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Pierre J. Hubert (pro hac vice) Craig N. Tolliver (pro hac vice) Trent E. Campione S.B. No. 200273 Ramzi R. Khazen (pro hac vice) McKOOL SMITH HENNIGAN, A Professional Corporation 300 W. 6th Street, Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Facsimile: (512) 692-8744 Email: phubert@mckoolsmith.com; ctolliver@mckoolsmith.com tcampione@mckoolsmith.com; rkhazen@mckoolsmith.com Attorneys for Plaintiff RAMBUS INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION RAMBUS INC., Plaintiff, v. STMICROELECTRONICS N.V.; STMICROELECTRONICS INC., Defendant. ) ) ) ) ) ) ) ) ) ) ) ) CASE NO. 3:10CV5449 RS RAMBUSS RESPONSE TO DEFENDANTS STMICROELECTRONICS N.V. AND STMICROELECTRONICS, INC.S NOTICE OF MOTION AND MOTION FOR LEAVE TO SUPPLEMENT PRELIMINARY INVALIDITY CONTENTIONS HEARING REQUESTED Date: May 30, 2013 Time: 1:30 p.m. Courtroom: 3 Judge: Honorable Richard Seeborg

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Rambuss Response To Defendants STMicroelectronics N.V. And STMicroelectronics, Inc.s Notice Of Motion And Motion For Leave To Supplement Preliminary Invalidity Contentions Case No. 3:10cv5449 RS
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I.

INTRODUCTION Defendants STMicroelectronics, Inc. and STMicroelectronics N.V. (ST) could have

asserted NeXT as 102(g) art in March of 2012 or at any time over the past year, but waited until the day before discovery closed to file its Motion. Whether due to an extreme lack of diligence or calculated delay, ST cannot meet its heavy burden of proving diligence and justifying its behavior. The reality is that ST had all of the information it needed to include its proposed theory in its original contentions more than a year ago, in March, 2012, when it asserted NeXT system specifications as prior art. Not only did LSI the defendant in the only related case pending at that time actually assert the 102(g) theory that ST proposes now back in its original contentions, the contention was based on the same NeXT specifications ST knew and used in its own original March 2012 contentions. ST has no excuse for withholding its theory for more than a year until discovery came to a close. ST made a deliberate choice not to join LSI in asserting 102(g) prior invention and maintained that choice for the entire year that followed. As a result, Rambus misallocated its resources over the course of discovery to the voluminous sets of invalidity theories ST had actually advanced in its contentions. ST should not be rewarded for its delay and misdirection. Even setting aside STs initial decision not to disclose its theory in March 2012, it is STs burden to prove that it could not have pursued or advanced its theory at any time in the 13 months that followed. ST provides no credible explanations. Contrary to STs suggestions, the witnesses that supposedly provided ST with new information, Bruce Webster and Kevin Grundy, did not surface recently. They are the named author and technical supervisor on the NeXT documents (respectively) ST had previously asserted, so ST could have found them at any time. Remarkably, ST did not even need to make this small effort. LSI actually contacted Messrs. Webster and Grundy in 2012 and referred them to ST. In fact, papers ST filed with the Court in January 2013 reveal that ST not only knew of these witnesses, but also knew all of the information that it now claims to have needed, but still withheld its contentions.

