Case 5:05-cv-00334-RMW Document 2041 Filed 08/13/2008 Page 1 of 10

1 TOWNSEND and TOWNSEND and CREW LLP

DANIEL J. FURNISS (SBN 73531) djfurniss@townsend.com
2 THEODORE G. BROWN, III (SBN 114672) tgbrown@townsend.com
JORDAN TRENT JONES (SBN 166600) jtjones@townsend.com
3 379 Lytton Avenue
Palo Alto, California 94301
4 Telephone: (650) 326-2400; Facsimile: (650) 326-2422
5 THELEN REID BROWN RAYSMAN & STEINER LLP
KENNETH L. NISSLY (SBN 77589) kennissly@thelen.com
6 SUSAN van KEULEN (SBN 136060) svankeulen@thelen.com
GEOFFREY H. YOST (SBN 159687) gyost@thelen.com
7 225 West Santa Clara Street, Suite 1200
San Jose, California 95113
8 Telephone: (408) 292-5800; Facsimile: (408) 287-8040
9 O'MELVENY & MYERS LLP
KENNETH R. O'ROURKE (SBN 120144) korourke@omm.com
10 WALLACE A. ALLAN (SBN 102054) tallan@omm.com
400 South Hope Street, Suite 1060
11 Los Angeles, California 90071-2899
Telephone: (213) 430-6000; Facsimile (213) 430-6407
12
Attorneys for Defendants and Counterclaim Plaintiffs
13 HYNIX SEMICONDUCTOR INC.,
HYNIX SEMICONDUCTOR AMERICA INC., HYNIX
14 SEMICONDUCTOR MANUFACTURING AMERICA INC.,
HYNIX SEMICONDUCTOR U.K. LTD., and
15 HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH
16 UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
17 SAN JOSE DIVISION
18 RAMBUS INC.,
Plaintiff, Case No. C 05-00334 RMW
19 v.
HYNIX'S OPPOSITION TO
20 HYNIX SEMICONDUCTOR INC., HYNIX RAMBUS' MOTION TO COMPEL
SEMICONDUCTOR AMERICA INC., HYNIX
21 SEMICONDUCTOR MANUFACTURING Date: August 20, 2008
AMERICA INC., Time: 11:00 a.m.
22 Location: Telephonic Hearing
SAMSUNG ELECTRONICS CO., LTD., Judge: Hon. Read Ambler (Ret.)
23 SAMSUNG ELECTRONICS AMERICA, INC.,
SAMSUNG SEMICONDUCTOR, INC.,
24 SAMSUNG AUSTIN SEMICONDUCTOR,
L.P.,
25
NANYA TECHNOLOGY CORPORATION,
26 NANYA TECHNOLOGY CORPORATION
U.S.A.,
27
Defendants.
28

HYNIX'S OPPOSITION TO RAMBUS' MOTION TO COMPEL

CASE NO. C 05-00334 RMW
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1 HYNIX SEMICONDUCTOR INC., HYNIX

SEMICONDUCTOR AMERICA INC., HYNIX
2 SEMICONDUCTOR MANUFACTURING
AMERICA INC., HYNIX SEMICONDUCTOR
3 U.K. LTD., HYNIX SEMICONDUCTOR
DEUTSCHLAND GmbH,
4
Counterclaim Plaintiffs,
5 v.
6 RAMBUS INC.,
7 Counterdefendant.
8

9
I. INTRODUCTION
10
In its motion to compel, which was served and filed with the court-appointed Special Master
11
(Ret. Judge Ambler) on July 28, 2008, Rambus seeks an order directing Hynix to provide discovery on
12
its "new" DRAM products (including Hynix's GDDR5 products) and on products that are "currently
13
under development." Rambus' motion comes much too late, lacks merit and creates an unwarranted
14
burden on Hynix just as the close of fact discovery is nigh. It should be denied.1
15

16 II. RESTATEMENT OF FACTS

17 On January 25, 2005, the present patent infringement action was filed by Rambus in the

18 Northern District of California against Hynix, Samsung, Nanya and Infineon (Dkt. 1). Infineon was

19 dismissed from the case on March 22, 2005 (Dkt. 12).2

20 By July 2007, Rambus had served original and "supplemental" versions of its Preliminary

21 Infringement Contentions – accusing Hynix's gDDR2,3 DDR2, GDDR3, DDR3 and GDDR4 devices

22
1
As discussed in greater detail in Argument section III.A. below, Hynix also proposes an alternative form of
23 relief: suspension of a decision on Rambus' motion to compel until Judge Whyte has ruled on Hynix's related
motion – namely, a motion to strike those portions of Rambus' Final Infringement Contentions directed to
24 newly added accused products.
2
25 Rambus' separate patent infringement action filed in the Northern District of California against Micron in
January 2006 (Case No. C06-00244 RMW), which dealt with many of the same asserted patents and claims as
26 the present action, was later consolidated (for certain purposes) by the court with the present action (Dkt. 174).
3
27 Hynix's gDDR2 device is a specialized version of its DDR2 device, the gDDR2 having application in
graphics environments (Brown Decl., ¶2).
28

