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Case 5:05-cv-00334-RMW
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 FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
18
RAMBUS INC.,
19
v.
22 23 24 25 26 27
Page 1 of 6
THELEN 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 10/24/2008
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 2472
Plaintiff,
Case No. C 05-00334 RMW
HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC.,
NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, L.P.,
NOTICE OF JOINDER IN MOTION OF DEFENDANTS MICRON AND SAMSUNG FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT (MSJ NO. 7)
NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION U.S.A., Defendants
Date: December 2, 2008 Time: 2:00 p.m. Location: Courtroom 6, 4th Floor Ctrm: Hon. Ronald M. Whyte
28 NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
1
Case 5:05-cv-00334-RMW
1 2 3 4
Filed 10/24/2008
Page 2 of 6
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
Document 2472
Counterclaim Plaintiffs,
Counterdefendant.
8 9 10
NOTICE OF MOTION AND MOTION PLEASE TAKE NOTICE that on December 2, 2008, at 2:00 p.m., or as soon thereafter as
11
counsel may be heard, before the Honorable Ronald M. Whyte in Courtroom 6 of the United States
12
District Court for the Northern District of California, located at 280 First Street, San Jose California
13
95110, Defendants Hynix Semiconductor, Inc., Hynix Semiconductor America Inc., Hynix
14
Semiconductor Manufacturing America, Inc., Hynix Semiconductor U.K., Ltd., and Hynix
15
Semiconductor Deutschland GmbH, (collectively, “Hynix”) will and hereby do move, pursuant to
16
Federal Rule of Civil Procedure 56, for summary judgment or, in the alternative, partial summary
17
judgment, on Rambus’s claims that Hynix has willfully infringed the patents-in-suit.
18
PLEASE TAKE FURTHER NOTICE that Hynix hereby joins in the Motion of Defendants
19
Micron and Samsung For Summary Judgment of No Willfulness, which is set for hearing at the same
20
date and time. Hynix is entitled to summary judgment or, in the alternative, partial summary
21
judgment on Rambus’s claims that Hynix has willfully infringed the patents-in-suit for the reasons
22
stated and under the legal authorities cited in the Motion of Defendants Micron and Samsung For
23
Summary Judgment of No Willfulness.
24
This motion is based on the Memorandum of Points and Authorities attached to the Motion of
25
Defendants Micron and Samsung For Summary Judgment of No Willfulness, the supporting
26
Declaration of John Beynon and exhibits submitted therewith, the Supplemental Hynix Memorandum
27
of Points and Authorities attached hereto, the accompanying Declaration of Theodore G. Brown, III in
28
Support of Motions for Summary Judgment and Daubert Motions and exhibits submitted therewith, NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
2
Case 5:05-cv-00334-RMW
Document 2472
Filed 10/24/2008
Page 3 of 6
1
the pleadings and records on file in this action, and such additional authority and argument as may be
2
presented in Micron and Samsung’s reply and at any hearing on this Motion.
3 4
SUPPLEMENTAL HYNIX MEMORANDUM OF POINTS AND AUTHORITIES
5
Hynix joins in the motion of Micron and Samsung for Summary Judgment of No Willfulness.
6
With some differences, discussed below, Hynix is similarly situated as Micron and Samsung in this
7
litigation, and, for similar reasons, Rambus cannot meet its burden of establishing Hynix’s “objective
8
recklessness” would be a necessary predicate to any finding of willfulness.
9
In addition to the decisions in Europe regarding Rambus’s EP ‘068 and GPTO ‘296 patents
10
(discussed in Micron and Samsung's Motion), the European Patent Office has issued decisions in
11
connection with Rambus’s European patent EP 1 004 956 (“the EP 956 patent”) that are fully
12
consistent with Mr. McAlexander’s expert opinion that Rambus’s claims asserted in this litigation are
13
invalid for failure to meet the written description requirement of 35 U.S.C. § 112. See Brown Decl.