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Rambuss Response To Defendants STMicroelectronics N.V. And STMicroelectronics, Inc.s Notice Of Motion And Motion For Leave To Supplement Preliminary Invalidity Contentions Case No. 3:10cv5449 RS
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In addition, rather than to attempt to ameliorate the prejudice it has caused, ST has used its own delay at every turn to gain a further unfair advantage and make what little discovery Rambus has been afforded as onerous as possible (see, e.g., II.1, II.3 and FN. 1, below).1 And now that discovery has come to a close, ST is attempting to open the floodgates of information on the NeXTBus chip from the witnesses to which it cites, both of whom are represented by STs own law firm in this case. STs year-long delay and subsequent attempts to leverage that delay are the quintessential abuses that timely invalidity contentions are designed to prevent. Rambus respectfully submits that STs Motion should be denied accordingly. II. ARGUMENT STs Motion is unprecedented. ST is unable to cite a single case where invalidity contentions were allowed to be amended this late in the case even where the movant was able to prove diligence, which is not the case here. ST proposes a four-factor test for showing good cause based on Yodlee, Inc. v. CashEdge, Inc., 2007 WL 1454259, *2-3 (N.D. Cal. May 17, 2007). In fact, Yodlee proves only how egregious STs actions have been in contrast to a diligent amendment, as exhibited in that case. As an initial matter, the Yodlee case involved: (i) a completely new prior art reference that was (ii) recently found after continuous and diligent searching (iii) in a notoriously difficult subject area to search for prior art, and (iv) disclosed immediately when found and (v) proposed months before the discovery cutoff. Yodlee, 2007 WL 1454259, at *2-3 (noting, among other factors, that prejudice is minimized because there is ample time left to conduct discovery.). None of that is true here. Further, the Yodlee court notes that each of the four considerations ST advances weighs heavily in favor of the movant. ST, on the other hand, does not address two out of the four
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For example, rather than make deposing the new witnesses as efficient as possible, ST forced Rambus to track down and subpoena Kevin Grundy at his residence. Rambus asked ST repeatedly whether Mr. Grundy was represented and if ST could accept service on his behalf. See, e.g., Ex. A to the Declaration of Ramzi Khazen in Support of Rambuss Response to STs Motion for Leave to Supplement Preliminary Invalidity Contentions (hereinafter Khazen Decl.). Knowing that time was running out, ST refused to answer. ST also refused to state where Mr. Grundy could be located and actually failed to provide this information in the initial disclosures even though it was known to STs lawyers. Rambus came to find out after tracking down and serving Mr. Grundy at his residence that he had been represented by STs lawyers, and none of this additional effort was necessary. -3Case No. 3:10cv5447 RS

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factors and misrepresents the record on the remaining two. Below, Rambus responds in turn to each of the four factors ST advances as the test for good cause, and respectfully submits that each of STs factors supports Rambus and each independently requires that STs Motion be denied. 1. ST Has Failed to Meet its Burden of Demonstrating the Discovery of New, Material Information or Showing that It Was Diligent In order to prevail, ST must show both that it recently encountered new material information necessary to disclosing its proposed theory and that it was diligent in pursuing its theory throughout the discovery process. See, e.g., West v. Jewelry Innovations, Inc., No. C 071812, 2008 U.S. Dist. LEXIS 84928, *6-*10 (N.D. Cal. Oct. 8 2008) (holding that the burden of proving diligence rests with the moving party and that the moving party must show both that it was diligent in its search for prior art, and that it acted promptly upon discovery of alleged new prior art evidence to disclose its theory). ST was not diligent in either pursuing or disclosing its theory. First, the premise of STs Motion that ST recently discovered that a physical NeXTBus system and/or NeXTBus Interface Chip (NBIC) were (allegedly) publicly available allowing it to assert prior invention under 102(g) is false. ST relies on evidence that is neither new nor material. ST relies on a mere (purported) realization that the NBIC, the subject of the NextBus Interface Chip Specification that ST asserted as prior art over a year ago in March, 2012, is potential prior art. Khazen Decl., Exs. B-D. Accordingly, the record on its face shows that there is no reason that ST could not have made this allegation in its original contentions or at any time the following year. Even so, should there remain any doubt, that doubt is extinguished by the fact that LSI, a defendant in a related case, actually did assert the 102(g) theory that ST proposes now in its own March, 2012 invalidity contentions based on these same specifications that ST had and used at that time. Compare Khazen Decl., Ex. E (LSI PICs Ex. A3-2 (102(g) references listing NeXT)) with Khazen Decl., Ex. B (ST PICs cover pleading, Ex. A-1 to ST PICs; and, particularly Ex. A-2 to ST PICs (102(g) references omitting NeXT)). -4Case No. 3:10cv5447 RS
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Even assuming, arguendo, that ST needed the additional information it claims in order to assert its theory, ST still failed to show diligence once it received this information, which is independently fatal to its Motion. For example, as early as January, 2013, ST stated in a declaration filed with this Court, To great fanfare, NeXT released to the public its first workstation in or around October 1988. Dkt. 134-3 (Exhibit A to STs Motion to Amend Answer and Counterclaims) at 16-17 (further stating, On information and belief, the NeXT Systems and Products utilized components such as the Motorola MC68030 microprocessor, NeXT NextBus, and NeXT NextBus Interface Chip.). This is almost two years before the application to which patents in suit claim priority was filed. The idea that ST still lacked a basis for asserting the NBIC or NeXTBus generally as 102(g) art while at the same time claiming aggressively that the NeXTBus system was released to the public in 1988 is not credible. Still, ST gave no hint that it would pursue any prior invention theory not in January, not in February, and not in March or most of April. The purported source of the information is not new either. ST claims that its new theory was inspired by discussions with Bruce Webster and/or Kevin Grundy. But these witnesses are not newly-discovered and neither is the information that they are alleged to have provided. Kevin Grundy was known to ST over a year ago: He is the named technical supervisor on the NeXTBus and NeXTBus chip specifications discussed above. Khazen Decl., Ex. C, at 2; Khazen Decl., Ex. D, at 3. ST could have contacted him at any time, but ST never even needed to make this effort. Instead, LSI, actually contacted the two witnesses in 2012 and referred them to ST. Khazen Decl., Ex. F (Webster Deposition) at 9-10; Khazen Decl., Ex. G (Grundy Deposition, rough) at 8, 14- 15.2 In an attempt to add an inequitable conduct charge in January, 2013, ST cited Mr. Websters book and its 1989 copyright date in its pleadings with the Court and also cited an alleged meeting between NeXT and a Rambus inventor, later revealed to be based on