HYNIX'S OPPOSITION TO RAMBUS' MOTION TO COMPEL

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1 of infringement (Brown Decl., ¶3-4 and Ex. A-B).

2 In November 2007, Hynix issued a press release regarding its newly developed GDDR5

3 products (Brown Decl., ¶5 and Ex. C).4 Despite this, it was not until July 2, 2008 – when Rambus

4 served its fourth set of requests for production – that Hynix received written discovery requests

5 seeking documents regarding Hynix's GDDR5 products (Brown Decl., ¶6 and Ex. D).5 During

6 discussions between counsel following service of Rambus' Rule 30(b)(6) deposition notice and

7 Hynix's objections to that notice, Rambus stated that it wanted deposition testimony regarding Hynix's

8 GDDR5 products. In response, Hynix offered to provide discovery regarding its GDDR5 products if

9 Rambus amended its Preliminary Infringement Contentions – after seeking and obtaining leave of

10 Court (Brown Decl., ¶7 and Ex. E).

11 On July 28, 2008, several days before Hynix's responses to Rambus' outstanding fourth set of

12 requests for production were due, Rambus filed the present motion to compel (Dkt. 1990). Hynix

13 served its responses to Rambus' fourth set of requests for production on August 4, 2008 – taking the

14 position that, given the timing of Rambus' discovery requests, documents relating to never-before-

15 requested Hynix products (including the GDDR5) would not be produced until the products were

16 placed at issue by their proper introduction into Rambus' infringement contentions (Brown Decl., ¶8

17 and Ex. F). Of course, such action would require leave of Court.
The present motion to compel is noted for a telephonic hearing on August 20, 2008, only nine
18
days before the close of fact discovery.
19
20

21

22
4
23 While it is certainly possible that Rambus gained knowledge of Hynix's GDDR5-related efforts prior to
November 2007, it strains credulity to believe that Rambus garnered such knowledge only at a later date.
24 Given that Rambus had been embroiled in this lawsuit against Hynix since January 2005 – and in other legal
actions dating back to the Year 2000 – it is a virtual certainty Rambus regularly monitored Hynix's website and
25 other activities.
5
It is also worth noting that Rambus' various versions of its complaint make absolutely no mention of Hynix's
26
GDDR5 device being an allegedly infringing product. These pleadings identify only four allegedly infringing
27 products – Hynix's DDR2, DDR3, GDDR3 and GDDR4 – with no "open ended" provision for additional
products.
28

HYNIX'S OPPOSITION TO RAMBUS' MOTION TO COMPEL

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1 III. ARGUMENT
2 A. Rambus' Motion to Compel Discovery Relating to Hynix's GDDR5 Product, And More,
3 Should be Held in Abeyance – Pending Resolution of Hynix's Motion to Strike Rambus'
Attempted Addition of New Products to Its Final Infringement Contentions
4 Consistently throughout Rambus' present motion to compel, which was filed on July 28, 2008
5 and is currently set for telephonic hearing before Special Master/Retired Judge Ambler on August 20,6
6 Hynix's GDDR5 product is referred to as a "non-accused" product.
7 Oddly, just four days after filing its motion to compel, Rambus then served Final Infringement
8 Contentions in which Hynix's GDDR5 is added as an accused product (Brown Decl., ¶14 and Ex. K).
9 This prompted Hynix to file a motion to strike all references to Hynix's GDDR5 products appearing in
10 Rambus' Final Infringement Contentions, which had been served on August 1. Hynix's motion to
11 strike (Dkt. 2035), which was filed yesterday (i.e., on August 12), is noted for hearing before Judge
12 Whyte on September 19, 2008.
13 The troubling consequences of Rambus' inconsistent actions are at least two-fold: (1) Hynix is
14 now left to respond to a motion to compel relating to a product (the GDDR5) which is treated as a
15 non-accused product in Rambus' motion briefing, but is treated as an accused product in Rambus'
16 infringement contentions; and (2) irrespective of which way Judge Whyte rules on the motion to
17 strike, his decision will almost certainly have ramifications with respect to what discovery should or
18 should not be ordered in connection with the present motion to compel.
19 Accordingly, Hynix suggests – and respectfully requests – that the preferred course of action
20 would be to delay a ruling on Rambus' present motion to compel until the motion to strike has been
21 decided by Judge Whyte.
22
B. Rambus Has Brought its Motion to Compel Much Too Late
23 At page 1, line 17 of its motion to compel, Rambus maintains that the discovery sought is
24 "critical evidence it needs to present its case at the patent trial." If this information is so critical, why
25

