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Attorney list on signature page

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION

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RAMBUS, INC.,

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Case No. C 05-00334 RMW Plaintiff,

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v.

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

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[PUBLIC VERSION] SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTORNICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, L.P.,

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SAMSUNG’S OPPOSITION TO RAMBUS’S MOTION TO COMPEL DISCOVERY ON GDDR5 AND UNDER-DEVELOPMENT DRAM PRODUCTS

Hearing Date: August 20, 2008 Time: 8:30 a.m. Location: Telephonic Judge: Hon. Read Ambler (Ret.)

NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION U.S.A.,

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RAMBUS, INC.,

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Case No. C 05-02298 RMW Plaintiff,

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v.

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SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, L.P.,

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Defendants.

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I.

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INTRODUCTION Rambus has very recently decided to attempt to add GDDR5 to this case and to seek far-

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ranging discovery related to it. But Rambus knew about GDDR5 long ago and could have sought

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to add it to this case, and to seek discovery relating to it, much earlier. Instead, Rambus has

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waited until the eleventh hour, when Samsung is in the middle of preparing for trial, to demand

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that Samsung provide extensive discovery related to GDDR5. Because the discovery that

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Rambus seeks has only marginal, if any, relevance to the issues in this case, the Court should

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reject Rambus’s attempt to impose burdensome discovery on Samsung at this late date.

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II.

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BACKGROUND A.

Rambus Knew About GDDR5 Much Earlier, But Did Not Attempt To Add It To This Lawsuit Until Now

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Rambus knew about GDDR5 long ago, but only recently attempted to add it to this

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lawsuit or to seek extensive discovery relating to it. GDDR5 was publicly known at least as early

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as a year ago. See, e.g., Declaration of Dana K. Powers In Support Of Samsung’s Opposition To

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Rambus’s Motion To Compel Discovery on GDDR5 And Under-Development DRAM Products

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(“Powers Decl.”), Ex. 1 at 2 [August 15, 2007 JEDEC Press Release] (explaining that “GDDR5 is

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currently under development in JEDEC (JC-42.3 subcommittee), with an expected specification

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release date of mid-to-late ’08”). There can be no dispute that Rambus knew about GDDR5 at

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this time. As early as a year ago, Rambus asked specific questions about GDDR5 at depositions

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of Samsung employees. See, e.g., Powers Decl., Ex. 2 at 313 [Excerpts from the 8/30/07

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Deposition of J.B. Lee]

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Despite its knowledge of GDDR5 at that time, Rambus did not serve specific discovery requests

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directed to it, nor did Rambus attempt to add GDDR5 to this lawsuit.

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B.

REDACTED

Rambus’s Attempt To Add GDDR5 To This Case Is In Contravention Of The Patent Local Rules

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On August 1, 2008, Rambus served without leave of court a set of final infringement

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contentions. These contentions purport to add GDDR5 as well as other previously non-accused

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products to the case. See, e.g., Powers Decl., Ex. 3 at 5-6 [Excerpts From Rambus’s 8/1/08 SAMSUNG’S OPPOSITION TO RAMBUS’S MOTION TO COMPEL DISCOVERY ON GDDR5 AND UNDERDEVELOPMENT DRAM PRODUCTS

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Disclosure of Asserted Claims and Final Infringement Contentions]. Under Patent L.R. 3-6 Rambus was permitted to serve final infringement contentions as of right, but only to the extent that the Court’s claim construction ruling so required. Patent L.R. 3-6 does not permit a party to add new products to a case.

Samsung is currently preparing a motion to strike Rambus’s

improper final infringement contentions and expects to file it with Judge Whyte this week.

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Rambus Served Its Rule 30(b)(6) Notice Seeking Wide-Open Discovery Into GDDR5 And All DRAM Products Currently Under-Development

Although Rambus knew about GDDR5 at least a year ago, Rambus did not demand a 30(b)(6) witness or serve document requests directed to GDDR5 until June of this year. See Powers Decl., Ex. 4 [6/19/08 Notice for 30(b)(6) Deposition]; Powers Decl., Ex. 5 [7/2/08 Sixth Set of Requests for Production]. Rambus’s 30(b)(6) notice demands that Samsung designate a witness to testify about broad areas relating to GDDR5 and to other DRAM products currently under development. The first topic for which Rambus demands 30(b)(6) testimony is the “conception, design, and development of Samsung’s GDDR5 products.” See Powers Decl., Ex. 4 at 2 [6/19/08 Notice for 30(b)(6) Deposition]. The second topic is the “implementation and manufacturing of Samsung’s GDDR5 products.” See id. at 2. The third topic is the “features, capabilities, and operation of Samsung’s GDDR5 products.” See id. at 2. The fourth is the “testing of each of Samsung’s GDDR5 products, during manufacture, production, or otherwise before customer delivery.” See id. at 2. The fifth and sixth topics are the same as the first and third topics, but they ask for Samsung witnesses to testify about “any Samsung DRAM products currently under development” instead of “Samsung’s GDDR5 products.” See id. at 2. The seventh topic is “any efforts by Samsung, either alone or in combination with other companies, to design-around the inventions claimed in the patents-in-suit in its GDDR5 products or any Samsung DRAM products currently under development.” See id. at 2.

