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Case 5:05-cv-00334-RMW Document 2278 Filed 09/23/2008 Page 1 of 18
1 Gregory P. Stone (State Bar No. 078329) Rollin A. Ransom (State Bar No. 196126)
Steven M. Perry (State Bar No. 106154) SIDLEY AUSTIN LLP
2 Sean Eskovitz (State Bar No. 241877) 555 West Fifth Street, Suite 4000
MUNGER, TOLLES & OLSON LLP Los Angeles, California 90013-1010
3 355 South Grand Avenue, 35th Floor Telephone: (213) 896-6000
Los Angeles, California 90071-1560 Facsimile: (213) 896-6600
4 Telephone: (213) 683-9100 Email: rransom@sidley.com
Facsimile: (213) 687-3702
5 Email: gregory.stone@mto.com; Pierre J. Hubert (Pro Hac Vice)
steven.perry@mto.com; sean.eskovitz@mto.com Craig N. Tolliver (Pro Hac Vice)
6 McKOOL SMITH PC
Peter A. Detre (State Bar No. 182619) 300 West 6th Street, Suite 1700
7 Carolyn Hoecker Luedtke (State Bar No. 207976) Austin, Texas 78701
Jennifer L. Polse (State Bar No. 219202) Telephone: (512) 692-8700
8 MUNGER, TOLLES & OLSON LLP Facsimile: (512) 692-8744
560 Mission Street, 27th Floor Email: phubert@mckoolsmith.com;
9 San Francisco, California 94105 ctolliver@mckoolsmith.com
Telephone: (415) 512-4000
10 Facsimile: (415) 512-4077
Email: peter.detre@mto.com;
11 carolyn.luedtke@mto.com; jen.polse@mto.com
A PROFESSIONAL CORPORATION • ATTORNEYS
12 Attorneys for RAMBUS INC.
13
MCKOOL SMITH
DALLAS, TEXAS
14 UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA
15 SAN JOSE DIVISION
16
RAMBUS INC., ) Case No. C 05-00334 RMW
17 )
Plaintiff, ) RAMBUS INC.’S MOTION TO
18 vs. STRIKE PORTIONS OF THE
HYNIX SEMICONDUCTOR INC., HYNIX) MCALEXANDER EXPERT REPORT
19 SEMICONDUCTOR AMERICA INC., HYNIX)
SEMICONDUCTOR MANUFACTURING)
20 AMERICA INC., ) Hearing Date: November 14, 2008
)
21 SAMSUNG ELECTRONICS CO., LTD.,) Time: 9:00 am
SAMSUNG ELECTRONICS AMERICA,)
22 INC., SAMSUNG SEMICONDUCTOR, INC., Courtroom: 6, 4th Floor
SAMSUNG AUSTIN SEMICONDUCTOR,)
23 L.P., ) Judge: Ronald M. Whyte
)
24 NANYA TECHNOLOGY CORPORATION,)
NANYA TECHNOLOGY CORPORATION)
25 U.S.A., )
Defendants.
26 )
)
27
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RAMBUS INC.’S MOTION TO STRIKE PORTIONS OF THE MCALEXANDER EXPORT REPORT

CASE NOS. C 05-00334 RMW, C 05-02298 RMW, C 06-00244 RMW
1 RAMBUS INC., ) Case No. C 05-002298 RMW

)
2 Plaintiff, )
v.
3 SAMSUNG ELECTRONICS CO., LTD., )
SAMSUNG ELECTRONICS AMERICA, )
4 INC., SAMSUNG SEMICONDUCTOR, INC., )
SAMSUNG AUSTIN SEMICONDUCTOR, )
5 L.P., )
)
6 Defendants. )
)
7
8
RAMBUS INC., ) Case No. C 06-00244 RMW
9 )
Plaintiff, )
10 vs.
MICRON TECHNOLOGY, INC. and MICRON)
11 SEMICONDUCTOR PRODUCTS, INC., )
)
12 Defendants. )
)
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MCKOOL SMITH
)
DALLAS, TEXAS
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1 TABLE OF CONTENTS
2 MEMORANDUM OF POINTS AND AUTHORITIES.............................................................1

