNITED STATES DISTRICT COURT

15 NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

16

17 RAMBUS INC., CASE NO.: C 05-00334 RMW


18 Plaintiffs, DECLARATION OF KEITH R. D.
HAMILTON IN SUPPORT OF RAMBUS’S
19 vs. CONSOLIDATED OPPOSITION TO
MOTIONS OF MANUFACTURERS FOR
20 HYNIX SEMICONDUCTOR, INC., et al., SEPARATE TRIALS AND FOR A STAY
21 Defendants. Hearing: September 5, 2008
Time: 9:00 a.m.
22 Courtroom: 6
Judge: Hon. Ronald M. Whyte
23
CASE NO.: C 05-02298 RMW
24 RAMBUS INC.,

25 Plaintiff,
v.
26
SAMSUNG ELECTRONICS CO., LTD.,
27 et al.,
Defendants.
28
HAMILTON DECL. I/S/O RAMBUS’S OPPOSITION TO
MOTIONS FOR SEPARATE TRIALS AND A STAY
CV 00-20905 RMW; C 05-334 RMW; C-06-244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 2 of 163

1 CASE NO.: C 06-00244 RMW


RAMBUS INC.,
2
Plaintiff,
3 v.
4 MICRON TECHNOLOGY, INC., et al.,
5 Defendants.

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HAMILTON DECL. I/S/O RAMBUS’S OPPOSITION TO
MOTIONS FOR SEPARATE TRIALS AND A STAY
CV 00-20905 RMW; C 05-334 RMW; C-06-244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 3 of 163

1 DECLARATION OF KEITH R. D. HAMILTON


2 I, Keith R. D. Hamilton, do hereby declare and say:
3 1. I am an attorney with the law firm of Munger, Tolles & Olson LLP, counsel of
4 record for Rambus Inc. (“Rambus”) in this case, and am admitted to practice before this Court. I
5 submit this declaration in support of Rambus’s Consolidated Opposition to Motions of
6 Manufacturers for Separate Trials and for a Stay. I have personal knowledge of the matters set
7 forth herein and could and would testify competently to each of them.
8 2. Attached as Exhibit A hereto is a true and correct copy of Rambus’s Disclosure of
9 Asserted Claims and Final Infringement Contentions Pursuant to Scheduling Order and Patent
10 Local Rules, which Rambus served on August 1, 2008.
11 3. Attached as Exhibit B hereto is a true and correct copy of the Manufacturers’ Joint
12 Preliminary Invalidity Contentions, which the Manufacturers served on May 11, 2007.
13 4. Attached as Exhibit C hereto is a true and correct copy of the Manufacturers’
14 Supplemental Joint Preliminary Invalidity Contentions, which the Manufacturers served on April
15 28, 2008.
16 5. Attached as Exhibit D hereto is a true and correct copy of excerpts from the April
17 4, 2007 hearing in the above-captioned cases.
18 6. Attached as Exhibit E hereto is a true and correct copy of Rambus’s Post-Trial
19 Brief on Micron’s Unclean Hands Defense, which was filed on June 30, 2008 in Micron Tech.,
20 Inc. v. Rambus Inc., No. 00-792 (SLR) (D. Del.).
21 7. Attached as Exhibit F hereto is a true and correct copy of Rambus’s Post-Trial
22 Brief in Response to Micron’s Brief Regarding Rambus’s Alleged Litigation Misconduct and
23 Sanctions, which was filed on August 4, 2008 in Micron Tech., Inc. v. Rambus Inc., No. 00-792
24 (SLR) (D. Del.).
25 I declare under penalty of perjury under the laws of the United States that the
26 foregoing is true and correct.
27 //
28 //
HAMILTON DECL. I/S/O RAMBUS’S OPPOSITION TO
-1- MOTIONS FOR SEPARATE TRIALS AND A STAY
CV 00-20905 RMW; C 05-334 RMW; C-06-244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 4 of 163

1 Executed this 22nd day of August, 2008 at Los Angeles, California.


2

3 /s/ Keith R. D. Hamilton


Keith R. D. Hamilton
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HAMILTON DECL. I/S/O RAMBUS’S OPPOSITION TO
-2- MOTIONS FOR SEPARATE TRIALS AND A STAY
CV 00-20905 RMW; C 05-334 RMW; C-06-244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 5 of 163

EXHIBIT A
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 6 of 163

1 Gregory P. Stone (State Bar No. 078329) Rollin A. Ransom (State Bar No. 196126)
Steven M. Perry (State Bar No. 106154) SIDLEY AUSTIN LLP
2 Sean Eskovitz (State Bar No. 241877) 555 West Fifth Street, Suite 4000
MUNGER, TOLLES & OLSON LLP Los Angeles, California 90013-1010
3 355 South Grand Avenue, 35th Floor Telephone: (213) 896-6000
Los Angeles, California 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)
steven.perry@mto.com; sean.eskovitz@mto.com Craig N. Tolliver (Pro Hac Vice)
6 McKOOL SMITH PC
Peter A. Detre (State Bar No. 182619) 300 West 6th Street, Suite 1700
7 Carolyn Hoecker Luedtke (State Bar No. 207976) Austin, Texas 78701
Jennifer L. Polse (State Bar No. 219202) Telephone: (512) 692-8700
8 MUNGER, TOLLES & OLSON LLP Facsimile: (512) 692-8744
560 Mission Street, 27th Floor Email: phubert@mckoolsmith.com;
9 San Francisco, California 94105 ctolliver@mckoolsmith.com
Telephone: (415) 512-4000
10 Facsimile: (415) 512-4077
Email: peter.detre@mto.com;
11 carolyn.luedtke@mto.com; jen.polse@mto.com
12 Attorneys for RAMBUS INC.
13

14 UNITED STATES DISTRICT COURT


NORTHERN DISTRICT OF CALIFORNIA
15 SAN JOSE DIVISION
16 RAMBUS INC., ) Case No. C 05-00334 RMW
)
17 Plaintiff, ) RAMBUS INC.’S DISCLOSURE OF
vs. ) ASSERTED CLAIMS AND FINAL
18 HYNIX SEMICONDUCTOR INC., HYNIX ) INFRINGEMENT CONTENTIONS
SEMICONDUCTOR AMERICA INC., ) PURSUANT TO SCHEDULING
19 HYNIX SEMICONDUCTOR ) ORDER AND PATENT LOCAL
MANUFACTURING AMERICA INC., ) RULES
20 )
SAMSUNG ELECTRONICS CO., LTD., )
21 SAMSUNG ELECTRONICS AMERICA, )
INC., SAMSUNG SEMICONDUCTOR, )
22 INC., SAMSUNG AUSTIN )
SEMICONDUCTOR, L.P., )
23 )
NANYA TECHNOLOGY CORPORATION, )
24 NANYA TECHNOLOGY CORPORATION )
U.S.A., )
25 Defendants. )
)
26 )
)
27 )
28
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 7 of 163

1 RAMBUS INC., ) Case No. C 05-002298 RMW


)
2 Plaintiff, )
v. )
3 SAMSUNG ELECTRONICS CO., LTD., )
SAMSUNG ELECTRONICS AMERICA, )
4 INC., SAMSUNG SEMICONDUCTOR, )
INC., SAMSUNG AUSTIN )
5 SEMICONDUCTOR, L.P., )
Defendants. )
6 )
)
7 )
)
8
RAMBUS INC., ) Case No. C 06-00244 RMW
9 )
Plaintiff, )
10 vs. )
MICRON TECHNOLOGY, INC. and )
11 MICRON SEMICONDUCTOR )
PRODUCTS, INC., )
12 Defendants. )
)
13 )
14

15 Pursuant to the Court’s July 16, 2008 Patent Trial Scheduling Order and the Patent Local

16 Rules, Plaintiff Rambus Inc. hereby makes the following infringement disclosures with respect to

17 U.S. Patent No. 6,182,184 (“the ’184 Patent”), U.S. Patent No. 6,266,285 (“the ’285 Patent”),

18 U.S. Patent No. 6,314,051 (“the ’051 Patent”), U.S. Patent No. 6,493,789 (“the ’789 Patent”),

19 U.S. Patent No. 6,496,897 (“the ’897 Patent”), U.S. Patent No. 6,546,446 (“the ’6,446 Patent”),

20 U.S. Patent No. 6,584,037 (“the ’037 Patent”), U.S. Patent No. 6,697,295 (“the ’295 Patent”),

21 U.S. Patent No. 6,715,020 (“the ’5,020 Patent”), U.S. Patent No. 6,751,696 (“the ’696 Patent”),

22 U.S. Patent No. 6,324,120 (“the ’120 Patent”), U.S. Patent No. 6,378,020 (“the ’8,020 Patent”),

23 U.S. Patent No. 6,426,916 (“the ’916 Patent”), U.S. Patent No. 6,452,863 (“the ’863 Patent”) and

24 U.S. Patent No. 6,038,195 (“the ’195 Patent”) (collectively “Rambus Patents”).

25 These disclosures are based on information available to Rambus at this time. The parties

26 are continuing to conduct both fact and expert discovery. Rambus reserves all rights to

27 supplement as necessary and allowed, in particular with respect to further discovery from

28 Defendants relating to accused devices. Rambus also reserves the right to assert additional claims
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to -1- Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 8 of 163

1 of the Rambus patents, accuse different products and/or devices, and/or find alternative literal
2 and/or equivalent infringing elements in Defendants’ devices, as necessary and allowed.
3 A. ASSERTED CLAIMS
4 Rambus asserts the following claims against all Defendants’ DDR3 devices1, Nanya’s
5 DDR2 devices, and Samsung’s DDR2 devices, GDDR2 devices, gDDR2 devices and GDDR3
6 devices:
7 Patent Claim(s)
8 6,182,184 14
9 6,266,285 1, 16
10 6,314,051 27, 32, 43
11 6,324,120 33
12 6,378,020 36
13 6,426,916 28
14 6,452,863 16
15 6,493,789 13
16 6,496,897 2, 16
17 6,546,446 2, 3, 4
18 6,584,037 1, 9, 34
19 6,697,295 45
20 6,751,696 4
21 In addition, Rambus asserts the following claims against Hynix’s GDDR4 devices and
22 Samsung’s GDDR4 devices:
23 Patent Claim(s)
24 6,266,285 1, 16
25 6,314,051 27, 32, 43
26 6,378,020 36
27 1
As used herein, the term “devices” includes memory devices (e.g., SDRAM, SGRAM and
28 RLDRAM II) and memory modules and other products containing any such memory devices.
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to -2- Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 9 of 163

1 6,493,789 13
2 6,496,897 2, 16
3 6,546,446 2, 3, 4
4 6,584,037 1, 9, 34
5 6,697,295 45
6 6,751,696 4
7 In addition, Rambus asserts the following claims against Hynix’s GDDR5 devices and
8 Samsung’s GDDR5 devices2:
9 Patent Claim(s)
10 6,266,285 1, 16
11 6,314,051 27, 43
12 6,546,446 2
13 6,584,037 1, 34
14 In addition, Rambus asserts the following claims against Micron’s DDR2 devices and
15 GDDR3 devices, and Hynix’s DDR2 devices, GDDR2 devices, gDDR2 devices, and GDDR3
16 devices:
17 Patent Claim(s)
18 6,182,184 14
19 6,266,285 1, 16
20 6,314,051 27, 32, 43
21 6,493,789 13
22 6,496,897 2, 16
23 6,546,446 2, 3, 4
24 6,584,037 1, 9, 34
25
2
26 Though Rambus is continuing to seek discovery regarding GDDR5 devices, including by a
motion to compel, and its investigation is not yet complete, Rambus is informed and believes, and
27 on that basis alleges, that the accused GDDR5 devices infringe at least the listed patent claims.
Rambus intends to supplement its infringement contentions in light of further discovery and as
28 otherwise appropriate.
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to -3- Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 10 of 163

1 6,697,295 45
2 6,751,696 4
3 In addition, Rambus asserts the following claims against Micron’s RLDRAM II devices:
4 Patent Claim(s)
5 6,314,051 27, 32, 43
6 6,496,897 2, 16
7 6,584,037 1, 9
8 6,697,295 45
9 6,751,696 4
10 In addition, Rambus asserts the following claims against Nanya’s DDR devices:
11 Patent Claim(s)
12 6,324,120 33
13 6,378,020 36
14 6,426,916 28
15 6,452,863 16
16 In addition, Rambus asserts the following claims against Nanya’s SDR-SDRAM devices:
17 Patent Claim(s)
18 6,324,120 33
19 6,426,916 28
20 6,452,863 16
21 In addition, Rambus asserts the following claims against Samsung’s DDR devices and
22 DDR-SGRAM (GDDR) devices:
23 Patent Claim(s)
24 6,038,195 1
25 6,324,120 33
26 6,378,020 36
27 6,426,916 28
28 6,452,863 16
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to -4- Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 11 of 163

1 In addition, Rambus asserts the following claims against Samsung’s SDR-SDRAM


2 devices, SDR-SGRAM devices, Mobile-SDRAM devices and Mobile-DDR-SDRAM devices:
3 Patent Claim(s)
4 6,038,195 1
5 6,324,120 33
6 6,426,916 28
7 6,452,863 16
8 In addition, Rambus asserts the following claims against Samsung’s and Micron’s
9 memory controllers capable of interfacing with and/or controlling any SDR-SDRAM, Mobile-
10 SDRAM or SDR-SGRAM memory device, and products containing any such memory controller:
11 Patent Claim(s)
12 6,715,020 1, 2
13 In addition, Rambus asserts the following claims against Samsung’s and Micron’s
14 memory controllers capable of interfacing with and/or controlling any DDR SDRAM, Mobile-
15 DDR-SDRAM, DDR SGRAM (GDDR SDRAM), DDR2 SDRAM, GDDR2 SDRAM, gDDR2
16 SDRAM, GDDR3 SDRAM, RLDRAM II or DDR3 SDRAM memory device, and products
17 containing any such memory controller:
18 Patent Claim(s)
19 6,715,020 1, 2, 14
20 The foregoing lists are not comprehensive lists of the claims infringed by Defendants, but
21 are limited pursuant to the Court’s direction that the number of asserted claims in these cases be
22 limited to no more than 25 at this time. Rambus reserves the right to seek leave of court to add,
23 delete, substitute, or otherwise amend this list of asserted claims in light of further discovery, the
24 Court’s claim construction or other circumstances.
25 B. ACCUSED DEVICES AND METHODS
26 Rambus is currently aware of the accused device product numbers listed in Exhibits A - D
27 attached hereto. The accused devices include at least the following memory devices (as well as
28
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to -5- Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 12 of 163

1 memory modules and other products containing any of the memory devices):
2 Hynix’s DDR2 SDRAM devices, Hynix’s gDDR2 SDRAM devices, Hynix’s GDDR2
3 SDRAM devices, Hynix’s DDR3 SDRAM devices, Hynix’s GDDR3 SDRAM devices, Hynix’s
4 GDDR4 SDRAM devices, Hynix’s GDDR5 SDRAM devices,
5 Samsung’s SDR-SDRAM devices, Samsung’s Mobile-SDRAM devices, Samsung’s
6 SDR-SGRAM devices, Samsung’s DDR SDRAM devices, Samsung’s Mobile-DDR-SDRAM
7 devices, Samsung’s DDR SGRAM (GDDR SDRAM) devices, Samsung’s DDR2 SDRAM
8 devices, Samsung’s gDDR2 SDRAM devices, Samsung’s GDDR2 SDRAM devices, Samsung’s
9 DDR3 SDRAM devices, Samsung’s GDDR3 SDRAM devices, Samsung’s GDDR4 SDRAM
10 devices, Samsung’s GDDR5 SDRAM devices,
11 Nanya’s SDR-SDRAM devices, Nanya’s DDR SDRAM devices, Nanya’s DDR2
12 SDRAM devices, Nanya’s DDR3 SDRAM devices,
13 Micron’s DDR2 SDRAM devices, Micron’s DDR3 SDRAM devices, Micron’s GDDR3
14 SDRAM devices, and Micron’s RLDRAM II devices.
15 The accused devices also include at least the following memory controllers (as well as
16 products containing any of the memory controllers):
17 Samsung’s memory controllers capable of interfacing with and/or controlling any SDR-
18 SDRAM, Mobile-SDRAM or SDR-SGRAM, DDR SDRAM, Mobile-DDR-SDRAM, DDR
19 SGRAM (GDDR SDRAM), DDR2 SDRAM, GDDR2 SDRAM, gDDR2 SDRAM, GDDR3
20 SDRAM, RLDRAM II or DDR3 SDRAM memory device, and
21 Micron’s memory controllers capable of interfacing with and/or controlling any SDR-
22 SDRAM, Mobile-SDRAM or SDR-SGRAM, DDR SDRAM, Mobile-DDR-SDRAM, DDR
23 SGRAM (GDDR SDRAM), DDR2 SDRAM, GDDR2 SDRAM, gDDR2 SDRAM, GDDR3
24 SDRAM, RLDRAM II or DDR3 SDRAM memory device.
25 C. CLAIM CHARTS
26 Claim charts identifying the location of every element of every asserted claim of the
27

28
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to -6- Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 13 of 163

1 Rambus Patents within accused devices are attached hereto as Exhibits E - J.3 Note that the claim
2 charts include the asserted claims listed above as well as claims that are not themselves asserted,
3 but from which one or more asserted claims depend.
4 In order to avoid unnecessary repetition, the claim charts refer to the following datasheets
5 describing certain of the accused products:
6 • Hynix 512Mb (32Mx16) DDR2 SDRAM, HY5PS121621F, Rev. 0.1 Mar. 2004
7 (“HgDDR2”) (attached hereto as Exhibit K);
8 • Hynix 512Mb DDR2 SDRAM, HY5PS12421(L)F, HY5PS12821(L)F,
9 HY5PS121621(L)F, Rev. 1.2 Apr. 2005 (“HDDR2”) (attached hereto as Exhibit
10 L);
11 • Hynix DDR2 SDRAM Device Operation & Timing Diagram (“HDDR2DOT”)
12 (attached hereto as Exhibit M);
13 • Hynix 512M (16Mx32) GDDR3 SDRAM, HY5RS123235FP, Rev. 1.1 Jun. 2005
14 (‘HGDDR3”) (attached hereto as Exhibit N);
15 • Hynix 1Gb DDR3 SDRAM, Rev. 0.3, May 2007 (“Hynix DDR3 SDRAM”)
16 (attached hereto as Exhibit O);
17 • Hynix 512M (16Mx32) GDDR4 SDRAM, HY5FS123235AFCP, Rev. 1.2, June
18 2008 (“Hynix GDDR4 SGRAM”) (attached hereto as Exhibit P);
19

20 • Samsung 128 Mb F-die SDRAM Specification (Rev. 1.2/May 2004) (“SDRAM”)


21 (attached hereto as Exhibit Q);
22 • Samsung SDRAM Device Operations (“SDR_DO”) (attached hereto as Exhibit
23 R);
24 • Samsung SDRAM Timing Diagram (“SDR_TD”) (attached hereto as Exhibit S);
25
3
26 The parties have proposed or agreed that certain products will be considered representative of
the entire class of products to which they belong for infringement purposes. Any products that
27 are in fact representative of their product class would infringe the asserted patent claims for at
least the same or similar reasons that any other class member infringes as set out in the
28 accompanying claim charts.
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to -7- Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 14 of 163

1 • Samsung 32Mbit SGRAM, Revision 1.3, Dec. 2000 (“SGRAM”) (attached hereto
2 as Exhibit T);
3 • Samsung K4S511633F-Y(P)C/L/F Mobile-SDRAM, September 2004 (“Mobile-
4 SDRAM”) (attached hereto as Exhibit U);
5 • Samsung Mobile SDR SDRAM Device Operations & Timing Diagram
6 (“MSDR_DOT”) (attached hereto as Exhibit V);
7 • Samsung 512Mb C-die DDR SDRAM Specification (Rev. 1.1/Jun. 2005) (“DDR
8 SDRAM”) (attached hereto as Exhibit W);
9 • Samsung DDR SDRAM Device Operation & Timing Diagram (“DDR_DOT”)
10 (attached hereto as Exhibit X);
11 • Samsung K4X56163PE-L(F)G Mobile-DDR SDRAM (Mar. 2004) (“Mobile-
12 DDR”) (attached hereto as Exhibit Y);
13 • Samsung 256Mbit GDDR SDRAM, Revision 1.6, May 2005 (“GDDR SDRAM”)
14 (attached hereto as Exhibit Z);
15 • Samsung Device Operation & Timing Diagram, x32 DDR SDRAM
16 (“GDDR_DOT”) (attached hereto as Exhibit AA);
17 • Samsung 512Mb B-die DDR2 SDRAM Specification, Ver. 1.4 Feb. 2005
18 (“SDDR2”) (attached hereto as Exhibit AB);
19 • Samsung DDR2 SDRAM Device Operation & Timing Diagram (“SDDR2DOT”)
20 (attached hereto as Exhibit AC);
21 • Samsung 512MBit gDDR2 SDRAM, Rev. 1.3, Jun. 2005 (“SgDDR2”) (attached
22 hereto as Exhibit AD);
23 • Samsung 512Mbit GDDR3 SDRAM, Rev. 1.0, March 2005 (“SGDDR3”)
24 (attached hereto as Exhibit AE);
25 • Samsung 1Gb C-die DDR3 SDRAM Specification, Rev. 1.0, June 2007
26 (“Samsung DDR3 SDRAM C-die Spec” or “C-die Spec”) (attached hereto as
27 Exhibit AF);
28 • Samsung DDR3 SDRAM Specification, Rev. 0.2 July 2007(“Samsung DDR3
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to -8- Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 15 of 163

1 SDRAM”) (attached hereto as Exhibit AG);


2 • Samsung 512Mbit GDDR4 SGRAM, Rev. 1.2, May 2007 (“Samsung GDDR4
3 SGRAM”) (attached hereto as Exhibit AH);
4

5 • Nanya 256Mb Synchronous DRAM, Rev. 1.1, June 2007 (“Nanya SDRAM”)
6 (attached hereto as Exhibit AI);
7 • Nanya 512Mb DDR SDRAM, Rev. 1.5, June 2007 (“Nanya DDR SDRAM”)
8 (attached hereto as Exhibit AJ);
9 • Nanya 512Mb DDR2 SDRAM, NT5TU128M4AB/NT5TU128M4AE (Green),
10 NT5TU64M8AF/ NT5TU64M8AB/NT5TU64M8AE (Green), NT5TU32M16AF/
11 NT5TU32M16AG (Green), Rev. 1.4 July 2005 (“NDDR2”) (attached hereto as
12 Exhibit AK);
13 • Nanya 1Gb DDR3 SDRAM A-Die, Rev 1.0, Jun. 2008 (“Nanya DDR3 SDRAM”)
14 (attached hereto as Exhibit AL);
15

16 • Micron DDR2 SDRAM, MT47H64M4 – 16 Meg x 4 x 4 banks, MT47H32M8 – 8


17 Meg x 8 x 4 banks, MT47H16M16 – 4 Meg x 16 x 4 banks, Rev. J 11/05 EN
18 (“DDR2 SDRAM”) (attached hereto as Exhibit AM);
19 • Micron 1Gb DDR3 SDRAM, Rev. B, Mar. 2007 (“Micron DDR3 SDRAM”)
20 (attached hereto as Exhibit AN);
21 • Micron Graphics DDR3 SDRAM, MT44H8M32 – 2 MEG x 32 x 4 BANKS,
22 Rev. A 6/03 EN (“GDDR3 SDRAM”) (attached hereto as Exhibit AO); and
23 • Micron 288Mb CIO Reduced Latency (RLDRAM II), MT49H8M36,
24 MT49H16M18, MT49H32M9, Rev. H 8/05 EN (“RLDRAM II”) (attached hereto
25 as Exhibit AP).
26 Rambus reserves the right to amend its claim charts, as well as other information
27 contained in this document and the exhibits attached hereto: to incorporate new information
28 learned during the course of discovery; pursuant to the Court’s Orders; pursuant to Patent Local
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to -9- Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 16 of 163

1 Rule 3-6; and/or as otherwise appropriate.


2 D. LITERAL INFRINGEMENT AND DOCTRINE OF EQUIVALENTS
3 Rambus asserts that, under the Court’s and any appropriate construction of the asserted
4 claims and their claim terms, every limitation of the asserted claims of the Rambus Patents is
5 literally present in the Defendants’ devices accused of infringing the claim, as set forth in the
6 claim charts attached hereto. To the extent that any limitation is found to be not literally present,
7 Rambus asserts that such limitation is present under the doctrine of equivalents.
8 Rambus hereby incorporates by reference, as if fully set forth herein, portions of its prior
9 filings in this action regarding the doctrine of equivalents to the extent applicable in light of the
10 Court’s and any appropriate claim construction. See, e.g., Rambus’s 11/02/2007 Opposition to
11 Manufacturers’ Joint Motion for Summary Judgment (Farmwald/Horowitz), p. 23; Rambus’s
12 11/02/2007 Opposition to Manufacturers’ Joint Motion for Summary Judgment (Ware), pp. 17,
13 22-23; 11/02/2007 Declaration of Robert J. Murphy in Support of Rambus’s Opposition to
14 Manufacturers’ Joint Motion for Summary Judgment (Ware & Farmwald/Horowitz), ¶¶ 137-156,
15 162-165, 171-175.
16 Moreover, Rambus reserves the right to amend its infringement contentions to further
17 assert infringement under the doctrine of equivalents in light of the Courts’ claim constructions.
18 E. PRIORITY DATES
19 Each of the asserted claims of the ’789 and ’897 Patents is entitled to at least the priority
20 date of provisional U.S. Patent Application No. 08/545,294, filed October 19, 1995.
21 Each of the asserted claims of the ’184, ’285, ’051, ’6,446, ’037, ’295, ’5,020 and ’696
22 Patents is entitled to at least the priority date of U.S. Patent Application No. 07/510,898, filed on
23 April 18, 1990.
24 Each of the asserted claims of the ’195, ’120, ’8,020, ’916 and ’863 Patents is entitled to
25 at least the priority date of U.S. Patent Application No. 07/510,898, filed on April 18, 1990. The
26 subject matter described by the asserted claims was conceived at least as early as mid-1988 and
27 reduced to practice during 1989 and early 1990.
28
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to - 10 - Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 17 of 163

1 F. RAMBUS’S OWN PRODUCTS


2 This provision is inapplicable because Rambus does not manufacture any products that

3 practice the claimed inventions. However, Rambus designs, develops, markets and licenses high

4 speed interface technology. Rambus has become a key player in the semiconductor industry by

5 designing and developing innovative, cost-efficient technology for increasing the data transfer

6 rate between integrated circuits – for example, between memory devices and memory sub-

7 systems presently used in personal computers, communications networking equipment, digital

8 television appliances, and home video games systems.

9 Over the past decade, Rambus has developed advanced memory designs and memory

10 system architectures that practice certain of the claimed inventions and that have revolutionized

11 the way in which electronic systems access and store data. These include (1) Rambus’s XDR

12 DRAM, which provides unprecedented ability to span performance and memory capacity

13 requirements across a range of computing, consumer, and networking applications, including, for

14 example, Sony Corporation’s PlayStation 3, and (2) Rambus’s previous generation memory,

15 Direct RDRAM, which is used in personal computers, digital televisions, and Sony’s PlayStation

16 2. Prior generations of RDRAM also incorporated certain of the inventions of the asserted

17 claims.

18 Rambus licenses its patents, including the patents in suit, to various manufacturers of

19 synchronous memory devices, and others.

20

21
DATED: August 1, 2008
22
By: /s/ Pierre J. Hubert
23 Pierre J. Hubert
24 Attorneys for Plaintiff
RAMBUS INC.
25

26

27

28
Rambus Inc.’s Disclosure of Asserted Claims and Case No. C 05-00334 RMW
Final Infringement Contentions Pursuant to - 11 - Case No. C 05-002298 RMW
Scheduling Order and Patent Local Rules Case No. C 06-00244 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 18 of 163

EXHIBIT B
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 19 of 163

(Counsel listed on signature page)

UNITED STATES DISTRICT COURT


NORTHERN DISTRICT OF CALIFORNIA
JOSE DIVISION
SAN

RAMBUS INC. Case No. C 05 00334 RMW


Plaintiff
MANUFACTURERS' JOINT
PRELIMINARY INVALIDITY
CONTENTION
HYNIX SEMICONDUCTOR INC. , HYNIX
SEMICONDUCTOR AMERICA INC. , HYNIX
SEMICONDUCTOR MANUFACTURING
AMERICA , INc.

SAMSUNG ELECTRONICS CO. , LTD.


SAMSUNG ELECTRONICS AMERICA , INc.
SAMSUNG SEMICONDUCTOR , INC.
SAMSUNG AUSTIN SEMICONDUCTOR , LP.
NANY A TECHNOLOGY CORPORATION
NANY A TECHNOLOGY CORPORATION
u.S.
Defendants.

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INTRODUCTION
For the convenience of the Court SAMSUNG ELECTRONICS CO. , LTD.

SAMSUNG ELECTRONICS AMERICA , INc. SAMSUNG SEMICONDUCTOR , INc.

SAMSUNG AUSTIN SEMICONDUCTOR , LP. , MICRON TECHNOLOGY , INc. , MICRON


SEMICONDUCTOR PRODUCTS , INC. , HYNIX SEMICONDUCTOR INC. , HYNIX
SEMICONDUCTOR AMERICA INc. HYNIX SEMICONDUCTOR MANUFACTURING
AMERICA , INc. NANY A TECHNOLOGY CORPORATION NANY A TECHNOLOGY
CORPORATION u.S. A. (collectively " Manufacturers ) submit this joint disclosure pursuant to

Patent Local Rules 3- 3 and 3- , and the Case Management Order.

By submitting this Joint Preliminary Invalidity Contentions , no Manufacturer

should be seen as adopting or acquiescing to positions taken or defenses asserted by any of the
other Manufacturers in any other case with Rambus. Each Manufacturer reserves the right to
assert its own invalidity defenses at trial and does not agree to be bound by any positions taken or
defenses asserted by the other Manufacturers.

The Manufacturers make this disclosure upon information obtained to date. The

Manufacturers ' investigations are continuing, and the Manufacturers individually reserve the right

to modify, amend , or supplement these contentions as additional information becomes available.


Particularly, Manufacturers ' Joint Preliminary Invalidity Contentions are , based in whole or in
part on a present understanding of Rambus Inc. ' s (" Rambus ) positions concerning the scope and

construction of the claims to the extent those positions can be deduced from Rambus ' s

contentions pursuant to Patent Local Rule 3- , and the various constructions offered by the

various parties and courts in other patent infringement lawsuits involving Rambus. The
Manufacturers ' present invalidity contentions are directed only to Rambus s asserted claims. The

Joint Preliminary Invalidity Contentions are not an admission of validity as to other claims and
each of the Manufacturers reserves all rights to contest validity based on the prior art discussed
herein , prior invalidating activities , other prior art , or any other available bases.

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Manufacturers ' Joint Preliminary Invalidity Contentions set forth below and in the
attached exhibits are subject to supplementation and amendment after: (1) the Court issues its
claim construction ruling, (2) the receipt of Rambus s expert reports , (3) the receipt of
supplemental Preliminary Infringement Contentions or asserted claims , (4) the issuance of rulings

on summary judgment motions , (5) Rambus s reduction and/or election of claims to be tried; or

(6) as otherwise appropriate.

In the absence of a claim construction ruling, the Manufacturers ' Joint Preliminary
Invalidity Contentions are in the alternative , and are not necessarily intended to be consistent with

one another , and should not be otherwise construed. Further , by including in this disclosureprior

art that would anticipate or render obvious the patents- in-suit under the scope or construction

apparently applied by Rambus to its claims , Manufacturers ' Joint Preliminary Invalidity
Contentions herein are not , and should in no way be seen as , adoptions or acquiescence of or

admissions as to the accuracy of that scope or construction.

In addition , Rambus has improperly asserted claims of priority concerning the

patents- in-suit; therefore , the Manufacturers have included anticipatory and obviousness prior art

references based on the Manufacturers ' current understanding of the proper priority dates of the

patents- in-suit. Moreover , each of the Manufacturers reserves the right to withdraw prior art from

this disclosure in light of the Court s claim construction ruling, any revised or supplemented
Preliminary Infringement Contentions from Rambus , or as otherwise appropriate.

The references disclosed below and in the exhibits do not include all references
known to the Manufacturers or previously identified to Rambus. In the interest of efficiency, the

Manufacturers have undertaken an effort to streamline the process by selecting a limited number
of prior art references for these Joint Preliminary Infringement Contentions. This is not

admission by the Manufacturers that other references , alone or in combination , do not invalidate
or affect the validity of Rambus s asserted claims. Each of the Manufacturers reserves all rights
to identify other prior art references in the future against the asserted claims or other claims.

II. PRIOR ART REFERENCES-PATENT LOCAL RULES 3- 3(A)


Pursuant to Patent Local Rule 3- 3(a), Exhibits A- I and A- 2 collectively identify

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) ("

Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 22 of 163

the prior art references used in support of Manufacturers ' Joint Preliminary Invalidity
Contentions. Exhibit A- I is Manufacturers ' identification of the prior art references that support

the Manufacturers ' Joint Preliminary Invalidity Contentions for the common patent claims
asserted against Samsung, Micron , Hynix , and Nanya in Case Nos. C 05 00334 RMW and C 06

00244 RMW. Exhibit A- 2 is Nanya s identification of the prior art references that support
Nanya s Preliminary Invalidity Contentions for the claims asserted only against Nanya in Case

No. 05 00334 RMW. The omission of any reference in Exhibits A- I and A- 2 is not an admission
by any Manufacturer that any omitted reference , alone or in combination , does not invalidate or
affect the validity of Rambus s asserted claims.

The Manufacturers understand that many prior art synchronous memory designs
existed , including designs for the synchronous access of memories over a bus , prior to the

effective priority dates of the patents- in-suit. The Manufacturers ' investigation is not yet

complete. For example , a number of references have recently been identified , which may affect
the validity of the patents- in-suit. The relevance of these references , listed in Exhibit E , is
currently being determined. As relevant information becomes available , the Manufacturers will

amend or supplement these Joint Preliminary Invalidity Contentions as necessary.

Because the asserted claims of United States Patent Nos. 6 182 184 (" the ' 184

Patent" ); 6 260 097 ("the ' 097 Patent" ); 6 266 285 (" the ' 285 Patent" ); 6 314 051 (" the ' 051
Patent ); 6 546,446 (" the ' 6,446 Patent" ); 6 564 281 (" the ' 281 Patent" ); 6 584 037("the ' 037
Patent ); 6 697 295 (" the ' 295 Patent" ); 6 715 020 (" the ' 020 Patent ); 6 751 696 (" the ' 696

Patent ); and 6 807 598 ("the ' 598 Patent Common Patents ) and U. S. Patent Nos. 6 324,120
the ' 120 Patent ), 6 378 020 ("the ' 020 Patent" ), 6,426 916 ("the ' 916 Patent" ) and 6,452 863

the ' 863 Patent" ) asserted only against Nanya (" Nanya-only Patents ) as apparently construed

by Rambus in its Preliminary Infringement Contentions , are not adequately supported by the
specification of any parent application or any other related application , including, but not limited
, Application No. 07/510 898 , the proper priority date for the asserted claims for purposes of
analyzing invalidity is no earlier than the actual filing date of the relevant application. Rambus
however , maintains that the proper priority date for each of the asserted claims for the purposes of

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analyzing invalidity is the filing date (April 18 , 1990) of Application No. 07/510 898. The

Manufacturers (and Nanya for the Nanya-only Patents) have challenged Rambus s improper claim

of priority concerning the Common Patents. However , given that , to date , there has been no
ruling on such challenge , the Manufacturers (and Nanya for the Nanya-only Patents) have not
addressed any intervening references in these Joint Preliminary Invalidity Contentions but reserve
the right to supplement these Joint Preliminary Invalidity Contentions with such intervening
references if proper priority date is found to be a date other than April 18 , 1990.