14
Exh. BB (excerpts of McAlexander Expert Report on Invalidity at 135-136).
15
The claims of the EP 956 patent are directed to the “block size information” or programmable
16
burst length feature found in asserted claim 14 of the ‘184 patent, claim 33 of the ‘120 patent, claim
17
28 of the ‘916 patent, and claim 16 of the ‘863 patent. Initially, the Opposition Division of the EPO
18
revoked this patent in its entirety because the claims were so much broader than anything disclosed in
19
Rambus’s original (PCT) specification, which is the same as Rambus’s original April, 1990
20
application, No. 510,898, filed in the US Patent Office. Brown Decl. ¶ 27 and Exh. W. Following
21
Rambus’s appeal, the EPO Board of Appeals allowed Rambus’s claim, but only after it was amended
22
to include limitations to the (so-called) narrow, multiplexed bus, request packets, device-select
23
information carried on the bus as part of the control information, a modifiable address register on the
24
memory device, and other features disclosed in Rambus’s original patent specification and claims.
25
Brown Decl. ¶ 28 and Exh. X. Mr. McAlexander relies on the lack of limitations relating to the
26
narrow, multiplexed bus and to request packets in Rambus's claims as part of the basis of his opinions
27
of invalidity. See Brown Decl. Exh. BB at 135-136.
28
Hynix is aware that it is differently situated in some respects than Micron or Samsung. In NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
3
Case 5:05-cv-00334-RMW
Document 2472
Filed 10/24/2008
Page 4 of 6
1
particular, the Court has ruled against Hynix on its defense of unclean hands based on Rambus’s
2
spoliation of evidence. However, a ruling against a party is not evidence that its position was so
3
frivolous or weak that continuation of its activities when other defenses remained to be determined
4
cannot be considered evidence of “objective recklessness”, especially where other courts have made
5
different rulings on substantially the same record. E.g., ResQNet.com, Inc. v. Lansa, Inc., 533 F.
6
Supp. 2d 397 (S.D.N.Y 2008) (infringer's position, although ultimately unsuccessful, was not
7
objectively reckless where its arguments were substantial, reasonable, and far from the sort of easily-
8
dismissed claims that an objectively reckless infringer would be forced to rely upon.)
9
Rambus’s basis for its claims that any Hynix’s willfully infringed Rambus’s patents in suit is
10
set out in Rambus's Response (Brown Decl. Exh Y, page 7) and its Supplemental Response to Hynix’s
11
Interrogatory No. 3 (Brown Decl. Exh Z). Like Rambus’s stated bases for its willful infringement
12
claims against Micron and Samsung, Rambus’s responses describe acts that long predate the issuance
13
of the patents in suit and are not relevant to the “objective recklessness” inquiry. Some of Rambus’s
14
statements are directed to Hynix-specific acts, and bear further examination.
15
Rambus cites Exhibit 5020 from the 2006 patent trial as referring to “Rambus technology in
16
connection with incorporating dual-edge clocking and an on-chip DLL in its product.” Brown Decl.
17
¶ 31 and Exh. AA at page 2:5-7. Presumably, Rambus will argue, as it has in the past, that this
18
evidences copying by Hynix. Rambus ignores the only fair reading of the document, which is that the
19
reference to RDRAM in this document is a pointer to a way of implementing a 50% duty cycle
20
(internal) clock, and not to any dual-edge clocking or on-chip DLL technology used by Rambus, either
21
in its patents or its technology. Even so, this December, 1996 document has no relevance to any
22
willfulness inquiry, since, as Rambus’s expert Mr. Murphy admitted, there is no evidence either of any
23
similarity between and Hynix duty cycle correction circuit and any Rambus circuit, and no evidence
24
that any of the Rambus patents in suit either disclose or claim any duty cycle correction. Brown Decl.
25
Exh. R (Murphy transcript) at pages 712:7 – 713:12.
