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Case 5:06-mc-80024-JW

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Kenneth L. Nissly (SBN 77589) [email protected] Keith L. Slenkovich (SBN 129793) [email protected] Susan van Keulen (SBN 136060) [email protected] Karen S. Reeves (SBN 183995) [email protected] THELEN REID & PRIEST LLP 225 West Santa Clara, 12th Floor San Jose, California 95113-1723 Telephone: (408) 292-5800; Facsimile: (408) 287-8040

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Attorneys for Nonparty HYNIX SEMICONDUCTOR AMERICA INC.,

7 8 UNITED STATES DISTRICT COURT 9 FOR THE NORTHERN DISTRICT OF CALIFORNIA 10 SAN JOSE DIVISION 11 12

TESSERA, INC.,

Case No. CV 06-80024-MISC-JW (PVT) Plaintiff,

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MICRON TECHNOLOGY, INC., a Delaware corporation, MICRON SEMICONDUCTOR PRODUCTS, INC., an Idaho corporation, INFINEON TECHNOLOGIES AG, a German corporation, et al.

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[Civil Action No. 2-05-CV-94-LED U.S.D.C. for the Eastern District of Texas] DECLARATION OF KEITH L. SLENKOVICH IN SUPPORT OF NONPARTY HYNIX SEMICONDUCTOR AMERICA, INC.’S OPPOSITION TO TESSERA INC.’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS PURSUANT TO SUBPOENA TO HYNIX SEMICONDUCTOR AMERICA, INC.

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Date: March 21, 2006 Time: 10:00 a.m. Courtroom: Five

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Honorable Patricia V. Trumbull

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I, Keith Slenkovich, declare: 1.

I am member of the bar of the State of California and a partner at the law firm of

Thelen Reid & Priest LLP, counsel for non party Hynix Semiconductor America, Inc. (referred to

28 DECLARATION OF KEITH L. SLENKOVICH IN SUPPORT OF HYNIX SEMICONDUCTOR AMERICA, INC.’S OPPOSITION TO TESSERA, INC.’S MOTION TO COMPEL Case No. CV 06-80024-MISC-JW (PVT)

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as “Hynix”). I make this declaration in connection with Hynix’s Opposition to Tessera Inc.’s

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(“Tessera’s”) Motion to Compel the Production of Documents Pursuant to Subpoena.

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2.

Hynix, its majority shareholder Hynix Semiconductor Industries, Inc. and a third

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company Rambus, Inc. have been involved in numerous patent and anti-trust litigation matters

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around the world, including actions before the Federal Trade Commission and the Department of

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Justice. Micron and Infineon are parties to many of these actions as well.

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3.

In early September, 2005, I had several telephone conversations with Tessera’s

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counsel, Trevor Stockinger of Irell & Manella, wherein he informed me about some broad

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categories of documents Tessera would be seeking from Hynix. Generally, he indicated that

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Tessera wanted all documents produced in any of the Rambus-related litigation matters, as well as

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additional categories of documents. I asked him to send me a draft subpoena with specific

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categories, so that I could forward them to Hynix to see what would be involved.

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4.

On September 27, 2005, my office received a formal subpoena from Tessera rather

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than the requested draft subpoena. Attached hereto as Exhibit A is a true and correct copy of

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Tessera’s Subpoena Duces Tecum to Hynix Semiconductor America, Inc., served on September

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27, 2005.

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5.

On October 7, 2005, Hynix serve objections to the subpoena, along with a cover

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letter indicating that Hynix was willing to work with Tessera to reach a compromise on the

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subpoena. Attached hereto as Exhibit B is a true and correct copy of my October 7th letter to Mr.

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Stockinger enclosing Hynix’s objections to the subpoena.

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6.

Over the next several days I had several discussions with Mr. Stockinger wherein

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we discussed the idea of specific search terms with which to search Hynix’s document databases.

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These document databases were set up and are maintained by my office for use in the various

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Rambus-related litigation matters and contain hundreds of thousands of documents collected and

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produced by Hynix in those actions.

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7.

On October 26, 2005, I received a letter from Mr. Stockinger suggesting that Hynix

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conduct a search of its document databases using the following search terms: Tessera, packaging,

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package, packages, ball grid array, chip scale package, chip scale packaging, BGA, CSP,

THELEN REID & PRIEST LLP ATTORNEYS AT LAW

DECLARATION OF KEITH L. SLENKOVICH IN SUPPORT OF HYNIX SEMICONDUCTOR AMERICA, INC.’S OPPOSITION TO TESSERA, INC.’S MOTION TO COMPEL Case No. CV 06-80024-MISC-JW (PVT)

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compliant, compliant layer, patent, Micron, and Infineon. Attached hereto as Exhibit C is a true

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and correct copy of Mr. Stockinger’s October 26, 2005 letter.