3 I. SUMMARY OF THE ARGUMENT ...............................................................................1
4 II. STATEMENT OF RELEVANT FACTS.........................................................................1
5 III. STATEMENT OF ISSUE TO BE DECIDED.................................................................6
6 IV. ARGUMENT......................................................................................................................6
7 A. The Local Patent Rules Are Designed to Provide Timely
Discovery of Invalidity Contentions and End Litigation by
8 Ambush ....................................................................................................................6
9 B. April 28, 2008 Was the Last Day for the Manufacturers to
Serve Invalidity Contentions....................................................................................7
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C. After April 28, 2008, the Manufacturers Disclosed Eight
11 New Prior Art References that are Relied on in the
McAlexander Expert Report ..................................................................................11

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D. The Court Should Strike Those Portions of the
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McAlexander Expert Report that Rely on Undisclosed Or

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Improperly-Disclosed Invalidity Arguments .........................................................11

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V. CONCLUSION ................................................................................................................13
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3 TABLE OF AUTHORITIES
4 Page(s)
CASES
5
Acco Brands, Inc. v. PC Guardian Anti-Theft Prods., Inc.,
6 No. C 04-03526 SI, 2008 WL 2168379 (N.D. Cal. May 22, 2008)...........................................6
7
Anascape, Ltd. v. Microsoft Corp.,
8 Civil Action No. 9:06-CV-158, slip op. (E.D. Tex. May 1, 2008) ............................................7
9 Coopervision, Inc. v. Ciba Vision Corp.,

480 F. Supp. 2d 884 (E.D. Tex. 2007).....................................................................................10
10
Finisar Corp. v. DirecTV Group, Inc.,
11 424 F. Supp. 2d 896 (E.D. Tex. 2006).....................................................................................10
12
Immersion Corp. v. Sony Computer,
13 Case No. C-02-02710 CW, slip op. (N.D. Cal. Feb. 26, 2004) ...............................................10
MCKOOL SMITH
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14 Informatica Corp. v. Bus. Objects Data Integration, Inc.,

No. C 02-3378 JSW, 2006 WL 463549 (N.D. Cal. Feb.23, 2006)............................................7
15
IXYS Corp. v. Advanced Power Tech., Inc.,
16 No. C 02-03942 MHP, 2004 WL 1368860 (N.D. Cal. June 16, 2004) .................................6, 9
17 LG Elecs. Inc. v. Q-Lity Computer Inc.,
18 211 F.R.D. 360 (N.D. Cal. 2002)...............................................................................................7
19 O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,

467 F.3d 1355 (Fed. Cir. 2006)............................................................................................7, 11
20
Yodlee, Inc. v. CashEdge, Inc.,
21 No. C 05-01550 SI, 2007 WL 1454259 (N.D. Cal. May 17, 2007).........................................12
22 Zoltar Satellite Alarm Sys., Inc. v. Motorola, Inc.,
No. C06-00044 JW (HRL), 2008 WL 913326 (N.D. Cal. Apr. 2, 2008) ..................................7
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NOTICE OF MOTION AND MOTION
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3 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

