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Case 5:05-cv-00334-RMW
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O'MELVENY & MYERS LLP KENNETH R. O'ROURKE (SBN 120144) [email protected] WALLACE A. ALLAN (SBN 102054) [email protected] 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 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
18
RAMBUS INC.,
19
v.
22 23 24 25 26 27
Page 1 of 10
THELEN REID BROWN RAYSMAN & STEINER LLP KENNETH L. NISSLY (SBN 77589) [email protected] SUSAN van KEULEN (SBN 136060) [email protected] GEOFFREY H. YOST (SBN 159687) [email protected] 225 West Santa Clara Street, Suite 1200 San Jose, California 95113 Telephone: (408) 292-5800; Facsimile: (408) 287-8040
17
21
Filed 09/05/2008
TOWNSEND and TOWNSEND and CREW LLP DANIEL J. FURNISS (SBN 73531) [email protected] THEODORE G. BROWN, III (SBN 114672) [email protected] JORDAN TRENT JONES (SBN 166600) [email protected] 379 Lytton Avenue Palo Alto, California 94301 Telephone: (650) 326-2400; Facsimile: (650) 326-2422
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20
Document 2137
Plaintiff,
Case No. C 05-00334 RMW
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, L.P.,
HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS Date: Time: Ctrm: Judge:
September 19, 2008 9:00 a.m. 6 Ronald M. Whyte
NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION U.S.A., Defendants.
28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 1
Case 5:05-cv-00334-RMW
1 2 3 4
Document 2137
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Page 2 of 10
HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH,
5
v.
6
RAMBUS INC.,
7
Counterclaim Plaintiffs,
Counterdefendant.
8
I. INTRODUCTION
9 10 11 12 13 14
As detailed in Hynix's motion to strike those portions of Rambus' Final Infringement Contentions directed to Hynix's GDDR5 products (Dkt. 2035), Rambus has utterly failed to follow the Patent Local Rules governing such disclosures. Moreover, as will be discussed below, the excuses Rambus puts forth in its opposition (Dkt. 2114) are clearly inadequate. Rambus should not be rewarded for disregarding the court's rules and their attendant obligations.
15
II. ARGUMENT
16 17 18
A.
Rambus Has Violated the Court Rules Governing Infringement Contentions In its opposition, Rambus provides no basis under Patent Local Rule 3-6 – much less a "good
19
faith" basis – for the late addition of Hynix's GDDR5 products in Rambus' Final Infringement
20
Contentions filed August 1, 2008. In this regard, Hynix and Rambus are in total agreement: this
21
addition of new products is not warranted under Rule 3-6.
22
In trying to justify the late addition of Hynix's GDDR5 products, Rambus' first line of defense
23
is that the court's July 16, 2008 scheduling order (Dkt. 1963) authorized such an addition under Patent
24
Local Rule 3-7. This nonsensical argument places the cart before the horse by completely ignoring
25
the clear directions and obligations of Patent Local Rule 3-7. As pointed out in Hynix's initial motion,
26
a party must first move the court for the right to amend its infringement contentions – and must make
27
a "showing of good cause" as to why amendment is appropriate. The opposing party is provided an
28
opportunity to oppose the amendment, then the court makes its decision. Only then, can a party HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 2
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amend its contentions under Rule 3-7. There are several problems with the procedural end run that Rambus has attempted. First,
2 3
Rambus did not properly move the court for the right to include Hynix's GDDR5 products in its
4
infringement contentions. Second, it provided absolutely no showing of good cause to the court or to
5
Hynix. Instead of following the applicable rules, Rambus just made the amendments anyway. Third,
6
it was not until after Hynix filed a motion to strike all reference to the GDDR5 products that Rambus
7
finally makes an attempt, albeit an insufficient one, at establishing good cause to add the GDDR5
8
products. Once receiving its copy of Hynix's motion to strike on August 12, 2008, why did Rambus
9
not try at that point to obtain leave of court for the amendment it seeks? Rather, Rambus waited over
10
two weeks (i.e., until August 29, 2008) and only then indirectly sought permission to amend its
11
contentions – by way of its opposition to Hynix's motion to strike. Simply put, an opposition to a
12
motion to strike is not the proper procedural vehicle for demonstrating the "good cause" showing
13
called for in Patent Local Rule 3-7. Rambus argues three reasons why, "to the extent that the court's approval is necessary," court
14 15
approval should be granted: (1) Rambus acted diligently; (2) Hynix will suffer no prejudice; and
16
(3) judicial economy is served by Rambus' last minute addition of new products. Putting aside the
17
points that these arguments ignore the Patent Local Rules and that court approval is necessary– and
18
that Rambus' procedural violations should end all inquiry on this matter – each of the "reasons"
19
proffered by Rambus is without merit.
20
B.
