Samsung Msj

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[Attorneys Listed On Signature Page]

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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RAMBUS INC., Case No. C 05-00334 RMW

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Plaintiff, v. HYNIX SEMICONDUCTOR, INC., et al.,

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Defendants.

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Hearing Date: January 30, 2009 Time: 2:00 p.m. Courtroom: 6 Honorable Ronald M. Whyte Case No. C 05-02298 RMW

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RAMBUS INC.,

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Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD., et al.,

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Defendants. RAMBUS INC.,

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NOTICE OF MOTION AND MOTION FOR ENTRY OF JUDGMENT OF UNENFORCEABILITY OF RAMBUS’S ASSERTED PATENTS AS AGAINST SAMSUNG AND DISMISSAL OF RAMBUS’S PATENTINFRINGEMENT CLAIMS AGAINST SAMSUNG OR, IN THE ALTERNATIVE, FOR SUMMARY JUDGMENT

Case No. C 06-00244 RMW Plaintiff,

v. MICRON TECHNOLOGY, INC., et al., Defendants.

27 28 MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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TABLE OF CONTENTS

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Page(s)

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I. PRELIMINARY STATEMENT ..................................................................................................1

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II. BACKGROUND AND STATEMENT OF UNDISPUTED FACTS.........................................3

5

A.

The Eastern District of Virginia Finds Spoliation and Unclean Hands in the Infineon Litigation After a Full Bench Trial ____ ................................................3

B.

This Court Reaches A Different Outcome In Hynix I Based Mainly On The Foreseeability Standard That It Applies ...........................................................4

C.

Samsung and Rambus Litigate the Spoliation Defense and Rambus Again Loses ........................................................................................................................5

D.

Rambus Re-Litigates, and Once Again Loses, the Unclean Hands and Spoliation Defense to Its Patent Claims in the Delaware Court _____ ...................6

E.

Samsung Presents Its Unclean-Hands and Spoliation Case in This Court...............8

6 7 8 9 10 11 12 13

III. THE DELAWARE COURT’S DECISION IS BINDING UPON RAMBUS AND REQUIRES DISMISSAL OF RAMBUS’S INFRINGEMENT CLAIMS AGAINST SAMSUNG........................................................................................................9

14

A.

Legal Standards........................................................................................................9

15

B.

The Elements Of Collateral Estoppel Are Satisfied Here......................................10

16

1.

Rambus Had a Full and Fair Opportunity to Litigate ................................10

17

2.

The Identity of Issues Requirement Is Met ................................................11

18

a.

Different Patents and Products.......................................................13

19

b.

Samsung’s RDRAM and SDR/SDRAM Licenses With Rambus...........................................................................................14

c.

Voluntary Dismissal.......................................................................15

d.

Remedy ..........................................................................................17

e.

Rambus’s Unclean-Hands Defense................................................19

20 21 22 23 3.

The Spoliation/Unclean Hands Issue Was Actually Litigated and Necessarily Decided in Delaware ..............................................................19

25

4.

The Delaware Decision Meets The Finality Requirement.........................20

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5.

Rambus’s Fairness Arguments Do Not Apply Because Samsung’s Request for Collateral Estoppel is Defensive, Not Offensive....................21

6.

The Fairness Standard for Offensive Collateral Estoppel Does Not Apply, But If It Did, It Is Clearly Satisfied Here .......................................22

24

27 28

MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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TABLE OF CONTENTS (continued)

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Page(s)

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a.

Inconsistent Decisions....................................................................23

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b.

Procedural Opportunity..................................................................24

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C.

Rambus’s Patent Claims Should Be Dismissed Even If the Delaware Court’s Decision Is Not Given Full Preclusive Effect ...........................................25

6 IV. CONCLUSION........................................................................................................................25 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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TABLE OF AUTHORITIES Page(s)

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CASES

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A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700 (Fed. Cir. 1983)................................................................................................. 13

5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27

Amadeo v. Principal Mutual Life Insurance Co., 290 F.3d 1152 (9th Cir. 2001)................................................................................................. 19 Americana Fabrics, Inc. v. L&L Textiles, Inc., 754 F.2d 1524 (9th Cir. 1985)................................................................................................. 24 Aptix Corp. v. Quickturn Design System, Inc., 269 F.3d 1369 (Fed. Cir. 2001)............................................................................................... 18 Blonder-Tongue Laboratories, Inc. v. University of Ill. Foundation, 402 U.S. 313 (1971) .......................................................................................................... 21, 22 Comair Rotron, Inc. v. Nippon Densan Corp., 49 F.3d 1535 (Fed. Cir. 1995)................................................................................................. 13 Davis & Cox v. Summa Corp., 751 F.2d 1507 (9th Cir. 1985)................................................................................................... 9 Dodd v. Hood River County, 59 F.3d 852 (9th Cir. 1995)....................................................................................................... 9 Fireman's Fund Insurance Co. v. Stites, 258 F.3d 1016 (9th Cir. 2001)................................................................................................... 9 In re Baldwin, 249 F.3d 912 (9th Cir. 1995)................................................................................................... 20 In re First Actuarial Corp. of Ill., 182 B.R. 178 (W.D. Mich. 1995)...................................................................................... 17, 18 General Excavator Co. v. Keystone Driller Co., 62 F.2d 48 (6th Cir. 1932)....................................................................................................... 18 Gilbert v. Ben-Asher, 900 F.2d 1407 (9th Cir. 1990)................................................................................................... 9 Hydranautics v. Filmtec Corp., 204 F.3d 880 (9th Cir. 2000)..................................................................................................... 9 Luben Industrial, Inc. v. United States, 707 F.2d 1037 (9th Cir. 1983)........................................................................................... 20, 21 M&T Mortgage Corp. v. Miller, Number CV 2002-5410 (NG) (MDG), 2007 WL 2403565 (E.D.N.Y. Aug. 17, 2007)........................................................................ 15

28 MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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Page(s)

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Maciel v. Commissioner of Internal Revenue, 489 F.3d 1018 (9th Cir. 2007)................................................................................................. 10

4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25

Micron Technology, Inc. v. Rambus Inc., ___ F. Supp. 2d ___, 2009 WL 54887 (D. Del. Jan. 9, 2009) ......................................... passim N.V. Akzo v. E.I. DuPont de Nemours, 810 F.2d 1148 (Fed. Cir. 1987)............................................................................................... 17 Osborn v. Knights of Columbus, 401 F. Supp. 2d 830 (N.D. Ohio 2005)................................................................................... 24 Parklane Hosiery v. Shore, 439 U.S. 322 (1979) .................................................................................................... 21, 22, 23 Pena v. Gardner, 976 F.2d 469 (9th Cir. 1992)..................................................................................................... 9 Precision Instrument Manufacturing Co. v. Automobile Maintenance Machine Co., 324 U.S. 806 (1945) ................................................................................................................ 19 Premier Electric Construction Co. v. National Electric Contractors Association, Inc., 814 F.2d 358 (7th Cir. 1987)................................................................................................... 23 Samsung Electrics Co. v. Rambus Inc., 439 F. Supp. 2d 524 (E.D. Va. 2006).................................................................... 4, 5, 6, 15, 19 Samsung Electrics Co. v. Rambus Inc., 440 F. Supp. 2d 512 (E.D. Va. 2006)........................................................................................ 5 Samsung Electrics Co. v. Rambus Inc., 523 F.3d 1374 (Fed. Cir.), cert. denied, 129 S. Ct. 279 (2008) ................................................ 6 Sec. People, Inc. v. Medeco Sec. Locks, Inc., 59 F. Supp. 2d 1040 (N.D. Cal. 1999) .................................................................................... 21 Starker v. United States, 602 F.2d 1341 (9th Cir. 1979)................................................................................................. 11 State of Idaho Potato Commission v. G&T Terminal Packaging, Inc., 425 F.3d 708 (9th Cir. 2005)................................................................................................... 21 T.W. Electric Serv., Inc. v. Pac. Electric Contractors Association, 809 F.2d 626 (9th Cir. 1987)................................................................................................... 10

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United States v. ITT Rayonier, Inc., 627 F.2d 996 (9th Cir. 1980)..................................................................................................... 9

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FEDERAL STATUTES

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35 U.S.C. § 285 ......................................................................................................................... 5, 23 MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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28 U.S.C. § 1291 ........................................................................................................................... 20 Fed. R. Civ. P. 56(a)...................................................................................................................... 10 STATE STATUTES Cal. Bus. & Prof. Code § 17200 ................................................................................................... 16 MISCELLANEOUS 18 Wright et al., Federal Practice and Procedure § 4407 (1981) .................................................. 16 77 U.S.L.W. 3346 (Nov. 24, 2008) (No. 08-694) ......................................................................... 23 Restatement (Second) of Judgments § 13 (1982) ......................................................................... 20 Restatement (Second) of Judgments § 24 (1981) ......................................................................... 16 Restatement (Second) of Judgments § 27 (1982) ........................................................................... 9

14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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NOTICE OF MOTION

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TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

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NOTICE IS GIVEN THAT Samsung Electronics Co., Ltd., Samsung Electronics

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America, Inc., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor, L.P.

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(“Samsung”) hereby move the Court for entry of a judgment of unenforceability of Rambus’s

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asserted patents as against Samsung and dismissal of Rambus’s patent-infringement claims under

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U.S. Patent Nos. 6,182,184, 6,266,285, 6,314,051, 6,324,120, 6,378,020, 6,426,916, 6,452,863,

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6,546,446, 6,584,037, and 6,751,696 (the “Asserted, Elected Patents”) and U.S. Patent Nos.

