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Case 3:08-cv-03343-SI
1 2 3 4 5 6 7 8 9 10
McKOOL SMITH P.C.
300 Crescent Court, Suite 1500 Dallas, TX 75201
11 12 13 14 15 16 17 18 19
Julie S. Turner (State Bar No. 191146) Karen I. Boyd (State Bar No. 189808) TURNER BOYD LLP 2625 Middlefield Rd. #675 Palo Alto, California 94306 Telephone: (650) 494-1530 Facsimile: (650) 472-8028 Email: [email protected] Email: [email protected] Attorneys for Plaintiff RAMBUS INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION RAMBUS INC.,
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25
Page 1 of 19
Scott L. Cole (pro hac vice) Pierre J. Hubert (pro hac vice) Craig N. Tolliver (pro hac vice) McKOOL SMITH P.C. 300 W. 6th Street Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Facsimile: (512) 692-8744 Email: [email protected]; [email protected]; [email protected]
21
24
Filed 12/17/2008
Mike McKool, Jr. (pro hac vice) Douglas Cawley (pro hac vice) McKOOL SMITH P.C. 300 Crescent Court Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4000 Facsimile: (214) 978-4044 Email: [email protected]; [email protected]
20
22
Document 72
Plaintiff,
RAMBUS’S OPPOSITION TO NVIDIA’S MOTION TO STAY
v. NVIDIA CORPORATION,
26
Case No. C-08-03343 SI
Judge: The Hon. Susan Illston
Defendant.
27 28 Rambus’s Opposition to NVIDIA’s Motion to Stay Case No. C-08-03343 SI Austin 47511v9
Case 3:08-cv-03343-SI
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Page 2 of 19
2
I.
INTRODUCTION .............................................................................................................. 1
3
II.
FACTUAL BACKGROUND............................................................................................. 2
4
III.
ANALYSIS......................................................................................................................... 5
5
A.
28 U.S.C. § 1659 Applies Only to the Barth/Ware Patents. ................................... 5
6
B.
NVIDIA’s Motion Falls Far Short of Meeting NVIDIA’s Burden to Show that a Stay Should Be Entered as to the FH Patents. .............................................. 5
8 9 10 11 McKOOL SMITH P.C.
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12 13 14
IV.
1.
NVIDIA has the burden to show a stay is necessary. ................................. 6
2.
The case law uniformly compels the conclusion that NVIDIA has not met its burden on the facts in this case with respect to the FH patents ......................................................................................................... 6
3.
A stay would prejudice Rambus. ................................................................ 8
4.
Going forward would not harm NVIDIA. ................................................ 10
5.
A stay would not promote the orderly course of justice. .......................... 12
CONCLUSION................................................................................................................. 15
15 16 17 18 19 20 21 22 23 24 25 26 27 28 Rambus’s Opposition to NVIDIA’s Motion to Stay Case No. C-08-03343 SI Austin 47511v9
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Page 3 of 19
TABLE OF AUTHORITIES Cases
3
Alloc, Inc. v. Unilin Décor N.V., No. CV-03-253, 2003 WL 21640372 (D. Del. July 11, 2003) ...................................................................... 7
5
Am. Honda Motor Co. v. Coast Distrib. Sys., No. CV-06-04752-JSW, 2007 U.S. Dist. LEXIS 19981 (N.D. Cal. Feb. 26, 2007) ......................................... passim
6
Asustek Computer Inc. v. Ricoh Co., Ltd., No. C-07-01942-MPH, 2007 U.S. Dist. LEXIS 96302, at *8 (N.D. Cal. Nov. 21, 2007)........................................ 9
7 8 9 10 11 McKOOL SMITH P.C.
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4
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12 13 14 15 16 17 18 19 20 21
Broadcom Corp. v. Qualcomm Inc., No. 05-468, 2005 U.S. Dist. LEXIS 45829, at *6 (C.D. Cal. Sept. 26, 2005)........................................ 7 Clinton v. Jones, 520 U.S. 681, 708 (1997)............................................................................................ 6, 8, 9 Critical-Vac Filtration Corp. v. Minuteman Int’l, Inc., 233 F.3d 697, 700 (2d Cir. 2000)...................................................................................... 10 Dependable Highway Express, Inc. v. Navigators Ins. Co., 498 F.3d 1059, 1066-67 (9th Cir. 2007) ................................................................... 6, 9, 12 Flexsys Americas v. Kumho Tire, U.S.A., Inc., No. 5:05-CV-156, 2005 WL 1126750, at *2 (N.D. Ohio Apr. 29, 2005)........................... 7 Formfactor, Inc. v. Micronics Japan Co., Ltd., No. CV-06-07159-JSW, 2008 U.S. Dist. LEXIS 13114, at *4 (N.D. Cal. Feb. 11, 2008) ............................................................................................................................... 5, 7 In re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007)................................................................................. 8 Landis v. N. Am. Co., 299 U.S. 248 (1936)................................................................................................... passim Lockyer v. Mirant Corp., 398 F.3d 1098 (9th Cir. 2005) ................................................................................ 9, 11, 12
22
Micron Tech., Inc. v. Mosel Vitelic Corp., No. 98-0293, 1999 U.S. Dist. LEXIS 4792, at *8-9 (D. Idaho Mar. 31, 1999)............................... passim
23
Organon Teknika Corp. v. Hoffmann La Roche, Inc., No. 1:95-CV-865, 1997 U.S. Dist. LEXIS 3798, at *6-7 (M.D.N.C. Feb. 19, 1997) ............................ 5, 6, 13
24 25 26 27 28
Sierra Club v. City and Cty. of Honolulu, No. CV-04-00463, 2007 WL 2694489 (D. Haw. Sept. 11, 2007) ..................................................................... 6 Sandisk Corp. v. Phison Elec. Corp., 538 F. Supp. 2d 1060, 1066 (W.D. Wisc. 2008)................................................................. 7 Sorensen v. Lexar Media, Inc., No. C-08-00095-JW, 2008 U.S. Dist. LEXIS 87511, at *3 (N.D. Cal. Apr. 30, 2008) ........................................ 9 Rambus’s Opposition to NVIDIA’s Motion to Stay
ii
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Tex. Instr. Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996)................................................................................. 13 Statutes 19 U.S.C. § 1337........................................................................................................................... 13 28 U.S.C. § 1659..................................................................................................................... 1, 4, 5 Rules FED. R. CIV. P. 1 .................................................................................................................. 2, 11, 13
8 9 10
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I.
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INTRODUCTION
2
Rambus files this opposition to NVIDIA’s motion to stay Rambus’s patent-infringement
3
suit, given that NVIDIA’s motion seeks to go beyond 28 U.S.C. § 1659. (See Dkt. No. 60.)
4
Rambus does not contest that NVIDIA may obtain a stay with respect to part of this case under
5
28 U.S.C. § 1659, and that the Court should stay the portion of this case relating to the
6
Barth/Ware patents-in-suit (patents naming inventors Barth and/or Ware and others, or the
7
“Barth/Ware patents,” as NVIDIA calls them). See 28 U.S.C. § 1659. The Court should deny,
8
however, NVIDIA’s request for a stay of this entire case. The case should proceed with respect
9
to the six Farmwald/Horowitz patents-in-suit (patents naming inventors Farmwald and Horowitz,
10
or “Farmwald/Horowitz patents” or “FH patents”) that are not at issue at the ITC, for all of the
11
following reasons:
12
● The FH patents are not involved in the ITC proceeding and cannot be stayed under 28
13
U.S.C. § 1659, and consequently NVIDIA bears the burden with respect to the Landis factors,
14
namely, (i) that a stay with respect to the FH patents would not harm Rambus, (ii) that going
15
forward would harm NVIDIA, and (iii) that a stay would promote the orderly course of justice,
16
see Landis v. N. Am. Co., 299 U.S. 248, 255 (1936);
17
● The case law uniformly supports denying NVIDIA’s motion as to the FH patents. The
18
few cases cited by NVIDIA are unavailing because here, the FH patents belong to a different
19
family of patents than the Barth/Ware patents at issue in the ITC and are infringed by products in
20
addition to those at issue in the ITC, in sharp contrast to the facts in the cases cited by NVIDIA
21
where the movant met its Landis burden on patents in the same family;
22
● A stay with respect to the FH patents would severely harm Rambus because
23
NVIDIA’s continued infringement harms Rambus’s goodwill and reputation as an innovator,
24
artificially depresses royalty rates for Rambus’s patents, reduces research and development
25
opportunities, and discourages adoption of and market share for Rambus’s own products;
26
● The FH patents at issue expire relatively soon, in 2010 or 2011, such that indefinitely
27
delaying Rambus’s right to seek legal and equitable relief for NVIDIA’s ongoing willful
28
infringement of these separate patents would unjustly prejudice Rambus; Rambus’ Opposition to NVIDIA’s Motion to Stay
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The Northern District of California has just docketed1 NVIDIA’s own recently-
2
transferred case from the Middle District of North Carolina, wherein NVIDIA’s allegations
3
squarely implicate the infringement, enforceability, and validity of the FH patents, (Dkt. No. 58,
4
Exs. A, C.), and Rambus would be prejudiced if it was precluded from advancing its first-filed
5
infringement claims relating to the FH patents while NVIDIA continues to press its second-filed
6
antitrust claims relating to those same patents;
7
● NVIDIA has not identified any recognized harm to NVIDIA in going forward, given
8
that NVIDIA itself intends to press its own FH-patent-related antitrust claims in this Court, and
9
that under the case law, being required to defend a suit does not constitute a clear case of
10 300 Crescent Court, Suite 1500 Dallas, TX 75201
●
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hardship or inequity; and
11
● NVIDIA’s motion to stay Rambus’s FH-related claims constitutes another attempt to
12
do what the District Court for the Middle District of North Carolina would not permit NVIDIA
13
to do: split the lawsuit in two, and multiply proceedings regarding the FH patents. Staying only
14
Rambus’s FH-related claims, but not NVIDIA’s, would make the proceedings far less (not more)
15
efficient, and would prejudice Rambus’s right to a “just, speedy, and inexpensive determination”
16
of its FH patent-infringement claims. See FED. R. CIV. P. 1.
17
In sum, a complete stay is neither mandated by statute nor justified by equity. The
18
interests of justice, judicial economy, and efficiency are best served by declining NVIDIA’s
19
invitation for a discretionary stay of indefinite duration, and instead staying only the patents in
20
common with the ITC action according to the statute, and proceeding on all issues-in-suit
21
relating to Rambus’s FH patents. The Court should deny NVIDIA’s request for a stay except as
22
to the Barth/Ware patents.
23
II.
24
Rambus Brings Suit on the FH and Barth/Ware Patents
FACTUAL BACKGROUND
25
Rambus filed this suit against NVIDIA on July 10, 2008. The suit asserts infringement
26
by NVIDIA’s products of fifteen patents which divide cleanly into two groups: six patents
27 28
1
NVIDIA Corp. v. Rambus Inc., C08-5500 MEJ (N.D. Cal.). Rambus’s Opposition to NVIDIA’s Motion to Stay
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1
claiming technology invented by Rambus founders Michael Farmwald and Mark Horowitz (the
2
“Farmwald/Horowitz” or “FH” patents), and nine patents claiming technology invented by
3
Richard Barth and/or Frederick Ware, with others (the “Barth/Ware” patents, as NVIDIA calls
4
them). (Dkt. No. 60 at 5-6.)