26
Rambus also argues that the verdict in the 2006 Rambus-Hynix patent trial, and Hynix’s
27
continued manufacture and sales of JEDEC-standard DRAMs are further evidence of willfulness.
28
This evidence is legally insufficient to avoid a grant of summary judgment to Hynix, for several NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
4
Case 5:05-cv-00334-RMW
Document 2472
Filed 10/24/2008
Page 5 of 6
1
reasons. First, as pointed out by Micron and Samsung, there are numerous instances in which no
2
willfulness has been found despite a verdict of infringement. See Motion of Defendants Micron and
3
Samsung For Summary Judgment of No Willfulness, at pages 11-12. Second, of the 12 claims
4
Rambus has elected for trial in this case, four were previously tried in the 2006 Patent Trial, but all
5
four of those claims are under reexamination, and three have been rejected by the Patent Office, with
6
the fourth still awaiting a decision by the Patent Office. Brown Decl. ¶¶ 24 - 26. Third, Hynix has
7
filed several motions for a new trial or Judgment as a Matter of Law as all claims tried on obviousness
8
(Case No. 00-cv-20905 Docket Nos. 2073, 2078, 2566, 2954, 3653), non-infringement (Case No. 00-
9
cv-20905 Docket Nos. 2068, 2069, 2070, 2071), and invalidity for failure to satisfy the written
10
description requirement (Case No. 00-cv-20905 Docket Nos. 2067). These motions are under
11
submission, but have not been decided. The pendency of these motions is further evidence that
12
Hynix’s conduct is not “objectively reckless,” despite the adverse jury verdict. Due to the phasing of
13
the trials, Hynix's conduct-related claims and defenses were not tried until nearly two years after the
14
patent verdict, and some of its enforceability defenses (such as equitable estoppel) also remain to be
15
decided
16
To the extent that Rambus bases its claims of willfulness in this suit, filed in January 2005, on
17
Hynix’s continued manufacture and sale of JEDEC-standard synchronous DRAMs after the patent
18
trial verdict in 2006, Rambus’s claims are belied by its failure to seek any injunctive relief against
19
such activities in this case, and its failure to do so in the “Hynix only” case, Case No. 00-cv-20905
20
(Docket No. 3663), until over two years after the patent verdict. As the Federal Circuit noted in In re
21
Seagate Technology, LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007) (citations omitted):
22 23 24 25 26 27 28
So a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the accused infringer's pre-filing conduct. By contrast, when an accused infringer's post-filing conduct is reckless, a patentee can move for a preliminary injunction, which generally provides an adequate remedy for combating post-filing willful infringement. A patentee who does not attempt to stop an accused infringer's activities in this manner should not be allowed to accrue enhanced damages based solely on the infringer's post-filing conduct. Similarly, if a patentee attempts to secure injunctive relief but fails, it is likely the infringement did not rise to the level of recklessness. Accordingly, Rambus’s own inaction is, in effect, an admission that it cannot overcome its burden of proving willfulness. NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
5
Case 5:05-cv-00334-RMW
1 2 3
Document 2472
Filed 10/24/2008
Page 6 of 6
CONCLUSION For the foregoing reasons, the Court should grant summary judgment in favor of Hynix on the issue of willfulness.
4 5
DATED: October 24, 2008
Respectfully submitted,
6 7
By: /s/ Theodore G. Brown, III Daniel J. Furniss Theodore G. Brown, III Jordan Trent Jones TOWNSEND and TOWNSEND and CREW LLP
8 9 10
Kenneth L. Nissly Susan van Keulen Geoffrey H. Yost THELEN LLP
11 12
Kenneth R. O'Rourke Wallace A. Allan O'MELVENY & MYERS LLP
13 14
Attorneys for HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH
15 16 17 18
61629122 v1
19 20 21 22 23 24 25 26 27 28 NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
6
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 FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
18
RAMBUS INC.,
19
v.