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When Rambus asked about Websters and Grundys communications with LSI back in 2012, ST blocked the inquiries as privileged, and advised the witnesses not to produce or discuss the substance of communications with LSI. See, e.g., Khazen Decl., Ex. F (Webster Deposition) at 10-13. Accordingly, ST never revealed in its Motion or through discovery precisely when LSI referred the witnesses. -5Case No. 3:10cv5447 RS

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Mr. Grundys personal account and handwritten notes. Dkt. 134-3 at 16-17. It is inconceivable that ST would not have been informed or at least asked one or both of these individuals about the release of the NBIC by at least January, 2013, if not mid-2012. Though not required for Rambus to prevail, STs delay appears to have been deliberate. As mentioned, after LSI referred the witnesses to ST, and ST itself relied on them (later including Mr. Grundys handwritten notes) to support its inequitable conduct motion. See, e.g., Dkt. 134-3 at 17. ST then waited more than three months, until April 1, just to add these witnesses to its initial disclosures. See Khazen Decl., Ex. H. Even then, ST declined to provide their contact information as known and required, or, alternatively, to accept service in the case of Mr. Grundy even though STs lawyers represented him (see, Khazen Decl., Ex. H, at 6; FN 1, above). In addition to all of this, ST then waited yet another month both until discovery ended and after Mr. Websters deposition on April 23 before moving to amend its invalidity contentions. 2. The New Information Cited by ST Was Not Difficult to Obtain ST does not address the second factor under its own statement of the law: the difficulty in obtaining the new information. As mentioned previously, Mr. Grundy is the technical supervisor named on the NeXT specifications alleged to be prior art in March 2012. One can find his home address via run-of-the-mill Internet searching (as Rambus did, see FN. 1, supra). Mr. Webster is even easier to find he and his litigation consulting company turn up as the first three hits on a Google search of just his name. In any event, LSI did the work and referred ST to the witnesses. 3. STs Actions Are Motivated By Gamesmanship ST also does not address its own third factor: gamesmanship. Rambus spent a year concentrating on other art set forth in STs voluminous invalidity contentions, unaware that it should seek information outside the four corners of the two written NeXT references that ST presented in its contentions. Now, after discovery has closed, the floodgates have been opened based on STs close relationship with the witnesses (e.g., both witnesses are represented by STs attorneys and have had met with them independently). See Khazen Decl., Exs. F and G.

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ST has already misused the short discovery timeline to its advantage. For another example, during Mr. Websters deposition, Rambus asked Mr. Webster if he had read the subpoena and produced the requested documents having to do with NeXT (his disclosed area of relevant knowledge). Khazen Decl., Ex. F (Webster deposition) at 17-21. Mr. Webster said that instead of reading it thoroughly, he was told to rely on STs lawyers to tell him what documents he should look for. Id. He testified that STs lawyers characterized the documents that he should produce. In response, he explained to STs lawyers the inventory of the NeXT-related