5
The six FH patents are all part of the same patent family, derived from an application first
6
filed in the Patent Office in 1990. This application discloses numerous inventions related to
7
solving the “memory bottleneck” problem that was then vexing the computer industry. The FH
8
patents at issue here include U.S. Patent Nos. 6,260,097 (“method and apparatus for controlling a
9
synchronous memory device”); 6,304,937 (“method of operation of a memory controller”);
10
6,564,281
(“synchronous
memory
device
having
automatic
precharge”);
6,715,020
11
(“synchronous integrated circuit device”); 6,751,696 (“memory device having a programmable
12
register); and 7,209,997 (“controller device and method for operating same”).
13
The three families of Barth/Ware patents, on the other hand, are directed to additional and
14
distinct features of memory devices/controllers. Two of these patents, for example, disclose,
15
among other features, a feature that could be termed “read/write leveling”: U.S. Patent Nos.
16
7,177,998 (“method, system, and memory controller utilizing adjustable read data delay
17
settings”); and 7,210,016 (“method, system, and memory controller utilizing adjustable write
18
data delay settings”). Three disclose, among other features, a feature that could be termed a
19
“strobed delayed write”:
20
dynamic memory”); 6,591,353 (“protocol for communication with dynamic memory”); and
21
7,287,109 (“method of controlling a memory device having a memory core”). And the last four
22
Barth/Ware patents disclose, among other features, a feature that could be termed “posted CAS
23
latency”: U.S. Patent Nos. 7,287,119 (“integrated circuit memory device with delayed write
24
command processing”); 7,330,952 (“integrated circuit memory device having delayed write
25
timing based on read response time”); 7,330,953 (“memory system having delayed write
26
timing”); and 7,360,050 (“integrated circuit memory device having delayed write capability”).
U.S. Patent Nos. 6,470,405 (“protocol for communication with
27 28 Rambus’s Opposition to NVIDIA’s Motion to Stay
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NVIDIA Brings Suit on the FH Patents
2
The day after Rambus instituted this patent-infringement suit, NVIDIA filed an antitrust
3
suit the Middle District of North Carolina, see NVIDIA v. Rambus Inc., No. 1:08-CV-472-UA-
4
WWD, Dkt. No. 7 (M.D.N.C.); (Dkt. No. 31 at 4), attempting to allege, inter alia, that Rambus’s
5
procurement and subsequent enforcement of the FH patents violated the Sherman Act, the type
6
of allegations that the Honorable Judge Ronald Whyte referred to as “likely counterclaims” to
7
Rambus’s FH patent-infringement claims. (Dkt. No. 31 at 4; see also Dkt. No. 60 at 13 n.14.)
8
In briefing on a motion to transfer filed in North Carolina, Rambus explained that
9
NVIDIA’s claims properly belonged as counterclaims to Rambus’s patent-infringement suit in
10
this Court. (Dkt. No. 58, Ex. A.) The Court agreed, expressly adopting Rambus’s briefed
11
arguments as the Court’s reasons for transfer, and transferred the case to this District. (Id., Ex.
12
C.) Rambus filed its Rule 3-12 notice to flag this issue for the Court. (Id.) NVIDIA thereafter
13
filed a motion to stay, seeking to stay Rambus’s suit even as to the FH patents, and before
14
NVIDIA’s transferred suit relating to the FH patents can be naturally consolidated with
15
Rambus’s suit. NVIDIA has expressly indicated that while it agrees that the transferred case is
16
related to this one, it opposes consolidation of the parties’ claims and counterclaims relating to
17
the FH patents. (See Dkt. No. 64.)
18
Rambus Files in the ITC on the Barth/Ware Patents, and NVIDIA Moves to Stay
19
Meanwhile, on November 6, 2008, Rambus filed a complaint in the ITC, seeking an
20
exclusion order with respect to the Barth/Ware patents that are also at issue in this suit. (Dkt.
21
No. 61-2.)
22
generations of NVIDIA products prior to DDR DRAM, such as the SDR SDRAM products at
23
issue here. (See id.) Neither does it include discontinued products for which Rambus seeks past
24
damages in this suit. On December 4, the ITC instituted an investigation into NVIDIA’s
25
infringement of the Barth/Ware patents based on Rambus’s November 6 complaint. (Dkt. No.
26
61-3.)
The ITC complaint does not include the FH patents, and it does not include
27
NVIDIA now moves for a stay of the Barth/Ware patents under 28 U.S.C. § 1659, which
28
provides for a litigation stay of claims relating to patents at issue in an ITC investigation. (Dkt. Rambus’s Opposition to NVIDIA’s Motion to Stay
4
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No. 60 at 4.) Rambus does not oppose this request. NVIDIA also moves, however, for a
2
discretionary stay of Rambus’s patent-infringement claims relating to the FH patents under
3
Landis v. N. Am. Co., 299 U.S. 248 (1936). (Dkt. No. 60 at 4.) For the reasons that follow,
4
Rambus opposes this additional request.
5
III.
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ANALYSIS A.
28 U.S.C. § 1659 Applies Only to the Barth/Ware Patents.
Rambus does not contest the applicability of § 1659 to its infringement claims relating to
8
the Barth/Ware patents.
9
pending the investigation in the ITC. See 28 U.S.C. § 1659(a). The case law is clear, however,
10
and NVIDIA does not dispute, that § 1659 does not extend to infringement claims from patents
11
not before the ITC. See Formfactor, Inc. v. Micronics Japan Co., Ltd., No. CV-06-07159-JSW,
12
2008 U.S. Dist. LEXIS 13114, at *4 (N.D. Cal. Feb. 11, 2008); Micron Tech., Inc. v. Mosel
13
Vitelic Corp., No. 98-0293, 1999 U.S. Dist. LEXIS 4792, at *8-9 (D. Idaho Mar. 31, 1999);
14
Organon Teknika Corp. v. Hoffmann La Roche, Inc., No. 1:95-CV-865, 1997 U.S. Dist. LEXIS
15
3798, at *6-7 (M.D.N.C. Feb. 19, 1997). Claims relating to the FH patents, therefore, cannot be
16
stayed under § 1659. (See Dkt. No. 60 at 4.) Instead, as NVIDIA recognizes, the FH claims can
17
only be stayed through a discretionary exercise of the Court’s inherent power as described by the
18
Supreme Court in Landis, 299 U.S. at 254-55. (See Dkt. No. 60 at 4.)
19 20 21 22 23 24 25 26
B.
Litigation of the Barth/Ware patents, therefore, should be stayed
NVIDIA’s Motion Falls Far Short of Meeting NVIDIA’s Burden to Show that a Stay Should Be Entered as to the FH Patents.
In evaluating NVIDIA’s request for a discretionary stay of claims relating to the FH patents, the Court should consider the following factors: (1) ‘possible damage which may result from the granting of a stay,’ (2) ‘the hardship or inequity which a party may suffer in being required to go forward,’ and (3) ‘the orderly course of justice measured in terms of the simplifying or complicating of issues, proof, and questions of law which could be expected to result from a stay.’ Am. Honda Motor, 2007 U.S. Dist. LEXIS 19981, at *3 (citation omitted). (Dkt. No. 60 at 9-10.
27 28 Rambus’s Opposition to NVIDIA’s Motion to Stay
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NVIDIA has the burden to show a stay is necessary.
2
The burden is on NVIDIA, the movant, to prove that a stay is necessary under these
3
factors. See id.; see also Clinton v. Jones, 520 U.S. 681, 708 (1997) (“The proponent of a stay
4
bears the burden of establishing its need.”); Sierra Club v. City and Cty. of Honolulu, No. CV-
5
04-00463, 2007 WL 2694489, at *4 (D. Haw. Sept. 11, 2007) (“[Party seeking stay] has failed to
6
show that Plaintiffs will not be harmed and has failed to establish that it will suffer a sufficient
7
hardship. Accordingly, even if granting the stay would conserve some of this Court’s resources,
8
this reason alone is insufficient to support a grant of stay.”) In fact, the Supreme Court has held
9
that, “if there is even a fair possibility that the stay for which [the movant] prays will work
10
damage to some one else,” then the movant—NVIDIA here—“must make out a clear case of
11
hardship or inequity in being required to go forward.” Landis, 299 U.S. at 255; see also Am.
12
Honda Motor, 2007 U.S. Dist. LEXIS 19981, at *5; Micron Tech., 1999 U.S. Dist. LEXIS 4792,
13
at *10.2 The Ninth Circuit has also recently cautioned against granting Landis stays, particularly
14
stays of indefinite duration, when the movant has provided insufficient proof of hardship or
15
inequity in being required to go forward. See Dependable Highway Express, Inc. v. Navigators
16
Ins. Co., 498 F.3d 1059, 1066-67 (9th Cir. 2007).3
17
2.
18
The case law uniformly compels the conclusion that NVIDIA has not met its burden on the facts in this case with respect to the FH patents.
19
Courts routinely deny motions for stay that seek to go beyond 28 U.S.C. § 1659. See,
20
e.g., Micron Tech., 1999 U.S. Dist. LEXIS 4792, at *8-14 (granting a § 1659 stay as to those
21
patents before the ITC, but denying an additional Landis stay as to the patents not before the
22
ITC); Organon Teknika, 1997 U.S. Dist. LEXIS 3798, at *8-9 (denying Landis stay as to patents
23 24 25 26 27 28
2
NVIDIA notes that Rambus previously described the burden carried by one moving for a Landis stay as “heavy,” and NVIDIA argues that this characterization is incorrect. (Dkt. No. 60 at 9 n.9.) Rambus submits that the need to “make out a clear case of hardship or inequity in being required to go forward,” see Landis, 299 U.S. at 255, is fairly described as a heavy burden. In any event, regardless of how NVIDIA characterizes its burden, Rambus submits that NVIDIA has failed to identify any valid basis in law or fact for extending a stay to the FH patents.
3
In Dependable Highway Express the Ninth Circuit also reaffirmed that, while a Landis stay is within the district court’s discretion, the standard of review on appeal “is ‘somewhat less deferential’ than the abuse of discretion standard used in other contexts.” 498 F.3d at 1066. Rambus’s Opposition to NVIDIA’s Motion to Stay
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not before the ITC); Am. Honda Motor Co. v. Coast Distrib. Sys., No. CV-06-04752-JSW, 2007
2
U.S. Dist. LEXIS 19981 (N.D. Cal. Feb. 26, 2007) (denying Landis stay where § 1659 not
3
triggered); Broadcom Corp. v. Qualcomm Inc., No. 05-468, 2005 U.S. Dist. LEXIS 45829, at *6
4
(C.D. Cal. Sept. 26, 2005) (denying Landis stay as to issues not before the ITC). The Court
5
should reach the same result here.