III. ANTICIPATION OR OBVIOUSNESS


Patent Local Rule 3- 3(b)
Pursuant to Patent Local Rule 3- 3(b), Exhibits B- , B- 2 and B- 3 identify each item
of prior art , taking into account the claim scope and construction Rambus appears to employ in
alleging infringement and the current stage of discovery, that anticipates each asserted claim or
renders it obvious. Exhibit B- 1 is Manufacturers ' identification of the prior art references that

anticipate each asserted claim or render it obvious for the Common Patent claims asserted against

Samsung, Micron , Hynix , and Nanya in Case Nos. C 05 00334 RMW and C 06 00244 RMW.
Exhibit B- 2 is Manufacturer s identification of the prior art references that anticipate each
asserted claim or render it obvious for the u.s. Patent Nos. 6,493 789 (" the ' 789 Patent"),
6,496 897 (" the ' 897 Patent") and 6 701,446 (" the ' 1 ,446 Patent" ) asserted against Samsung,
Micron , Hynix , and Nanya in Case Nos. C 05 00334 RMW and C 06 00244 RMW. Exhibit B-

is Nanya s identification of the prior art references that anticipate each asserted claim or render it

obvious for the Nanya-only Patents. References identified in Exhibits B- , B- 2 and B- 3 may
disclose the elements of the asserted claims explicitly and/or inherently and/or may be relied upon

to show , among other things , the state of the art in the relevant timeframes and/or motivations to
combine references , predictable results of combining known elements , the interrelated teachings

of the patents , the effects of demands known to the design community or present in the

marketplace , and the background knowledge possessed by a person having ordinary skill in the

art.

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Anticipatory prior art references are listed under the title "~ 102 Prior Art

References " of Exhibits B- , B- 2 and B- 3. For obviousness , the combinations of prior art
references that render the asserted claims obvious are listed under the title " ~ 103 Prior Art
References " of Exhibits B- , B- 2 and B- 3. Motivations to combine references for obviousness , to

the extent such motivations may provide helpful insight , are also set forth in Exhibits B- , B-
and B- 3. The suggested obviousness combinations in Exhibit B- 1 and B- 2 are in the alternative

to Manufacturers ' anticipation contentions set forth in Exhibit B- 1 and B- , respectively, and are

not to be construed to suggest that any reference included in the combination is not anticipatory.
The suggested obviousness combinations in Exhibit B- 3 are in the alternative to Nanya
anticipation contentions set forth in Exhibit B- , respectively, and are not to be construed to
suggest that any reference included in the combination is not anticipatory. To the extent that any
of the prior art references that the Manufacturers (or Nanya with respect to the claims asserted
only against Nanya) contend invalidates the asserted claims under 35 u.S. C. ~ 102 fails or is
found not to disclose , expressly or inherently, each and every element and limitation of a
claim(s), the Manufacturers (or Nanya with respect to the claims asserted only against Nanya)
contend that any such unmet claim element or limitation would have been obvious to one of skill
in the art before the claimed priority date of the patents- in-suit in view of the disclosure of the
reference , and that each such claim is invalid under 35 u.S. c. ~ 103.

Patent Local Rule 3- 3(a) - Invalidity Under 35 U. c. ~ lO2(b) (On- Sale, etc.
and lO2(g) (Prior Invention)
The Manufacturers contend that the patent claims asserted against Samsung,
Micron , Hynix , and Nanya are anticipated by certain products and prior inventions as set forth

below:

The Manufacturers contend that the iAPX invalidates many of the claims
asserted by Rambus. The Manufacturers are investigating the identities of the individuals
involved in the first sale , offer for sale , or public use of the iAPX. The Manufacturers are also
investigating the exact date that the iAPX was first sold , offered for sale , or was publicly used. In

addition , the Manufacturers are currently investigating the dates of conception and reduction to

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practice of the iAPX , and when the iAPX was first known or used by others. However , as is
evidenced by the following documents , the pertinent prior art date was no later than 1982: (1)
iAPX Manual; (2) iAPX Specification; (3) iAPX IP; (4) iAPX GDP; (5) the ' 307 Patent (Budde);
and (6) the ' 308 Patent (Jackson) (see Exhibit A- I for full citations). In the charts in Exhibit C

any citation to one or more of these prior art reference should be construed to constitute a

reference to the iAPX. Discovery is ongoing in the case , and the Manufacturers will supplement
these contentions if and when more information becomes available.

The Manufacturers contend that the Intel 2186A Family of integrated RAM
invalidates many of the claims asserted by Rambus. The Manufacturers are investigating the
identities of the individuals involved in the first sale , offer for sale , or public use of the Intel
2186A Family of integrated RAM. The Manufacturers are also investigating the exact date that
the Intel 2186A Family of integrated RAM was first sold , offered for sale , or was publicly used.
In addition , the Manufacturers are currently investigating the dates of conception and reduction to

practice of the Intel 2186A Family of integrated RAM , and when the Intel 2186A Family of
integrated RAM was first known or used by others. However , as is evidenced by the following
document , the pertinent prior art date was no later than 1985: (1) iRAM (see Exhibit A- I for full

citations). In the charts in Exhibit C , any citation to this prior art reference should be construed to
constitute a reference to the iRAM products. Discovery is ongoing in the case , and the

Manufacturers will supplement these contentions if and when more information becomes
available.

The Manufacturers contend that the Apollo AT Memory Subsystem


invalidates many of the claims asserted by Rambus. The Manufacturers are investigating the
identities of the individuals involved in the first sale , offer for sale , or public use of the Apollo
AT Memory Subsystem. The Manufacturers are also investigating the exact date that the Apollo
AT Memory Subsystem was first sold , offered for sale , or was publicly used. In addition , the
Manufacturers are currently investigating the dates of conception and reduction to practice of the
Apollo AT Memory Subsystem , and when the Apollo AT Memory Subsystem was first known or
used by others. However , as is evidenced by the following document , the pertinent prior art date

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was prior to October 21 , 1988: (1) the ' 004 Patent (Kurtz e) (see Exhibit A- I for full citations).

In the charts in Exhibit C , any citation to this prior art reference should be construed to constitute
a reference to the Apollo AT Memory Subsystem. Discovery is ongoing in the case , and the
Manufacturers will supplement these contentions if and when more information becomes
available.

The Manufacturers contend that the Intel 4096-bit psuedostatic RAM


invalidates many of the claims asserted by Rambus. The Manufacturers are investigating the

identities of the individuals involved in the first sale , offer for sale , or public use of the Intel
4096- bit psuedostatic RAM. The Manufacturers are also investigating the exact date that the Intel

4096- bit psuedostatic RAM was first sold , offered for sale , or was publicly used. In addition , the

Manufacturers are currently investigating the dates of conception and reduction to practice of the
Intel 4096- bit psuedostatic RAM , and when the Intel 4096- bit psuedostatic RAM was first known

or used by others. However , as is evidenced by the following document , the pertinent prior art

date was no later than October 1976: (1) Ebel (see Exhibit A- I for full citations). In the charts in
Exhibit C , any citation to this prior art reference should be construed to constitute a reference to
the Intel 4096- bit psuedostatic RAM. Discovery is ongoing in the case , and the Manufacturers
will supplement these contentions if and when more information becomes available.

The Manufacturers contend that the 2048- Bit MNOS BORAM LSI Circuit
by Sperry Univac invalidates many of the claims asserted by Rambus. The Manufacturers are

investigating the identities of the individuals involved in the first sale , offer for sale , or public use
of the 2048- Bit MNOS BORAM LSI Circuit by Sperry Univac. The Manufacturers are also
investigating the exact date that the 2048- Bit MNOS BORAM LSI Circuit by Sperry Univac was
first sold , offered for sale , or was publicly used. In addition , the Manufacturers are currently
investigating the dates of conception and reduction to practice of the 2048- Bit MNOS BORAM

LSI Circuit by Sperry Univac , and when the 2048- Bit MNOS BORAM LSI Circuit by Sperry
Univac was first known or used by others. However , as is evidenced by the following document

the pertinent prior art date was no later than 1985: (1) Lodi Nov. 1976 (see Exhibit A- I for full

citations). In the charts in Exhibit C , any citation to this prior art reference should be construed to

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constitute a reference to the 2048- Bit MNOS BORAM LSI Circuit by Sperry Univac. Discovery
is ongoing in the case , and the Manufacturers will supplement these contentions if and when more

information becomes available.

The Manufacturers contend that the Fujitsu STRAM memories (1K x 4 and
4K x 4) invalidates many of the claims asserted by Rambus. The Manufacturers are investigating
the identities of the individuals involved in the first sale , offer for sale , or public use of the Fujitsu

STRAM memories (1K x 4 and 4K x 4). The Manufacturers are also investigating the exact date
that the Fujitsu STRAM memories (IK x 4 and 4K x 4) was first sold , offered for sale, or was
publicly used. In addition , the Manufacturers are currently investigating the dates of conception
and reduction to practice of the Fujitsu STRAM memories (1K x 4 and 4K x 4), and when the
Fujitsu STRAM memories (1K x 4 and 4K x 4) was first known or used by others. However , as
is evidenced by the following document , the pertinent prior art date was no later than December
1988: (1) Ohno STRAM; and (2) JP Ohno (see Exhibit A- I for full citations). In the charts in

Exhibit C , any citation to these prior art references should be construed to constitute a reference
to the Fujitsu STRAM memories (1K x 4 and 4K x 4). Discovery is ongoing in the case , and the
Manufacturers will supplement these contentions if and when more information becomes
available.

The Manufacturers contend that the TI 64K xl NMOS DRAM invalidates


many of the claims asserted by Rambus. The Manufacturers are investigating the identities of the
individuals involved in the first sale , offer for sale , or public use of the TI 64K xl NMOS DRAM.

The Manufacturers are also investigating the exact date that the TI 64K xl NMOS DRAM was
first sold , offered for sale , or was publicly used. In addition , the Manufacturers are currently

investigating the dates of conception and reduction to practice of the TI 64K xl NMOS DRAM
and when the TI 64K xl NMOS DRAM was first known or used by others. However , as is
evidenced by the following document , the pertinent prior art date was no later than December
1984: (1) Pinkham article (see Exhibit A- I for full citations). In the charts in Exhibit C , any
citation to this prior art reference should be construed to constitute a reference to the TI 64K xl

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,"

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NMOS DRAM. Discovery is ongoing in the case , and the Manufacturers will supplement these
contentions if and when more information becomes available.

The Manufacturers contend that the Cydra 5 Departmental Supercomputer


invalidates many of the claims asserted by Rambus. The Manufacturers are investigating the
identities of the individuals involved in the first sale , offer for sale , or public use of the Cydra 5
Departmental Supercomputer. The Manufacturers are also investigating the exact date that the

Cydra 5 Departmental Supercomputer was first sold , offered for sale , or was publicly used. In
addition , the Manufacturers are currently investigating the dates of conception and reduction to
practice of the Cydra 5 Departmental Supercomputer , and when the Cydra 5 Departmental

Supercomputer was first known or used by others. However , as is evidenced by the following
document , the pertinent prior art date was no later than December 1984: (1) Rau article (see

Exhibit A- I for full citations). In the charts in Exhibit C , any citation to this prior art reference
should be construed to constitute a reference to the Cydra 5 Departmental Supercomputer.

Discovery is ongoing in the case , and the Manufacturers will supplement these contentions if and
when more information becomes available.

10. The Manufacturers contend that systems and products resulting from
Scalable Coherent Interface working group, including the MicroUnity Systems Engineering SCI-
RAM , invalidate many of the claims asserted by Rambus. The Manufacturers are investigating
the dates of conception and reduction to practice of SCI- derived systems including the SCI-RAM

and when such products were known or used by others. However , as is evidenced by the
following documents , the pertinent prior art date was no later than May 1989: (1) Microunity

slide presentation to NCR with cover letter , dated May 17 , 1989; (2) Moussouris The Advanced
Systems Outlook: Life Beyond RISC: The next 30 years in high performance computing, June

1989. Discovery is ongoing in the case , and the Manufacturers will supplement these contentions
if and when more information becomes available.

11. The Manufacturers contend that the CV AX CMCTL invalidates many of


the claims asserted by Rambus. The Manufacturers are investigating the identities of the
individuals involved in the first sale , offer for sale , or public use of the CV AX CMCTL. The

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Manufacturers are also investigating the exact date that the CV AX CMCTL was first sold , offered

for sale , or was publicly used. However , as evidenced by the deposition of testimony of David K.
Morgan , a first version of the CV AX CMCTL was first offered for sale by Digital Equipment

Corporation (" DEC" ) at least as early as 1986 and a second version of the CV AX CMCTL
product was initially offered for sale by DEC at least as early as 1987. Discovery is ongoing in
the case , and the Manufacturers will supplement these contentions if and when more information

becomes available.

12. The Manufacturers contend that the MIPS Computer System s R6000

System Bus and R6020 SBC invalidate many of the claims asserted by Rambus. The
Manufacturers are investigating the identities of the individuals involved in the first sale , offer for
sale , or public use of the MIPS Computer System s R6000 System Bus and R6020 SBc. The

Manufacturers are also investigating the exact date that the MIPS Computer System s R6000

System Bus and R6020 SBC were first sold , offered for sale , or were publicly used. In addition
the Manufacturers are currently investigating the dates of conception and reduction to practice of
the MIPS Computer System s R6000 System Bus and R6020 SBC , and when the MIPS
Computer System s R6000 System Bus and R6020 SBC were first known or used by others.
However , as is evidenced by the following document , the pertinent prior art date was no later than

August 22 , 1989: (1) MIPS article (see Exhibit A- I for full citations). In the charts in Exhibit C

any citation to this prior art reference should be construed to constitute a reference to the MIPS
Computer System s R6000 System Bus and R6020 SBC products. Discovery is ongoing in the
case , and the Manufacturers will supplement these contentions if and when more information

becomes available.

13. The Manufacturers contend that the GigaBit 106 PicoLogic products , 12G

NanoRAM and 14G NanoRAM products , 16G Analog/Instrumentation products , and 16G

Optical Fiber Communication products invalidate many of the claims asserted by Rambus. The

Manufacturers are investigating the identities of the individuals involved in the first sale , offer for
sale , or public use of the GigaBit 106 PicoLogic products , 12G NanoRAM and 14G NanoRAM

products , 16G Analog/Instrumentation products , and 16G Optical Fiber Communication products.

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The Manufacturers are also investigating the exact date that the GigaBit 106 PicoLogic products
12G NanoRAM and 14G NanoRAM products , 16G Analog/Instrumentation products , and 16G
Optical Fiber Communication products were first sold , offered for sale , or were publicly used. In
addition , the Manufacturers are currently investigating the dates of conception and reduction to

practice of the GigaBit 106 PicoLogic products , 12G NanoRAM and 14G NanoRAM products
16G Analog/Instrumentation products , and 16G Optical Fiber Communication products , and

when the GigaBit 106 PicoLogic products , 12G NanoRAM and 14G NanoRAM products , 16G
Analog/Instrumentation products , and 16G Optical Fiber Communication products were first
known or used by others. However , as is evidenced by the following document , the pertinent

prior art date was no later than August 1989: (1) GigaBit (see Exhibit A- I for full citations). In
the charts in Exhibit C , any citation to this prior art reference should be construed to constitute a
reference to the GigaBit 106 PicoLogic products , 12G NanoRAM and 14G NanoRAM products
16G Analog/Instrumentation products , and 16G Optical Fiber Communication products.

Discovery is ongoing in the case , and the Manufacturers will supplement these contentions if and
when more information becomes available.

14. The Manufacturers contend that the Siemens SDA 9087 and SDA 9088

invalidate many of the claims asserted by Rambus. The Manufacturers are investigating the

identities of the individuals involved in the first sale , offer for sale , or public use of the Siemens
SDA 9087 and SDA 9088. The Manufacturers are also investigating the exact date that the

Siemens SDA 9087 and SDA 9088 were first sold , offered for sale , or were publicly used. In
addition , the Manufacturers are currently investigating the dates of conception and reduction to

practice of the Siemens SDA 9087 and SDA 9088 , and when the Siemens SDA 9087 and SDA
9088 were first known or used by others. However, as is evidenced by the following document
the pertinent prior art date was no later than 1989: (1) Siemens PIP (see Exhibit A- I for full

citations). In the charts in Exhibit C , any citation to this prior art reference should be construed to
constitute a reference to the Siemens SDA 9087 and SDA 9088 products. Discovery is ongoing
in the case , and the Manufacturers will supplement these contentions if and when more

information becomes available.

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15. The Manufacturers contend that the Texas Instruments NuBus invalidates

many of the claims asserted by Rambus. The Manufacturers are investigating the identities of the
individuals involved in the first sale , offer for sale , or public use of the Texas Instruments NuB us.

The Manufacturers are also investigating the exact date that the Texas Instruments NuBus was

first sold , offered for sale , or was publicly used. In addition , the Manufacturers are currently
investigating the dates of conception and reduction to practice of the Texas Instruments NuBus

and when the Texas Instruments NuBus was first known or used by others. However , as is

evidenced by the following document , the pertinent prior art date was no later than 1987: (1)
IEEE NuBus Standard/ ANSI/IEEE Std. (see Exhibit A- I for full citations). In the charts in

Exhibit C , any citation to this prior art reference should be construed to constitute a reference to
the Texas Instruments NuBus products. Discovery is ongoing in the case , and the Manufacturers
will supplement these contentions if and when more information becomes available.

16. The Manufacturers contend that the article " Memory- CPU Interface Speeds

Up Data Transfers " March 19 , 1992 , Dave Bursky, Electronic Design (see Exhibit B-
invalidates at least the asserted claim of the ' 1,446 Patent. In addition , the Manufacturers contend

that the article s description of Rambus ' RDRAM product evidences a public use , sale , and/or
offer to sell. Discovery is ongoing in the case , and the Manufacturers will supplement these
contentions if and when more information becomes available.

17. The Mosys Multibank DRAM chip, as described in various data sheets and
documents (see Exhibit B- 2) meets each and every limitation of the asserted Ware and Tsern
Patent claims as shown in the charts attached hereto as Exhibit C. Samples of the Mosys chips
were obtained and analyzed. This analysis showed that the Mosys chips had a die date of 1994
well before the earliest alleged constructive reduction to practice of either of the Ware and Tsern
Patents. The Manufacturers are pursuing discovery on the alleged dates of conception or actual

reduction to practice of the alleged invention of the Ware and Tsern Patents , but have not yet had
the opportunity to conduct discovery to ascertain the date of conception for Mosys. Discovery is
ongoing in the case , and the Manufacturers will supplement these contentions if and when more
information becomes available.

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18. Dr. Wayne Grover developed a method and apparatus for clock distribution
and clock synchronization. Dr. Grover s invention , at least in part , was disclosed in u.S. Patent
No. 5 361 277 (referenced herein as " Grover ). Dr. Grover conceived of his invention by at least

May 1987 , and had reduced that invention to practice by July 1987. Discovery is ongoing in the

case , and the Manufacturers will supplement these contentions if and when more information

becomes available.

Documents referencing the above- identified products and prior inventions are

identified in Exhibit A- I and A- 2. As discussed below , all Invalidity Claim Charts for the prior
art identified in Exhibit C , including documents referencing these products , are provided in

Exhibit C.

IV. INVALIDITY CLAIM CHARTS - PATENT LOCAL RULE 3- 3(C)


Pursuant to Patent Local Rule 3- 3(c), Invalidity Claim Charts , setting forth where
within each item of prior art each element of the asserted claims is found , are provided in Exhibit
C and C. Exhibit C contains the Invalidity Claim Charts for the Common Patent claims asserted
against Samsung, Micron , Hynix , and Nanya in Case Nos. C 05 00334 RMW and C 06 00244
RMW. Exhibit C also contains the Invalidity Claim Charts for the Ware and Tsern patents as
well as the Nanya-only Patents.

The Invalidity Claim Charts appeanng at Exhibit C were prepared by


Manufacturers based on Manufacturers ' understanding of Rambus s infringement contentions an
accordingly, Rambus s apparent construction of the asserted claims. Manufacturers do not admit

or acquiesce as to the correctness and/or reasonableness of Rambus s proffered constructions or


infringement contentions. Manufacturers expressly reserve the right to challenge Rambus
apparent constructions of the asserted claim language and offer alternative constructions.

INV ALIDITY DEFENSES BASED ON 35 U. C ~ 112(1) (WRITTEN


DESCRIPTION) AND ~ 112(2) (INDEFINITENESS) - PA TENT LOCAL RULES 3-
3(A) AND 3- 3(D)
The Manufacturers contend that certain designated claims , as outlined in this
section , are invalid for failure to meet the requirements of 35 u.S. c. ~ 112 , paragraphs 1 and 2.

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Invalidity Under 35 U. C ~ 112(1) - Common Claims Asserted Against


Samsung, Micron , Hynix , and Nanya in Case Nos. C 05 00334 RMW and C 06
00244 RMW
The Manufacturers contend that all of the asserted claims for the Common
Patents asserted against Samsung, Micron , Hynix , and Nanya in Case Nos. C 05 00334 RMW
and C 06 00244 RMW are invalid because certain claim elements are not supported by adequate
written description or enabled. Exhibits D- , D- , and D- 3 identify these claim elements along

with the corresponding patent(s) and claim(s) in which the claim elements appear.

The Manufacturers contend that the asserted claims of the ' 184 Patent , the
097 Patent , the ' 285 Patent , the ' 051 Patent , the ' 6,446 Patent , the ' 281 Patent , the ' 037 Patent
the ' 295 Patent , the ' 020 Patent , the ' 696 Patent , and the ' 598 Patent are not supported by an

adequate written description or enabled to the extent Rambus asserts that such claims cover
systems , methods , or devices that lack a narrow , multiplexed bus in which each line of the
multiplexed bus carries multiplexed address , data , and control information; or systems , methods
and devices that lack memory devices with special interfaces to the narrow multiplexed bus to
receive multiplexed , packetized data and output multiplexed data.

The Manufacturers contend that certain asserted claims of each of the ' 184

Patent , the ' 097 Patent , the ' 285 Patent , the ' 051 Patent , the ' 446 Patent , the ' 281 Patent , the

037 Patent , the ' 295 Patent , the ' 020 Patent , the ' 696 Patent , and the ' 598 Patent are not
supported by an adequate written description or enabled to the extent Rambus asserts that such
claims cover systems , methods , or devices that require or use only a single external clock.

The Manufacturers contend that certain asserted claims of each of the ' 037

Patent , the ' 295 Patent , the ' 6,446 Patent , and the ' 598 Patent are not supported by an adequate

written description or enabled to the extent Rambus asserts that such claims cover systems

methods , or devices that use or require a clocking circuit (such as a delay lock loop, clock

synchronization circuit , and clock alignment circuit) other than the late/early clocking system in

Fig. 12.

The Manufacturers contend that certain asserted claims of each of the ' 184

Patent , the ' 097 Patent , the ' 285 Patent , the ' 051 Patent , the ' 446 Patent , the ' 281 Patent , the

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037 Patent , the ' 295 Patent , the ' 020 Patent , the ' 696 Patent , and the ' 598 Patent are not
supported by an adequate written description or enabled to the extent Rambus asserts that such
claims cover systems , methods , or devices that use or require control and command information
(e. , register values , access time values , read request , write requests , block size information
control register access , precharge information) that is not sent within a packet over a narrow

multiplexed bus.

The Manufacturers contend that certain asserted claims of each of the ' 097

Patent , the ' 285 Patent , the ' 295 Patent , and the ' 696 Patent are not supported by an adequate

written description or enabled to the extent Rambus asserts that such claims cover systems

methods , or devices that use or require an access time register value for something other than

governing the transfer of data to/from a narrow , multiplexed bus.

The Manufacturers contend that certain asserted claims of each of the ' 184

Patent , the ' 097 Patent , the ' 446 Patent , the ' 281 Patent , the ' 037 Patent , the ' 295 Patent , the

020 Patent , the ' 696 Patent , and the ' 598 Patent are not supported by an adequate written
description or enabled to the extent Rambus asserts that such claims cover systems , methods , or
devices that transfer data either synchronously with respect to , or in response to , a rising/falling
edge of a single external clock signal.

The Manufacturers contend that certain asserted claims of the ' 789 Patent

, 897 Patent , and' 1,446 Patent are not supported by an adequate written description or enabled to
the extent Rambus asserts that such claims cover systems , methods , or devices that lack a narrow

multiplexed bus in which each line of the multiplexed bus carries multiplexed address , data , and
control information; or systems , methods , and devices that lack memory devices with special
interfaces to the narrow multiplexed bus to receive multiplexed , packetized data and output
multiplexed data.

The Manufacturers contend that certain asserted claims of the ' 789 Patent

, 897 Patent , and' 1,446 Patent are not supported by an adequate written description or enabled to
the extent Rambus asserts that such claims cover systems , methods , or devices that require or use

only a single external clock.

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10. The Manufacturers contend that certain asserted claims of the ' 789 Patent
, 897 Patent , and' 1,446 Patent are not supported by an adequate written description or enabled to
the extent Rambus asserts that such claims cover systems , methods , or devices that use or require
an external data bus and an external control bus.

Invalidity Under 35 u.S. C ~ 112(1) - Claims Asserted Only Against Nanya in


Case Nos. C 05 00334 RMW
1. Nanya contends that all of the asserted claims are invalid because certain claim
elements are not supported by adequate written description or enabled. Exhibit D- 4 identifies
these claim elements along with the corresponding patent(s) and claim(s) in which the claim
elements appear.

Nanya contends that the asserted claims of the Nanya-:only Patents are not

supported by an adequate written description or enabled to the extent Rambus asserts that such
claims cover systems , methods , or devices that require or use a narrow , multiplexed bus in which

each line of the multiplexed bus carries multiplexed address , data , and control information; or
systems , methods , and devices that lack memory devices with special interfaces to the

multiplexed bus to receive multiplexed , packerized data and output multiplexed data.

Nanya contends that the asserted claims of the Nanya-only Patents are not
supported by an adequate written description or enabled to the extent Rambus asserts that such
claims cover systems , methods , or devices that require or use a single external clock signal.

Nanya contends that the asserted claims of the Nanya-only Patents are not
supported by an adequate written description or enabled to the extent Rambus asserts that such
claims cover systems , methods , or devices that require or use a clocking circuit (such as a delay
lock loop) other than the late/early clocking system in Fig. 12.

Nanya contends that the asserted claims of the Nanya-only Patents are not
supported by an adequate written description or enabled to the extent Rambus asserts that such
claims cover systems , methods , or devices that require or use control and command information
(e. , register values , access time values , read request , write requests , block size information

control register access) that is not sent within a packet over a narrow multiplexed bus.

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Nanya contends that the asserted claims of the Nanya-only Patents are not
supported by an adequate written description or enabled to the extent Rambus asserts that such
claims cover systems , methods , or devices that require or use an access time register value for
something other than governing the output of data to/from a narrow , multiplexed bus.

Nanya contends that the asserted claims of the Nanya-only Patents are not
supported by an adequate written description or enabled to the extent Rambus asserts that such
claims cover systems , methods , or devices that output data on the rising/falling edge of an
external clock signal.

Invalidity Under 35 U. C ~ 112(2) (Indefiniteness) - Common Claims


Asserted Against Samsung, Micron , Hynix , and Nanya in Case Nos. C 05
00334 RMW and C 06 00244 RMW
The Manufacturers contend that the claim limitation " further including

storing a value which is representative of the programmable number of clock cycles of the

external clock in a programmable register on the memory device " in claim 15 of the ' 285 Patent
(and incorporated into dependent claims) makes this claim indefinite as it attempts to claim both
an apparatus and a method for using that apparatus.

The Manufacturers contend that the claim limitation " wherein in response
to the set register request, the memory device stores the value in the register" in claim 16 of the
285 Patent (and incorporated into dependent claims) makes this claim indefinite as it attempts to
claim both an apparatus and a method for using that apparatus.

The Manufacturers contend that the claim limitation " wherein the first
portion of data is sampled in response to an operation code " in claim 27 of the ' 051 Patent (and
incorporated into dependent claims) makes this claim indefinite as it attempts to claim both an
apparatus and a method for using that apparatus.

The Manufacturers contend that the claim limitation " to generate an

internal clock signal having a predetermined phase relationship with respect to the external clock
signal" in claim 32 of the ' 051 Patent (and incorporated into dependent claims) makes this claim

indefinite as it attempts to claim both an apparatus and a method for using that apparatus.

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The Manufacturers contend that the claim limitation " wherein in response
to the precharge information , the plurality of sense amplifiers is automatically precharged after

the data is sensed" in claim 1 of the ' 6,446 Patent (and incorporated into dependent claims) makes
this claim indefinite as it attempts to claim both an apparatus and a method for using that
apparatus.

The Manufacturers contend that the claim limitation " wherein the operation
code specifies " in claim 2 of the ' 6,446 Patent (and incorporated into dependent claims) makes

this claim indefinite as it attempts to claim both an apparatus and a method for using that
apparatus.

The Manufacturers contend that the claim limitation "wherein the plurality
of output drivers output the first portion of the data synchronously with respect to a rising edge
transition of the external clock signal" in claim 3 of the ' 6,446 Patent (and incorporated into
dependent claims) makes this claim indefinite as it attempts to claim both an apparatus and a
method for using that apparatus.

The Manufacturers contend that the claim limitation " output drivers output
a second portion of the data synchronously with respect of a falling edge transition of the external
clock signal" in claim 3 of the ' 6,446 Patent (and incorporated into dependent claims) makes this

claim indefinite as it attempts to claim both an apparatus and a method for using that apparatus.

The Manufacturers contend that the claim limitation " wherein the
precharge information is encoded in the first bit of the operation code " in claim 7 of the ' 6,446
Patent (and incorporated into dependent claims) makes this claim indefinite as it attempts to claim

both an apparatus and a method for using that apparatus.

10. The Manufacturers contend that the claim limitation " wherein the delay of
the internal clock signal is adjusted based on the comparison between the internal clock signal
and the external clock signal" in claim 13 of the ' 446 Patent (and incorporated into dependent
claims) makes this claim indefinite as it attempts to claim both an apparatus and a method for
using that apparatus.

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11. The Manufacturers contend that the claim limitation " sensed in the

plurality of sense amplifiers " in claim 35 of the ' 281 Patent (and incorporated into dependent

claims) makes this claim indefinite as it attempts to claim both an apparatus and a method for
using that apparatus.

12. The Manufacturers contend that the claim limitation "wherein the address
information identifies the subset of the memory cells " in claim 13 of the ' 037 Patent (and
incorporated into dependent claims) makes this claim indefinite as it attempts to claim both an
apparatus and a method for using that apparatus.

13. The Manufacturers contend that the claim limitation " from an external bus
In claim 14 of the ' 037 Patent (and incorporated into dependent claims) makes this claim
indefinite as it attempts to claim both an apparatus and a method for using that apparatus.

14. The Manufacturers contend that the claim limitation " wherein the operation
code further specifies that the memory device precharge a plurality of sense amplifiers " in claim
34 of the ' 037 Patent (and incorporated into dependent claims) makes this claim indefinite as it

attempts to claim both an apparatus and a method for using that apparatus.

15. The Manufacturers contend that the claim limitation " wherein the memory
device stores the binary value in the programmable register in response to the first operation
code " in claim 31 of the ' 295 Patent (and incorporated into dependent claims) makes this claim

indefinite as it attempts to claim both an apparatus and a method for using that apparatus.

16. The Manufacturers contend that the claim limitation " wherein the memory
device outputs the data in response to a second operation code " in claim 32 of the ' 295 Patent
(and incorporated into dependent claims) makes this claim indefinite as it attempts to claim both
an apparatus and a method for using that apparatus.

17. The Manufacturers contend that the claim limitation "wherein the data is
accessed from the memory array " in claim 44 of the ' 295 Patent (and incorporated into dependent

claims) makes this claim indefinite as it attempts to claim both an apparatus and a method for
using that apparatus.

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18. The Manufacturers contend that the claim limitation " wherein the plurality
of output drivers output a first portion of the data synchronously with respect to a rising edge
transition of the external clock signal , and wherein the plurality of output drivers output a second

portion of the data synchronously with respect to a falling edge transition of the external clock
signal" in claim 45 of the ' 295 Patent (and incorporated into dependent claims) makes this claim

indefinite as it attempts to claim both an apparatus and a method for using that apparatus.

19. The Manufacturers contend that the claim limitation " in response to receipt
of first control information over an external control bus " in claim 19 of the ' 1,446 Patent (and
.9 incorporated into dependent claims) makes this claim indefinite as it attempts to claim both an
apparatus and a method for using that apparatus.

20. The Manufacturers contend that the claim limitation " wherein the control
circuit is configured to responds to the first control information and enable the clock signal prior
to receipt of the read data by the read output pipeline " in claim 19 of the ' 1,446 Patent (and

incorporated into dependent claims) makes this claim indefinite as it attempts to claim both an
apparatus and a method for using that apparatus.

21. The Manufacturers contend that the claim limitation " wherein the delay
locked loop generates the clock signal based on the external clock signal" in claim 25 of the
446 Patent (and incorporated into dependent claims) makes this claim indefinite as it attempts
to claim both an apparatus and a method for using that apparatus.

22. The Manufacturers contend that the claim limitation " wherein the delay
locked loop generates the clock signal based on the external clock signal" in claim 1 of the ' 020
Patent (and incorporated into dependent claims) makes this claim indefinite as it attempts to claim

both an apparatus and a method for using that apparatus.

23. The Manufacturers contend that the claim limitation " wherein the operation
code specifies a read operation " and " wherein , in response to the operation code , the memory
device outputs the amount of data " in claim 2 of the ' 020 Patent (and incorporated into
dependent claims) makes this claim indefinite as it attempts to claim both an apparatus and a
method for using that apparatus.

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24. The Manufacturers contend that the claim limitation " wherein the first
output driver circuitry outputs the block size information in response to a first transition of an
external clock signal , and the second output driver circuitry outputs the operation code in
response to a second transition of the external clock signal" in claim 5 of the ' 020 Patent (and
incorporated into dependent claims) makes this claim indefinite as it attempts to claim both an
apparatus and a method for using that apparatus.

25. The Manufacturers contend that the claim limitation " wherein the input
receiver circuitry samples a first portion of the amount of data during a first half of a clock cycle
of an external clock signal" in claim 14 of the ' 020 Patent (and incorporated into dependent
claims) makes this claim indefinite as it attempts to claim both an apparatus and a method for
using that apparatus.

26. The Manufacturers contend that the claim limitation " wherein the operation
code specifies a read operation " and " wherein the memory device outputs the amount of data to
the controller device in response to the operation code " in claim 38 of the ' 020 Patent (and

incorporated into dependent claims) makes this claim indefinite as it attempts to claim both an
apparatus and a method for using that apparatus.

27. The Manufacturers contend that the claim limitation " wherein the block
size information is output in response to a first transition of an external clock signal and the
operation code is output in response to a second transition of the external clock signal" in claim
41 of the ' 020 Patent (and incorporated into dependent claims) makes this claim indefinite as it

attempts to claim both an apparatus and a method for using that apparatus.

28. The Manufacturers contend that the claim limitation "wherein the memory
device stores the value in the programmable register in response to the first operation code " in

claim 1 of the ' 696 Patent (and incorporated into dependent claims) makes this claim indefinite as

it attempts to claim both an apparatus and a method for using that apparatus.

29. The Manufacturers contend that the claim limitation " wherein the data is
output after the amount of time transpires " in claim 1 of the ' 696 Patent (and incorporated into

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dependent claims) makes this claim indefinite as it attempts to claim both a system and a method
for using that system.

30. The Manufacturers contend that the claim limitation " the output driver
circuitry outputs a first portion of the data synchronously with respect to a rising edge transition
of the external clock signal and outputs a second portion of the data synchronously with respect to
a falling edge transition of the external clock signal" in claim 1 of the ' 696 Patent (and
incorporated into dependent claims) makes this claim indefinite as it attempts to claim both an
apparatus and a method for using that apparatus.

31. The Manufacturers contend that the claim limitation " wherein the memory
device stores the binary value in the programmable register in response to the first operation
code " in claim 13 of the ' 696 Patent (and incorporated into dependent claims) makes this claim

indefinite as it attempts to claim both an apparatus and a method for using that apparatus.

32. The Manufacturers contend that the claim limitation " wherein the first
internal clock signal has a delay time with respect to the first external clock signal" in claim 25 of

the ' 598 Patent (and incorporated into dependent claims) makes this claim indefinite as it
attempts to claim both an apparatus and a method for using that apparatus.

33. The Manufacturers contend that the claim limitation " wherein the operation
code specifies a read operation " in claim 32 of the ' 598 Patent (and incorporated into dependent

claims) makes this claim indefinite as it attempts to claim both an apparatus and a method for
using that apparatus.