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D.

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Rambus Served Its Sixth Set of Requests For Production Seeking A Broad Range Of Documents Relating To GDDR5

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Rambus also very recently served a set of document requests directed to GDDR5. It was

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not until July of this year that Rambus sought this discovery. See Powers Decl., Ex. 5 [7/2/08

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Sixth Set of Requests for Production].

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Rambus’s document requests are far-ranging and seek from Samsung virtually all

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documents that relate in any respect to GDDR5. Request No. 157 demands all “licenses, cross-

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licenses, sub-licenses, or covenants not to sue relating to . . . GDDR5 technology to which

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Samsung is a party, including all documents relating to royalties or other consideration paid by

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Samsung or received by Samsung under any such license.” See Powers Decl., Ex. 5 at 9 [7/2/08

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Sixth Set of Requests for Production]. Request No. 158 demands all “documents relating to the

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conception, design, development, or implementation of each GDDR5 Product . . . .” See id. at 9.

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Request No. 159 demands all “documents relating to the manufacture, packaging or assembly of

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any GDDR5 product . . . .” See id. at 10. Request No. 160 demands all “documents relating to

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any evaluation, testing, experimentation, or research involving any GDDR5 product . . . .” See id.

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at 10. Request No. 161 demands all “documents relating to preliminary and final data sheets and

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schematics for each GDDR5 Product.” See id. at 10. Request No. 162 demands all “documents

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relating to the history of the development of any GDDR5 product . . . .” See id. at 10. Request

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No. 163 demands all “documents relating to the theory of operation, method, or manner of

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operation, operation, function of each GDDR5 Product.”

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demands all “documents relating to any demonstaration, evaluation, or presentation of any

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GDDR5 Product.” See id. at 11. Request No. 165 demands all “documents relating to marketing,

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promotion, sales, discounts, demonstrations or advertising of each GDDR5 Product . . . .” See id.

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at 11. Request No. 166 demands all “documents relating to the making, using, selling, offering

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for sale, or importing into the United States of any GDDR5 Product, including any documents

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relating to revenues, unit sales, dollar sales, costs, and profits for each GDDR5 Product and the

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means and agents by which any GDDR5 Product is imported into the United States.” See id. at

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11. Request No. 167 demands all “documents relating to any agreement or consultation between SAMSUNG’S OPPOSITION TO RAMBUS’S MOTION TO COMPEL DISCOVERY ON GDDR5 AND UNDERDEVELOPMENT DRAM PRODUCTS

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See id. at 10.

Request No. 164

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Samsung and any third party relating to the design, development, making, testing, importing, marketing, or sales of any GDDR5 Product, or the incorporation of any GDDR5 Product into any other device.” See id. at 11. Request No. 168 demands documents “sufficient to identify all persons who were or are involved in the design, development, making, testing, marketing, or sales of each GDDR5 Product.” See id. at 11. Request No. 169 demands all “documents related to the implementation or incorporation of any GDDR5 Product into any other devices or products.” See id. at 11. Request No. 170 demands “[t]hree samples of every version, generation, or revision of each GDDR5 Product, and documents sufficient to show all differences between each such version, generation, or revision.” See id. at 12. Request No. 171 demands all “documents relating to any license involving any GDDR5 Product, or any license of any patent covering GDDR5 Product, including any cross-license, sublicense, or covenant not to sue.” See id. at 12. Request No. 172 demands “[d]ocuments sufficient to identify all persons employed by Samsung who participated in negotiating any license involving any GDDR5 Product or nay license of any patent covering any GDDR5 Product, including any cross-license, sublicense, or covenant not to sue.” See id. at 12. Request No. 173 demands all “documents relating to any GDDR5 Product provided by Samsung to customers, potential customers, inventors, investment bankers, underwriters, joint venture partners, competitors, and industry associations.”

See id. at 12.

Request No. 174 demands all “documents relating to any product evaluations, analysis or comparisons of features or functions of any GDDR5 Product with any device or any other device or process.”

See id. at 12.