6
NVIDIA suggests that such Landis stays are “typically” granted in “circumstances like
7
those present here,” and cites four cases purportedly supporting that proposition. (Id. at 9.)
8
Contrary to NVIDIA’s suggestion, however, the case law supports Rambus’s position, rather
9
than NVIDIA’s position, on the facts in this case. Of the four cases cited by NVIDIA, one had
10
nothing to do with the ITC, or with § 1659. See Alloc, Inc. v. Unilin Décor N.V., No. CV-03-
11
253, 2003 WL 21640372 (D. Del. July 11, 2003).
12
In each of the other three cases cited by NVIDIA, the patents-in-suit belonged to the
13
same patent family, and thus shared, among other things, priority dates, prosecution history, and
14
specifications. That is, in each of the cases NVIDIA cites where the party seeking the stay
15
successfully met its Landis burden, the patents subject to the discretionary Landis stay were from
16
the same patent family as the patents before the ITC. See Formfactor, 2008 U.S. Dist. LEXIS
17
13114, at *11 (“same patent family”); Sandisk Corp. v. Phison Elec. Corp., 538 F. Supp. 2d
18
1060, 1066 (W.D. Wisc. 2008) (“[same] prosecution history [and] specification”); Flexsys
19
Americas v. Kumho Tire, U.S.A., Inc., No. 5:05-CV-156, 2005 WL 1126750, at *2 (N.D. Ohio
20
Apr. 29, 2005) (“part of a series of continuation patents, which includes [those in the ITC]”).
21
That is not the situation here, because the FH patents are not in the same patent family as the
22
Barth/Ware patents.
23
seeking a discretionary stay of the plaintiff’s patent-infringement claims while simultaneously
24
pressing antitrust claims relating to the procurement and enforcement of those same patents.
25
Thus NVIDIA cites no case in which a Landis stay was granted “[u]nder circumstances
26
like those present here.” (Dkt. No. 60 at 9.) Contrary to NVIDIA’s suggestion, perhaps the most
27
relevant of the § 1659 cases is Micron Tech., 1999 U.S. Dist. LEXIS 4792, at *8-14, in which the
28
court granted a § 1659 stay as to those patents before the ITC, but denied an additional Landis
Additionally, in none of NVIDIA’s cited cases were the defendants
Rambus’s Opposition to NVIDIA’s Motion to Stay
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stay as to the patents not before the ITC. As set forth below, consideration of all three Landis
2
factors counsels denying the motion to stay the claims relating to the FH patents.
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3.
A stay would prejudice Rambus.
4
NVIDIA’s assertion that Rambus “cannot point to” any harm that might be caused by a
5
discretionary stay of Rambus’s claims is doubly wrong. (Dkt. No. 60 at 10.) As an initial
6
matter, the burden of proof here is on NVIDIA, not on Rambus. See Clinton, 520 U.S. at 708.
7
But NVIDIA completely disregards the significant prejudice Rambus would suffer from the
8
discretionary stay NVIDIA seeks. It does so in at least three ways.
9
First, NVIDIA moves for a stay of indefinite duration. And notwithstanding NVIDIA’s
10
characterization of the stay as causing a “relatively minimal delay,” (Dkt. No. 60 at 11), the stay
11
in fact could easily last for two years or more. That is because, under recent Federal Circuit
12
precedent, the § 1659 stay to which NVIDIA would have the Court append its Landis stay will
13
not be lifted until the ITC investigation into the Barth/Ware patents has been completed and run
14
its full appellate course, if necessary, through the Federal Circuit and beyond. See In re Princo
15
Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007).
16
As the Supreme Court has held, the prospect of such a lengthy stay “takes no account
17
whatever of the [plaintiff]’s interest in bringing the case to trial.” Clinton, 520 U.S. at 708. It
18
also necessarily carries a real threat of prejudice. See id. (“delaying trial would increase the
19
danger of prejudice resulting from the loss of evidence, including the inability of witnesses to
20
recall specific facts”). In addition to the threat of prejudice resulting from the loss of evidence,
21
“each passing month allows [NVIDIA] to infringe upon [Rambus’s] patented technology . . .
22
[and] poses a continuing risk that [NVIDIA] could falter financially rendering any potential
23
award practically impossible to recover.” See Micron Tech, 1999 U.S. Dist. LEXIS 4792, at
24
*12-13. NVIDIA’s continued infringement further harms Rambus’s goodwill and reputation as
25
an innovator, artificially depresses royalty rates for Rambus’s patents, reduces research and
26
development opportunities, and discourages adoption of and market share for Rambus’s own
27
products.
28 Rambus’s Opposition to NVIDIA’s Motion to Stay
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Accordingly, the Ninth Circuit is particularly concerned with the practice of granting
2
stays of indefinite duration. See Dependable Highway Express, 498 F.3d at 1066 (“Generally,
3
stays should not be indefinite in nature.”); see also, e.g., Sorensen v. Lexar Media, Inc., No. CV-
4
08-00095-JW, 2008 U.S. Dist. LEXIS 87511, at *3 (N.D. Cal. Apr. 30, 2008) (denying Landis
5
stay where, inter alia, it might have lasted for two years or more); Asustek Computer Inc. v.
6
Ricoh Co., Ltd., No. C-07-01942-MPH, 2007 U.S. Dist. LEXIS 96302, at *8 (N.D. Cal. Nov. 21,
7
2007) (denying Landis stay where, inter alia, length of delay during appeal to Federal Circuit
8
and beyond was “uncertain and indefinite”). The indefinite, and likely lengthy, nature of the stay
9
that NVIDIA seeks poses real threats of prejudice to Rambus’s interest in bringing its claims to a
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timely and proper resolution.4 See Clinton, 520 U.S. at 708.
11
Second, Rambus is seeking injunctive relief on its claims relating to the FH patents.
12
Such relief is viable only during the life of the patents. And because the FH patents-in-suit are
13
all part of the same patent family, derived from an application first filed in 1990, they are all set
14
to expire relatively soon—four in 2010, and two in 2011. As it is, resolution of this case will
15
likely be pushing up against the expirations. Should the Court stay litigation relating to the FH
16
patents, however, there is no doubt that the patents will have expired, making Rambus’s claim
17
for injunctive relief on these patents a nullity. That should qualify, at the least, as “a fair
18
possibility that the stay for which [NVIDIA] prays will work damage to” Rambus. See Landis,
19
299 U.S. at 255; see also Am. Honda Motor, 2007 U.S. Dist. LEXIS 19981, at *4-5; Lockyer v.
20
Mirant Corp., 398 F.3d 1098, at 1112 (9th Cir. 2005) (vacating the lower court’s stay, noting that
21
plaintiff “seeks injunctive relief against ongoing and future harm”).
22 23 24 25 26 27 28
4
NVIDIA suggests that the Court should not consider these harms because, according to NVIDIA, Rambus “chose to delay obtaining claims” and “chose to delay filing the present action.” (Dkt. No. 60 at 11.) Neither of these arguments is accurate, and neither is relevant to the issue of whether NVIDIA’s requested indefinite stay threatens to prejudice Rambus. Rambus diligently obtained its claims through the ordinary processes of application to the Patent Office. Any “delay” in filing the present suit was due, as NVIDIA’s cited evidence explains, to Rambus’s persistent attempts to negotiate a license rather than litigate with NVIDIA. To penalize Rambus for attempting to resolve this dispute without the necessity of judicial intervention would only serve to encourage an unnecessary rush to the courthouse with the attendant waste of scarce judicial resources. (Dkt. No. 61-8.) Further, to the extent NVIDIA argues that this case is “in its infancy,” Rambus should not be punished via a stay on the FH patents, as the state of the case is the result of NVIDIA’s conduct. Rambus’s Opposition to NVIDIA’s Motion to Stay
9
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Third, and perhaps most importantly, Rambus would be prejudiced if it was precluded
2
from advancing its first-filed infringement claims relating to the FH patents while NVIDIA
3
continues to press its second-filed antitrust counterclaims relating to those same patents. As
4
Rambus argued in its motion to transfer filed in the Middle District of North Carolina—
5
arguments adopted by the Court in granting that motion, (Dkt. No. 58, Exs. A, C)—NVIDIA’s
6
antitrust claims place the infringement, enforceability, and validity of the FH patents squarely at
7
issue. And NVIDIA insists that these claims “can and should proceed” in this Court. (Dkt. No.
8
60 at 13 n.14.) To borrow from a case cited by both parties in the transfer briefing,
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9
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12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
[a]n obvious logical relationship exists between these claims and the issues [to be] addressed by the . . . patent infringement suit, and the essential facts of the claims are so logically connected that considerations of judicial economy and fairness dictate that all the issues should [be] resolved in one lawsuit. Critical-Vac Filtration Corp. v. Minuteman Int’l, Inc., 233 F.3d 697, 700 (2d Cir. 2000). Both parties have pleaded claims regarding the prosecution and enforcement of the FH patents against NVIDIA. NVIDIA alleges that these activities have violated the Sherman Act; Rambus alleges that these activities have been proper, and should result in NVIDIA being found liable for infringement. It would not be an efficient use of resources, and it would certainly not be fair to Rambus, to proceed on NVIDIA’s claims relating to the FH patents while staying Rambus’s logically connected claims relating to the same patents. The discretionary stay of indefinite duration requested by NVIDIA thus threatens real prejudice to Rambus. As with the movant in American Honda Motor, NVIDIA “has not met its burden to show [Rambus] would not be harmed if the litigation is delayed.” 2007 U.S. Dist. LEXIS 19981, at *4. 4.
Going forward would not harm NVIDIA.
Because the requested stay poses a real threat of harm to Rambus, NVIDIA “must make out a clear case of hardship or inequity in being required to go forward” on the FH patents. Landis, 299 U.S. at 255; see also Am. Honda Motor, 2007 U.S. Dist. LEXIS 19981, at *5; Micron Tech., 1999 U.S. Dist. LEXIS 4792, at *10. NVIDIA has not met this demanding
28 Rambus’s Opposition to NVIDIA’s Motion to Stay
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1
standard. NVIDIA has not, in fact, proved that going forward on the FH patents would cause it
2
any harm at all.
3
NVIDIA’s principal argument on this score appears to be its entirely conclusory assertion
4
that it would be prejudiced if required “to defend claims of infringement against the same sets of
5
products in two different fora simultaneously.” (Dkt. No. 60 at 11.) Not surprisingly, NVIDIA
6
provides no authority for this argument. In patent law, the claims run with the patents-in-suit,
7
not with the accused products. It is thus not unusual for a company to be defending the same
8
product in different fora against claims that it infringes different patents.5 Indeed, this so-called
9
“prejudice” is precisely “the hardship attendant with being forced to defend a lawsuit” that “is
10
irrelevant when considering whether to grant a stay.” Am. Honda Motor, 2007 U.S. Dist. LEXIS
11
19981, at *5; see also Lockyer, 398 F.3d at 1112 (“[B]eing required to defend a suit, without
12
more, does not constitute a ‘clear case of hardship or inequity’ within the meaning of Landis.”)