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5,915,105, 5,953,263, 6,034,918, 6,038,195, 6,067,592, 6,101,152, 6,260,097, 6,564,281,

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6,697,295, 6,715,020, and 6,807,598 (the “Asserted, Unelected Patents”) (collectively, the

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“Asserted Rambus Patents”), or, in the alternative, for an order granting summary judgment on

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Samsung’s unclean-hands defense and dismissing Rambus’s patent-infringement claims under the

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Asserted Rambus Patents.

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This motion shall be heard on January 30, 2009, at 2:00 p.m. in the above-referenced

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court, located at 280 South First Street, San Jose, California 95110, before the Honorable Ronald

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M. Whyte.

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Samsung bases its motion on this Notice of Motion, the Memorandum of Points and

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Authorities set forth below, the accompanying Declaration of Steven S. Cherensky in Support of

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Motion for Entry of Judgment of Unenforceability of Rambus’s Asserted Patents as Against

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Samsung and Dismissal of Rambus’s Patent Infringement Claims Against Samsung or, in the

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Alternative, for Summary Judgment and exhibits thereto, the accompanying Motion to Take

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Judicial Notice and Re-Open the Record of the Unclean Hands September Trial Solely To Admit

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Evidence Related to Collateral Estoppel, and such other evidence and argument that may properly

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come before the Court.

25 26 27 28 MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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I. PRELIMINARY STATEMENT

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The intentional, systematic, and widespread destruction of evidence in anticipation of

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litigation is abhorrent to our judicial system, and is viewed as such by the law. Such destruction

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by design frustrates the search for truth and impugns the integrity of the litigation process.

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Rambus engaged in these unlawful acts according to the decisions of two United States District

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Courts. These courts found that Rambus destroyed millions of pages of documents related to all

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aspects of its business, including its patent files, for the express purpose of preparing for planned

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and foreseeable litigation with DRAM manufacturers including the defendants here, and

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specifically including Samsung. Judge Robert E. Payne of the Eastern District of Virginia has

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twice found (once in 2005 in Rambus v. Infineon, before this Court’s Hynix I spoliation trial and

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order, and once in 2006 in Samsung v. Rambus, after that order and expressly considering and

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addressing it) that Rambus intentionally spoliated evidence.

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deemed appropriate in Infineon was to find the Rambus patents unenforceable against Infineon (in

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Samsung, Rambus had already withdrawn its patent claims, so there were no patent claims to

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dismiss). Judge Sue L. Robinson of the District of Delaware similarly found this month, based on

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largely the same evidence, that Rambus was guilty of spoliation and that the appropriate remedy

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was the unenforceability of Rambus’s patents (this time as against Micron).

The remedy that Judge Payne

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Rambus escaped the consequences of Judge Payne’s Infineon ruling by quickly settling

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with Infineon before Judge Payne could reduce his ruling to a written order. Of course, Infineon

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had tremendous leverage, and was able to obtain a royalty on terms that were materially better

21

than the so-called “reasonable royalty” Rambus seeks in this litigation because Rambus

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desperately wanted to avoid the collateral-estoppel effect of a written order on its ongoing and

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prospective litigations with other DRAM manufacturers, including Samsung. When Judge Payne

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reduced his 2006 spoliation determination to writing and issued a 116-page opinion with detailed

25

factual findings, Rambus again escaped the consequences of that order based on procedural and

26

jurisdictional maneuvers unrelated to the merits of Judge Payne’s spoliation findings.

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Rambus should not be permitted to avoid the consequences of Judge Robinson’s January

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9, 2009 opinion. It is written, detailed, and supported by specific factual findings. Rambus had a MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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full and fair opportunity to litigate the spoliation issue in Delaware, Rambus’s spoliation was

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actually litigated in Delaware and necessarily determined there, and the spoliation issue tried in

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Delaware meets the identity-of-issues test required for collateral estoppel to apply here. All of

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the elements of collateral estoppel are met.

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Nor is this Court’s decision in Hynix I a basis to deny the application of Judge Robinson’s

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order through collateral estoppel. This Court is the only District Court to have found Rambus’s

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litigation-driven destruction of documents to be unblameworthy. With respect, this Court’s

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decision in Hynix I is now clearly in the minority and its correctness is very much in doubt.

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Further, the Delaware decision is binding on Rambus and this Court, notwithstanding this

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Court’s contrary conclusion on nearly identical facts in Hynix I, not only because the Delaware

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decision is correct (it is), but also because the Delaware decision is binding on Rambus and this

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Court and Hynix I is not.

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Indeed, consistency, certainty, finality, integrity, and judicial economy are all important

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principles underlying our judicial system. Those important principles are all furthered by giving

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full collateral-estoppel effect to Judge Robinson’s opinion and dismissing Rambus’s infringement

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claims against Samsung here. The DRAM industry is an important and very large component of

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the modern global economy. The defendants in the various Rambus litigations are all significant

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players in that industry. No legitimate interest is furthered (and, given the exorbitant royalties

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Rambus is seeking, the market will not function properly) if certain manufacturers achieve

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competitive advantage over others due to as capricious a factor as their (or Rambus’s) ability to

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have their case heard in one venue (or by one jurist) rather than another. To the contrary,

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inconsistent judicial decisions with respect to Rambus’s unlawful spoliation (and the resulting

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inconsistent economic consequences to similarly-situated market participants) also impugns and

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makes a mockery of the litigation process. This is especially true with respect to Samsung, which

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did not sue Rambus first and is not in a jurisdiction of its choosing. This Court is now the only

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court that can create the necessary consistency, finality, certainty and judicial economy and can

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deter future would-be spoliators from following Rambus’s lead.

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As to Samsung, the application of collateral estoppel is most clearly required because of MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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Rambus’s egregious forum shopping in order to avoid the effect of their spoliation. As the Court

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will recall from the September trial, Rambus gave Samsung an ultimatum in June 2005 that it

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would defer terminating the license agreement only if Samsung would agree to a procedure that

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would protect Rambus from having to litigate before Judge Payne, expressly to avoid giving

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Judge Payne a chance to finalize his ruling on spoliation. After Samsung refused, Rambus sued

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in this court. When Samsung brought suit before Judge Payne, Rambus again did everything it

7

could to avoid Judge Payne, including a failed transfer motion, agreeing never to sue Samsung on

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the patents-in-suit and offering to pay Samsung’s fees. This is precisely the situation the law of

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collateral estoppel was designed to prevent: the unseemly manipulation of the federal courts by a

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party trying to avoid the consequences of one federal court’s decision by re-litigating those issues

11

before another federal court.

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The doctrine of collateral estoppel (particularly non-mutual collateral estoppel) evolved

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because, in an age of crowded dockets and limited resources, it is contrary to the interests of

14

society for litigants to be afforded more than one full and fair opportunity for judicial resolution

15

of the same issue. Rambus has had more than its day in court and a final decision has been

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rendered against it regarding its spoliation. It should not be allowed to avoid the consequences of

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that decision and have another roll of the dice. Rambus’s asserted patents should be held

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unenforceable as against Samsung and its infringement claims dismissed.

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II. BACKGROUND AND STATEMENT OF UNDISPUTED FACTS

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A.

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The Eastern District of Virginia Finds Spoliation and Unclean Hands in the Infineon Litigation After a Full Bench Trial ____

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In June 2000, Rambus sued Infineon for patent infringement in the United States District

23

Court for the Eastern District of Virginia (the “Virginia Court”). After extensive discovery, the

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Virginia Court held a bench trial in February 2005, on Infineon’s defense of unclean hands

25

premised on Rambus’s spoliation of evidence. See Cherensky Decl., Ex. 1 [Rambus Inc. v.

26

Infineon Techs. AG, Civ. No. 3:00cv524 (E.D. Va.), Trial Tr. (Mar. 1, 2005)] at pp. 1138-39).1

27 1

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All exhibit references herein are to the Declaration of Steven S. Cherensky, submitted herewith, unless otherwise noted.

MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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Based on essentially the same issues that would soon be before this Court and the United States

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District Court for the District of Delaware (the “Delaware Court”), the Virginia Court ruled from

3

the bench that Infineon had proven, by clear and convincing evidence, that Rambus was liable for

4

unclean hands in light of its unlawful spoliation, thus barring Rambus from enforcing the patents-

5

in-suit there (U.S. Patent Nos. 5,593,263, 5,954,804, 6,032,214, and 6,034,918), all of which

6

stemmed from the 1990 Farmwald-Horowitz application. See, e.g., id. at 1138-39 (Mar. 1, 2005)

7

(bench ruling); Samsung Elecs. Co. v. Rambus Inc., 439 F. Supp. 2d 524, 528 (E.D. Va. 2006).

8

Rambus avoided the consequences of its wrongful conduct by quickly settling with Infineon,

9

before a written order issued from the Virginia Court, with materially better terms than the

10

“reasonable royalty” Rambus seeks to recover in litigation from the Samsung (and the other

11

Manufacturers). See Samsung, 439 F. Supp. 2d at 528.

12

B.