Request No. 175 demands all “documents relating to any

communications between Samsung [the other defendants, Infineon, or JEDEC] relating to the design, manufacture, using, or selling of any GDDR5 Product.” See id. at 12. Request No. 176 demands “[d]ocuments sufficient to identify any GDDR5 Product made, used, imported into, sold or offered for sale in the United States.” See id. at 12. Request No. 177 demands “[d]ocuments sufficient to identify any controller(s), processor(s), or chipset(s) used in conjunction with each of the . . . GDDR5 Products.” See id. at 13. Request No. 178 demands “[d]ocuments reflecting any communications relating to the operation of any . . . GDDR5 Product with any controller(s),

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processor(s), or chipset(s).” See id. at 13.

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In summary, at the eleventh hour Rambus has served a comprehensive set of document requests seeking to cover every possible topic and document related in any way to GDDR5 products.

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Rambus Did Not Meet And Confer Regarding Its Document Requests

Before this motion was noticed by Rambus, counsel for Samsung and Rambus met and conferred over Rambus’s Rule 30(b)(6) Notice of Deposition and agreed to have a hearing set regarding that notice on August 20, 2008. Rambus’s motion, however, seeks to compel on Rambus’s sixth set of document requests, which Samsung had not yet even responded to at the time that Rambus filed its motion, and on which Rambus never even attempted to meet and confer with Samsung. Additionally, Rambus’s motion seeks to compel documents in response to requests for production nos. 33 and 38 to Samsung, which were served by Rambus and responded to by Samsung long ago. See, e.g., Powers Decl., Ex. 6 at 33-34, 38-40 [3/23/07 Responses of Samsung to Rambus’s 1st set of Document Requests]. Rambus made no attempt to meet and confer with Samsung regarding its demand for GDDR5 related documents in response to document request nos. 33 and 38.

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THE ONLY ISSUE PROPERLY BEFORE THE COURT IS RAMBUS’S MOTION TO COMPEL A RESPONSE TO ITS RULE 30(B)(6) NOTICE OF DEPOSITION As explained above, Rambus has not even attempted to meet and confer regarding its old

document requests (its 1st set served on 10/13/05), or its new set of document requests (its sixth set, served on July 2, 2008, to which Samsung did not even submit responses before Rambus moved). Because Rambus has utterly failed to meet and confer on either its old document requests or its new document requests, the Court should deny the portions of Rambus’s motion seeking to compel responses to them.

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RAMBUS IS NOT ENTITLED TO BURDENSOME DISCOVERY HAVING MARGINAL, IF ANY, RELEVANCE Rambus’s motion presents a one-sided view of the law. It is true that that discovery is

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liberally allowed under Fed. R. Civ. P. 26. But that does not mean that Rambus is entitled to farreaching, wide-open discovery that is incredibly burdensome to Samsung and relates to issues that are of only marginal, if any, relevance to the case. And it certainly does not mean that Rambus is entitled to impose these burdens on Samsung at the eleventh hour, when Samsung and Rambus are only one month away from trial, especially given that Rambus was well aware of GDDR5 and could have sought discovery about it at least as early as a year ago. Rule 26(b)(1) of the Federal Rules of Civil Procedure provides that in general, “parties may obtain discovery regarding any non-privileged matter that is relevant to any party’s claim or defense . . . .” Rule 26(b)(2)(C), however, provides specific instances in which the Court must limit the frequency or extent of discovery:

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On motion or on its own, the court must limit the frequency or extent of discovery otherwise allowable by these rules or by local rule if it determines that:

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(i) the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive;

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(ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or (iii) the burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the case, the amount in controversy, the parties’ resources, the importance of the issues at stake in the action, and the importance of the discovery in resolving the issues. Fed. R. Civ. P. 26(b)(2)(C). This Court has often restricted discovery where the burden associated with it clearly outweighed its marginal relevance, especially where broad discovery is demanded shortly before trial. See, e.g., Planned Parenthood Fed. of Am., Inc. v. Ashcroft, No. C 03-4872 PJH, 2004 WL 432222, at *1, (N.D. Cal., Mar. 5, 2004) (denying motion to compel production of individual patient records because of tremendous burden of production in light of, among other considerations, the marginal probative value of the requested information, the short time frame before trial, and the enormity of the discovery requests); Meijer, Inc. v. Abbott Labs’, No. C 07-5985 CW, 2008 WL 2503007, at *3, (N.D. Cal., June 18, 2008) (denying motion to