PLEASE TAKE NOTICE that on November 14, 2008, or as soon thereafter as this matter may
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be heard before the Honorable Ronald M. Whyte, United States District Court for the Northern
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District of California, 280 South First Street, San Jose, California 951100, Rambus Inc.
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(“Rambus”) will and hereby does move this Court for an Order striking those portions of the
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McAlexander Expert Report that rely on undisclosed or untimely-disclosed invalidity arguments
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and prior art references.
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Rambus’s motion is based upon the following memorandum of points and
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authorities, the accompanying declaration of Ramzi Khazen (“Khazen Decl.”), documentary
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evidence submitted herewith, the complete record of this action, the evidence and argument
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presented at the hearing on this motion, and all matters of which the Court may take judicial
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notice.
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MEMORANDUM OF POINTS AND AUTHORITIES
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3 Rambus files this Motion to Strike Portions of the McAlexander Expert Report,
4 and respectfully shows as follows:
5 I. SUMMARY OF THE ARGUMENT
6 On September 5, 2008, the Manufacturers served an expert report (the “Report” or
7 “McAlexander Expert Report”) from their invalidity expert, Mr. McAlexander. The Report
8 contains at least one never before seen invalidity argument and relies on a number of untimely-
9 disclosed prior art references. Such last minute revelations are in violation of the Federal Rules,
10 the Local Rules, and this Court’s Case Management Order. The Manufacturers cannot use the
11 Report as an end-run around these rules, especially where these untimely disclosures severely
12 prejudice Rambus, and the Manufacturers lack good cause for the improper disclosures. Rambus
13 is feverishly preparing its rebuttal expert report (which is due on September 26); fact discovery
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14 closed weeks ago; and trial is rapidly approaching. Accordingly, Rambus requests that this
15 Court strike the offending portions of the McAlexander Expert Report.
16 II. STATEMENT OF RELEVANT FACTS
17 1. Rambus filed its actions against Hynix and Nanya on January 25, 2005,
18 against Samsung on June 6, 2005, and against Micron on January 13, 2006 (Hynix, Nanya,
19 Samsung, and Micron are referred to, collectively, as the “Manufacturers”). (See Docket No. 1
20 in 334 Case (Hynix and Nanya); Docket No. 1 in 298 Case (Samsung); Docket No. 1 in 244 Case
21 (Micron).)
22 2. On May 18, 2006, Samsung served a set of preliminary invalidity
23 contentions, totaling 525 pages and referring to 133 references.
24 3. On May 11, 2007, Micron served its preliminary invalidity contentions,
25 totaling, by Rambus’s count, 3,699 pages and referring to 258 references.
26 4. Also on May 11, 2007, Hynix, Nanya, and Samsung served their
27 preliminary invalidity contentions, totaling 4,319 pages and referring to 267 references.
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5. On April 28, 2008, the Manufacturers served their supplemental invalidity
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contentions, which incorporated by reference their earlier preliminary invalidity contentions and
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added an additional 566 pages of invalidity contentions and cited 43 references.
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6. Also on April 28, 2008, Samsung served its own supplemental invalidity
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contentions, which incorporated by reference its earlier preliminary invalidity contentions and
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added an additional 1,122 pages of invalidity contentions and referred to 185 references.
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7. This Court’s Case Management Order set April 28, 2008 as the deadline
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for the Manufacturers to serve supplemental invalidity contentions. (See Apr. 7, 2008 Further
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Order Regarding Case Management at 3 (Docket No. 1265 in 244 Case).) Accordingly, Rambus
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does not seek to strike any portion of the McAlexander Expert Report that opines on the
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invalidity arguments and references disclosed on or before April 28, 2008.

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8. Following April 28, 2008, however, the Manufacturers served two
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additional rounds of invalidity contentions.