13

This Court Reaches A Different Outcome In Hynix I Based Mainly On The Foreseeability Standard That It Applies

14

Hynix’s unclean-hands defense to Rambus’s patent-infringement claims was tried to this

15

Court in the fall of 2005. Hynix Semiconductor, Inc. v. Rambus Inc., No. C-00-20905 RMW,

16

2006 WL 565893, at *1 (N.D. Cal. Jan. 5, 2006). Although the Court found that many documents

17

were destroyed, see id. at *27, the Court found no spoliation based principally on its finding that

18

Rambus did not reasonably anticipate litigation until December 1999. Id. at *22. The Court’s

19

finding was explicitly based on the application of a different test for anticipation of litigation, i.e.,

20

that such litigation had be “probable” instead of just “reasonably foreseeable.” Id. at *22; see

21

also Samsung, 439 F. Supp. 2d at 566-69 (reviewing differences in two courts’ subsidiary

22

conclusions that explain the divergence in outcomes).2 The Court has so far declined requests to

23

certify the spoliation/unclean hands issue for interlocutory appeal. See Ex. 2 [Order (Feb. 23,

24

2006)]; Ex. 3 [Order (Dec. 19, 2006)].

25 26 27 28

2

Although the Court stated in orders issued subsequent to its January 2006 findings and conclusions in Hynix I that it had not intended to apply a standard different from the “reasonably foreseeable” standard, the weight placed by this Court in its Hynix I findings on six enumerated “contingencies” confirms that the “reasonably probable” standard actually applied by the Court for anticipation of litigation was higher than a “reasonably foreseeable” standard. See Hynix I, 2006 WL 565893, at *22. MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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Samsung and Rambus Litigate the Spoliation Defense and Rambus Again Loses

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As the Court will recall from the September trial, Rambus, desperate to avoid its one-time

4

choice of forum in Virginia in order to remain before this Court, issued an ultimatum to Samsung

5

in June 2005: either permit Rambus to select the forum should litigation ensue in thirty days or

6

face immediate termination of the license and litigation. Ex. 25 [Sept. Trial Tr.] at 304:19-

7

306:21. Rambus filed this lawsuit minutes after Samsung informed Rambus that it could not

8

agree to its demands. Id. at 306:22-307:8. Samsung then filed suit against Rambus in the Eastern

9

District of Virginia, seeking a declaration that the four patents-in-suit in the Infineon litigation

10

were unenforceable and that the case was “exceptional” under 35 U.S.C. § 285. Rambus once

11

again sought to avoid issuance from the Virginia Court of written findings that Rambus was an

12

unlawful spoliator of evidence. Rambus moved to transfer (unsuccessfully) the Samsung Virginia

13

case to this Court, issued Samsung covenants not to sue on the four patents-in-suit, obtained

14

dismissal of Samsung’s declaratory-judgment claims of invalidity and unenforceability as moot,

15

and offered to pay Samsung any attorneys’ fees that might be assessed under § 285. The Virginia

16

Court decided, however, that it retained jurisdiction to conduct sanctions proceedings. Samsung

17

Elecs. Co. v. Rambus Inc., 440 F. Supp. 2d 512 (E.D. Va. 2006). As a result, the Virginia Court

18

conducted a hearing on Samsung’s exceptional-case claim, and accepted into evidence the record

19

of the Infineon bench trial on spoliation and unclean hands from earlier that year.3 The Virginia

20

Court also ordered the submission of the transcript and exhibits from the Hynix I unclean hands

21

trial, which included a cross-reference index correlating the Hynix I exhibits to the Infineon

22

exhibits. See Ex. 9 [E.D. Va. Docket at D.I. 132].

23

On July 18, 2006, the Virginia Court issued a lengthy decision that Rambus spoliated

24

evidence related to the patents-in-suit and that such misconduct rendered the case exceptional.

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Samsung, 439 F. Supp. 2d at 544-65. In reaching that decision, the Virginia Court decided

26

essentially the same issues that were later presented to the Delaware Court and reached the same

27

3

28

See Ex. 5 [E.D. Va. Docket at D.I. 82]; Ex. 6 [Hearing Tr. (Dec. 15, 2005)] at 11:9-14; Ex. 7 [Samsung Submission of Infineon Record (E.D. Va. Nov. 15, 2005)]; Ex. 8 [Rambus Inc.’s Objections to Filing by Samsung (E.D. Va. Nov. 22, 2005) (submitting supplemental Infineon record materials)]. MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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conclusions. See, e.g., id. at 541-51 (Rambus’s spoliation began in 1998 in the context of

2

implementing its litigation strategy aimed at manufacturers of JEDEC-compliant DRAM); id. at

3

538-39, 540 n.11 (Rambus’s spoliation was intentional and willful); id. at 562 (the evidence

4

destroyed was relevant to potential litigation with Samsung, one of the targeted manufacturers);

5

id. at 561, 562 (Samsung had met its burden to show prejudice). Rambus appealed to the Federal

6

Circuit—not on any merits basis, but rather on procedural and jurisdictional grounds. Based on

7

these non-merits arguments, Rambus avoided the consequences of its misconduct a second time.

8

See Samsung Elecs. Co. v. Rambus Inc., 523 F.3d 1374 (Fed. Cir.), cert. denied, 129 S. Ct. 279

9

(2008).

10

D.

11

Rambus Re-Litigates, and Once Again Loses, the Unclean Hands and Spoliation Defense to Its Patent Claims in the Delaware Court _____

12

After Micron initiated a lawsuit seeking a declaratory judgment of no infringement of

13

certain of Rambus’s patents in Delaware in 2000, Rambus counterclaimed and Micron raised an

14

unclean-hands defense. Following broad discovery, the Delaware Court held a bench trial in late

15

2007 on the issues of Rambus’s spoliation of evidence and unclean hands. During the five-day

16

trial, the Court heard testimony from twenty-one witnesses (ten of them live) and admitted 280

17

exhibits. See Ex. 10 [Micron Tech., Inc. v. Rambus Inc., No. 1:00-cv-00792-SLR, Trial Tr. (D.

18

Del. Nov. 8-9, 13-15, 2007)]; Ex. 11 [D. Del. Docket at D.I. 1068]. Two rounds of extensive

19

post-trial briefing and closing argument followed.4

20

On January 9, 2009, the Delaware Court issued a decision and order that the patents-at-

21

issue were unenforceable against Micron. Micron Tech., Inc. v. Rambus Inc., ___ F. Supp. 2d

22

___, 2009 WL 54887 (D. Del. Jan. 9, 2009). To reach its decision, the Delaware Court made

23

several determinations which resolved the same dispositive issues that are raised by Samsung’s

24

4

25 26 27 28

See, e.g., Ex. 12 [Micron’s Post-Trial Br. Regarding Rambus’s Duty to Preserve Evidence (Feb. 5, 2008)]; Ex. 13 [Post-Trial Opp’n Br. of Rambus Inc. on the Issue of When the Duty to Preserve Evidence Arose (Mar. 27, 2008)]; Ex. 14 [Micron’s Post-Trial Reply Br. Regarding When Rambus’s Duty to Preserve Evidence Arose (Apr. 30, 2008)]; Ex. 15 [Post-Trial Br. of Rambus Inc. on Micron’s Unclean Hands Defense (June 30, 2008)]; Ex. 16 [Micron’s Post-Trial Br. Regarding Rambus’s Litigation Misconduct and the Proper Sanction for Rambus’s Spoliation (June 30, 2008)]; Ex. 17 [Rambus Inc.’s Post-Trial Br. in Response to Micron’s Br. Regarding Rambus’s Alleged Litigation Misconduct and Sanctions (Aug. 4, 2008)]; Ex. 18 [Micron’s Reply Post-Trial Br. Regarding Rambus’s Litigation Misconduct and the Proper Sanction for Rambus’s Spoliation (Aug. 4, 2008)]. MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

unclean-hands defense here: (1) when Rambus did foresee or should have foreseen litigation

2

against manufacturers of JEDEC-Complaint DRAMs, Micron CL ¶ 55 (concluding that litigation

3

was foreseeable by no later than December 1998); (2) that Rambus failed to preserve evidence

4

that it knew or should have known was relevant to litigation (e.g., internal documents relevant to

5

affirmative defenses arising from Rambus’s conduct at JEDEC), id. (concluding that Rambus

6

should have known the documents it was destroying would become relevant and material in the

7

future because of its licensing and litigation strategy); (3) that Rambus formulated and

8

implemented its document-retention policy in bad faith, id. ¶ 55 (finding that all documents

9

destroyed, including under the document-retention policy, after December 1998 to have been

10

destroyed in bad faith), id. ¶ 57 (concluding that showing of bad faith is so clear and convincing

11

that the showing of prejudice can be proportionally less); (4) that Micron—as a JEDEC

12

manufacturer of accused products—was prejudiced by Rambus’s document destruction in its

13

defense of Rambus’s patent claims, id. ¶¶ 56-57 (concluding that the ability to bring conduct-

14

based claims or defenses against Rambus was prejudiced because such claims and defenses are

15

furthered by evidence of a non-public nature, i.e., Rambus internal documents, and that the record

16

shows that the destroyed documents related to all aspects of Rambus’s business);5 and (5) the

17

appropriate remedy for Rambus’s bad faith and harmful document destruction, id. ¶ 57

18

(concluding that dismissal is the least harsh sanction that both avoids substantial unfairness to

19

Micron and deters such conduct in the future because the spoliation was so widespread, the

20

integrity of the litigation process was impugned, and an adverse inference would be meaningless).

21

Micron, 2009 WL 54887, at *13.

22

The Delaware Court had twelve patents before it, four of which are also at issue in this

23

litigation, and all of which stem from the original 1990 Farmwald-Horowitz application (as do all

24

of the patents-at-issue here): U.S. Patent Nos. 6,324,120, 6,378,020, 6,426,916, and 6,452,863.