26 6
The present motion to compel was originally noted for an August 13 telephonic hearing date, but was later
27 changed to August 20 so that this motion and similar motions brought against Samsung and Micron could be
heard on the same day (Brown Decl., ¶9).
28

HYNIX'S OPPOSITION TO RAMBUS' MOTION TO COMPEL

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1 did Rambus wait so long to obtain it? Rambus knew or should have known of Hynix's GDDR5
2 product announcement in November 2007, yet did not serve discovery requests specifically directed to
3 this product until July 2, 2008 – nearly eight months later.
4 Even if this motion were to be decided in Rambus' favor – and were to be decided instantly –
5 the parties would be left with only nine days before the August 29 fact discovery cutoff date mandated

6 by the court's Patent Trial Scheduling Order. Given the breadth of Rambus' requests, it would be

7 difficult and burdensome for Hynix to produce the GDDR5 documentation Rambus seeks in a timely

8 manner prior to this deadline, even ignoring the additional time required for Rambus to review the

9 documentation and determine if it is "adequate." Should Rambus have related questions, or insist on

10 the production of even more documentation, considerably more time could be required.

11 When Rambus filed the present motion, it was aware of the discovery cutoff date – but chose

12 to file the motion anyway. One is then left to ponder just how it is that this "critical evidence"

13 Rambus seeks will be put to good use. Opening expert reports are due September 5. How will this

14 critical evidence be woven into the opinions that Rambus' experts render? With rebuttal expert reports

15 due September 26, the close of expert discovery occurring on October 10, and both dispositive and

16 Daubert motions due October 17, granting Rambus' motion to compel – and thereby potentially

17 introducing a wave of new evidence – will create a disruptive ripple that could render the remaining

18 case schedule unworkable.

19 Simply put, Rambus should not be rewarded for its dilatory actions. Assuming for the sake of

20 argument that there were some legitimacy to Rambus' need for GDDR5-related documentation (and

21 more), this motion to compel should have been brought long ago.

22 More importantly, this is time that should be spent in meeting the many obligations involved in

23 preparing for trial in January 2009 – including the numerous and time-consuming pretrial filings, and

24 expert reports and discovery required by the court's Patent Trial Scheduling Order.

25 C. Rambus' Motion Contains Several Misleading Statements

26 Rambus gives the misleading impression at page 2, lines 3-9 of its motion to compel that it

27 served written discovery requests specifically directed to Hynix's GDDR5 product within some

28 reasonable period after it learned of the GDDR5's existence in November 2007 (if not before).

HYNIX'S OPPOSITION TO RAMBUS' MOTION TO COMPEL

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1 Rambus' motion also gives the impression that Hynix initially promised to produce documents for the
2 GDDR5, but has steadfastly refused to do so ever since.
3 Nothing could be further from the truth. What Rambus conveniently fails to mention is that its
4 written discovery containing Requests for Production Nos. 31 and 36 was served on October 13, 2005
5 (Brown Decl., ¶10 and Ex. G). More importantly, Hynix's responses thereto – in which the promise to

6 produce responsive documents purportedly was made – were served on March 23, 2007 (Brown Decl.,

7 ¶11 and Ex. H). However, given that Hynix's GDDR5 product was not even announced until

8 November 2007 (i.e., nearly 8 months later), how can these discovery requests and Hynix's responses

9 thereto possibly be dealing with the GDDR5? The short answer is, they cannot. Rambus takes

10 discovery requests directed to the vague and overly broad term "any memory device" (to which Hynix

11 properly objected), purposely leaves out any time reference and then improperly implies in its motion

12 to compel that it has been seeking GDDR5-specific information all along.7

13 Rambus' characterizations of, and questionable usage of, several of the cited cases appearing at

14 pages 3-4 of its motion to compel are also worth noting. Rambus fails to point out that, in

15 WebSideStory v. NetRatings, No. 06cv408 WQH (AJB), 2007 WL 1109597 at *2 (S.D. Cal. Apr. 4,

16 2007), an "accused" product was actually incorporated within, and was thereby a part of, the

17 additional products for which discovery was sought. More importantly, these additional products

18 were really not "non-accused" products as Rambus indicates – for they had been identified as such in

19 earlier infringement contentions. Here, none of the new or under-development SDRAM products for

20 which Rambus seeks discovery incorporate the accused products appearing in Rambus' Preliminary

21 Infringement Contentions – nor have they been previously identified as accused products themselves

22 (other than potentially Hynix's GDDR5 device).8 Thus, this case can be fully distinguished.