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9. On July 28, 2008, the Manufacturers served their “second supplemental”
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invalidity contentions, which incorporated by reference all of their earlier invalidity contentions
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and added an additional 165 pages of invalidity contentions and 10 never before disclosed
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references.
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10. On August 22, 2008, the Manufacturers served their “Final Invalidity
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Contentions,” which totaled 5,000 pages and referred to 322 references.1 By Rambus’s count,
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the Manufacturers disclosed a total of 328 references throughout the various iterations of their
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invalidity contentions. Twenty-six of these references were not disclosed prior to July 28, 2008.
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11. On August 29, 2008, fact discovery closed. (See Jul. 16, 2008 Scheduling
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Order, Docket No. 1393 in 244 Case.)
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To avoid burdening the Court with tens of thousands of pages of invalidity
27 contentions, Rambus has not attached such contentions to this Motion. Rambus is prepared to
submit the referenced invalidity contentions upon the Court’s request.
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12. On September 5, 2008, the Manufacturers served the McAlexander Expert
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Report. The Manufacturers followed this with a “corrected” McAlexander Expert Report, which
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they served ten days later on September 15, 2008. The “corrected” McAlexander Expert Report
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added a number of additional Attachments and eleven new exhibits (the new exhibits alone total
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253 pages). The body of the corrected McAlexander Expert Report is attached hereto as Ex. A.
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13. Rambus’s rebuttal validity expert report is due on September 26, 2008,
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and expert discovery closes on October 10, 2008. (See Jul. 16, 2008 Scheduling Order, Docket
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No. 1393 in 244 Case.) Trial is set for January 19, 2008. (Id.)
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14. The body of the McAlexander Expert Report is 179 pages. (See Ex. A.)
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The Report contains Attachments A-Q, which total 530 pages. It also contains Exhibits 1-135,
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which add another 5,838 pages—making the entire Report over 6,500 pages. The Report opines
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on numerous alleged prior art references in coming to its conclusion that Rambus’s patents are
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invalid.
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15. The Report also asserts that “Farmwald Patents do not Meet the Best
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Mode Requirements Under 35 U.S.C. § 112.” (Id. at 142-144.) The Manufacturers, however,
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did not assert that the Farmwald Patents were invalid for failing to meet the “best mode”
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requirement in their invalidity contentions or in responses to Rambus’s interrogatories seeking
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the disclosure of the bases of the allegation that Rambus’s patents were invalid.2
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16. The McAlexander Expert Report relies on a number of the untimely-
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disclosed prior art references for its conclusion that the Farmwald Patents are invalid:
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a. The “Bennett Patent” Reference. The Benet Patent issued on
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March 29, 1988. (See Ex. B.) It is 396 pages long. (Id.) The Manufacturers disclosed this
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reference to Rambus in their August 22, 2008 Final Invalidity Contentions, served only fourteen
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Rambus served interrogatories on Samsung, Hynix, and Nanya asking for the
26 disclosure of the bases of the allegation that Rambus’s patents were invalid. Rambus attaches
the relevant responses, none of which disclose a “best mode” theory of invalidity, hereto as Exs.
27 D (Nanya, Interrogatory No. 3); E (Hynix, Interrogatory No. 2); and F (Samsung, Interrogatory
No. 3).
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days prior to the Report and well over a year following their preliminary invalidity contentions.
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The Bennett Patent figures prominently in the McAlexander Expert Report, even though it was
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not disclosed earlier in the case. The Report’s sixty-six page Attachment C (attached hereto as
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Ex. C) is dedicated to the Bennett Patent—it allegedly “shows that each of the asserted claims is
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also anticipated or rendered obvious by the Bennett prior art patent, either alone or in light of
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well-known concepts disclosed in other prior art references.” (Report at ¶ 171.) According to
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Mr. McAlexander, the Bennett Patent “defined a high performance bus and interconnection
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standard for interfacing very large scale integration (VLSI) devices, including features such as
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variable block size, programmable write delay and programmable read delay features.” (Id.)
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b. The “Bazes Patent” Reference. The McAlexander Expert Report
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relies on the Bazes Patent reference to support the Manufacturers’ invalidity arguments, but the
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Manufacturers failed to disclose this reference until August 22, 2008, literally days before
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serving the McAlexander Expert Report. The Bazes Patent was issued on January 29, 1985.
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(Ex. G.) It is cited at least 25 times in the body of the McAlexander Expert Report. (Report at
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¶¶ 149; 151; 170-171; 172; 230; 236; 271; 277; 299-300; 309; 313; 320.) In general, Mr.
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McAlexander opines, among other things, that: (i) the Bazes Patent discloses the use of a delay
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locked loop to synchronize timing signals; (ii) the benefits cited by Dr. Horowitz for on-chip
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PLLIDLL in a DRAM are the same as those taught in the Bazes Patent; (iii) the Bazes Patent can
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be combined with the Intel iAPX system, the Bennett Patent, or the VRAM prior art/Novak
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Patent to render the asserted claims invalid; and (iv) “it would have been obvious to a person
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having ordinary skill in the art at the relevant time to incorporate clock alignment circuit to
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generate an internal clock signal having a predetermined phase relationship with respect to the
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external clock signal as disclosed in . . . Bazes[.]” (See id.).
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c. The “Stewart” Reference. Dated 1983, the Stewart Reference
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appears to be an M.I.T. student’s undergraduate thesis. (Ex. H.) The Manufacturers first
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disclosed this reference to Rambus on July 28, 2008. Mr. McAlexander cites the Stewart
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reference at least twenty times in the body of his Report. (See Report at ¶¶ 149; 170-171; 229;
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236; 270; 277.) In general, Mr. McAlexander asserts that: (i) the Stewart Reference discloses the
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use of a delay locked loop to synchronize timing signals; (ii) the Stewart Reference invalidates
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the asserted claims when combined with the Intel iAPX system or the Bennett Patent; and (iii) “it
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would have been obvious to a person having ordinary skill in the art at the relevant time to
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incorporate clock alignment circuit to generate an internal clock signal having a predetermined
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phase relationship with respect to the external clock signal as disclosed in Stewart[.]” (See id.)
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d. The “Deering” Reference. The Deering Reference was allegedly
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published in 1988 (see Ex. I), and first disclosed to Rambus on July 28, 2008. Mr. McAlexander
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cites it at least thirteen times in his Report. (See Report at ¶¶ 147; 170-171; 223; 226; 259; 263;
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266.) Mr. McAlexander states, with respect to the Deering Reference, that: (i) it is a prior art
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reference that includes the use of dual edge clocking on various semiconductor devices; and (ii)
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when combined with the Intel iAPX system or Bennett Patent, it renders Rambus’s asserted
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claims invalid. (See id.)