25

Compare Micron, 2009 WL 54887, at *14, with Case No. 05-02298 at D.I. 1 [Compl.] at 8-10

26 27 28

5

Samsung also asserted the same core allegations related to these conduct defenses. See Case No. C 052298 at D.I. 39 [Samsung’s 2d Am. Answer., Affirmative Defenses & Countercls. ¶¶ 56-76, 140-74]; Case No. C 05-00334 at D.I. 141 [Samsung’s 2d Am. Answ., Aff. Defs. & Countercls. ¶¶ 81-101, 168202]. MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

and Case No. C 05-00334 at D.I. 23 [Am. Compl.] at 10-12. In Delaware, the patents-at-issue

2

were asserted against many of the very same JEDEC-compliant products that Rambus accused of

3

infringement in this litigation with Samsung—that is, SDR, Mobile SDRAM, SGRAM, DDR,

4

Mobile DDR, DDR SGRAM, and DDR2 products. See Ex. 20 [Rambus Inc.’s Supp. & 2d Am.

5

Countercls. (D. Del.)] at 4; Case No. 05-02298 at D.I. 1 [Compl.] at 3-4; Case No. C 05-00334 at

6

D.I. 23 [Am. Compl.] at 5. Notably, the same JEDEC-standard accused features are at issue in

7

this case and in the Delaware case. Indeed, Rambus asserts that every Samsung accused product

8

contains one or more of accused features that Rambus also claims are found in the accused

9

products in Delaware. Compare Ex. 4 [Expert Report of Robert Murphy (Sept. 5, 2008)] at

10

¶¶ 41-48, 89, 93, 105 with Ex. 19 [Expert Report of William Huber (Aug. 16, 2001)] at 24-28.

11

E.

12

For the fifth time (and the second time in this Court), Rambus has (thus far) successfully

13

sought to re-litigate the unclean hands and spoliation defense to its patent claims. In trying its

14

unclean-hands defense, Samsung has demonstrated the erroneous nature of the Court’s

15

conclusions in its Hynix I unclean-hands decision. See Case No. C 05-00334 at D.I. 2354

16

[Samsung’s Post-Trial Proposed Findings of Fact and Conclusions of Law Regarding Spoliation

17

and Unclean Hands (Oct. 7, 2008) (hereinafter “Samsung Br. Regarding Spoliation”)] at 3-9.

Samsung Presents Its Unclean-Hands and Spoliation Case in This Court

18

Samsung and Rambus have submitted the following issues for the Court’s resolution, all

19

of which were also considered and decided by the Delaware Court: (1) whether litigation with

20

DRAM manufacturers, here Samsung (Micron in Delaware), was reasonably foreseeable; (2)

21

whether Rambus acted in bad faith in developing and implementing its document destruction

22

policy; (3) whether the destroyed documents were relevant to claims at issue, (4) whether the

23

document destruction prejudiced Samsung (Micron in Delaware); and (5) whether dismissal of

24

Rambus’s patent-infringement claims is an appropriate remedy. See, e.g., Case No. C 05-00334

25

at D.I. 2354 [Samsung Br. Regarding Spoliation].

26 27 28 MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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III. THE DELAWARE COURT’S DECISION IS BINDING UPON RAMBUS AND REQUIRES DISMISSAL OF RAMBUS’S INFRINGEMENT CLAIMS AGAINST SAMSUNG

2 3

A.

4

The doctrine of collateral estoppel or issue preclusion is intended to promote efficiency in

5

the judicial system by avoiding repeated litigation over the same issues. Gilbert v. Ben-Asher,

6

900 F.2d 1407, 1409-10 (9th Cir. 1990). The doctrine provides that “once an issue is actually

7

litigated and necessarily determined, that determination is conclusive in subsequent suits based on

8

a different cause of action but involving a party or privy to the prior litigation.” United States v.

9

ITT Rayonier, Inc., 627 F.2d 996, 1000 (9th Cir. 1980).

Legal Standards

10

Under Ninth Circuit law, a party asserting collateral estoppel must establish that: (1) there

11

was a full and fair opportunity to litigate the issue in the previous action; (2) the issue was

12

actually litigated in that action; (3) the issue was lost as a result of a final judgment in that action;

13

and (4) the party against whom collateral estoppel is asserted was a party or in privity with a party

14

in the previous action. Pena v. Gardner, 976 F.2d 469, 472 (9th Cir. 1992).6 A collateral

15

estoppel determination is to be decided by the court after making any findings necessary to reach

16

its conclusion. Davis & Cox v. Summa Corp., 751 F.2d 1507, 1519 (9th Cir. 1985) (holding that

17

collateral estoppel is a mixed question of law and fact in which law predominates); Fireman’s

18

Fund Ins. Co. v. Stites, 258 F.3d 1016, 1020 (9th Cir. 2001) (holding that collateral estoppel is

19

treated as a question of law). Further, when collateral estoppel applies to a given issue, that issue

20

is conclusively decided in favor of the party seeking its application. See Dodd v. Hood River

21

County, 59 F.3d 852, 863 (9th Cir. 1995) (stating that another court’s determination of an issue of

22

law should preclude re-litigation of that issue to “relieve parties of the costs and vexation of

23

multiple lawsuits, conserve judicial resources, and … encourage reliance on adjudication by

24 25 26 27 28

6

Some courts in this Circuit have applied a three-prong test in determining the question of collateral estoppel. See, e.g., Hydranautics v. Filmtec Corp., 204 F.3d 880 (9th Cir. 2000). Both tests, however, require the same elements of proof and both derive from the precept that “[w]hen an issue of fact or law is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim.” RESTATEMENT (SECOND) OF JUDGMENTS § 27 (1982). As such, the difference is one of form rather than of substance and, as such, is immaterial to the question presented here. MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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preventing inconsistent decisions”).

2

If any issue remains after the application of collateral estoppel, then the Court should

3

decide that issue in light of the factual and legal matters conclusively decided in Samsung’s favor

4

under the collateral estoppel doctrine, as well as any other relevant evidence in the record from

5

the September trial. See, e.g., Case No. C 05-00334 at D.I. 2354 [Samsung Br. Regarding

6

Spoliation].7

7

B.

8

The Elements Of Collateral Estoppel Are Satisfied Here 1.

Rambus Had a Full and Fair Opportunity to Litigate

9

An opportunity to litigate is “full and fair” when: (1) the procedures in the prior and

10

subsequent action are similar and (2) the parties have incentive to litigate in the two actions. See

11

Maciel v. Comm’r of Internal Revenue, 489 F.3d 1018, 1023 (9th Cir. 2007); see also id. (“If

12

‘procedural opportunities unavailable in the first action … could readily cause a different result’

13

in the second action, then the results of the first action generally should not be given preclusive

14

effect.”); id. (“If a party had good reason not to contest an issue vigorously during the first action

15

and did not, in fact, vigorously contest the issue, that party generally should be entitled to re-

16

litigate the issue during the second action.”).

17

Rambus had available to it in the Delaware Court the same procedural rights as it has here

18

and certainly there were no procedural opportunities unavailable in Delaware that could be

19

expected to cause a different result here. Moreover, the risk that Rambus’s patents could be

20

rendered unenforceable by the Delaware Court and, based on that result, here, was certainly no

21

surprise to Rambus, as both Samsung and Hynix had already brought collateral-estoppel motions

22

in this Court based on the Virginia Court’s spoliation order, all of which were prior to the

23

Delaware trial. Rambus thus had powerful incentives to hotly contest the issues decided by the

24 7

25 26 27 28

Because these issues have already been tried and submitted to the Court in the September trial, the application of the summary judgment standard to any remaining disputed issues of fact is not procedurally appropriate as to Samsung. Nevertheless, as demonstrated below, and in Samsung’s submissions in connection with the September trial, Samsung is entitled to judgment as a matter of law regardless of which standard applies at this stage of the proceeding. See Fed. R. Civ. P. 56(a); T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987) (stating that summary judgment shall be granted when evidence shows that “there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law”). MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

Delaware Court, and Rambus did just that. As a result, there is no question that Rambus had a

2

full and fair opportunity to litigate these issues in Delaware.

3

2.

The Identity of Issues Requirement Is Met

4

The identity-of-issues requirement of collateral estoppel is analyzed under a four-factor

5

test: (1) was there a substantial overlap between the evidence or argument advanced in the

6

second proceeding and that advanced in the first; (2) does the new evidence or argument involve

7

the application of the same rule of law as that involved in the prior proceeding; (3) could pretrial

8

preparation and discovery in the first proceeding reasonably be expected to have embraced the

9

matter to be presented in the second; and (4) how closely related are the claims. Starker v. United

10

States, 602 F.2d 1341, 1344 (9th Cir. 1979).

11

There is no question that each of the four Starker factors is met when comparing Micron’s

12

unclean-hands defense in Delaware and Samsung’s unclean-hands defense here. Indeed, the

13

overwhelming majority of the Delaware Court’s findings are equally applicable to Samsung in

14

this Court as to Micron in Delaware. As the Court is well aware from the September trial, there is

15

considerable evidence in the record that Samsung, like Micron, was a target of Rambus’s

16

licensing and litigation strategy for patents that Rambus argues cover a set of JEDEC features

17

found in various combinations in every product Rambus has accused, whether made by Samsung,

18

Micron, Infineon, Hynix or Nanya, and regardless of the forum. In furtherance of its industry-

19

wide licensing and litigation strategy, Rambus adopted its document-retention policy in bad faith

20

and destroyed millions of pages of documents relevant to the defenses that all of the

21

Manufacturers would need to assert in the litigation Rambus was planning.8 For this reason, the

22

Delaware Court’s findings of fact and conclusions of law are equally applicable to Samsung as to

23

Micron, and in fact the two parties are nearly interchangeable for purposes of this analysis.