22 23 24 25 26 27
Page 1 of 6
THELEN 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 10/24/2008
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 2472
Plaintiff,
Case No. C 05-00334 RMW
HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC.,
NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, L.P.,
NOTICE OF JOINDER IN MOTION OF DEFENDANTS MICRON AND SAMSUNG FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT (MSJ NO. 7)
NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION U.S.A., Defendants
Date: December 2, 2008 Time: 2:00 p.m. Location: Courtroom 6, 4th Floor Ctrm: Hon. Ronald M. Whyte
28 NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
1
Case 5:05-cv-00334-RMW
1 2 3 4
Filed 10/24/2008
Page 2 of 6
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
Document 2472
Counterclaim Plaintiffs,
Counterdefendant.
8 9 10
NOTICE OF MOTION AND MOTION PLEASE TAKE NOTICE that on December 2, 2008, at 2:00 p.m., or as soon thereafter as
11
counsel may be heard, before the Honorable Ronald M. Whyte in Courtroom 6 of the United States
12
District Court for the Northern District of California, located at 280 First Street, San Jose California
13
95110, Defendants Hynix Semiconductor, Inc., Hynix Semiconductor America Inc., Hynix
14
Semiconductor Manufacturing America, Inc., Hynix Semiconductor U.K., Ltd., and Hynix
15
Semiconductor Deutschland GmbH, (collectively, “Hynix”) will and hereby do move, pursuant to
16
Federal Rule of Civil Procedure 56, for summary judgment or, in the alternative, partial summary
17
judgment, on Rambus’s claims that Hynix has willfully infringed the patents-in-suit.
18
PLEASE TAKE FURTHER NOTICE that Hynix hereby joins in the Motion of Defendants
19
Micron and Samsung For Summary Judgment of No Willfulness, which is set for hearing at the same
20
date and time. Hynix is entitled to summary judgment or, in the alternative, partial summary
21
judgment on Rambus’s claims that Hynix has willfully infringed the patents-in-suit for the reasons
22
stated and under the legal authorities cited in the Motion of Defendants Micron and Samsung For
23
Summary Judgment of No Willfulness.
24
This motion is based on the Memorandum of Points and Authorities attached to the Motion of
25
Defendants Micron and Samsung For Summary Judgment of No Willfulness, the supporting
26
Declaration of John Beynon and exhibits submitted therewith, the Supplemental Hynix Memorandum
27
of Points and Authorities attached hereto, the accompanying Declaration of Theodore G. Brown, III in
28
Support of Motions for Summary Judgment and Daubert Motions and exhibits submitted therewith, NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
2
Case 5:05-cv-00334-RMW
Document 2472
Filed 10/24/2008
Page 3 of 6
1
the pleadings and records on file in this action, and such additional authority and argument as may be
2
presented in Micron and Samsung’s reply and at any hearing on this Motion.
3 4
SUPPLEMENTAL HYNIX MEMORANDUM OF POINTS AND AUTHORITIES
5
Hynix joins in the motion of Micron and Samsung for Summary Judgment of No Willfulness.
6
With some differences, discussed below, Hynix is similarly situated as Micron and Samsung in this
7
litigation, and, for similar reasons, Rambus cannot meet its burden of establishing Hynix’s “objective
8
recklessness” would be a necessary predicate to any finding of willfulness.
9
In addition to the decisions in Europe regarding Rambus’s EP ‘068 and GPTO ‘296 patents
10
(discussed in Micron and Samsung's Motion), the European Patent Office has issued decisions in
11
connection with Rambus’s European patent EP 1 004 956 (“the EP 956 patent”) that are fully
12
consistent with Mr. McAlexander’s expert opinion that Rambus’s claims asserted in this litigation are
13
invalid for failure to meet the written description requirement of 35 U.S.C. § 112. See Brown Decl.
