Https Ecf.cand.Uscourts.gov Cgi-bin Show Temp.pl File=7574396-0--15559

8/6/2019 Https Ecf.cand.Uscourts.gov Cgi-bin Show Temp.pl File=7574396-0--15559

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OHS WEST :261178151.8

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN FRANCISCO DIVIDSION

RAMBUS INC.,

Plaintiff,

v.

NVIDIA CORPORATION,

Defendant.

Case No. 3:10-cv-03343-SIConsolidated with C-08-05500 SI

JOINT SUPPLEMENTAL CASEMANAGEMENT STATEMENT

CMC Date: June 24, 2011Time: 3:00 P.M.Court: Dept. 10, 19

thFloor

Judge: Honorable Susan Illston

NVIDIA CORPORATION,

Cross-Complainant,

v.

RAMBUS INC.,

Cross-Defendant.

Case3:08-cv-05500-SI Document42 Filed06/17/11 Page1 of 47


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OHS WEST :261178151.8

Rambus Inc. (Rambus) and NVIDIA Corporation (NVIDIA) submit their respective

supplemental case management statements and proposals.

Rambus supplemental statement and proposal is attached hereto as Exhibit A.

NVIDIAs supplemental statement and proposal is attached hereto as Exhibit B.

Dated: June 15, 2011

Respectfully Submitted,

MCKOOL SMITH P.C.

CROWELL & MORING LLP

/s/ Pierre J. Hubert

Pierre J. HubertAttorneys for PlaintiffRAMBUS INC. _______________________

Dated: June 15, 2011 ORRICK, HERRINGTON & SUTCLIFFE LLP

/s/ I. Neel ChatterjeeI. NEEL CHATTERJEE

Attorneys for Defendant andCross-Complainant

NVIDIA CORPORATION



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EXHIBIT A



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28 Rambuss Supp. Case Management Statement and [Proposed] OrderCase Nos. C-08-03343 SI, C-08-05500 SI

Austin 65391v5

Austin 68050v4

McKOOLSMITHP.C.

300CrescentCourt,Suite1500

Dallas,TX75201

Mike McKool, Jr. (pro hac vice)Douglas Cawley (pro hac vice)McKOOL SMITH P.C.300 Crescent CourtSuite 1500Dallas, Texas 75201Telephone: (214) 978-4000

Facsimile: (214) 978-4044Email: [email protected];[email protected]

Scott L. Cole (pro hac vice)Pierre J. Hubert (pro hac vice)Craig N. Tolliver (pro hac vice)McKOOL SMITH P.C.300 W. 6th StreetSuite 1700Austin, Texas 78701Telephone: (512) 692-8700Facsimile: (512) 692-8744Email: [email protected];[email protected];[email protected]

Attorneys for Plaintiff RAMBUS INC.

J. Daniel Sharp (CSB No. 131042)CROWELL & MORING LLP275 Battery Street, 23rd FloorSan Francisco, California 94111Telephone: (415) 986-2800Facsimile: (415) 986-2827Email: [email protected]



SAN FRANCISCO DIVISION

RAMBUS INC.,

Plaintiff,

v.

NVIDIA CORPORATION,

Defendant.

Case No. C-08-03343 SI

RAMBUSS SUPPLEMENTAL CASEMANAGEMENT STATEMENT AND[PROPOSED] ORDER

CMC Date: June 24, 2011Time: 3:00 p.m.Judge: The Hon. Susan Illston

NVIDIA CORPORATION,

Plaintiff,

v.

RAMBUS INC.,

Defendant.

Case No. C-08-05500 SI



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28 Rambuss Supp. Case Management Statement and [Proposed] OrderCase Nos. C-08-03343 SI, C-08-05500 SI

Austin 65391v5

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Rambus Inc. (Rambus) submits this supplemental Case Management Statement and

Proposed Order for the June 24, 2011 case management conference, pursuant to the Courts

February 15, 2011 Minute Order (Dkt. No. 1931) and May 24, 2011 Order (Dkt. No. 211), the

Local Rules of this District and Rules 26(f) and 16(b) of the Federal Rules of Civil Procedure.2

Since the last case management conference, the parties have been engaged in discovery

on numerous issues pursuant to the orders of the Court and of Discovery Master Infante. The

parties, in fact, agreed and stipulated to the discovery plan. Rambus proposes that the Court now

set a case and trial schedule, consistent with the local rules, to further guide the parties as they

continue discovery with appropriate additional assistance from Discovery Master Infante.

NVIDIA instead asks, yet again, for the Court to reconsider whether this case should

move forward with full discovery, even though the recent Federal Circuit decisions to which

NVIDIA cites only support that the present case should proceed. NVIDIA similarly has no basis

to seek to restrict discovery to only the issue of unclean handsa defense that to date has not

even beenpledby NVIDIAor to require Rambus to reduce the number of asserted patent

claims at this early stage before NVIDIA has provided invalidity contentions, which it

committed to serve on August 12, and before targeted discovery. NVIDIA has not proposed an

alternative to Rambuss proposed schedule, even after Rambus invited NVIDIA to do so with the

understanding that NVIDIAs schedule could be viewed as its alternative position. Therefore,

the Court should order that the case move forward under Rambuss schedule proposed herein

without further briefing or delay from NVIDIA.

1Unless otherwise noted, docket numbers herein refer to the first-filed case, No. C-08-03343.

2 Rambus diligently tried to meet and confer with NVIDIA regarding the case managementstatement beginning June 13, but NVIDIA expressed unavailability and declined to meet andconfer until the day before the statement was due. (See June 13-17 emails between Rambus andNVIDIA (Attachment 1 hereto).) Rambus was not provided with NVIDIAs final casemanagement statement prior to the time that Rambus provided this statement to NVIDIA forpurposes of the joint filing, and therefore may not have addressed all issues to be raised byNVIDIA. Rambus reserves the right to address any change of position by NVIDIA at the casemanagement conference.



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Rambuss Supp. Case Management Statement and [Proposed] Order

Case Nos. C-08-03343 SI, C-08-05500 SI

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SUMMARY OF DEVELOPMENTS SINCE THE FEBRUARY 4

THCASE

MANAGEMENT STATEMENT

Per Civil Local Rule 16-10(d), Rambus summarizes developments that have occurred

since the last case management statement (Dkt. No. 192), filed February 4, 2011.

A. In Accordance With the Courts Orders and With the Assistance of DiscoveryMaster Infante, Discovery Has Been Moving Forward Under the Federal Rules andPatent Local Rules

Following the February 11, 2011 Case Management Conference, the Court ordered the

parties to discuss a discovery plan with Discovery Master Infante. (See 2/15/2011 Minute Order

(Dkt. No. 193).) Following a hearing with Discovery Master Infante, the parties stipulated to a

discovery plan to move forward with discovery in full, including interrogatories, requests for

production, requests for admission, and depositions. Discovery Master Infante entered the

parties stipulation in a March 21 order (Discovery Plan Order). (Attachment 2 hereto; Dkt.

No. 204.) In accordance with that order, Rambus has provided its infringement contentions per

the Patent Local Rules. NVIDIA is to provide its invalidity contentions under the Patent Local

Rules on August 12. The parties have served and responded to discovery requests and are

continuing discovery with the assistance of Discovery Master Infante.

B. The Federal Circuit Has Issued Opinions in theMicron andHynix Appeals

On May 13, 2011, the Federal Circuit issued opinions inMicron Tech., Inc. v. Rambus,

Inc., 2011 U.S. App. LEXIS 9730 (Fed. Cir.2011) (Micron) andHynix Semiconductor, Inc. v.

Rambus, Inc., 2011 U.S. App. LEXIS 9728 (Fed. Cir. 2011) (Hynix). Rambus previously

provided those opinions to the Court. (Dkt. No. 208.)

InMicron, the Federal Circuit vacated the judgment against Rambus and remanded the

case for further proceedings. 2011 U.S. App. LEXIS 9730, at *54-55. In particular, the Federal

Circuit vacated Judge Robinsons findings that Rambus had destroyed documents in bad faith,

that any document destruction had prejudiced Micron, and that dismissal was an appropriate

sanction, while affirming Judge Robinsons finding that Rambus spoliated documents. Id. at

*16-43, *46.