24 25 26 27 28

Indeed, the evidence relied upon by Micron in support of these issues in Delaware 8

For example, Samsung is identified as a potential litigation target in Karp’s notes of his February 1998 meeting with attorneys from Cooley Godward, HTX 098/MTX 293, in the matrix of business and legal factors used by Rambus to score and rank its potential litigation targets, HTX 151/MTX 468, and in an IP goals document indicating that Karp was obtaining a reverse-engineering report on a Samsung DDR SDRAM, HTX 376/MTX287—all of which are in the record in this case and were also before the Delaware court. See Ex. 12 [Micron’s Post-Trial Br. Regarding Rambus’s Duty to Preserve Evidence (Feb. 5, 2008)]. MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

included the full array of internal Rambus planning documents—internal Rambus presentations

2

and emails, notes from meetings with litigation counsel to discuss Rambus’s document-retention

3

policy and litigation and licensing strategies, invoices and notes from Rambus’s outside patent-

4

prosecution counsel, and invoices from Rambus’s litigation counsel—that were also relied upon

5

by Samsung in support of its own unclean-hands defense here. See Cherensky Decl, ¶ 31 (listing

6

spoliation exhibits relied upon both by Micron in Delaware and Samsung here). And the same

7

arguments made by Micron in Delaware were made by Samsung here. Compare Ex. 12 [Micron

8

Br. Regarding Spoliation] at 8-10 (arguing that “reasonably foreseeable” standard applies to

9

question of when the duty to preserve evidence arises and that dismissal is appropriate where

10

spoliation is coupled with bad faith and prejudice) with Case No. C 05-00334 at D.I. 2354

11

[Samsung Br. Regarding Spoliation] at CL ¶¶ 1-6, 39-50, 60-70 (same).

12

Further, pretrial preparation and discovery in the two proceedings were nearly identical,

13

since the relevant discovery on the issue of Rambus’s unclean hands relates to Rambus’s conduct

14

as revealed through Rambus’s internal documents and testimony of Rambus’s witnesses, rather

15

than through manufacturer-specific discovery.9 Finally, the claims at issue in Delaware and here

16

are identical—an unclean-hands affirmative defense to Rambus’s infringement claims based on

17

allegations of spoliation. All four of the elements set forth by the Restatement thus clearly

18

militate in favor of a finding that there is an identity of issues sufficient for the application of

19

collateral estoppel to the Delaware Court’s findings.

20

Notwithstanding the clear correspondence of the issues decided by the Delaware Court

21

and the issues for decision here, Rambus has identified in its January 13, 2009 brief on collateral-

22

estoppel issues (“Rambus CE Br.”) certain discrete issues on the margins that it contends are not

23

identical. But each of these issues was either decided by the Delaware Court, or is insufficient to

24

show lack of identity as to the findings and rulings made by the Delaware Court under the Starker

25 9

26 27 28

Indeed, recognizing the substantial overlap in discovery between the various Rambus-related cases, including the Delaware case, and that the parties did not need as much discovery in the consolidated cases because so much discovery relevant to their claims and defenses had already been taken in the Rambusrelated cases, the Court limited new discovery in the consolidated cases and ordered that all discovery already taken in the Rambus-related cases be produced in the consolidated cases for use by all parties. See Case No. C 05-00334 at D.I. 174 [Joint Case Management Order] at 6.

MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

factors (e.g., substantial overlap between the evidence or argument). Moreover, even if this Court

2

concludes that an issue is left for resolution after it applies collateral estoppel to the Delaware

3

Court’s decision, it should be readily decided in Samsung’s favor, as demonstrated below.

4

a.

Different Patents and Products

5

Rambus argues that some of the asserted patents and accused products in Delaware are

6

different than some of those asserted and accused here, and hence that the issues relating to the

7

patents and products not at issue in Delaware are not identical to the issues to be decided here.

8

See Rambus CE Br. at 10. Rambus is mistaken for two independent reasons.10

9

First, as to the accused products, there are seven overlapping accused products between

10

the Delaware case and the present action. See Ex. 30 [Rambus’s Answer & Countercls.] at p. 29,

11

¶ 6; Case No. C 05-00334 at D.I. 23 [Rambus’s Am. Compl.] at ¶ 13; Ex. 23 [chart of

12

overlapping accused products in related cases]. There can be no question that the Delaware court

13

decided all issues with respect to those products. Further, the Delaware Court did not rely on

14

anything that was specific to any of the accused products in Micron in reaching its decision. See,

15

e.g., Micron CL ¶ 56 (finding prejudice because documents relevant to unenforceability defenses

16

to Rambus’s infringement claims, based in part on Rambus’s conduct at JEDEC, were destroyed).

17

With respect to the asserted patents, there are four asserted patents common to both

18

actions—U.S. Patent Nos. 6,324,120, 6,378,020, 6,426,916, and 6,452,863—and seven accused

19

products in common. See Ex. 20 [Rambus’s Supp. & 2d Am. Countercls. at ¶¶ 88-119; Case No.

20

C 05-00334 at D.I. 1 [Rambus’s Compl.] at ¶ 8. There can likewise be no question that the

21

components of the Delaware Court’s analysis to which the asserted patents relate are identical as

22

to those patents.

23

10

24 25 26 27 28

Rambus’s authorities are inapposite. Rambus cites Comair Rotron and A.B. Dick for the proposition that a decision as to one patent or one accused product does not bar a decision as to another patent or accused product. See Rambus CE Br. at 10. But those cases have to do with the collateral-estoppel effect of prior decisions regarding infringement, and focus on the patent-specific nature of the infringement inquiry. See Comair Rotron, Inc. v. Nippon Densan Corp., 49 F.3d 1535, 1539 (Fed. Cir. 1995) (reversing application of collateral estoppel of prior noninfringement finding with respect to different patent because “separate patents describe ‘separate and distinct inventions’”); A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700, 704 (Fed. Cir. 1983) (reversing application of collateral estoppel of prior infringement finding with respect to different accused product because “judicial statements regarding the scope of patent claims are hypothetical insofar as they purport to resolve the question of whether prior art or products not before the court would, respectively, anticipate or infringe the patent claims”).

MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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As to non-overlapping patents, because all of the patents-at-issue in both cases derive

2

from the same 1990 Farmwald-Horowitz application and relate to the same accused features,

3

virtually any documents relevant to any of the patents in either case are relevant to all of the

4

patents in both cases.

5

interrelatedness of patents asserted in Virginia, Delaware, Hynix I, and here]. Examination of the

6

Micron decision reveals that the Delaware Court’s findings are not specific to the patents asserted

7

in that action, but rather cut across all patent claims deriving from the 1990 Farmwald-Horowitz

8

application. See Cherensky Decl., ¶ 32.

See Ex. 22 [Farmwald-Horowitz patent family tree showing

9

And, finally, Rambus itself has stated that the result in Delaware was reached on the same

10

facts as Hynix I (and thus, here with respect to Samsung). See Ex. 24 [Rambus Jan. 9, 2009 Press

11

Release].

12

b.

Samsung’s RDRAM and SDR/SDRAM Licenses With Rambus

13

Rambus argues that collateral estoppel should not apply because the Delaware Court did

14

not decide the issue of foreseeability of litigation in light of two licensing relationships between

15

Samsung and Rambus—the RDRAM license executed in 1994 and renegotiated in 1997, and the

16

SDR/DDR license executed in 2000. Rambus CE Br. at 12. But Micron was also an RDRAM

17

licensee, a fact explicitly noted in the Delaware opinion. See Micron FF ¶ 5. Moreover, Rambus

18

made the same argument in Delaware regarding foreseeability and RDRAM—that Samsung,

19

Micron and others had RDRAM licenses and were committed to RDRAM—that it made in this

20

Court. See Case No. C 05-00334 at D.I. 2378 [Rambus’s Post-trial Proposed Findings of Fact

21

and Conclusions of Law Regarding Unclean Hands] at 13; Ex. 13 [Post-trial Opp’n Br. of

22

Rambus Inc. on the Issue of When the Duty to Preserve Evidence Arose] at 2. Given the

23

substantial overlap in argument and evidence and the Delaware Court’s finding, there is clearly

24

no basis for Rambus’s contention that the Delaware Court did not consider the impact of an

25

existing RDRAM-licensing relationship in deciding when litigation against the DRAM

26

manufacturers targeted by Rambus’s licensing and litigation strategy was foreseeable.

27

Further, Samsung’s 2000 SDR/DDR License does not negate the foreseeability of

28

litigation prior to the execution of that license when much of Rambus’s spoliation occurred. In MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

the first instance, Rambus made this argument before and it was rejected by the Virginia Court.

2

See Samsung, 439 F. Supp. 2d at 560. And, indeed, as the Delaware Court noted in its opinion,

3

Samsung was on Rambus’s target list well before the parties began negotiations for the

4

SDR/DDR License in July 2000. See Micron FF ¶ 10 (noting that Karp met with Cooley

5

Godward attorneys in February 1998 and discussed building a case against potential litigation

6

targets, including Micron, Fujitsu, Samsung, and Hyundai (now Hynix)).