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e. The “SCI-H,” “SCI-I” and “SCI-J” References. These three
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references allegedly relate to the “Scalable Coherent Interface” (“SCI”) research standards
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projects from the 1980s. (See Report ¶ 169; see also Exs. J; K; and L.) The Manufacturers
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disclosed ten references allegedly relating to SCI (denoted “SCI-A” through “SCI-I”). Three of
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the ten references—SCI-H, SCI-I and SCI-J—were not disclosed until July 28, 2008. Mr.
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McAlexander relies on these three references in his invalidity opinions, and dedicates
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Attachment A of his Report to the SCI references. (Report at ¶¶ 180; 183-184; Attachment A,
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attached hereto as Ex. M.) Attachment A to the Report cites SCI-H, SCI-I and SCI-J over 150
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times in claim charts purporting to invalidate Rambus’s patents. (Id.)
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f. The “iAPX 43201/43202 VLSI General Data Processor”
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Reference. The Report refers to a group of references relating to Intel’s iAPX system. (Report
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at ¶ 205.) These references include the iAPX 43201/43202 VLSI General Data Processor
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reference, dated 1981. (Id.; see also Ex. N.) Although the Manufacturers listed the iAPX
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43201/43202 VLSI General Data Processor reference in their preliminary invalidity contentions
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as a reference along with hundreds of others, it was never charted in any set of invalidity
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contentions. The Report dedicates an eighty-eight page Attachment B (attached hereto as Ex. O)
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to the iAPX references and the iAPX 43201/43202 VLSI General Data Processor reference,
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which had never been charted before but is now cited on nearly every page of Attachment B.
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III. STATEMENT OF ISSUE TO BE DECIDED
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Where the Manufacturers’ invalidity expert report relies on an undisclosed
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invalidity argument and heavily relies on eight untimely-disclosed prior art references, in
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violation of the Federal Rules and Local Patent Rules, should this Court strike the offending
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portions of the report?
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IV. ARGUMENT
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The Manufacturers’ blatant failure to timely disclose prior art references and an
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invalidity theory in accordance with the rules should not be allowed. If these references and
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theory are allowed, Rambus would be put at a distinct disadvantage, having little time to review
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and analyze these references and theory—which are at the center of the Manufacturers’
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invalidity arguments.
16 A. The Local Patent Rules Are Designed to Provide Timely
Discovery of Invalidity Contentions and End Litigation by Ambush
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The Local Patent Rules “exist to further the goal of full, timely discovery and
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provide all parties with adequate notice and information with which to litigate their cases, not to
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create supposed loopholes through which parties may practice litigation by ambush.” IXYS
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Corp. v. Advanced Power Tech., Inc., No. C 02-03942 MHP, 2004 WL 1368860, at *3 (N.D.
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Cal. June 16, 2004). With respect to invalidity contentions, the Local Patent Rules require the
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Manufacturers to “provide early notice” of their “invalidity contentions, and to proceed with
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diligence in amending those contentions when new information comes to light in the course of
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discovery. The rules thus seek to balance the right to develop new information in discovery with
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the need for certainty as to the legal theories.” Acco Brands, Inc. v. PC Guardian Anti-Theft
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Prods., Inc., No. C 04-03526 SI, 2008 WL 2168379, at *1 (N.D. Cal. May 22, 2008) (quoting O2
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Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006); see also
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Rambus Inc. v. Hynix Semiconductor Inc., C-06-00244 RMW, 2008 WL 2754805, at *28 (N.D.
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Cal. July 10, 2008) (“The rules are designed to require parties to crystallize their theories of the
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case early in the litigation and to adhere to those theories once they have been disclosed.”)
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(quotations and citation omitted).
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“Unlike the liberal policy for amending pleadings, the philosophy behind
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amending claim charts is decidedly conservative, and designed to prevent the ‘shifting sands’
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approach to claim construction.” LG Elecs. Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360, 367
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(N.D. Cal. 2002) (quotations and citation omitted). Courts therefore restrict the parties’ ability to
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amend their invalidity contentions. See, e.g., Zoltar Satellite Alarm Sys., Inc. v. Motorola, Inc.,
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No. C06-00044 JW (HRL), 2008 WL 913326, at *2 (N.D. Cal. Apr. 2, 2008).