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In vacating the judgment inHynix and remanding for further proceedings, the Federal

Circuit addressed spoliation as well as several other issues. The Federal Circuit vacated Judge

Whytes finding that Rambus did not spoliate evidence but declined to review Judge Whytes

finding that Rambus did not destroy documents in bad faith or his finding that the document

destruction did not prejudice Hynix. Id. at *16-23. The court remanded the case for Judge

Whyte to address the spoliation issue and recognized that Judge Whyte may, inter alia,

determine[] that Rambus did not spoliate documents. Id. at *24. The Federal Circuit affirmed

all other aspects of the judgment that Hynix had challenged, including:

Judge Whytes construction of the claim term bus, 2011 U.S. App. LEXIS 9728, at*30-34;

the determination that the patents-in-suit were not invalid for lack of written description,id. at *34-40;

Judge Whytes order denying Hynixs motion for a new trial following the jury verdict ofnon-obviousness, id. at *40-42; and

Judge Whytes rejection of Hynixs JEDEC-based waiver and estoppel defenses, id. at*24-30 (citingRambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1085 (Fed. Cir. 2003)

as controlling authority that Rambus did not breach its disclosure duty to JEDEC).

C. A 28 U.S.C. 1659 Stay Remains in Force With Respect to Barth I and WarePatents

Six Farmwald/Horowitz patents (U.S. Patent Nos. 6,260,097; 6,304,937; 6,564,281;

6,715,020; 6,751,696 and 7,209,997), three Barth I patents (U.S. Patent Nos. 6,470,405;

6,591,353 and 7,287,109), four Barth II patents (U.S. Patent Nos. 7,287,119; 7,330,952;

7,330,953 and 7,360,050) and two Ware patents (U.S. Patent Nos. 7,177,998 and 7,210,016)

are asserted in this case. The ITCs determination with respect to Barth I and Ware patents in

Inv. No. 337-TA-661 is currently being appealed at the Federal Circuit, so pursuant to 28 U.S.C.

1659, proceedings on Barth I and Ware patents are currently stayed.3

3 Rambus also notes developments in separate Rambus patent infringement actions againstdefendants Broadcom, LSI Corporation, Mediatek and STMicroelectronics involving sixFarmwald/Horowitz patents-in-suit. These actions are pending in this District before JudgeSeeborg and have been deemed related to each other. Like NVIDIA, the defendants there sought



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THE COURT SHOULD SET DATES FOR TRIAL, CLAIM CONSTRUCTIONAND OTHER PRETRIAL PROCEEDINGS

Discovery has been ongoing. The parties should proceed with discovery and briefing for

the six Farmwald/Horowitz and four Barth II patents that are not subject to the 1659 stay,

consistent with the normal schedule of the Patent Local Rules and Federal Rules, including with

regard to (i) patent contentions, (ii) claim construction proceedings, and (iii) pretrial and trial

proceedings.

A. This Case Should Proceed Without Further Delay, in Accordance With the PatentLocal Rules and Federal Rules

First, with respect to the pleadings, NVIDIA seeks guidance as to when and how it

should answer Rambus Complaint that was filed in 2008. Rambus below proposes that

NVIDIA provide its answer on July 15. NVIDIA, to date, has filed a complaint in the North

Carolina action that was transferred to this Court. If NVIDIA does not withdraw its complaint,

Rambus could serve a response by the same date, July 15. The parties could thereafter file a

response to any counterclaims within 21 days, by August 5.

Second, with respect to patent contentions, per stipulated order, Rambus already has

provided its infringement contentions in accordance with the Patent Local Rules. In return,

NVIDIA has stipulated to providing its invalidity contentions on August 12. (Attachment 2; Dkt.No. 204.)

Third, with regard to claim construction, at the time the parties stipulated to providing

infringement and invalidity contentions under the Patent Local Rules, claim construction issues

regarding patents in the Farmwald/Horowitz family were still on appeal in theHynix case, so

Rambus and NVIDIA did not set claim construction dates. Since then, however, the Federal

Circuit has affirmed Judge Whytes claim construction ruling, and there is no reason to further

delay claim construction. The parties should proceed under the Patent Local Rules governing

claim construction as set forth in the proposed schedule below.

a stay of litigation on the Farmwald/Horowitz patents. Following the Federal Circuits May 13decisions, seeing no reason to await any further proceedings, Judge Seeborg denied defendantsrequest for a stay, (6/13/2011 Order (Attachment 3 hereto), at 3), noting some harm associatedwith a stay of proceedings on the Farmwald/Horowitz patents. (Id. at 4.)



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Fourth, with regard to pretrial and trial, the parties have conducted significant discovery

bearing on certain of the patents-in-suit. Certain discovery on certain accused NVIDIA products

has already been taken in the ITC and cross-produced here. Accordingly, the Court should set an

appropriate date for trial for the ten non-stayed patents.

Rambus proposes the following case schedule for the ten patents that are not stayed, with

additional information regarding certain proposed dates set forth below.

EventRambuss proposal

(or existing deadline)

Proposed date (ifany) that NVIDIA

provided to Rambus

Asserted Claims & InfringementContentions; Accompanying

Document Production (P.L.R. 3-1 & 3-2)

[Rambus alreadyserved per stipulated

order]

NVIDIA to serve its answer and

counterclaims (if any) in

response to Rambusscomplaint; and Rambus to serve

its response to NVIDIAs North

Carolina-filed complaint, unless

NVIDIA withdraws thecomplaint

July 15 Aug. 15

Each party to serve response toany counterclaims

+21 days (Aug. 5)

Invalidity Contentions;Accompanying Document

Production (P.L.R. 3-3 & 3-4)

Aug. 12 per stipulatedorder

Exchange of Proposed Termsfor Claim Construction (P.L.R.

4)

+ 14 days (Aug. 26) no counterproposal4

Exchange of Preliminary Claim

Construction & Extrinsic

Evidence (P.L.R. 4.2)

+ 21 days (Sept. 16) no counterproposal

4Rambus asked NVIDIA to meet and confer regarding the schedule or to at least provide

Rambus with a proposed schedule, even if NVIDIAs proposal was deemed to be consideredonly in the alternative to NVIDIAs other proposals. NVIDIA refused to provide a scheduleproposal. (See Attachment 1 hereto (June 13-17 emails between Rambus and NVIDIA)).



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EventRambuss proposal

(or existing deadline)

Proposed date (ifany) that NVIDIA

provided to Rambus

Joint Claim Construction &

Prehearing Statement Due

(P.L.R. 4.3)

+ 25 days (Oct. 11) no counterproposal

Completion of Claim

Construction Discovery (P.L.R.

4.4)

+ 30 days (Nov. 10) no counterproposal

Claim Construction Briefs Due

(P.L.R. 4.5(a) (+ 15 days))

+ 21 days (Dec. 1) no counterproposal

Responsive Claim Construction

Briefs Due (P.L.R. 4.5(b))


Reply Claim Construction

Briefs Due (P.L.R. 4.5(c))


Markman/Claim Construction

Hearing (P.L.R. 4.6 (+ 2 weeks,

subject to Courts convenience))

+ 20 days, subject to

Courts convenience

(Wed., Jan. 11, 2012)

no counterproposal

Dates below are estimated, assuming a claim construction order issues

approximately 5 weeks after the claim construction hearing, subject to the Courts

convenience

Advice of counsel disclosures

(P.L.R. 3-7)

21 days after claim

construction ruling(Mar. 9)

no counterproposal

Fact discovery cutoff 5 weeks after claimconstruction ruling(Mar. 23)

no counterproposal

Opening expert reports + 2 weeks (April 6) no counterproposal

Rebuttal expert reports + 2 weeks (April 20) no counterproposal

Expert discovery cutoff + 3 weeks (May 11) no counterproposal

Dispositive motion filing

deadline

+ 2 weeks (May 25) no counterproposal

Dispositive motion hearings + 2 weeks (June 8) no counterproposal

Pretrial conference statement + 2 weeks (June 22) no counterproposal

Pretrial conference + 1 week (June 29) no counterproposal

Trial Monday 2 weeks after

pretrial conference

(July 16)

no counterproposal



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1. Service of Answers

Rambuss July 10, 2008 complaint has been pending for nearly three years. Instead of

answering Rambuss complaint, on August 29, 2008, NVIDIA filed a motion to dismiss or for a

more definite statement with respect to certain of Rambuss claims. On November 13, 2008, the

Court denied NVIDIAs motion without oral argument. (Dkt. No. 45.) On November 24, 2008,

the Court granted NVIDIAs request to postpone its answer until January 16, 2009. (Dkt. No.

