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Gregory P. Stone (SBN 078329) Steven M. Perry (SBN 106154) David C. Yang (SBN 246132) MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, 35th Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 Email: [email protected] Email: [email protected] Email: [email protected]

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Peter A. Detre (SBN 182619) Carolyn Hoecker Luedtke (SBN 207976) Jennifer L. Polse (SBN 219202) MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (415) 512-4077 Email: [email protected] Email: [email protected] Email: [email protected]

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Attorneys for RAMBUS INC.

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Pierre J. Hubert (Pro Hac Vice) Craig N. Tolliver (Pro Hac Vice) McKOOL SMITH PC 300 West 6th Street, Suite 1700 Austin, TX 78701 Telephone: (512) 692-8700 Facsimile: (512) 692-8744 Email: [email protected] Email: [email protected]

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

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RAMBUS INC.,

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Plaintiff, v.

18 HYNIX SEMICONDUCTOR INC., et al, 19 Defendants.

CASE NO. C 05-00334 RMW REPLY IN SUPPORT OF RAMBUS’S MOTION TO COMPEL SAMSUNG TO PRODUCE DISCOVERY RELATING TO (1) SALES OF ACCUSED PRODUCTS; and (2) MEMORY CONTROLLERS

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RAMBUS INC.,

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CASE NO. C 05-02298 RMW

Plaintiff, v.

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August 25, 2008 8:30 a.m. Telephonic Hearing Hon. Read Ambler (Ret.)

SAMSUNG ELECTRONICS CO., LTD., et al, Defendants.

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I.

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does not say. With respect to sales data, Samsung fails to offer any response to Rambus’s argument that it is entitled to the requested data in native or electronically useful format. With respect to memory controllers, Samsung fails to specify any actual – as opposed to theoretically possible – prejudice it would suffer if required to produce discovery in response to Rambus’s narrowly tailored requests. For these reasons, and those set forth in Rambus’s Opening Brief, Rambus respectfully requests that the Special Master grant its motion and order the immediate production of the requested discovery relating to sales data and memory controllers. II.

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Sales Related Discovery Rambus agrees with Samsung that it should not have needed to bring its motion to

compel concerning clearly relevant sales data which Samsung agreed to produce long ago and for which Samsung’s Opposition demonstrates no resistance to producing the data eventually. Unfortunately, Samsung refused to respond to Rambus’s basic inquiries about the databases it maintains, and to provide a date certain by which it would produce the requested discovery. Even in responding to Rambus’s motion to compel, Samsung continues to ignore Rambus’s concerns – including with respect to Rambus’s request for the production of sales data in native format and for a complete, substantive response to Interrogatories 6 and 8. Thus, it is clearly disingenuous for Samsung to assert that “by the date of the hearing, Samsung will have mooted the issues in Rambus’s motion, with the exception of the requested controller discovery.” Samsung’s Opposition to Rambus Inc.’s Motion To Compel Samsung to Produce Discovery Relating to (1) Sales of Accused Products; and (2) Memory Controllers (“Opp. Br.”) at 14.

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RESPONSES TO SAMSUNG’S ARGUMENTS IN OPPOSITION A.

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Samsung’s Opposition to Rambus’s Motion to Compel is most notable in what it

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INTRODUCTION

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Native format production of sales data is a major emphasis of Rambus’s motion to compel, spanning more than two full pages of argument, and was an emphasis of Rambus’s meet and confer efforts. See Mot. To Compel at 7-10; Declaration Of Andrea Weiss Jeffries In Support Of Rambus Inc.’s Motion To Compel (“Jeffries Decl.”) ¶ 6; id. at Exs. K, N-Q, DD

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(meet and confer correspondence). By ignoring this aspect of Rambus’s motion, Samsung has

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effectively conceded that native production is proper and forfeited any argument to the contrary.

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Samsung should thus be ordered immediately to produce all of the discovery requested by

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Rambus and which it says it has agreed to produce and will produce before the date of the hearing

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on this motion (August 25) in electronically useful format. That is, the result of the database

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searches that Samsung admits to be performing should be exported to Excel or other software that

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permits Rambus’s experts to search and sort the data in the same way as Samsung is able to do.