21
Rambus Has Not Been Diligent In making a claim of diligence in its opposition, Rambus has chosen its words very carefully.
22
Rambus states at page 2 that it "only became aware of datasheets relating to production-ready GDDR5
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products in June 2008." Rambus' "awareness" referred to is not directed to any Hynix GDDR5
24
products or even GDDR5 products generally, which is the relevant inquiry, but is instead restrictively
25
directed to "datasheets." Rambus also limits its "awareness" to "production-ready" GDDR5 products,
26
even though the datasheet it references is a Qimonda datasheet, and the existence of a datasheet does
27
not indicate any "production readiness." Rambus' wordsmithing is no more than obfuscation; reality
28
paints a different picture. HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 3
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At several points throughout its initial motion, Hynix emphasizes the significant delay between
1 2
the time Rambus learned of Hynix's GDDR5 products and the time it first served discovery requests
3
specifically directed to these products. Giving Rambus the benefit of the doubt, Hynix suggested this
4
delay in properly following up with related discovery efforts (or subsequently seeking leave of the
5
court to amend its infringement contentions) amounted to approximately 8 months – namely, from the
6
time a Hynix press release on the GDDR5 appeared on Hynix's website in November 2007 to the time
7
of service of Rambus' fourth set of requests for production on July 2, 2008. A recent review of documents produced by Rambus in this case reveals that Rambus' period of
8 9
knowledge – and lack of diligence – is much greater (Brown Decl., ¶3 and Ex. A).1 Email
10
demonstrates that, at least as early as June 2006, Rambus knew of Hynix's plans for a GDDR5
11
product. In fact, these documents also demonstrate that Rambus and Hynix had meetings during this
12
same time frame in which Hynix's GDDR5 products were discussed. Consequently, upon closer
13
scrutiny, it becomes clear that Rambus actually wasted at least 25 months during which GDDR5-
14
specific discovery could have been served on Hynix. In the interim, Rambus did file Reply
15
Counterclaims (Dkt. 250) on July 9, 2007 accusing Hynix’s DDR3 and GDDR4 products of
16
infringement, without any mention of GDDR5 or any other actual or possible product. Rambus was
17
simply not diligent.
18
Rambus' attempted justification for not including GDDR5 claim charts in its Final
19
Infringement Contentions is also inadequate. Rambus maintains that it did not have the "specific
20
technical details" required to prepare claim charts for Hynix's GDDR5 products. First, Rambus'
21
tactics are a clear violation of the requirements of Patent Local Rule 3-1(c), which compels the
22
provision of a claim chart for each accused product. Second, if Rambus lacked the required details, it
23
has only itself to blame. The choice to conduct no discovery on the GDDR5 products for more than
24
two years, yet slip them into its infringement contentions four weeks prior to the close of fact
25
discovery, is a choice that Rambus alone made. It is a choice they should be forced to live with.
26 27
1
Exhibit A to this reply, which contains copies of the operative Rambus produced documents [R3801050-52 and R3455686-87], is being separately filed under seal.
28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 4
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1
Rambus also states at page 2 of its opposition that Hynix "refused to provide discovery with
2
respect to GDDR5." Yet again, a full and proper presentation of the facts tells a different story. As
3
discussed in Hynix's initial motion, after finally receiving GDDR5-specific requests for production
4
from Rambus in early July 2002, counsel for Hynix did not take the position that no GDDR5
5
documents would be produced. Rather, Hynix's counsel stated that Hynix had produced documents
6
relating to the development of GDDR5 by JEDEC, but would not provide further documents until
7
after Rambus had obtained leave of court to add these products to its infringement contentions (Brown
8
Decl., ¶2). Restated, Hynix's counsel requested only that Rambus follow the court's rules. This is far
9
from the absolute refusal to respond to discovery which Rambus conjures up in its opposition.
10
C.
11
Hynix Will Be Potentially Prejudiced If Rambus Is Allowed To Add To Its Infringement Contentions At This Late Date
12
Rambus' analysis of "prejudice to Hynix" at pages 3-4 of its motion is written as though there
13
are no impending case schedule deadlines to meet and as though trial was off somewhere in the distant
14
future. As the court is acutely aware, this is not the case. The court's Patent Trial Schedule Order
15 16 17 18 19 20 21 22 23
(Dkt. 1963) has set the following upcoming obligations: opening expert reports due September 5, 2008 (the same day this reply is being filed), rebuttal expert reports due September 26, close of expert discovery on October 10, dispositive and Daubert motions due October 17 (with oppositions and replies due two and three weeks thereafter, respectively) and, perhaps most importantly, trial is scheduled to begin January 19, 2009. Rambus' attempt to add Hynix's GDDR5 products as accused devices at this late juncture is highly likely – if not absolutely guaranteed – to make it difficult and unnecessarily onerous to meet all of the September and October case schedule obligations, particularly with respect to a new product for which Rambus seeks substantial additional discovery, after the close of fact discovery. Rambus' position that adding the GDDR5 products will "require only a de minimus amount of
24 25 26 27
additional work by the parties" is simply wrong.2
2
It must also be emphasized that the quoted and parenthetical citations utilized by Rambus in this section of its opposition are highly suspect, as will be detailed in section II.E below.