57.) Instead of providing an answer on January 16, 2009, however, NVIDIA filed a second

motion to dismiss as to the Farmwald/Horowitz patents. (Dkt. No. 80.) On April 13, 2009, the

Court denied NVIDIAs motion without prejudice to renewal after resolution of the [Hynix and

Micron] Federal Circuit appeals. (Dkt. No. 120.) Decisions in those appeals issued on May 13,

2011.

On July 11, 2008, the day after Rambus filed its complaint, NVIDIA filed a complaint

against Rambus in North Carolina. On September 8, 2008, Rambus filed a motion in the North

Carolina action to dismiss that action pursuant to Fed. R. Civ. P. 12(b)(6) and 12(b)(1). The

North Carolina action was then transferred to this District, and consolidated with Rambuss first-

filed action (Case No. C-08-03343). On April 13, 2009, the Court DENIE[D] all other pending

motions without prejudice to renewal after resolution of the Federal Circuit appeals. (Docket

Nos. 80, 85, 113). (Dkt. No. 120.) The docket numbers cited in the Courts order do not

include Rambuss motion to dismiss.

Now that the Federal Circuit has issued decisions in theHynix andMicron appeals,

Rambus proposes a July 15, 2011 deadline for NVIDIAs answer and Rambuss response (to the

extent NVIDIA does not withdraw its North Carolina complaint), and an August 5, 2011

deadline for the parties responses to any counterclaims.

2. Claim Construction Proceedings

The Federal Circuit recently affirmed Judge Whytes claim construction ruling regarding

patents in the Farmwald/Horowitz family and there is no reason to postpone claim construction

proceedings on the Farmwald/Horowitz and Barth II patents, none of which is subject to the

1659 stay. Rambus proposes scheduling claim construction proceedings in accordance with the



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construction. See Rambus Opposition to NVIDIA Mtn. to Dismiss, Dkt. No. 93, at 4 (explaining

that the lower courts ruling inMicron cannot be given preclusive effect here because of the

lack of identity between the issues, including as to patents (patents in Micron case and present

case are different), parties (Micron and NVIDIA are not the same party), and products (Micron

memory devices are not the same as NVIDIA controller devices)), 20-45.

Now the Federal Circuit has ruled inHynix andMicron. Consistent with Rambuss long-

held position, there is nothing in the Federal Circuit opinions that suggests this case should not

move forward under a normal schedule.

First, NVIDIA and Rambus were awaiting the Federal Circuits opinion with respect to

claim construction regarding certain terms in certain Farmwald/Horowitz patents, as Rambus has

asserted claims containing the same terms against NVIDIA. The Federal Circuit inHynix

affirmed Judge Whytes rulings regarding Farmwald/Horowitz patents with respect to claim

construction, the patents adequate written description support, and the non-obviousness of the

patents. 2011 U.S. App. LEXIS 9728, at *30-42. Accordingly the parties now should proceed

with claim construction.

Second, NVIDIA and Rambus were awaiting the Federal Circuits treatment of JEDEC-

related allegations inHynix, in view of the similar JEDEC-related allegations in NVIDIAs

complaint. The Federal Circuit in its recentHynix opinion rejected JEDEC-related allegations

against Rambus, holding that Rambus did not breach its disclosure duty to JEDEC. 2011 U.S.

App. LEXIS 9728, at *30. To the extent NVIDIA chooses to maintain its JEDEC-related

allegations despite the Federal CircuitsHynix decision, Rambus intends to seek the Courts

permission to file a motion on the pleadings and/or for summary judgment by application of the

Federal CircuitsHynix decision.

Third, consistent with Rambuss long-held position included in briefs to the Court, even

assuming arguendo that NVIDIA had pled unenforceability due to spoliation in its complaint

(which NVIDIA has not), there is nothing in the Federal Circuit decisions that would resolve any

allegation of unenforceability as to NVIDIA in this case. In fact, the Federal Circuit decisions in

Micron andHynix do not resolve the allegations of patent unenforceability due to alleged



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spoliation even in those cases, much less in the case at bar. The Federal Circuit vacated the

judgments in bothHynix andMicron and remanded for further proceedings. InHynix and

Micron, the parties therefore must await the Federal Circuit mandate, engage in renewed district

court proceedings, and then complete any appeal process.5

Moreover, as Rambus has explained

in briefing, theHynix andMicron opinions would not resolve any spoliation/unenforceability

issues in NVIDIAs favor in this case, even ifHynix andMicron had proceeded to completion,

due to, for example, the inherent differences in the casesincluding differences in parties,

patents, and productsthat would preclude application of the doctrine of collateral estoppel. See

Rambus Opposition to NVIDIA Mtn. to Dismiss, Dkt. No. 93, at 20-45.

In sum, there is nothing in either theHynix orMicron issued opinions that suggests that

Rambuss case at bar should not proceed. The parties should complete discovery, complete the

items required by the Patent Local Rules, including claim construction, and otherwise work

towards a prompt trial date.

C. Settlement and ADR

Despite having been found by the ITC to be in violation of 19 U.S.C. 1337, because its

memory controller products infringe seventeen claims of three asserted Barth I patents, NVIDIA

has refused to settle either that dispute or the present litigation. Rambus remains willing to

engage in global settlement negotiations but believes that moving this action forward will be

more productive than ADR at resolving the parties disputes. The cases are not suitable for

reference to binding arbitration or the Judicial Panel on Multidistrict Litigation.

DISCOVERY SHOULD REMAIN OPEN ON ALL ISSUES

This Court should not disturb the discovery plan agreed upon by the parties and

shepherded by Discovery Master Infante for discovery to proceed on all issues. NVIDIAs

contrary proposal to phase discovery would take this case backwards rather than forwards.

5Rambus and Hynix both sought and were granted 14-day extensions of time (until June 27,

2011) to file petitions for panel rehearing and/or rehearing en banc, and the Federal Circuitmandate has not yet issued. Judge Whyte held a conference on June 3, 2011 regarding theremand and, according to the minute entry, determined that the court would wait until theFederal Circuit issues a mandate before proceeding.



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NVIDIAs proposal to limit discovery to the remaining issues related to unclean hands is also

inchoate given that NVIDIA has pled no unclean hands defense.

First, NVIDIA already has presented limited discovery as an option to Discovery Master

Infante, and Discovery Master Infante has rejected NVIDIAs position. Discovery Master

Infante has emphasized that discovery is wide open as to all issues. He entered as an order the

parties stipulated discovery plan to accomplish just that. (Attachment 2; Dkt. No. 204.) There

is no reason for the Court to revisit Discovery Master Infantes discovery rulings.

Second, as this Court has previously observed, it simply would be unfair to permit

NVIDIA to move forward on still-unpled allegations while effectively staying Rambuss claims

as NVIDIA now proposes. (12/30/2008 order (Dkt. No. 76) at 3-4 (The Court is also persuaded

that it would be unfair to stay the patent infringement litigation on the FH patents while allowing

related antitrust claims to proceed.).) This is particularly true given that NVIDIA is not merely

an accused infringer with respect to Rambus and its patent portfolio, but an adjudicated infringer

of valid and enforceable Rambus patents.

Third, NVIDIAs proposal to phase spoliation discovery is unfair because NVIDIA does

not even have a pleading in this case demanding the relief it appears to seek in its proposal. At a

minimum, NVIDIA must file an answer setting forth the basis for its contentions before Rambus

and the Court can even properly consider the contours of NVIDIAs proposal. NVIDIAs broad-

brush proposal is an attempt to paint over its failure to come forward with plausible, concrete

suggestions as to what evidence might have been destroyed that was not either redundant or

irrelevant to a trial on NVIDIAs infringement of Rambuss patents. If, as NVIDIA posits, this

Court reaches the same conclusion as the ITC, then this Court, like the ITC, will find no

evidence that Rambus destroyed unique, relevant documents. Under such circumstances, there

would be no finding that any spoliation of documents prejudiced NVIDIA and no finding of

unclean hands.

For all of these reasons, the Court should deny NVIDIAs proposal to phase discovery.



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Case Nos. C-08-03343 SI, C-08-05500 SI

12

McKOOLSMITHP.C.