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compel sales information because the burden of producing it far outweighed the limited potential of the requested data to provide insight into the issues of the case); Lawyers Title Ins. Corp. v. U.S. Fidelity & Guar. Co., 122 F.R.D. 567, 570 (N.D. Cal. 1988) (denying motion to compel production of claims information because the requested information “is too marginal in utility to justify the burden on defendant that complying with the requests as originally framed would entail”). Here, Rambus has had more than ample opportunity to obtain the information by discovery in the action. Rambus knew about GDDR5 at least a year ago, and has since deposed many Samsung witnesses who could have provided testimony about it. Instead of seeking discovery on GDDR5 at that time, Rambus has chosen to attempt to inject GDDR5 into this case at the eleventh hour, which unfairly prejudices Samsung’s ability to prepare for trial. Additionally, the burden that Rambus seeks to impose on Samsung far outweighs the importance of the discovery it seeks in resolving the issues in this case. (Indeed, if the discovery were important, Rambus would have undoubtedly sought it earlier.) The discovery sought by Rambus relating to GDDR5 in this case is of marginal relevance at best. As an initial matter, although Rambus has recently served, improperly, Final Infringement Contentions in an attempt to add GDDR5 to this case as an accused product, Rambus wisely does not attempt to claim that the discovery it is seeking is relevant to whether GDDR5 infringes its patents.

Such an argument must fail, since GDDR5 has not been accused in Rambus’s

infringement contentions, and Rambus has not sought leave—let alone obtained leave—from the Court to amend its infringement contentions to add a new product to the case at this late date. Instead, Rambus argues that discovery relating to GDDR5 is relevant to other issues, such as willful infringement by earlier products that are accused in this lawsuit, non-infringing alternatives, design around, and the value of Rambus’s patents. (See Mot. to Compel Samsung and Micron to Provide Disc. on Their New DRAM Products, Including GDDR5, and On Their Under-Development DRAM Products at 1). But the discovery that Rambus seeks bears marginal, if any, relevance to these issues.

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For example, Rambus argues that the discovery it seeks about GDDR5 is relevant to the issue of willful infringement, design-around issues, and non-infringing alternatives because it may turn “out that [Samsung’s] new products do not utilize certain of the features claimed by Rambus’s patents . . . .” (See Mot. to Compel Samsung and Micron to Provide Disc. on Their New DRAM Products, Including GDDR5, and On Their Under-Development DRAM Products at 6). But whether Samsung has willfully infringed Rambus’s patents by making or selling a nonaccused product is not relevant to whether Samsung willfully infringed Rambus’s patents in making or selling the accused products at an earlier date. Moreover, even if information about Samsung’s new products was somehow relevant to whether Samsung willfully infringed Rambus’s patents when it made or sold its old products, the discovery Rambus seeks is not tailored in any way to this issue. Rambus does not need a Rule 30(b)(6) witness to testify on dozens of wide-ranging topics, nor does Rambus need production of documents in response to a slew of extremely broad document requests, in order to determine what features are present in Samsung’s GDDR5 product.

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Rambus also argues that the discovery it seeks is relevant to failure to design around, and thus relevant to the value of Rambus’s inventions and the existence of non-infringing alternatives. (See Mot. to Compel Samsung and Micron to Provide Disc. on Their New DRAM Products, Including GDDR5, and On Their Under-Development DRAM Products at 6-7). But Samsung has already stated in its response to Rambus’s discovery requests that it has never believed that it has infringed any valid, enforceable patent claim asserted by Rambus and therefore has made no specific efforts to design around them. See Powers Decl., Ex. 7 at 7 [7/31/08 Objections To Rule 30(b)(6) Notice of Deposition]. Rambus thus has no need to force Samsung to prepare witnesses to testify on its broad 30(b)(6) topics or to produce the broad range of documents that it has demanded in its requests for production.

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CONCLUSION The discovery that Rambus is seeking is of marginal relevance to the issues in this case. It

certainly is not tailored to correspond to the narrow grounds of relevance that Rambus argues in

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its motion to compel. Rather, Rambus is seeking comprehensive discovery relating to GDDR5 as if it were an accused product in this case - it is not. Given that Samsung and Rambus are scheduled to commence trial on September 22, 2008, Samsung should not be forced to provide wide-ranging discovery on GDDR5 at this time, especially because Rambus could have sought this discovery much earlier if it were really important to Rambus’s case.

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Dated: August 13, 2008

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WEIL, GOTSHAL & MANGES, LLP

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By:

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/s/ David J. Healey David J. Healey

MATTHEW D. POWERS (Bar No. 104795) Email: [email protected] EDWARD R. REINES (Bar No. 135930) Email: [email protected]

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WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: (650) 802-3000 Facsimile: (650) 802-3100

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DAVID J. HEALEY (admitted pro hac vice) Email: [email protected] ANITA E. KADALA (admitted pro hac vice) Email: [email protected]

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WEIL, GOTSHAL & MANGES LLP 700 Louisiana, Suite 1600 Houston, TX 77002 Telephone: (713) 546-5000 Facsimile: (713) 224-9511

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Attorneys for Defendants SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR, L.P.

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