23 The L.G. Phillips v. Tatung case, No. C 07 80073 WHA, 2007 WL 869256 at *1-*2 (N.D. Cal.

24

25
7
Rambus' positioning of this paragraph at a temporal point after November 2007, in its otherwise purely
26 chronological presentation of "facts," is also at best misleading.
8
27 Whether Hynix's GDDR5 product will ultimately be considered an accused product will be determined by the
outcome of Hynix's motion to strike (filed August 12, 2008 (Dkt. 2035)).
28

HYNIX'S OPPOSITION TO RAMBUS' MOTION TO COMPEL

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1 Mar. 20, 2007), which was cited by Rambus has very limited, and potentially no, applicability to the
2 case at hand – given that it deals with protective order issues relating to a third-party discovery request
3 (subpoena duces tecum). The present motion involves the named parties to the lawsuit – parties which
4 have had more than a three-year course of dealings in this case alone, which include the service of
5 infringement contentions and extensive prior discovery.

6 Rambus also fails to point out that, in EpicRealm v. Autoflex, Nos. 2:05-CV-163-DFCMC &

7 2:05-CV-356-DFCMC, 2007 WL 2580969 at *3 (E.D. Tex. Aug. 27, 2007), discovery was allowed in

8 a situation where a full three months remained before the discovery cutoff date – and this available

9 discovery period was expected to expand because of a recent move in the trial date. Here, there will

10 be a maximum of nine days of fact discovery left following the telephonic hearing of the present

11 motion to compel.

12 With respect to Invacare v. Sunrise, No. 1:04CV1439, 2005 WL 1750271 at *2-*3 (N.D. Ohio

13 Jan. 21, 2005), Rambus has taken a case in which discovery was sought for an earlier non-accused

14 product, which was deemed to be a "precursor" to the later-developed accused products, and

15 improperly tried to parlay the result into a holding that applies to both precursor and "successor"

16 products. Here, Rambus is not seeking discovery as to earlier-developed products (or precursors). In

17 fact, just the opposite is true – Rambus seeks discovery on products developed later than those

18 accused of infringement in the case. Rambus' use of this case also is improper for a second reason:

19 the so-called holding parenthetically presented in Rambus' motion to compel is no holding at all.

20 Rather, it is simply the court's restatement of the plaintiff's position.

21 AMP v. Mole, No. 84 C 2814, 1988 WL 48276 at *1 (N.D. Ill. May 10, 1988), is of little and at

22 best speculative assistance, given that it is a half-page opinion (Brown Decl., ¶12 and Ex. I). No

23 details are provided regarding the products involved or the stage of discovery involved. Without

24 more, its use is a wild extrapolation of a few reported sentences.

25 D. If Rambus' Motion to Compel is Granted, the Scope of Discovery Should Be Narrowed

26 In the present motion to compel, Rambus seeks an order directing Hynix to provide

27 wide-ranging discovery relating both to its "new" DRAM products and to products "currently under

28 development" – namely, the following discovery: (1) documents responsive to Rambus' Request for

HYNIX'S OPPOSITION TO RAMBUS' MOTION TO COMPEL

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1 Production Nos. 31 and 36; and (2) documents responsive to Rambus' recently served fourth set of
2 requests for production; and (3) one or more corporate designees to testify on Topics 1-14 listed in
3 Rambus' Rule 30(b)(6) deposition notice to Hynix, served June 19, 2008.
4 To begin with, Hynix is baffled, and Rambus provides no meaningful explanation of what
5 exactly Rambus seeks when it uses terms "new DRAM products" and "products under development."