14
Exh. BB (excerpts of McAlexander Expert Report on Invalidity at 135-136).
15
The claims of the EP 956 patent are directed to the “block size information” or programmable
16
burst length feature found in asserted claim 14 of the ‘184 patent, claim 33 of the ‘120 patent, claim
17
28 of the ‘916 patent, and claim 16 of the ‘863 patent. Initially, the Opposition Division of the EPO
18
revoked this patent in its entirety because the claims were so much broader than anything disclosed in
19
Rambus’s original (PCT) specification, which is the same as Rambus’s original April, 1990
20
application, No. 510,898, filed in the US Patent Office. Brown Decl. ¶ 27 and Exh. W. Following
21
Rambus’s appeal, the EPO Board of Appeals allowed Rambus’s claim, but only after it was amended
22
to include limitations to the (so-called) narrow, multiplexed bus, request packets, device-select
23
information carried on the bus as part of the control information, a modifiable address register on the
24
memory device, and other features disclosed in Rambus’s original patent specification and claims.
25
Brown Decl. ¶ 28 and Exh. X. Mr. McAlexander relies on the lack of limitations relating to the
26
narrow, multiplexed bus and to request packets in Rambus's claims as part of the basis of his opinions
27
of invalidity. See Brown Decl. Exh. BB at 135-136.
28
Hynix is aware that it is differently situated in some respects than Micron or Samsung. In NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
3
Case 5:05-cv-00334-RMW
Document 2472
Filed 10/24/2008
Page 4 of 6
1
particular, the Court has ruled against Hynix on its defense of unclean hands based on Rambus’s
2
spoliation of evidence. However, a ruling against a party is not evidence that its position was so
3
frivolous or weak that continuation of its activities when other defenses remained to be determined
4
cannot be considered evidence of “objective recklessness”, especially where other courts have made
5
different rulings on substantially the same record. E.g., ResQNet.com, Inc. v. Lansa, Inc., 533 F.
6
Supp. 2d 397 (S.D.N.Y 2008) (infringer's position, although ultimately unsuccessful, was not
7
objectively reckless where its arguments were substantial, reasonable, and far from the sort of easily-
8
dismissed claims that an objectively reckless infringer would be forced to rely upon.)
9
Rambus’s basis for its claims that any Hynix’s willfully infringed Rambus’s patents in suit is
10
set out in Rambus's Response (Brown Decl. Exh Y, page 7) and its Supplemental Response to Hynix’s
11
Interrogatory No. 3 (Brown Decl. Exh Z). Like Rambus’s stated bases for its willful infringement
12
claims against Micron and Samsung, Rambus’s responses describe acts that long predate the issuance
13
of the patents in suit and are not relevant to the “objective recklessness” inquiry. Some of Rambus’s
14
statements are directed to Hynix-specific acts, and bear further examination.
15
Rambus cites Exhibit 5020 from the 2006 patent trial as referring to “Rambus technology in
16
connection with incorporating dual-edge clocking and an on-chip DLL in its product.” Brown Decl.
17
¶ 31 and Exh. AA at page 2:5-7. Presumably, Rambus will argue, as it has in the past, that this
18
evidences copying by Hynix. Rambus ignores the only fair reading of the document, which is that the
19
reference to RDRAM in this document is a pointer to a way of implementing a 50% duty cycle
20
(internal) clock, and not to any dual-edge clocking or on-chip DLL technology used by Rambus, either
21
in its patents or its technology. Even so, this December, 1996 document has no relevance to any
22
willfulness inquiry, since, as Rambus’s expert Mr. Murphy admitted, there is no evidence either of any
23
similarity between and Hynix duty cycle correction circuit and any Rambus circuit, and no evidence
24
that any of the Rambus patents in suit either disclose or claim any duty cycle correction. Brown Decl.
25
Exh. R (Murphy transcript) at pages 712:7 – 713:12.