7

Moreover, Rambus’s position at the September trial in defense of Samsung’s contract

8

counterclaims was that Rambus never believed DDR2 or future generations of DRAM were

9

covered by the 2000 license. See Ex. 25 [Sept. Trial Tr. at 946:7-25]. Although Samsung

10

disagrees about the scope of the license, what matters for purposes of foreseeability of litigation is

11

Rambus’s state of mind, not what the license is found by the Court to cover. Therefore, Samsung

12

remained in Rambus’s view an unlicensed target notwithstanding the 2000 SDR/DDR License.

13

Finally, even if litigation with Samsung was somehow not foreseeable at the time that

14

Rambus destroyed millions of pages of documents, the finding of the Delaware Court that

15

litigation with others was foreseeable was sufficient to create a duty for Rambus to preserve

16

documents related to its claims regarding JEDEC-compliant memory manufacturers. See, e.g.,

17

M&T Mortgage Corp. v. Miller, No. CV 2002-5410 (NG) (MDG), 2007 WL 2403565, at *6

18

(E.D.N.Y. Aug. 17, 2007) (spoliation found where party had a duty to preserve documents in a

19

related litigation). In other words, because Rambus owed a duty to Samsung’s competitors and

20

violated that duty in a way that prejudiced Samsung, Rambus must bear the consequences of that

21

action with respect to Samsung as well.

22

c.

Voluntary Dismissal

23

Rambus argues that the issues to be tried are not identical because Samsung is not

24

asserting an inequitable-conduct defense and dropped its JEDEC-based conduct claims and

25

defenses, unlike Micron. Rambus thus asserts that Samsung presents different issues than Micron

26

because it waived all its defenses to which the documents destroyed by Rambus could have been

27

prejudicial. See Rambus CE Br. at 12-13. Rambus’s argument flies in the face of this Court’s

28

proceedings in September and runs contrary to law regarding the construction of voluntary MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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dismissals.

2

The fact that Samsung initially brought, and made every effort to retain, its spoliation

3

claims—Samsung’s dismissal was explicitly without prejudice to the continued assertion of its

4

unclean-hands defense—makes clear that Samsung in no way intended to waive its ability to

5

obtain relief on its unclean-hands defense as a result of its voluntary dismissal.11 Indeed, the

6

September trial proceedings would have been nonsensical if, by virtue of the stipulation signed

7

before trial began, Samsung had waived a necessary element of the unclean-hands issue. Rambus

8

never so-argued during pretrial proceedings, barely mentioned the issue in its post-trial spoliation

9

briefs, and was silent on this point during the spoliation-specific closing argument. Why would

10

Rambus have agreed to and engaged in (and wasted the Court’s and the parties’ time with)

11

proceedings and extensive submissions relating specifically and exclusively to spoliation if that

12

issue had been mooted by Samsung’s voluntary dismissals? To the contrary, the parties and the

13

Court understood that Samsung’s voluntary dismissal of certain aspects of certain claims and

14

defenses did not waive any aspect of Samsung’s unclean-hands defense. See 18 WRIGHT ET AL.,

15

FEDERAL PRACTICE & PROCEDURE § 4407 (1981) (“A plaintiff who sets forth alternative remedies

16

in separate counts in his complaint may abandon or dismiss one count without prejudice to his

17

right to proceed on the other.”) (quoting RESTATEMENT (SECOND) OF JUDGMENTS § 24 (1981)).

18

Moreover, Rambus should be estopped from arguing lack of prejudice based on

19

Samsung’s voluntary dismissal of its JEDEC-related grounds of certain conduct-based claims and

20

defenses where those claims and defenses were dismissed only after Rambus’s spoliation

21

weakened those claims and defenses (as found by the Delaware Court, see Micron CL ¶ 56),

22

which was further evidenced by the adverse jury findings at the conduct trial that also preceded

23

Samsung’s voluntary dismissal. Rambus should not be permitted to benefit from its spoliation as

24

a result of a construction of Samsung’s voluntary dismissal that guts Samsung’s unclean-hands

25

11

26 27 28

See D.I. 2210 [Stipulation and Order Dismissing Portions of Certain Claims and Defenses with Prejudice] (carving JEDEC and Steinberg-related grounds out of Samsung’s equitable estoppel defense and its counterclaims for a declaratory judgment of unenforceability and for violation of Cal. Bus. & Prof. Code § 17200, but retaining spoliation-based grounds of those claims and defenses); D.I. 2086 [Joint Pretrial Statement) (including Samsung’s unclean-hands defense among issues to be tried in September trial]; D.I. 2354 [Samsung Br. Regarding Spoliation] at CL ¶¶ 60-70 (requesting dismissal of Rambus’s patents as remedy for Samsung’s unclean-hands defense). MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

defense. Samsung’s dismissal of certain aspects of its conduct-based claims and defenses should

2

not be construed so as to prejudice Samsung’s ability to obtain relief on its unclean-hands

3

defense.

4

d.

Remedy

5

Rambus also argues that the identity-of-issues element is not met because the Delaware

6

Court decided different issues with respect to the appropriate remedy for Rambus’s spoliation

7

than are presented here. See Rambus CE Br. at 13-14.

8

First, Rambus argues that a finding that dismissal was warranted as to Micron is not a

9

finding as to Samsung because the issue of prejudice is not precisely the same in both cases. The

10

Delaware Court determined that dismissal was the least harsh available sanction that would serve

11

both to avoid substantial unfairness to Micron and to deter such conduct in the future. See

12

Micron CL ¶ 57.12 The second prong of this finding—that only dismissal would serve to deter

13

Rambus’s conduct in the future—is clearly not specific to Micron, and thus the Delaware Court

14

decided the identical issue that is presented here. The prejudice prong is also not specific to

15

Micron. Rather, the Delaware Court’s findings on the issue of prejudice apply with equal force to

16

any manufacturer of non-compliant memories against whom Rambus seeks to enforce its

17

Farmwald/Horowitz patents that Rambus claims relate to the accused features in all of the

18

accused products here and in Delaware. See Exs. 22 and 23 [charts showing relationship of

19

patents and products at issue in Delaware and here]. Because Samsung is thus nearly identically

20

situated with Micron for purposes of the Delaware Court’s determination that dismissal is the

21

only appropriate remedy (same prejudice, same misconduct to be deterred), the remedy granted in

22

Micron is subject to the application of collateral estoppel here. See In re First Actuarial Corp. of

23

Ill., 182 B.R. 178, 183 (W.D. Mich. 1995) (applying offensive non-mutual collateral estoppel to

24

prior court’s determination of rights and remedies available under contract where plaintiffs in

25

12

26 27 28

The Delaware Court also found, citing Federal Circuit law equally applicable here, that because the evidence of Rambus’s bad faith is “so clear and convincing,” Micron’s showing of prejudice could be proportionally less and still satisfy the clear and convincing standard of proof that the Delaware court imposed. See Micron CL ¶¶ 49, 56 (citing N.V. Akzo v. E.I. DuPont de Nemours, 810 F.2d 1148, 1153 (Fed. Cir. 1987)). The bad-faith finding is Rambus-specific and applies equally here. Accordingly, Samsung’s showing of prejudice, even if it is not presumed, can likewise be proportionally less when balanced with the compelling evidence of Rambus’s bad faith. MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

second action were nearly identically situated under the contract as the plaintiffs in the first

2

action).

3

Second, Rambus argues that the dismissal remedy in the Delaware case was based in part

4

on a finding of litigation misconduct, which is also case-specific. See Rambus CE Br. at 14. But,

5

as a preliminary matter, a careful reading of the Micron opinion demonstrates that to the extent

6

the court considered litigation misconduct, it was to establish Rambus’s bad faith and an overall

7

scheme of spoliation and litigation. See Micron CL ¶ 38 (noting that Rambus employees did not

8

inform outside counsel of shred days and did not inform Rambus’s 30(b)(6) designee about the

9

degaussing of back-up tapes or of the scope of the document destruction). Ultimately the court

10

applied a sanction based on a finding of spoliation, not litigation misconduct. See id. CL ¶ 57

11

(“In determining which of the potential sanctions for spoliation should be applied …”).

12

Furthermore, the court in Keystone Driller made clear that prior litigation misconduct can

13

provide the basis for a finding of unclean hands. Gen. Excavator Co. v. Keystone Driller Co., 62

14

F.2d 48 (6th Cir. 1932) (rejecting contention that litigation misconduct, where plaintiff in earlier

15

suit involving same patent had taken steps to suppress evidence of prior use, could not support

16

prohibiting prosecution of infringement suit based on unclean hands). Aptix, relied upon by

17

Rambus, does not contradict this (and in fact says nothing about collateral estoppel), but rather

18

merely holds that a finding of unclean hands in one case will not bar a plaintiff from seeking

19

relief in another case if the right claimed in that suit did not arise as a result of the conduct giving

20

rise to the finding of unclean hands. Aptix Corp. v. Quickturn Design Sys., Inc., 269 F.3d 1369,

21

1376 (Fed. Cir. 2001).

22

Finally, in this consolidated case, Rambus’s misconduct (the essence of which is that its

23

witnesses withheld and denied the truth about Rambus’s unlawful spoliation of evidence in

24

discovery) has long been part of—and has equally infected—this case by virtue of the Court’s

25

Joint Case Management Order.

26

Delaware court originally occurred in other Rambus cases and became part of the record in

27

Delaware, see Micron CL ¶¶ 37, 39 (noting false testimony that occurred in the course of

28

Rambus’s litigation with Hynix and Infineon), just as it is part of the record here, see D.I. 2354

Indeed, most of the litigation misconduct cited in by the

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[Samsung Br. Regarding Spoliation] at FF ¶¶ 243, 251 (citing same false testimony).

2

e.