Dallas,TX75201

DISCOVERY SHOULD PROCEED ON SCHEDULE

AS TO ALL ASSERTED PATENT CLAIMS

In the Discovery Plan Order entered by Discovery Master Infante, NVIDIA stipulated to

the current schedule including infringement contentions and invalidity contentions. In adherence

to that schedule, Rambus timely served its infringement contentions. NVIDIA proposed to

Rambus that NVIDIAs invalidity contentions be delayed by 30 days, but Rambus rejected

NVIDIAs proposal to extend the parties agreed-upon schedule. NVIDIA now seeks to reduce

the number of infringing claims to which it committed to respond. NVIDIA never raised this

issue with Discovery Master Infante, who assisted the parties in setting dates for infringement

and invalidity contentions.

Further, the Court should deny NVIDIAs request as premature. Rambus recognizes that

it may be appropriate at some point before trial to streamline the case by limiting the number of

infringed claims asserted. Before attempting to make any determination as to further narrowing

of asserted claims, however, Rambus is entitled to discovery on NVIDIAs accused products and

the invalidity contentions NVIDIA has committed to provide in August. The reduction in the

number of claims asserted at trial in the Coordinated Cases litigation before Judge Whyte

occurred onlyafter the accused infringers there had provided their invalidity contentions. To

require Rambus to reduce the number of asserted claims at this stage would be unfair.

Respectfully submitted,

Dated: June 17, 2011 MCKOOL SMITH P.C.

CROWELL & MORING LLP

By: /s/ Pierre J. Hubert

Pierre J. Hubert300 West 6th Street, Suite 1700Austin, Texas 78701Phone: 512/692-8700Facsimile: 512/692-8744Email: [email protected]

Attorneys for PlaintiffRAMBUS INC.



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28Austin 65391v5


Case Nos. C-08-03343 SI, C-08-05500 SI

Austin 68050v4

McKOOLSMITHP.C.


Dallas,TX75201

[PROPOSED] SUPPLEMENTAL CASE MANAGEMENT ORDER

The Court orders the parties to adhere to the following schedule which shall govern

proceedings in this case:

Event Deadline

Asserted Claims & InfringementContentions; Accompanying

Document Production (P.L.R. 3-1 &

3-2)

[Rambus already served per stipulatedorder]

NVIDIA to serve its answer and

counterclaims (if any) in response to

Rambuss complaint; and Rambus toserve its response to NVIDIAs North

Carolina-filed complaint, unlessNVIDIA withdraws the complaint

July 15

Each party to serve response to any

counterclaims

+21 days (Aug. 5)

Invalidity Contentions;

Accompanying Document Production

(P.L.R. 3-3 & 3-4)

Aug. 12 per stipulated order

Exchange of Proposed Terms for

Claim Construction (P.L.R. 4)

+ 14 days (Aug. 26)

Exchange of Preliminary ClaimConstruction & Extrinsic Evidence

(P.L.R. 4.2)

+ 21 days (Sept. 16)

Joint Claim Construction &

Prehearing Statement Due (P.L.R. 4.3)

+ 25 days (Oct. 11)

Completion of Claim Construction

Discovery (P.L.R. 4.4)

+ 30 days (Nov. 10)

Claim Construction Briefs Due

(P.L.R. 4.5(a))

+ 21 days (Dec. 1)

Responsive Claim Construction BriefsDue (P.L.R. 4.5(b))

+ 14 days (Dec. 15)

Reply Claim Construction Briefs Due(P.L.R. 4.5(c))

+ 7 days (Dec. 22)

Markman/Claim Construction Hearing(P.L.R. 4.6)

+ 20 days (Wed., Jan. 11, 2012)



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NVIDIAs Case Management Statement and [Proposed] Order

Case Nos. C-08-03343 SI, C-08-05500 SI

McKOOLSMITHP.C.


Dallas,TX75201

Event Deadline

Dates below are estimated, assuming a claim construction order issues

approximately 5 weeks after the claim construction hearing

Advice of counsel disclosures (P.L.R.

3-7)

21 days after claim construction ruling

(Mar. 9)

Fact discovery cutoff 5 weeks after claim construction

ruling (Mar. 23)

Opening expert reports + 2 weeks (April 6)

Rebuttal expert reports + 2 weeks (April 20)

Expert discovery cutoff + 3 weeks (May 11)

Dispositive motion filing deadline + 2 weeks (May 25)

Dispositive motion hearings + 2 weeks (June 8)

Pretrial conference statement + 2 weeks (June 22)

Pretrial conference + 1 week (June 29)

Trial Monday 2 weeks after pretrial

conference (July 16)

Dated:___________________ ______________________________

Honorable Susan IllstonUnited States District Judge



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ATTACHMENT

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From: Craig N. Tolliver

Sent: Friday, June 17, 2011 10:47 AM

To: Chatterjee, Neel; Pierre Hubert

Cc: Trent E. Campione; Sutton, Theresa A.; Ong, Andrew S.; Goldstein, David M.; Lee, Sally

Subject: RE: Rambus/NVIDIA - meet and confer re case management statement

Attachments: 2011-06-17 draft cmc statement.pdf

Page 1 of 5

6/17/2011

Neel,

Rambus's overall position on the case management statement has not changed from the onepresented in the document that we provided you on June 15. Following the parties' meet andconfer from yesterday -- NVIDIA's first availability -- Rambus has considered NVIDIA's currentposition, as understood by Rambus, and Rambus's response thereto. Please see the attachedupdated draft of Rambus's portion of the CMC statement, which reflects the same.

Please note that we are still proofing this draft.

Thanks,- Craig________________________________________From: Chatterjee, Neel [[email protected]]Sent: Wednesday, June 15, 2011 5:54 PMTo: Pierre HubertCc: Trent E. Campione; Sutton, Theresa A.; Ong, Andrew S.; Craig N. Tolliver; Goldstein,David M.; Lee, SallySubject: RE: Rambus/NVIDIA - meet and confer re case management statement

Pierre,

As I told you before, I think it is premature to be discussing such dates. As a result, I do not thinkit is appropriate to discuss such dates.

Neel

-----Original Message-----From: [email protected]: Wednesday, June 15, 2011 3:33 PMTo: Chatterjee, NeelCc: Trent E. Campione; Sutton, Theresa A.; Ong, Andrew S.; [email protected];

Goldstein, David M.; Lee, SallySubject: RE: Rambus/NVIDIA - meet and confer re case management statement

Neel,Rambus's position will include a proposed schedule, in addition to opposing NVIDIA's proposalsfor phased discovery and claim reduction. Does NVIDIA have any position on these dates (evenif it is understood that NVIDIA is providing its position only in the alternative, i.e., if the casecontinues to go forward without phased discovery)?Pierre

-----Original Message-----



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From: Chatterjee, Neel [mailto:[email protected]]Sent: Wednesday, June 15, 2011 3:42 PMTo: Pierre HubertCc: Trent E. Campione; Sutton, Theresa A.; Ong, Andrew S.; Craig N. Tolliver; Goldstein, David M.; Lee,SallySubject: RE: Rambus/NVIDIA - meet and confer re case management statement

Pierre,

Some of my availability is dependent on time. Are there other things you want on the agenda other than theanswering issue?

Neel

-----Original Message-----From: [email protected]: Wednesday, June 15, 2011 1:41 PMTo: Chatterjee, NeelCc: Trent E. Campione; Sutton, Theresa A.; Ong, Andrew S.; [email protected]; Goldstein, David

M.; Lee, SallySubject: Re: Rambus/NVIDIA - meet and confer re case management statement

Neel,That works. If you want to talk earlier, we are available earlier as well. Thanks.

On Jun 15, 2011, at 3:33 PM, "Chatterjee, Neel" wrote:

Pierre,

Can we talk at 10 am California time tomorrow?

Neel

From: [email protected]: Wednesday, June 15, 2011 11:49 AMTo: Chatterjee, Neel; Trent E. Campione; Sutton, Theresa A.Cc: Ong, Andrew S.; [email protected]; Goldstein, David M.;Lee, SallySubject: RE: Rambus/NVIDIA - meet and confer re case management statement

Neel, we received NVIDIA's email below and also NVDIA's draft statement under separate cover this morning.