34. The Manufacturers contend that the claim limitation " a first portion of the
data is output synchronously with respect to a rising edge transition of the external clock signal"
in claim 32 of the ' 598 Patent (and incorporated into dependent claims) makes this claim
indefinite as it attempts to claim both an apparatus and a method for using that apparatus.

35. The Manufacturers contend that the claim limitation " a second portion of
the data is output synchronously with respect to a falling edge transition of the external clock

signal" in claim 32 of the ' 598 Patent (and incorporated into dependent claims) makes this claim

indefinite as it attempts to claim both an apparatus and a method for using that apparatus.

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36. The Manufacturers contend that the claim limitation " wherein the plurality
of memory cells includes dynamic random access memory cells " in claim 34 of the ' 598 Patent
(and incorporated into dependent claims) makes this claim indefinite as it attempts to claim both
an apparatus and a method for using that apparatus.

37. The Manufacturers contend that the claim limitation " a plurality of sense
amplifiers , coupled to the memory array, to sense the data from the dynamic random access

memory cells , wherein the operation code includes precharge information , wherein , in response to
the precharge information , the plurality of sense amplifiers is automatically precharged after the
data is sensed" in claim 35 of the ' 598 Patent (and incorporated into dependent claims) makes this

claim indefinite as it attempts to claim both an apparatus and a method for using that apparatus.

38. The Manufacturers contend that each of the asserted claims is indefinite

insofar it fails to require the invention contemplated by the inventors at the time of the filing of
each application issuing as one of the Common Patents: a narrow , multiplexed bus in which each
line of the multiplexed bus carries multiplexed address , data , and control information.

39. The Manufacturers contend that the claim limitation " receiving, during a
first half of a clock cycle of the external clock signal , a first data value and a first mask bit...
and receiving, during a second half of the clock cycle of the external clock signal , a second data
value and a second mask bit" in claim 1 of the ' 897 Patent (and incorporated into dependent

claims) makes this claim indefinite as it is insolubly ambiguous.

40. The Manufacturers contend that the claim limitation " a pin to receive a first
mask bit during a first half of a clock cycle of the external clock signal and to receive a second
mask bit during a second half of the clock cycle of the external clock signal" in claim 15 of the
897 Patent (and incorporated into dependent claims) makes this claim indefinite as it is insolubly

ambiguous.

41. The Manufacturers contend that the claim limitation " an interface to
recei ve: a first data value with the first mask bit... ; and a second data value with the second
mask bit " in claim 15 of the ' 897 Patent (and incorporated into dependent claims) makes this

claim indefinite as it is insolubly ambiguous.

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42. The Manufacturers contend that the claim limitation " providing to the

memory device , during a first half of a clock cycle of an external clock signal , a first set of data

bits and a first mask bit... and providing to the memory device , during a second half of the clock
cycle of the external clock signal , a second set of data bits and a second mask bit" in claim 27 of
the ' 897 Patent (and incorporated into dependent claims) makes this claim indefinite as it is

insolubly ambiguous.

43. The Manufacturers contend that the claim limitation " a mask terminal to
receive; a first mask bit during a first half of a clock cycle of an external clock signal... ; and a
second mask bit during a second half of the clock cycle of the external clock signal" in claim 8 of
the ' 789 Patent (and incorporated into dependent claims) makes this claim indefinite as it is
insolubly ambiguous.

44. The Manufacturers contend that the claim limitation " a set of interface

terminals to receive a plurality of control signals which specify that the memory device: receive a

first set of data bits and a second set of data bits; precharge sense amplifiers used in writing the
first set of data bits to the array; and precharge sense amplifiers used in writing the second set of
data bits to the array " in claim 8 of the ' 789 Patent (and incorporated into dependent claims)

makes this claim indefinite as it is insolubly ambiguous.

45, The Manufacturers contend that the claim limitation " a memory core " in

claim 19 of the ' 1,446 Patent (and incorporated into dependent Glaims) makes this claim
indefinite as it is insolubly ambiguous.

46. The Manufacturers contend that the claim limitation " a read output
pipeline " in claim 19 of the ' 1,446 Patent (and incorporated into dependent claims) makes this

claim indefinite as it is insolubly ambiguous.

47. The Manufacturers contend that the claim limitation " control circuit is
operable to enable a clock signal to the read output pipeline in response to receipt of first control
information " in claim 19 of the ' 1,446 Patent (and incorporated into dependent claims) makes this

claim indefinite as it is insolubly ambiguous.

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INVALIDITY CONTENTIONS Case No. C 05 00334 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 44 of 163

48. The Manufacturers contend that the claim limitation " first control

information indicating a read operation " in claim 19 of the ' 1,446 Patent (and incorporated into
dependent claims) makes this claim indefinite as it is insolubly ambiguous.

49. The Manufacturers contend that the claim limitation " wherein the control
circuit is configured to respond to the first control information and enable the clock signal prior to

receipt of the read data by the read output pipeline " in claim 19 of the ' 1,446 Patent (and

incorporated into dependent claims) makes this claim indefinite as it is insolubly ambiguous.

50. The Manufacturers contend that the claim limitation " wherein the delay
locked loop is selectively energized base on second control information received by the memory
device " in claim 25 of the ' 1,446 Patent (and incorporated into dependent claims) makes this

claim indefinite as it is insolubly ambiguous.

51. The Manufacturers contend that the claim limitation " wherein the delay
locked loop is selectively energized base on second control information received by the memory
device " in claim 26 of the '1 446 Patent makes this claim indefinite as it is insolubly ambiguous.

52. The Manufacturers contend that the claim limitation " second control
information " in claim 26 of the ' 1,446 Patent makes this claim indefinite as it is insolubly

ambiguous.

Invalidity Under 35 U. C ~ 112(2) (Indefiniteness) - Claims Asserted Only


Against Nanya in Case Nos. C 05 00334 RMW
Nanya contends that the claim limitation " wherein the first operation code
includes precharge information " in claim 33 of the ' 120 Patent (and incorporated into dependent
claims) makes this claim indefinite as it attempts to claim both a system and a method for using
that system.

Nanya contends that the claim limitation " wherein the input receIver
circuitry samples the first operation code synchronously with respect to the external clock signal"
in claim 29 of the ' 120 Patent (and incorporated into dependent claims) makes this claim
indefinite as it attempts to claim both a system and a method for using that system.

MANUFACTURERS' JOINT PRELIMINARY


INVALIDITY CONTENTIONS Case No. C 05 00334 RMW
,' ,' ,' ,' ,' ,'

Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 45 of 163

Nanya contends that the claim limitation " wherein the output driver
circuitry outputs a first portion of data in response to a rising edge transition of the external clock
signal; and the output driver outputs a second portion of the data in response to a falling edge of
the external clock signal" in claim 30 of the ' 020 Patent (and incorporated into dependent

claims) makes this claim indefinite as it attempts to claim both a system and a method for using
that system.

Nanya contends that the claim limitation " wherein the input receIver
Circuitry receives address information synchronously with respect to the external clock signal" in
claim 32 of the ' 020 Patent (and incorporated into dependent claims) makes this claim
indefinite as it attempts to claim both a system and a method for using that system.

Nanya contends that the claim limitation " wherein the clock alignment

circuit generates an internal clock signal , and the output driver circuitry outputs data in response
to the internal clock signal" in claim 36 of the ' 020 Patent (and incorporated into dependent

claims) makes this claim indefinite as it attempts to claim both a system and a method for using
that system.

Nanya contends that the claim limitation " wherein in response to a second
operation code , the value is stored in the register " in claim 28 of the ' 916 Patent (and
incorporated into dependent claims) makes this claim indefinite as it attempts to claim both a
system and a method for using that system.

Nanyas contend that the claim limitation " first amount of data " in claim 26
of the ' 916 Patent (and incorporated into dependent claims) makes this claim indefinite as it lacks

an antecedent basis.

VI. OBVIOUSNESS- TYPE DOUBLE PATENTING


Manufacturers contend that certain claims asserted against Manufacturers

(including claims asserted only against Nanya) are invalid under the doctrine of obviousness- type
double patenting. Specifically, one or more of the asserted claims of the ' 097 Patent 184 Patent
285 Patent 020 Patent 6,446 Patent 281 Patent 295 Patent 020 Patent , and ' 696 Patent

MANUFACTURERS' JOINT PRELIMINARY


INVALIDITY CONTENTIONS Case No. C 05 00334 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 46 of 163

are invalid for obviousness- type double patenting. In addition , one or more of the asserted claims
of the '1, 446 Patent and' 897 Patent are similarly invalid for obviousness- type double patenting.

VII. DOCUMENT PRODUCTION-PATENT LOCAL RULE 3-


Pursuant to Patent Local Rule 3- 4(a), each Manufacturers is each producing or
making available for inspection or making available for inspection documents within the
categories required by Patent Local Rule 3-4(a) and 3- 4(b) concurrently herewith to the extent
that such documents have not already been produced. Each Manufacturer is responsible for its
own production. Samsung is currently negotiating representative products in an effort to

streamline document production and , until it has reached an agreement otherwise with Rambus
will only be producing documents relating to its proposed representative products.

MANUFACTURERS' JOINT PRELIMINARY


INVALIDITY CONTENTIONS Case No. C 05 00334 RMW
(g) (g)

Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 47 of 163

Dated: May 11 , 2007 BY:


~DALA
MATTHEW D. POWERS (Bar No. 104795)
Email: matthew. powers(g)weil.com
EDWARD R. REINES (Bar No. 135960)
Email: edward. reines weil.com
WEIL , GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores , CA 94065
Telephone: (650) 802- 3000
Facsimile: (650) 802- 3100

DAVID J. HEALEY
Email: david. healey(g)weil.com
ANITA E. KADALA
Email: anita. kadala weil.com
WEIL , GOTSHAL & MANGES LLP
700 Louisiana , Suite 1600
Houston , Texas 77002
Telephone: (713) 546- 5000
Facsimile: (713) 224- 9511

Attorneys for Defendants


SAMSUNG ELECTRONICS CO. , LTD.
SAMSUNG ELECTRONICS AMERICA , INC.
SAMSUNG SEMICONDUCTOR , INc. , and
SAMSUNG AUSTIN SEMICONDUCTOR , LP.

MANUFACTURERS' JOINT PRELIMINARY


INV ALIDITY CONTENTIONS Case No. C 05 00334 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 48 of 163

By: ~~~(!f-
Jordan Trent Jones
DANIEL J. FURNISS (Bar No. 73531)
Email: difurniss (g)townsend. com
THEODORE G. BROWN , III (Bar No. 114672)
Email: tgbrown (g)townsend. com
JORDAN TRENT JONES (Bar No. 166600)
Email: itiones (g)townsend. com
TOWNSEND and TOWNSEND and CREW
LLP
379 Lytton Avenue
Palo Alto , California 94301
Telephone: (650) 326- 2400
Facsimile: (650) 326- 2422

KENNETH L NISSL Y (Bar No. 77589)


Email: kennissly(g)thelen. com
SUSAN van KEULEN (Bar No. 136060)
Email: svankeulen(g)thelen. com
GEOFFREY H. YOST (Bar No. 159687)
Email: gyost(g)thelen. com
THELEN REID BROWN RA YSMAN &
STEINER LLP
225 West Santa Clara Street , Suite 1200
San Jose , California 95113
Telephone: (408) 292- 5800
Facsimile: (408) 287 - 8040

KENNETH R. O' ROURKE (Bar No. 120144)


Email: korourke(g)omm. com
WALLACE M. ALLAN (Bar No. 102054)
Email: tallan(g)omm. com
MEL VENY & MYERS LLP
400 South Hope Street , Suite 1060
Los Angeles , California 90071- 2899
Telephone: (213) 430- 6000
Facsimile: (213) 430- 6407

Attorneys for Defendants and Counterclaim


Plaintiffs
HYNIX SEMICONDUCTOR INC.
HYNIX SEMICONDUCTOR AMERICA INC.
HYNIX SEMICONDUCTOR
MANUFACTURING AMERICA INc.,
HYNIX SEMICONDUCTOR U. K. LTD., and
HYNIX SEMICONDUCTOR DEUTSCHLAND
GmbH

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INV ALIDITY CONTENTIONS Case No. C 05 00334 RMW
~~
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 49 of 163

BY: :'t'-
Vickie L. Feeman

L-

WILLIAM L. ANTHONY , JR.


(Bar No. 106908)
KAI TSENG (Bar No. 193756)
VICKIE L. FEEMAN (Bar No. 177487)
CRAIG R. KAUFMAN (Bar No. 159458)
JASON S. ANGELL (Bar No. 221607)
ORRICK , HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road
Menlo Park , CA 94025
Telephone: (650) 614- 7400
Facsimile: (650) 614- 7401

Attorneys for Defendants and Counterclaim


Plaintiffs
NANY A TECHNOLOGY CORPORATION and
NANY A TECHNOLOGY CORPORA nON

MANUFACTURERS' JOINT PRELIMINARY


INV ALIDITY CONTENTIONS Case No. C 05 00334 RMW
(g) (g) (g)
(g)

Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 50 of 163

CERTIFICA TE OF SERVICE

I am a citizen of the United States , more than 18 years old , and not a party to this action.

My place of employment and business address is 201 Redwood Shores Parkway, Redwood

Shores , California , 94065- 1175. On May 11 , 2007 I caused copies of

MANUFACTURERS' JOINT PRELIMINARY INVALIDITY


CONTENTION

to be served as follows:

( XX) BY MAIL I am readily familiar with the business practice at my place of


business for collection and processing of correspondence for mailing with the United States
Postal Service. In the ordinary course of business , correspondence so collected and processed is
deposited with the United States Postal Service that same day with first- class postage thereon
fully prepaid. On the above-referenced date , I placed the above document(s) in a sealed envelope
addressed to the person(s) identified below and placed the envelope for collection and mailing
following ordinary business practice.

) BY FACSIMILE. I caused the above- identified document(s) to be sent by


facsimile transmission to the party(ies) listed below at the facsimile number(s) shown.

( XX) BY EMAIL of . pdf documents.


) BY OVERNIGHT COURIER SERVICE I am readily familiar with the
business practice at my place of business for collection and processing of correspondence for
deposit with an overnight delivery service. Correspondence placed for collection and processing
is either delivered to a courier or driver authorized by said overnight delivery service to receive
documents or deposited by an employee or agent of this firm in a box or other facility regularly
maintained by said overnight delivery service that same day in the ordinary course of business.
On the above-referenced date , I sealed the above document(s) in an envelope or package
designated by the courier service and addressed to the person(s) identified below , with payment
of next day delivery fees provided for , and delivered the envelope/package to the office personnel
responsible for delivering documents to overnight courier services following ordinary business
practice.

Gregory P. Stone Thomas K. Cauley, Jr.


Munger , Tolles & Olson LLP Sidley Austin LLP
355 South Grand Avenue , 35th Floor One South Dearborn
Los Angeles , CA 90071- 1560 Chicago , IL 60603
Facsimile: (213) 687- 3702 Facsimile: (312) 853- 7036
Gregory. Stone mto. com tcauley Sidley. com
Attorneys for Plaintiff Rambus Inc. Attorneys for Plaintiff Rambus Inc.
Carolyn Hoecker Luedtke Laura Terrell
Munger Tolles & Olson LLP McKool Smith PC
560 Mission Street , 27th Floor 300 West 6th , Suite 1700
San Francisco , CA . 94105 Austin , TX 78701
Facsimile: (415) 512- 4077 Facsimile: (512) 692- 8744
Carolyn. Luedtke mto. com Rambus mckoolsmith. com
Attorneys for Plaintiff Rambus Inc. Attorneys for Plaintiff Rambus Inc.

MANUFACTURERS' JOINT PRELIMINARY


INVALIDITY CONTENTIONS Case No. C 05 00334 RMW
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 51 of 163

Executed on May 11 , 2007 at Redwood Shores , California. I declare under penalty of

perjury under the laws of the United States of America that the foregoing is true and correct.

. ia A.
~chd/-'-1
BusalacchI

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EXHIBIT C
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 53 of 163

1 (Attorney list on signature page)


2 UNITED STATES DISTRICT COURT
3 NORTHERN DISTRICT OF CALIFORNIA - SAN JOSE DIVISION
4 HYNIX SEMICONDUCTOR INC.,
HYNIX SEMICONDUCTOR AMERICA
5 INC., HYNIX SEMICONDUCTOR U.K. Case No. C 00-20905 RMW
LTD., and HYNIX SEMICONDUCTOR
6 DEUTSCHLAND GmbH,
7 Plaintiffs,
8 v.
9 RAMBUS INC.,
Defendant.
10

11 RAMBUS INC.,
Plaintiff,
Case No. C 05-00334 RMW
12
v. MANUFACTURERS’ SUPPLEMENTAL
13 JOINT PRELIMINARY INVALIDITY
HYNIX SEMICONDUCTOR INC., CONTENTIONS
14 HYNIX SEMICONDUCTOR AMERICA
INC., HYNIX SEMICONDUCTOR
15 MANUFACTURING AMERICA INC.,
Judge: Hon. Ronald M. Whyte
16 SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, Trial: January 19, 2009
17 INC., Courtroom: Courtroom 6, 4th Floor
SAMSUNG SEMICONDUCTOR, INC.,
18 SAMSUNG AUSTIN SEMICONDUCTOR,
L.P.,
19
NANYA TECHNOLOGY CORPORATION,
20 NANYA TECHNOLOGY CORPORATION
U.S.A.,
21
Defendants.
22
RAMBUS INC., Case No. C 06-00244 RMW
23
Plaintiff,
24
v.
25
MICRON TECHNOLOGY, INC., and
26 MICRON SEMICONDUCTOR PRODUCTS,
INC.,
27
Defendants.
28

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INVALIDITY CONTENTIONS CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 54 of 163

1 I. INTRODUCTION
2 In light of the Supplemental Disclosure of Asserted Claims and Preliminary

3 Infringement Contentions served by Rambus Inc. (“Rambus”) on July 20, 2007, and pursuant to

4 Patent Local Rules 3-3 and 3-4, and the Case Management Order dated June 25, 2007 in the

5 above captioned matters, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS

6 AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN

7 SEMICONDUCTOR, L.P., HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR

8 AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA, INC.,

9 NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION

10 U.S.A., MICRON TECHNOLOGY, INC., and MICRON SEMICONDUCTOR PRODUCTS,

11 INC. (collectively “the Manufacturers”) jointly submit these Supplemental Joint Preliminary

12 Invalidity Contentions.

13 By submitting these Supplemental Joint Preliminary Invalidity Contentions, no

14 Manufacturer should be seen as adopting or acquiescing to positions taken or defenses asserted by

15 any of the other Manufacturers in any other case with Rambus. Each Manufacturer reserves the

16 right to assert its own invalidity defenses at trial and does not agree to be bound by any positions

17 taken or defenses asserted by the other Manufacturers. Thus references to “the Manufacturers”

18 refers to each individual Manufacturer as well as the collective group identified above.

19 The Manufacturers’ Supplemental Joint Preliminary Invalidity Contentions hereby

20 incorporate by reference the Joint Preliminary Invalidity Contentions served by the Manufacturers

21 on May 11, 2007.1 Manufacturers’ invalidity contentions are subject to further supplementation

22 and amendment after: (1) the Court issues its claim construction ruling, (2) the receipt of

23 Rambus’s expert reports, (3) the receipt of any permitted supplemental infringement contentions,

24 asserted claims, or claim constructions, (4) the issuance of rulings on summary judgment

25 motions, (5) Rambus’s reduction and/or election of claims to be tried; (6) further actions by the

26

27
1
Exhibit E to the Supplemental Joint Preliminary Invalidity Contentions is an errata to the
28 previously served Joint Preliminary Invalidity Contentions.

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Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 55 of 163

1 Patent and Trademark Office (“PTO”); (6) expert or other discovery; or (7) as otherwise

2 appropriate.

3 The Manufacturers make this supplemental disclosure based upon information

4 obtained to date. The Manufacturers’ investigations are continuing, and the Manufacturers

5 individually reserve the right to modify, amend, or supplement these contentions as additional

6 information becomes available. Particularly, Manufacturers’ Supplemental Joint Preliminary

7 Invalidity Contentions are based in whole or in part on a present understanding of Rambus’s

8 positions concerning the scope and construction of the claims insofar as a Claim Construction

9 Order has not yet been entered in this case. The Manufacturers’ present invalidity contentions are

10 directed only to Rambus’s asserted claims. The Supplemental Joint Preliminary Invalidity

11 Contentions are not an admission of validity as to other claims and each of the Manufacturers

12 reserves all rights to contest validity based on the prior art discussed herein, prior invalidating

13 activities, other prior art, or any other available bases.

14 In the absence of a claim construction ruling, the Manufacturers’ Supplemental

15 Joint Preliminary Invalidity Contentions are in the alternative, and are not necessarily intended to

16 be consistent with one another, and should not be otherwise construed. Further, by including in

17 this disclosure prior art that would anticipate or render obvious the patents-in-suit under the scope

18 or construction proposed by Rambus to its claims, Manufacturers’ Supplemental Joint

19 Preliminary Invalidity Contentions herein are not, and should in no way be seen as, adoptions or

20 acquiescence of or admissions as to the correctness of that scope or construction.

21 The supplemental references attached as exhibits do not include all references

22 known to the Manufacturers or previously identified to Rambus. In the interest of efficiency, the

23 Manufacturers incorporate by reference the prior art references, invalidity charts, obviousness

24 combinations and other invalidity arguments previously set forth in the Manufacturers’ Joint

25 Preliminary Invalidity Contentions, served on May 11, 2007. Each of the Manufacturers hereby

26 incorporates by reference each prior art reference, invalidity chart, obviousness combination, and

27 any other invalidity argument previously set forth in the Manufacturers’ Joint Preliminary

28 Invalidity Contentions even if a particular Manufacturer did not previously assert such prior art

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INVALIDITY CONTENTIONS 2 CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 56 of 163

1 reference, invalidity chart, obviousness combination, or other invalidity argument. In a further

2 attempt to streamline the process, the Manufacturers have selected a limited number of prior art

3 references for these Supplemental Joint Preliminary Invalidity Contentions. This is not an

4 admission by the Manufacturers that other references, alone or in combination, do not invalidate

5 or affect the validity of Rambus’s asserted claims. Each of the Manufacturers reserves all rights

6 to identify other prior art references in the future against the asserted claims or other claims.

7
II. INCORPORATION OF THE MANUFACTURERS’ JOINT PRELIMINARY
8 INVALIDITY CONTENTIONS

9 On July 24, 2007, Rambus filed “counterclaims in reply,” in which Rambus

10 accused additional products of infringement and accused Micron of infringing additional patents

11 already asserted against the other Manufacturers. On July 20, 2007, Rambus served its

12 Supplemental Disclosure of Asserted Claims and Preliminary Infringement Contentions,

13 commonly asserting United States Patent Nos. 6,182,184 (“the ’184 Patent”); 6,260,097 (“the

14 ’097 Patent”); 6,266,285 (“the ’285 Patent”); 6,314,051 (“the ’051 Patent”); 6,324,120 (“the ’120

15 Patent”); 6,378,020 (“the ’8,020 Patent”); 6,246,916 (“the ’916 Patent”); 6,452,863 (“the ’863

16 Patent”); 6,493,789 (“the ’789 Patent”); 6,496,897 (“the ’897 Patent”); 6,546,446 (“the ’6,446

17 Patent”); 6,584,037 (“the ’037 Patent”); 6,697,295 (“the ’295 Patent”); 6,715,020 (“the ’5,020

18 Patent”); and 6,751,696 (“the ’696 Patent”) (“Common Patents”) against each of the

19 Manufacturers.

20 However, when the Manufacturers’ Joint Preliminary Invalidity Contentions were

21 served on May 11, 2007, a number of these patents had not been asserted against all the

22 Manufacturers in these actions. In light of Rambus’s counterclaims in reply and supplemental

23 disclosure of asserted claims, each of the Manufacturers incorporates by reference herein each

24 prior art reference, invalidity chart, obviousness combination, and any other invalidity argument

25 previously set forth in the Manufacturers’ Joint Preliminary Invalidity Contentions dated May 11,

26 2007 even if a particular Manufacturer did not previously assert such prior art reference,

27 invalidity chart, obviousness combination, or any invalidity argument.

28

MANUFACTURERS’ SUPPLEMENTAL PRELIMINARY


INVALIDITY CONTENTIONS 3 CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 57 of 163

III. PATENT AND TRADEMARK OFFICE REJECTION OF THE ’5,020 PATENT


1
Samsung has filed petitions for reexamination of the ’916, ’120, ’184, ’863,
2
’5,020, ’295, ’195, and ’8,020 patents. The PTO has found that that these petitions raise
3
substantial questions of patentability as to at least the asserted claims in each of these patents. On
4
February 15, 2008, in response to a request filed by Samsung for reexamination of the ’5,020
5
patent, the PTO issued an initial office action in which the PTO rejected all of the ’5,020 claims.
6
The Manufacturers incorporate herein by reference all of the reexamination petitions filed by
7
Samsung as well as any related office actions by the PTO. To the extent that additional Rambus
8
patents are subject to reexamination by the PTO and held to include claims that are not
9
patentable, the Manufacturers reserve the right amend their invalidity contentions accordingly.
10
IV. PRIOR ART REFERENCES—PATENT LOCAL RULES 3-3(A)
11
Pursuant to Patent Local Rule 3-3(a), Exhibit A collectively identifies the
12
supplemental prior art references used in support of the Manufacturers’ Supplemental Joint
13
Preliminary Invalidity Contentions.
14
Because claims of the Common Patents as construed by Rambus in its Preliminary
15
and Supplemental Infringement Contentions and its proposed claim constructions set forth in the
16
parties’ Joint Proposed Claim Chart dated July 11, 2007, are not adequately supported by the
17
specification of any parent application or any other related application, including, but not limited
18
to, Application No. 07/510,898 (“the ’898 Application”) filed April 18, 1990, the proper priority
19
date for the asserted claims for purposes of analyzing invalidity is no earlier than the actual filing
20
date of each of the relevant applications. However, because Rambus maintains that the proper
21
priority date of each of the asserted claims for the purposes of analyzing invalidity is the filing
22
date of the ’898 Application, and that to date there has been no ruling from this Court on the
23
Manufacturers’ challenge to this priority date, the Manufacturers have not addressed any
24
intervening references in these Joint Preliminary Invalidity Contentions but reserve the right to
25
supplement their invalidity contentions with such intervening references if the proper priority date
26
for any of the Common Patents is found to be a date later than April 18, 1990.
27

28

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INVALIDITY CONTENTIONS 4 CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 58 of 163

V. ANTICIPATION OR OBVIOUSNESS
1
A. Patent Local Rule 3-3(b)
2
Pursuant to Patent Local Rule 3-3(b), Exhibits B-1, B-2, and B-3 identify each
3
supplemental item of prior art, taking into account the claim scope and construction Rambus
4
appears to employ in alleging infringement and set forth in the parties’ Joint Proposed Claim
5
Chart dated July 11, 2007, and the current stage of discovery, that anticipates each asserted claim
6
or renders it obvious. References identified in Exhibits B-1, B-2, and B-3 may disclose the
7
elements of the asserted claims explicitly and/or inherently and/or may be relied upon to show,
8
among other things, the state of the art in the relevant timeframes and/or motivations to combine
9
references, predictable results of combining known elements, the interrelated teachings of the
10
patents, the effects of demands known to the design community or present in the marketplace, and
11
the background knowledge possessed by a person having ordinary skill in the art.
12
Anticipatory prior art references are listed under the title Ҥ 102 Prior Art
13
References” of Exhibits B-1, B-2 and B-3, and the combinations of prior art references that render
14
the asserted claims obvious are listed under the title “§ 103 Prior Art References” of Exhibits B-1,
15
B-2 and B-3. Motivations to combine references for obviousness, to the extent such motivations
16
may provide helpful insight, are also set forth in Exhibits B. The suggested obviousness
17
combinations in Exhibits B-1, B-2 and B-3 are in the alternative to Manufacturers’ anticipation
18
contentions set forth in Exhibits B-1, B-2 and B-3 and are not to be construed to suggest that any
19
reference included in any combination is not anticipatory. To the extent that any prior art
20
reference that the Manufacturers contend invalidates the asserted claims under 35 U.S.C. § 102 is
21
found not to disclose, expressly or inherently, each and every element and limitation of a
22
claim(s), the Manufacturers contend that any such unmet claim element or limitation would have
23
been obvious to one of skill in the art before the claimed priority date of the Common Patents and
24
that each such claim is invalid under 35 U.S.C. § 103.
25
Moreover, the claimed inventions are obvious in light of the prior art identified in
26
these Supplemental Preliminary Invalidity Contentions, the Manufacturers’ Preliminary Invalidity
27
Contentions dated May 11, 2007, prior testimony by the named inventors of the Common Patents,
28

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INVALIDITY CONTENTIONS 5 CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 59 of 163

1 as well as testimony by inventors, or other persons with knowledge of the prior art references

2 and/or systems, including without limitation, the testimony of third parties, including without

3 limitation Messrs. John Moussouris, Doran Wilde, David Budde, David Carson, David Johnson,

4 Michael McGowan, and David Morgan.

5
B. Patent Local Rule 3-3(a) – Invalidity Under 35 U.S.C. § 102(b) (On-Sale, etc.)
6 and 102(g) (Prior Invention)

7 The Manufacturers contend that the patent claims asserted against the

8 Manufacturers are anticipated by certain products and prior inventions as set forth in the

9 Manufacturers’ Joint Preliminary Invalidity Contentions.

10 VI. INVALIDITY CLAIM CHARTS – PATENT LOCAL RULE 3-3(C)


11 Pursuant to Patent Local Rule 3-3(c), Exhibit C includes Supplemental Invalidity

12 Claim Charts setting forth where, within each supplemental item of prior art, each element of the

13 asserted claims is found. The Supplemental Invalidity Claim Charts appearing at Exhibit C were

14 prepared by Manufacturers based on Manufacturers’ current understanding of Rambus’s

15 infringement contentions and proposed claim constructions. Manufacturers do not admit or

16 acquiesce as to the correctness and/or reasonableness of Rambus’s proffered constructions or

17 infringement contentions. Manufacturers expressly reserve the right to challenge Rambus’s

18 apparent constructions of the asserted claim language and have offered alternative constructions.

19
VII. INVALIDITY DEFENSES BASED ON 35 U.S.C § 112 – PATENT LOCAL RULES
20 3-3(A) AND 3-3(D)
21 The Manufacturers contend each of the asserted claims of the Common Patents

22 asserted against Samsung, Micron, Hynix, and Nanya is invalid because the claims or certain

23 elements of the claims, at least as Rambus appears to construe them, are not supported by an

24 adequate written description and/or are not enabled. Those claim elements, along with the

25 corresponding patent(s) and claim(s) in which each claim element appears, have been previously

26 identified in Exhibit D-1 to the Manufacturers’ Preliminary Invalidity contentions and are hereby

27 incorporated by reference.

28 The Manufacturers contend that certain designated claims, as outlined in the

MANUFACTURERS’ SUPPLEMENTAL PRELIMINARY


INVALIDITY CONTENTIONS 6 CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 60 of 163

1 Manufacturers’ Joint Preliminary Invalidity Contentions, and the PTO’s office actions in response

2 to Samsung’s requests for reexamination of the Rambus patents, are invalid for failure to meet the

3 requirements of 35 U.S.C. § 112, paragraphs 1 and 2. This contention is evidenced by at least the

4 prior testimony of the named inventors of the Common Patents, expert testimony, and Rambus’s

5 infringement allegations.

6 VIII. OBVIOUSNESS-TYPE DOUBLE PATENTING


7 The Manufacturers contend that certain claims asserted against the Manufacturers

8 are invalid under the doctrine of obviousness-type double patenting as set forth in the

9 Manufacturers’ Joint Preliminary Invalidity Contentions dated May 11, 2007.

10 IX. DOCUMENT PRODUCTION—PATENT LOCAL RULE 3-4


11 Pursuant to Patent Local Rule 3-4(a), each Manufacturer will produce or make

12 available for inspection any documents within the categories required by Patent Local Rule 3-4(a)

13 and 3-4(b) to the extent such documents have not already been produced. Each Manufacturer is

14 responsible for its own production.

15
Dated: April 28, 2008 WEIL, GOTSHAL & MANGES LLP
16
By: /s/ Jared Bobrow
17 JARED BOBROW (Bar No. 133712)
Email: jared.bobrow@weil.com
18 WEIL GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
19 Redwood Shores, CA 94065
Telephone: (650) 802-3034
20 Facsimile: (650) 802-3100
21 WILLIAM C. PRICE (Bar No. 108542)
Email: william.price@quinnemanuel.com
22 HAROLD A. BARZA (Bar No. 80888)
Email: halbarza@quinnemanuel.com
23 ROBERT J. BECHER (Bar No. 193431)
Email: robertbecher@quinnemanuel.com
24 QUINN EMANUEL URQUHART OLIVER &
HEDGES, LLP
25 865 South Figueroa Street, 10th Floor
Los Angeles, CA 90017
26 Telephone: (213) 443-3000
Facsimile: (213) 443-3100
27

28

MANUFACTURERS’ SUPPLEMENTAL PRELIMINARY


INVALIDITY CONTENTIONS 7 CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 61 of 163

Attorneys for Defendants MICRON


1 TECHNOLOGY, INC. and MICRON
SEMICONDUCTOR PRODUCTS, INC.
2
By: _ /s/ Kenneth Nissly______
3 KENNETH L. NISSLY (Bar No. 77589)
Email: kennissly@thelen.com
4 SUSAN van KEULEN (Bar No. 136060)
Email: svankeulen@thelen.com
5 GEOFFREY H. YOST (Bar No. 159687)
Email: gyost@thelen.com
6 THELEN REID BROWN RAYSMAN &
STEINER LLP
7 225 West Santa Clara Street, Suite 1200
San Jose, California 95113
8 Telephone: (408) 292-5800
Facsimile: (408) 287-8040
9
KENNETH R. O’ROURKE (Bar No. 120144)
10 Email: korourke@omm.com
WALLACE A. ALLAN (Bar No. 102054)
11 Email: tallan@omm.com
BELINDA M. VEGA (Bar No. 208236)
12 Email: bvega@omm.com
O’MELVENY & MYERS LLP
13 400 South Hope Street, Suite 1060
Los Angeles, California 90071-2899
14 Telephone: (213) 430-6000
Facsimile: (213) 430-6407
15
ALLEN RUBY (Bar No. 47109)
16 Email: allenruby@aol.com
RUBY & SCHOFIELD
17 125 South Market Street, Suite 1001
San Jose, California 95113-2285
18 Telephone: (408) 998-8500
Facsimile: (408) 998-8503
19
THEODORE G. BROWN III (Bar No. 114672)
20 Email: tgbrown@townsend.com
JORDAN TRENT JONES (Bar No. 166600)
21 Email: jtjones@townsend.com
TOWNSEND and TOWNSEND
22 and CREW LLP
379 Lytton Avenue
23 Palo Alto, Californiaa 94301
Telephone: (650) 326-2400
24 Facsimile: (650) 326-2422
25 Attorneys for Defendants
HYNIX SEMICONDUCTOR INC., HYNIX
26 SEMICONDUCTOR AMERICA INC., and
HYNIX SEMICONDUCTOR MANUFACTURING
27 AMERICA INC.
28

MANUFACTURERS’ SUPPLEMENTAL PRELIMINARY


INVALIDITY CONTENTIONS 8 CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 62 of 163

By: _ /s/ Robert E. Freitas______


1 ROBERT E. FREITAS (Bar No. 80948)
Email: rfreitas@orrick.com
2 CRAIG R. KAUFMAN (Bar No. 159458)
Email: ckaufman@orrick.com
3 VICKIE L. FEEMAN (Bar No. 177487)
Email: vfeeman@orrick.com
4 ORRICK, HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road
5 Menlo Park, CA 94025
Telephone: (650) 614-7400
6 Facsimile: (650) 614-7401
Attorneys for Defendants
7 NANYA TECHNOLOGY CORPORATION, and
NANYA TECHNOLOGY CORPORATION U.S.A.
8

9 By: _ /s/ David J. Healey______


DAVID J. HEALEY (admitted pro hac vice)
10 Email: david.healey@weil.com
ANITA E. KADALA (admitted pro hac vice)
11 Email: anita.kadala@weil.com
WEIL, GOTSHAL & MANGES LLP
12 700 Louisiana, Suite 1600
Houston, TX 77002
13 Telephone: (713) 546-5000
Facsimile: (713) 224-9511
14
Attorneys for Defendants
15 SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC.,
16 SAMSUNG SEMICONDUCTOR, INC., and
SAMSUNG AUSTIN SEMICONDUCTOR, L.P.
17

18 I, Leeron G. Kalay attest that concurrence in the


filing of the document has been obtained from each
19 of the other signatories.

