2308

Case 5:05-cv-00334-RMW

1 2 3 4 5

Document 2308

Filed 09/29/2008

Page 1 of 6

ROBERT E. FREITAS (STATE BAR NO. 80948) CRAIG R. KAUFMAN (STATE BAR NO. 159458) VICKIE L. FEEMAN (STATE BAR NO. 177487) THERESA E. NORTON (STATE BAR NO. 193530) JASON S. ANGELL (STATE BAR NO. 221607) ORRICK, HERRINGTON & SUTCLIFFE LLP 1000 Marsh Road Menlo Park, CA 94025 Telephone: 650-614-7400 Facsimile: 650-614-7401

6 7

Attorneys for Defendants and Counterclaim Plaintiffs NANYA TECHNOLOGY CORPORATION and NANYA TECHNOLOGY CORPORATION USA

8 9

UNITED STATES DISTRICT COURT

10

NORTHERN DISTRICT OF CALIFORNIA

11

SAN JOSE DIVISION

12 13

RAMBUS INC., Plaintiff,

14 15 16 17 18 19 20 21 22 23

Case No. CV-05-00334 RMW

v. 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., NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION USA,

DEFENDANT AND COUNTERCLAIM PLAINTIFF NANYA USA’S REPLY TO RAMBUS INC.’S OPPOSITION TO NANYA USA’S MOTION TO COMPEL RAMBUS INC. TO RESPOND TO NANYA USA’S SECOND SET OF INTERROGATORIES TO RAMBUS INC. (NOS. 2-4) Date: Time: Location: Judge:

October 1, 2008 8:30 a.m. Telephonic Hearing Hon. Read A. Ambler (Ret.)

Defendants.

24 25

AND RELATED ACTIONS.

26 27 28 REPLY RE NANYA USA’S MOTION TO COMPEL RAMBUS TO RESPOND TO INTERROGATORIES NOS. 2-4 CV-05-00334 RMW

Case 5:05-cv-00334-RMW

Document 2308

Filed 09/29/2008

Page 2 of 6

1

In its motion, Nanya Technology Corporation USA (“Nanya USA”) seeks to compel

2

Rambus, Inc. (“Rambus”) to respond to three contention interrogatories. Rambus refuses to

3

respond to this discovery request, relying on its interpretation of an ambiguous and undefined

4

term from the Court’s Joint Case Management Order (“CMO”). Rambus has brought

5

independent infringement allegations against Nanya USA. Nanya USA is entitled to know the

6

basis for these allegations against it. Indeed, Nanya USA needs to obtain this discovery in order

7

to properly prepare for trial. Rambus refuses to provide this discovery, and continues to conflate

8

Nanya Technology Corporation ("Nanya") and Nanya USA as if they were a single defendant.

9

The Court should order Rambus to provide this discovery to Nanya USA, either on the basis of

10

Nanya USA’s interpretation of the CMO, or alternatively on the ground that good cause exists to

11

compel Rambus to answer these additional discovery requests.

12

I.

13 14

NANYA USA SEEKS TO DISCOVER THE FACTS UNDERLYING RAMBUS’ CLAIMS ASSERTED AGAINST IT Nanya and Nanya USA each served three contention interrogatories seeking to discover

15

the facts underlying Rambus’ claims against them of a) infringement, b) inducement, and c)

16

willfulness. Rambus answered Nanya’s three contention interrogatories but refuses to answer

17

Nanya USA’s identical contention interrogatories. A fundamental question for this motion,

18

therefore, is whether Rambus’ responses to Nanya USA’s interrogatories would be different than

19

the responses it already provided to Nanya’s identical interrogatories. Nanya USA offered

20

Rambus the opportunity to state that its responses would not be different, and avoid motion

21

practice on this issue.1 Rambus refused. Nanya USA can only assume, therefore, that Rambus’

22

answers to these three interrogatories would be different as to Nanya USA. There is no other

23

1

24 25 26 27 28

Nanya and Nanya USA wrote the following to Rambus in a meet and confer letter: Rambus also stated that “the facts supporting infringement by Nanya also support infringement by Nanya USA.” If Rambus is willing to agree that it has no information responsive to Nanya USA’s Second Set of Interrogatories (Nos. 2-4) in addition to, or different than, Rambus’ responses to Nanya’s Third Set of Interrogatories (Nos. 3-5), we may be able to avoid the need for a full set of responses to Nanya USA’s interrogatories.

Declaration of L. Kieran Kieckhefer in support of Nanya USA’s motion (“Kieckhefer Decl.”), Exh. F at page 2. Rambus refused this offer. Id., ¶ 8. -1-

REPLY RE NANYA USA’S MOTION TO COMPEL RAMBUS TO RESPOND TO INTERROGATORIES NOS. 2-4 CV-05-00334 RMW

Case 5:05-cv-00334-RMW

Document 2308

Filed 09/29/2008

Page 3 of 6

1

logical reason for Rambus to refuse to represent that its answers would be the same and to force

2

motion practice on this issue.