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See Mot. to Compel at 7-10.1

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To the extent Samsung had some reasonable argument against producing in native

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format – which it does not – any such argument would be overridden here given the extent of

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Samsung’s delay in producing these sales data. See id.

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Likewise, despite Rambus’s arguments that Samsung should be compelled to

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provide proper responses to Interrogatories 6 and 8, Samsung’s Opposition Brief only offers a

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brief conclusory representation that “Samsung will likewise supplement its responses to

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Rambus’s Interrogatory Nos. 6 and 8 as appropriate based on its forthcoming supplemental

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production of sales documents.” Opp. Br. at 15. This vague comment that does not commit to

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any specific supplementation by any date certain is the same response that Rambus encountered

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in the meet and confer process and thus prompted Rambus to move to compel a response to these

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Interrogatories. Mot. to Compel at 10. Rambus is entitled to Samsung’ position on the products

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that it contends were subject to the Rambus-Samsung license and to Samsung’s responses on

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worldwide and U.S. sales.

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Finally, Samsung’s request that the Court deny Rambus’s motion as it relates to the production of samples of underlying invoices should be denied. See Opp. Br. at 15. As

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Samsung’s Opposition does confirm what Rambus has suspected – but could not learn from Samsung in the meet and confer process – which is that Samsung keeps its sales data in searchable electronic databases, not voluminous, static unsearchable, unsortable PDF files like those Samsung has produced to Rambus. See Opp’n at 13-15; Declaration of Carmen E. Bremer In Support Of Samsung’s Opposition To Rambus Inc.’s Motion To Compel (“Bremer Decl.”), Ex. 20 (Declaration of Huiman Lee); Jeffries Decl., Ex. X (Samsung sales data produced in static form). 5793281.1

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Samsung’s brief and the Declaration of Samsung employee Huiman Lee demonstrate, the

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verification of the accuracy of Samsung’s sales data requires cross-reference by Samsung

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personnel to the underlying sales records. Opp. Br. at 14-15; Bremer Decl., Ex. 20 at ¶ 6.

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Rambus should not be required to simply take Samsung at its word, but likewise should be

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afforded an opportunity to verify the veracity of the sales reports that Samsung is producing.

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Furthermore, Rambus has only asked for a sampling of underlying invoices, Mot. Compel at 4 – a

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factor ignored by Samsung in its argument that the provision of underlying invoices is too

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burdensome. B.

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The Discovery Requested Is Relevant and Discoverable Given The Current State Of The Case

Samsung spends the bulk of its opposition to Rambus’s request for discovery on memory controllers arguing that such discovery is irrelevant because memory controllers “will not be before the jury because they were not properly accused of infringement.” Opp. Br. at 8; see generally id. at 8-11. Samsung’s argument presupposes that Judge Whyte will grant Samsung’s Motion to Strike Rambus’s Final Infringement Contentions, a motion that is scheduled to be heard on September 19. In other words, Samsung tries to convince this Court that the requested information is outside the scope of discovery now because of how Judge Whyte may rule on a different motion a month from now, well after the discovery cut off, and, more importantly, three weeks after Rambus’s expert reports are due (September 5). Thus, Samsung resists producing information about its memory controllers now in order to secure a win by default on its September 19 motion to strike. Such a result would not only be unfair to Rambus, but is also contrary to Fed. R. Civ. P. 26.

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Discovery Relating To Memory Controllers

As explained in Rambus’s opening brief, discovery is not governed by the Patent Local Rules. See Mot. to Compel at 11-12. The requested discovery is now, and has always been, within the proper scope of discovery. As outlined in Rambus’s Opening Brief, Samsung’s memory controllers were identified as Accused Products in the operative complaints in the -2298 and -334 matters, and were clearly specified within the definition of Accused Products in

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Rambus’s documents requests. Mot. to Compel at 2-3.2 Samsung’s memory controllers were

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also specifically identified as Accused Instrumentalities in Rambus’s Final Infringement

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Contentions served on August 1, 2008. Jeffries Decl., Ex. S at 6, 31-53 (charts).

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Samsung asserts that it objected to Rambus’s document requests, and Rambus

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should be barred from obtaining discovery on controllers because Rambus did not pursue the

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issue until July 2008. Opp. Br. at 5. Yet, Samsung’s objections and responses to Rambus’s

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document requests were insufficient to put Rambus on notice that Samsung would not be

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producing documents and information regarding its memory controllers.