28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 5
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D.
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The "Judicial Economy" Argument Raised By Rambus Rings Hollow Rambus' argument, at pages 5-6 of its motion, that granting Hynix's motion to strike "would
2 3
lead to an unnecessary waste of judicial and party resources" is nothing more than a thinly disguised
4
rush to judgment. Granting Hynix's motion means only that all references to Hynix's GDDR5
5
products in Rambus' Final Infringement Contentions would be stricken – which amounts to nothing
6
more than proper enforcement of the Patent Local Rules. It does not necessarily mean that Rambus
7
must file a new patent infringement lawsuit to pursue Hynix's GDDR5 products. Rambus would still
8
be free to file a motion seeking leave of court to amend its infringement contentions – something it
9
should have done long ago.3 Moreover, Rambus' position completely overlooks the rationale for having local rules
10 11
governing infringement and invalidity contentions. Concerns over judicial economy are present in
12
every case, yet rules such as Northern District of California Patent Local Rules 3-6 and 3-7 exist to
13
help ensure the proper administration of patent infringement actions. If judicial economy were the
14
dominant consideration, these rules would not exist and a patentee would be free to add any newly
15
accused products right up to the time of trial, regardless of when it learned or should have learned of
16
them. As described in Hynix's opening motion, Patent Local Rules 3-6 and 3-7 require the early
17
disclosure of infringement and invalidity contentions – and allow subsequent modification only in
18
limited situations. They do so for very good reasons. Rambus' last minute and procedurally flawed
19
attempt to add Hynix's GDDR5 products as accused devices to its Final Infringement Contentions is
20
not one of these limited situations.
21
E.
22
Rambus' Legal Authority Is Inapplicable Here Rambus' use of Board of Trustees of the Leland Stanford Jr. University v. Roche Molecular,
23 24 25 26 27
3
However, Rambus' dilatory efforts in seeking GDDR5-related discovery and Rambus' last-minute, unauthorized attempt to add Hynix's GDDR5 to its Final Infringement Contentions, may well require a new lawsuit or, as it has requested for Micron and Samsung controllers, a separate trial. With a fact discovery cutoff date that has already passed, with the next two months being fully occupied with expert-related matters and dispositive motions, and with a January 19, 2008 trial date, all will agree that little or no flexibility remains in the case schedule.
28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 6
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1
No. C 05-04158, 2008 WL 624771 at *4 (N.D. Cal. Mar. 4, 2008) is most notable for what is not
2
mentioned in Rambus' papers. While the court did state that "judicial resources will be preserved if
3
the [Stanford infringement contentions] amendment is granted," the full statement is: "[h]aving
4
determined that Roche will not be prejudiced, the court notes that judicial resources will be
5
preserved if the [Stanford infringement contentions] amendment is granted." Stanford, unlike
6
Rambus, was diligent in its discovery efforts. In marked contrast to Rambus, Stanford served
7
discovery requests directed to the product in question one week after Roche announced its approval
8
for sale. Zoltar Satellite v. Motorola, No. C 06-00044, 2008 WL 913326 at *3 (N.D. Cal. Apr. 2, 2008),
9 10
cited for the proposition that allowing Rambus to add Hynix's GDDR5 devices as accused products at
11
this late date will "advance fair resolution of the issues on the merits," is even less helpful. First, just
12
as with the Roche case, the language Rambus quotes omits the underlying predicate that Zoltar would
13
not be prejudiced. Second, unlike Hynix in the present action, Zoltar made absolutely no showing to
14
the court of how it would be prejudiced. Third, unlike Rambus in the present action, Motorola had
15
properly filed a motion to amend its preliminary invalidity contentions. In short, it sought the court's
16
approval before it acted. Fourth, and most importantly, discovery was in the very early stages at the
17
time the court allowed Motorola's amendment to the invalidity contentions. In fact, discovery had not
18
really even begun – for the court had not yet set discovery deadlines or a trial date. Acco Brands v. PC Guardian, No. C 04-03526, 2008 WL 2168379 at *2 (N.D. Cal. May 22,
19 20
2008) similarly presents a case where the party filing a motion to amend preliminary invalidity
21
contentions was clearly diligent, where the opposing party made no claims of prejudice, and where the
22
court indicated a willingness to extend the discovery period. None of these things exist in the present
23
action. Moreover, Rambus conveniently omits the fact that a motion to strike defendants' final
24
invalidity contentions was granted.4 The reason the court gave for granting the motion to strike: "the
25
proper course would be for defendants to file a motion for leave to amend." Sounds familiar.