20 /s/ Leeron Kalay


Leeron Kalay (Bar No. 233579)
21

22

23

24

25

26

27

28

MANUFACTURERS’ SUPPLEMENTAL PRELIMINARY


INVALIDITY CONTENTIONS 9 CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 63 of 163

1 CERTIFICATE OF SERVICE

2 I am a citizen of the United States, more than 18 years old, and not a party to this action.

3 My place of employment and business address is 201 Redwood Shores Parkway, Redwood

4 Shores, California, 94065-1175. On April 28, 2008 I caused copies of


MANUFACTURERS’ SUPPLEMENTAL PRELIMINARY INVALIDITY
5 CONTENTIONS
6 to be served as follows:
7
[ ] BY MAIL I am readily familiar with the business practice at my place of business
8 for collection and processing of correspondence for mailing with the United States Postal Service.
In the ordinary course of business, correspondence so collected and processed is deposited with
9 the United States Postal Service that same day with first-class postage thereon fully prepaid. On
the above-referenced date, I placed the above document(s) in a sealed envelope addressed to the
10 person(s) identified below and placed the envelope for collection and mailing following ordinary
business practice.
11
[ ] BY FACSIMILE. I caused the above-identified document(s) to be sent by
12 facsimile transmission to the party(ies) listed below at the facsimile number(s) shown.

13 [ XX ] BY EMAIL of .pdf documents.

14 [ ] BY OVERNIGHT COURIER SERVICE I am readily familiar with the


business practice at my place of business for collection and processing of correspondence for
15 deposit with an overnight delivery service. Correspondence placed for collection and processing
is either delivered to a courier or driver authorized by said overnight delivery service to receive
16 documents or deposited by an employee or agent of this firm in a box or other facility regularly
maintained by said overnight delivery service that same day in the ordinary course of business.
17 On the above-referenced date, I sealed the above document(s) in an envelope or package
designated by the courier service and addressed to the person(s) identified below, with payment
18 of next day delivery fees provided for, and delivered the envelope/package to the office personnel
responsible for delivering documents to overnight courier services following ordinary business
19 practice.

20 Gregory P. Stone Thomas K. Cauley, Jr.


Munger, Tolles & Olson LLP Sidley Austin LLP
21 355 South Grand Avenue, 35th Floor One South Dearborn
Los Angeles, CA 90071-1560 Chicago, IL 60603
22 Facsimile: (213) 687-3702 Facsimile: (312) 853-7036
Gregory.Stone@mto.com tcauley@Sidley.com
23 Attorneys for Plaintiff Rambus Inc. Attorneys for Plaintiff Rambus Inc.
Carolyn Hoecker Luedtke Laura Terrell
24 Munger Tolles & Olson LLP McKool Smith PC
560 Mission Street, 27th Floor 300 West 6th, Suite 1700
25 San Francisco, CA 94105 Austin, TX 78701
Facsimile: (415) 512-4077 Facsimile: (512) 692-8744
26 Carolyn.Luedtke@mto.com Rambus@mckoolsmith.com
Attorneys for Plaintiff Rambus Inc. Attorneys for Plaintiff Rambus Inc.
27

28

MANUFACTURERS’ SUPPLEMENTAL PRELIMINARY


INVALIDITY CONTENTIONS 10 CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 64 of 163

Executed on April 28, 2008 at Redwood Shores, California. I declare under penalty of
1

2 perjury under the laws of the United States of America that the foregoing is true and correct.

4 V\eero~
5

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

MANUFACTURERS' SUPPLEMENTAL PRELIMINARY


INY ALIDITY CONTENTIONS 11 CASE NOS. C 00-20905, C 05-00334, C 06-00244
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 65 of 163

EXHIBIT D
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 66 of 163
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 67 of 163
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 68 of 163
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 69 of 163

EXHIBIT E
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 70 of 163

IN THE UNITED STATES DISTRICT COURT


FOR THE DISTRICT OF DELAWARE

MICRON TECHNOLOGY, INC., )


)
Plaintiff, )
v. )
)
RAMBUS INC., )
)
Defendant. )
)
) C.A. No. 00-792 (SLR)
RAMBUS INC., )
)
Counterclaim Plaintiff, )
v. )
)
MICRON TECHNOLOGY, INC., MICRON )
ELECTRONICS, INC., and MICRON )
SEMICONDUCTOR PRODUCTS, INC., )
)
Counterclaim Defendants. )
POST-TRIAL BRIEF OF RAMBUS INC. ON MICRON’S UNCLEAN HANDS DEFENSE

MORRIS, NICHOLS, ARSHT & TUNNELL LLP


Mary B. Graham (#2256)
OF COUNSEL: Rodger D. Smith, II (#3778)
James W. Parrett, Jr. (#4292)
Gregory P. Stone 1201 N. Market Street
MUNGER, TOLLES & OLSON LLP P.O. Box 1347
355 South Grand Avenue Wilmington, DE 19899-1347
35th Floor 302.658.9200
Los Angeles, California 90071 jparrett@mnat.com
213.683.9100
Rollin A. Ransom
Charles W. Douglas Michelle B. Goodman
Thomas K. Cauley, Jr. SIDLEY AUSTIN LLP
Brian A. McAleenan 555 West Fifth Street
SIDLEY AUSTIN LLP Los Angeles, California 90013
One South Dearborn Street 213.896.6600
Chicago, Illinois 60603
312.853.7000 Attorneys for Rambus Inc.

Dated: June 30, 2008


Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 71 of 163

TABLE OF CONTENTS
Page

TABLE OF AUTHORITIES ......................................................................................................... iii

INTRODUCTION ...........................................................................................................................1

ARGUMENT...................................................................................................................................4

I. MICRON BEARS THE BURDEN OF PROOF ON EACH ELEMENT


OF ITS UNCLEAN HANDS DEFENSE. ...........................................................................4

II. MICRON HAS NOT PROVEN THAT ANY RELEVANT EVIDENCE


HAS BEEN DESTROYED. ................................................................................................5

A. Rambus Has Produced Relevant Documents Expected To Be


Produced In A Patent Infringement Case.................................................................6

B. There Is No Evidence That Any Relevant Document Was


Destroyed. ................................................................................................................9

1. The ten specific documents or sets of documents identified


by Micron.....................................................................................................9

2. The twelve general categories of documents identified by


Micron........................................................................................................12

3. Evidence that some unspecified materials were destroyed in


and of itself is insufficient to prove unclean hands or
spoliation....................................................................................................21

III. MICRON HAS FAILED TO PROVE THAT RAMBUS’S ALLEGED


CONDUCT PREJUDICED ITS ABILITY TO DEFEND ITSELF IN
THIS ACTION...................................................................................................................23

IV. MICRON DID NOT PROVE THAT RAMBUS ACTED IN BAD FAITH.....................25

A. Rambus Adopted A Document Retention Policy In Good Faith...........................28

B. Rambus’s Policy Was A Standard, Content-Neutral Document


Retention Policy.....................................................................................................31

C. There Is No Evidence That Rambus Implemented Its Document


Retention Policy In Bad Faith................................................................................32

V. RAMBUS DID NOT ENGAGE IN LITIGATION MISCONDUCT. ..............................38

VI. THE EXTREME REMEDY OF DISMISSAL IS INAPPROPRIATE. ............................41

-i-
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 72 of 163

CONCLUSION..............................................................................................................................44

- ii -
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 73 of 163

TABLE OF AUTHORITIES

Page(s)

CASES

Applied Telematics, Inc. v. Sprint Commc’ns. Co.,


1996 WL 33405972 (E.D. Pa. Sept. 17, 1996) ........................................................................27

Arthur Andersen LLP v. U.S.,


544 U.S. 696 (2005).........................................................................................................1, 5, 34

Bio-Technology Gen. Corp. v. Genentech, Inc.,


80 F.3d 1553 (Fed. Cir. 1996)..................................................................................................42

Brewer v. Quaker State Oil Ref. Corp.,


72 F.3d 326 (3d Cir. 1995).................................................................................................26, 43

Castle v. Cohen,
676 F. Supp. 620 (E.D. Pa. 1987), aff’d in part and remanded on other grounds,
840 F.2d 173 (3d Cir. 1988)....................................................................................... 3-4, 23, 25

Ciba-Geigy Corp. v. Bolar Pharm. Co.,


747 F.2d 844 (3d Cir. 1984).......................................................................................................4

Citizens Fin. Group, Inc. v. Citizens Nat’l Bank of Evans City,


383 F.3d 110 (3d Cir. 2004)................................................................................................... 4-5

Coates v. Johnson & Johnson,


756 F.2d 524 (7th Cir. 1985) ...................................................................................................43

Conan Props., Inc. v. Conans Pizza, Inc.,


752 F.2d 145 (5th Cir. 1985)......................................................................................................4

DaimlerChrysler AG Sec. Litig.,


2003 WL 22951696 (D. Del. Nov. 25, 2003) ..............................................................14, 24, 27

Design Strategies, Inc. v. Davis,


367 F. Supp. 2d 630 (S.D.N.Y. 2005)......................................................................................42

Dollar Sys., Inc. v. Avcar Leasing Sys., Inc.,


890 F.2d 165 (9th Cir. 1989) ...................................................................................................26

Emerson v. Wetherill,
1994 WL 249769 (E.D. Pa. June 1, 1994) ......................................................................... 22-23

Estate of Spear v. Commissioner,


41 F.3d 103 (3d Cir. 1994).................................................................................................39, 41

- iii -
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 74 of 163

Flowers v. City of Minneapolis,


2007 WL 2893349 (D. Minn. Sept. 28, 2007) .........................................................................24

Gates Rubber Co. v. Bando Chem. Indus. Ltd.,


167 F.R.D. 90 (D. Colo. 1996) ................................................................................................23

Getty Props. Corp. v. Raceway Petroleum, Inc.,


2005 WL 1412134 (D.N.J. June 14, 2005) ..............................................................................24

Gidatex, S.r.L. v. Campaniello Imports, Ltd.,


82 F. Supp. 2d 126 (S.D.N.Y. 1999)....................................................................................4, 26

Haft v. Dart Group Corp.,


841 F. Supp. 549 (D. Del. 1993)..............................................................................................25

Hynix Semiconductor Inc. v. Rambus Inc.,


2006 WL 565893 (N.D. Cal. Jan. 5, 2006) ...................................................................... passim

In re Hechinger Inv. Co. of Del., Inc.,


489 F.3d 568 (3d Cir. 2007)...........................................................................................3, 23, 27

Jarrow Formulas, Inc. v. Nutrition Now, Inc.,


304 F.3d 829 (9th Cir. 2002) ...................................................................................................26

Joe Hand Promotions v. Sports Page Cafe, Inc.,


940 F. Supp. 102 (D.N.J. 1996) ...............................................................................................23

Johnson v. Ready Mixed Concrete Co.,


424 F.3d 806 (8th Cir. 2005) ...................................................................................................23

JTH Tax, Inc. v. H&R Block E. Tax Servs., Inc.,


128 F. Supp. 2d 926 (E.D. Va. 2001), aff’d in part and vacated and remanded on other
grounds, 28 Fed. Appx. 207 (4th Cir. 2002)..............................................................................4

Keystone Driller Co. v. General Excavator Co.,


290 U.S. 240 (1933)...............................................................................................................4, 6

Martinez v. Bally’s La., Inc.,


244 F.3d 474 (5th Cir. 2001) ...................................................................................................42

Mersiant Co. v. McNeil Nutritionals, LLC,


515 F. Supp. 2d 509 (E.D. Pa. 2007) ...................................................................................5, 23

MOSAID Techs. Inc. v. Samsung Elecs. Co.,


348 F. Supp. 2d 332 (D.N.J. 2004) ..........................................................................................43

Motown Record Co. v. DePietro,


2007 WL 1725604 (E.D. Pa. June 11, 2007) ...........................................................................25

- iv -
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 75 of 163

New Valley Corp. v. Corp. Prop. Assocs. 2 and 3,


181 F.3d 517 (3d Cir. 1999).....................................................................................................41

Omega Indus., Inc. v. Raffaele,


894 F. Supp. 1425 (D. Nev. 1995).......................................................................................5, 26

PenneCom B.V. v. Merrill Lynch & Co., Inc.,


372 F.3d 488 (2d Cir. 2004).................................................................................................4, 23

Positran Mfg. Inc. v. Diebold,


2003 WL 21104954 (D. Del. May 15, 2003).....................................................................25, 27

Rambus Inc. v. Federal Trade Comm’n,


522 F.3d 456 (D.C. Cir. 2008) ...................................................................................................8

Rambus Inc. v. Infineon Techs. AG,


318 F.3d 1081 (Fed. Cir. 2003)............................................................................................8, 40

Rhein-Hawes v. Vanguard Group, Inc.,


2005 WL 3441228 (E.D. Pa. Dec. 14, 2005)...........................................................................21

Riddle v. Liz Claiborne, Inc.,


2003 WL 21976403 (S.D.N.Y. Aug. 19, 2003).......................................................................24

S & R Corp. v. Jiffy Lube Int’l, Inc.,


968 F.2d 371 (3d Cir. 1992)........................................................................................... 3, 25-26

Sanofi-Aventis v. Advancis Pharm. Corp.,


453 F. Supp. 2d 834 (D. Del. 2006)....................................................................................... 4-5

Schmid v. Milwaukee Elec. Tool Corp.,


13 F.3d 76 (3d Cir. 1994) ................................................................................................ passim

Stone & Webster, Inc. v. Next Factors, Inc.,


359 B.R. 102 (Bankr. D. Del. 2007) ................................................................................ passim

Thorn EMI N. Am., Inc. v. Intel Corp.,


936 F. Supp. 1186 (D. Del. 1996)............................................................................................42

Universe Tankships, Inc. v. U. S.,


388 F. Supp. 276 (E.D. Pa. 1974), aff’d 528 F.2d 73 (3d Cir. 1975).......................................26

Walters v. Gen. Motors Corp.,


209 F. Supp. 2d 481 (W.D. Pa. 2002)......................................................................................24

Wells Fargo & Co. v. Stagecoach Props., Inc.,


685 F.2d 302 (9th Cir. 1982) ...............................................................................................3, 26

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Zubulake v. UBS Warburg LLC,


220 F.R.D. 212 (S.D.N.Y. 2003) ..................................................................................... passim

- vi -
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INTRODUCTION

Micron asserts the affirmative defense of unclean hands to avoid liability for infringing

Rambus’s patents. That defense fails. Micron has adduced no evidence that: (1) a single item of

relevant evidence is not available to Micron; (2) it suffered prejudice due to the loss of evidence

helpful to its claims or defenses; or (3) Rambus acted in bad faith to impair Micron’s ability to

present its case. There is absolutely no hint of the severe prejudice or egregious conduct

necessary to justify dismissal of Rambus’s claims.

Although Micron alleges that Rambus engaged in both spoliation and litigation

misconduct, it primarily bases its unclean hands defense on Rambus’s adoption and

implementation of a document retention policy in 1998. However, there is nothing wrongful or

inequitable about adopting a document retention policy. Arthur Andersen LLP v. U.S., 544 U.S.

696, 704 (2005) (“It is, of course, not wrongful for a manager to instruct his employees to

comply with a valid document retention policy under ordinary circumstances.”). And there is

nothing wrongful or inequitable about destroying documents pursuant to a document retention

policy unless there is a duty to preserve those documents. Zubulake v. UBS Warburg LLC, 220

F.R.D. 212, 216 (S.D.N.Y. 2003) (“It goes without saying that a party can only be sanctioned for

destroying evidence if it had a duty to preserve it.”).

As Rambus has previously demonstrated, it had no duty to preserve evidence related to

the claims in this case until December 1999, when Rambus’s negotiations with Hitachi – the first

DRAM manufacturer Rambus approached for a license – broke down. See Rambus’s Post-Trial

Opposition Brief On The Issue Of When The Duty To Preserve Arose (“Opposition Brief”) (D.I.

1076). But regardless of when the duty to preserve evidence attaches, that duty does not oblige a

party to preserve every scrap of paper or piece of electronic data within a company. Zubulake,

220 F.R.D. at 217 (“Must a corporation, upon recognizing the threat of litigation, preserve every

-1-
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 78 of 163

shred of paper, every e-mail or electronic document, and every backup tape? The answer is

clearly, ‘no.’ Such a rule would cripple large corporations.”). It is a duty to preserve evidence.

And evidence is only that which is relevant and material to the claims at issue in this litigation.

Micron has failed to prove that Rambus destroyed any evidence relevant and material to

Rambus’s patent infringement claims. To the contrary, Rambus preserved and produced to

Micron all of the types of documentary evidence that one would expect to see in a patent case.

And the trial record belies Micron’s contentions that particular documents or categories of

documents relevant to this litigation were destroyed. It is not enough to cite, as Micron does, to

the volume of material discarded during Rambus’s “shred days” or the number of documents that

might have been contained on old backup tapes, and then speculate that unique, relevant

evidence “must have” been destroyed. Whether done in a single annual purge or on a monthly,

weekly, or daily basis, companies regularly discard documents, delete electronic data, and

recycle backup tapes, even while embroiled in pending litigation. Zubulake, 220 F.R.D. at 217

(“As a general rule, then, a party need not preserve all backup tapes even when it reasonably

anticipates litigation.”). A litigant cannot obtain dismissal of its adversary’s claims merely by

measuring the volume of trash a company discards or the number of backup tapes that it

recycles. It must at least come forward with “plausible, concrete suggestions as to what [the lost]

evidence might have been.” Schmid v. Milwaukee Elec. Tool Corp., 13 F.3d 76, 80 (3d Cir.

1994).

Further, there is simply no evidence that Micron’s ability to defend itself in this case has

been prejudiced – a showing that Micron must also make to prevail on its unclean hands defense.

Micron cannot succeed merely by proving that relevant evidence had been lost; it must further

demonstrate that the allegedly destroyed evidence would have been helpful to Micron and that

-2-
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 79 of 163

the evidence is not available from another source. Castle v. Cohen, 676 F. Supp. 620, 627-28

(E.D. Pa. 1987) (alleged misconduct must “injure[] the other party” and “affect[] the balance of

equities between the litigants”), aff’d in part and remanded on other grounds, 840 F.2d 173 (3d

Cir. 1988); In re Hechinger Inv. Co. of Del., Inc., 489 F.3d 568, 579 (3d Cir. 2007) (no prejudice

unless lost evidence “would have aided” party’s claims); Stone & Webster, Inc. v. Next Factors,

Inc., 359 B.R. 102, 117 (Bankr. D. Del. 2007). Micron has not made the requisite showing.

But even if Micron were able to prove that relevant evidence helpful to its case has not

been preserved, Micron’s unclean hands defense still fails because there is no evidence that

Rambus acted in bad faith. See Wells Fargo & Co. v. Stagecoach Props., Inc., 685 F.2d 302,

308 (9th Cir. 1982) (noting that “[b]ad faith is the essence of the defense” of unclean hands).

The accidental, inadvertent, or even grossly negligent destruction of relevant documents is not

sufficient to warrant sanctions. S & R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 377 n.7 (3d

Cir. 1992). Micron must prove that Rambus adopted or implemented its document retention

policy in bad faith with the intent to destroy documents that might be harmful to Rambus in this

litigation. Micron has not made, and cannot make, this showing.

Indeed, the evidence at trial demonstrated that Rambus adopted its document retention

policy in good faith, at the urging of experienced outside counsel who were well aware of, and

indeed helped to prepare, Rambus’s backup licensing and litigation strategy. Rambus’s policy

was a run-of-the-mill, content-neutral policy – a fact Micron does not and cannot dispute. And

there is no evidence that Rambus or any of its employees ever targeted documents for destruction

because they might harm Rambus in litigation.

-3-
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ARGUMENT

I. MICRON BEARS THE BURDEN OF PROOF ON EACH ELEMENT OF


ITS UNCLEAN HANDS DEFENSE.

An “unclean hands” defense may be interposed when a party that is seeking to invoke “an

equitable doctrine has committed some unconscionable act that is directly related to the subject

matter in litigation and has injured the party attempting to” raise the defense. PenneCom B.V. v.

Merrill Lynch & Co., Inc., 372 F.3d 488, 493 (2d Cir. 2004). The defense is applicable only

when “1) a party seeking affirmative relief 2) is guilty of conduct involving fraud, deceit,

unconscionability, or bad faith 3) directly related to the matter in issue 4) that injures the other

party 5) and affects the balance of equities between the litigants.” Castle, 676 F. Supp. at 627;

see also Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 126, 131 (S.D.N.Y. 1999)

(requiring party to show that its adversary “is guilty of conduct involving fraud, deceit,

unconscionability, or bad faith related to the matter at issue to the detriment of the other party”).

As the defense of unclean hands would shut “the doors of the court,” Keystone Driller Co. v.

General Excavator Co., 290 U.S. 240, 245 (1933), it is an extreme sanction that courts are

reluctant to apply in all but the most “egregious” situations. Citizens Fin. Group, Inc. v.

Citizens Nat’l Bank of Evans City, 383 F.3d 110, 129 (3d Cir. 2004) (holding that, although

motives for plaintiff’s action might be questionable, conduct did not rise to “egregious” level

necessary to invoke unclean hands); Sanofi-Aventis v. Advancis Pharm. Corp., 453 F. Supp. 2d

834, 856-57 (D. Del. 2006).

Micron bears the burden of proving each of the elements of its unclean hands affirmative

defense. Ciba-Geigy Corp. v. Bolar Pharm. Co., 747 F.2d 844, 855 (3d Cir. 1984); Conan

Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 150 (5th Cir. 1985); JTH Tax, Inc. v. H&R

Block E. Tax Servs., Inc., 128 F. Supp. 2d 926, 949 (E.D. Va. 2001) (“The party asserting an

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unclean hands defense carries the burden of establishing each of the elements of this affirmative

defense.”), aff’d in part and vacated and remanded on other grounds, 28 Fed. Appx. 207 (4th

Cir. 2002); Omega Indus., Inc. v. Raffaele, 894 F. Supp. 1425, 1431 (D. Nev. 1995) (“The party

asserting [the unclean hands] doctrine has the burden of proving its application.”). And it must

prove each element by clear and convincing evidence. Citizens Fin. Group, 383 F.3d at 129

(stating that unclean hands must be shown by “clear, convincing evidence of ‘egregious’

misconduct.”); Mersiant Co. v. McNeil Nutritionals, LLC, 515 F. Supp. 2d 509, 531 (E.D. Pa.

2007) (“In the Third Circuit, a defendant asserting an ‘unclean hands’ defense must introduce

‘clear, convincing evidence of ‘egregious’ misconduct.’”); Sanofi-Aventis, 453 F. Supp. 2d at

856-57 (same).

Therefore, to establish the affirmative defense of unclean hands, Micron had to

demonstrate, by clear and convincing evidence: 1) that Rambus destroyed documents relevant

and material to the claims in this action; 2) that documents have been destroyed that materially

prejudice Micron’s ability to defend against Rambus’s claims of patent infringement; and 3) that

Rambus acted in bad faith with the intent to destroy documents that might be harmful in this

litigation.1 Micron has not met, and cannot meet, its burden.

II. MICRON HAS NOT PROVEN THAT ANY RELEVANT EVIDENCE HAS
BEEN DESTROYED.

There is nothing wrongful or inequitable about adopting a document retention policy or

destroying documents pursuant to that policy unless there is a duty to preserve those documents.

Arthur Andersen, 544 U.S. at 704; Zubulake, 220 F.R.D. at 216. Once it attaches, the duty to

1
Micron’s first obligation respecting its unclean hands defense was to establish that Rambus
had a duty to preserve. Micron’s failure to demonstrate that Rambus had any such duty prior
to the eve of litigation with Hitachi was explained in Rambus’s Opposition Brief.

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preserve evidence does not require a party to preserve every scrap of paper or email within the

company. Zubulake, 220 F.R.D. at 217. Rather, it is a duty to preserve evidence – documents

that are relevant and material to the claims at issue in the litigation. See Keystone Driller, 290

U.S. at 245 (requiring party seeking the application of the unclean hands doctrine to show that

the allegedly “unconscionable act . . . has immediate and necessary relation to the equity that he

seeks in respect of the matter in litigation”); Stone & Webster, 359 B.R. at 117 n.12 (“[A] party

who has reason to anticipate litigation has an affirmative duty to preserve evidence which might

be relevant to the issues in the lawsuit.”). Counsel for Micron acknowledged this precise point at

oral argument:

COURT: When there’s a litigation hold against a specific party,


you don’t keep everything, do you? You just keep things that are
relevant to the litigation?

MR. PRICE: You keep – exactly.

(5/20/2008 Hrg. Tr. at 101:10-14 (D.I. 1081).)

A. Rambus Has Produced Relevant Documents Expected To Be Produced


In A Patent Infringement Case.

It is beyond dispute that Rambus has preserved and produced an extraordinary volume of

material in this litigation. Indeed, Micron itself has acknowledged the extensive written record

relating to Rambus’s conduct during the relevant period. In related proceedings pending in the

Northern District of California, counsel for Micron and other DRAM manufacturers observed:

“In this case, there’s a pretty good written record of what was going on really in the ‘90s in terms

of how Rambus got its monopoly power.” (Cal. Tr. 5912:15-17; 5888:13-18) (attached as

Exhibit A hereto). In this litigation alone, Rambus produced to Micron over 700,000 pages of

documents. (Tr. 1003:9-16; see also Hynix Semiconductor Inc. v. Rambus Inc., 2006 WL

565893, at *27 (N.D. Cal. Jan. 5, 2006) (stating that “Rambus has produced to Hynix a large

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volume of relevant and material documents” totaling, per Hynix’s counsel, “approximately 1.2

million pages of documents responsive to Hynix’s discovery requests”).) Notably, Micron

initially designated 1,400 exhibits for the unclean hands phase of the trial. See Proposed Final

Pretrial Order (filed Aug. 28, 2006) at 22, Exh. E (D.I. 912). The large volume of evidence

available to, and utilized by, Micron severely undermines Micron’s claims of wholesale evidence

destruction. Indeed, this Court previously noted that it is ironic that a case ostensibly relating to

the destruction of documents could involve so many exhibits and so much evidence. (Pretrial

Conference Transcript, Oct. 11, 2007, at 12:14-18 (D.I. 1048).)

Included within Rambus’s production are all of the types of documents one would expect

a patent holder to maintain. Patent infringement actions typically involve four fundamental

issues: validity, infringement, enforceability, and damages. The bulk of the evidence relating to

two of those issues – infringement and damages – is naturally found in the files of the alleged

infringer (here, Micron).2 That leaves evidence of validity and enforceability. Rambus has

produced or appropriately identified on its privilege log numerous documents potentially related

to validity, including documents concerning prior art (Tr. 1009:3-19; 1009:24-10:13; 1396:21-

97:5) and documents concerning the conception and reduction to practice of the Rambus

inventions, such as the notebooks of inventors Farmwald and Horowitz (RAMTX 70, RAMTX

71, RAMTX 81), drafts of their patent applications (e.g., RAMTX 206), and copies of their early

technical presentations (e.g., RAMTX 251, RAMTX 252). Sean Cunningham, the Gray Cary

2
To the extent that Rambus would have information relevant to those topics, it has been
produced. For instance, Rambus’s licenses with other DRAM manufacturers might bear on
the issue of “reasonable royalty” and, as explained below, have been produced. Similarly,
claim construction can be influenced by the prosecution history, and again all
communications between Rambus and the PTO have been produced (and in all events remain
available at the PTO).

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attorney responsible for the Rambus document collection effort, testified that a search was

conducted for documents related to all aspects of the patent case, and there was no particular set

or group of documents that he expected to find but could not locate. (Tr. 1047:12-24.)

Micron’s enforceability argument centers on Rambus’s participation in the standard

setting organization JEDEC. Rambus retained and has produced numerous documents related to

Rambus’s participation in JEDEC, including all of the trip reports of its JEDEC representative

Richard Crisp, as well as Crisp’s e-mails respecting his involvement in the organization. (E.g.,

MTX 80; RAMTX 69.)3

Notably, although Micron focuses its allegations of wrongdoing, including the purported

destruction of evidence, on Rambus’s activities related to its licensing program, Rambus

preserved the documents relating to its consideration of, and eventual implementation of, the

licensing strategy. (E.g., MTX 295; MTX 379; MTX 468; MTX 491.) And Rambus even

preserved documents detailing the development and implementation of its document retention

policy, the very foundation of Micron’s spoliation claim. (E.g., MTX 290; RAMTX 111; MTX

343; MTX 300; MTX 333; MTX 337.)

3
Although these JEDEC documents were retained and produced, it is questionable whether
they are relevant in any event. Judge Jordan concluded in this case that Micron “failed to
demonstrate on the present record that Rambus had a legal duty to disclose anything beyond
what it did disclose to JEDEC.” (June 15, 2006 Memorandum Order at 3 (D.I. 815).)
Further, both the jury in three coordinated cases in California (where Micron is also a party)
and the United States Court of Appeals for the Federal Circuit have now found that Rambus
had no duty to disclose its patent applications or plans to JEDEC. See Transcript of Verdict
in Case No. C-00-20905 RMW (attached as Exhibit B to Rambus’s Opposition Brief (D.I.
1076); Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1102 (Fed. Cir. 2003). Those
conclusions were recently echoed by the D.C. Circuit. See Rambus Inc. v. Federal Trade
Comm’n, 522 F.3d 456, 467-69 (D.C. Cir. 2008) (characterizing the Federal Trade
Commission’s (now overturned) findings regarding Rambus’s JEDEC disclosure obligations
as “murky” and resting on “rather weak evidence”).

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B. There Is No Evidence That Any Relevant Document Was Destroyed.

Despite the years of extensive discovery in multiple litigations by Micron, Hynix, and the

other DRAM manufacturers, scrutiny of hundreds of thousands of Rambus documents, and

countless depositions of numerous Rambus witnesses (often more than once), Micron has been

unable to show that a single piece of evidence relevant to the claims in this case has been lost.

In response to Rambus’s discovery requests, Micron identified the evidence it claimed

was lost as a result of Rambus’s document retention activities. That evidence can be divided into

two groups: (1) ten specific documents or groups of documents (identified in Micron’s

responses to Rambus’s Interrogatory No. 65 and Micron’s Request for Production (“RFP”) No.

150 (attached hereto as Exhibits B & C)); and (2) twelve entire categories of documents

(identified in Micron’s responses to Rambus’s Interrogatory Nos. 51 and 52 (attached hereto as

Exhibit D)). Micron has failed to prove that these documents were destroyed. To the contrary,

the evidence at trial demonstrated that, with one exception – Rambus’s agreement with RKK, its

Japanese affiliate – all of these documents were preserved. Finally, Rambus explains that an

attempt to use the volume of material discarded as a substitute for showing the loss of relevant

evidence is improper and does not satisfy Micron’s burden.

1. The ten specific documents or sets of documents identified by


Micron.

As an initial matter, Micron has failed to show that Rambus had a duty to preserve all of

the specifically-identified documents, as many have no relevance to the claims in this case. That

is particularly true with respect to the one identified document that was not produced (RFP No.

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150 ¶ 9) – the agreement between Rambus and RKK, Rambus’s Japanese affiliate.4 Micron does

not, and cannot, explain how that agreement with Rambus’s Japanese affiliate has any relevance

whatsoever to the patent infringement claims in this case. The same is true of most of the

remaining documents. For example, Micron has not shown how the documents listed in RFP

No. 150, ¶ 3, which concern Rambus’s ’755 patent, which is not a patent-in-suit, and patent

application P001C3, which never resulted in an issued patent, have any relevance to the instant

case. (Stipulated Order, Nov. 6, 2007 (D.I. 1052).) The reverse engineering reports identified in

RFP No. 150, ¶¶ 5 & 8 concern products manufactured by Samsung, and thus likewise have no

bearing on a lawsuit for infringement by Micron’s products. Similarly, the “data sheets” listed in

RFP No. 150, ¶¶ 7 & 10 concern products manufactured by companies other than Micron, and

thus do not concern Micron or this lawsuit. Moreover, they are, in any event, available from the

third parties that originally produced the data sheets.

But relevance aside, Micron has failed to prove that any of the documents it identified has

been destroyed. Rather, the evidence at trial, summarized in the table below, demonstrates that

these documents were preserved:

Document(s) Micron Record Evidence Indicating That Document(s) Were Preserved


Claims Were Destroyed

Item 1. Sean Cunningham, the Gray Cary lawyer in charge of discovery for
the DRAM litigation, testified that he collected claim charts but did
Claim charts: claim not produce all of them because some are privileged. (Tr. 1017-19-
charts related to Micron 21.) Joel Karp testified that he asked Neil Steinberg, a Rambus
and Fujitsu products attorney, to help prepare infringement analyses and claim charts
(MTX 802) (RFP No. 150 with respect to Fujitsu and Micron SDRAM products, and that he
¶ 1). preserved those documents. (Tr. 432:19-33:20; 435:4-7; 436:11-
438:2; MTX 969 p. 23-24, entries 341, 344, 345, p. 54, entry 819;

4
Rambus timely objected to Micron’s request for the production of the RKK agreement.
Micron never moved to compel production of that agreement. Thus, even if relevant (and it
is not), Rambus had no obligation to produce the RKK agreement.

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see also Tr. 1017:19-19:9 (non-disclosed claim charts were placed


on Rambus’s privilege log).)

Item 2. At trial, Rambus demonstrated that materials referenced in Dr.


Farmwald’s 1995 e-mail – including Dr. Farmwald’s lab notebook,
Notebooks, diagrams which contained early circuit diagrams (RAMTX 71), as well as
and models prepared by early Rambus presentation materials and notes containing diagrams
Dr. Farmwald and and other early work-in-progress on Dr. Farmwald’s idea (RAMTX
referenced in Farmwald 208, RAMTX 209, RAMTX 210, RAMTX 251, RAMTX 252,
1995 e-mail (MTX 136) RAMTX 253, RAMTX 255), were preserved and produced (Tr.
(RFP No. 150 ¶ 2). 1213:7-15:3, 1215:18-20:15) and those documents were admitted
into evidence. The only items mentioned in MTX 136 and not
preserved were the “models.” However, Dr. Farmwald testified
that those models, which he constructed out of cardboard before
Rambus even was formed, were never on Rambus property and
likely were lost during one of his many residential moves prior to
the implementation of Rambus’s document retention policy. (Tr.
1681:22-83:22.) Thus, Micron has no basis to claim that Rambus’s
document retention practices resulted in the loss of those models.

Item 3. Allen Roberts, Rambus’s Vice President of Engineering during the


relevant period, identified three documents, RAMTX 204, RAMTX
Documents referenced in 205 and RAMTX 206, as the documents listed on MTX 196, and
Diepenbrock e-mail those documents were admitted into evidence. (Tr. 1164:7-65:5,
(MTX 196) (RFP No. 150 1183:17-85:2.) Moreover, MTX 196 is dated March 28, 1996.
¶ 3). Even if any of the documents identified in MTX 196 had been
destroyed, Micron has offered no evidence that they were destroyed
either in connection with Rambus’s document retention policy or,
in any event, after Rambus’s obligation to preserve documents
arose. On the contrary, Diepenbrock testified that his practice
regarding maintenance of the patent files did not change as a result
of the document retention policy, such that any existing patent file
documents that were to be destroyed under the document retention
policy would have been discarded prior to its implementation. (2-
Hr. Tr. 114:21-15:10., D.I. 1071)

Item 4. Cunningham testified that the summary was preserved and


produced, and that document was admitted into evidence. (Tr.
Summary of patent 1021:20-24:9; MTX 961.)
applications disclosed to
Intel (MTX 955) (RFP
No. 150 ¶ 4).

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Items 5 & 8. Karp testified that Rambus asked Semiconductor Insights to prepare
a reverse engineering report on a Samsung product, that
“In-progress” reverse Semiconductor Insights provided Rambus with preliminary final
engineering reports and versions of its reports, that those reports are the documents
Semiconductor Insights referenced in MTX 375, and that those documents were preserved
report on Samsung DDR by Rambus or Karp personally. (Tr. 411:5-13:23.) Copies of both
SDRAM discussed in versions of the report were admitted into evidence. (MTX 419;
Rambus presentation RAMTX 269; RAMTX 270.)
(MTX 375 ) and Karp
Hynix testimony (RFP
No. 150 ¶¶ 5 & 8).