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8.

On December 7, 2005, I responded to Mr. Stockinger with the proposal that Hynix

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would search previously-produced documents from the existing litigations, and would search for

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each of the requested terms except for “patent,” “Micron,” and “Infineon” as those terms were

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overly broad and burdensome as they would be present in hundreds of thousands of documents

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that are outside the scope of discovery in Tessera’s action. Attached hereto as Exhibit D is a true

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and correct copy of my December 7, 2005 letter to Mr. Stockinger.

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9.

Mr. Stockinger advised me during discussions immediately following my

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December 7, 2005 letter that he thought the proposal sounded reasonable but that he would talk

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with his client/superiors and contact me to discuss the December 7 proposal further.

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10.

In order to expedite getting documents to Tessera, and anticipating that Tessera

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would accept Hynix’s reasonable production proposal, we began searching, collecting, and

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reviewing the documents that responded to the search term list outlined in my December 7, 2005

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letter to Mr. Stockinger. Throughout the months of December, January, and February, Hynix

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incurred costs of over $70,000 in fees related to this effort. In particular, Hynix identified

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approximately 10,000 documents that had previously been produced in other litigation matters that

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initially appeared to respond to the search term list. After thorough review of those documents,

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Hynix discovered that approximately 5,200 of those documents were Hynix documents that

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actually contained the search terms identified in the December 7th letter and would be responsive

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to Tessera’s subpoena. These 5,200 documents comprise 105,000 pages of documents.

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11.

I did not hear from Mr. Stockinger from December 7, 2005, through January 26,

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2006. On January 26, 2006, the same day I received a letter rejecting Hynix’s December 7, 2006

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proposal, I also received the instant motion to compel production through the United States

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Federal Court for the Northern District of California. Attached hereto as Exhibit E is a true and

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correct copy of Mr. Stockinger’s January 26, 2006 letter.

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On January 30, 2006, I responded to Mr. Stockinger’s rejection letter and informed

him that when Tessera did not reject Hynix’s December 7th proposal, Hynix’s counsel began DECLARATION OF KEITH L. SLENKOVICH IN SUPPORT OF HYNIX SEMICONDUCTOR AMERICA, INC.’S OPPOSITION TO TESSERA, INC.’S MOTION TO COMPEL Case No. CV 06-80024-MISC-JW (PVT)

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collecting, reviewing, and preparing documents for production to Tessera, at a cost of

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approximately $70,000 to Hynix. I proposed that Tessera take its motion to compel off calendar

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without prejudice to its right to being another motion in the future if Tessera deemed the produced

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documents unsatisfactory for Tessera’s purposes. Attached hereto as Exhibit F is a true and

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correct copy of my January 30, 2006 letter to Mr. Stockinger.

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13.

Since this time, I have had several discussions with Mr. Stockinger and let him

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know that Hynix remains willing to produce documents as outlined in my December 7, 2005

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letter. He has agreed with Hynix’s proposal to withdraw Tessera’s motion to compel if he finds

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that the documents produced under Hynix’s proposal are sufficient for Tessera’s purposes.

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Nevertheless, to date, Tessera has not yet taken this motion to compel off of the Court’s calendar. 14.

In addition, during these discussions, Mr. Stockinger requested that we search the

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document databases using the search terms “RDRAM” and “Rambus,” which turned up in excess

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of 150,000 additional document “hits,” representing an estimated 2.2 million additional pages,

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and more than 15 times the number of documents we have already reviewed and collected for

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production. Attached hereto as Exhibit G is a true and correct copy of my February 15, 2006 letter

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to Mr. Stockinger.

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15.

The approximately 105,000 page of documents reviewed and collected to date in

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response to the search terms contained in the December 7, 2005 letter-proposal have been Bates-

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numbered and are ready for producing, as soon as Tessera returns the agreed protective order

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amendment which addresses these documents.

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I declare under penalty of perjury under the laws of the State of California that the foregoing is true and correct. Executed this 28th day of February, 2006, at San Jose, California.

24 /s/ Keith L. Slenkovich

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SV #241679 v1

28 THELEN REID & PRIEST LLP ATTORNEYS AT LAW

DECLARATION OF KEITH L. SLENKOVICH IN SUPPORT OF HYNIX SEMICONDUCTOR AMERICA, INC.’S OPPOSITION TO TESSERA, INC.’S MOTION TO COMPEL Case No. CV 06-80024-MISC-JW (PVT)

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