26 27
4
Note that the later filed motion to amend invalidity contentions was granted.
28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 7
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1
In its opposition, Rambus cites Golden Hour Data v. Health Services Integration, No. C 06-
2
7477, 2008 WL 2622794 at *4 (N.D. Cal. July 1, 2008) for the following parenthetical proposition:
3
"As expert discovery has not yet begun, Golden Hour's experts will have the opportunity to consider
4
the amended contentions." What Rambus fails to say is that, unlike Rambus, leave of the court had
5
been sought through the filing of a motion to amend preliminary invalidity contentions. Even more
6
important is the fact that this motion was filed more than 3 months before final invalidity contentions
7
were due, approximately 5 months prior to the fact discovery cutoff date and nearly 11 months prior to
8
trial. In addition, expert discovery had not yet begun.
9
Rambus also cites Golden Hour for the proposition that no prejudice was found where the
10
amendments did not raise new theories. Here, it is unclear whether or not the addition of Hynix's
11
GDDR5 products will "raise new theories." Although Rambus "anticipates . . . that Hynix's GDDR5
12
memory products are fundamentally similar to memory technology already at issue in this case,"
13
Rambus' anticipatory speculation may or may not prove correct. Furthermore, Rambus could have
14
made the same speculation months ago and provided a claim chart, as required by the Patent Local
15
Rules, based upon its "anticipation."
16
Seiko Epson v. Coretronic, No. C 06-06946, 2008 WL 2563383 at *3-4 (N.D. Cal. June 23,
17
2008), is also clearly factually inapposite. Seiko followed the rules and filed a motion seeking leave
18
of court to amend its infringement contentions and demonstrated "good cause." Coretronic delayed
19
for nearly a full year in responding to discovery requests specifically directed to the products sought to
20
be added, despite Seiko's diligent efforts to obtain this information through the discovery process.
21
Coretronic characterized the products sought to be added by Seiko as having "potentially . . . the same
22
configuration as used in the accused products." None of these circumstances is present here.
23
Rambus cites ZiLOG v. Quicklogic, No. C 03-03725, 2008 WL 563057 at *1 (N.D. Cal. Mar.
24
6, 2006) for the proposition that a delay of three months or less "constitutes sufficient diligence to
25
meet the 'good cause' standard." First, the delay at issue in ZiLOG was the time between the filing of
26
preliminary infringement contentions and the filing of a motion for leave to amend the contentions.
27
Here, Rambus filed its Preliminary Infringement Contentions in February 2007 and a "supplement" in
28
June 2007. Even though Rambus did not file a motion for leave to amend, Rambus' delay corresponds HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 8
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1
to 14 months – and possibly even 18 months if one starts with the date infringement contentions were
2
first filed by Rambus. Second, the "good cause" standard Rambus refers to is the standard of proof
3
under Patent Local Rule 3-7 on a motion to amend contentions, which Rambus has not made.
4
Dussouy v. Gulf Coast, 660 F.2d 594, 599-600 (5th Cir. 1981), which was not a patent case
5
and dealt with a motion to amend a pleading, is even less relevant. In the first sentence of its
6
quotation of the court's holding, Rambus omits the phrase "alleging a conspiracy between Gulf Coast
7
and its lawyers." The full quotation, which illuminates the issues involved and the reason for the
8
court’s holding, is:
9 10
. . . If the plaintiff cannot amend, his proper recourse is to file a new action alleging a conspiracy between Gulf Coast and its lawyers. [emphasis added]
11 12 13 14
Further, "[u]nlike the liberal policy for amending pleadings, the philosophy behind amending claims charts [in a party's infringement or invalidity contentions] is decidedly conservative." LG Electronics Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002).
15 16 17 18 19
III. CONCLUSION For the reasons described above, plus the reasons presented in its opening motion, Hynix respectfully requests that the court grant its motion to strike those portions of Rambus' Final Infringement Contentions directed to Hynix's GDDR5 products.
20 21
DATED: September 5, 2008
Respectfully submitted,
22 23 24 25 26 27 28
By: /s/ Theodore G. Brown, III Daniel J. Furniss Theodore G. Brown, III Jordan Trent Jones TOWNSEND and TOWNSEND and CREW LLP Kenneth L. Nissly Susan van Keulen Geoffrey H. Yost THELEN REID BROWN RAYSMAN & STEINER LLP
HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 9
Case 5:05-cv-00334-RMW
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Kenneth R. O'Rourke Wallace A. Allan O'MELVENY & MYERS LLP
2 3
Attorneys for HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH
4 5 6 7
Document 2137
61493859 v1
8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 10
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15
O'MELVENY & MYERS LLP KENNETH R. O'ROURKE (SBN 120144) [email protected] WALLACE A. ALLAN (SBN 102054) [email protected] 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 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
18
RAMBUS INC.,
19
v.