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In response to the individual document requests, Samsung offered a litany of

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objections, but often agreed to produce response documents with no reservations as to the scope

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of the Accused Products for which documents would be produced. E.g., Bremer Decl., Ex. 10 at

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6-7 (“Subject to [its objections,] Samsung will produce non-privileged, responsive documents,

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within Samsung’s possession, custody, or control, sufficient to show the actual design

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implemented in the Accused Products and the implementation of those designs in production of

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the Accused Products”), 8 (“Subject to [its objections,] Samsung will produce non-privileged,

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responsive documents within Samsung’s possession, custody, or control, sufficient to show the

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final manufacture, packaging, or assembly of the Accused Products”).

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In response to some requests, Samsung did specify a more limited scope of

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production, but did so by referring to the “features” of the Accused Products. E.g., Bremer Decl.,

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Ex. 10 at 15-16 (“Subject to [its objections,] Samsung will produce non-privileged, responsive

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Samsung’s repeated characterization of Rambus’s definitions of “Accused Products” as “boilerplate” in order to dismiss them as unimportant is nonsensical. The term “boilerplate” refers to standard paragraphs or provisions that do not change from one document to the next, such as a standard warranty provision in a contract. A definition cannot properly be characterized as “boilerplate.” Some of Rambus’s requests for production expressly refer to memory controllers without reference to the definition of Accused Products. See, e.g., Jeffries Decl., Ex. A at 8. Further, Rambus’s definition of “Accused Products,” although consistently including memory controllers, is not identical from one set of requests to the next, but rather incorporates slightly different product descriptions. Compare, e.g., id., Ex. A at ¶ 8 with id., Ex. H at ¶ 8. Indeed, Samsung’s objections come far closer to “boilerplate” in that they are repeated over and over from one response to the next, without a proper description of what would and would not be produced. See, e.g., id.., Ex. U at 6-12, 14-18; Ex. W at 7, 9-11. 5793281.1

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documents, within Samsung’s possession, custody, or control, sufficient to show the final design,

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implementation of design, final manufacture, and operation of the features of the Accused

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Products that Rambus has accused of infringement”), 17-18 (same), 25-26 (nearly the same), 32-

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33 (“Samsung will produce any non-privileged documents, within Samsung’s possession,

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custody, or control, sufficient to show the review, testing, reverse-engineering, or analysis of the

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features of the Accused Products that Rambus has accused of infringement, as well as activities

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undertaken to design around any of the Patents-in-suit.”).

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Neither approach signaled to Rambus that production of discovery relating to memory controllers would not be forthcoming. As is a well known practice, parties provide many

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objections so as to preserve them, but are expected to produce documents consistent with their

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agreements to produce. See Fed. R. Civ. P. 34(b)(2)(C) (“Objections. An objection to part of a

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request must specify the part and permit inspection of the rest.”). Thus, because memory

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controllers were not specifically carved out of the scope of Samsung’s agreements to produce,

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Rambus was required to actually review Samsung’s voluminous production to appreciate that

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Samsung was refusing to produce documents regarding memory controllers. Thus, Rambus did

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not “wait” until July 2008 to pursue discovery on controllers. Opp. Br. at 5. Rather it recognized

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on or about that time that Samsung had failed to produce requested documentation, and began the

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meet and confer process well in advance of the discovery cut off and due date for the submission

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of Final Infringement Contentions.

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Samsung also contends that Rambus should be deprived of all discovery on

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memory controllers because it failed to provide detailed infringement contentions regarding

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Rambus’s memory controllers in its 2006 and 2007 Preliminary Infringement Contentions. Opp.

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Br. at 4, 10-11. Yet, Samsung only provided its unclear discovery responses in March 2007, with

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documents on memory controllers expected over the next several months. Indeed, Samsung

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continued to produce documents throughout 2007 and 2008. Prior to the receipt of the requested

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technical information regarding Samsung’s memory controllers, Rambus was not in a position to

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provide detailed contentions regarding controllers – this is precisely why Rambus has brought this

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contentions regarding Samsung’s memory controllers, and for its experts to provide detailed

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opinions. Samsung should not be permitted to take advantage of its unilateral and ambiguously

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expressed refusal to produce documents regarding specified Accused Products to now prevent

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Rambus from pursuing its patent claims to the full extent of Samsung’s infringement.3 C.