Item 6. The claim charts referred to in MTX 807 are those that were
prepared for presentation to infringers. MTX 862 (mis-transcribed
Claim charts showing as MTX 682 in the transcripts) is one example of such claim charts.
infringement of allowed Sean Cunningham testified that many such claim charts were
Rambus patents collected and produced. (Tr. 1017:19-1021:14.)
identified in Rambus
presentation (MTX 807)
(RFP No. 150 ¶ 6).

Items 7 & 10. Karp identified DDR datasheets from the 1996 and 1997 time
period (RAMTX 202; MTX 964), which were preserved and
Datasheets: original admitted into evidence. (Tr. 429:9-31:5.) Karp also testified that
DDR datasheets from these Samsung datasheets were from the same time frame as the
1996/97 time period Samsung datasheet that he had earlier referenced in his Hynix
discussed in Rambus e- testimony. (Tr. 431:7-13.) And, even if certain datasheets from
mail (MTX 477) and 1996 or 1997 were discarded by Rambus, there is no evidence that
Samsung datasheets such disposal occurred after Rambus became obligated to preserve
mentioned in Karp’s documents (even using the March 1998 date advocated by Micron).
Hynix testimony (RFP
No. 150 ¶¶ 7 & 10).

2. The twelve general categories of documents identified by


Micron.

At trial, Micron did not prove that Rambus failed to produce any documents from within

the twelve different categories of documents Micron identified. The Special Master determined

that Micron could not contend that any specific document within those categories was destroyed

unless Micron identified that document in advance of trial (or first learned about it at trial).

(Special Master’s Report and Recommendations, Aug. 29, 2007 (D.I. 1006) (referring to

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Transcript of Aug. 10, 2007 hearing with Special Master Poppiti, at 121-33).) Consequently,

Micron could succeed only by showing that Rambus did not produce any documents within a

particular category. Micron fails to do so with respect to all twelve. As summarized in the table

below, the evidence at trial demonstrated that documents within each category were in fact

preserved:5

Category of Documents Record Evidence Indicating Documents Were Preserved


Allegedly Destroyed

1. Documents and License Agreements: RAMTX 67 (Mar. 1997 Micron); RAMTX


evidence related to 196 (Nov. 1990 MIPS); RAMTX 235 (Oct. 1989 MIPS Non-
Rambus’s negotiations, Disclosure Agreement); RAMTX 249 (Mar. 1990 Letter from B.
licenses, and contracts Morrison of Micron to Farmwald re: confidentiality agreement).
with DRAM
manufacturers (Resp. to Written Correspondence: MTX 534 (Jun. 2000 Letter from
Int. 52) Steinberg to Park of Hynix); MTX 536 (Jun. 2000 Letter re:
Infineon Product Line Overview); RAMTX 249 (Mar. 1990 Letter
from Morrison of Micron to Farmwald re: confidentiality
agreement); RAMTX 12 (Nov. 1999 Karp Letter to Hitachi);
RAMTX 13 (Nov. 1999 Hitachi Letter to Steinberg).

E-mail: MTX 371 (Sep. 1998 E-mail from Tate to Rambus


executives re: meeting with Samsung executives); RAMTX 8
(Aug. 2000 E-mail from Appleton of Micron to Tate re: filing of
Micron complaint); RAMTX 191 (Aug. 2000 E-mail from Tate to
Appleton re: initiation of litigation; RAMTX 231 (Dec. 1999 E-
mail from Mooring of Rambus re: meeting with Appleton);
RAMTX 248 (Aug. 1997 E-mail from Tate to Appleton re:
presentation by Micron’s Kipp Bedard and his response to
question); RAMTX 250 (Oct. 1996 E-mail from Crisp of Rambus
re: Micron executive meeting); RAMTX 250A (Jul. 2001 E-mail
from John Vidal forwarding E-mail reflected in RAMTX 250).

5
The Court described the twelve categories as presented in the chart Rambus used at trial as a
“helpful way” of organizing Micron’s allegations of destruction, and stated that “I need to
have that chart addressed by Micron.” (Tr. 872:21-73:17.) Micron never did address that
chart at trial.

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Presentations, Articles and Related Materials Concerning DRAM


Manufacturers: MTX 315 (May 1998 Hitachi Memory Roadmap);
MTX 381 (Oct. 1998 Rambus Roadmap, IBM); RAMTX 208
(Sep. 1989 slide presentation titled “RamBus”); RAMTX 209
(Aug. 1989 slide presentation titled “RamBus Business
Overview”); RAMTX 210 (Apr. 1990 slide presentation titled
“RamBus Technology Overview”); MTX 533 (Jun. 2000 press
release titled “Hitachi settlement Q&A confidential”).

Sean Cunningham Testimony: Cunningham testified that he


collected documents and evidence relating to Rambus’s RDRAM
and non-compatible licenses, negotiations and contracts with
DRAM manufacturers and others. (Tr. 1003:21-4:17; 1007:6-18.)

2. Financial documents SEC Documents: MTX 240 (Mar. 1997 Rambus S-1 Registration
(Supp. Resp. to Int. 52) Statement).

Selected Billing Records of Lester Vincent: MTX 65 (Feb. 1993);


MTX 848 (Jan. – Dec. 1992).

Fenwick & West Invoices: MTX 345 (Jul. 1998); RAMTX 50


(Aug. 1999); RAMTX 51 (Jul. 1999); RAMTX 52 (Jun. 1999);
RAMTX 53 (May 1999); RAMTX 54 (Apr. 1999); RAMTX 55
(Mar. 1999); RAMTX 56 (Feb. 1999); RAMTX 57 (Jan. 1999);
RAMTX 58 (Nov. 1998); RAMTX 59 (Sep. 1998); RAMTX 60
(Aug. 1998).

Cooley Godward Invoices: RAMTX 25 (Jun. 1998); RAMTX 62


(May 1998); RAMTX 63 (Apr. 1998).

Invoices and Related Materials From SureShred & ProShed: MTX


369 (Sep. 1998); MTX 398 (Feb. 1999 – Feb. 2001); MTX 454
(Aug. 1999), MTX 577 (Dec. 2000).

Invoices, Purchase Orders and Related Information From


Brambles: MTX 326 (Jul. 1998); MTX 327 (Jul. 1998); MTX 829
(Jul. 1998).

Rambus Budget Presentations and Materials: MTX 807 (Jun.


1999); MTX 823 (Jul. 2000); RAMTX 41 (Dec. 1999); RAMTX
43 (Jun. 1999); RAMTX 45 (Sep. 1999).

Market Forecasts, Analyses and Related Material: MTX 938


(Aug. 1997); MTX 942 (May 1998); MTX 945 (Jan. 1997).

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Sean Cunningham testimony: Cunningham testified that he


recalled collecting “[f]inancial statements, all of the SEC reporting
type documents, ledgers [and] the record of payments to JEDEC
by Rambus.” (Tr. 1008:10-21.) Notably, Cunningham could not
recall looking for any particular financial records that he was not
able to find. (Tr. 1008:22-09:2.)

3. Documents from Handwritten Notes: MTX 42 (Mar. 1992 conference); MTX 47


Lester Vincent patent (May 1992 teleconference); MTX 54 (Sep. 1992 conference);
files (Supp. Resp. to Int. MTX 420 (May 1999 teleconference); MTX 934 (Apr. 1999
51 and Resp. to Int. 52) meeting with Karp); RAMTX 266 (Mar. 1992 teleconference).

Letters Enclosing Patent Files: RAMTX 142 (Feb. 2000 Letter to


Steinberg together with patent files); RAMTX 143 (Jan. 2000
Letter to Steinberg together with enclosed patent files).

Lester Vincent’s Actions Regarding Patent Files: Micron asserts


that relevant information was lost when Lester Vincent, an outside
patent prosecution attorney for Rambus, “cleaned” his Rambus
patent files such that they would contain only the materials
maintained in the files at the Patent and Trademark Office
(“PTO”). There is no evidence that any relevant material was lost
from those files.

Initially, Vincent had full prosecution files for only two of the
twelve patents-in-suit. (Nov. 6, 2007 Order re: Stipulation to
Streamline Presentation of Evidence at Trial (D.I. 1052); RAMTX
144.) The complete contents of those two files were provided to
Rambus for production in the Hitachi litigation before Vincent
“cleaned” those files. (RAMTX 142.) Accordingly, the
“cleaning” of those files did not result in any lost material.

Furthermore, as to the files that were cleaned before copies were


made for discovery (again, none involved patents-in-suit), Vincent
testified that his practice was to retain communications with the
PTO, all prior art and documents concerning conception, reduction
to practice and the invention disclosure form. (Tr. 1367:9-68:3.)
No prior art was discarded. (Tr. 1396:24-97:5.) However,
because Vincent did not handle the filing of the original
application for most of those files, he believes that he never
possessed documents concerning conception and reduction to
practice. (Tr. 1368:4-8.)

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Finally, Vincent maintained files on Rambus matters separate from


the patent files, and those files were never cleaned. (Tr. 1369:19-
70:10; 1372:18-73:3.) Those files, which included discussions
with Rambus executives regarding issues including JEDEC and
equitable estoppel, were provided in full to Rambus attorneys for
production. (Tr. 1371:7-72:17; 1373:4-74:17; RAMTX 143.)

4. Potentially damaging Sean Cunningham Testimony: Cunningham testified that they


or invalidating prior art collected a “large bulk” of prior art references that came from both
(Resp. to Int. 52) Rambus and the patent office. (Tr. 1009:3-17.) Some of the prior
art references had privileged handwritten notes on them from
Rambus attorneys, and those documents were placed on the
privilege log. (Tr. 1009:24-10:13.) Furthermore, Vincent testified
that he never discarded prior art. (Tr. 1396:24-97:5.)

5. Documents related to Richard Crisp’s “JEDEC E-mail Box: MTX 80 (Collection of the
Rambus’s participation at trip reports prepared by Crisp, Rambus’s JEDEC representative,
JEDEC (Resp. to Int. 52) and other e-mails relating to JEDEC, from Oct. 1993 until Rambus
left JEDEC in Dec. 1995); RAMTX 69 (Sep. 1992 – Dec. 1997, a
second, differently-formatted collection of JEDEC-related E-mails
maintained by Crisp).

Handwritten Notes: MTX 42 (Mar. 1992 Vincent conference);


MTX 47 (May 1992 Vincent teleconference); MTX 54 (Sep. 1992
Vincent conference); MTX 94 (Jul. 1994 Tate notes).

E-mails Related to JEDEC; MTX 40 (May 1992 Tate); MTX 93


(Jun. 1994 Tate); MTX 97 (Aug. 1994 Crisp); MTX 133 (Jul. 1995
Crisp); MTX 146 (Sep. 1995 Crisp); MTX 230 (1997 Crisp).

Attorney Billing Records and Related Materials: MTX 65 (Feb.


1993); MTX 77 (Jul. 1993).

Letters and Faxes: MTX 48 (Tate Letter to Davidow, Jun. 1992);


RAMTX 140 (Cunningham Letter to Steinberg, Apr. 2000);
RAMTX 139 (Steinberg Fax to Rogers, Mar. 2000).

Rambus Business Plan: MTX 56 (Sep. 1992).

6. Documents concerning Meeting Minutes: MTX 188 (Mar. 1996); MTX 297 (Mar. 1998);
Rambus Board of MTX 469 (Oct. 1999); MTX 494 (Jan. 2000)
Directors Activities
(Resp. to Int. 52) Presentations: MTX 295 (Mar. 1998 Licensing and Litigation
Strategy); MTX 379 (IP Update 10/14/1998); MTX 468 (IP
Update 10/14/1999); MTX 470 (IP Update 10/14/1999); MTX 491
(IP Update 1/18/2000).

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Letter: MTX 48 (Jun. 1992 Tate Letter to Davidow re: Rambus


business plan).

Sean Cunningham Testimony: Cunningham testified that he


collected Board meeting materials. (Tr. 1010:14-16.)

7. Files From Dr. Lab Notebooks: RAMTX 70 (Dec. 1991); RAMTX 81 (Aug.
Horowitz’s Office (Resp. 1990).
to Int. 51 and Int. 52)
Early Presentation Materials: RAMTX 208 (Sep. 1989); RAMTX
209 (Aug. 1989); RAMTX 210 (Apr. 1990).

Other Material: Dr. Horowitz testified that the clear-acetate sheets


used with the overhead projectors in the actual early investor and
sales presentations were discarded when his cubicle was cleaned
out. (Tr. 1236:14-37:4.) However, Dr. Horowitz further testified
that paper copies of those presentations were maintained and
produced. (Tr. 1237:13-38:2 (referencing RAMTX 208, RAMTX
209 and RAMTX 210).) Furthermore, Dr. Horowitz testified that,
aside from his lab notebooks, the acetate sheets, some data books
and other public information about certain computer chips, he kept
nothing else in his cubicle. (Tr. 1236:2-20; 1239:5-40:5.)

8. Documents Draft Consulting Agreement Between MIPS and Farmwald: MTX


Concerning The 2 (1988).
Invention of Rambus
Technology (Supp. Resp. Farmwald E-mail Regarding SCI/Ramlink: MTX 136 (Sep. 1995).
to Int. 52)
Presentations and Diagrams of RDRAM: RAMTX 208 (Sep.
1989); RAMTX 209 (Aug. 1989); RAMTX 210 (Apr. 1990);
RAMTX 251 (May 1989); RAMTX 252 (Aug. 1989); RAMTX
255 (Apr. 1990 Rambus Interface Specification).

Inventor Notebooks: RAMTX 71 (Oct. 1988 Farmwald); RAMTX


81 (Aug. 1990 Horowitz); RAMTX 70 (Dec. 1991 Horowitz).

Miscellaneous Documents: RAMTX 253 (various dates).

Sean Cunningham Testimony: Cunningham testified that he


“absolutely” collected materials related to the invention of Rambus
technology. (Tr. 1014:18-21.)

9. Intel Negotiation E-mails: MTX 235 (Feb. 1997 Tate); MTX 248 (Jul. 1997 Tate to
Documents (Resp. to Int. Fleming and Roberts); MTX 257 (Aug. 1997 Tate to Mooring and
51 and Int. 52) Fleming); MTX 271 (Dec. 1997 Tate); MTX 282 (Jan. 1998
Karp); MTX 307 (Apr. 1998 Tate); MTX 371 (Sep. 1998 Tate);
RAMTX 239 (Mar. 1996 Tate).

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Patent Application Chart: MTX 961 (Sep. 1996).

Rambus-Intel Letter of Intent: RAMTX 241 (Jun. 1996).

Sean Cunningham Testimony: Cunningham testified that he


collected materials relating to negotiations between Rambus and
Intel (Tr. 1014:22-15:2), and could not recall being unable to find
any negotiations documents (Tr. 1015:16-20).

10. Correspondence E-mails and Letters: MTX 40 (May 1992 Tate E-mail); MTX 48
(Supp. Resp. to Int. 52) (Jun. 1992 Tate Letter to Davidow, et al. re: Rambus Business
Plan); MTX 80 (Oct. 1993-Dec. 1995 Crisp JEDEC E-mail box);
MTX 93 (Jun. 1994 Tate E-mail re: SDRAM); MTX 97 (Aug.
1994 Crisp E-mail); MTX 133 (Jul. 1995 E-mail re: discussion
with Vincent about claims); MTX 136 (Sep. 1995 Farmwald E-
mail re: SCI/Ramlink); MTX 139 (Sep. 1995 Tate E-mail re:
competitive developments); MTX 146 (Sep. 1995 Crisp E-mail re:
patents and SycLink); MTX 183 (Feb. 1996 Tate E-mail to
Diepenbrock re: ISSCC IP issues); MTX 214 (Jun. 1996 Crisp
Letter to McGhee re: JEDEC invoice); MTX 230 (1997 Crisp E-
mail re: JEDEC); MTX 232 (Feb. 1997 Roberts E-mail re:
Samsung/SDRAM-II); MTX 235 (Feb. 1997 Tate E-mail re: DDR
Threat Assessment Meeting); MTX 244 (May 1997 Tate E-mail
re: Joel feedback); MTX 246 (Jun. 1997 Tate E-mail re: no offer to
Karp); MTX 248 (Jul. 1997 Tate E-mail re: DRAM Suppliers and
Rambus); MTX 253 (Aug. 1997 Tate E-mail re: ‘327 patent);
MTX 257 (Aug. 1997 Tate E-mail re: DDR Crush Plan); MTX
263 (Oct. 1997 Tate E-mail re: Karp accepting offer); MTX 271
(Dec. 1997 Tate E-mail re: Intel Exec meeting); MTX 282 (Jan.
1998 Karp E-mail re: Beloit strategy); MTX 299 (Mar. 1998
Roberts E-mail to Lau re: Email back-ups); MTX 300 (Mar. 1998
Savage Memo to Karp re: Document Retention Policy Guidance);
MTX 307 (Apr. 1998 Tate E-mail re: Intel meeting); MTX 314
(May 1998 Karp E-mail re: Backup Strategy/Document Retention
Policy); MTX 329 (Jul. 1998 Saputra E-mail re: Backup Tape
Retention Policy); MTX 331 (Jul. 1998 Gardner E-mail re: Status
Report 7/21); MTX 337 (Jul. 1998 Karp Memo re: Rambus
Document Retention Policy); MTX 353 (Aug. 1998 Larsen E-mail
re: Shredder Day); MTX 355 (Aug. 1998 Larsen E-mail re:
Shredder Day); MTX 364 (Sep. 1998 Larsen E-mail re: Shred Day
1998); MTX 367 (Sep. 1998 Larsen E-mail re: SHRED DAY);
MTX 368 (Sep. 1998 Karp E-mail re: Shred Day); MTX 371 (Sep.
1998 Tate E-mail re: Samsung); MTX 429 (Jun. 1999 Tate E-mail
re: Q3 Goals); MTX 450 (Aug. 1999 Tate E-mail re: Shred Day);
MTX 453 (Aug. 1999 Kaufman E-mail re: Burlap Bags); MTX
464 (Sep. 1999 Tate E-mail re: Strategy Session); MTX 473 (Oct.

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1999 Karp Letter to Hitachi re: Rambus patents); MTX 477 (Oct.
1999 Crisp E-mail re: DDR Datasheet); MTX 534 (Jun. 2000
Steinberg Letter re: Rambus IP); MTX 536 (Jun. 2000 Letter re:
Rambus IP); MTX 541 (Jul. 2000 Steinberg E-mail re: Reminder
of Document Destruction Policy re: Contracts); MTX 544 (Jun.
2000 Tate E-mail re: Intel contract negotiations); MTX 550 (Sep.
2000 Harmon E-mail re: Intel contract negotiations); MTX 551
(Sep. 2000 Harmon E-mail re: Intel Arbitration); MTX 581 (Jan.
2001 Steinberg E-mail re: declassification); MTX 598 (Apr. 2001
Steinberg E-mail re: Infineon Litigation); MTX 763 (Karp E-mail
re: enforcement scenario for 1999); MTX 931 (Dec. 1992 Crisp E-
mail re: JEDEC Notes); MTX 945 (Jan. 1997 Cates E-mails);
MTX 970 (May 1999 Karp E-mail re: DDR); MTX 976 (Apr.
2001 Production Letter re: documents produced pursuant to the
Infineon court's March 7, 2001 order); RAMTX 6 (Oct. 1997 Tate
E-mail re: Karp hiring); RAMTX 8 (Aug. 2000 Appleton E-mail
re: complaint); RAMTX 12 (Nov. 1999 Karp Letter to Hitachi re:
patent license negotiations); RAMTX 13 (Nov. 1999 Hitachi
Letter re: patent license negotiations); RAMTX 68 (Aug. 1996
Tate E-mail re: financial outlook); RAMTX 69 (Collection of E-
mails re: JEDEC); RAMTX 83 (Feb. 1998 Cooley engagement
letter); RAMTX 85 (Collection of E-mails re: JEDEC); RAMTX
139 (Mar. 2000 Steinberg Fax re: Hitachi Litigation, JEDEC
Materials); RAMTX 191 (Aug. 2000 Tate E-mail re: litigation);
RAMTX 231 (Dec. 1999 Mooring E-mail re: Appleton); RAMTX
238 (Jan. 1996 Tate E-mail re: Lenihan meeting); RAMTX 239
(Mar. 1996 Tate E-mail re: Intel LOI proposal); RAMTX 248
(Aug. 1997 Tate E-mail to Appleton re: Bedard response);
RAMTX 249 (Mar. 1990 Morrison Letter re: Micron
Confidentiality Agreement); RAMTX 250A (Vidal E-mail re:
Crisp e-mail re: Micron executive meeting); RAMTX 269 (Mar.
1999 Burtyn Letter to Karp re: reverse engineering report);
RAMTX 270 (Dec. 1998 Collins Letter to Karp re: reverse
engineering report).

11. Macintosh backup Dirk Gardner Testimony: Gardner, who worked in Rambus’s
tapes (Resp. to Int. 51 and information technology department, testified that when Rambus
Int. 52) switched from Apple Macintosh computers to IBM-compatible
PCs, he had the back-up tapes used for the Macintosh computers
destroyed because they contained proprietary information. (2-Hr.
Tr. 17:7-20.) The switch from Macintoshes to PCs, and the
destruction of the Macintosh backup tapes (each of which was kept
for two months and then recycled, even prior to the adoption of
Rambus’s document retention policy), occurred before Rambus
initiated its document retention policy. (2-Hr. Tr. 17:21-18:5;
20:8-22.) At the time of switch, the information on each

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employee’s Macintosh was transferred to the new PC. (2-Hr. Tr.


19:4-8.)

12. Electronic media and Sean Cunningham Testimony: Cunningham testified that he
electronic backup media collected correspondence in electronic form. (Tr. 1014:5-9.)
(Supp. Resp. to Int. 51)
Allen Roberts Testimony: Roberts testified that Rambus created
and preserved its “archive tapes” – “snapshot[s] of the computer
system of all the data” related to a design created whenever
Rambus completed engineering of a product. (Tr. 1153:13-54:14.)

E-mails: MTX 40 (May 1992 Tate E-mail); MTX 80 (Oct. 1993-


Dec. 1995 Crisp JEDEC E-mail box); MTX 93 (Jun. 1994 Tate E-
mail re: SDRAM); MTX 97 (Aug. 1994 Crisp E-mail); MTX 133
(Jul. 1995 E-mail re: discussion with Vincent about claims); MTX
136 (Sep. 1995 Farmwald E-mail re: SCI/Ramlink); MTX 139
(Sep. 1995 Tate E-mail re: competitive developments); MTX 146
(Sep. 1995 Crisp E-mail re: patents and SycLink); MTX 183 (Feb.
1996 Tate E-mail to Diepenbrock re: ISSCC IP issues); MTX 230
(1997 Crisp E-mail re: JEDEC); MTX 232 (Feb. 1997 Roberts E-
mail re: Samsung/SDRAM-II); MTX 235 (Feb. 1997 Tate E-mail
re: DDR Threat Assessment Meeting); MTX 244 (May 1997 Tate
E-mail re: Joel feedback); MTX 246 (Jun. 1997 Tate E-mail re: no
offer to Karp); MTX 248 (Jul. 1997 Tate E-mail re: DRAM
Suppliers and Rambus); MTX 253 (Aug. 1997 Tate E-mail re:
‘327 patent); MTX 257 (Aug. 1997 Tate E-mail re: DDR Crush
Plan); MTX 263 (Oct. 1997 Tate E-mail re: Karp accepting offer);
MTX 271 (Dec. 1997 Tate E-mail re: Intel Exec meeting); MTX
282 (Jan. 1998 Karp E-mail re: Beloit strategy); MTX 299 (Mar.
1998 Roberts E-mail to Lau re: Email back-ups); MTX 307 (Apr.
1998 Tate E-mail re: Intel meeting); MTX 314 (May 1998 Karp E-
mail re: Backup Strategy/Document Retention Policy); MTX 329
(Jul. 1998 Saputra E-mail re: Backup Tape Retention Policy);
MTX 331 (Jul. 1998 Gardner E-mail re: Status Report 7/21); MTX
353 (Aug. 1998 Larsen E-mail re: Shredder Day); MTX 355 (Aug.
1998 Larsen E-mail re: Shredder Day); MTX 364 (Sep. 1998
Larsen E-mail re: Shred Day 1998); MTX 367 (Sep. 1998 Larsen
E-mail re: SHRED DAY); MTX 368 (Sep. 1998 Karp E-mail re:
Shred Day); MTX 371 (Sep. 1998 Tate E-mail re: Samsung);
MTX 429 (Jun. 1999 Tate E-mail re: Q3 Goals); MTX 450 (Aug.
1999 Tate E-mail re: Shred Day); MTX 453 (Aug. 1999 Kaufman
E-mail re: Burlap Bags); MTX 464 (Sep. 1999 Tate E-mail re:
Strategy Session); MTX 477 (Oct. 1999 Crisp E-mail re: DDR
Datasheet); MTX 541 (Jul. 2000 Steinberg E-mail re: Reminder of
Document Destruction Policy re: Contracts); MTX 544 (Jun. 2000
Tate E-mail re: Intel contract negotiations); MTX 550 (Sep. 2000
Harmon E-mail re: Intel contract negotiations); MTX 551 (Sep.

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2000 Harmon E-mail re: Intel Arbitration); MTX 581 (Jan. 2001
Steinberg E-mail re: declassification); MTX 598 (Apr. 2001
Steinberg E-mail re: Infineon Litigation); MTX 763 (Karp E-mail
re: enforcement scenario for 1999); MTX 931 (Dec. 1992 Crisp E-
mail re: JEDEC Notes); MTX 945 (Jan. 1997 (collection of Cates
E-mails)); MTX 970 (May 1999 Karp E-mail re: DDR); RAMTX
6 (Oct. 1997 Tate E-mail re: Karp hiring); RAMTX 8 (Aug. 2000
Appleton E-mail re: complaint); RAMTX 68 (Aug. 1996 Tate E-
mail re: financial outlook); RAMTX 69 (Collection of E-mails re:
JEDEC); RAMTX 85 (Collection of E-mails re: JEDEC);
RAMTX 191 (Aug. 2000 Tate E-mail re: litigation); RAMTX 231
(Dec. 1999 Mooring E-mail re: Appleton); RAMTX 238 (Jan.
1996 Tate E-mail re: Lenihan meeting); RAMTX 239 (Mar. 1996
Tate E-mail re: Intel LOI proposal); RAMTX 248 (Aug. 1997 Tate
E-mail to Appleton re: Bedard response); RAMTX 250A (Vidal E-
mail re: Crisp E-mail re: Micron executive meeting).

3. Evidence that some unspecified materials were destroyed in


and of itself is insufficient to prove unclean hands or spoliation.

Micron cannot compensate for its inability to demonstrate that any specific document or

category of documents was destroyed by simply presenting evidence of the volume of material

that was discarded during Rambus’s “shred days” or the number of documents that might have

been contained on old backup tapes, and then speculating that relevant evidence “must have”

been destroyed. Hynix Semiconductor, 2006 WL 565893, at *27 (stating that Hynix must “prove

more than the mere fact that Rambus destroyed documents, or even a large number of

documents”). Instead, Micron must at least come forward with “plausible, concrete suggestions

as to what [the lost] evidence might have been.” Schmid, 13 F.3d at 80; see also; Rhein-Hawes

v. Vanguard Group, Inc., 2005 WL 3441228, at *3 (E.D. Pa. Dec. 14, 2005) (plaintiff did not

prove loss of relevant evidence where “it is completely unknown whether any other pages of the

spiral notebook [which defendant destroyed] related to” plaintiff); Emerson v. Wetherill, 1994

WL 249769, at *3 (E.D. Pa. June 1, 1994) (noting that, before imposing a sanction, “courts

typically require some showing, by circumstantial evidence or otherwise, of the content of the

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destroyed evidence”).

That is particularly true here, where the testimony concerning what was discarded during

the “shred days” indicates that a great deal of the material was truly trash, such as computer

plotter paper, pizza boxes, old magazines, phone books, and catalogues.6 (Tr. 284:24-85:8;

425:02-08; 530:7-13.) Whether done in a single annual purge or on a monthly, weekly, or daily

basis, companies regularly discard documents, delete electronic data, and recycle backup tapes,

even while embroiled in pending litigation. (Tr. 539:09-21 (expert Montaña stating that

“[t]here’s nothing the least bit wrong about developing a[] document retention policy, even

though litigation is occurring or contemplated”); Tr. 548:17-49:5 (Montaña further explaining

that it is “appropriate” to hold an office clean out day and other “record disposition activties”

while litigation is pending, as long as litigation hold for relevant material is honored)); Zubulake,

220 F.R.D. at 217 (“As a general rule, then, a party need not preserve all backup tapes even

when it reasonably anticipates litigation.”). A litigant cannot obtain dismissal of its adversary’s

claims merely by measuring the volume of trash a company discards or the number of backup

tapes that it recycles.

Because Micron has failed to prove that any material evidence has been destroyed, its

unclean hands defense must fail.

6
Although Rambus did not inventory the discarded material, Rambus’s expert John Montaña
testified that preparing such an inventory is not customary and would be impractical because
companies do not have the time, resources or need to do so. (Tr. 530:21-32:6.) David
Rhoads likewise testified that, in his experience in the shredding industry, he does not create
inventories of what was destroyed, he has never seen a customer create an inventory and he
does not advise customers to do so. (Tr. 1474:17-75:6.)

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III. MICRON HAS FAILED TO PROVE THAT RAMBUS’S ALLEGED


CONDUCT PREJUDICED ITS ABILITY TO DEFEND ITSELF IN THIS
ACTION.

Micron has not proven that Rambus’s alleged conduct prejudiced Micron’s ability to

defend itself against Rambus’s patent infringement claims. To prevail on unclean hands or

spoliation, Micron must establish prejudice or injury. Castle, 676 F. Supp. at 627 (stating

alleged misconduct must “injure[] the other party” and “affect[] the balance of equities between

the litigants”); Mersiant, 515 F. Supp. 2d at 531 (requiring party asserting unclean hands to be

“injured ‘as a result of the misconduct’”); PenneCom, 372 F.3d at 493 (same); Schmid, 13 F.3d

at 79 (considering “the degree of prejudice suffered by the opposing party”).

To demonstrate prejudice or injury, Micron must show both that the allegedly destroyed

evidence would have been helpful to Micron and that the evidence is not available from another

source. See In re Hechinger, 489 F.3d at 579 (no sanction absent showing that destroyed

evidence “would have aided” party claiming spoliation); Joe Hand Promotions v. Sports Page

Cafe, Inc., 940 F. Supp. 102 (D.N.J. 1996) (no prejudice where contents of missing audio tapes

also available from speaker’s notes). Micron has shown neither.

Micron has provided no basis – much less concrete evidence – to conclude that any of the

allegedly lost documents would have supported its defenses to Rambus’s patent infringement

claims in this litigation. Absent such evidence, courts will not impose sanctions. See, e.g., Gates

Rubber Co. v. Bando Chem. Indus. Ltd., 167 F.R.D. 90, 104 (D. Colo. 1996) (obligating moving

party to demonstrate “a reasonable possibility, based upon concrete evidence rather than a fertile

imagination, that access to the [discarded material] would have produced evidence favorable to

his cause”); Emerson, 1994 WL 249769 at *3 (no prejudice where plaintiff presented no basis to

suggest missing files would have aided her claim); Johnson v. Ready Mixed Concrete Co., 424

F.3d 806, 811-12 (8th Cir. 2005) (no prejudice where plaintiff presented no evidence that

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missing photographs would have supported claim); Flowers v. City of Minneapolis, 2007 WL

2893349, at *10 (D. Minn. Sept. 28, 2007) (no sanctions imposed because “there is no basis for

concluding that the contents of the [allegedly spoliated] email would assist [plaintiff] in this

case”); Riddle v. Liz Claiborne, Inc., 2003 WL 21976403, at *2 (S.D.N.Y. Aug. 19, 2003)

(sanctions denied because “plaintiff has offered no evidence whatsoever that the allegedly

spoliated documents would have been helpful to her case”).

Nor has Micron established that the information contained in the allegedly destroyed

evidence could not be obtained from another source. See DaimlerChrysler AG Sec. Litig., 2003

WL 22951696, at *2 (D. Del. Nov. 25, 2003) (no prejudice where information contained in

destroyed documents was available from another source); Getty Props. Corp. v. Raceway

Petroleum, Inc., 2005 WL 1412134, at *3 (D.N.J. June 14, 2005) (prejudice not found where

information in missing daily records also available from monthly records); Stone & Webster, 359

B.R. at 117 (no prejudice where witness testimony established that missing warehouse receipts

were standard forms, copies of which were produced).

The loss of unique evidence bearing critical importance to the opposing party’s case is a

nearly universal feature of cases imposing sanctions for spoliation. For instance, In re Wechsler

concerned the destruction of a boat which constituted the sole means by which the other parties

could demonstrate that the boat was the cause of the fire that damaged their vessels. 121 F.

Supp. 2d 404, 423-34 (D. Del. 2004). Similarly, in Silvestri v. General Motors Corp., the

plaintiff destroyed the car that he alleged contained a defective airbag, which was the “only

evidence from which it could develop its claims adequately.” 271 F.3d 583, 594 (4th Cir. 2001);

see also Walters v. Gen. Motors Corp., 209 F. Supp. 2d 481, 492-93 (W.D. Pa. 2002) (similar

scenario regarding a defective truck). In Howell v. Maytag, the plaintiff failed to preserve the

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fire scene, which was “crucial” to the defendant’s ability to prove that the fire began somewhere

other than the allegedly defective microwave. 168 F.R.D. 502, 507 (M.D. Pa. 1996). And, in In

re Quintus Corp., the accused spoliator destroyed the only records that would have enabled the

bankruptcy trustee to establish the actual amounts owed. 2007 WL 4233665, at *2-3 (D. Del.

Nov. 29, 2007).

Lastly, courts reject severe sanctions, such as dismissal, where the lost evidence, even if

helpful to the movant, does not wholly preclude a claim or defense. See Motown Record Co. v.

DePietro, 2007 WL 1725604, at *1 n.1 (E.D. Pa. June 11, 2007) (despite defendant’s destruction

of computer, dispositive sanction (default judgment) not proper because plaintiff obtained

evidence from other sources sufficient for plaintiff theoretically to carry its burden of proof at

trial); Positran Mfg. Inc. v. Diebold, 2003 WL 21104954, at *4 (D. Del. May 15, 2003) (finding

that plaintiff’s destruction of handwritten notes did not warrant dismissal because the notes were

not “the only evidence available [to defendant] to prove its claims and adequately defend itself”).

Because Micron made no showing that its ability to defend against Rambus’s patent

claims in this action has been prejudiced by the destruction of unique evidence that precludes

Micron from proving a claim or defense, or that would even have simply helped its case,

Micron’s unclean hands defense must fail.

IV. MICRON DID NOT PROVE THAT RAMBUS ACTED IN BAD FAITH.

Micron’s unclean hands defense also fails because there is no evidence that Rambus

acted in bad faith or with fraudulent intent. In the Third Circuit, a party asserting an “unclean

hands” defense “must show fraud, unconscionability, or bad faith.” S & R Corp., 968 F.2d at

377 n.7; Haft v. Dart Group Corp., 841 F. Supp. 549, 577 (D. Del. 1993) (holding that “conduct

must suggest fraud, unconscionability, or bad faith”); Castle, 676 F. Supp. at 627 (“[A]pplication

of [the] unclean hands doctrine is an ‘extreme sanction … [which] requires a [substantial]

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showing of fault, willfulness or bad faith.”) (quoting Pfizer, Inc. v. Int’l Rectifier Corp., 538 F.2d

180, 195 (8th Cir. 1976)). “Bad intent is the essence of the defense” of unclean hands. Wells

Fargo, 685 F.2d at 308. Accordingly, the unclean hands doctrine applies “only if the court is left

with a firm conviction that the defendant acted with a fraudulent intent.” Jarrow Formulas, Inc.

v. Nutrition Now, Inc., 304 F.3d 829, 842 (9th Cir. 2002) (although defendant’s “hands are not as

‘clean as snow,’” court would not apply unclean hands doctrine absent showing of fraudulent

intent).

Accidental, inadvertent, or even grossly negligent destruction of relevant documents is

not unclean hands. S & R Corp., 968 F.2d at 377 n.7 (allegations of negligence would be

insufficient to prevail on unclean hands defense); Universe Tankships, Inc. v. U. S., 388 F. Supp.