13
NVIDIA also suggests that an alleged “duplication in discovery proceedings” may cause
14
it harm. (Dkt. No. 60 at 11.) NVIDIA does not say, however, exactly what proceedings will
15
need to be duplicated. NVIDIA cites to the Formfactor case, but in that case the patents not
16
before the ITC were in the “same patent family” as those at issue in the ITC investigation. 2008
17
U.S. Dist. LEXIS 13114, at *10. That is not a concern here. Nor is there any reason to believe
18
that the parties cannot coordinate a schedule and a cross-use agreement so that discovery
19
provided in either forum need only be produced once.
20
In any event, even if the possibility of ongoing, “duplicative” discovery might pose a
21
threat of harm to some stay movant in the abstract, it certainly poses no threat of harm to
22
NVIDIA in these circumstances. We know this because NVIDIA has already declared that,
23
notwithstanding its request to stay the FH-related infringement claims, it intends to continue to
24
press its own FH-patent-related antitrust claims in this Court. (Dkt. No. 60 at 13 n.14.) Those
25
claims will undoubtedly involve extensive discovery into both the FH patents and the NVIDIA
26 27 28
5
It is also worth noting that, while the products at issue in this suit and the ITC investigation do overlap to some extent, the overlap is not complete. The ITC action, for example, concerns only products that NVIDIA is currently importing or selling for or after importation. (See Dkt. No. 61-2 at 216-17.) This suit is not so limited in the products it accuses of infringement. Rambus’s Opposition to NVIDIA’s Motion to Stay
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1
products onto which those patents read.6 The so-called “harm” posed by discovery relevant to
2
the FH patents is thus something that NVIDIA fully intends to inflict upon itself, and cannot
3
support NVIDIA’s claim that a stay is necessary to protect it from unfair prejudice. See Micron
4
Tech., 1999 U.S. Dist. LEXIS 4792, at *12, 14.
5
NVIDIA has thus not only failed to prove a “clear case of hardship or inequity in being
6
required to go forward” on the FH patents, see Landis, 299 U.S. at 255, it has failed to make out
7
any case of real hardship at all. For this reason alone, NVIDIA’s motion for a Landis stay must
8
be denied. See id.; see also Dependable Highway Express, 498 F.3d at 1066 (finding stay an
9
abuse of discretion where movant “failed to establish a sufficient case of hardship”); Am. Honda
10
Motor, 2007 U.S. Dist. LEXIS 19981, at *5 (finding that without specific “facts showing
11
hardship,” the movant had “not met its burden of showing a stay is warranted”); Micron Tech.,
12
1999 U.S. Dist. LEXIS 4792, at *14 (“The Court concludes that Defendants have not established
13
that a stay of the instant proceedings is necessary to prevent undue hardship or injustice.”).
14
5.
A stay would not promote the orderly course of justice.
15
Because NVIDIA has failed to prove that a Landis stay is necessary to prevent hardship,
16
there should be no need for the Court to consider NVIDIA’s judicial-economy arguments. See
17
Dependable Highway Express, 498 F.3d at 1066 (“case management standing alone is not
18
necessarily a sufficient ground to stay proceedings.”); see also Lockyer, 398 F.3d at 1112
19
(overturning Landis stay where only legitimate ground was judicial economy). But in any event,
20
NVIDIA has also failed to prove that a stay of claims relating to the FH patents would promote
21
the orderly course of justice. And in fact such a stay would have the opposite effect.
22
The Barth/Ware patents and FH patents represent two distinct groupings of patents, and
23
claims relating to the FH patents can proceed efficiently in this Court while the Barth/Ware
24
patents are proceeding before the ITC.
25
antitrust counterclaims are pending in a suit soon to be related to this one, (Dkt. Nos. 58, 64), the
26
orderly and efficient course forward appears clear: both parties’ claims relating to the FH
27 28
Further, given the fact that NVIDIA’s FH-related
6
Further, infringement claims relating to the FH patents are appropriate counterclaims to NVIDIA’s FH-related antitrust claims. Rambus’s Opposition to NVIDIA’s Motion to Stay
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1
patents should be consolidated, and both parties should then work, with the Court, to secure the
2
“just, speedy, and inexpensive determination” of those claims. See FED. R. CIV. P. 1.
3
NVIDIA argues that the Court should grant the requested Landis stay on the off chance
4
that the ITC’s investigation of the Barth/Ware patents might shed some light on the FH patents.
5
(Dkt. No. 60 at 12.) There are at least two problems with this argument. First, Congress “did not
6
intend decisions of the ITC on patent issues to have preclusive effect.” Tex. Instr. Inc. v. Cypress
7
Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996). Whatever happens in the ITC,
8
therefore, this Court will subsequently be examining the issues anew, attributing only whatever
9
“value to the prior ITC decision that it considers justified.” Id. at 1569; see also Am. Honda
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Motor, 2007 U.S. Dist. LEXIS 19981, at *5-6.
11
Second, in contrast to the situation in Formfactor, (see Dkt. No. 60 at 12), no patent in
12
the FH family is before the ITC. Although both the Barth/Ware patents and FH patents are
13
asserted against controllers, these patents disclose and claim different inventions, as discussed
14
supra. There is therefore little reason to expect that the ITC’s investigation into the Barth/Ware
15
patents will produce valuable insights into Rambus’s claims regarding the FH patents-in-suit.
16
See Organon Teknika, 1997 U.S. Dist. LEXIS 3798, at *8. And while no patent in the FH family
17
is before the ITC, some patents in that family have been before The Hon. Judge Whyte in this
18
District. (Dkt. No. 31 at 3.) Judge Whyte has, in fact, “issued a detailed claim construction
19
order with respect to” those patents, and that order is both already available and deserving of
20
deference. (Id. at 5.) The Court therefore already has access to the considered judgment of
21
another proceeding, and there is no reason to expect that the current ITC investigation will add
22
anything of substantial value to the insights regarding the FH patents already available from the
23
proceedings before Judge Whyte. See Am. Honda Motor, 2007 U.S. Dist. LEXIS 19981, at *5-6.
24
NVIDIA mentions the cases before Judge Whyte, but only to argue that the Court should
25
grant the requested Landis stay because “four of the six Farmwald patents are presently the
26
subject of litigation . . . pending before Judge Whyte” and set for trial next month, in January of
27
2009. (Dkt. No. 60 at 12.) This argument is also without merit. For one thing, NVIDIA is
28
simply wrong to suggest that four of the six FH patents at issue here are set to be tried before Rambus’s Opposition to NVIDIA’s Motion to Stay
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Judge Whyte. In fact, only one claim from one patent cited by NVIDIA—claim 4 of U.S. Patent
2
No. 6,751,696 (the “’696 patent”)—was elected for the January trial before Judge Whyte. For
3
another thing, the fact that trial in that case is scheduled for January means that there should be
4
no reason to stay this case in order to account for the result in that one. This remote possibility
5
of a one-claim overlap with a trial scheduled to begin the same month as the CMC in the present
6
case provides no reason to grant the indefinite Landis stay requested by NVIDIA.7
7
The orderly course of justice thus favors moving forward with both parties’ claims
8
relating to the FH patents. The ITC will not be addressing NVIDIA’s infringement of the FH
9
patents, nor of any patent in that family, in its investigation. Neither will the ITC be addressing
10
any of NVIDIA’s antitrust-related claims. Indeed, the ITC is without jurisdiction to hear such
11
claims. See 19 U.S.C. § 1337(c).8 It will thus necessarily fall to this Court to resolve both
12
parties’ claims relating to the FH patents. Given that both parties are ready to press their
13
respective claims regarding these patents in this Court, (see Dkt. No. 60 at 13 n.14), the parties’
14
claims should be consolidated9 and should proceed toward resolution without further delay. See
15
FED. R. CIV. P. 1.
16 17 18 19 20 21 22 23 24 25 26 27 28
7
NVIDIA also suggests in passing that some undisclosed reexamination proceedings “may also narrow the disputed issues here,” (Dkt. No. 60 at 5), but NVIDIA’s vague argument is unavailing. For example, NVIDIA’s accused products with respect to the ’696 patent include controllers. The claims of the ’696 patent that are subject to reexamination, however, are claims 1 and 4, reciting a “synchronous memory device,” and not, for example, a “method of controlling.” Further, NVIDIA also fails to mention that Judge Whyte on multiple occasions has rejected requests for a stay based on reexamination of FH patents. 8 Even if NVIDIA subsequently attempts to file antitrust counterclaims related to the Barth/Ware patents in the ITC, those claims will need to be removed to an appropriate U.S. District Court. Given all the logically related litigation already pending in this Court, as well as the other factors identified in Rambus’s briefing on its motion to transfer adopted by the Middle District of North Carolina, (see Dkt. No. 58, Exs. A, C), there is good reason to expect that this Court would also be the appropriate destination for such removal. See 19 U.S.C. § 1337(c). 9 NVIDIA’s argument that there can be no consolidation of NVIDIA’s transferred claims regarding the FH patents into Rambus’s first-filed suit regarding the FH patents without a motion and briefing schedule, (Dkt. No. 64 at 2), is not well-taken. Judge Whyte has already observed that antitrust claims are “likely counterclaims” to Rambus’s first-filed suit, (Dkt. No. 31 at 4), and this Court, of course, has inherent power to consolidate the just-transferred North Carolina suit that relates to the FH patents into Rambus’s first-filed suit in which the FH patents are also at issue. Rambus’s Opposition to NVIDIA’s Motion to Stay
14
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CONCLUSION
2
NVIDIA has not met its burden to prove that an indefinite stay of Rambus’s claims
3
relating to the Farmwald/Horowitz patents is necessary. The Court should thus grant the § 1659
4
stay as to claims relating to the Barth/Ware patents, but deny the requested Landis stay as to
5
claims relating to the Farmwald/Horowitz patents.10
6 7 8
Respectfully submitted, DATED: December 17, 2008
9
TURNER BOYD LLP
10
By: /s/ Pierre J. Hubert Pierre J. Hubert
McKOOL SMITH P.C.
11 300 Crescent Court, Suite 1500 Dallas, TX 75201
MCKOOL SMITH P.C.
Attorneys for Plaintiff RAMBUS INC.
12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
10
Rambus recognizes that, in granting NVIDIA’s motion to expedite via NVIDIA’s Proposed Order, (Dkt. No. 67), the Court has held that there will be no oral argument on this motion. Rambus agrees that denial of NVIDIA’s motion with respect to the Landis stay does not require a hearing given that NVIDIA has not identified any valid basis in law or fact for a stay on the FH patents, and has not met its Landis burden. But if the Court determines that this is a close question, Rambus urges the Court to consider oral argument, given that Rambus’s substantive rights to enforce the FH patents are implicated. Rambus’s Opposition to NVIDIA’s Motion to Stay
15
Case No. C-08-03343 SI
1 2 3 4 5 6 7 8 9 10
McKOOL SMITH P.C.