Rambus’s Unclean-Hands Defense

3

Finally, Rambus argues that the issues to be tried are not identical because Rambus has

4

alleged that Samsung spoliated evidence and has unclean hands, but no such allegations were

5

raised with respect to Micron. Rambus thus asserts that Samsung’s unclean-hands defense is

6

“irreparably tarnished,” and that the impact of Samsung’s own conduct on the Court’s equitable

7

discretion was not decided in the Delaware case. See Rambus CE Br. at 12.

8 9

This argument fails for several reasons. First, Rambus abandoned any claims of spoliation by Samsung in its closing argument at the September trial.

Although Rambus discussed

10

Samsung’s alleged document-destruction, it explicitly retreated from any claim that Samsung’s

11

conduct constituted spoliation. See, e.g., Ex. 25 [Sept. Trial Tr. at 1366:21-1367:4]. Second,

12

Rambus is well aware that its spoliation argument is spurious because it made the same

13

arguments in the Virginia Court and they were soundly rejected. See Samsung, 439 F. Supp. 2d at

14

536-37. Third, and in any event, whether Samsung committed any spoliation or has unclean

15

hands is immaterial to Samsung’s unclean-hands defense based on Rambus’s spoliation. “If the

16

plaintiff has unclean hands and seeks equitable relief, the defendant’s own improper behavior

17

serves as no bar to its equitable defenses.” Precision Instrument Mfg. Co. v. Auto. Maint. Mach.

18

Co., 324 U.S. 806, 814 (1945) (holding that doctrine of unclean hands “is a self-imposed

19

ordinance that closes the doors of a court of equity to one tainted with inequitableness or bad faith

20

relative to the matter in which he seeks relief, however improper may have been the behavior of

21

the defendant”).

22 23

3.

The Spoliation/Unclean Hands Issue Was Actually Litigated and Necessarily Decided in Delaware

24

In its January 13, 2009 brief, Rambus did not dispute that the issues related to its

25

spoliation, the harm it caused and the proper remedy to address it were actually litigated in

26

Delaware. Nor could it in light of the facts—a five-day bench trial, two rounds of post-trial

27

briefing and closing arguments concerning the essential matters raised by Samsung’s unclean

28

hands and spoliation related defenses. See D.I. 3105 [Micron Jan. 13, 2009 Ltr.] at 3; Amadeo v. MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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Principal Mut. Life Ins. Co., 290 F.3d 1152, 1159 (9th Cir. 2001); In re Baldwin, 249 F.3d 912,

2

919 (9th Cir. 1995).

3

Moreover, the Delaware Court decided these issues expressly or by necessary implication

4

in its 33-page decision and order. See, e.g., Baldwin, 249 F.3d at 919 (“Kilpatrick’s sole claim

5

against Baldwin was that he acted intending to cause him injury, either by violently striking him,

6

or assisting others in doing so. Under these circumstances, the state court could not have granted

7

judgment to Kilpatrick unless it found that Baldwin intentionally acted so as to injure Kilpatrick.

8

Therefore, we conclude that the state court necessarily decided that Baldwin intentionally acted

9

so as to injure Kilpatrick.”). Indeed, the Delaware Court expressly and necessarily decided that

10

Rambus failed to preserve evidence it knew or should have known was relevant to litigation that

11

was reasonably foreseeable (Micron CL ¶ 55), that Rambus formulated and implemented its

12

document-retention policy in bad faith (Micron CL ¶¶ 55, 57), that Rambus’s conduct prejudiced

13

the defense to its patent infringement claims (Micron CL ¶¶ 56-57), that Rambus acted in bad

14

faith, and that the only appropriate remedy in light of the issues decided against Rambus was to

15

preclude it from enforcing its patents (Micron CL ¶ 57). Because the essential issues pending

16

before this Court were actually litigated and necessarily decided against Rambus in the Delaware

17

Court, they should be given preclusive effect here.

18

4.

The Delaware Decision Meets The Finality Requirement

19

The Delaware Court’s opinion satisfies the finality requirement of collateral estoppel. The

20

factors considered in the Ninth Circuit to make a finality determination for purposes of collateral

21

estoppel are: (1) whether the decision was not avowedly tentative; (2) whether the parties were

22

fully heard; (3) whether the court supported its decision with a reasoned opinion, and (4) whether

23

the decision was subject to an appeal. Luben Indus., Inc. v. United States, 707 F.2d 1037, 1040

24

(9th Cir. 1983); RESTATEMENT (SECOND) OF JUDGMENTS (1982) § 13.

25

Rambus did not claim that these factors were not satisfied in its 16-page brief, nor could

26

it. As Rambus has recognized in the past, finality for purposes of collateral estoppel requires only

27

that the prior decision is sufficiently firm to be accorded conclusive effect; it does not require a

28

showing of finality in the sense of 28 U.S.C. § 1291. Luben, 707 F.2d at 1040 (“To be ‘final’ for MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

collateral estoppel purposes, a decision need not possess ‘finality’ in the sense of 28 U.S.C.

2

§ 1291. A ‘final judgment’ for purposes of collateral estoppel can be any prior adjudication of an

3

issue in another action that is determined to be ‘sufficiently firm’ to be accorded conclusive

4

effect.”); Sec. People, Inc. v. Medeco Sec. Locks, Inc., 59 F. Supp. 2d 1040, 1045 (N.D. Cal.

5

1999) (finding an interlocutory order sufficiently firm because it was not avowedly tentative, the

6

record demonstrated that both parties had ample opportunities to be fully heard on the issues, and

7

a 16-page order set out the reasons supporting the decision). Here, the Delaware Court’s opinion

8

is decisive, not “avowedly tentative,” and is plainly its final word on the issue of Rambus’s

9

spoliation and unclean hands.

10

Indeed, in a January 16, 2009 telephonic hearing with Judge Robinson, Rambus expressly

11

conceded that her opinion was sufficiently final for purposes of collateral estoppel here. Ex. 30

12

[Jan. 16, 2009 Tr.] at 7. Accordingly, the Delaware Court’s decision is an adverse final judgment

13

for purposes of collateral estoppel.

14

5.

15

Rambus’s Fairness Arguments Do Not Apply Because Samsung’s Request for Collateral Estoppel is Defensive, Not Offensive

16

Rambus argues that the Court has broad discretion to apply collateral estoppel and should

17

be acutely concerned about the fairness of its application based on the incorrect premise that

18

Samsung seeks to apply offensive collateral estoppel. Offensive collateral estoppel, however,

19

occurs only when a plaintiff seeks to prevent a defendant from re-litigating an issue it lost in a

20

prior proceeding. See Parklane Hosiery v. Shore, 439 U.S. 322, 326 (1979) (describing offensive

21

collateral estoppel in part as a situation where a plaintiff invokes the preclusive effect of a prior

22

ruling). Here, the defendant, Samsung, seeks to preclude the plaintiff, Rambus, from re-litigating

23

the same defense to its patent claims that Rambus has previously lost in a case where it asserted

24

common patents.

25

collateral estoppel.

These facts alone are irreconcilable with the requirements of offensive

26

Indeed, both the Supreme Court and the Ninth Circuit have construed similar contexts as

27

defensive nonmutual collateral estoppel. See Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found.,

28

402 U.S. 313, 330 (1971) (precluding patent holder from re-litigating validity of its patents); State MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

of Idaho Potato Comm’n v. G&T Terminal Packaging, Inc., 425 F.3d 708, 714 n.3 (9th Cir. 2005)

2

(precluding plaintiff from rearguing enforceability of its trademark license agreement).13 Other

3

relevant considerations reinforce this conclusion. First, Rambus has previously litigated and lost

4

the unclean hands/spoliation defense in a forum of its choosing as a plaintiff (e.g., in the Eastern

5

District of Virginia) and it once again seeks to re-litigate the same defense here, once more as a

6

plaintiff. Second, although Rambus was the declaratory defendant in Delaware, it is a Delaware

7

corporation and that forum cannot be characterized as unexpected, inconvenient, biased, or

8

hostile. Third, defensive collateral estoppel is intended to prevent plaintiffs from getting a second

9

chance at failed litigation merely by switching adversaries, which is what Rambus has done

10

repeatedly, from Infineon to Hynix to Samsung to Micron. See Blonder-Tongue, 402 U.S. at 328-

11

30 (“Permitting repeated litigation of the same issue as long as the supply of unrelated defendants

12

holds out reflects either the aura of the gaming table or a lack of discipline and of

13

disinterestedness on the part of the lower courts, hardly a worthy or wise basis for fashioning

14

rules of procedure.”) (internal quotes omitted); see also Parklane, 439 U.S. at 329. This policy is

15

especially applicable here where Rambus has already escaped the consequences of its wrongful

16

spoliation, not once, but twice: first, by settlement with Infineon, and later by depriving the

17

Virginia Court of jurisdiction, so that it could pursue the same claims in its preferred forum and

18

once again seek to re-litigate the defense it had previously lost.

19

6.