276, 286 (E.D. Pa. 1974) (holding that negligence resulting in the destruction of evidence is

insufficient to require the court to draw an adverse inference), aff’d 528 F.2d 73 (3d Cir. 1975);

Dollar Sys., Inc. v. Avcar Leasing Sys., Inc., 890 F.2d 165, 173 (9th Cir. 1989) (gross negligence

does not rise to the level of misconduct necessary to invoke application of the unclean hands

doctrine); Omega Indus, 894 F. Supp. at 1432 (noting “negligence does not invoke application of

the clean hands doctrine”). Unclean hands is applied only in those cases where a party is found

“guilty of truly unconscionable and brazen behavior.” Gidatex, 82 F. Supp. 2d at 131.

Similarly, sanctions for spoliation are available “only when the spoliation or destruction

of evidence was intentional, and indicates fraud and a desire to suppress the truth, and it does not

arise where the destruction was a matter of routine with no fraudulent intent.” Brewer v. Quaker

State Oil Ref. Corp., 72 F.3d 326, 334 (3d Cir. 1995); Schmid, 13 F.3d at 80 (holding that

sanctions were unwarranted where there was no finding that plaintiff intended “to impair the

ability of the potential defendant to defend itself and we do not think the record before the

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district court would support such a finding”); Positran Mfg., 2003 WL 21104954, at *2 (court

can impose sanction of dismissal only “[w]hen this destruction is willful or in bad faith and

intended to prevent the other side from examining the evidence”); Applied Telematics, Inc. v.

Sprint Commc’ns. Co., 1996 WL 33405972, at *2 (E.D. Pa. Sept. 17, 1996) (severe sanction

unwarranted absent an “intent to prevent [] discovery” of subject evidence). Thus, the Third

Circuit in Hechinger, 489 F.3d at 579, held that, although the debtor destroyed potentially

relevant records after filing for bankruptcy in order to reduce the amount of space occupied by

the company, spoliation sanctions were not appropriate because “[t]here is no evidence that

[debtor] intentionally destroyed documents that it knew would be important or useful to

[creditor] in defending against a preference action.”

In DaimlerChrysler, this Court similarly rejected a claim of spoliation where documents

were destroyed because plaintiff’s general counsel failed to instruct an assistant to preserve them,

finding that the general counsel’s failure to instruct “does not evidence any bad faith.” 2003 WL

22951696, at *3. As the Court explained, “[w]hile it may have been a better litigation practice

for [the general counsel] to have instructed [the assistant] to preserve the documents, Defendants

have not persuaded [the court] that [the general counsel] acted intentionally to impair

Defendants’ ability to defend against [Plaintiff’s] claims.” Id.

Accordingly, even if relevant documents were destroyed – and as demonstrated above,

they were not – Micron’s defense will not lie because Micron can point to no evidence that

Rambus adopted or implemented its document retention policy in bad faith with the intent to

destroy documents that might be harmful in this litigation. Quite the contrary, Rambus adopted

its document retention policy in good faith upon the recommendation of outside counsel.

Rambus’s policy was a standard, content-neutral policy – a fact Micron does not and cannot

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dispute. Moreover, there is no credible evidence that Rambus or any of its employees ever

targeted documents for destruction because they might harm Rambus in litigation.

A. Rambus Adopted A Document Retention Policy In Good Faith.

Micron has not shown bad faith. To the contrary, the evidence demonstrates that Rambus

adopted its policy in good faith after both its outside counsel and an information security expert

recommended that it do so. Indeed, it was Rambus’s outside counsel who first suggested that the

company adopt a document retention policy. (Tr. 1494:20-95:12.)

After meeting with Tate in early January 1998 to discuss the development of a licensing

strategy, Karp, who was not a lawyer, had never been in the role of licensor, and had no

experience with starting a licensing program, sought help from outside counsel. (Tr. 282:23-

83:7.) Karp met on February 12, 1998 with three very experienced Cooley Godward attorneys –

John Girvin, who had been a licensing lawyer at IBM for 32 years before joining Cooley, Peter

Leal, who had been at IBM for 25 years, and Dan Johnson, who had been practicing for 25 years

with expertise in litigation, intellectual property, and document retention. (Tr. 1483:15-16;

645:16-18; 1478:18-79:11; 1481:22-82:1.)

Johnson testified that it was his standard practice to ask at the first meeting with a new

client whether they had a document retention policy and, if they did not, to advise them that they

should adopt one. (Tr. 1499:13-19 (“Every time you met with a client, you asked if they had one

[and] if they didn’t, we’d certainly advise them that they should.”).) Consistent with his normal

practice, Johnson asked at his first meeting with Rambus on February 12, 1998, whether Rambus

had a document retention policy and was told that, although the company had been in existence

for eight years, “they had no coherent policy in place for keeping their critical documents.” (Tr.

1494:20-24.) Johnson advised Karp that Rambus “need[ed] to have in place the same type

document retention policy that virtually every company in America has,” and that it “need[ed] to

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go back and go through your files and make sure you get rid of what is effectively a lot of

accumulated material that is going to cost you a fortune to ultimately search if you don’t have a

document retention policy.” (Tr. 1495:5-96:1.)

Karp took his counsel’s advice and followed it in good faith, knowing that he had

informed his attorneys that, among other things: (1) he had been instructed to develop a full

licensing strategy, including a litigation plan should negotiations fail; and (2) that this strategy

was to be presented to the Rambus Board in March 1998 as a possible backup plan in the event

Rambus’s primary strategy – launching RDRAM – faltered. (MTX 285, MTX 287.) He had

also communicated to counsel Rambus’s belief that, if it chose to seek royalties for infringing

products, it planned to negotiate for royalty rates higher than the RDRAM royalty rate. (Id.) In

fact, Cooley attorney Peter Leal’s notes from January 1998 – MTX 285 and MTX 287 – show

that, before the topic of document retention was first raised by attorney Johnson, Karp told the

Cooley lawyers the following with respect to the backup licensing plan he was to formulate:

• Rambus believed that the DRAM manufacturers were about to enter the market with
products that used Rambus technology. (MTX 285-1 “Others now about to enter outside
the field (i.e., SLD, DDR).”)

• Karp suspected that two Rambus patents might be infringed, but he needed more
information to be sure. (MTX 287-1 “The two key patents are ‘481 (clear infringement if
licensee uses DLL); ‘327 (strong suspicion of infringement but need hardware to be
sure).”; id. at 3 “Joel has drafted claim charts as to one of the patents against Samsung
DLL and SLD Ram.”)

• Rambus intended to seek a royalty rate higher than the RDRAM royalty rate. (MTX 285-
1 “Looking for royalty rate that tells them it costs to infringe.”)

• Rambus wanted a full licensing plan, including a litigation contingency plan should
negotiations fail. (MTX 285-1 “No negotiations w/o full strategy and prep.”; MTX 287-1
“No negotiations without a full strategy and full meeting preparation.”)

• Rambus wanted to be ready in advance to move quickly to litigation if necessary. (MTX


285-2 “Go to first meeting but be ready (in advance) to go to litigation.”; MTX 287-1
“We want to go in and quickly proceed to either a license or litigation.”)

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• Karp wanted to consider and plan in advance for all contingencies. (MTX 287-3 “All
must be carefully choreographed – what if this?, what if that?, etc.”; id. at 4 “How do we
handle the middle ground meeting? The “Pound Sand” meeting is easy – litigate. How
do you handle the “Middle Ground”, delaying meeting?”)

• Karp wanted a licensing and litigation strategy by the March board meeting (MTX 285-2
“Want litigation strategy by March board meeting. Six (6) weeks from now.”)

During the February 12, 1998 meeting, Karp again discussed these issues with his outside

counsel. Karp shared with the Cooley attorneys a draft document he had been working on for the

backup licensing plan and they discussed possible royalty rates and the risk that an unrealistic

rate might cause Rambus to “have a lawsuit on [its] hands.” (Tr. 1492:15-19; MTX 290

“Reviewed license program document. Minor changes. Royalty rates will probably push into

litigation quickly.”) The Cooley lawyers discussed with Karp at this meeting that initiating a

licensing program always brings with it the risk that Rambus may “[n]eed to litigate against

someone to establish royalty rate and have court declare patent valid.” (MTX 290.) As Johnson

explained:

most of the time with startups, they don’t understand that just
because you have got a licensing program doesn’t mean anybody is
going to pay you for it. And I told them that they needed to
understand that once they started sending out letters, that the day
may come when they would be forced to litigate. And they needed
to appreciate that fact going in as opposed to being surprised later.

(Tr. 1502:8-19.)

Having counseled Rambus to make itself “battle ready” and after undertaking to review

several of Rambus’s license agreements “and formulate litigation strategy driven by results of

the analysis – breach – scope of license, NDA or patent infringement,”7 the Cooley lawyers at

7
Shortly after this meeting, on February 23, 1998, Girvin provided Rambus MTX 293, a
“proposed licensing and litigation strategy.” (Tr. 443:14-16.) Karp used Girvin’s
memorandum to create his March 1998 board presentation, a draft of which he provided
Johnson. (RAMTX 111; Tr. 445:10-46:1.)

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the same time advised Rambus to implement a document retention policy to reduce search costs

in the event that Rambus was someday required to respond to a subpoena or document request

and to avoid a possible claim of spoliation. (MTX 290; Tr. 208:19-09:1; 1496:1-7; 1497:15-

98:2.) They gave this advice based on decades of experience, and Rambus followed it in good

faith, knowing that it had fully disclosed the relevant facts to the Cooley lawyers.

Rambus received similar advice from Alan Brill of Kroll Associates, a specialist in

information and computer security. Brill conducted an on-site security review of Rambus in

early April 1998 and observed that “there was paper everywhere.” (Tr. 1436:12-13.) Because

this raised security concerns, particularly because employees of other companies, including the

DRAM manufacturers, had access to Rambus’s offices, Brill recommended that Rambus work

with counsel to adopt a document retention policy. (Tr. 1437:20-39:2; 1440:12-42:19; RAMTX

99 at 26.)

In sum, the record demonstrates that Rambus was told by well-respected outside counsel

with knowledge of all pertinent facts, as well as an independent security consultant, that it should

adopt a document retention policy because such policies represented sound corporate practice

and would engender cost savings and efficiencies. There is absolutely no evidence that Rambus

was advised to adopt a document retention policy to aid itself, or to impair others, in litigation.

Thus, the record reveals not only the utter absence of a bad faith motive to adopt the policy, but

several good faith reasons to do so. Micron has not met its burden.

B. Rambus’s Policy Was A Standard, Content-Neutral Document


Retention Policy.

There also is nothing about the content of Rambus’s document retention policy that

indicates that it was adopted in bad faith or for an improper purpose. Rambus’s document

retention policy was a standard, run-of-the-mill policy that was based on a detailed memorandum

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provided to Rambus by Cooley Godward attorney Diane Savage on March 19, 1998 (MTX 300).

A comparison of Rambus’s policy (MTX 337) and this memorandum confirms Karp’s testimony

that most of the Rambus policy “came directly from the Savage memo in a cut and paste

fashion.” (Tr. 416:10-12.) In fact, the only major difference between the Rambus policy and the

Cooley memorandum was that, in his presentation to Rambus employees, Karp admonished them

to “LOOK FOR THINGS TO KEEP” and to “LOOK FOR REASONS TO KEEP IT.”8 (MTX

343.)

Rambus’s policy contained no instructions to discard documents relating to specific

companies, nor to distinguish among documents on the basis of their content as opposed to the

general subject matter to which they pertained. Records retention expert Montaña testified that

the categories established by Rambus’s policy were content-neutral and consistent with industry

standards. (Tr. 510:22-11:6; 551:4-9.) Micron offered no expert testimony, or any other

evidence, to the contrary. Accordingly, the only record evidence addressing the terms of

Rambus’s document retention policy establishes that they were content-neutral and consistent

with industry standards – both hallmarks of a policy adopted in good faith.

C. There Is No Evidence That Rambus Implemented Its Document


Retention Policy In Bad Faith.

Micron has presented no evidence that Rambus or any of its employees ever targeted

documents for destruction because they might harm Rambus in litigation. Micron makes much

8
Johnson testified that when he reviewed Karp’s slides and “saw his expression ‘look for
things to keep,’ I told him I thought he was crazy. I said you’re telling people to go out and
figure out things to keep without regard for the fact that they’re going to keep all sorts of
junk and you’re going to end up having a much less effective program than you would
otherwise have.” (Tr. 1539:11-18.) Karp, however, refused to take this language out
because he “didn’t want people making decisions about what was important and what wasn’t
important. I wanted them to – if they had any question about it, I wanted them to keep it.”
(Tr. 422:11-16.)

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of the presentations by Johnson and Karp that informed Rambus employees email may be

discoverable in future litigation, but that is hardly evidence of bad faith. No competent evidence

supports Micron’s argument in this regard – it is fashioned from statements in documents

stripped from their context and then distorted through attorney argument. Once the proper

context is supplied and testimony from the relevant witnesses considered, Micron’s position

withers.9

Rambus employees were told e-mail is discoverable because the March 19, 1998

memorandum from the Cooley firm specifically advised Rambus that “[e]mployees must be

informed that email is subject to discovery in the event of a lawsuit, and, accordingly, should be

drafted with the same care that one would use to draft a Company document.” (MTX 300 at 7.)

The Cooley lawyers also counseled Rambus that “the Company and individual employees should

be discouraged from archiving email” and that Rambus should “remove email from the system

servers on a periodic basis.” Id. Johnson, then with Fenwick & West, also addressed these

issues when he gave a presentation to Rambus’s managers about the need for a document

retention policy on July 22, 1998. Johnson’s presentation identified “email messages” and other

electronic media as “Discoverable Documents.” (MTX 333 at 4.) Johnson advised Rambus to

identify email specifically because “most clients, particularly in 1998, did not understand that e-

mail was discoverable.” (Tr. 1581:19-23.) Johnson also warned Rambus that “deleted” email

can be recovered and offered real-life “horror stories” to illustrate his point that “special care

must be taken with e-mail.” (MTX 333 at 4-5.) And, contrary to Micron’s insinuation that

Johnson’s presentation encouraged the destruction of e-mail, he in fact told Rambus that “special

9
This highlights the sound reasons behind the Court’s preference that all documents be
admitted through a sponsoring witness.

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care” was needed when creating e-mail (id.), which was consistent with the Cooley

memorandum.

Montaña explained that advising clients to inform employees that email is discoverable

was standard advice, “particularly in 1998, [because] a lot of people had a notion … that things

like e-mail were not discoverable and it was necessary to disabuse them of that, and the reason

for that is that if you have lots and lots and lots of old e-mail, this is a standard problem in our

business, going through it for purposes of litigation discovery is an extraordinarily burdensome

and painful and prolonged and difficult process.”10 (Tr. 518:6-19:10.)

Karp followed the lawyers’ instruction in his presentations to Rambus employees, and

informed them that “email is discoverable in litigation or pursuant to a subpoena.” (MTX 343 at

1.) Karp’s slide presentation – which Karp sent to Johnson for his review on at least three

occasions (Tr. 424:7-10) – informed Rambus employees, consistent with the Cooley

memorandum, that email messages should not be archived, but instead “should be deleted as

soon as they are read” (MTX 343 at 1). Evidence that Karp acted in accordance with his

lawyers’ recommendation demonstrates good faith, not bad faith or an improper motive. Further

10
As explained above, there is absolutely no evidence that Rambus implemented its document
retention policy in order to rid itself of “bad” documents in litigation. And even if the Court
were to find that relevant documents – both “good” and “bad” – were discarded pursuant to
the document retention policy, that does not indicate bad faith. See Hynix, 2006 WL 565893,
at *20 (“A legitimate consequence of a document retention policy is that relevant information
may be kept out of the hands of adverse parties”). Going a few steps further, the Supreme
Court even acknowledged that document retention policies are routinely “created in part to
keep certain information from getting into the hands of others, including the Government.”
Arthur Andersen, 544 U.S. at 704. Therefore, “[l]egal experts generally advise that
companies not retain old electronic versions of e-mail, because the company may later be
forced to turn these electronic files over to adversaries during legal proceedings.” Sherry L.
Harowitz, Email’s Packet of Problems: Formulation of an Email Policy, Security
Management, No. 10, Vol. 42, at 47 (Oct. 1998). If those activities are not improper, neither
is Rambus’s conduct, which again was not directed towards denying any party information in
litigation.

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demonstrating good faith, records management expert Montaña testified that Rambus’s policy

regarding e-mail – which called upon Rambus employees to treat e-mails like paper files by

printing out e-mails that needed to be saved and then deleting them – is consistent with industry

standards. (Tr. 513:21-15:9.)

Similarly, Rambus’s destruction of old back-up tapes is not evidence of any nefarious

intent. Here again, Rambus followed in good faith the suggestions contained in Cooley’s March

19, 1998 memorandum, which recommended that “tape back ups of email should be destroyed

on a periodic basis,” and that “[i]f the Company maintains tape back ups of individual

workstations, those back ups should be destroyed on a periodic basis.” (MTX 300 at 7.)

Johnson testified:

We told them that they needed to – they needed to go through and


purge their back-up tapes in as short a period of time as possible.
Because if they kept them too long, they were going to have
problems. And recommended they have a three-month rolling
cycle where they would get rid of back-up tapes every three
months.

(Tr. 1518:24-1519:16; MTX 314.) This advice also comported with industry practice. Montaña

explained that “[b]ackup tapes should only be retained for a relatively short period of time. The

reason for that is that a backup tape is used for disaster recovery or in the case of data corruption

and what you typically need is the latest version of your data.” (Tr. 512:18-13:1.)

The record is similarly devoid of any evidence that Karp acted with fraudulent intent

when he asked outside counsel Lester Vincent to conform Rambus’s patent prosecution files to

reflect the official file. Indeed, on this issue too, Karp acted in accordance with the

recommendations of his attorneys. Johnson had told Karp that Rambus:

needed to follow-up what was very common practice, which was


you’ve got these prosecution files. Usually they’re with your
lawyers. Sometimes you have them. You want to make sure that
the only thing that’s left in your file are going to reflect the official
record. And so we advised all out clients to go through and clean

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out their prosecution files.

(Tr. 1500:16-24; MTX 290 (“Prosecution files: clean out all attorney notes so that file is same as

official file”).) Johnson specifically testified that Karp’s instruction to Vincent was “consistent

with the document retention program.” (Tr. 1579:19-24.)

Rambus’s company-wide housecleaning or “shred days” in September 1998 and August

1999 likewise do not suggest bad faith. Micron offers no evidence that Rambus organized those

events for any purpose other than furthering its document retention policy, which is by no means

improper. As expert Montaña testified, having a periodic housecleaning or shred day is “a very

standard ordinary unexceptional kind of practice.” (Tr. 525:4-18; 529:23-30:1); see also David

O. Stephens and Roderick C. Wallace, Electronic Records Retention: An Introduction, 19,

Chapter 7-Implementation Issues, at 48 (Arma International 1997) (“Setting aside one day a year

for office workers to clean out files, destroy old records, and transfer records to the records

center is popular in some organizations. Management allows people to ‘dress down,’ and

provides a free lunch on purge day. Sometimes awards are given to those persons and

departments that recycle the most paper.”). It is particularly common to hold such an event in

connection with the roll-out of a document retention policy. (Tr. 526:9-13 (“[O]nce you

implement the records retention schedule, it’s often the case that you want to conduct a big initial

purge to sort of start out your record management program on the right foot.”).) David Rhoads,

vice-president of SureShred Security, the mobile onsite document destruction service used by

Rambus, (Tr. 1465:16-21), confirmed that approximately 15 percent of his business is from

companies who use them for a one-time large purge. (Tr. 1462:7-16.) Rhoads, who participated

in “hundreds” of these events (Tr. 1463:6-9), explained that, in his experience, companies

commonly use this service “if a company is just beginning a document retention program, or if

they’re moving or if they run out of space in their storage room.” (Tr. 1462:17-24.)

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Finally, there is no evidence that Rambus or any of its employees ever targeted

documents relating to any particular subject matter for destruction because they might be

potentially harmful in litigation.11 Nor can an intent to destroy such documents be inferred from

the mere fact of destruction, even if the destruction occurred while Rambus had a duty to

preserve. Courts have held that the failure to implement a “litigation hold” – standing alone –

will not give rise to sanctions. As explained in Stone & Webster:

Although the law is clear that “a party who has reason to anticipate
litigation has an affirmative duty to preserve evidence which might
be relevant to the issues in the lawsuit”… the law also requires an
“actual suppression or withholding”… of the evidence in order for
a spoliation inference to apply.

359 B.R. at 117 n.12 (citations omitted). The Stone & Webster court determined that no sanction

was warranted where the destruction of the subject warehouse receipts occurred “in the ordinary

course of business and in accordance with Nordic’s document retention policy – not by any

intentional wrongdoing or malfeasance” and did not prejudice the moving party, even though the

destruction occurred when the proceeding was pending and a request for production had been

made that the moving party asserted covered the subject documents. Id. at 116-17, 117 n.12.12

11
Micron previously has pointed to testimony from Craig Hampel, a Rambus engineer, about
documents concerning patentability and Joel Karp’s retrieval of a document from a backup
tape as alleged evidence of selective implementation of Rambus’s document retention policy.
As explained fully in Rambus’s Opposition Brief (D.I. 1076 at 39-41), neither example
demonstrates selectivity or bad faith. Briefly stated, Hampel’s testimony indicated that
Rambus employees were told not to create e-mails containing third-party statements about
the patentability of Rambus inventions, and there is no evidence that such documents were
ever created, let alone destroyed. And the document Karp retrieved concerned an invention
date – a document Rambus’s policy specifically identified as one that should be retained. In
any event, that document could have been obtained from the most recent backup tape (as
opposed to one that was set to be recycled). There is no evidence of bad faith in either of
these events.
12
Nor could bad faith be inferred from the volume of material disposed of by Rambus. The
record contains no evidence to suggest that Rambus’s disposal practices were different from
(Continued . . .)

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Here, Rambus instituted its document retention policy at the suggestion of counsel who

was fully informed of, and helped to fashion, Rambus’s backup licensing and litigation program.

Indeed, Johnson testified emphatically that, in his opinion, there was “absolutely” nothing

improper about Rambus adopting a document retention policy while it contemplated its licensing

and litigation strategy. (Tr. 1495:13-96:7.) Montaña likewise testified that a document retention

policy can, consistent with industry standards, be devised and instituted while litigation was

contemplated. (Tr. 539:09-21.) Thus, if a duty to preserve is found, after the fact, to have

existed in early 1998,13 that cannot impugn Rambus’s good faith because it acted reasonably at

the time.

As with the decision to adopt the document retention policy and its terms, the record is

devoid of any evidence that Rambus implemented its policy in bad faith with the intent to impair

Micron’s ability to present its case. Accordingly, Micron does not even approach the showing of

“egregious,” exceptional misconduct necessary to justify invoking unclean hands and dismissing

Rambus’s claims.

V. RAMBUS DID NOT ENGAGE IN LITIGATION MISCONDUCT.

To the extent that Micron bases its unclean hands defense on allegations of “litigation

misconduct,” those claims do not justify application of the unclean hands doctrine. Estate of

Spear v. Commissioner, 41 F.3d 103, 112 (3d Cir. 1994) (stating that “dismissals are an extreme

sanction reserved for cases … where there was flagrant bad faith” and “[e]ven with respect to the

(. . . continued)
those of other similarly-situated firms or that the volume of material discarded by Rambus
was unusual, unreasonable, or greater than that of comparable firms. In any event, the
amount of paper is destroyed is irrelevant. What is relevant is whether evidence important to
Micron’s case was destroyed. Micron points to no evidence that that occurred.
13
Rambus demonstrated in its Opposition Brief on the duty to preserve (D.I. 1076) that it did
not anticipate litigation at the time it adopted its document retention policy.

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less extreme sanction of exclusion of evidence … [that still] is an ‘extreme’ sanction, not

normally to be imposed absent a showing of willful deception or ‘flagrant disregard’ of a court

order by the proponent of the evidence”).

Examples of the allegations Micron made in advance of trial include: false deposition

testimony; delayed production of documents; and false statements in briefs. However, at trial,

Micron failed to offer any proof respecting many of its allegations, and provided (at best) limited

evidence respecting others. Because Micron failed to meaningfully pursue many of the

allegations ostensibly underlying its litigation misconduct claim at trial, and because Micron

indisputably bears the burden of proof respecting this issue, Rambus believes that it is

appropriate for Micron to first articulate those litigation misconduct allegations as to which

Micron believes it has offered proof. Rambus will then respond in greater detail to any and all

allegations that Micron intends to pursue.

In any event, there is no merit in any of Micron’s litigation misconduct allegations.

Micron bases many of its misconduct assertions upon so-called “false” deposition testimony. As

a general matter, it bears note that many Rambus witnesses were deposed and testified at trial

multiple times in multiple litigations spanning nearly seven years, respecting issues that occurred

as long as twenty years ago. For example, in this trial alone, Micron offered testimony given by

Geoff Tate, Rambus’s CEO, at thirteen separate depositions or trials, occurring between 2001

and 2006. (Tr. 649:1-20.) Joel Karp testified that he had been deposed six times and testified at

trial twice (not including the current trial). (Tr. 221:19-22:3.) Allen Roberts testified that he had

been deposed four times and testified at two trials. (Tr. 1111:8-13.) And Micron’s counsel

described the testimony offered from Richard Crisp as coming from “a large number of

depositions and trial testimony excerpts that you will hear from a large number of different days

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of testimony from three different proceedings.” (Tr. 748:5-11.) Micron’s claim, which isolates a

handful of snippets of testimony in an effort to “prove” inconsistencies, imposes an unrealistic

expectation of perfection. Given the extraordinary volume of testimony and the substantial

passage of time,14 occasional errors do not and cannot amount to “litigation misconduct,”

particularly where – as here – there is not a shred of evidence that Rambus witnesses

intentionally sought to mislead Micron, or that Micron has ever been prejudiced by an

inadvertent misstatement.

As an example of Micron’s infirm litigation misconduct allegations, Micron points to

deposition testimony in 2001 from the Infineon litigation in which Allen Roberts stated that he

did not know until sometime in 2000 that Rambus had been a member of JEDEC. Micron claims

that this constitutes false testimony and “litigation misconduct.” But the evidence at trial

revealed that Roberts’s testimony remained both consistent and truthful at all times. Roberts has

always testified that he knew Rambus attended JEDEC meetings in the early 1990s, but that he

did not realize Rambus was a JEDEC member until 2000. (See MTX 1015 (1/23/01 Infineon

testimony); RAMTX 315 (4/14/01 Infineon testimony); Tr. 1111:18-12:10; Tr. 1114:6-22.)

There is no evidence to suggest that Roberts testified falsely, and thus no evidence of litigation

misconduct.15

More fundamentally, even if Roberts’s testimony about the timing of his realization

regarding Rambus's JEDEC membership was somehow deemed not truthful, Micron cannot

14
The Court commented at trial that it was “fascinating watching people age before my eyes
from one deposition to the other.” (Tr. 1300:22-24.)
15
On the contrary, notes of a conversation between Lester Vincent, Rambus’s outside patent
counsel, and Roberts in 1992 indicate – consistent with Robert’s testimony – that Roberts
then thought Rambus was “not a member of JEDEC.” (RAMTX 266; see also Tr. 1113:5-
11.)

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remotely establish that it was prejudiced thereby. Estate of Spear, 41 F.3d at 111 (sanction for

litigation misconduct requires showing of prejudice). Micron at all times knew Rambus was a

member of JEDEC because, among other things: (a) other Rambus witnesses testified as such

(e.g., Tr. 805:15-06:3, 808:2-9); (b) Micron itself was a member of JEDEC at the time Rambus

was a member, and the minutes from that time frame identify both Micron and Rambus as

members (e.g., RAMTX 263); and (c) as discussed above, Roberts himself always testified that

Rambus was a member of JEDEC (he simply testified that he first became aware of that fact in

2000, which was prior to his first deposition). Thus, Micron always knew the true state of

affairs. Roberts’s testimony that he himself did not realize until 2000 that Rambus was a JEDEC

member (all the while acknowledging that Rambus was, in fact, a JEDEC member) could not

possibly have misled Micron or otherwise caused it harm.

Finally, virtually all of the purported instances of litigation misconduct occurred in

testimony given or briefs filed in other litigation. The law is clear that, for unclean hands to

apply, the misconduct must bear a direct nexus to the case at bar. New Valley Corp. v. Corp.

Prop. Assocs. 2 and 3, 181 F.3d 517, 525 (3d Cir. 1999) (stating that court “will not refuse relief

to a party merely because it has engaged in misconduct which is unrelated to its claims before

the court”). Micron offers no evidence or explanation, and none can be conceived, as to how any

litigation misconduct occurring in other litigation would prejudice it here. See Bio-Technology

Gen. Corp. v. Genentech, Inc., 80 F.3d 1553, 1565 (Fed. Cir. 1996) (rejecting unclean hands

defense where misconduct “did not occur in the context of the present lawsuit”).

VI. THE EXTREME REMEDY OF DISMISSAL IS INAPPROPRIATE.

As demonstrated above, the extreme remedy sought by Micron (and the only remedy

contemplated by the affirmative defense of unclean hands) – dismissal of Rambus’s patent

infringement claims – is completely unwarranted. Nor is a lesser sanction justified.

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First, Micron failed to disclose during discovery that it sought sanctions other than

dismissal. (Micron response to Rambus’s Interrogatory No. 69 (identifying dismissal and an

injunction permanently barring Rambus from enforcing its patents as the only relief sought)

(attached hereto as Exhibit E).) Rambus was thus denied the opportunity to develop through

discovery and prior to trial an effective response to a lesser sanction, if sought. Accordingly,

Micron is estopped from seeking any other form of relief. See, e.g., Martinez v. Bally’s La., Inc.,

244 F.3d 474, 477 (5th Cir. 2001); Thorn EMI N. Am., Inc. v. Intel Corp., 936 F. Supp. 1186,

1191 (D. Del. 1996); Design Strategies, Inc. v. Davis, 367 F. Supp. 2d 630, 633-34 (S.D.N.Y.

2005).

Nevertheless, for the first time in the Proposed Pre-Trial Order, Micron raised the

possibility that it might seek lesser sanctions, such as an adverse inference, although it still did

not identify the subject matter of the sanction or the alleged misconduct to which it relates. That

non-specific statement was too little, too late, and Micron should not be permitted to pursue now,

after trial, a sanction never properly identified in discovery or the Pre-Trial Order. Moreover, the

record makes clear that any lesser sanction would be unwarranted. A “spoliation” or “adverse”

inference instruction generally permits the trier of fact to assume that any missing evidence

would have been unfavorable to the party accused of spoliation.16 An adverse inference

sanction, like a dismissal sanction, requires Micron to establish prejudice and bad faith. E.g.,

Brewer 72 F.3d at 334. Accordingly, because Micron cannot identify any relevant evidence that

was destroyed or demonstrate that Rambus acted in bad faith, no adverse inference is warranted.

16
Other sanctions, such as precluding Rambus from presenting evidence on an issue, have been
characterized as severe sanctions like dismissal (MOSAID Techs. Inc. v. Samsung Elecs. Co.,
348 F. Supp. 2d 332, 338 n.11 (D.N.J. 2004)), and therefore are not appropriate for the same
reasons explained above with respect to dismissal.

- 42 -
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 119 of 163

Furthermore, the record before the Court reveals that the logical underpinning of an

adverse inference – the assumption that a party that did not preserve the evidence because it

would have been harmful in litigation (Schmid, 13 F.3d at 78) – does not exist here. Not only is

there no evidence that fear of the impact of documents in litigation motivated Rambus to adopt

its document retention policy, the record makes clear that Rambus instituted its document

retention policy because it was advised to do so by outside counsel and a security consultant in

order to bring Rambus in line with other companies that had adopted what had become, even at

that time, common and accepted corporate practice. Thus, the record undercuts the very

assumption underlying an adverse inference, rendering it unwarranted. See, e.g., Coates v.

Johnson & Johnson, 756 F.2d 524, 551 (7th Cir. 1985) (where party acted pursuant to routine

policy after consultation with proper personnel, and thus not in bad faith, destruction of

documents did not support adverse inference).

Finally, Micron’s inability to identify the absence of any relevant evidence poses a

practical problem for issuing an adverse inference sanction. Where the relevant evidence is

identified, a court can fashion an appropriate instruction to the jury explaining, for instance, that

it could find that a missing financial report would evidence a financial condition unfavorable to

the party that destroyed it. But here, Micron cannot identify any missing relevant evidence. Any

adverse inference would therefore be wholly speculative and unworkable, and thus wholly

improper.17

17
For the same reason, there is no basis to impose a sanction that would preclude Rambus from
presenting evidence on a topic.

- 43 -
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 120 of 163

CONCLUSION

For the reasons stated herein, Micron’s unclean hands defense fails, and there is no

justification for dismissal of Rambus’s claims, nor any other sanction.

MORRIS, NICHOLS, ARSHT & TUNNELL LLP


OF COUNSEL:
/s/ James W. Parrett, Jr.
Gregory P. Stone
MUNGER, TOLLES & OLSON LLP Mary B. Graham (#2256)
355 South Grand Avenue Rodger D. Smith, II (#3778)
35th Floor James W. Parrett, Jr. (#4292)
Los Angeles, CA 90071 1201 N. Market Street
213.683.9100 P.O. Box 1347
Wilmington, DE 19899-1347
Charles W. Douglas mgraham@mnat.com
Thomas K. Cauley, Jr. rsmith@mnat.com
Brian A. McAleenan jparrett@mnat.com
SIDLEY AUSTIN LLP 302.658.9200
One South Dearborn Street
Chicago, Illinois 60603 Rollin A. Ransom
312.853.7000 Michelle B. Goodman
SIDLEY AUSTIN LLP
555 West Fifth Street
Los Angeles, California 90013
213.896.6600

Attorneys for Rambus Inc.

Dated: June 30, 2008


2385366

- 44 -
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 121 of 163

EXHIBIT F
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 122 of 163

IN THE UNITED STATES DISTRICT COURT


FOR THE DISTRICT OF DELAWARE

MICRON TECHNOLOGY, INC., )


)
Plaintiff, )
v. )
)
RAMBUS INC., )
)
Defendant. )
)
) C.A. No. 00-792 (SLR)
RAMBUS INC., )
)
Counterclaim Plaintiff, )
v. )
)
MICRON TECHNOLOGY, INC., MICRON )
ELECTRONICS, INC., and MICRON )
SEMICONDUCTOR PRODUCTS, INC., )
)
Counterclaim Defendants. )
RAMBUS INC.’S POST-TRIAL BRIEF IN RESPONSE TO MICRON’S BRIEF
REGARDING RAMBUS’S ALLEGED LITIGATION MISCONDUCT AND SANCTIONS

MORRIS, NICHOLS, ARSHT & TUNNELL LLP


Mary B. Graham (#2256)
OF COUNSEL: Rodger D. Smith, II (#3778)
James W. Parrett, Jr. (#4292)
Gregory P. Stone 1201 N. Market Street
MUNGER, TOLLES & OLSON LLP P.O. Box 1347
355 South Grand Avenue Wilmington, DE 19899-1347
35th Floor 302.658.9200
Los Angeles, California 90071 jparrett@mnat.com
213.683.9100
Rollin A. Ransom
Charles W. Douglas Michelle B. Goodman
Thomas K. Cauley, Jr. SIDLEY AUSTIN LLP
Brian A. McAleenan 555 West Fifth Street
SIDLEY AUSTIN LLP Los Angeles, California 90013
One South Dearborn Street 213.896.6600
Chicago, Illinois 60603
312.853.7000 Attorneys for Rambus Inc.