300 Crescent Court, Suite 1500 Dallas, TX 75201
11 12 13 14 15 16 17 18 19
Julie S. Turner (State Bar No. 191146) Karen I. Boyd (State Bar No. 189808) TURNER BOYD LLP 2625 Middlefield Rd. #675 Palo Alto, California 94306 Telephone: (650) 494-1530 Facsimile: (650) 472-8028 Email: [email protected] Email: [email protected] Attorneys for Plaintiff RAMBUS INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION RAMBUS INC.,
23
25
Page 1 of 19
Scott L. Cole (pro hac vice) Pierre J. Hubert (pro hac vice) Craig N. Tolliver (pro hac vice) McKOOL SMITH P.C. 300 W. 6th Street Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Facsimile: (512) 692-8744 Email: [email protected]; [email protected]; [email protected]
21
24
Filed 12/17/2008
Mike McKool, Jr. (pro hac vice) Douglas Cawley (pro hac vice) McKOOL SMITH P.C. 300 Crescent Court Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4000 Facsimile: (214) 978-4044 Email: [email protected]; [email protected]
20
22
Document 72
Plaintiff,
RAMBUS’S OPPOSITION TO NVIDIA’S MOTION TO STAY
v. NVIDIA CORPORATION,
26
Case No. C-08-03343 SI
Judge: The Hon. Susan Illston
Defendant.
27 28 Rambus’s Opposition to NVIDIA’s Motion to Stay Case No. C-08-03343 SI Austin 47511v9
Case 3:08-cv-03343-SI
1
Page 2 of 19
2
I.
INTRODUCTION .............................................................................................................. 1
3
II.
FACTUAL BACKGROUND............................................................................................. 2
4
III.
ANALYSIS......................................................................................................................... 5
5
A.
28 U.S.C. § 1659 Applies Only to the Barth/Ware Patents. ................................... 5
6
B.
NVIDIA’s Motion Falls Far Short of Meeting NVIDIA’s Burden to Show that a Stay Should Be Entered as to the FH Patents. .............................................. 5
8 9 10 11 McKOOL SMITH P.C.
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7
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12 13 14
IV.
1.
NVIDIA has the burden to show a stay is necessary. ................................. 6
2.
The case law uniformly compels the conclusion that NVIDIA has not met its burden on the facts in this case with respect to the FH patents ......................................................................................................... 6
3.
A stay would prejudice Rambus. ................................................................ 8
4.
Going forward would not harm NVIDIA. ................................................ 10
5.
A stay would not promote the orderly course of justice. .......................... 12
CONCLUSION................................................................................................................. 15
15 16 17 18 19 20 21 22 23 24 25 26 27 28 Rambus’s Opposition to NVIDIA’s Motion to Stay Case No. C-08-03343 SI Austin 47511v9
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Page 3 of 19
TABLE OF AUTHORITIES Cases
3
Alloc, Inc. v. Unilin Décor N.V., No. CV-03-253, 2003 WL 21640372 (D. Del. July 11, 2003) ...................................................................... 7
5
Am. Honda Motor Co. v. Coast Distrib. Sys., No. CV-06-04752-JSW, 2007 U.S. Dist. LEXIS 19981 (N.D. Cal. Feb. 26, 2007) ......................................... passim
6
Asustek Computer Inc. v. Ricoh Co., Ltd., No. C-07-01942-MPH, 2007 U.S. Dist. LEXIS 96302, at *8 (N.D. Cal. Nov. 21, 2007)........................................ 9
7 8 9 10 11 McKOOL SMITH P.C.
Filed 12/17/2008
2
4
300 Crescent Court, Suite 1500 Dallas, TX 75201
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12 13 14 15 16 17 18 19 20 21
Broadcom Corp. v. Qualcomm Inc., No. 05-468, 2005 U.S. Dist. LEXIS 45829, at *6 (C.D. Cal. Sept. 26, 2005)........................................ 7 Clinton v. Jones, 520 U.S. 681, 708 (1997)............................................................................................ 6, 8, 9 Critical-Vac Filtration Corp. v. Minuteman Int’l, Inc., 233 F.3d 697, 700 (2d Cir. 2000)...................................................................................... 10 Dependable Highway Express, Inc. v. Navigators Ins. Co., 498 F.3d 1059, 1066-67 (9th Cir. 2007) ................................................................... 6, 9, 12 Flexsys Americas v. Kumho Tire, U.S.A., Inc., No. 5:05-CV-156, 2005 WL 1126750, at *2 (N.D. Ohio Apr. 29, 2005)........................... 7 Formfactor, Inc. v. Micronics Japan Co., Ltd., No. CV-06-07159-JSW, 2008 U.S. Dist. LEXIS 13114, at *4 (N.D. Cal. Feb. 11, 2008) ............................................................................................................................... 5, 7 In re Princo Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007)................................................................................. 8 Landis v. N. Am. Co., 299 U.S. 248 (1936)................................................................................................... passim Lockyer v. Mirant Corp., 398 F.3d 1098 (9th Cir. 2005) ................................................................................ 9, 11, 12
22
Micron Tech., Inc. v. Mosel Vitelic Corp., No. 98-0293, 1999 U.S. Dist. LEXIS 4792, at *8-9 (D. Idaho Mar. 31, 1999)............................... passim
23
Organon Teknika Corp. v. Hoffmann La Roche, Inc., No. 1:95-CV-865, 1997 U.S. Dist. LEXIS 3798, at *6-7 (M.D.N.C. Feb. 19, 1997) ............................ 5, 6, 13
24 25 26 27 28
Sierra Club v. City and Cty. of Honolulu, No. CV-04-00463, 2007 WL 2694489 (D. Haw. Sept. 11, 2007) ..................................................................... 6 Sandisk Corp. v. Phison Elec. Corp., 538 F. Supp. 2d 1060, 1066 (W.D. Wisc. 2008)................................................................. 7 Sorensen v. Lexar Media, Inc., No. C-08-00095-JW, 2008 U.S. Dist. LEXIS 87511, at *3 (N.D. Cal. Apr. 30, 2008) ........................................ 9 Rambus’s Opposition to NVIDIA’s Motion to Stay
ii
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Case 3:08-cv-03343-SI
1 2 3 4 5 6 7
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Tex. Instr. Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996)................................................................................. 13 Statutes 19 U.S.C. § 1337........................................................................................................................... 13 28 U.S.C. § 1659..................................................................................................................... 1, 4, 5 Rules FED. R. CIV. P. 1 .................................................................................................................. 2, 11, 13
8 9 10
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11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Rambus’s Opposition to NVIDIA’s Motion to Stay
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I.
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INTRODUCTION
2
Rambus files this opposition to NVIDIA’s motion to stay Rambus’s patent-infringement
3
suit, given that NVIDIA’s motion seeks to go beyond 28 U.S.C. § 1659. (See Dkt. No. 60.)
4
Rambus does not contest that NVIDIA may obtain a stay with respect to part of this case under
5
28 U.S.C. § 1659, and that the Court should stay the portion of this case relating to the
6
Barth/Ware patents-in-suit (patents naming inventors Barth and/or Ware and others, or the
7
“Barth/Ware patents,” as NVIDIA calls them). See 28 U.S.C. § 1659. The Court should deny,
8
however, NVIDIA’s request for a stay of this entire case. The case should proceed with respect
9
to the six Farmwald/Horowitz patents-in-suit (patents naming inventors Farmwald and Horowitz,
10
or “Farmwald/Horowitz patents” or “FH patents”) that are not at issue at the ITC, for all of the
11
following reasons:
12
● The FH patents are not involved in the ITC proceeding and cannot be stayed under 28
13
U.S.C. § 1659, and consequently NVIDIA bears the burden with respect to the Landis factors,
14
namely, (i) that a stay with respect to the FH patents would not harm Rambus, (ii) that going
15
forward would harm NVIDIA, and (iii) that a stay would promote the orderly course of justice,
16
see Landis v. N. Am. Co., 299 U.S. 248, 255 (1936);
17
● The case law uniformly supports denying NVIDIA’s motion as to the FH patents. The
18
few cases cited by NVIDIA are unavailing because here, the FH patents belong to a different
19
family of patents than the Barth/Ware patents at issue in the ITC and are infringed by products in
20
addition to those at issue in the ITC, in sharp contrast to the facts in the cases cited by NVIDIA
21
where the movant met its Landis burden on patents in the same family;
22
● A stay with respect to the FH patents would severely harm Rambus because
23
NVIDIA’s continued infringement harms Rambus’s goodwill and reputation as an innovator,
24
artificially depresses royalty rates for Rambus’s patents, reduces research and development
25
opportunities, and discourages adoption of and market share for Rambus’s own products;
26
● The FH patents at issue expire relatively soon, in 2010 or 2011, such that indefinitely
27
delaying Rambus’s right to seek legal and equitable relief for NVIDIA’s ongoing willful
28
infringement of these separate patents would unjustly prejudice Rambus; Rambus’ Opposition to NVIDIA’s Motion to Stay
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The Northern District of California has just docketed1 NVIDIA’s own recently-
2
transferred case from the Middle District of North Carolina, wherein NVIDIA’s allegations
3
squarely implicate the infringement, enforceability, and validity of the FH patents, (Dkt. No. 58,
4
Exs. A, C.), and Rambus would be prejudiced if it was precluded from advancing its first-filed
5
infringement claims relating to the FH patents while NVIDIA continues to press its second-filed
6
antitrust claims relating to those same patents;
7
● NVIDIA has not identified any recognized harm to NVIDIA in going forward, given
8
that NVIDIA itself intends to press its own FH-patent-related antitrust claims in this Court, and
9
that under the case law, being required to defend a suit does not constitute a clear case of
10 300 Crescent Court, Suite 1500 Dallas, TX 75201
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hardship or inequity; and
11
● NVIDIA’s motion to stay Rambus’s FH-related claims constitutes another attempt to
12
do what the District Court for the Middle District of North Carolina would not permit NVIDIA
13
to do: split the lawsuit in two, and multiply proceedings regarding the FH patents. Staying only
14
Rambus’s FH-related claims, but not NVIDIA’s, would make the proceedings far less (not more)
15
efficient, and would prejudice Rambus’s right to a “just, speedy, and inexpensive determination”
16
of its FH patent-infringement claims. See FED. R. CIV. P. 1.
17
In sum, a complete stay is neither mandated by statute nor justified by equity. The
18
interests of justice, judicial economy, and efficiency are best served by declining NVIDIA’s
19
invitation for a discretionary stay of indefinite duration, and instead staying only the patents in
20
common with the ITC action according to the statute, and proceeding on all issues-in-suit
21
relating to Rambus’s FH patents. The Court should deny NVIDIA’s request for a stay except as
22
to the Barth/Ware patents.
23
II.