Rambus notes that although NVIDIA says in its email below that NVIDIA does not wish to discuss schedulingwith Rambus, NVIDIA's draft seems to seek the Court's guidance on an Answer. That seems like exactly thekind of scheduling issue the parties could be discussing. We understand that you were not available earlier thisweek for meet-and-confer, that you were not available yesterday, and that you are travelling today, but ifNVIDIA has availability today to discuss, please advise of a time. Pierre

________________________________From: Chatterjee, Neel [mailto:[email protected]]Sent: Wednesday, June 15, 2011 1:18 AMTo: Pierre Hubert; Trent E. Campione; Sutton, Theresa A.Cc: Ong, Andrew S.; Craig N. Tolliver; Goldstein, David M.; Lee, Sally

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Subject: RE: Rambus/NVIDIA - meet and confer re case management statement Pierre,

We do not believe setting such dates is appropriate at this time. As a result, we will not reach agreement on thatpoint if Rambus intends to present it.

Neel

From: [email protected]: Tuesday, June 14, 2011 6:48 PMTo: Chatterjee, Neel; Trent E. Campione; Sutton, Theresa A.Cc: Ong, Andrew S.; [email protected]; Goldstein, David M.;Lee, SallySubject: RE: Rambus/NVIDIA - meet and confer re case management statement

Neel,Rambus looks forward to receiving a statement of NVIDIA's position. Rambus disagrees with NVIDIA'spositions (1) and (2), to the extent understood. Rambus intends to ask the Court to set dates to conform to atypical schedule under the local rules, as the parties continue ongoing discovery with the assistance of JudgeInfante.

Rambus is generally available tomorrow afternoon to meet and confer if that is your earliest availability. Sinceyou are travelling, please let us know what is the earliest convenient time for you. Rambus strongly believesthat the parties should try to reach agreement on as many upcoming dates as possible (even if NVIDIA wishesto agree to those dates only in the alternative), to make the CMC statement as joint as possible to maximize itsusefulness to the Court.Pierre

________________________________From: Chatterjee, Neel [mailto:[email protected]]Sent: Tuesday, June 14, 2011 12:49 PMTo: Trent E. Campione; Sutton, Theresa A.

Cc: Ong, Andrew S.; Pierre Hubert; Craig N. Tolliver; Goldstein, David M.; Lee, SallySubject: RE: Rambus/NVIDIA - meet and confer re case management statement Trent,

We will send you a draft today (hopefully) of our case management statement submission. We will be providingthe Court with a number of the orders relevant to this case.

To ensure you are prepared on certain issues, we are considering proposing the following:

1. Requesting that the Court enter an order phasing discovery following the Federal Circuit's rulings andfocusing discovery on the issues of bad faith and remedy.

2. If the Court declines and wishes to proceed on all issues, to limit the number of claims in dispute.

I am not sure a live meet and confer is necessary, but, if you feel it is, let us know times you are availabletomorrow. I am travelling in the morning tomorrow so the earliest we can talk is the afternoon.

Neel

From: Trent E. Campione [mailto:[email protected]]Sent: Monday, June 13, 2011 11:05 AMTo: Goldstein, David M.; Sutton, Theresa A.; Krow, Catherine Morris

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Cc: Chatterjee, Neel; Ong, Andrew S.; [email protected]; [email protected]: Rambus/NVIDIA - meet and confer re case management statement

Please let us know when you are available to meet and confer regarding the case management statement that isdue this Friday. We are generally available to discuss and propose doing so no later than tomorrow.

Best regards,

Trent

Trent E. CampioneMcKool Smith300 W. 6th Street, Suite 1700Austin, Texas 78701(512) [email protected]

NOTICE OF CONFIDENTIALITY:

The information contained in and transmitted with this e-mail is SUBJECT TO THE ATTORNEY-CLIENTand ATTORNEY WORK PRODUCT PRIVILEGE and is CONFIDENTIAL. It is intended only for theindividual or entity designated above. You are hereby notified that any dissemination, distribution, copying, useor reliance upon the information contained in and transmitted with this e-mail by or to anyone other than theaddressee designated above by the sender is unauthorized and strictly prohibited. If you have received this e-mail in error, please notify the sender by reply immediately. Any e-mail erroneously transmitted to you shouldbe immediately destroyed.===========================================================IRS Circular 230 disclosure: To ensure compliance with requirements imposed by the IRS, we inform you thatany tax advice contained in this communication, unless expressly stated otherwise, was not intended or written

to be used, and cannot be used, for the purpose of (i) avoiding tax-related penalties under the Internal RevenueCode or (ii) promoting, marketing or recommending to another party any tax-related matter(s) addressed herein.===========================================================NOTICE TO RECIPIENT: THIS E-MAIL IS MEANT FOR ONLY THE INTENDED RECIPIENT OF THETRANSMISSION, AND MAY BE A COMMUNICATION PRIVILEGED BY LAW. IF YOU RECEIVEDTHIS E- MAIL IN ERROR, ANY REVIEW, USE, DISSEMINATION, DISTRIBUTION, OR COPYING OFTHIS E-MAIL IS STRICTLY PROHIBITED. PLEASE NOTIFY US IMMEDIATELY OF THE ERROR BYRETURN E-MAIL AND PLEASE DELETE THIS MESSAGE FROM YOUR SYSTEM.THANK YOU IN ADVANCE FOR YOUR COOPERATION.For more information about Orrick, please visit http://www.orrick.com/======================================================================================================================

IRS Circular 230 disclosure: To ensure compliance with requirements imposed by the IRS, we inform you thatany tax advice contained in this communication, unless expressly stated otherwise, was not intended or writtento be used, and cannot be used, for the purpose of (i) avoiding tax-related penalties under the Internal RevenueCode or (ii) promoting, marketing or recommending to another party any tax-related matter(s) addressed herein.===========================================================NOTICE TO RECIPIENT: THIS E-MAIL IS MEANT FOR ONLY THE INTENDED RECIPIENT OF THETRANSMISSION, AND MAY BE A COMMUNICATION PRIVILEGED BY LAW. IF YOU RECEIVEDTHIS E- MAIL IN ERROR, ANY REVIEW, USE, DISSEMINATION, DISTRIBUTION, OR COPYING OFTHIS E-MAIL IS STRICTLY PROHIBITED. PLEASE NOTIFY US IMMEDIATELY OF THE ERROR BYRETURN E-MAIL AND PLEASE DELETE THIS MESSAGE FROM YOUR SYSTEM.THANK YOU IN ADVANCE FOR YOUR COOPERATION.

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For more information about Orrick, please visit http://www.orrick.com/======================================================================================================================IRS Circular 230 disclosure: To ensure compliance with requirements imposed by the IRS, we inform you thatany tax advice contained in this communication, unless expressly stated otherwise, was not intended or writtento be used, and cannot be used, for the purpose of (i) avoiding tax-related penalties under the Internal RevenueCode or (ii) promoting, marketing or recommending to another party any tax-related matter(s) addressed herein.===========================================================

NOTICE TO RECIPIENT: THIS E-MAIL IS MEANT FOR ONLY THE INTENDED RECIPIENT OF THETRANSMISSION, AND MAY BE A COMMUNICATION PRIVILEGED BY LAW. IF YOU RECEIVEDTHIS E- MAIL IN ERROR, ANY REVIEW, USE, DISSEMINATION, DISTRIBUTION, OR COPYING OFTHIS E-MAIL IS STRICTLY PROHIBITED. PLEASE NOTIFY US IMMEDIATELY OF THE ERROR BYRETURN E-MAIL AND PLEASE DELETE THIS MESSAGE FROM YOUR SYSTEM.THANK YOU IN ADVANCE FOR YOUR COOPERATION.For more information about Orrick, please visit http://www.orrick.com/===========================================================

===========================================================IRS Circular 230 disclosure: To ensure compliance with requirements imposed by the IRS, we inform you thatany tax advice contained in this communication, unless expressly stated otherwise, was not intended or written

to be used, and cannot be used, for the purpose of (i) avoiding tax-related penalties under the Internal RevenueCode or (ii) promoting, marketing or recommending to another party any tax-related matter(s) addressed herein.===========================================================NOTICE TO RECIPIENT: THIS E-MAIL IS MEANT FOR ONLY THE INTENDED RECIPIENT OF THETRANSMISSION, AND MAY BE A COMMUNICATION PRIVILEGED BY LAW. IF YOU RECEIVEDTHIS E- MAIL IN ERROR, ANY REVIEW, USE, DISSEMINATION, DISTRIBUTION, OR COPYING OFTHIS E-MAIL IS STRICTLY PROHIBITED. PLEASE NOTIFY US IMMEDIATELY OF THE ERROR BYRETURN E-MAIL AND PLEASE DELETE THIS MESSAGE FROM YOUR SYSTEM.THANK YOU IN ADVANCE FOR YOUR COOPERATION.For more information about Orrick, please visit http://www.orrick.com/===========================================================