Dated: August 4, 2008


Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 123 of 163

TABLE OF CONTENTS
Page

TABLE OF AUTHORITIES ........................................................................................................ .iii

I. MICRON HAS NOT PROVEN THAT RAMBUS SPOLIATED


EVIDENCE..........................................................................................................................1

II. MICRON HAS NOT PROVEN THAT ITS SPOLIATION


ALLEGATIONS WARRANT THE EXTREME REMEDY OF
DISMISSAL. .......................................................................................................................2

A. Rambus Did Not Act In Bad Faith...........................................................................3

1. The Document Retention Policy Was Adopted In Good


Faith. ............................................................................................................5

2. Rambus’s Goal Was Not To Eliminate Relevant


Documents. ..................................................................................................5

3. Karp’s Instruction To Vincent Is Not Evidence Of Bad


Faith. ............................................................................................................7

4. The Policy And Its Implementation Were Content-Neutral. .......................7

5. Steinberg’s E-Mails Are Not Evidence Of Bad Faith..................................9

B. Rambus’s Alleged Conduct Did Not Prejudice Micron. .......................................10

1. Patent Files.................................................................................................13

2. E-Mails And Backup Tapes .......................................................................16

3. Contract And Licensing Negotiation Documents ......................................18

4. JEDEC Documents ....................................................................................20

5. Documents Belonging To Horowitz ..........................................................21

6. General Business Documents ....................................................................22

C. Micron Has Not Shown That Lesser Sanctions Would Be


Inadequate. .............................................................................................................23

III. MICRON’S CLAIMS OF LITIGATION MISCONDUCT ARE


BASELESS ........................................................................................................................24

A. Micron’s Specific Claims Of Litigation Misconduct Lack Merit..........................25

i
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 124 of 163

1. Micron’s Attack on Rambus 30(b)(6) Testimony Has No


Merit...........................................................................................................25

2. Micron’s “Board Presentation” Claim Has No Merit. ...............................26

3. Micron’s Document Production Complaints Have No


Merit...........................................................................................................27

4. Micron’s Attack on Rambus’s Briefs Has No Merit. ................................28

5. Micron’s Claims Concerning JEDEC Have No Merit...............................28

B. Micron Has Not Demonstrated Bad Faith. ............................................................31

C. Micron Has Not Demonstrated Prejudice. .............................................................32

D. The Remaining Poulis Factors Do Not Support Dismissal. ..................................33

CONCLUSION..............................................................................................................................34

ii
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 125 of 163

TABLE OF AUTHORITIES
Page

CASES

Adams v. Trustees of New Jersey Brewery Employees’ Pension Trust Fund,


29 F.3d 863 (3d Cir. 1994)...................................................................................... xxxii, 32, 34

Anderson v. Cryovac, Inc.,


862 F.2d 910 (1st Cir. 1988)....................................................................................................11

Baliotis v. McNeil,
870 F. Supp. 1285 (M.D. Pa. 1994) .....................................................................................2, 23

Bensen v. Am. Ultramar Ltd.,


1996 WL 422262 (S.D.N.Y. July 29, 1996) ............................................................................29

Bowers v. NCAA,
2008 WL 2645684 (D.N.J., June 27, 2008) .......................................................................24, 33

Bowman v. Am. Med. Sys., Inc.,


1998 WL 721079 (E.D. Pa. Oct. 9, 1998)..................................................................................4

Brewer v. Quaker State Oil Ref. Corp.,


72 F.3d 326 (3d Cir. 1995).........................................................................................................3

Castle v. Cohen,
676 F. Supp. 620 (E.D. Pa. 1987), aff’d in part and remanded on other grounds, 840 F.2d
173 (3d Cir. 1988)....................................................................................................................33

Derzack v. County of Allegheney, Pa.,


173 F.R.D. 400 (W.D. Pa. 1996) .............................................................................................32

Falko-Gunter Falkner v. Inglis,


448 F.3d 1357 (Fed. Cir. 2006)................................................................................................16

Gates Rubber Co. v. Bando Chem. Indus.,


167 F.R.D. 90 (D. Colo. 1996) ................................................................................2, 10, 12, 23

Hynix Semiconductor Inc. v. Rambus Inc.,


2006 WL 565893 (N.D. Cal. Jan. 5, 2006) ..............................................................1, 17, 21, 25

In re Agribiotech, Inc.,
2005 U.S. Dist. LEXIS 6467 (D. Nev. Jan. 4, 2005).........................................................21, 29

In re DaimlerChrysler AG Securities Litig.,


2003 WL 22951696 (D. Del. Nov. 25, 2003) ................................................................4, 12, 19

iii
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 126 of 163

In re Fine Paper Antitrust Litig.,


751 F.2d 562 (3d Cir. 1984).....................................................................................................17

In re Hechinger,
489 F.3d 568 (3d Cir. 2007).....................................................................................................12

In re Wechsler,
121 F. Supp. 2d .......................................................................................................... 3-4, 11, 23

KSR Int’l Co. v. Teleflex Inc.,


127 S. Ct. 1727 (2007).............................................................................................................16

Mahurkar v. C.R. Bard, Inc.,


79 F.3d 1572 (Fed. Cir. 1996)..................................................................................................18

Nat’l Hockey League v. Metropolitan Hockey Club, Inc.,


427 U.S. 639 (1976).................................................................................................................31

Poulis v. State Farm Fire & Cas. Co.,


747 F.2d 863 (3d Cir. 1984)................................................................................... 24, 31, 33-34

Qantum Commc’ns Corp. v. Star Broadcasting, Inc.,


473 F. Supp. 2d 1249 (S.D. Fla. 2007) ........................................................................ 31-32, 34

Rambus Inc. v. Infineon Techs., AG,


318 F.3d 1081 (Fed. Cir. 2003).............................................................................. 21, 28-29, 31

S&R Corp. v. Jiffy Lube Int’l, Inc.,


968 F.2d 371 (3d Cir. 1992).......................................................................................................3

Schmid v. Milwaukee Elec. Tool Corp.,


13 F.3d 76 (3d Cir. 1994) ................................................................................................ Passim

Silvestri v. Gen. Motors,


271 F.3d 583 (4th Cir. 2001) .....................................................................................................4

Trask-Morton v. Motel 6 Operating L.P.,


2008 WL 2764724 (7th Cir. 2008) ............................................................................................4

Vargas v. Peltz,
901 F. Supp. 1572 (S.D. Fla. 1995) .........................................................................................32

Walters v. Gen. Motors Corp.,


209 F. Supp. 2d 481 (W.D. Pa. 2002)........................................................................................4

Wilson v. Volkswagen of Am.,


561 F.2d 494 (4th Cir. 1977) ...................................................................................................23

iv
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 127 of 163

Zubulake v. UBS Warburg LLC,


220 F.R.D. 212 (S.D.N.Y. 2003) ...............................................................................................1

RULES

Fed. R. Evid. 803(6).......................................................................................................................17

Fed. R. Civ. P. 30(b)(6)..................................................................................................................25

Fed. R. Civ. P. 60(b)(3)..................................................................................................................11

v
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 128 of 163

Micron’s Post-Trial Brief Regarding Rambus’s Litigation Misconduct And The Proper

Sanction For Rambus’s Spoliation (“Micron Br.”) misstates the applicable law and either

mischaracterizes or ignores the relevant evidence. Because Micron has not sustained its burden,

its affirmative defense of unclean hands should be rejected.

ARGUMENT

I. MICRON HAS NOT PROVEN THAT RAMBUS SPOLIATED EVIDENCE.

Micron’s brief is most notable for what it lacks – any discussion of, much less attempt to

satisfy, the elements of its affirmative defense of unclean hands based on spoliation. Instead,

Micron argues that this Court should skip straight to the question of an appropriate sanction,

contending that it satisfied its burden of proof by showing nothing more than that documents and

data were destroyed at a time when Rambus allegedly anticipated litigation. Thus, Micron

contends that if the Court finds that Rambus anticipated litigation in early 1998, Micron has

proven spoliation and unclean hands simply by presenting evidence of the volume of materials

Rambus destroyed after that date. See Micron Br. at 5. Micron is incorrect.

Before the question of an appropriate sanction ever arises, Micron bears the burden of

proving by clear and convincing evidence that spoliation occurred. As explained in the Post-

Trial Brief of Rambus Inc. On Micron’s Unclean Hands Defense (“Rambus Br.”), unclean hands

or spoliation cannot be proven merely by showing that documents, even a large number of

documents, were discarded at a time when Rambus anticipated litigation. Hynix Semiconductor

Inc. v. Rambus Inc., 2006 WL 565893, at *27 (N.D. Cal. Jan. 5, 2006) (stating that Hynix must

“prove more than the mere fact that Rambus destroyed documents, or even a large number of

documents”). Whether done in a single annual purge or on a periodic basis, companies regularly

discard documents, delete electronic data, and recycle backup tapes, even while embroiled in

litigation, and there is nothing improper about doing so. Zubulake v. UBS Warburg LLC, 220

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Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 129 of 163

F.R.D. 212, 217 (S.D.N.Y. 2003) (“Must a corporation, upon recognizing the threat of litigation,

preserve every shred of paper, every e-mail or electronic document, and every backup tape? The

answer is clearly ‘no.’ Such a rule would cripple large corporations.”).

Therefore, the case law requires Micron to do more than cite to the volume of material

discarded during Rambus’s “shred days” or the number of backup tapes that were destroyed. To

establish unclean hands or spoliation, Micron must first prove by clear and convincing evidence

that Rambus destroyed non-duplicative documents relevant to the claims in this action. Because

Micron has not done so, it has not proven unclean hands or spoliation and there is no reason for

the Court to even consider the issue of an appropriate sanction. See Rambus Br. at 5-22.

II. MICRON HAS NOT PROVEN THAT ITS SPOLIATION ALLEGATIONS


WARRANT THE EXTREME REMEDY OF DISMISSAL.

Even if Micron had carried its burden of proving that unique, relevant documents were

destroyed, it has not established that the extreme sanction of dismissal is warranted. Dismissal

may be granted only where the conduct was in such bad faith and the prejudice so severe that

any lesser sanction would be inappropriate. Schmid v. Milwaukee Elec. Tool Corp., 13 F.3d 76,

79 (3d Cir. 1994) (“courts select the least onerous sanction corresponding to the willfulness of

the destructive act and the prejudice suffered by the victim”); Baliotis v. McNeil, 870 F. Supp.

1285, 1292 (M.D. Pa. 1994) (“where there is no bad faith on the part of the spoliating party and

the prejudice is not severe, a sanction of … entry of judgment is unwarranted.”). As one court

observed, “[t]here are no cases in this area which fail to observe that dismissals and default

judgments are extreme sanctions appropriate only in cases of willful misconduct and should be

confined to flagrant cases where failure to produce evidence materially affects the substantial

rights of the adverse party and is prejudicial to the presentation of his case.” Gates Rubber Co.

v. Bando Chem. Indus., 167 F.R.D. 90, 106 (D. Colo. 1996) (internal quotes omitted).

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Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 130 of 163

As shown below, Micron has demonstrated neither the extreme bad faith nor severe

prejudice necessary to warrant dismissal. Nor has Micron demonstrated, as it must, that any

lesser sanction would be inadequate. Instead, Micron’s brief misstates the law – asserting that it

need not prove bad faith or severe prejudice – and mischaracterizes the evidence in the record.

A. Rambus Did Not Act In Bad Faith.

Despite the myriad cases holding that a party asserting unclean hands “must show fraud,

unconscionability, or bad faith,” S&R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 377 n.7 (3d

Cir. 1992), and that sanctions for spoliation are available “only when the spoliation or

destruction of evidence was intentional, and indicates fraud and a desire to suppress the truth,”

Brewer v. Quaker State Oil Ref. Corp., 72 F.3d 326, 334 (3d Cir. 1995) (internal quotes omitted),

see Rambus Br. at 25-27, Micron argues that it need not demonstrate bad faith. Instead, Micron

claims that it need only show that “Rambus was at fault and responsible for the spoliation,” and

contends that if “a party fails to ensure the preservation of relevant evidence at a time when

litigation is anticipated[, that] is enough to demonstrate that it is at fault.” Micron Br. at 6.

But the cases Micron cites lend no support to this argument. In fact, In re Wechsler, upon

which Micron relies, held just the opposite – that dismissal is warranted only if the destruction of

evidence was in bad faith. 121 F. Supp. 2d 404, 415 (D. Del. 2000) (“the court may impose the

most severe sanction of them all-the outright dismissal of a claim or the entry of a default

judgment” only “[w]hen this destruction is willful or in bad faith and intended to prevent the

other side from examining the evidence”). And it was only after concluding that the evidence in

that case was destroyed in bad faith in an attempt to impair the ability of other parties to defend

themselves in litigation that the Court affirmed the sanction of dismissal. Id. at 428. Similarly,

the court in Paramount Pictures Corp. v. Davis recognized that “[w]hen determining the degree

of fault and personal responsibility attributable to the party that destroyed the evidence, the court

-3-
Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 131 of 163

must consider whether that party intended to impair the ability of the other side to effectively

litigate its case.” 234 F.R.D. 102, 111 (E.D. Pa. 2005) (sanction of judgment unwarranted even

though defendant intentionally wiped his computer's hard drive clean after learning of lawsuit).

The remaining cases upon which Micron relies are inapposite because they involve

claims of defective products brought by plaintiffs who destroyed the product before allowing the

defendant to inspect it. In those narrow circumstances, courts have dismissed claims because

“the prejudice to the defendant is extraordinary, denying it the ability to adequately defend its

case.” Silvestri v. Gen. Motors, 271 F.3d 583, 593 (4th Cir. 2001) (dismissing product liability

claim where plaintiff destroyed car before defendant inspected it); see also Bowman v. Am. Med.

Sys., Inc., 1998 WL 721079, at *1 (E.D. Pa. Oct. 9, 1998) (dismissing product liability claim

where allegedly defective prosthesis was destroyed before defendant tested it); Walters v. Gen.

Motors Corp., 209 F. Supp. 2d 481, 491 (W.D. Pa. 2002) (dismissing product liability claim

where plaintiff failed to preserve the allegedly defective vehicle). Because this is not a case in

which the essential item of evidence – e.g., the allegedly defective product – has been destroyed,

the exception recognized in those cases is plainly not applicable here. See In re DaimlerChrysler

AG Securities Litig., 2003 WL 22951696, at *3 (D. Del. Nov. 25, 2003) (distinguishing

Wechsler, Bowman, and Walters because they “involve the destruction of key pieces of evidence,

without which the defendants could not establish a defense or refute the plaintiff’s allegations”).

Micron has not established that Rambus intentionally destroyed documents to hide

harmful information, and therefore has not met its burden. See Trask-Morton v. Motel 6

Operating L.P., 2008 WL 2764724, at *8 (7th Cir. 2008) (“That the documents were destroyed

intentionally no one can doubt, but ‘bad faith’ means destruction for the purpose of hiding

adverse information.”) (emphasis in original). To the contrary, the evidence shows that Rambus

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Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 132 of 163

adopted a content-neutral document retention policy in good faith after being told by well-

respected counsel with knowledge of all pertinent facts that it was good corporate policy, and

that Rambus followed in good faith its counsel’s recommendations. See Rambus Br. at 28-38.

1. The Document Retention Policy Was Adopted In Good Faith.

The fact that document retention was first discussed at the same time as a potential

licensing strategy is not evidence of bad faith. Document retention was discussed at that time

because Rambus’s outside counsel, Dan Johnson, an experienced and well-respected attorney at

Cooley Godward, affirmatively raised the issue at his first meeting with Rambus. (Tr. 1494:20-

95:12.) During that February 12, 1998 meeting, Johnson advised Rambus both to make itself

“battle ready” and to adopt a document retention plan. (MTX 290.) Johnson based his advice on

decades of experience, and Rambus followed it in good faith, knowing that it had fully disclosed

the relevant facts to its lawyers. See Rambus Br. at 28-31.

2. Rambus’s Goal Was Not To Eliminate Relevant Documents.

Rambus adopted a document retention policy because it was good corporate policy, not,

as Micron claims, to permit it to “destroy[] documents so its litigation adversaries would be at a

disadvantage in litigation and not have discoverable evidence.” Micron Br. at 8. The only

“evidence” Micron cites for its contention – testimony that Rambus employees were told that e-

mail may be “discoverable” in future litigation, and Rambus’s decision to save full system back-

up tapes for only three months – hardly supports Micron’s argument that the purpose of the

policy was to purge discoverable information or disadvantage litigation opponents. Rambus

employees were informed about the discoverability of e-mail because Cooley advised Rambus

that it should so inform its employees: “Employees must be informed that e-mail is subject to

discovery in the event of a lawsuit.” MTX 300-7. Johnson, in his July 1998 presentation to

Rambus about the need for a document retention policy, also addressed this issue, specifically

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Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 133 of 163

identifying “email messages” as “Discoverable Documents.” (MTX 333 at 4.) Johnson

identified e-mail specifically because “most clients, particularly in 1998, did not understand that

e-mail was discoverable.” (Tr. 1581:19-23.) As records retention expert John Montaña

explained, this was standard advice in 1998. (Tr. 518:6-19:10.)

Nor can any intent to destroy relevant harmful documents be inferred from Rambus’s

decision to save full system back-up tapes for only three months. Here again, Rambus followed

in good faith the advice of the Cooley firm which recommended that “tape back ups of email

should be destroyed on a periodic basis,” and that “[i]f the Company maintains tape back ups of

individual workstations, those back ups should be destroyed on a periodic basis.” MTX 300 at 7.

This advice was also consistent with industry practice. Montaña explained that “[b]ackup tapes

should only be retained for a relatively short period of time. The reason for that is that a backup

tape is used for disaster recovery or in the case of data corruption and what you typically need is

the latest version of your data.” (Tr. 512:18-13:1).1

The concern about “discoverability” was not that there were relevant, harmful documents

that needed to be kept out of the hands of potential litigation opponents. Rather, the concern

stemmed from the realization that, if Rambus found itself in litigation or if it received a third

party subpoena, vast quantities of irrelevant documents and data would need to be searched to

locate the relevant and responsive materials. Thus, Johnson told Rambus that without a

document retention policy, it was “going to have tons and tons of materials that you don't know

about that you're going to have to spend a fortune trying to retrieve if anybody sends you a

1
Micron’s allegation that Karp’s request that questions about the back-up tape policy be
addressed to him directly or narrowly distributed shows “consciousness of his wrongdoing” is
completely baseless. His request reflects nothing more than his desire not to inundate either
himself or the entire company with e-mail (which would occur if employees responded using
the “reply to all” button).

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subpoena.” (Tr. 1497:19-22.) And he advised Rambus to save back-up tapes for no more than

three months for the same reason:

they needed to go through and purge their back-up tapes in as short a period of
time as possible. Because if they kept them too long, they were going to have
problems. And recommended they have a three-month rolling cycle where they
would get rid of back-up tapes every three months.

(Tr. 1518:24-1519:12.) Similarly, Roberts “worry” about discoverability had nothing to do with

the content of any particular document, but instead related to the fact that Rambus had back-up

tapes with “gigabytes and gigabytes of information . . . that would potentially have to be gone

through” if Rambus ever became involved in litigation. (Tr. 1155:10-56:16.)

3. Karp’s Instruction To Vincent Is Not Evidence Of Bad Faith.

Likewise, there is no basis for Micron’s contention that Karp acted in bad faith when he

asked outside counsel Lester Vincent to conform Rambus’s patent prosecution files to reflect the

official file. Here again, Karp followed in good faith the advice he received from his attorneys.

In the February 12, 1998 meeting, Johnson told Karp that Rambus:

needed to follow-up what was very common practice, which was you’ve got these
prosecution files. Usually they’re with your lawyers. Sometimes you have them.
You want to make sure that the only thing that’s left in your file are going to
reflect the official record. And so we advised all out clients to go through and
clean out their prosecution files.

(Tr. 1500:16-24; MTX 290 (“Prosecution files: clean out all attorney notes so that file is same as

official file”).) As Johnson testified, Karp’s instruction to Vincent was “consistent with the

document retention program.” (Tr. 1579:23-24.)

4. The Policy And Its Implementation Were Content-Neutral.

Micron’s claims that Rambus’s document retention policy was not neutral and that

Rambus instructed its employees to apply the policy in a biased fashion are totally unsupported

by the record. The only evidence concerning the content-neutrality of Rambus’s document

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retention policy – the testimony of records retention expert Montaña – establishes that the

categories in Rambus’s policy were content-neutral and consistent with industry standards. (Tr.

510:2-11:6; 551:4-9.) In particular, Montaña described the category respecting documents

related to patent disclosures and proof of invention as “neither unusual or unreasonable.” (Tr.

583:20-21.) Micron offered no contrary evidence or expert testimony.

Nor is there any evidence that Rambus ever instructed employees to destroy harmful

documents. Contrary to Micron’s assertion, Karp did not use slides describing “horror stories”

regarding e-mail. See Micron Br. at 11. Those were Johnson’s slides and he used them to

illustrate his point that special care should be taken when creating e-mail, not when retaining or

deleting e-mail. (MTX 333 at 5-6; Tr. 275:16-17; 1530:4-12.) The testimony of Rambus

engineer Craig Hampel similarly concerned a hypothetical situation involving the creation of e-

mail. Hampel stated that he understood that “[i]f for some reason you had a third party in the

company that said this idea isn’t patented,” “it’s not a good idea” to have an e-mail around

reflecting such a comment. (Tr. 1303:21-04:14.) Hampel clearly meant that it was inadvisable

to create an e-mail memorializing the third party’s comments in the first place.

There is no evidence that “Karp himself was selective about what he destroyed.” Micron

Br. at 12. Micron’s only example – an instance in which Karp obtained a document from a back-

up tape after an employee accessed the document and caused the creation date to change – does

not support its claim. First, Micron’s statement that Karp sought to find the “one tape” that he

“believed Rambus would need for litigation” is simply false. Micron Br. at 12. The document in

question concerned an invention not at issue in this case and, contrary to Micron’s bald assertion,

there is no evidence that Rambus would “need” it in any litigation. Second, and more

importantly, the tape that Karp retrieved was not the “one tape” that contained the information he

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sought. Karp could have retrieved that document from the most recent back-up tape as well as

the earlier one. (Tr. 419:12-20:9.) Finally, no evidence suggests that the document would be

helpful to Rambus in any future litigation. Karp testified that the document would help establish

the invention’s conception date (Tr. 265:21-66:1), but that of course is not necessarily helpful as

it can end up establishing a less favorable conception date than that indicated by other evidence.

5. Steinberg’s E-Mails Are Not Evidence Of Bad Faith.

Lastly, the two e-mails sent in 2000 and 2001 by Neil Steinberg do not demonstrate bad

faith. In the first, Steinberg reminded Rambus executives of the document retention policy as it

related to disposal of contract drafts upon execution of a final agreement. (MTX 541.) Steinberg

sent this e-mail because on at least one occasion Rambus executives discussing a contract issue

confused provisions in a draft agreement (which some of them had retained) with those that were

ultimately incorporated in the final agreement. (Tr. 876:24-878:1.) In any event, Steinberg

himself retained a full set of the agreements and the negotiation correspondence, rendering it

neither necessary nor efficient for individual executives to also retain copies. (Tr. 878:2-878:12).

Likewise, the second e-mail does not support Micron’s claim. That e-mail, which states

that Steinberg would like to implement a new document retention policy “[o]nce we get through

our legal wrangling” merely reflects his view that Rambus should not revise its policy while in

litigation. (MTX 581.) And his statement that “this time the IP group will attempt to execute the

policy more effectively” was nothing more than an acknowledgement that despite the policy,

employees continued to retain documents reflecting “‘stale’ or old information” for which

Rambus no longer had a business need. (MTX 581.)2

2
As discussed further below, Micron’s final argument – that Rambus engaged in litigation
misconduct to “conceal what it knew was illegal conduct” – is baseless. See infra § III.

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B. Rambus’s Alleged Conduct Did Not Prejudice Micron.

Micron also argues that it is not required to prove that Rambus’s conduct prejudiced

Micron’s ability to defend itself. Instead, Micron claims that it need “only show plausible

suggestions that relevant evidence was destroyed” to raise an “automatic presumption of

prejudice,” at which point the burden shifts to Rambus “to show by ‘clear and convincing’

evidence that the documents destroyed were in fact of minimal import.” Micron Br. at 2, 14.

Micron again misstates the applicable law.

As Rambus previously established, Micron bears the burden of proving prejudice.

Rambus Br. at 23-25. To satisfy that burden, Micron must do more than “show plausible

suggestions that relevant evidence was destroyed.” Micron Br. at 2. Micron must offer evidence

to support “plausible, concrete suggestions as to what [the lost] evidence might have been.”

Schmid, 13 F.3d at 80 (emphasis added). This burden is far from “minimal.” As Gates, a case

cited by Micron, explains, “[t]he burden is on the aggrieved party to establish a reasonable

possibility, based on concrete evidence rather than a fertile imagination that access to the lost

material would have produced evidence favorable to his cause.” 167 F.R.D. at 104 (internal

quotes omitted). Rejecting the very argument Micron raises about the alleged “unfairness” of

requiring the party claiming spoliation to prove prejudice, the court noted:

Some extrinsic evidence of the content of the evidence is necessary for the trier of
fact to be able to determine in what respect and to what extent it would have been
detrimental. Although judges must be alert to the potential for harm when
evidence is destroyed, judges must be wary when parties seek to prove too much
from the absence of evidence.

Gates, 167 F.R.D. at 105 (internal quotes omitted).

Furthermore, neither case cited by Micron refers to an “automatic presumption of

prejudice.” Rather, both make clear that even where there is no dispute that a particular,

identified piece of evidence has been destroyed, the moving party must still prove that it has been

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prejudiced by the destruction by “set[ting] forth some type of extrinsic evidence as to the content

of the missing materials which demonstrates the extent to which such materials would have been

harmful to the spoliator.” In re Wechsler, 121 F. Supp. 2d at 423 (internal quotes omitted); see

Schmid, 13 F.3d at 80 (“While [defendant] speculates that an earlier examination for the saw

might have provided some evidence helpful to it on the causation issue, it has not come forward

with plausible, concrete suggestions as to what that evidence might have been.”).

Nor is there any support for Micron’s argument that the burden shifts to Rambus “to

show by ‘clear and convincing’ evidence that the documents destroyed were in fact of minimal

import.” The only case on which Micron relies, Anderson v. Cryovac, Inc., 862 F.2d 910 (1st

Cir. 1988), is inapplicable. That First Circuit case involved a motion for new trial under Rule

60(b)(3), not a request for the extreme sanction of dismissal.3 Micron cites no case extending

Anderson to dismissal sanctions, and it should not be extended. Shifting the burden is one thing

if the outcome may be a new trial; it is quite another if the party risks losing its day in court.

However, even if the burden shifted to Rambus, Rambus has convincingly demonstrated that no

relevant, non-cumulative evidence was destroyed. Indeed, Rambus demonstrated that every one

of the arguably relevant documents identified by Micron has been preserved, and with respect to

the general categories cited by Micron, demonstrated that voluminous documents in each such

category were preserved. See Rambus Br. at 5-21.

In sum, to prove prejudice, Micron must show both that the allegedly destroyed evidence

would have been helpful to Micron and that the evidence is not available from another source.

3
Moreover, even in the Rule 60(b)(3) context, Anderson shifts the burden only after the movant
(1) “show[s] the opponent’s misconduct by clear and convincing evidence” – in that case, there
was evidence that a specific report existed but had not been produced – and (2) “successfully
demonstrate[s] that the misconduct was knowing or deliberate.” Anderson, 862 F.2d at 926.
Micron has shown neither in this case.

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See In re Hechinger, 489 F.3d 568, 579 (3d Cir. 2007) (party must prove evidence “would have

aided” its case); In re DaimlerChrysler AG Sec. Litig., 2003 WL 22951696, at *2 (no prejudice

where information in destroyed notes available from other documents). That burden “is not

satisfied where the evidence lost is merely cumulative, insignificant or of marginal relevance.”

In re DaimlerChrysler AG Securities Litig., 2003 WL 22951696, at *2; see also Gates, 167

F.R.D. at 110 ("Harm from the alleged destruction of documents must be measured in light of

what is produced, as well as what is not produced.").4

Although Micron cites to general statements regarding the existence of the policy and the

fact that documents were discarded, those statements do not establish that non-cumulative

documents that would have aided Micron were destroyed. In particular, Steinberg’s testimony

regarding the purpose of a litigation hold – to ensure the preservation of “documents [that] would

have fallen in certain categories of the document retention policy and would have called for them

not to be retained” – is not evidence that any relevant, harmful documents were destroyed. It is

merely a self-evident statement of the function of a hold. Equally inadequate is Micron’s

reliance on the testimony of outside counsel Cecelia Gonzalez, that “there were documents that

apparently were missing” relating to an ITC proceeding involving Hitachi. Micron does not

establish what these documents were or explain why they would assist Micron in this case.

Micron next identifies six general categories of documents it claims were destroyed. But

Micron fails to prove that any non-cumulative, relevant documents were discarded, or that its

ability to defend against Rambus’s patent infringement claims has been impaired.

4
Nor is that burden satisfied by claims of delay or expense. The only case Micron cites,
Telectron, Inc. v. Overhead Door Corp., did nothing more than “note in passing that Telectron
has been further prejudiced” by delay and expense. 116 F.R.D. 107, 134 (S.D. Fla. 1987)
(emphasis added).

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1. Patent Files

Micron claims that Rambus’s outside counsel, Lester Vincent, “purged in excess of 60

patent files” between April and July 1999. Tellingly, Micron never identifies the files that

Vincent cleaned, no doubt because Vincent did not clean the files for any of the patents-in-suit in

1999. It is undisputed that Vincent had files for only two of the patents-in-suit – P001C5 and

P010DCD, which correspond to U.S. Patent Nos. 5,915,105 and 5,954,804. (D.I. 1052; MTX

601.) Although Vincent “cleaned” those files in June 2000, he had previously provided the

complete contents of those files to Rambus, in or before February 2000, for production in the

Hitachi case. (RAMTX 142; Tr. 1396:6-23.) Accordingly, the undisputed evidence is that the

complete files for the patents-in-suit were preserved. This fact defeats Micron’s claim.5

Micron’s claim also fails because, even if Vincent had “cleaned” the files of the patents-

in-suit, he retained communications with the PTO, all prior art, and all documents concerning

conception and reduction to practice and the invention disclosure form. (Tr. 1367:9-68:3.)6

Accordingly, to the extent Micron’s claim is premised on the alleged destruction of, for example,

the “prior art references” identified in his billing entries (see Micron Br. at 19; MTX 65), it is

undisputed that such prior art was maintained. (Tr. 1396:24-97:5.) Micron also asserts that

Vincent discarded drafts of claims and amendments, as well as various notes. However, Vincent

testified that – even before he “cleaned” the files – he periodically discarded drafts and notes

5
Although Micron asserts that Vincent cleaned files for certain applications “related” to one of
the patents-in-suit, Rambus has not asserted these “related” applications in litigation, and
Micron offers no reason why Rambus would have any duty to preserve the prosecution files of
ostensibly related applications.
6
Vincent decided what to retain and what to discard using his “professional judgment as to what
was customary to do with respect to document retention of prosecution files.” (Tr. 1367:13-
17). Vincent’s testimony regarding the “customary” nature of conforming prosecution files
following patent issuance was echoed by other witnesses. See, e.g., Tr. 1500:3-1501:9
(Johnson); 2-Hr. Tr. 121:10-122:19 (Diepenbrock).

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“because [otherwise] the files would just get so voluminous.” (Tr. 1368:19-1369:10.) Micron

has made no showing that any drafts or notes remained in the files when they were cleaned,

much less that any such drafts or notes contained information relevant and helpful to Micron.

Finally, Micron identifies various categories of privileged communications that it asserts

would have been in the files. But Micron ignores the evidence presented at trial, which

established that Vincent preserved both correspondence with Rambus and internal notes of

teleconferences and meetings with Rambus employees. See, e.g., MTX 42; MTX 47; MTX 54;

MTX 420; MTX 934; RAMTX 266; RAMTX 142; RAMTX 143. Micron’s speculation that

other documents may have been in the files and may have been destroyed is no substitute for

proof. Moreover, because all of these documents would have been privileged, Micron would not

be entitled to them and therefore cannot claim that it was prejudiced by their alleged destruction.

Micron’s arguments regarding Rambus’s internal patent files also ignore the record

evidence. Contrary to Micron’s assertion, Anthony Diepenbrock, a Rambus in-house lawyer

responsible for patent prosecution, did not clean Rambus’s patent files when the document

retention policy was introduced in 1998. Instead, he had been following a policy of conforming

patent prosecution files even before Karp arrived at Rambus. (2-Hr. Tr. 107:4-107:24, 114:21-

115:10.) As a result, Diepenbrock “[didn’t] think anything changed with regard to those files as

a result of Mr. Karp’s directives.” (2-Hr. Tr. 114:21-115:10.) Instead, Diepenbrock threw away

“old papers and stuff” because his “desk was a little bit messy.” (2-Hr. Tr. 116:12-116:19.)

There is no evidence that any materials Diepenbrock discarded pursuant to the document

retention policy were relevant to any issue in this case or would have aided Micron.

Micron also claims that others “involved in Rambus’s patenting activity” destroyed

documents. But each statement made in putative support of this claim is either unsupported or

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refuted by the evidence. Micron claims that “Karp destroyed claim charts.” But the only

“evidence” Micron cites is a document showing that claim charts were prepared – not that they

were destroyed. See MTX 802.7 Micron claims that Crisp threw away documents related to

patent prosecution work; however, Crisp’s actual testimony was: “If I actually still had any of

those documents, the chances are very good I threw those documents away many years earlier

[i.e. before the document retention policy].” (Tr. 803:6-803:13.) As for documents that Crisp

“possibly” gave to someone else, Micron effectively concedes it has no evidence that such

documents were discarded. See Micron Br. at 20 (speculating that others “undoubtedly”

destroyed documents). Finally, Hampel testified that he has no recollection of throwing away

any materials relating to any Rambus patent committee. (Tr. 1315:12-1315:18.)

Micron’s speculation that documents from Rambus’s patent files would have contained

materials relevant to and supportive of Micron’s claims is also meritless. First, Micron’s

observation that lawyers “typically will serve requests” for certain documents does not render

such documents relevant to, much less supportive of, a party’s claims or defenses. Second, as

discussed above, Rambus preserved the files for the patents-in-suit. Notably, Micron offered no

testimony that it was unable to locate documents within Rambus’s production that it otherwise

expected to find. Third, Micron’s speculation that documents constituting or referencing prior

art might have been destroyed is directly refuted by the evidence that all prior art was maintained

(even in files that were otherwise cleaned). Fourth, Micron’s claim that any destroyed

documents would have “direct bearing” on its anticipation, obviousness, and written description

7
Contrary to Micron’s claim, Sean Cunningham (the Gray Cary lawyer in charge of discovery
for the DRAM litigation) testified that he collected claim charts but did not produce all of them
because some are privileged. (Tr. 1017:19-19:9.) And Joel Karp testified that he preserved the
claim charts referenced in MTX 802. (Tr. 437:10-23; MTX 969 p. 23-24, entries 341, 344,
345, p. 54, entry 819.)

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defenses – the only relevance claimed by Micron – is specious. Each of these defenses is based

upon a objective test; the subjective intent or belief of the patentee is not pertinent. See, e.g.,

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741-42 (2007) (“In determining whether the

subject matter of a patent claim is obvious, neither the particular motivation nor the avowed

purpose of the patentee controls. What matters is the objective reach of the claim.”); Falko-

Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006) (written description requirement

must be “judged from the perspective of one of ordinary skill in the art”). Finally, Micron’s

claim that JEDEC-related materials were among the “destroyed documents from the patent files”

is also refuted by the evidence that JEDEC-related materials were maintained separately from the

prosecution files and were preserved and produced. (Tr. 1370:1-1374:14.)

2. E-Mails And Backup Tapes

Micron offers no evidence to back its claim respecting back-up tapes and e-mails.

Instead, Micron raises red herrings about the volume of material Rambus discarded and

speculates about their content. Neither constitutes a “plausible, concrete suggestion as to what

[the lost] evidence might have been.” Schmid, 13 F.3d at 80.

Micron cannot camouflage the absence of proof by trumpeting the volume of material

that might have been on the back-up tapes.8 Nor is it sufficient to allege that Rambus discarded

“e-mails” generally, without proof that any particular e-mail with information relevant to this

case was destroyed. Indeed, Micron acknowledges that it can do no more than speculate that

8
Though irrelevant, Micron exaggerates the amount of material discarded. Micron states that
“about 100,000 documents were stored on each back-up tape.” (Micron Br. at 22.) But the
testimony it cites referred only to the capacity of each tape, not the number of documents each
tape actually held. (Tr. 579:22-80:8.) Moreover, because the vast majority of documents on
each tape were copies of documents contained on prior tapes, the number of unique documents
contained on the tapes was, at most, a small fraction of the total.