24
Rambus Brings Suit on the FH and Barth/Ware Patents
FACTUAL BACKGROUND
25
Rambus filed this suit against NVIDIA on July 10, 2008. The suit asserts infringement
26
by NVIDIA’s products of fifteen patents which divide cleanly into two groups: six patents
27 28
1
NVIDIA Corp. v. Rambus Inc., C08-5500 MEJ (N.D. Cal.). Rambus’s Opposition to NVIDIA’s Motion to Stay
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1
claiming technology invented by Rambus founders Michael Farmwald and Mark Horowitz (the
2
“Farmwald/Horowitz” or “FH” patents), and nine patents claiming technology invented by
3
Richard Barth and/or Frederick Ware, with others (the “Barth/Ware” patents, as NVIDIA calls
4
them). (Dkt. No. 60 at 5-6.)
5
The six FH patents are all part of the same patent family, derived from an application first
6
filed in the Patent Office in 1990. This application discloses numerous inventions related to
7
solving the “memory bottleneck” problem that was then vexing the computer industry. The FH
8
patents at issue here include U.S. Patent Nos. 6,260,097 (“method and apparatus for controlling a
9
synchronous memory device”); 6,304,937 (“method of operation of a memory controller”);
10
6,564,281
(“synchronous
memory
device
having
automatic
precharge”);
6,715,020
11
(“synchronous integrated circuit device”); 6,751,696 (“memory device having a programmable
12
register); and 7,209,997 (“controller device and method for operating same”).
13
The three families of Barth/Ware patents, on the other hand, are directed to additional and
14
distinct features of memory devices/controllers. Two of these patents, for example, disclose,
15
among other features, a feature that could be termed “read/write leveling”: U.S. Patent Nos.
16
7,177,998 (“method, system, and memory controller utilizing adjustable read data delay
17
settings”); and 7,210,016 (“method, system, and memory controller utilizing adjustable write
18
data delay settings”). Three disclose, among other features, a feature that could be termed a
19
“strobed delayed write”:
20
dynamic memory”); 6,591,353 (“protocol for communication with dynamic memory”); and
21
7,287,109 (“method of controlling a memory device having a memory core”). And the last four
22
Barth/Ware patents disclose, among other features, a feature that could be termed “posted CAS
23
latency”: U.S. Patent Nos. 7,287,119 (“integrated circuit memory device with delayed write
24
command processing”); 7,330,952 (“integrated circuit memory device having delayed write
25
timing based on read response time”); 7,330,953 (“memory system having delayed write
26
timing”); and 7,360,050 (“integrated circuit memory device having delayed write capability”).
U.S. Patent Nos. 6,470,405 (“protocol for communication with
27 28 Rambus’s Opposition to NVIDIA’s Motion to Stay
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NVIDIA Brings Suit on the FH Patents
2
The day after Rambus instituted this patent-infringement suit, NVIDIA filed an antitrust
3
suit the Middle District of North Carolina, see NVIDIA v. Rambus Inc., No. 1:08-CV-472-UA-
4
WWD, Dkt. No. 7 (M.D.N.C.); (Dkt. No. 31 at 4), attempting to allege, inter alia, that Rambus’s
5
procurement and subsequent enforcement of the FH patents violated the Sherman Act, the type
6
of allegations that the Honorable Judge Ronald Whyte referred to as “likely counterclaims” to
7
Rambus’s FH patent-infringement claims. (Dkt. No. 31 at 4; see also Dkt. No. 60 at 13 n.14.)
8
In briefing on a motion to transfer filed in North Carolina, Rambus explained that
9
NVIDIA’s claims properly belonged as counterclaims to Rambus’s patent-infringement suit in
10
this Court. (Dkt. No. 58, Ex. A.) The Court agreed, expressly adopting Rambus’s briefed
11
arguments as the Court’s reasons for transfer, and transferred the case to this District. (Id., Ex.
12
C.) Rambus filed its Rule 3-12 notice to flag this issue for the Court. (Id.) NVIDIA thereafter
13
filed a motion to stay, seeking to stay Rambus’s suit even as to the FH patents, and before
14
NVIDIA’s transferred suit relating to the FH patents can be naturally consolidated with
15
Rambus’s suit. NVIDIA has expressly indicated that while it agrees that the transferred case is
16
related to this one, it opposes consolidation of the parties’ claims and counterclaims relating to
17
the FH patents. (See Dkt. No. 64.)
18
Rambus Files in the ITC on the Barth/Ware Patents, and NVIDIA Moves to Stay
19
Meanwhile, on November 6, 2008, Rambus filed a complaint in the ITC, seeking an
20
exclusion order with respect to the Barth/Ware patents that are also at issue in this suit. (Dkt.
21
No. 61-2.)
22
generations of NVIDIA products prior to DDR DRAM, such as the SDR SDRAM products at
23
issue here. (See id.) Neither does it include discontinued products for which Rambus seeks past
24
damages in this suit. On December 4, the ITC instituted an investigation into NVIDIA’s
25
infringement of the Barth/Ware patents based on Rambus’s November 6 complaint. (Dkt. No.
26
61-3.)
The ITC complaint does not include the FH patents, and it does not include
27
NVIDIA now moves for a stay of the Barth/Ware patents under 28 U.S.C. § 1659, which
28
provides for a litigation stay of claims relating to patents at issue in an ITC investigation. (Dkt. Rambus’s Opposition to NVIDIA’s Motion to Stay
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No. 60 at 4.) Rambus does not oppose this request. NVIDIA also moves, however, for a
2
discretionary stay of Rambus’s patent-infringement claims relating to the FH patents under
3
Landis v. N. Am. Co., 299 U.S. 248 (1936). (Dkt. No. 60 at 4.) For the reasons that follow,
4
Rambus opposes this additional request.
5
III.
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ANALYSIS A.
28 U.S.C. § 1659 Applies Only to the Barth/Ware Patents.
Rambus does not contest the applicability of § 1659 to its infringement claims relating to
8
the Barth/Ware patents.
9
pending the investigation in the ITC. See 28 U.S.C. § 1659(a). The case law is clear, however,
10
and NVIDIA does not dispute, that § 1659 does not extend to infringement claims from patents
11
not before the ITC. See Formfactor, Inc. v. Micronics Japan Co., Ltd., No. CV-06-07159-JSW,
12
2008 U.S. Dist. LEXIS 13114, at *4 (N.D. Cal. Feb. 11, 2008); Micron Tech., Inc. v. Mosel
13
Vitelic Corp., No. 98-0293, 1999 U.S. Dist. LEXIS 4792, at *8-9 (D. Idaho Mar. 31, 1999);
14
Organon Teknika Corp. v. Hoffmann La Roche, Inc., No. 1:95-CV-865, 1997 U.S. Dist. LEXIS
15
3798, at *6-7 (M.D.N.C. Feb. 19, 1997). Claims relating to the FH patents, therefore, cannot be
16
stayed under § 1659. (See Dkt. No. 60 at 4.) Instead, as NVIDIA recognizes, the FH claims can
17
only be stayed through a discretionary exercise of the Court’s inherent power as described by the
18
Supreme Court in Landis, 299 U.S. at 254-55. (See Dkt. No. 60 at 4.)
19 20 21 22 23 24 25 26
B.
Litigation of the Barth/Ware patents, therefore, should be stayed
NVIDIA’s Motion Falls Far Short of Meeting NVIDIA’s Burden to Show that a Stay Should Be Entered as to the FH Patents.
In evaluating NVIDIA’s request for a discretionary stay of claims relating to the FH patents, the Court should consider the following factors: (1) ‘possible damage which may result from the granting of a stay,’ (2) ‘the hardship or inequity which a party may suffer in being required to go forward,’ and (3) ‘the orderly course of justice measured in terms of the simplifying or complicating of issues, proof, and questions of law which could be expected to result from a stay.’ Am. Honda Motor, 2007 U.S. Dist. LEXIS 19981, at *3 (citation omitted). (Dkt. No. 60 at 9-10.
27 28 Rambus’s Opposition to NVIDIA’s Motion to Stay
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NVIDIA has the burden to show a stay is necessary.
2
The burden is on NVIDIA, the movant, to prove that a stay is necessary under these
3
factors. See id.; see also Clinton v. Jones, 520 U.S. 681, 708 (1997) (“The proponent of a stay
4
bears the burden of establishing its need.”); Sierra Club v. City and Cty. of Honolulu, No. CV-
5
04-00463, 2007 WL 2694489, at *4 (D. Haw. Sept. 11, 2007) (“[Party seeking stay] has failed to
6
show that Plaintiffs will not be harmed and has failed to establish that it will suffer a sufficient
7
hardship. Accordingly, even if granting the stay would conserve some of this Court’s resources,
8
this reason alone is insufficient to support a grant of stay.”) In fact, the Supreme Court has held
9
that, “if there is even a fair possibility that the stay for which [the movant] prays will work
10
damage to some one else,” then the movant—NVIDIA here—“must make out a clear case of
11
hardship or inequity in being required to go forward.” Landis, 299 U.S. at 255; see also Am.
12
Honda Motor, 2007 U.S. Dist. LEXIS 19981, at *5; Micron Tech., 1999 U.S. Dist. LEXIS 4792,
13
at *10.2 The Ninth Circuit has also recently cautioned against granting Landis stays, particularly
14
stays of indefinite duration, when the movant has provided insufficient proof of hardship or
15
inequity in being required to go forward. See Dependable Highway Express, Inc. v. Navigators
16
Ins. Co., 498 F.3d 1059, 1066-67 (9th Cir. 2007).3
17
2.
18
The case law uniformly compels the conclusion that NVIDIA has not met its burden on the facts in this case with respect to the FH patents.
19
Courts routinely deny motions for stay that seek to go beyond 28 U.S.C. § 1659. See,
20
e.g., Micron Tech., 1999 U.S. Dist. LEXIS 4792, at *8-14 (granting a § 1659 stay as to those
21
patents before the ITC, but denying an additional Landis stay as to the patents not before the
22
ITC); Organon Teknika, 1997 U.S. Dist. LEXIS 3798, at *8-9 (denying Landis stay as to patents
23 24 25 26 27 28
2
NVIDIA notes that Rambus previously described the burden carried by one moving for a Landis stay as “heavy,” and NVIDIA argues that this characterization is incorrect. (Dkt. No. 60 at 9 n.9.) Rambus submits that the need to “make out a clear case of hardship or inequity in being required to go forward,” see Landis, 299 U.S. at 255, is fairly described as a heavy burden. In any event, regardless of how NVIDIA characterizes its burden, Rambus submits that NVIDIA has failed to identify any valid basis in law or fact for extending a stay to the FH patents.
3
In Dependable Highway Express the Ninth Circuit also reaffirmed that, while a Landis stay is within the district court’s discretion, the standard of review on appeal “is ‘somewhat less deferential’ than the abuse of discretion standard used in other contexts.” 498 F.3d at 1066. Rambus’s Opposition to NVIDIA’s Motion to Stay
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not before the ITC); Am. Honda Motor Co. v. Coast Distrib. Sys., No. CV-06-04752-JSW, 2007
2
U.S. Dist. LEXIS 19981 (N.D. Cal. Feb. 26, 2007) (denying Landis stay where § 1659 not
3
triggered); Broadcom Corp. v. Qualcomm Inc., No. 05-468, 2005 U.S. Dist. LEXIS 45829, at *6
4
(C.D. Cal. Sept. 26, 2005) (denying Landis stay as to issues not before the ITC). The Court
5
should reach the same result here.