===========================================================IRS Circular 230 disclosure: To ensure compliance with requirementsimposed by the IRS, we inform you that any tax advice contained in thiscommunication, unless expressly stated otherwise, was not intended orwritten to be used, and cannot be used, for the purpose of (i) avoidingtax-related penalties under the Internal Revenue Code or (ii) promoting,marketing or recommending to another party any tax-related matter(s)addressed herein.===========================================================NOTICE TO RECIPIENT: THIS E-MAIL IS MEANT FOR ONLYTHE INTENDED RECIPIENT OF THE TRANSMISSION, AND

MAY BE A COMMUNICATION PRIVILEGED BY LAW. IF YOURECEIVED THIS E- MAIL IN ERROR, ANY REVIEW, USE,DISSEMINATION, DISTRIBUTION, OR COPYING OF THISE-MAIL IS STRICTLY PROHIBITED. PLEASE NOTIFY USIMMEDIATELY OF THE ERROR BY RETURN E-MAIL ANDPLEASE DELETE THIS MESSAGE FROM YOUR SYSTEM.THANK YOU IN ADVANCE FOR YOUR COOPERATION.For more information about Orrick, please visit http://www.orrick.com/===========================================================

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ATTACHMENT

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NO.C10-05437RS

ORDER GRANTING IN PART MOTIONS TO STAY

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Un

itedStatesDistrictCourt

FortheNorthernDistrictofCalifornia

*E-Filed 6/13/11*

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

SAN FRANCISCO DIVISION

RAMBUS INC.,

Plaintiff,

v.

BROADCOM CORP.,

Defendant.____________________________________/

No. C 10-05437 RS

ORDER GRANTING IN PART AND

DENYING IN PART MOTIONS TO

STAY

RAMBUS INC.,

Plaintiff,

v.

LSI CORPORATION

Defendant.

____________________________________/

No. C 10-05446 RS

RAMBUS INC.,

Plaintiff,

v.

MEDIATEK INC.,

Defendant.____________________________________/

No. C 10-05447 RS

Case3:10-cv-05437-RS Document40 Filed06/13/11 Page1 of 6Case3:08-cv-05500-SI Document42 Filed06/17/11 Page33 of 47


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RAMBUS INC.,

Plaintiff,

v.

STMICROELECTRONICS N.V.;STMICROELECTRONICS INC.,

Defendants.____________________________________/

No. C 10-05449 RS

I. INTRODUCTION

On December 1, 2010, plaintiff Rambus filed separate patent infringement actions against

defendants Broadcom, LSI Corporation, Mediatek, and STMicroelectronics. In these suits, Rambus

alleges that defendants respective products infringe various patents flowing from different patent

groups: the Farmwald/Horowitz (FH), Barth, and Dally patents. On the same day that Rambus filed

these infringement actions, it also instituted proceedings at the International Trade Commission

(ITC) involving all three of the Barth patents and three out of the six Dally patents asserted in the

district court cases.1

Under 28 U.S.C. section 1659, on timely request by a respondent in an ITC proceeding, the

district court must stay a civil action with respect to any claim that involves the same issues

involved in the proceeding before the Commission. Thus, all defendants filed motions requesting

mandatory stays of litigation involving the Barth patents and the overlapping Dally patents and

discretionary stays of the remainder of their cases. Rambus does not contest staying litigation with

respect to the Barth patents and all of the Dally patents. Thus, defendants motions to stay litigation

of those patents are granted.2

The contested issue is whether the Court should also stay litigation of

1Rambus asserts the following FH patents in this action: U.S. Patent Nos. 6,034,918;

6,038,195; 6,260,097; 6,304,937; 6,426,916; 6,564,281; 6,584,037; 6,715,020; 6,751,696; and7,209,997. The Barth patents involved in both this case and the ITC proceeding are U.S. PatentNos. 6,470,405; 6,591,353; and 7,287,109. The six Dally patents at issue in this suit are U.S. PatentNos. 6,542,555; 7,099,404; 7,580,474; 7,602,857; 7,602,858; and 7,715,494. The latter three Dallypatents are also part of the ITC suit.2 In a fifth related case, No. C 10-5448 RS, Rambus asserts only the Dally patents againstNvidia Corporation. The Court previously granted Nvidias motion to stay its suit until a finaldetermination in the ITC proceeding. In the sixth case filed concurrently with these suits, No. C 10-5445 RS, Rambus and Freescale Semiconductor, Inc. reached a settlement.



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the FH patents until the end of the ITC action and/or until reexamination proceedings of them at the

U.S. Patent & Trademark Office (PTO) are completed.3 Based on the parties submissions and oral

argument, and for the reasons stated below, defendants motions to stay litigation of the FH patents

are denied.

II. LEGAL STANDARD

A district court may, in its discretion, stay proceedings as part of its inherent power to

control the disposition of the causes on its docket with economy of time and effort for itself, for

counsel, and for litigants. Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). In determining whether

to grant a stay, the court weighs the following factors: (1) possible damage caused by the imposition

of a stay; (2) hardship or inequity that would result from going forward; and (3) the orderly course

of justice measured in terms of the simplifying or complicating of issues, proof, and questions of

law which could be expected to result from a stay. Lockyer v. Mirant Corp., 398 F.3d 1098, 1110

(9th Cir. 2005) (quoting CMAX, Inc. v. Hall, 300 F.2d 265, 268 (9th Cir. 1962)). The party seeking

a stay bears the burden of demonstrating its necessity. See Clinton v. Jones, 520 U.S. 681, 708

(1997).

III. DISCUSSION

Pursuant to 28 U.S.C. section 1659, proceedings with respect to the Barth and Dally patents

that are at issue in the ITC suit shall be stayed until the determination of the Commission becomes

final. Defendants argue that Rambus will not suffer any harm from a similar stay of the FH patents

until the end of the ITC action. As all of the FH patents have expired or will expire shortly, Rambus

is unable to seek injunctive relief in this suit.4 Thus, according to defendants, a stay would not

3 Defendants also sought a stay until resolution of two appeals then pending before the FederalCircuit involving some of the same FH patents at issue here. See Hynix Semiconductor, Inc. v.Rambus Inc., 591 F. Supp. 2d 1038 (N.D. Cal. 2006);Micron Technology, Inc. v. Rambus Inc., 255F.R.D. 135 (D. Del. 2009). On May 13, 2011, the Federal Circuit issued its decisions in thoseappeals. See Hynix Semiconductor, Inc. v. Rambus Inc., 2011 U.S. App. LEXIS 9728 (Fed. Cir.May 13, 2011);Micron Tech., Inc. v. Rambus Inc., 2011 U.S. App. LEXIS 9730 (Fed. Cir. May 13,2011).4 Although these cases are related, they remain four separate suits. For simplicity, thesedistrict court cases are referred to collectively in the singular as this suit. Furthermore, eachdefendant separately filed its own motion to dismiss. The Court reviewed all pleadings submittedby the parties. As defendants arguments largely overlap, they are addressed altogether within thisOrder.



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prevent Rambus from obtaining all of the relief to which it ultimately may be entitled in the form of

damages. For its part, Rambus raises the potential loss of evidence, including that based on

witnesses memories or in the control of third parties, were the case to be delayed. It also claims

that defendants failure to pay royalties for past infringement harms its goodwill and reputation.

While Rambus claims of prejudice are fairly general, there likely is at least some harm

associated with a stay. Even though defendants claim that the technology overlaps significantly

between the Barth and FH patent families, the latter patents are not at issue in the ITC case. Thus,

unlike a stay in light of an ITC proceeding involving the same patent family, Rambus will not have

an opportunity through parallel proceedings to develop any aspects of its case specific to the FH

patents. As defendants themselves mention the depositions of employees when discussing their own

harm, Rambus assertion that it seeks timely access to witnesses is not unreasonable. Ultimately,

even if the potential harm to Rambus is minimal, defendants still must demonstrate their own

hardship in the absence of a stay and that a stay would benefit the resolution of issues in this case.