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discarded documents “could have contained” material related to Micron’s claims. (Micron Br. at

23 (emphasis added).) Micron likewise overreaches with its statements about theoretical e-mails

“related to Horowitz’s drafting of the specification” or “between Rambus employees about the

scope of the specification,” both because such documents are irrelevant (see supra §II.B.1) and

because Micron has no proof that any such documents ever existed, let alone were destroyed.

Micron’s argument that a 1995 e-mail from Rambus founder and inventor Mike

Farmwald proves that relevant material was destroyed is simply wrong. The sole basis for

Micron’s claim that this document was “destroyed” is its contention that the e-mail was

“recovered from a backup tape and first produced in 2005.” Micron Br. at 23 (citing (MTX

718).9 But Micron offers no evidence to support this assertion. Although Micron cites the

production letter pursuant to which this particular copy of this document was produced, the mere

fact that a particular document was produced on a certain date does not prove that another copy

of the same document was not also produced earlier. (Cf. Tr. 964:12-65:21.) Micron offers no

evidence that this document was absent from Rambus’s active electronic or paper files produced

9
The production letter Micron cites, MTX 718, was not admitted, offered, or even discussed at
trial. Instead, Micron purports to offer this document pursuant to the Court’s October 16, 2007
Order (D.I. 1049) permitting Micron to identify fifty documents that are “undeniably business
records of [Rambus]” for potential admission without a testifying witness. MTX 718 clearly
falls outside the scope of the Order. First, a letter written by Rambus’s outside counsel is – by
definition – not a business record of Rambus. Nor do letters from counsel constitute “business
records” within the meaning of Fed. R. Evid. 803(6) in any event. See, e.g., In re Fine Paper
Antitrust Litig., 751 F.2d 562, 597 (3d Cir. 1984). Finally, the Order also required Micron,
“[u]sing its trial time, [to] demonstrate that said documents are relevant to a specific element of
a claim for relief or a defense.” (D.I. 1049.) As noted above, Micron did not discuss this
document at trial, much less use its trial time to establish the relevance of this document to any
specific element of its claims or defenses. Rambus therefore objects to Micron’s use and
requested admission of MTX 718. The same analysis applies to several other exhibits
identified by Micron in its opening brief. Rather than repeat this analysis as to each individual
exhibit, Rambus incorporates the foregoing discussion as to the exhibits listed on Attachment
A hereto, and hereby objects to Micron’s use and requested admission of same.

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earlier in the litigation. Micron could (and should) have put a witness on the stand – a lawyer, an

expert, or some other competent person – to make such a claim and face cross-examination.

Moreover, Micron’s argument that this e-mail is relevant to and supports its defense that

Rambus lacks standing is nonsense. The e-mail states that Farmwald “actually had the idea for

Rambus while still at MIPS in very early 1988.” (MTX 136.) Deciding to start work towards an

invention is not conception of an invention. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577

(Fed. Cir. 1996). Moreover, Farmwald’s employment agreement with MIPS provided that any

inventions – such as the inventions that led to the patents-in-suit – developed on his own time

and not at MIPS’s facilities were his property. (RAMTX 138; Tr. 1195:22-1197:12.) Indeed, in

1992, MIPS released any claim that it owns the Rambus inventions. (RAMTX 135.)10

Finally, Micron ignores the overwhelming volume of e-mails dating back to the early

1990s that Rambus has produced, only of fraction of which were offered at trial. (See Rambus

Br. at 20-21.) Micron has introduced no evidence of any e-mail that Micron or some third party

produced that Rambus did not. Micron’s supposition that some other, hypothetical e-mail must

have once existed and been destroyed is baseless and utterly unsupported by the evidence.

3. Contract And Licensing Negotiation Documents

Micron has not proven that Rambus destroyed relevant documents relating to contract

negotiations. Indeed, Micron does not even assert, much less provide evidence to prove, that any

particular negotiation document is missing. Instead, Micron cites to isolated, general testimony

10
Micron also claims that the e-mail relates more generally to the subject of SCI, and that
documents concerning SCI are relevant to its inequitable conduct claim and arguments
concerning validity. But Micron’s argument ignores the simple fact that Rambus disclosed
SCI references to the Patent Office in the course of prosecuting the patents-in-suit. See, e.g.,
U.S. Patent No. 6,378,020, “Other Reference” (listing multiple SCI publications). The
reference to SCI in Farmwald’s e-mail is therefore probative of nothing.

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that certain employees discarded their copies of contract negotiation materials. But that does not

prove spoliation, as it does not establish that all copies of these documents were destroyed. See

DaimlerChrysler AG Sec. Litig., 2003 WL 22951696, at *2 (D. Del. Nov. 25, 2003).

Micron relies on statements from Rambus employee Gary Harmon (and a similar

statement from Geoff Tate) that he discarded some (but not all) of the documents that he had

relating to negotiations between Rambus and Intel in the mid-1990s. But the evidence

demonstrates, whatever Harmon did with his copies, Rambus preserved and produced Intel

negotiation materials (including the summary specifically identified by Micron in discovery

responses). (See Rambus Br. at 11, 17-18.) There were no Intel negotiation materials that

Rambus’s counsel was unable to locate, (Tr. 1014:22-1015:20, 1021:20-24:9), and Micron made

no attempt to prove that Intel produced a document that Rambus did not.

Micron also relies on testimony from Rambus employee David Mooring that he

“suspect[ed]” that he did an “electronic version of the document retention procedures.” (2-Hr.

Tr. 226:12-226:14.) But Micron does not even attempt to establish that other copies – such as

paper copies – of those same electronic documents were discarded. The evidence suggests they

were not. (2-Hr. Tr. 225:21-226:5 (Mooring: no recall of disposing of paper materials).)

Similarly, although Laura Stark discarded internal e-mails regarding drafts of certain contracts,

she testified that she did so because those e-mails were with Rambus’s outside counsel, who

retained copies of all such drafts. (2-Hr. Tr. 249:18-250:8.) Stark also affirmed that she did not

destroy external communications regarding license negotiations. (2-Hr. Tr. 250:9-14.)

Moreover, Micron does not even attempt to explain why ten-year-old negotiations

between Rambus and Intel would aid its defense. Similarly, although Micron cites the testimony

of Gonzalez that “there were document that apparently were missing” relating to Rambus’s early

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“interactions” with Hitachi, it establishes neither what these documents were, nor why a history

of Rambus’s interactions with Hitachi is necessary for Micron to prove its case.

In sum, Micron offers nothing more than general speculation that contract negotiation

documents might have existed, might have contained relevant or helpful information, and might

have been destroyed. See Micron Br. at 26- 27 (asserting that Rambus “discussed licensing its

patents for noncompatible uses . . . in negotiations with DRAM manufacturers, such as Hitachi,

Samsung and Hynix” and speculating that documents reflecting such discussions “would have

been in the destroyed material”).11 Such speculation does not satisfy Micron’s burden. Rambus

preserved and produced numerous licensing and negotiation documents. See Rambus Br. at 13-

14; infra § II.A.5. If Micron believed material and helpful documents were missing from this

production, it could have tried to prove such a claim by, for example, presenting evidence (if any

existed) from Rambus’s licensees of communications to or from Rambus not contained in

Rambus’s production. That Micron did not even attempt such a showing speaks volumes.

4. JEDEC Documents

Micron’s claim regarding JEDEC documents is meritless. Although Crisp periodically

discarded certain paper JEDEC materials, (Tr. 824:10-824:22.), his unrefuted testimony is that

the only JEDEC documents he discarded were publicly-available materials he received from

11
Micron’s reference to Hitachi, Samsung, and Hynix negotiation documents also violates the
Special Master’s order on Rambus’s Motion in Limine to Preclude Micron from Introducing
Evidence of Destruction of Specific Documents or Particular Prejudice which held that
Micron could not contend that any specific document within the broad categories previously
identified (e.g., licensing documents) was destroyed unless Micron identified those
documents in advance of trial. (D.I. 1016 (referring to Transcript of Aug. 10, 2007 hearing,
at 121-33).) Had Micron disclosed that it contended that documents showing discussions of
“licensing its patents for noncompatible uses” (Micron Br. at 26) with specific DRAM
companies had been destroyed, Rambus could have offered evidence showing that such
documents were, in fact preserved. To the extent the Court intends to credit this argument,
Rambus requests that the record be re-opened so that it may submit such evidence.

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JEDEC (e.g., meeting minutes, ballots, etc.). (Tr. 823:19-824:5, 824:23-825:3.)12 The

undisputed evidence establishes that Crisp deliberately preserved all of his e-mails related to

JEDEC – the potentially unique documents that purportedly underlie Micron’s claim of

prejudice. (Tr. 825:21-826:11.) As he explained:

Well, as part of our document retention program, I was asked to look for things to
keep. And so part of what I did was went through my email files and sought out
and kept things that related to JEDEC. … I thought they were important
documents, and they were essentially the record of what I had been doing for a
number of years while working for the company. So far as I knew, I was the only
custodian or source of those documents if they were ever needed for any reason.

(Tr. 825:21-826:11.) It is also undisputed that not one, but two separate sets of Crisp’s JEDEC e-

mails were collected and produced prior to the first Infineon trial in 2001. (Tr. 1010:17-

1011:24.) To the extent that any JEDEC documents are relevant here – a questionable

proposition at best (see Rambus Br. at 8 n.3) – Micron’s claim that unique and helpful JEDEC

documents were destroyed is baseless.13

5. Documents Belonging To Horowitz

Micron next claims that documents related to Rambus’s inventions, such as documents

belonging to Horowitz, were destroyed. In so doing, Micron completely ignores the early drafts

of the patent application, early presentations to potential investors and licensees, and the

inventors’ notebooks – most nearly twenty years old – that Rambus produced. Rambus Br. at 17.

The only materials discarded from Horowitz’s cubicle were clear-acetate sheets used in

12
The Gray Cary witness interview notes on which Micron relies (MTX 742) are inadmissible
hearsay and unreliable. See In re Agribiotech, Inc., 2005 U.S. Dist. LEXIS 6467, at *24-26
(D. Nev. Jan. 4, 2005); Order re: Admissibility of Gray Cary Attorney Interview Notes,
Hynix Semiconductor Inc. v. Rambus Inc. (N.D. Cal. Oct. 30, 2005) (attached as Exh. B).
13
Although Micron asserts Roberts also destroyed JEDEC-related materials, there is no
evidence that Roberts ever had such materials. Similarly, despite Micron’s speculation that
“notes on [JEDEC] manuals” might be relevant to Micron’s claims, it never even attempts to
establish that any person ever made notes on a JEDEC manual.

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early investor and sales presentations, paper copies of which were preserved and produced. (Tr.

1236:14-1238:2.) Other materials, including early notebooks, were preserved. (Tr. 1238:8-

1238:21.) So were the early works prepared on computer. (RAMTX 251; RAMTX 252;

RAMTX 255; Tr. 1215:9-1218:22.) Although Horowitz occasionally took notes on individual

pieces of paper (Tr. 1261:4-11), he was not a “collector of paper,” and threw out loose sheets of

paper that had gathered in his office long before the document retention policy was implemented

in 1998, making it “[e]xtremely improbable” that any of those loose sheets remained in 1998.

(Tr. 1263:3-1263:15, 1272:6-12.)

6. General Business Documents

Micron musters no evidence to support its contention that “general business” documents,

such as accounting, budget, and investor relations materials, were destroyed. Rambus preserved

and produced many documents falling under this general description, including Board materials,

(see Rambus Br. at 14-17), and Micron does not identify any particular document missing from

that production. Instead, Micron cites general testimony from Rambus CFO Gary Harmon that

he complied with the document retention policy. (2-Hr. Tr. 140:17-41:3.) But because nothing

in the policy specifically address “accounting, budgeting and investor relations” documents

(MTX 337), Harmon’s testimony does not even imply that he discarded these documents.14

Micron’s speculation that notes purportedly taken by Harmon at Board meetings “would

have been destroyed” fares no better. Despite deposing Harmon prior to trial, Micron offers no

testimony from him to establish the predicates of its claim: (a) that Harmon retained his notes

14
Micron contends that Rambus directed employees to destroy documents from offsite
meetings but offers no evidence that any such documents existed, were destroyed after the
duty to preserve evidence attached, or would have been relevant and helpful to Micron’s
claims in this case.

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after the minutes were prepared and still possessed them when the duty to preserve evidence

arose; (b) that Harmon discarded the notes pursuant to the document retention policy; and (c)

that the notes contained unique information beyond that included in the Board minutes that were

prepared from them. (See 2-Hr. Tr. 30:18-31:5; 144:10-16.)

C. Micron Has Not Shown That Lesser Sanctions Would Be Inadequate.

Dismissal is also unwarranted in this case because Micron has not shown, as it must, that

lesser sanctions would be inadequate. The Third Circuit has admonished courts to choose “the

least onerous sanction corresponding to the willfulness of the destructive act and the prejudice

suffered by the victim.” Schmid, 13 F.3d at 79. Where the extreme sanction of dismissal is

sought, “the Trial Court’s range of discretion is more narrow than when the Court is imposing

other less severe sanctions” because “the sanction of a default judgment … represents in effect

an infringement upon a party’s right to trial by jury under the Seventh Amendment and runs

counter to sound public policy of deciding cases on their merits and against depriving a party of

his fair day in court.” Wilson v. Volkswagen of Am., 561 F.2d 494, 503-04 (4th Cir. 1977)

(internal quotes omitted). “[S]trong policies favor resolution of disputes on their merits,” and

“[t]hese policies must be considered with particular care in cases where parties … are seeking

damages which measure in the hundreds of millions of dollars. In such circumstances, the denial

of any trial at all would carry with it consequences of extreme gravity.” Gates, 167 F.R.D. at

106. Therefore, dispositive sanctions “must be regarded as a last resort, to be imposed only if no

alternative remedy by way of a lesser, but equally efficient, sanction is available.” Baliotis, 870

F. Supp. at 1289 (internal quotes omitted); see also In re Wechsler, 121 F. Supp. 2d at 415.

Micron merely asserts that any sanction less harsh than dismissal would not “replace the

destroyed evidence or provide Micron with the information contained in the destroyed material.”

Micron Br. at 32. But this conclusory statement does not establish that lesser sanctions are

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inadequate. Without this additional showing, dismissal is unwarranted.

III. MICRON’S CLAIMS OF LITIGATION MISCONDUCT ARE BASELESS

There is no merit in any of Micron’s litigation misconduct allegations. Micron’s claims

lack factual support and, in any event, do not establish that any Rambus witness ever sought to

mislead Micron or that Micron has been prejudiced by any alleged “misconduct.”

Moreover, even if Micron’s litigation misconduct claims had merit – and they do not –

Micron has not established that the severe sanction of dismissal is warranted in this case under

either the unclean hands doctrine or pursuant to the Court’s inherent powers. As discussed

above, dismissal for unclean hands is not warranted absent extreme bad faith and severe

prejudice. See supra § II. Similarly, the Third Circuit has noted “that dismissals with prejudice

or defaults [pursuant to the Court’s inherent powers] are drastic sanctions, termed ‘extreme’ by

the Supreme Court, … and are to be reserved for comparable cases.” Poulis v. State Farm Fire

& Cas. Co., 747 F.2d 863, 867-8 (3d Cir. 1984) (quoting Nat’l Hockey League v. Metropolitan

Hockey Club, Inc., 427 U.S. 639, 643 (1976)); Bowers v. NCAA, 2008 WL 2645684, at *6

(D.N.J., June 27, 2008) (“the entry of dismissal as a discovery sanction is a drastic approach . . .

that is disfavored absent the most egregious circumstances.”) (internal quotes omitted).

Accordingly, “the resolution of any doubts [must be against dismissal and] in favor of

adjudication on the merits.” U.S. v. $,8,221,877.16, 330 F.3d 141, 162 (3d Cir. 2003).

Rambus’s witnesses testified multiple times in multiple cases over a period of nearly

seven years, about events that occurred as long as twenty years ago. And Rambus has produced

hundreds of thousands of documents and filed countless briefs. After scouring the record,

Micron can identify only a handful of alleged misstatements. Given the extraordinary volume of

testimony, discovery, and briefing, it is hardly surprising that occasional mistakes or lapses in

memory might occur, but minor errors or inconsistencies do not constitute litigation misconduct.

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A. Micron’s Specific Claims Of Litigation Misconduct Lack Merit.

1. Micron’s Attack on Rambus 30(b)(6) Testimony Has No Merit.

Micron’s contention that Rule 30(b)(6) witnesses Steinberg and Kramer deliberately gave

false testimony regarding the number of shred days is baseless. Although Steinberg testified on

August 1, 2001 that he was aware of only one shred day, there is no evidence that his answer was

intentionally false. Steinberg was designated to testify on Rambus’s “policies and procedures

regarding the retention of documents, electronic mail, and electronically stored documents or

other computer files.” (MTX 597.) Steinberg prepared himself to testify on that topic solely by

reviewing the document retention policy; although he spoke with various people to prepare for

another topic in the notice, he did not discuss the document retention topic with them. (Tr.

851:1-21.)15 Steinberg also later testified that he did not understand that topic to cover the

number of shred days. (Tr. 906:15-907:7.) Accordingly, Steinberg’s responses to the questions

regarding “shred days” and “burlap bags” were expressly limited to his understanding. (Tr.

855:16-56:19.) But because Steinberg was not at Rambus for either the 1998 or 1999 shred days,

he had no personal knowledge of those events. (Tr. 868:18-869:17.).

Micron’s arguments respecting Kramer’s April 23, 2003 30(b)(6) testimony in the Hynix

matter are similarly baseless. 16 Like Steinberg: (1) Kramer did not join Rambus until October

2001 (2-Hr. Tr. 171:17-72:7) and therefore had no personal knowledge of the 1998 or 1999

events; (2) the 30(b)(6) topic did not identify shred days (or any similar subject) (MTX 951

(describing topic as “Rambus’ document retention or document destruction policies between

15
Notably, Micron never challenged the adequacy of Steinberg’s preparation. (Tr. 907:8-13.)
16
Micron’s argument regarding testimony given in the Hynix case should be disregarded
entirely because, it cannot constitute litigation misconduct in this case. See Rambus Br. at
41.

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1990 and the present”).); and (3) Kramer did not prepare to testify about “shred days” (2-Hr. Tr.

176:11-77:16), but instead prepared by reviewing the document retention policy and prior

deposition testimony on the topic (2-Hr. Tr. 168:2-168:24). In light of these facts, there is no

basis for a claim that either Steinberg or Kramer intentionally testified falsely.

Nor is there any evidence that Rambus witnesses kept their lawyers “in the dark” about

shred days. Rambus’s lawyers were well aware that Rambus adopted a document retention

policy. Cunningham testified that several witnesses had advised him of both the implementation

of the document retention policy and their compliance with it. (Tr. 962:14-19.) Gonzalez

testified similarly. (Tr. 1290:14-91:2.) Micron’s contention thus boils down to a complaint that

Rambus’s lawyers were not specifically informed about particular “shred days.” But this is not

surprising given the testimony of Rambus witnesses that the shred days were not remarkable

events. (See, e.g., Tr. 1159:11-13.)

Finally, Micron offers no evidence that it was harmed by the “late” discovery of an

additional “shred day.” Micron has known from the outset that Rambus implemented a

document retention policy in 1998 and has known for years that Rambus had at least one shred

day to facilitate compliance with that policy.

2. Micron’s “Board Presentation” Claim Has No Merit.

Micron’s contention that Kramer intentionally “concealed the fact that the document

retention policy had been presented to the Board” (Micron Br. at 35) is meritless. Kramer

testified that there had been no “presentation to Rambus’s board of directors regarding Rambus’

document retention policy where the discussion . . . is about the policy itself” (Micron Br. at 35

(quoting 2-Hr. Tr. at 182:6-12).) Micron has not established that this testimony is false.

Although Micron cites a Board presentation in which a single slide notes that a document

retention policy had been written and implemented, such a passing reference to the existence of a

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document retention policy cannot, under any construction, be characterized as a “presentation” or

“discussion” regarding the policy.

Nor is there any no basis for Micron’s claim that this testimony was deliberately false.

The testimony was given during a 30(b)(6) deposition on a topic directed at Rambus’s

“document retention policies” generally. (MTX 951.) Fairly construed, that topic would not

require Kramer to inform himself as to whether a presentation regarding document retention was

made to the Board in 1998 (years before he joined the company). In any event, Micron makes no

attempt to explain how Kramer’s testimony harmed it in any way.

3. Micron’s Document Production Complaints Have No Merit.

Micron claim that “for years” Rambus withheld from production “critical, responsive

documents” regarding document retention is pure hyperbole. (Micron Br. at 37.) The

documents to which Micron refers are invoices for document shredding services and requisitions

for back-up tape degaussing. (Id.) Those are hardly “critical” documents, and Micron never

explains how their purportedly “late” production caused it any harm. Nor is there any basis for

Micron’s claims that these documents were deliberately withheld from production. Micron’s

initial document requests did not call for these documents, as they sought only “[d]ocuments

sufficient to show any document retention . . . policy in effect at Rambus.” (MTX 574 (Request

No. 107) (emphasis added).) And no reasonable construction of the later requests would require

Rambus to search for the level of minutiae identified by Micron. Consequently, Gray Cary never

asked Rambus to produce records that would reflect amounts paid to vendors for shredding

services or similar documents. (Tr. 998:4-14.)

Micron likewise has no support for its claim that Rambus kept Kramer and Cunningham

“in the dark” about the degaussing of backup tapes. (Micron Br. at 37.) Rambus’s document

retention policy expressly calls for the routine recycling of backup tapes. (MTX 337.) There is

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no evidence that either Kramer or Cunningham ever sought or needed to know the precise

manner in which those tapes were recycled.

4. Micron’s Attack on Rambus’s Briefs Has No Merit.

Micron’s contention that Rambus made false statements in briefs in 2001 in both this case

and the Infineon case is unfounded. There is nothing false or misleading about Rambus’s

statement that its document retention policy became effective “long before Rambus even

contemplated” a patent infringement suit against a DRAM manufacturer. As Rambus

demonstrated in its prior briefing on the issue of when the duty to preserve evidence arose,

Rambus did not anticipate litigation against a DRAM manufacturer until December 1999, when

its negotiations with Hitachi broke down. Nor is there is anything false about Rambus’s

statement that its “document retention policy had nothing to do with litigation.” Rambus

adopted its document retention policy at the urging of experienced outside counsel who

recommended that Rambus adopt a policy because it was sound corporate practice and would

engender cost savings and efficiencies. (Tr. 1497:8-98:6.)

5. Micron’s Claims Concerning JEDEC Have No Merit.

Micron’s allegations that Rambus witnesses provided false testimony regarding

Rambus’s involvement in JEDEC are baseless.17

a. Crisp testified truthfully.

Crisp did not testify falsely about his conversations with Rambus attorneys regarding

patent applications. In response to a question asking whether he ever discussed the process for

filing patent applications, Crisp testified that he “[n]ever, ever” had a discussion about “whether

17
Those allegations are also irrelevant because Micron’s JEDEC defense is unsupportable. See
Rambus Br. at 8 n.3.

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to file continuation applications or divisional applications and how to go about doing that.”18

Although Micron cites documents reflecting discussions between Crisp and Rambus attorneys

about patent applications generally, those do not demonstrate that Crisp ever discussed with the

lawyers the process for filing patent applications.19 Crisp’s answer was correct.

The gist of Micron’s claim appears to be that Crisp somehow sought to mislead Infineon

into thinking that he had no involvement in patent prosecution. But no reasonable person could

have been misled, because (as Micron concedes) Crisp testified in the same deposition that he

worked with Vincent on Rambus’s patent applications on multiple occasions. Faced with this

testimony, Micron’s only response is to quibble with Crisp’s recall and description of the number

of meetings (e.g., “one occasion” in 1992 (Crisp) versus three meetings and three telephone calls

(Micron)). These facts are hardly critical, and even if they were, Crisp cannot be expected to

remember each individual meeting that took place some nine years before.20

b. Tate testified truthfully.

Micron’s argument that Tate testified falsely is frivolous. Micron refers to a statement in

a June 1992 business plan in which Tate stated that Rambus’s intention was to “file . . .

18
Because this testimony was given in Infineon, it cannot support a misconduct claim here.
19
The fact that Vincent understood that some of Crisp’s ideas might support a divisional or
continuation application is not evidence that Crisp discussed with Vincent the process for
obtaining patent protection for Rambus’s inventions. Similarly, the fact that Crisp wrote a
single e-mail suggesting that he had ideas for additional claims that could be filed as “a new
division or a amendment” does not establish that he had discussions with lawyers respecting
this suggestion.
20
Rambus objects to MTX 47 and MTX 54 on the ground that notes of conversations taken by
Vincent are inadmissible hearsay. See In re Agribiotech, Inc., 2005 U.S. Dist. LEXIS 6467,
at *26 (notes inadmissible because, inter alia, they “were not intended to be verbatim
transcripts”); Bensen v. Am. Ultramar Ltd., 1996 WL 422262, at *9 (S.D.N.Y. July 29, 1996)
(notes inadmissible because “lawyer’s memorialization of a meeting in which legal advice
was rendered [is not] marked by the regularity and continuity that produces the reliability
upon which the business records exception is predicated”).

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additional claims by the end of Q3/92.” (MTX 48 at 17). When Tate was deposed about this

statement nine years later, he testified that he did not recall filing the additional claims

referenced in the business plan. Micron asserts that this testimony was false, relying upon two

documents that pre-date the June 1992 business plan: a February 29, 1992 invoice from Vincent

(MTX 848), which references a teleconference with Tate “concerning amendment” and sending

Tate “a copy of an amendment,” and a May 19, 1992 e-mail from Tate (MTX 40), which asks

what “extensions” Rambus should be filing to “add claims.” These documents, which reflect

actions taken prior to June 1992, in no way undermine Tate’s testimony that he does not recall

whether additional claims were, in fact, filed between June 1992 and the end of September 1992.

Nor do they cast doubt on Tate’s testimony that he did not recall in 2001 whether he

knew, nine years earlier, whether it was possible to “modify claims.” Neither Vincent’s billing

records nor Tate’s e-mail makes reference to modifying claims (Vincent’s billing entries refer to

“amendments,” without reference to claims, applications, patents, or any other particular subject,

and Tate’s e-mail refers to “add[ing] claims,” not modifying them). Although Micron also relies

upon minutes from a 1996 Rambus Board meeting in which Tate advised the Board that, at that

time, Rambus intended “a review and broadening of key patent claims in current applications,”

(MTX 188), Tate’s statements in 1996 are in no way probative of his state of awareness in 1992.

Finally, even if Tate’s recall of what he knew in 1992 was faulty, Micron was not prejudiced.

c. Roberts testified truthfully.

Micron’s claim that Roberts testified falsely is baseless. As Rambus previously

demonstrated, Roberts has testified consistently and truthfully that he knew Rambus attended

JEDEC meetings in the early 1990s but did not realize until 2000 that Rambus was a member.

See Rambus Br. at 40-41. Micron has always known that Rambus was a member of JEDEC and

cannot conceivably claim that it has ever been misled. See id.

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d. Rambus’s briefs were truthful.

Because all of Micron’s meritless complaints concern filings in other cases involving

other parties (namely, Infineon and the FTC), they cannot support a claim of litigation

misconduct here. See Rambus Br. at 41. More importantly, none of the statements Micron cites

is incorrect or misleading. Micron cites to a brief in the Infineon litigation and a White Paper

Rambus filed with the Federal Trade Commission, in which Rambus said that it did not seek or

acquire patents covering SDRAM while it was a member of JEDEC. In these same filings,

Rambus explains precisely what it meant: “Based upon a careful review of these claims,

Rambus can show that, when properly construed, none of these claims [in the relevant Rambus

patent applications] covered the SDRAM standard adopted by JEDEC in 1993.” (MTX 591 at

12; see also RAMTX 301 at 8.) This statement is true. As the Federal Circuit concluded,

Rambus had no patent applications covering SDRAM while it was a member of JEDEC. See

Rambus Inc. v. Infineon Techs., AG, 318 F.3d 1081, 1103-04 (Fed. Cir. 2003).21

B. Micron Has Not Demonstrated Bad Faith.

Micron has presented no evidence of any “flagrant bad faith” by Rambus. See Nat’l

Hockey League, 427 U.S. at 643; (upholding the “extreme sanction of dismissal” due to “flagrant

bad faith”); Qantum Commc’ns Corp. v. Star Broadcasting, Inc., 473 F. Supp. 2d 1249, 1268

(S.D. Fla. 2007) (“the key to unlocking a court’s inherent power is a finding of bad faith”)

(internal quotes omitted); Poulis, 747 F.2d at 868-9. Instead, Micron argues that “[t]here is only

one fair explanation – Rambus and its witnesses acted deliberately to try to ensure certain

21
Micron also takes issue with Rambus’s statement in a 2001 brief in Infineon regarding
Crisp’s awareness of the Rambus’s pending patent applications during the time he attended
JEDEC. But the meaning of this statement is clear from the brief itself; because Rambus did
not have any pending patent applications covering SDRAM at the time, Crisp did not know
about any such application.

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damaging facts would never be known.” Micron Br. at 49. But that is not the only fair

explanation; indeed, it is not even a reasonable explanation. Given the number of times

witnesses testified about events, some of which occurred twenty years ago, the most reasonable

explanation for any error or “inconsistency” is that memories fade and people sometimes make

mistakes. Recognizing that fact, courts have held that “false statements alone do not indicate bad

faith.” Qantum, 473 F. Supp. 2d at 1269 (internal quotes omitted); see Adams v. Trustees of New

Jersey Brewery Employees’ Pension Trust Fund, 29 F.3d 863, 875-76 (3d Cir. 1994) (“negligent

behavior,” even where “inexcusable,” is not bad faith). Instead, Micron must introduce evidence

that Rambus’s conduct “involves intentional or self-serving behavior.” Id. Micron cannot do so.

In this way, this case is dramatically different from the cases cited by Micron. In Qantum

Communications Corp. v. Star Broadcasting, Inc., the court concluded that terminating sanctions

were warranted because one of the defendants intentionally lied under oath about a key issue in

the case knowing that the truth would “probably cause him to lose this lawsuit,” deliberately and

intentionally failed to produce key “smoking gun” documents, and filed a bad faith bankruptcy

petition to avoid the litigation. 473 F. Supp. 2d at 1272, 1274-75. Here, by contrast, no critical

evidence has been withheld from Micron as a result of any deliberate scheme. Nor is the instant

case comparable to Vargas v. Peltz or Derzack v. County of Allegheney, Pa., both cases in which

plaintiffs fabricated evidence to enhance their claims. See Vargas v. Peltz, 901 F. Supp. 1572,

1581 (S.D. Fla. 1995); Derzack v. County of Allegheney, Pa., 173 F.R.D. 400, 415 (W.D. Pa.

1996). Because there is no evidence that Rambus intentionally withheld or suppressed any

information, there is no basis to infer a deliberate effort to conceal information from Micron.

C. Micron Has Not Demonstrated Prejudice.

Similarly, dismissal is not warranted because Micron has not proven that it has been

prejudiced by any of the alleged “misconduct” of which it complains. Prejudice must be

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demonstrated to obtain dismissal under either an unclean hands or inherent power theory. See,

e.g., Castle v. Cohen, 676 F. Supp. 620, 627 (E.D. Pa. 1987), aff’d in part and remanded on

other grounds, 840 F.2d 173 (3d Cir. 1988) (to constitute unclean hands, conduct must “injure[]

the other party” and “affect[] the balance of equities between the litigants”); Bowers, 2008 WL

2645684, at *8 (“prejudice to the moving party” is a “critical consideration” under Poulis).

Although Micron argues that it “was denied the opportunity to obtain truthful and reliable

testimony from Rambus witnesses at a time when events were fresh in their minds” (Micron Br.

at 48), it cites no instance in which a Rambus witness was unable to recall information

concerning a subject matter impacted by any alleged misconduct. Micron’s claims that

Rambus’s alleged misconduct “undermined” Micron’s ability to defend against Rambus’s claims

are similarly baseless – Micron again offers no example of any alleged misconduct that has

hindered Micron’s ability to present its case.

D. The Remaining Poulis Factors Do Not Support Dismissal.

Although the lack of bad faith and prejudice alone suffice to deny Micron’s request for

dismissal, the four remaining Poulis factors also weigh against dismissal.

Personal Responsibility. This factor focuses on the extent of Rambus’s “personal

responsibility.” Although Micron claims that “Rambus was directly responsible” for all of the

alleged misconduct, it offers no meaningful analysis in support of this assertion. As discussed

above, Micron has offered nothing more than a handful of isolated incidents that evidence, at

most, inadvertent misstatements or inconsistencies, none of which has prejudiced Micron.

History of Dilatoriness. Micron contends only that “the conduct described above

spanned multiple years and multiple litigations.” Micron Br. at 49. But the length of time a case

has been pending has no bearing on whether there has been a pattern of misconduct, and Micron

has offered no evidence of any such pattern. This factor favors Rambus.

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Meritoriousness of the Claim. The merits of Rambus’s claim strongly leans against

dismissal.22 Rambus has already prevailed on nearly identical patent infringement claims in the

Northern District of California, where it defeated the same defenses and counterclaims Micron

raises here. Rambus thus has highly meritorious claims that should not be lightly dismissed. See

Adams, 29 F.3d at 877 (because plaintiff’s claims were “facially meritorious,” the

“meritoriousness factor weighs heavily against dismissal”).

Availability of Alternate Sanctions. Finally, Micron has not shown that lesser sanctions

would be ineffective. The Third Circuit has made clear that “district courts should be reluctant

to deprive a plaintiff of the right to have his claim adjudicated on the merits, … and [are]

required to consider sanctions other than dismissal … and record [their] findings.” Adams, 29

F.3d at 876 (internal quotes omitted); Qantum, 473 F. Supp. 2d at 1269 (court may not enter

dismissal unless it finds by clear and convincing evidence “that a lesser sanction would not

sufficiently punish and deter the abusive conduct while allowing a full and fair trial on the

merits”) (internal quotes omitted). Micron fails to even discuss alternative lesser sanctions –

much less demonstrate their inadequacy.

CONCLUSION

In sum, Micron’s unclean hands defense fails on both the law and the facts. Rambus

therefore requests that it be rejected in its entirety.

22
Contrary to Micron’s suggestion, it is the merit of the claim sought to be dismissed –
Rambus’s claim – that is relevant, not the merit of Micron’s defenses. See Micron Br. at 49.
Such defenses are relevant only insofar as they pose a facial, prima facie threat to Rambus’s
claim. See Poulis, 747 F.2d at 869-70 (considering statute of limitations defense).

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MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ James W. Parrett, Jr.


Mary B. Graham (#2256)
Rodger D. Smith, II (#3778)
James W. Parrett, Jr. (#4292)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
302.658.9200
OF COUNSEL: mgraham@mnat.com
Gregory P. Stone rsmith@mnat.com
MUNGER, TOLLES & OLSON LLP jparrett@mnat.com
355 South Grand Avenue
35th Floor Rollin A. Ransom
Los Angeles, CA 90071 Michelle B. Goodman
213.683.9100 SIDLEY AUSTIN LLP
555 West Fifth Street
Charles W. Douglas Los Angeles, California 90013
Thomas K. Cauley, Jr. 213.896.6600
Brian A. McAleenan
SIDLEY AUSTIN LLP Attorneys for Rambus Inc.
One South Dearborn Street
Chicago, Illinois 60603
312.853.7000

Dated: August 4, 2008


2437492

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Case 5:05-cv-00334-RMW Document 2077-2 Filed 08/22/2008 Page 163 of 163

CERTIFICATE OF SERVICE

I hereby certify that on August 4, 2008, I caused the foregoing to be electronically filed

with the Clerk of the Court using CM/ECF which will send electronic notification of such filing

to the following:

Frederick L. Cottrell, III, Esquire


RICHARDS LAYTON & FINGER
One Rodney Square
Wilmington, DE 19801

Additionally, I hereby certify that true and correct copies of the foregoing were caused to

be served on August 4, 2008 upon the following individuals in the manner indicated:

BY E-MAIL BY E-MAIL

Frederick L. Cottrell, III, Esquire Matthew D. Powers, Esquire


RICHARDS LAYTON & FINGER WEIL, GOTSHAL & MANGES LLP
One Rodney Square 201 Redwood Shores Parkway
Wilmington, DE 19801 Redwood Shores, CA 94065

/s/ James W. Parrett, Jr.


James W. Parrett, Jr. (#4292)
458617

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