6
NVIDIA suggests that such Landis stays are “typically” granted in “circumstances like
7
those present here,” and cites four cases purportedly supporting that proposition. (Id. at 9.)
8
Contrary to NVIDIA’s suggestion, however, the case law supports Rambus’s position, rather
9
than NVIDIA’s position, on the facts in this case. Of the four cases cited by NVIDIA, one had
10
nothing to do with the ITC, or with § 1659. See Alloc, Inc. v. Unilin Décor N.V., No. CV-03-
11
253, 2003 WL 21640372 (D. Del. July 11, 2003).
12
In each of the other three cases cited by NVIDIA, the patents-in-suit belonged to the
13
same patent family, and thus shared, among other things, priority dates, prosecution history, and
14
specifications. That is, in each of the cases NVIDIA cites where the party seeking the stay
15
successfully met its Landis burden, the patents subject to the discretionary Landis stay were from
16
the same patent family as the patents before the ITC. See Formfactor, 2008 U.S. Dist. LEXIS
17
13114, at *11 (“same patent family”); Sandisk Corp. v. Phison Elec. Corp., 538 F. Supp. 2d
18
1060, 1066 (W.D. Wisc. 2008) (“[same] prosecution history [and] specification”); Flexsys
19
Americas v. Kumho Tire, U.S.A., Inc., No. 5:05-CV-156, 2005 WL 1126750, at *2 (N.D. Ohio
20
Apr. 29, 2005) (“part of a series of continuation patents, which includes [those in the ITC]”).
21
That is not the situation here, because the FH patents are not in the same patent family as the
22
Barth/Ware patents.
23
seeking a discretionary stay of the plaintiff’s patent-infringement claims while simultaneously
24
pressing antitrust claims relating to the procurement and enforcement of those same patents.
25
Thus NVIDIA cites no case in which a Landis stay was granted “[u]nder circumstances
26
like those present here.” (Dkt. No. 60 at 9.) Contrary to NVIDIA’s suggestion, perhaps the most
27
relevant of the § 1659 cases is Micron Tech., 1999 U.S. Dist. LEXIS 4792, at *8-14, in which the
28
court granted a § 1659 stay as to those patents before the ITC, but denied an additional Landis
Additionally, in none of NVIDIA’s cited cases were the defendants
Rambus’s Opposition to NVIDIA’s Motion to Stay
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stay as to the patents not before the ITC. As set forth below, consideration of all three Landis
2
factors counsels denying the motion to stay the claims relating to the FH patents.
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3.
A stay would prejudice Rambus.
4
NVIDIA’s assertion that Rambus “cannot point to” any harm that might be caused by a
5
discretionary stay of Rambus’s claims is doubly wrong. (Dkt. No. 60 at 10.) As an initial
6
matter, the burden of proof here is on NVIDIA, not on Rambus. See Clinton, 520 U.S. at 708.
7
But NVIDIA completely disregards the significant prejudice Rambus would suffer from the
8
discretionary stay NVIDIA seeks. It does so in at least three ways.
9
First, NVIDIA moves for a stay of indefinite duration. And notwithstanding NVIDIA’s
10
characterization of the stay as causing a “relatively minimal delay,” (Dkt. No. 60 at 11), the stay
11
in fact could easily last for two years or more. That is because, under recent Federal Circuit
12
precedent, the § 1659 stay to which NVIDIA would have the Court append its Landis stay will
13
not be lifted until the ITC investigation into the Barth/Ware patents has been completed and run
14
its full appellate course, if necessary, through the Federal Circuit and beyond. See In re Princo
15
Corp., 478 F.3d 1345, 1355 (Fed. Cir. 2007).
16
As the Supreme Court has held, the prospect of such a lengthy stay “takes no account
17
whatever of the [plaintiff]’s interest in bringing the case to trial.” Clinton, 520 U.S. at 708. It
18
also necessarily carries a real threat of prejudice. See id. (“delaying trial would increase the
19
danger of prejudice resulting from the loss of evidence, including the inability of witnesses to
20
recall specific facts”). In addition to the threat of prejudice resulting from the loss of evidence,
21
“each passing month allows [NVIDIA] to infringe upon [Rambus’s] patented technology . . .
22
[and] poses a continuing risk that [NVIDIA] could falter financially rendering any potential
23
award practically impossible to recover.” See Micron Tech, 1999 U.S. Dist. LEXIS 4792, at
24
*12-13. NVIDIA’s continued infringement further harms Rambus’s goodwill and reputation as
25
an innovator, artificially depresses royalty rates for Rambus’s patents, reduces research and
26
development opportunities, and discourages adoption of and market share for Rambus’s own
27
products.
28 Rambus’s Opposition to NVIDIA’s Motion to Stay
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Accordingly, the Ninth Circuit is particularly concerned with the practice of granting
2
stays of indefinite duration. See Dependable Highway Express, 498 F.3d at 1066 (“Generally,
3
stays should not be indefinite in nature.”); see also, e.g., Sorensen v. Lexar Media, Inc., No. CV-
4
08-00095-JW, 2008 U.S. Dist. LEXIS 87511, at *3 (N.D. Cal. Apr. 30, 2008) (denying Landis
5
stay where, inter alia, it might have lasted for two years or more); Asustek Computer Inc. v.
6
Ricoh Co., Ltd., No. C-07-01942-MPH, 2007 U.S. Dist. LEXIS 96302, at *8 (N.D. Cal. Nov. 21,
7
2007) (denying Landis stay where, inter alia, length of delay during appeal to Federal Circuit
8
and beyond was “uncertain and indefinite”). The indefinite, and likely lengthy, nature of the stay
9
that NVIDIA seeks poses real threats of prejudice to Rambus’s interest in bringing its claims to a
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timely and proper resolution.4 See Clinton, 520 U.S. at 708.
11
Second, Rambus is seeking injunctive relief on its claims relating to the FH patents.
12
Such relief is viable only during the life of the patents. And because the FH patents-in-suit are
13
all part of the same patent family, derived from an application first filed in 1990, they are all set
14
to expire relatively soon—four in 2010, and two in 2011. As it is, resolution of this case will
15
likely be pushing up against the expirations. Should the Court stay litigation relating to the FH
16
patents, however, there is no doubt that the patents will have expired, making Rambus’s claim
17
for injunctive relief on these patents a nullity. That should qualify, at the least, as “a fair
18
possibility that the stay for which [NVIDIA] prays will work damage to” Rambus. See Landis,
19
299 U.S. at 255; see also Am. Honda Motor, 2007 U.S. Dist. LEXIS 19981, at *4-5; Lockyer v.
20
Mirant Corp., 398 F.3d 1098, at 1112 (9th Cir. 2005) (vacating the lower court’s stay, noting that
21
plaintiff “seeks injunctive relief against ongoing and future harm”).
22 23 24 25 26 27 28
4
NVIDIA suggests that the Court should not consider these harms because, according to NVIDIA, Rambus “chose to delay obtaining claims” and “chose to delay filing the present action.” (Dkt. No. 60 at 11.) Neither of these arguments is accurate, and neither is relevant to the issue of whether NVIDIA’s requested indefinite stay threatens to prejudice Rambus. Rambus diligently obtained its claims through the ordinary processes of application to the Patent Office. Any “delay” in filing the present suit was due, as NVIDIA’s cited evidence explains, to Rambus’s persistent attempts to negotiate a license rather than litigate with NVIDIA. To penalize Rambus for attempting to resolve this dispute without the necessity of judicial intervention would only serve to encourage an unnecessary rush to the courthouse with the attendant waste of scarce judicial resources. (Dkt. No. 61-8.) Further, to the extent NVIDIA argues that this case is “in its infancy,” Rambus should not be punished via a stay on the FH patents, as the state of the case is the result of NVIDIA’s conduct. Rambus’s Opposition to NVIDIA’s Motion to Stay
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Third, and perhaps most importantly, Rambus would be prejudiced if it was precluded
2
from advancing its first-filed infringement claims relating to the FH patents while NVIDIA
3
continues to press its second-filed antitrust counterclaims relating to those same patents. As
4
Rambus argued in its motion to transfer filed in the Middle District of North Carolina—
5
arguments adopted by the Court in granting that motion, (Dkt. No. 58, Exs. A, C)—NVIDIA’s
6
antitrust claims place the infringement, enforceability, and validity of the FH patents squarely at
7
issue. And NVIDIA insists that these claims “can and should proceed” in this Court. (Dkt. No.
8
60 at 13 n.14.) To borrow from a case cited by both parties in the transfer briefing,
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12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
[a]n obvious logical relationship exists between these claims and the issues [to be] addressed by the . . . patent infringement suit, and the essential facts of the claims are so logically connected that considerations of judicial economy and fairness dictate that all the issues should [be] resolved in one lawsuit. Critical-Vac Filtration Corp. v. Minuteman Int’l, Inc., 233 F.3d 697, 700 (2d Cir. 2000). Both parties have pleaded claims regarding the prosecution and enforcement of the FH patents against NVIDIA. NVIDIA alleges that these activities have violated the Sherman Act; Rambus alleges that these activities have been proper, and should result in NVIDIA being found liable for infringement. It would not be an efficient use of resources, and it would certainly not be fair to Rambus, to proceed on NVIDIA’s claims relating to the FH patents while staying Rambus’s logically connected claims relating to the same patents. The discretionary stay of indefinite duration requested by NVIDIA thus threatens real prejudice to Rambus. As with the movant in American Honda Motor, NVIDIA “has not met its burden to show [Rambus] would not be harmed if the litigation is delayed.” 2007 U.S. Dist. LEXIS 19981, at *4. 4.
Going forward would not harm NVIDIA.
Because the requested stay poses a real threat of harm to Rambus, NVIDIA “must make out a clear case of hardship or inequity in being required to go forward” on the FH patents. Landis, 299 U.S. at 255; see also Am. Honda Motor, 2007 U.S. Dist. LEXIS 19981, at *5; Micron Tech., 1999 U.S. Dist. LEXIS 4792, at *10. NVIDIA has not met this demanding
28 Rambus’s Opposition to NVIDIA’s Motion to Stay
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standard. NVIDIA has not, in fact, proved that going forward on the FH patents would cause it
2
any harm at all.
3
NVIDIA’s principal argument on this score appears to be its entirely conclusory assertion
4
that it would be prejudiced if required “to defend claims of infringement against the same sets of
5
products in two different fora simultaneously.” (Dkt. No. 60 at 11.) Not surprisingly, NVIDIA
6
provides no authority for this argument. In patent law, the claims run with the patents-in-suit,
7
not with the accused products. It is thus not unusual for a company to be defending the same
8
product in different fora against claims that it infringes different patents.5 Indeed, this so-called
9
“prejudice” is precisely “the hardship attendant with being forced to defend a lawsuit” that “is
10
irrelevant when considering whether to grant a stay.” Am. Honda Motor, 2007 U.S. Dist. LEXIS
11
19981, at *5; see also Lockyer, 398 F.3d at 1112 (“[B]eing required to defend a suit, without
12
more, does not constitute a ‘clear case of hardship or inequity’ within the meaning of Landis.”)