22 23 24 25 26 27
Page 1 of 10
THELEN REID BROWN RAYSMAN & STEINER LLP KENNETH L. NISSLY (SBN 77589) [email protected] SUSAN van KEULEN (SBN 136060) [email protected] GEOFFREY H. YOST (SBN 159687) [email protected] 225 West Santa Clara Street, Suite 1200 San Jose, California 95113 Telephone: (408) 292-5800; Facsimile: (408) 287-8040
17
21
Filed 09/05/2008
TOWNSEND and TOWNSEND and CREW LLP DANIEL J. FURNISS (SBN 73531) [email protected] THEODORE G. BROWN, III (SBN 114672) [email protected] JORDAN TRENT JONES (SBN 166600) [email protected] 379 Lytton Avenue Palo Alto, California 94301 Telephone: (650) 326-2400; Facsimile: (650) 326-2422
16
20
Document 2137
Plaintiff,
Case No. C 05-00334 RMW
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, L.P.,
HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS Date: Time: Ctrm: Judge:
September 19, 2008 9:00 a.m. 6 Ronald M. Whyte
NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION U.S.A., Defendants.
28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 1
Case 5:05-cv-00334-RMW
1 2 3 4
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HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH,
5
v.
6
RAMBUS INC.,
7
Counterclaim Plaintiffs,
Counterdefendant.
8
I. INTRODUCTION
9 10 11 12 13 14
As detailed in Hynix's motion to strike those portions of Rambus' Final Infringement Contentions directed to Hynix's GDDR5 products (Dkt. 2035), Rambus has utterly failed to follow the Patent Local Rules governing such disclosures. Moreover, as will be discussed below, the excuses Rambus puts forth in its opposition (Dkt. 2114) are clearly inadequate. Rambus should not be rewarded for disregarding the court's rules and their attendant obligations.
15
II. ARGUMENT
16 17 18
A.
Rambus Has Violated the Court Rules Governing Infringement Contentions In its opposition, Rambus provides no basis under Patent Local Rule 3-6 – much less a "good
19
faith" basis – for the late addition of Hynix's GDDR5 products in Rambus' Final Infringement
20
Contentions filed August 1, 2008. In this regard, Hynix and Rambus are in total agreement: this
21
addition of new products is not warranted under Rule 3-6.
22
In trying to justify the late addition of Hynix's GDDR5 products, Rambus' first line of defense
23
is that the court's July 16, 2008 scheduling order (Dkt. 1963) authorized such an addition under Patent
24
Local Rule 3-7. This nonsensical argument places the cart before the horse by completely ignoring
25
the clear directions and obligations of Patent Local Rule 3-7. As pointed out in Hynix's initial motion,
26
a party must first move the court for the right to amend its infringement contentions – and must make
27
a "showing of good cause" as to why amendment is appropriate. The opposing party is provided an
28
opportunity to oppose the amendment, then the court makes its decision. Only then, can a party HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 2
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amend its contentions under Rule 3-7. There are several problems with the procedural end run that Rambus has attempted. First,
2 3
Rambus did not properly move the court for the right to include Hynix's GDDR5 products in its
4
infringement contentions. Second, it provided absolutely no showing of good cause to the court or to
5
Hynix. Instead of following the applicable rules, Rambus just made the amendments anyway. Third,
6
it was not until after Hynix filed a motion to strike all reference to the GDDR5 products that Rambus
7
finally makes an attempt, albeit an insufficient one, at establishing good cause to add the GDDR5
8
products. Once receiving its copy of Hynix's motion to strike on August 12, 2008, why did Rambus
9
not try at that point to obtain leave of court for the amendment it seeks? Rather, Rambus waited over
10
two weeks (i.e., until August 29, 2008) and only then indirectly sought permission to amend its
11
contentions – by way of its opposition to Hynix's motion to strike. Simply put, an opposition to a
12
motion to strike is not the proper procedural vehicle for demonstrating the "good cause" showing
13
called for in Patent Local Rule 3-7. Rambus argues three reasons why, "to the extent that the court's approval is necessary," court
14 15
approval should be granted: (1) Rambus acted diligently; (2) Hynix will suffer no prejudice; and
16
(3) judicial economy is served by Rambus' last minute addition of new products. Putting aside the
17
points that these arguments ignore the Patent Local Rules and that court approval is necessary– and
18
that Rambus' procedural violations should end all inquiry on this matter – each of the "reasons"
19
proffered by Rambus is without merit.
20
B.
21
Rambus Has Not Been Diligent In making a claim of diligence in its opposition, Rambus has chosen its words very carefully.