With respect to hardship in the absence of a stay, defendants argue that they will be harmed

by being forced to engage in duplicative litigation. As an initial matter, with or without a stay, there

are two proceedings pending. Defendants potentially must engage in discovery, produce employees

for depositions, expend effort on claim construction and expert reports, and incur litigation expenses

for this district court case either now or after the ITC action. In other words, duplication based on

litigation of the FH patents and the ITC proceedings on the Barth and Dally patents in and of itself is

not a hardship that weighs in favor of granting a stay. While specific hardship might arise should

these actions proceed simultaneously, such as particular strain on expenses or employees,

defendants have raised such harm only generally. For instance, they object to subjecting their

employees to duplicative depositions, but have not established that it would be less disruptive to

expose employees to two depositions based on the likely schedule in light of a stay versus the

absence of one.

Defendants do not just argue harm from participating in parallel proceedings generally. In

their view, the similarities in technology involved in the FH and Barth patents will result in

substantial wasted effort in the absence of a stay. Each group of patents is directed to memory



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controllers for semiconductor devices and defendants same products are accused of infringing both.

Defendants, however, likely overestimate the potential for the ITC action to narrow issues with

respect to the FH patents. Foremost, decisions of the ITC are not binding on this court. See Texas

Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996). Even if

they were, the fact that the ITC action involves different patents means there would be no reason to

wait for a final decision, including any potential appeal to the Federal Circuit, to move forward on

the FH litigation. In short, there is nothing determinative about the Commissions final decision on

the Barth patents with respect to any issue in this suit. To the extent that the parties, based on

overlapping technology, develop relevant tutorials, claim constructions, or prior art arguments, they

can realize those potential efficiencies in this case without waiting until the end of the ITC action.

Finally, even if the Barth and FH patents involve substantial overlap in technology, many issues that

will be highly contested as to each will be patent-family specific. For instance, claim construction

and invalidity arguments likely will depend heavily on the particular details of the patents

respective specifications.

Further with respect to defendants potential hardship, they also contend that being forced to

litigate the district court case itself on two tracks imposes significant harm. In their view, moving

forward on the FH patents now, while litigation specific to the Barth and Dally patents is stayed,

will multiply discovery obligations, employee disruptions, and expenses within this suit. While the

stay imposed on the overlapping ITC patents is mandatory, it is mandatory in the sense that the

Court must grant it on timely request. Defendants, as they are entitled to do, requested the stay.

Although there may be some burden on defendants to move forward with the FH patents, this

potential hardship does not weigh heavily in favor of granting a stay.

The last factor to consider as to a discretionary stay is whether it will benefit the parties and

the Court in terms of the orderly course of justice. Defendants suggest that litigating the FH

patents on different timing from the Barth and Dally patents will be highly duplicative, thus

straining the parties and the Court. As previously discussed, the potential for the ITC action to

generate efficiencies in this case does not hinge on waiting until the final decision of the

Commissioner. Moreover, to the extent that the different patent families involve overlapping



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NO.C10-05437RS


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Un



technology and issues, progress made with respect to the FH patents in this case may also allow

efficiencies to be gained once the stay of the Barth and Dally patents is lifted. In short, a stay of

litigation involving the FH patents until the end of the ITC proceeding involving different patent

families is not warranted.

Finally, defendants also seek a stay based on reexaminations of the FH patents pending at

the PTO. They suggest that waiting for the final outcomes has the potential to narrow issues in this

suit. According to Rambus, the ten FH patents at issue here have been the subject of seventeen

different reexamination proceedings initiated between 2007 and 2010. Of these seventeen

challenges, four reexaminations are still pending before the examiners; five have been completed

with all claims confirmed and have no appeal pending; six appeals are pending where all claims

were confirmed by the examiner; and two appeals are pending where some claims were rejected by

the examiner. Overall, nine out of ten of the FH patents are still involved in some stage of

reexamination, but only two patents have had any claims rejected to date. Given the various stages

of these multiple reexaminations, the sheer number of them, and the relatively few claims cancelled

to date, staying this suit until all possible reexamination proceedings are exhausted also is not

justified.

IV. CONCLUSION

Defendants motions to stay proceedings in this case with respect to the Barth and Dally

patents are granted. The motions to stay litigation of the FH patents are denied.

IT IS SO ORDERED.

Dated: 6/13/11

RICHARD SEEBORGUNITED STATES DISTRICT JUDGE



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EXHIBIT B



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NVIDIAS CASE MANAGEMENT STATEMENTCASE NO. C-08-03343 SI

OHS WEST :261178151.8

I. NEEL CHATTERJEE (STATE BAR NO. 173985)[email protected] A. SUTTON (STATE BAR NO. 211857)[email protected], HERRINGTON & SUTCLIFFE LLP1000 Marsh RoadMenlo Park, CA 94025Telephone: 650-614-7400Facsimile: 650-614-7401

DAVID M. GOLDSTEIN (STATE BAR NO. 142334)[email protected] Howard StreetSan Francisco, CA 94105Telephone: 415-773-5700Facsimile: 415-773-5759

Attorneys for Defendant and Cross-ComplainantNVIDIA CORPORATION



SAN FRANCISCO DIVIDSION

RAMBUS INC.,

Plaintiff,

v.

NVIDIA CORPORATION,

Defendant.

Case No. 3:10-cv-03343-SIConsolidated with C-08-05500 SI

NVIDIA CORPORATIONSSUPPLEMENTAL CASEMANAGEMENT CONFERENCESTATEMENT

Date: June 24, 2011Time: 3:00 P.M.Court: Dept. 10, 19

thFloor

Judge: Honorable Susan Illston

NVIDIA CORPORATION,

Cross-Complainant,

v.

RAMBUS INC.,

Cross-Defendant.



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OHS WEST :261178151.8

I. INTRODUCTION

NVIDIA submits this Case Management Conference Statement in accordance with Civil

L.R. 16-10(c) and (d). NVIDIA believes resolution of four case management issues will be

helpful:

1. NVIDIA requests the Court to phase this case and limit discovery and other activities at

this time to the dispositive issues of bad faith and prejudice, sanctions and remedies in

light of the recently issued rulings from the Federal Circuit in Micron Tech., Inc. v.

Rambus Inc., No. 2009-1263 (Fed. Cir. May 13, 2011) (attached hereto as Ex. 1) and

Hynix Semiconductor Inc. v. Rambus Inc., No. 2009-1299 (Fed. Cir. May 13, 2011)

(attached hereto as Ex. 2). In these decisions, the Federal Circuit affirmed the Micron

Courts ruling that Rambus had engaged in spoliation while litigation was foreseeable and

reversed the Hynix Courts ruling that Rambus had not engaged in spoliation. The Federal

Circuit also remanded for further findings on the issues of bad faith and prejudice and for

further explanation on whether dismissal is the appropriate sanction for Rambus conduct.

The ITC has found that Rambus spoliation was in bad faith. Certain Semiconductor

Chips Having Synchronous Dynamic Random Access Memory Controllers and Prods.

Containing Same (Certain Semiconductor Chips), 337-TA-661 (the ITC proceeding),

Initial Determination (Jan. 22, 210) at 112-114 (attached hereto as Ex. 3). If this Court

reaches the same conclusion as the ITC, NVIDIA believes Rambus will be foreclosed

from asserting the patents currently at issue in this case. NVIDIA requests that the Court

focus discovery on the remaining issues related to unclean hands and sanctions, given the

dispositive nature of this issue.

2. To the extent that this Court decides to proceed on all issues, NVIDIA requests that this

Court limit the number of claims in dispute in this case. Rambus has currently asserted 87

claims from 10 patents. The patents come from two families and the number of claims

asserted appears to be presented merely for harassment to needlessly proliferate the

proceedings. This Court has authority to limit the claims in dispute under Katz Interactive

Call Processing Patent Litig. v. Am. Airlines, Inc., 2011 U.S. App. LEXIS 3212, *17-18



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OHS WEST :261178151.8

(Fed. Cir. Feb. 18, 2011). In the Rambus cases before Judge Whyte, the Court limited the

claims in dispute because of Rambus effort to needlessly proliferate the proceedings.