20

The Fairness Standard for Offensive Collateral Estoppel Does Not Apply, But If It Did, It Is Clearly Satisfied Here

21

Rambus argues that application of offensive collateral estoppel (which as

22

discussed above, does not apply here) would be unfair in light of two of the fairness

23

considerations enumerated in Parklane: the existence of prior inconsistent decisions on the issue

24

13

25 26 27 28

With respect, Samsung submits that the Court’s analysis in Hynix I that because “Rambus was party to both actions and is defending claims of spoliation, the application of collateral estoppel here is offensive rather than defensive,” Ex. 31 [Hynix Semiconductor Inc. v. Rambus Inc., No. CV-00-20905-RMW [Order Denying Hynix’s Motion to Dismiss Patent Claims for Unclean Hands on the Basis of Collateral Estoppel (N.D. Cal. Apr. 22, 2005)]] at 6 n.1, is incorrect. Also, contrary to the argument made by Rambus at the hearing, whether or not a party chose the forum in a prior litigation does not establish whether the application of collateral estoppel in a subsequent action is offensive or defensive. Footnote 15 of Parklane, which is what Rambus relies on for this proposition, merely states that plaintiffs typically choose the forum. Parklane, 439 U.S. at 331 n.15. MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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1

of Rambus’s spoliation and the availability of procedural opportunities before this Court that were

2

not available in Delaware—namely, that this Court held the conduct trial and therefore knows

3

more than the Delaware Court about whether the destroyed documents would have been relevant

4

to Samsung’s conduct claims and defenses. See Rambus CE Br. at 14.

5

a.

Inconsistent Decisions

6

The concern regarding inconsistent opinions expressed in Parklane is that a

7

defendant will be bound by one bad ruling when there are numerous other rulings in the

8

defendant’s favor on the same issue. Parklane, 439 U.S. at 331 n.4. Parklane illustrates this

9

concern with the law review article example of a railroad company that injures 50 passengers. If

10

the railroad succeeds in the first 25 actions and a plaintiff succeeds for the first time in action 26,

11

to bind the railroad to the decision from action 26 in actions 27-50 would be unfair in light of the

12

25 prior inconsistent decisions. Id. Likewise, the Seventh Circuit observed with respect to

13

Parklane’s inconsistent-decisions consideration that:

14

the use of non-mutual, offensive issue preclusion might leave the defendant being pecked to death by ducks. One plaintiff could sue and lose; another could sue and lose; and another and another until one finally prevailed; then everyone else would ride on that single success. This sort of sequence, too, would waste resources; it also could make the minority (and therefore presumptively inaccurate) result the binding one.

15 16 17 18

Premier Elec. Constr. Co. v. Nat’l Elec. Contractors Ass’n, Inc., 814 F.2d 358, 363 (7th Cir.

19

1987). But the Delaware Court is in the majority and raises significant questions about whether

20

this Court’s ruling in Hynix I was correct, not the other way around:

21

•

22

the Virginia Court orally found spoliation and unclean hands and dismissed Rambus’s counterclaims in Infineon;

•

the Virginia Court found spoliation that rendered the case exceptional under §285 and issued detailed findings and conclusions in Samsung v. Rambus; and

•

the Delaware Court found spoliation and dismissed Rambus’s counterclaims in Micron.

23 24 25

Only this Court has found that Rambus did not spoliate evidence and did not have unclean hands

26

in Hynix I.14 Accordingly, the concern regarding inconsistent decisions expressed in Parklane

27 28

14

Rambus wrongly asserts that the ALJ’s findings in the FTC proceeding represent a conflict that precludes collateral estoppel. See Rambus CE Br. at 5, 9. In fact, the only finding by the ALJ in Rambus’s favor was that the destroyed documents being considered were not material to the FTC issues MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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and relied upon by Rambus is not implicated here.

2

Finally, adherence to the Delaware decision is required under the last-in-time rule, which

3

requires the Court to apply the findings of the court that most recently decided an issue so long as

4

the elements of collateral estoppel are satisfied with respect to that issue. Americana Fabrics,

5

Inc. v. L&L Textiles, Inc., 754 F.2d 1524, 1529 (9th Cir. 1985) (“When the same claim or issue is

6

litigated in two courts, the second court to reach judgment should give res judicata effect to the

7

judgment of the first, regardless of the order in which the two actions were filed.”); Osborn v.

8

Knights of Columbus, 401 F. Supp. 2d 830, 833 (N.D. Ohio 2005) (applying last-in-time rule,

9

court in third action gave collateral-estoppel effect to decision of court in second action, even

10

though the decision was inconsistent with third court’s own ruling in the first action). Courts

11

adhere to the doctrine in the interest of promoting finality. Americana Fabrics, 754 F.2d at 1530

12

(“The decision is not binding because it is correct; it is binding because it is last.”).

13

b.

Procedural Opportunity

14

Rambus also argues that collateral estoppel should not apply because the present action

15

affords procedural opportunities not available in Delaware. Specifically, Rambus’s contention

16

that because this Court has already held a conduct trial, and is thus more familiar with the kinds

17

of documents that would be relevant to conduct claims and defenses than Judge Robinson, is

18

specious at best and without legal support. Rambus is not and cannot claim that it was deprived

19

of the opportunity to present all evidence in defense of its wrongful conduct before the Delaware

20

Court. If there was evidence from the conduct trial before this Court that somehow assisted

21

Rambus’s position, then Rambus had every opportunity to introduce that evidence before the

22 23 24 25 26 27 28

as framed and decided by the ALJ, which were different from the defenses raised by the Manufacturers. See In re Rambus, Inc., Docket No. 9302, 2004 WL 390647 (FTC Feb. 23, 2004), rev’d, 2006 WL 23300117 (FTC Aug. 2, 2006), rev’d and remanded, Rambus Inc. v. FTC, 522 F.3d 456 (D.C. Cir. 2008), pet. for cert. filed, 77 U.S.L.W. 3346 (Nov. 24, 2008) (No. 08-694). Further, the ALJ made factual findings regarding Rambus’s document destruction, and reviewed, but left in place, earlier ALJ orders giving the Virginia Court’s 2001 Infineon exceptional-case decision collateral-estoppel effect and establishing adverse presumptions regarding Rambus’s intentional document destruction while it anticipated litigation. See id. at ¶¶ 938-1009. Those orders are certainly consistent with the Delaware decision and the Virginia court’s spoliation findings in Infineon and Samsung v. Rambus. Moreover, to the extent that the ALJ decision is considered at all, it is plainly not on equal footing with the decisions of two federal courts, and can be regarded at most as an opinion admittedly and ultimately of no consequence in the proceeding. MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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Delaware Court. That this Court presided over the conduct trial is not a procedural deficiency of

2

the Delaware Court because the finder of fact cannot base its decision on a personal awareness of

3

facts not introduced into evidence.15 And Rambus’s argument that the fact that certain witnesses

4

were allegedly available in Delaware only by deposition impaired its ability try its case to the

5

Delaware Court is speculative at best and without any support.

6

C.

7

Rambus’s Patent Claims Should Be Dismissed Even If the Delaware Court’s Decision Is Not Given Full Preclusive Effect

8

If the Court gives preclusive effect to each issue decided by the Delaware Court, as it

9

should, then Rambus’s patent claims must be dismissed. Even if the Court applies collateral

10

estoppel to fewer than all of the Delaware Court’s findings, however, the end result should be the

11

same in light of the issues conclusively decided in Samsung’s favor based on collateral estoppel

12

and the applicable legal standards and record evidence submitted in connection with the

13

September trial. See D.I. 2354 [Samsung Br. Re: Spoliation] (citing applicable legal standard and

14

including evidence in support of Samsung’s defense of spoliation and unclean hands).

15

Further, irrespective of the application of collateral estoppel, the Delaware decision is

16

important persuasive authority that should convince the Court that, with respect, its prior ruling in

17

Hynix I was, for the reasons argued by Samsung and as set forth in Samsung’s post-trial briefing,

18

incorrect. Indeed, the Delaware Court’s findings of fact, conclusions of law, and reasoning are in

19

full accord with the position that Samsung urged this Court to adopt during the September trial.

20

The Court should take this opportunity to give the Delaware Court’s decision decisive weight and

21

put an end to Rambus’s flagrant disregard for the dignity of the Court and its processes.

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IV. CONCLUSION

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For all of the above reasons, the Court should give the Delaware Court’s decision

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preclusive effect, grant Samsung’s motion, and dismiss Rambus’s patent claims based on its

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unlawful spoliation of evidence and unclean hands.

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15

27 28

Rambus advocated this very position to the Federal Circuit in arguing that the Virginia Court abused its discretion by allegedly applying previous credibility determinations from the Infineon case to the determination of the issues in Samsung v. Rambus. See Ex. 28 [Rambus’s Opening Br.] at 50 (“The District Court was required to decide this case based on a record compiled by the parties in this case—not based on its recollection of evidence and testimony presented in another case involving a different party.”). MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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Case No. C 05-00334 RMW Case No. C 05-02298 RMW Case No. C 06-00244 RMW

Case 5:05-cv-00334-RMW

Document 3126

Filed 01/19/2009

Page 33 of 33

1 2 3

Dated: January 19, 2009

WEIL, GOTSHAL & MANGES LLP

4 By: /s/ Steven Cherensky STEVEN CHERENSKY (Bar No. 168275) Email: [email protected] MATTHEW D. POWERS (Bar No. 104795) Email: [email protected] WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: 650-802-3000 Facsimile: 650-802-3100

5 6 7 8 9 10 11

ROBERT S. BEREZIN (Admitted Pro Hac Vice) Email: [email protected] WEIL, GOTSHAL & MANGES LLP 767 Fifth Avenue New York, NY 10153 Telephone: 212-310-8000

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Attorneys for Defendants SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR, L.P.

16 17 18 19 20 21 22 23 24 25 26 27 28 MOTION FOR ENTRY OF JUDGMENT OR, IN THE ALTERNATIVE, MOTION FOR SUMMARY JUDGMENT

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Case No. C 05-00334 RMW Case No. C 05-02298 RMW Case No. C 06-00244 RMW