22
Rambus states at page 2 that it "only became aware of datasheets relating to production-ready GDDR5
23
products in June 2008." Rambus' "awareness" referred to is not directed to any Hynix GDDR5
24
products or even GDDR5 products generally, which is the relevant inquiry, but is instead restrictively
25
directed to "datasheets." Rambus also limits its "awareness" to "production-ready" GDDR5 products,
26
even though the datasheet it references is a Qimonda datasheet, and the existence of a datasheet does
27
not indicate any "production readiness." Rambus' wordsmithing is no more than obfuscation; reality
28
paints a different picture. HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 3
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At several points throughout its initial motion, Hynix emphasizes the significant delay between
1 2
the time Rambus learned of Hynix's GDDR5 products and the time it first served discovery requests
3
specifically directed to these products. Giving Rambus the benefit of the doubt, Hynix suggested this
4
delay in properly following up with related discovery efforts (or subsequently seeking leave of the
5
court to amend its infringement contentions) amounted to approximately 8 months – namely, from the
6
time a Hynix press release on the GDDR5 appeared on Hynix's website in November 2007 to the time
7
of service of Rambus' fourth set of requests for production on July 2, 2008. A recent review of documents produced by Rambus in this case reveals that Rambus' period of
8 9
knowledge – and lack of diligence – is much greater (Brown Decl., ¶3 and Ex. A).1 Email
10
demonstrates that, at least as early as June 2006, Rambus knew of Hynix's plans for a GDDR5
11
product. In fact, these documents also demonstrate that Rambus and Hynix had meetings during this
12
same time frame in which Hynix's GDDR5 products were discussed. Consequently, upon closer
13
scrutiny, it becomes clear that Rambus actually wasted at least 25 months during which GDDR5-
14
specific discovery could have been served on Hynix. In the interim, Rambus did file Reply
15
Counterclaims (Dkt. 250) on July 9, 2007 accusing Hynix’s DDR3 and GDDR4 products of
16
infringement, without any mention of GDDR5 or any other actual or possible product. Rambus was
17
simply not diligent.
18
Rambus' attempted justification for not including GDDR5 claim charts in its Final
19
Infringement Contentions is also inadequate. Rambus maintains that it did not have the "specific
20
technical details" required to prepare claim charts for Hynix's GDDR5 products. First, Rambus'
21
tactics are a clear violation of the requirements of Patent Local Rule 3-1(c), which compels the
22
provision of a claim chart for each accused product. Second, if Rambus lacked the required details, it
23
has only itself to blame. The choice to conduct no discovery on the GDDR5 products for more than
24
two years, yet slip them into its infringement contentions four weeks prior to the close of fact
25
discovery, is a choice that Rambus alone made. It is a choice they should be forced to live with.
26 27
1
Exhibit A to this reply, which contains copies of the operative Rambus produced documents [R3801050-52 and R3455686-87], is being separately filed under seal.
28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 4
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1
Rambus also states at page 2 of its opposition that Hynix "refused to provide discovery with
2
respect to GDDR5." Yet again, a full and proper presentation of the facts tells a different story. As
3
discussed in Hynix's initial motion, after finally receiving GDDR5-specific requests for production
4
from Rambus in early July 2002, counsel for Hynix did not take the position that no GDDR5
5
documents would be produced. Rather, Hynix's counsel stated that Hynix had produced documents
6
relating to the development of GDDR5 by JEDEC, but would not provide further documents until
7
after Rambus had obtained leave of court to add these products to its infringement contentions (Brown
8
Decl., ¶2). Restated, Hynix's counsel requested only that Rambus follow the court's rules. This is far
9
from the absolute refusal to respond to discovery which Rambus conjures up in its opposition.
10
C.
11
Hynix Will Be Potentially Prejudiced If Rambus Is Allowed To Add To Its Infringement Contentions At This Late Date
12
Rambus' analysis of "prejudice to Hynix" at pages 3-4 of its motion is written as though there
13
are no impending case schedule deadlines to meet and as though trial was off somewhere in the distant
14
future. As the court is acutely aware, this is not the case. The court's Patent Trial Schedule Order
15 16 17 18 19 20 21 22 23
(Dkt. 1963) has set the following upcoming obligations: opening expert reports due September 5, 2008 (the same day this reply is being filed), rebuttal expert reports due September 26, close of expert discovery on October 10, dispositive and Daubert motions due October 17 (with oppositions and replies due two and three weeks thereafter, respectively) and, perhaps most importantly, trial is scheduled to begin January 19, 2009. Rambus' attempt to add Hynix's GDDR5 products as accused devices at this late juncture is highly likely – if not absolutely guaranteed – to make it difficult and unnecessarily onerous to meet all of the September and October case schedule obligations, particularly with respect to a new product for which Rambus seeks substantial additional discovery, after the close of fact discovery. Rambus' position that adding the GDDR5 products will "require only a de minimus amount of
24 25 26 27
additional work by the parties" is simply wrong.2
2
It must also be emphasized that the quoted and parenthetical citations utilized by Rambus in this section of its opposition are highly suspect, as will be detailed in section II.E below.