3

Rambus argues in its opposition that Nanya and Nanya USA should have “crafted” their

4

interrogatories “to seek information necessary as to all of the Nanya entities . . . .” Rambus’

5

Opposition at 5. Rambus is attempting to place the Nanya parties in a Catch-22. Nanya and

6

Nanya USA drafted separate sets of contention interrogatories for the purpose of clarity, because

7

Rambus has asserted its infringement claims against each of them as individual defendants.

8

Nanya and Nanya USA believe that had they drafted such joint interrogatories, one of two

9

circumstances would have occurred: 1) Rambus would have either refused to answer as to one

10

(or both) of them on the grounds that seeking the information as to both defendants rendered the

11

interrogatories compound; or, 2) Rambus would have answered in general and unspecific terms,

12

with facts supposedly relating to both defendants. Rambus appears now to take the position that

13

it would have provided a response to interrogatories seeking the requested information as to both

14

Nanya and Nanya USA. Rambus’ Opposition at 5. If Rambus had indeed engaged in the

15

hypothetical second course of action, neither Nanya nor Nanya USA would have been able to tell

16

which facts purportedly applied to which entity.

17

The problem of Rambus regarding Nanya and Nanya USA collectively as a single

18

defendant is evident in Rambus’ opposition. Throughout its brief, Rambus generally refers to an

19

entity it calls “Nanya,” without ever defining this term or making it clear whether it refers to

20

Nanya Technology Corporation, Nanya Technology Corporation USA, or both. Moreover,

21

Rambus’ lack of differentiation between Nanya and Nanya USA is obvious in its characterization

22

of its infringement claims. See Rambus’ Opposition at 3:7-9 (“Rambus’s complaints . . . name

23

not only the parent companies, but also various . . . subsidiaries through which the parents

24

manufacture, import, and/or sell the accused products.”) and 3:22-24 (same) (emphasis added). If

25

it is Rambus’ contention that it is only the parent companies that are engaging in the allegedly

26

infringing acts, then Rambus should dismiss its claims against the subsidiaries such as Nanya

27

USA. If not, then Rambus should provide discovery into the bases of its stand-alone claims

28

against Nanya USA. Rambus’ confusion is also shown by its contradictory position with respect -2-

REPLY RE NANYA USA’S MOTION TO COMPEL RAMBUS TO RESPOND TO INTERROGATORIES NOS. 2-4 CV-05-00334 RMW

Case 5:05-cv-00334-RMW

Document 2308

Filed 09/29/2008

Page 4 of 6

1

to its willful infringement claims against Nanya USA. Rambus’ Opposition at 4, n.3 (Rambus

2

first states that it is not pursuing “separate” claims of willful infringement against Nanya and

3

Nanya USA, but then states that it has asserted willful infringement claims “as to both Nanya

4

entities.”). Rambus characterizes the fact that Nanya and Nanya USA are separate defendants as

5

“irrelevant” (Opposition at 4, n.3) and does not seem to appreciate the implications of the fact that

6

it has to prove up its claims of infringement and willfulness as to both of them.

7

II.

8

AMBIGUITY IN THE CASE MANAGEMENT ORDER CANNOT BE CONSTRUED TO RESULT IN A WAIVER OF NANYA USA’S RIGHT TO DISCOVER THE BASES OF RAMBUS’ CLAIMS AGAINST IT

9

Nanya USA’s interpretation of the CMO is consistent with its view that Nanya and Nanya

10

USA are both entitled to fundamental information regarding the facts in support of Rambus’

11

claims against them. The CMO states that the “Manufacturers may . . . each propound up to 5

12

additional individualized interrogatories.” See CMO, Dkt. No 174, section 5.e.(2) at page 11.

13

The term “Manufacturers” is not defined in the CMO, but appears to include the various Micron,

14

Hynix, Samsung, and Nanya parties. Therefore, as both Nanya and Nanya USA are

15

“Manufacturers,” they should each be permitted to propound interrogatories on Rambus seeking

16

the facts underlying Rambus’ claims against them for infringement, inducement, and willfulness.

17

Moreover, unlike the other Manufacturers, the instant action is the only one in which Nanya and

18

Nanya USA have participated against Rambus. Accordingly, unlike other Manufacturers who

19

can draw on a wealth of historical discovery from Rambus, Nanya and Nanya USA had to begin

20

from the beginning to discover the bases of Rambus’ claims against them.

21

Rambus, however, has a different interpretation of the term “Manufacturers.” Rambus

22

argues that section 5.e.(3) of the CMO implies that the CMO envisioned only four

23

“Manufacturers.” As the term is not defined, however, Rambus reaches its conclusion through

24

implication only. Therefore, Rambus’ argument demonstrates that the language of the CMO is

25

ambiguous and can be interpreted in different ways, as Nanya, Nanya USA and Rambus have

26

done. Under Rambus’ interpretation, however, either Nanya or Nanya USA will be precluded

27

from obtaining information regarding the facts underlying Rambus’ claims.