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Samsung’s Claims Of Prejudice and Undue Burden Ring Hollow

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In order to prevail on its motion to strike, and to successfully resist discovery here,

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Samsung must demonstrate actual prejudice. E.g.,Bd. of Trs. of the Leland Stanford Junior Univ.

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v. Roche Molecular Sys., 2008 WL 624771 at *2 (N.D. Cal. Mar. 4, 2008). Samsung has

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identified possible ways in which it could, theoretically, be prejudiced, but that is insufficient.

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For example, Samsung argues that it “has no time to issue discovery requests or to take

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depositions” regarding memory controllers, yet fails to specify what sort of fact discovery

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Samsung would take of Rambus regarding the design and operation of Samsung’s memory

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controllers. Opp. Br. at 11. Obviously, all of the relevant factual information regarding

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Samsung’s devices is within Samsung’s possession and control.4

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Similarly, Samsung argues that it “has no time to identify disputed claim terms in

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light of Rambus’s infringement contentions and theories, nor does it have the ability to take and

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present claim-construction positions and have a Markman hearing in front of Judge Whyte.”

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Opp. Br. at 11-12. Yet, Samsung fails to identify any terms of the three patent claims asserted

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against memory controllers for which the landscape has changed. As discussed in Rambus’s

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opening brief, these three patent claims are straightforward claims, clearly directed to memory,

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and were put in issue in its Preliminary Infringement Contentions in nearly the same way as they

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are in issue now, even though Samsung’s memory controllers were, technically, not specified as

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Accused Instrumentalities. See Mot. to Compel at 12-13; compare, e.g., Jeffries Decl., Ex. AA at

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In its Final Infringement Contentions, Rambus set forth what it could regarding Samsung’s controllers, but Samsung complains that the contentions are not sufficiently detailed. Id. at 11. Again, Rambus requires the technical information from Samsung in order to provide detailed contentions. 4 Samsung will have ample opportunity to conduct expert discovery on memory controllers, as expert discovery has not yet commenced. 5793281.1

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51 and Ex. BB at 51 with Ex. S at 31.

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Moreover, as highlighted by Samsung’s own Opposition Brief, Samsung has been

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aware that Rambus’s patents cover its memory controllers since at least 2000, when Samsung and

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Rambus entered a license agreement expressly covering its memory controllers as licensed

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products. Opp. Br. at 3. Under the License Agreement, Samsung was obligated to identify,

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report sales of, and pay royalties on its memory controllers. It is disingenuous for Samsung to

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now complain that this term is “undefined,” Opp. Br. at 12, and that it has no understanding as to

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how its memory controllers come within the scope of Rambus’s patent claims. And, as described

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in Rambus’s Opening Brief, Rambus has accused Samsung’s controllers from the very beginning

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of this litigation. Mot. to Compel at 2-3.

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Thus, Samsung is not only unable to show that it will suffer prejudice in response

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to the instant motion to compel, but also with respect to the inclusion of memory controllers as

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Accused Instrumentalities in Rambus’s Final Infringement Contentions, thus calling into question

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its assertions about its likelihood of prevailing on its motion to strike in the first instance.

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With respect to its assertions of undue burden, Samsung’s arguments are also

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disingenuous. Samsung vastly overstates the scope of Rambus’s requests, and then asserts that it

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would be extremely burdensome for it to comply. Opp. Br. at 12. Yet, as made clear in

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Rambus’s opening brief, Rambus is seeking only that information sufficient to show the way in

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which Samsung’s memory controllers control the DRAM products with which they interface.

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Mot. to Compel at 15. Although Rambus has identified approximately 70 part numbers, this does

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not mean that the requested information would require production of substantial documentation

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for 70 distinct parts (i.e. several part numbers could correspond to the same or very similar parts).

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Nor does it mean that the responsive documents would be difficult to collect or voluminous.

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Indeed, it is quite likely that there is substantial overlap with respect to the way in which these

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controller parts control the DRAM with which they interface, and, Rambus has offered to reach

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agreement on representative products so as to minimize Samsung’s production. Id. Samsung has

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not responded to that proposal.

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