28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 5
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1
D.
Document 2137
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Page 6 of 10
The "Judicial Economy" Argument Raised By Rambus Rings Hollow Rambus' argument, at pages 5-6 of its motion, that granting Hynix's motion to strike "would
2 3
lead to an unnecessary waste of judicial and party resources" is nothing more than a thinly disguised
4
rush to judgment. Granting Hynix's motion means only that all references to Hynix's GDDR5
5
products in Rambus' Final Infringement Contentions would be stricken – which amounts to nothing
6
more than proper enforcement of the Patent Local Rules. It does not necessarily mean that Rambus
7
must file a new patent infringement lawsuit to pursue Hynix's GDDR5 products. Rambus would still
8
be free to file a motion seeking leave of court to amend its infringement contentions – something it
9
should have done long ago.3 Moreover, Rambus' position completely overlooks the rationale for having local rules
10 11
governing infringement and invalidity contentions. Concerns over judicial economy are present in
12
every case, yet rules such as Northern District of California Patent Local Rules 3-6 and 3-7 exist to
13
help ensure the proper administration of patent infringement actions. If judicial economy were the
14
dominant consideration, these rules would not exist and a patentee would be free to add any newly
15
accused products right up to the time of trial, regardless of when it learned or should have learned of
16
them. As described in Hynix's opening motion, Patent Local Rules 3-6 and 3-7 require the early
17
disclosure of infringement and invalidity contentions – and allow subsequent modification only in
18
limited situations. They do so for very good reasons. Rambus' last minute and procedurally flawed
19
attempt to add Hynix's GDDR5 products as accused devices to its Final Infringement Contentions is
20
not one of these limited situations.
21
E.
22
Rambus' Legal Authority Is Inapplicable Here Rambus' use of Board of Trustees of the Leland Stanford Jr. University v. Roche Molecular,
23 24 25 26 27
3
However, Rambus' dilatory efforts in seeking GDDR5-related discovery and Rambus' last-minute, unauthorized attempt to add Hynix's GDDR5 to its Final Infringement Contentions, may well require a new lawsuit or, as it has requested for Micron and Samsung controllers, a separate trial. With a fact discovery cutoff date that has already passed, with the next two months being fully occupied with expert-related matters and dispositive motions, and with a January 19, 2008 trial date, all will agree that little or no flexibility remains in the case schedule.
28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 6
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1
No. C 05-04158, 2008 WL 624771 at *4 (N.D. Cal. Mar. 4, 2008) is most notable for what is not
2
mentioned in Rambus' papers. While the court did state that "judicial resources will be preserved if
3
the [Stanford infringement contentions] amendment is granted," the full statement is: "[h]aving
4
determined that Roche will not be prejudiced, the court notes that judicial resources will be
5
preserved if the [Stanford infringement contentions] amendment is granted." Stanford, unlike
6
Rambus, was diligent in its discovery efforts. In marked contrast to Rambus, Stanford served
7
discovery requests directed to the product in question one week after Roche announced its approval
8
for sale. Zoltar Satellite v. Motorola, No. C 06-00044, 2008 WL 913326 at *3 (N.D. Cal. Apr. 2, 2008),
9 10
cited for the proposition that allowing Rambus to add Hynix's GDDR5 devices as accused products at
11
this late date will "advance fair resolution of the issues on the merits," is even less helpful. First, just
12
as with the Roche case, the language Rambus quotes omits the underlying predicate that Zoltar would
13
not be prejudiced. Second, unlike Hynix in the present action, Zoltar made absolutely no showing to
14
the court of how it would be prejudiced. Third, unlike Rambus in the present action, Motorola had
15
properly filed a motion to amend its preliminary invalidity contentions. In short, it sought the court's
16
approval before it acted. Fourth, and most importantly, discovery was in the very early stages at the
17
time the court allowed Motorola's amendment to the invalidity contentions. In fact, discovery had not
18
really even begun – for the court had not yet set discovery deadlines or a trial date. Acco Brands v. PC Guardian, No. C 04-03526, 2008 WL 2168379 at *2 (N.D. Cal. May 22,
19 20
2008) similarly presents a case where the party filing a motion to amend preliminary invalidity
21
contentions was clearly diligent, where the opposing party made no claims of prejudice, and where the
22
court indicated a willingness to extend the discovery period. None of these things exist in the present
23
action. Moreover, Rambus conveniently omits the fact that a motion to strike defendants' final
24
invalidity contentions was granted.4 The reason the court gave for granting the motion to strike: "the
25
proper course would be for defendants to file a motion for leave to amend." Sounds familiar.