6 Taken at face value, these terms are ridiculously vague and extremely broad. Hynix is not aware of

7 any "new" DRAM products other than GDDR5, and Rambus has provided no evidence that any such

8 products exist for which Hynix has not already provided extensive discovery. Rambus is even less

9 informative as to what it means by "products under development," which is a phrase that is not even

10 limited to DRAM products. Moreover, even if Hynix were to comprehend what Rambus means by

11 these terms, Hynix seriously questions whether such information is sufficiently (or even potentially)

12 relevant enough to warrant its production – especially at this late date in the lawsuit. At least with

13 regard to "products under development," Rambus' motion is no more than a request for an unbounded

14 and unlimited fishing expedition.

15 A glimpse at Rambus' written discovery to date also provides no meaningful clues. As stated

16 at page 6 of Rambus' motion to compel, Request for Production No. 31 is directed to documents

17 relating to "use or evaluation of the potential benefits or detriments of employing or using" any of

18 seven enumerated DRAM features "in any memory device." In Hynix's response, served in March

19 2007, several objections were made – including the following: overly broad as to scope because the

20 request is not limited to "designated representative accused products" (Brown Decl., ¶11 and Ex. H).

21 Rambus' Request for Production No. 36 is directed to documents relating to "any possible alternative

22 technologies" for any of the same seven DRAM features "in any memory device." Again, Hynix's

23 response included the following objection: overly broad as to scope because the request is not limited

24 to "designated representative accused products." Hynix has provided full discovery regarding the

25 designated representative products, and Rambus has never contended otherwise. Further, in these

26 discovery requests, no specific products (e.g., the GDDR5 device) were ever mentioned.

27 Neither Hynix's GDDR5 device nor any other specific product was mentioned in Rambus'

28 Rule 30(b)(6) deposition notice to Hynix, served June 19, 2008 – just use of the even broader term

HYNIX'S OPPOSITION TO RAMBUS' MOTION TO COMPEL

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1 "Hynix DRAM products" (Brown Decl., ¶13 and Ex. J).9 In Rambus' fourth set of requests for
2 production, served on July 2, 2008, the device-related inquiries are directed to those Hynix products
3 long ago included in Rambus' Preliminary Infringement Contentions, to the GDDR5 product or to a
4 combination thereof. The vast majority are directed to the GDDR5 alone.10
5 Thus, should the court be inclined to grant Rambus' motion to compel, Hynix requests that

6 Rambus be required to propose a much narrower definition of products for which discovery is sought

7 prior to the motion being granted – a definition that is both reasonable and understandable (i.e.,

8 GDDR5 products only). Anything less would be unduly burdensome to Hynix at this late stage of the

9 case.

10

11

12

13

14

15

16

17

18
19
20

21

22

23

24 9
The GDDR5 was specifically mentioned for the first time in a Rambus Rule 30(b)(6) deposition notice served
25 on Hynix on June 26, 2008 (Brown Decl., ¶7 and Ex. E).
10
Lastly, in the deposition of Y. K. Kim taken July 22, 2008, there was limited testimony given on a few
26
products that Hynix is currently working on. Should the court wish to examine all or part of this deposition
27 transcript (which is under seal) as part of its decision making process on the present motion to compel, once
notified, Hynix will immediately forward a copy under seal for the court's consideration.
28

HYNIX'S OPPOSITION TO RAMBUS' MOTION TO COMPEL

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1 IV. CONCLUSION
2 For the reasons provided in the sections above, Hynix respectfully requests that an order be
3 issued either: (1) postponing a decision on Rambus' present motion to compel until after a decision is
4 reached by Judge Whyte on Hynix's motion to strike filed August 12, 2008; or (2) denying Rambus'
5 present motion to compel.

7 DATED: August 13, 2008 Respectfully submitted,

8

9 By: /s/ Theodore G. Brown, III

Daniel J. Furniss
10 Theodore G. Brown, III
Jordan Trent Jones
11 TOWNSEND and TOWNSEND and CREW LLP
12 Kenneth L. Nissly
Susan van Keulen
13 Geoffrey H. Yost
THELEN REID BROWN RAYSMAN & STEINER LLP
14
Kenneth R. O'Rourke
15 Wallace A. Allan
O'MELVENY & MYERS LLP
16
Attorneys for
17 HYNIX SEMICONDUCTOR INC.,
HYNIX SEMICONDUCTOR AMERICA INC.,
18 HYNIX SEMICONDUCTOR
MANUFACTURING AMERICA INC., HYNIX
19 SEMICONDUCTOR U.K. LTD., and HYNIX
SEMICONDUCTOR DEUTSCHLAND GmbH
20 61464663 v1

21

22

23

24

25

26

27

28

HYNIX'S OPPOSITION TO RAMBUS' MOTION TO COMPEL

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