documents that he had available. Id. Knowing that the end of discovery was imminent, STs lawyers selected the ones that they wanted him to bring and told him to leave the rest of his NeXT documents at home. See, e.g. Id., at 18-21 (testimony that Webster had NeXT technical manuals, back issues of NeXT step magazine, NeXT marketing materials, and more, and made an offer [to STs lawyers] to drag everything down here [to the deposition] and was advised just to bring [his] notebook.). Given the timing of the deposition, and the fact that Rambus had committed its resources elsewhere during the prior year, Rambus has little recourse.3 4. Rambus Has Been Prejudiced and STs Recent Behavior Has Magnified the Prejudice ST claims there is no prejudice because the two witnesses it chose have been or will be deposed. ST neglects all of the factors discussed above and others, such as: the discovery that could have been pursued, other potential witnesses Rambus could have found. the rush of new information immediately prior to expert reports, the inability to properly prepare Rambus witnesses, the misallocated resources, the necessary follow-up discovery, the withheld discovery that there is no opportunity to investigate, and many others.
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ST did something similar and potentially more harmful with Mr. Grundy. Last year, Mr. Grundy summarized and volunteered to turn over the NeXT-related portions of his engineering notebook to LSI, but, unbeknownst to Rambus, he was told by LSI to give them only entries that LSI wanted and to omit the other relevant, NeXT-related portions that he had highlighted. Though requested in Rambuss subpoena, STs law firm, which represented Mr. Grundy in response to the subpoena, did not advise him to remedy this and produce the remaining entries; and as result, he did not. On the day of his deposition, Rambus was allowed to review the entry summary only, and found that the omitted entries which to date, Rambus has never been allowed to see are likely to cast further doubt on STs claims of prior invention, including the veracity of the new information ST asserts here. Khazen Decl., Ex. G (Grundy Deposition, Rough) at 168-169; 239-243. -7Case No. 3:10cv5447 RS

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Moreover, striking at the heart of this case, if STs Motion is granted, ST may present Mr. Grundy to the jury and portray him in a false light as a prior inventor to Rambuss inventions under 102(g). Rambus will have its hands tied in terms of combating this misinformation while having been denied its own investigation. 5. ST Cannot Whitewash Its Acts Because Its Own Discovery Abuses Resulted in a Limited Extension to the Discovery Period ST seems to imply that no matter how egregious its behavior, it should be allowed to amend the contentions because, after the fact and for unrelated reasons, the Court extended Rambuss opportunity to take discovery. The extension on which ST relies exists only because ST abused the discovery process. See Order Adopting Report and Recommendations, Dkt. # 164 (noting that the special master recommended extending the discovery cutoff because STMicro has neglected its discovery obligations and ignored his discovery orders in a number of respects). STs attempt to use its own bad behavior to justify its untimely proposed

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amendment should not be permitted. Moreover, STs reliance on the short discovery extension is an implicit acknowledgement that a motion to amend invalidity contentions filed in the final few days of discovery should not be granted. Indeed, ST is unable to cite a single case where such a motion was granted.4 As a practical matter, the limited extension does nothing to cure the prejudice to Rambus. The depositions have already proceeded, not because ST has made it easy, but because Rambus pursued them immediately and aggressively when Rambus saw that the initial disclosures had been amended to add the witnesses on April 1, with less than a month of discovery left. Indeed, because ST waited another month to file its Motion, Rambus took the Webster deposition before it knew of STs proposed amendment and did not know to explore a prior invention theory. This also does nothing address the problem of follow up discovery or the resources Rambus could
4

Tellingly, the case that ST relies on is Oracle America, Inc. v. Google, Inc., 2011 WL 3443835 (N.D. Cal. Aug. 8, 2011), where the motion to amend was denied. ST relies on the faulty logic that because the Court in Oracle denied a motion to amend where discovery had ended, the Court here should grant STs motion because a limited extension was granted. ST should not get a free pass to abuse validity-related discovery because it happened to have also withheld infringement-related discovery. -8Case No. 3:10cv5447 RS

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have devoted to this theory in lieu of pursuing other matters over the past year. In contrast, denying STs motion would not only be fair and entirely consistent with the local rules, but would cause little prejudice to ST given that the originally-disclosed NeXTBus and NBIC specifications would still be available as alleged prior art. III. CONCLUSION For the foregoing reasons, Rambus respectfully requests that the Court Deny STs Motion to Amend its Invalidity Contentions with respect to prior invention vis a vis the NeXTBus and/or NBIC. DATED: May 9, 2013 Respectfully submitted, MCKOOL SMITH HENNIGAN, A PROFESSIONAL CORPORATION

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By: /s/ Pierre J. Hubert Pierre J. Hubert Attorneys RAMBUS INC. for Plaintiff

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