3. NVIDIA would like the Courts guidance on how to coordinate with the co-pending

actions before Judge Seeborg that are related to many of the same patents at issue in this

case against numerous other defendants. All other cases (except for the earlier cases

before Judge Whyte) have been related and are proceeding before Judge Seeborg.

4. NVIDIA requests the Court provide guidance to NVIDIA in providing an Answer to

Rambus Complaint in which part of the litigation has been stayed.

Given NVIDIAs case management issues, NVIDIA believes that Rambus request to set

a case and trial schedule is premature. While NVIDIA disagrees with statements contained in

Rambus submission, it does not wish to improperly address the merits of Rambus arguments in

its case management statement and believes those issues are better reserved for substantive

motions. Instead, NVIDIA submits the following statement to update the Court on the status of

discovery and on related proceedings that have an impact on this case, as well as to explain its

position on the issues set forth above.

II. STATUS OF DISTRICT COURT PROCEEDINGS

A. Phase I Discovery is Ongoing and Is Not Complete.

NVIDIA continues to assess the extent to which Rambus has complied with the relevant

Orders for Phase I Discovery. On January 24, 2011, Special Master Infante ordered both parties

to complete document productions from existing cases by February 25, 2011. (Dkt. No. 191.)

Pursuant to this Order, Rambus deemed produced certain materials from its relevant cases but

withheld from its production documents previously produced pursuant to privilege piercing

orders. Following the Federal Circuits affirmations of the Micron and Hynix Courts application

of the crime-fraud exception to pierce Rambus attorney-client privilege,1

Rambus stipulated that

Order No. 15, Order Granting in Part NVIDIAs Motion to Compel Production of Materials

Subject to Privilege Piercing Orders, from the ITC proceeding is also controlling in this action.

1See Micron Tech., Inc. v. Rambus Inc., No. 2009-1263 (Fed. Cir. May 13, 2011) (the Micron

action) and Hynix Semiconductor Inc. v. Rambus Inc., No. 2009-1299 (Fed. Cir. May 13, 2011)

(the Hynix action).



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OHS WEST :261178151.8

(See Dkt. No. 210.) On May 24, 2011, Special Master Infante issued an order that all documents

previously produced pursuant to Order No. 15 from the ITC Action be produced to NVIDIA in

this action by May 30, 2011. (Dkt. No. 210.) Accordingly, Rambus supplemented its Phase I

production and deemed certain materials from its privilege logs produced.

NVIDIA believes that Rambus may be improperly withholding previously-produced

materials based on claims of attorney-client privilege. To this date, Rambus has not provided to

NVIDIA a single, comprehensive privilege log that lists those materials Rambus is currently

withholding from its Phase 1 production based on privilege. Accordingly, NVIDIA currently

does not know whether Rambus has complied with the Courts and Special Masters Orders

related to Phase 1 discovery. NVIDIA is currently working to make this issue ripe for resolution

with Judge Infante.

B. Rambus Has Provided Insufficient Infringement Contentions.

On May 12, 2011, Rambus served NVIDIA its disclosure of asserted claims and

infringement contentions. In its infringement contentions, Rambus asserted 87 claims from its

Barth II and Farmwald patents to have been directly infringed by NVIDIA. Rambus also

alleges that NVIDIA has indirectly infringed (through contributory and/or induced infringement)

the same 87 patent claims.

NVIDIA is currently assessing the sufficiency of Rambus disclosure and infringement

contentions and believes the contentions are insufficient. Absent further Court orders, NVIDIAs

invalidity contentions are due on August 12, 2011.

III. NVIDIAS REPORT ON OTHER PROCEEDINGS.

A. The ITC Proceeding, and the Associated Mandatory Stay, Continues.

This Court issued a mandatory stay of the Barth I and Ware II patents pursuant to

28 U.S.C. 1659. The ITC action is currently on appeal. Reply briefs were recently filed on

June 16, 2011. Oral argument has not been set. The mandatory stay remains in place, at least

until all judicial review of the ITC proceeding, including Federal Circuit review, is complete. In

re Princo, 478 F.3d 1345 (Fed. Cir. 2007).



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OHS WEST :261178151.8

B. New District Court Cases.

In several District Court Actions, Rambus has asserted the Barth I patents, the

Farmwald patents, and a new set of patents, the Dally patents, against several companies:

Rambus Inc. v. Broadcom Corp., No. C 10-5437, Rambus Inc. v. LSI Corp., No. C 10-5446,

Rambus Inc. v. Mediatek Inc. No. C 10-5447, and Rambus Inc. v. STMicroelectronics, No. C 10-

5449.2

In addition, Rambus has asserted only the Dally patents against NVIDIA in a new case,

Rambus, Inc. v. NVIDIA Corp., C 10-5448, (N.D. Cal. 2010). On February 23, 2011, Judge

Richard Seeborg in the Northern District of California related all these cases and all cases were

reassigned to Judge Seeborgs Court. (See Feb. 23, 2011 Order, attached hereto as Ex. 4).

On June 13, 2011, Judge Seeborg granted a mandatory stay of litigation with respect to the

Barth I and Dally patents in the four related cases as patents in these families are also

involved in parallel ITC proceedings instituted by Rambus.3

However, Judge Seeborg declined to

stay litigation of the Farmwald patents for the four related cases. (See June 13, 2011 Order,

attached hereto as Ex. 5). As a result Judge Seeborg and this Court will be proceeding on

substantively similar issues with respect to the Farmwald patents.

IV. NVIDIAS PROPOSAL TO FOCUS DISCOVERY AND OTHER ACTIVITIES ORLIMIT THE NUMBER OF INFRINGMENT CLAIMS

A. NVIDIA Requests the Court Limit Discovery and Other Activities to BadFaith and Remedy.

NVIDIA requests the Court to phase the case and limit discovery and other activities at

this time to the issue of bad faith and remedy with respect to Rambus spoliation. The Federal

Circuit affirmed that Rambus had engaged in the intentional destruction of evidence, and

dismissal of this action may be a proper sanction after application of the proper standard for

determination of bad faith. The underlying Court found bad faith, but the Federal Circuit

remanded for greater detail in fact-finding. The ITC consistently found bad faith by Rambus.

Certain Semiconductor Chips, Initial Determination at 112-114. Because this case may be

2In another related case filed concurrently with these suits, Rambus Inc. v. Freescale

Semiconductor, Inc., No. C 10-5445, the parties reached a settlement.3

The Court had previously granted NVIDIAs motion to stay its suit until a final determination in

the ITC proceeding.



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OHS WEST :261178151.8

resolved following this Courts determination of bad faith and remedy, NVIDIA proposes that

discovery and other activities be limited to these principal issues for the next phase.

B. NVIDIA Requests the Court to Limit the Number of Infringement ClaimsAsserted by Rambus.

If the Court does not limit this phase to bad faith and remedy in this case, NVIDIA

proposes that Rambus be asked to limit the number of asserted claims in its infringement

contentions to 25. The Court has broad discretion to administer the proceeding and may limit the

number of patent claims it considers in an infringement case in order to manage the cases before

it. Katz Interactive Call Processing Patent Litig. v. Am. Airlines, Inc. (In re Katz Interactive Call

Processing Patent Litig.), 2011 U.S. App. LEXIS 3212, *17-18 (Fed. Cir. Feb. 18, 2011). In

Katz, the Federal Circuit affirmed the Courts order limiting the total number of claims to be

asserted in a case involving 14 patents to 40 per defendant group, with a total of 64 claims for all

defendants. The Court also permitted the plaintiff to add new non-duplicative claims. Id. at *7.

In this case, Rambus has asserted 87 claims from its 10 patents to have been directly

infringed by NVIDIA. Rambus has also asserted the same 87 claims to have been indirectly

infringed by NVIDIA. The asserted patents appear to contain many duplicative claims that may

not present unique issues of infringement or invalidity. See Katz, 2011 U.S. APP. LEXIS 3212 at

*17-18 (noting that Katz did not seek to demonstrate that some of its unselected claims presented

unique issues). Requiring NVIDIA to prepare invalidity contentions for a large number of

duplicative claims is unduly burdensome. Accordingly, NVIDIA requests that Rambus be limited

to a total number of 25 non-duplicative claims.4

V. RAMBUSS PROPOSED SCHEDULE SHOULD BE REJECTED

Rambus seeks to imp

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