26
Rambus also argues that the verdict in the 2006 Rambus-Hynix patent trial, and Hynix’s
27
continued manufacture and sales of JEDEC-standard DRAMs are further evidence of willfulness.
28
This evidence is legally insufficient to avoid a grant of summary judgment to Hynix, for several NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
4
Case 5:05-cv-00334-RMW
Document 2472
Filed 10/24/2008
Page 5 of 6
1
reasons. First, as pointed out by Micron and Samsung, there are numerous instances in which no
2
willfulness has been found despite a verdict of infringement. See Motion of Defendants Micron and
3
Samsung For Summary Judgment of No Willfulness, at pages 11-12. Second, of the 12 claims
4
Rambus has elected for trial in this case, four were previously tried in the 2006 Patent Trial, but all
5
four of those claims are under reexamination, and three have been rejected by the Patent Office, with
6
the fourth still awaiting a decision by the Patent Office. Brown Decl. ¶¶ 24 - 26. Third, Hynix has
7
filed several motions for a new trial or Judgment as a Matter of Law as all claims tried on obviousness
8
(Case No. 00-cv-20905 Docket Nos. 2073, 2078, 2566, 2954, 3653), non-infringement (Case No. 00-
9
cv-20905 Docket Nos. 2068, 2069, 2070, 2071), and invalidity for failure to satisfy the written
10
description requirement (Case No. 00-cv-20905 Docket Nos. 2067). These motions are under
11
submission, but have not been decided. The pendency of these motions is further evidence that
12
Hynix’s conduct is not “objectively reckless,” despite the adverse jury verdict. Due to the phasing of
13
the trials, Hynix's conduct-related claims and defenses were not tried until nearly two years after the
14
patent verdict, and some of its enforceability defenses (such as equitable estoppel) also remain to be
15
decided
16
To the extent that Rambus bases its claims of willfulness in this suit, filed in January 2005, on
17
Hynix’s continued manufacture and sale of JEDEC-standard synchronous DRAMs after the patent
18
trial verdict in 2006, Rambus’s claims are belied by its failure to seek any injunctive relief against
19
such activities in this case, and its failure to do so in the “Hynix only” case, Case No. 00-cv-20905
20
(Docket No. 3663), until over two years after the patent verdict. As the Federal Circuit noted in In re
21
Seagate Technology, LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007) (citations omitted):
22 23 24 25 26 27 28
So a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the accused infringer's pre-filing conduct. By contrast, when an accused infringer's post-filing conduct is reckless, a patentee can move for a preliminary injunction, which generally provides an adequate remedy for combating post-filing willful infringement. A patentee who does not attempt to stop an accused infringer's activities in this manner should not be allowed to accrue enhanced damages based solely on the infringer's post-filing conduct. Similarly, if a patentee attempts to secure injunctive relief but fails, it is likely the infringement did not rise to the level of recklessness. Accordingly, Rambus’s own inaction is, in effect, an admission that it cannot overcome its burden of proving willfulness. NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
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Case 5:05-cv-00334-RMW
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Document 2472
Filed 10/24/2008
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CONCLUSION For the foregoing reasons, the Court should grant summary judgment in favor of Hynix on the issue of willfulness.
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DATED: October 24, 2008
Respectfully submitted,
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By: /s/ Theodore G. Brown, III Daniel J. Furniss Theodore G. Brown, III Jordan Trent Jones TOWNSEND and TOWNSEND and CREW LLP
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Kenneth L. Nissly Susan van Keulen Geoffrey H. Yost THELEN LLP
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Kenneth R. O'Rourke Wallace A. Allan O'MELVENY & MYERS LLP
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Attorneys for HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH
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61629122 v1
19 20 21 22 23 24 25 26 27 28 NOTICE OF MOTION AND MOTION OF DEFENDANT HYNIX FOR SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT AND NOTICE OF JOINDER (MSJ NO. 7) – CASE NO. C 05-00334 RMW
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