26 27
4
Note that the later filed motion to amend invalidity contentions was granted.
28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 7
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1
In its opposition, Rambus cites Golden Hour Data v. Health Services Integration, No. C 06-
2
7477, 2008 WL 2622794 at *4 (N.D. Cal. July 1, 2008) for the following parenthetical proposition:
3
"As expert discovery has not yet begun, Golden Hour's experts will have the opportunity to consider
4
the amended contentions." What Rambus fails to say is that, unlike Rambus, leave of the court had
5
been sought through the filing of a motion to amend preliminary invalidity contentions. Even more
6
important is the fact that this motion was filed more than 3 months before final invalidity contentions
7
were due, approximately 5 months prior to the fact discovery cutoff date and nearly 11 months prior to
8
trial. In addition, expert discovery had not yet begun.
9
Rambus also cites Golden Hour for the proposition that no prejudice was found where the
10
amendments did not raise new theories. Here, it is unclear whether or not the addition of Hynix's
11
GDDR5 products will "raise new theories." Although Rambus "anticipates . . . that Hynix's GDDR5
12
memory products are fundamentally similar to memory technology already at issue in this case,"
13
Rambus' anticipatory speculation may or may not prove correct. Furthermore, Rambus could have
14
made the same speculation months ago and provided a claim chart, as required by the Patent Local
15
Rules, based upon its "anticipation."
16
Seiko Epson v. Coretronic, No. C 06-06946, 2008 WL 2563383 at *3-4 (N.D. Cal. June 23,
17
2008), is also clearly factually inapposite. Seiko followed the rules and filed a motion seeking leave
18
of court to amend its infringement contentions and demonstrated "good cause." Coretronic delayed
19
for nearly a full year in responding to discovery requests specifically directed to the products sought to
20
be added, despite Seiko's diligent efforts to obtain this information through the discovery process.
21
Coretronic characterized the products sought to be added by Seiko as having "potentially . . . the same
22
configuration as used in the accused products." None of these circumstances is present here.
23
Rambus cites ZiLOG v. Quicklogic, No. C 03-03725, 2008 WL 563057 at *1 (N.D. Cal. Mar.
24
6, 2006) for the proposition that a delay of three months or less "constitutes sufficient diligence to
25
meet the 'good cause' standard." First, the delay at issue in ZiLOG was the time between the filing of
26
preliminary infringement contentions and the filing of a motion for leave to amend the contentions.
27
Here, Rambus filed its Preliminary Infringement Contentions in February 2007 and a "supplement" in
28
June 2007. Even though Rambus did not file a motion for leave to amend, Rambus' delay corresponds HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 8
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1
to 14 months – and possibly even 18 months if one starts with the date infringement contentions were
2
first filed by Rambus. Second, the "good cause" standard Rambus refers to is the standard of proof
3
under Patent Local Rule 3-7 on a motion to amend contentions, which Rambus has not made.
4
Dussouy v. Gulf Coast, 660 F.2d 594, 599-600 (5th Cir. 1981), which was not a patent case
5
and dealt with a motion to amend a pleading, is even less relevant. In the first sentence of its
6
quotation of the court's holding, Rambus omits the phrase "alleging a conspiracy between Gulf Coast
7
and its lawyers." The full quotation, which illuminates the issues involved and the reason for the
8
court’s holding, is:
9 10
. . . If the plaintiff cannot amend, his proper recourse is to file a new action alleging a conspiracy between Gulf Coast and its lawyers. [emphasis added]
11 12 13 14
Further, "[u]nlike the liberal policy for amending pleadings, the philosophy behind amending claims charts [in a party's infringement or invalidity contentions] is decidedly conservative." LG Electronics Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002).
15 16 17 18 19
III. CONCLUSION For the reasons described above, plus the reasons presented in its opening motion, Hynix respectfully requests that the court grant its motion to strike those portions of Rambus' Final Infringement Contentions directed to Hynix's GDDR5 products.
20 21
DATED: September 5, 2008
Respectfully submitted,
22 23 24 25 26 27 28
By: /s/ Theodore G. Brown, III Daniel J. Furniss Theodore G. Brown, III Jordan Trent Jones TOWNSEND and TOWNSEND and CREW LLP Kenneth L. Nissly Susan van Keulen Geoffrey H. Yost THELEN REID BROWN RAYSMAN & STEINER LLP
HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 9
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1
Filed 09/05/2008
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Kenneth R. O'Rourke Wallace A. Allan O'MELVENY & MYERS LLP
2 3
Attorneys for HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH
4 5 6 7
Document 2137
61493859 v1
8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 HYNIX'S REPLY TO ITS MOTION TO STRIKE PORTIONS OF RAMBUS' FINAL INFRINGEMENT CONTENTIONS CASE NO. C 05-00334 RMW - 10