13
NVIDIA also suggests that an alleged “duplication in discovery proceedings” may cause
14
it harm. (Dkt. No. 60 at 11.) NVIDIA does not say, however, exactly what proceedings will
15
need to be duplicated. NVIDIA cites to the Formfactor case, but in that case the patents not
16
before the ITC were in the “same patent family” as those at issue in the ITC investigation. 2008
17
U.S. Dist. LEXIS 13114, at *10. That is not a concern here. Nor is there any reason to believe
18
that the parties cannot coordinate a schedule and a cross-use agreement so that discovery
19
provided in either forum need only be produced once.
20
In any event, even if the possibility of ongoing, “duplicative” discovery might pose a
21
threat of harm to some stay movant in the abstract, it certainly poses no threat of harm to
22
NVIDIA in these circumstances. We know this because NVIDIA has already declared that,
23
notwithstanding its request to stay the FH-related infringement claims, it intends to continue to
24
press its own FH-patent-related antitrust claims in this Court. (Dkt. No. 60 at 13 n.14.) Those
25
claims will undoubtedly involve extensive discovery into both the FH patents and the NVIDIA
26 27 28
5
It is also worth noting that, while the products at issue in this suit and the ITC investigation do overlap to some extent, the overlap is not complete. The ITC action, for example, concerns only products that NVIDIA is currently importing or selling for or after importation. (See Dkt. No. 61-2 at 216-17.) This suit is not so limited in the products it accuses of infringement. Rambus’s Opposition to NVIDIA’s Motion to Stay
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products onto which those patents read.6 The so-called “harm” posed by discovery relevant to
2
the FH patents is thus something that NVIDIA fully intends to inflict upon itself, and cannot
3
support NVIDIA’s claim that a stay is necessary to protect it from unfair prejudice. See Micron
4
Tech., 1999 U.S. Dist. LEXIS 4792, at *12, 14.
5
NVIDIA has thus not only failed to prove a “clear case of hardship or inequity in being
6
required to go forward” on the FH patents, see Landis, 299 U.S. at 255, it has failed to make out
7
any case of real hardship at all. For this reason alone, NVIDIA’s motion for a Landis stay must
8
be denied. See id.; see also Dependable Highway Express, 498 F.3d at 1066 (finding stay an
9
abuse of discretion where movant “failed to establish a sufficient case of hardship”); Am. Honda
10
Motor, 2007 U.S. Dist. LEXIS 19981, at *5 (finding that without specific “facts showing
11
hardship,” the movant had “not met its burden of showing a stay is warranted”); Micron Tech.,
12
1999 U.S. Dist. LEXIS 4792, at *14 (“The Court concludes that Defendants have not established
13
that a stay of the instant proceedings is necessary to prevent undue hardship or injustice.”).
14
5.
A stay would not promote the orderly course of justice.
15
Because NVIDIA has failed to prove that a Landis stay is necessary to prevent hardship,
16
there should be no need for the Court to consider NVIDIA’s judicial-economy arguments. See
17
Dependable Highway Express, 498 F.3d at 1066 (“case management standing alone is not
18
necessarily a sufficient ground to stay proceedings.”); see also Lockyer, 398 F.3d at 1112
19
(overturning Landis stay where only legitimate ground was judicial economy). But in any event,
20
NVIDIA has also failed to prove that a stay of claims relating to the FH patents would promote
21
the orderly course of justice. And in fact such a stay would have the opposite effect.
22
The Barth/Ware patents and FH patents represent two distinct groupings of patents, and
23
claims relating to the FH patents can proceed efficiently in this Court while the Barth/Ware
24
patents are proceeding before the ITC.
25
antitrust counterclaims are pending in a suit soon to be related to this one, (Dkt. Nos. 58, 64), the
26
orderly and efficient course forward appears clear: both parties’ claims relating to the FH
27 28
Further, given the fact that NVIDIA’s FH-related
6
Further, infringement claims relating to the FH patents are appropriate counterclaims to NVIDIA’s FH-related antitrust claims. Rambus’s Opposition to NVIDIA’s Motion to Stay
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patents should be consolidated, and both parties should then work, with the Court, to secure the
2
“just, speedy, and inexpensive determination” of those claims. See FED. R. CIV. P. 1.
3
NVIDIA argues that the Court should grant the requested Landis stay on the off chance
4
that the ITC’s investigation of the Barth/Ware patents might shed some light on the FH patents.
5
(Dkt. No. 60 at 12.) There are at least two problems with this argument. First, Congress “did not
6
intend decisions of the ITC on patent issues to have preclusive effect.” Tex. Instr. Inc. v. Cypress
7
Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996). Whatever happens in the ITC,
8
therefore, this Court will subsequently be examining the issues anew, attributing only whatever
9
“value to the prior ITC decision that it considers justified.” Id. at 1569; see also Am. Honda
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Motor, 2007 U.S. Dist. LEXIS 19981, at *5-6.
11
Second, in contrast to the situation in Formfactor, (see Dkt. No. 60 at 12), no patent in
12
the FH family is before the ITC. Although both the Barth/Ware patents and FH patents are
13
asserted against controllers, these patents disclose and claim different inventions, as discussed
14
supra. There is therefore little reason to expect that the ITC’s investigation into the Barth/Ware
15
patents will produce valuable insights into Rambus’s claims regarding the FH patents-in-suit.
16
See Organon Teknika, 1997 U.S. Dist. LEXIS 3798, at *8. And while no patent in the FH family
17
is before the ITC, some patents in that family have been before The Hon. Judge Whyte in this
18
District. (Dkt. No. 31 at 3.) Judge Whyte has, in fact, “issued a detailed claim construction
19
order with respect to” those patents, and that order is both already available and deserving of
20
deference. (Id. at 5.) The Court therefore already has access to the considered judgment of
21
another proceeding, and there is no reason to expect that the current ITC investigation will add
22
anything of substantial value to the insights regarding the FH patents already available from the
23
proceedings before Judge Whyte. See Am. Honda Motor, 2007 U.S. Dist. LEXIS 19981, at *5-6.
24
NVIDIA mentions the cases before Judge Whyte, but only to argue that the Court should
25
grant the requested Landis stay because “four of the six Farmwald patents are presently the
26
subject of litigation . . . pending before Judge Whyte” and set for trial next month, in January of
27
2009. (Dkt. No. 60 at 12.) This argument is also without merit. For one thing, NVIDIA is
28
simply wrong to suggest that four of the six FH patents at issue here are set to be tried before Rambus’s Opposition to NVIDIA’s Motion to Stay
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Judge Whyte. In fact, only one claim from one patent cited by NVIDIA—claim 4 of U.S. Patent
2
No. 6,751,696 (the “’696 patent”)—was elected for the January trial before Judge Whyte. For
3
another thing, the fact that trial in that case is scheduled for January means that there should be
4
no reason to stay this case in order to account for the result in that one. This remote possibility
5
of a one-claim overlap with a trial scheduled to begin the same month as the CMC in the present
6
case provides no reason to grant the indefinite Landis stay requested by NVIDIA.7
7
The orderly course of justice thus favors moving forward with both parties’ claims
8
relating to the FH patents. The ITC will not be addressing NVIDIA’s infringement of the FH
9
patents, nor of any patent in that family, in its investigation. Neither will the ITC be addressing
10
any of NVIDIA’s antitrust-related claims. Indeed, the ITC is without jurisdiction to hear such
11
claims. See 19 U.S.C. § 1337(c).8 It will thus necessarily fall to this Court to resolve both
12
parties’ claims relating to the FH patents. Given that both parties are ready to press their
13
respective claims regarding these patents in this Court, (see Dkt. No. 60 at 13 n.14), the parties’
14
claims should be consolidated9 and should proceed toward resolution without further delay. See
15
FED. R. CIV. P. 1.
16 17 18 19 20 21 22 23 24 25 26 27 28
7
NVIDIA also suggests in passing that some undisclosed reexamination proceedings “may also narrow the disputed issues here,” (Dkt. No. 60 at 5), but NVIDIA’s vague argument is unavailing. For example, NVIDIA’s accused products with respect to the ’696 patent include controllers. The claims of the ’696 patent that are subject to reexamination, however, are claims 1 and 4, reciting a “synchronous memory device,” and not, for example, a “method of controlling.” Further, NVIDIA also fails to mention that Judge Whyte on multiple occasions has rejected requests for a stay based on reexamination of FH patents. 8 Even if NVIDIA subsequently attempts to file antitrust counterclaims related to the Barth/Ware patents in the ITC, those claims will need to be removed to an appropriate U.S. District Court. Given all the logically related litigation already pending in this Court, as well as the other factors identified in Rambus’s briefing on its motion to transfer adopted by the Middle District of North Carolina, (see Dkt. No. 58, Exs. A, C), there is good reason to expect that this Court would also be the appropriate destination for such removal. See 19 U.S.C. § 1337(c). 9 NVIDIA’s argument that there can be no consolidation of NVIDIA’s transferred claims regarding the FH patents into Rambus’s first-filed suit regarding the FH patents without a motion and briefing schedule, (Dkt. No. 64 at 2), is not well-taken. Judge Whyte has already observed that antitrust claims are “likely counterclaims” to Rambus’s first-filed suit, (Dkt. No. 31 at 4), and this Court, of course, has inherent power to consolidate the just-transferred North Carolina suit that relates to the FH patents into Rambus’s first-filed suit in which the FH patents are also at issue. Rambus’s Opposition to NVIDIA’s Motion to Stay
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IV.
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CONCLUSION
2
NVIDIA has not met its burden to prove that an indefinite stay of Rambus’s claims
3
relating to the Farmwald/Horowitz patents is necessary. The Court should thus grant the § 1659
4
stay as to claims relating to the Barth/Ware patents, but deny the requested Landis stay as to
5
claims relating to the Farmwald/Horowitz patents.10
6 7 8
Respectfully submitted, DATED: December 17, 2008
9
TURNER BOYD LLP
10
By: /s/ Pierre J. Hubert Pierre J. Hubert
McKOOL SMITH P.C.
11 300 Crescent Court, Suite 1500 Dallas, TX 75201
MCKOOL SMITH P.C.
Attorneys for Plaintiff RAMBUS INC.
12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
10
Rambus recognizes that, in granting NVIDIA’s motion to expedite via NVIDIA’s Proposed Order, (Dkt. No. 67), the Court has held that there will be no oral argument on this motion. Rambus agrees that denial of NVIDIA’s motion with respect to the Landis stay does not require a hearing given that NVIDIA has not identified any valid basis in law or fact for a stay on the FH patents, and has not met its Landis burden. But if the Court determines that this is a close question, Rambus urges the Court to consider oral argument, given that Rambus’s substantive rights to enforce the FH patents are implicated. Rambus’s Opposition to NVIDIA’s Motion to Stay
15
Case No. C-08-03343 SI
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