28

The Court should hold that this ambiguity in the CMO should not result in limiting Nanya -3-

REPLY RE NANYA USA’S MOTION TO COMPEL RAMBUS TO RESPOND TO INTERROGATORIES NOS. 2-4 CV-05-00334 RMW

Case 5:05-cv-00334-RMW

Document 2308

Filed 09/29/2008

Page 5 of 6

1

USA’s right to discover the bases of Rambus’ infringement contentions against it. It would be

2

extraordinary to conclude that a latent ambiguity in a case management order should result in a

3

party giving up its rights to discovery, particularly in the absence of any discussion or argument

4

on the point.

5

III.

6

NANYA USA’S ABILITY TO PREPARE ITS DEFENSE AGAINST RAMBUS’ CLAIMS WOULD BE SERIOUSLY PREJUDICED IF RAMBUS DOES NOT PROVIDE THE REQUESTED DISCOVERY

7

As stated above, the requested information is fundamental to Nanya USA’s defense. In

8

order to meet the requirements of Rule 11, Rambus must have had such information in its

9

possession on the day it brought suit against Nanya USA. Therefore, these discovery requests do

10

not request unusual or burdensome information – these requests pertain to information Rambus

11

must have had in its possession from the beginning. Such discovery requests are traditionally

12

served in almost every patent infringement case where willful or contributory infringement is

13

alleged, and should have been expected by Rambus. Furthermore, Nanya USA’s contention

14

interrogatories are identical to those Rambus already answered on behalf of Nanya. If it is true

15

that Rambus would have responded to both Nanya and Nanya USA’s requests had the two sets of

16

interrogatories been in the form of one set of interrogatories as implied by Rambus’ opposition,

17

then there should be no burden to Rambus to answering these interrogatories now.

18

Conversely, the prejudice to Nanya USA if Rambus is allowed to avoid providing this

19

discovery would be enormous. Nanya USA will be prevented from conducting discovery into the

20

facts in support of Rambus’ claims against Nanya USA for a) infringement, b) inducement, and c)

21

willfulness. Nanya USA would have to guess as to what evidence Rambus might introduce at

22

trial. Therefore, even if the Court agrees with Rambus’ interpretation of the term

23

“Manufacturers” from the CMO, the Court should still order Rambus to answer Nanya USA’s

24

three contention interrogatories. As described above, good cause therefore exists to permit this

25

discovery.

26

Rambus’ remaining arguments relating to the alleged burden that would result from such

27

an order have no merit. As discovery has closed, the dire predictions Rambus makes regarding

28

additional discovery that the Manufacturers could propound will never come to pass. This motion -4-

REPLY RE NANYA USA’S MOTION TO COMPEL RAMBUS TO RESPOND TO INTERROGATORIES NOS. 2-4 CV-05-00334 RMW

Case 5:05-cv-00334-RMW

Document 2308

Filed 09/29/2008

Page 6 of 6

1

seeks only Rambus’ response to three interrogatories propounded long ago. A Court order

2

granting this discrete request cannot result in a flood of new and additional discovery requests. In

3

addition, Rambus’ argument that it would be burdensome to respond to this discovery because the

4

parties are in the middle of expert discovery (with its implication that this motion is untimely), is

5

not well-taken. Rambus already responded to identical to interrogatories from Nanya, and it

6

should hardly be burdensome to respond to them on behalf of Nanya USA as well. Moreover,

7

Nanya USA filed this motion to compel on the date permitted by the rules, and now is the time

8

for the Court to compel additional fact discovery should it deem appropriate. The hypocrisy of

9

this argument is also shown by the fact that Rambus filed its own pending motions to compel

10

various fact discovery from Nanya and Nanya USA.

11

IV.

12 13

CONCLUSION For the foregoing reasons, Nanya USA respectfully requests that the Court order Rambus

to respond to Nanya USA’s Second Set of Interrogatories (Nos. 2-4).

14 15

Dated: September 29, 2008

16 17

ROBERT E. FREITAS CRAIG R. KAUFMAN VICKIE L. FEEMAN THERESA E. NORTON JASON S. ANGELL Orrick, Herrington & Sutcliffe LLP

18 /s/ Theresa E. Norton Theresa E. Norton

19 20

Attorneys for Defendant and Counterclaim Plaintiff NANYA TECHNOLOGY CORPORATION U.S.A.

21 22

OHS West:260522272.2

23 24 25 26 27 28 -5-

REPLY RE NANYA USA’S MOTION TO COMPEL RAMBUS TO RESPOND TO INTERROGATORIES NOS. 2-4 CV-05-00334 RMW