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Where a party amends invalidity contentions without justification, the court “may
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impose any ‘just’ sanction” including “‘refusing to allow the disobedient party to support or
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oppose designated claims or defenses, or prohibiting that party from introducing designated
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matters in evidence.” O2 Micro, 467 F.3d at 1363 (quoting Fed. R. Civ. P. 16(f) and Fed. R.
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Civ. P. 37(b)(2)(B)); see also Informatica Corp. v. Bus. Objects Data Integration, Inc., No. C 02-
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3378 JSW, 2006 WL 463549, at *1 (N.D. Cal. Feb.23, 2006) (striking infringement claims
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where party did not meet the standard for amending contentions). These sanctions include
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striking portions of an invalidity expert’s report that rely on improperly disclosed invalidity
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arguments. See Anascape, Ltd. v. Microsoft Corp., Civil Action No. 9:06-CV-158, slip op. at 1-2
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(E.D. Tex. May 1, 2008), attached hereto as Ex. P.
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B. April 28, 2008 Was the Last Day for the
23 Manufacturers to Serve Invalidity Contentions
24 This Court allowed the Manufacturers to serve Supplemental Invalidity
25 Contentions on April 28, 2008, which they did. (See Apr. 7, 2008 Further Order Regarding Case
26
Management at 3 (Docket No. 1265 in 244 Case).) These Supplemental Invalidity Contentions
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1 were served nearly a year after the Manufacturers served their Preliminary Invalidity
2 Contentions. (See Apr. 24, 2007 Joint Case Management Order at Attachment (Docket No. 70 in
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244 Case) (setting a May 11, 2007 deadline for the Manufacturers’ Preliminary Invalidity
4
Contentions).)
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The April 28, 2008 Supplemental Invalidity Contentions should have been the last
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word on the invalidity subject. But the Manufacturers followed their April 28, 2008
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8 Supplemental Invalidity Contentions with two additional rounds of invalidity contentions: their
9 (i) July 28, 2008 “Second Supplemental” Invalidity Contentions and (ii) August 22, 2008 “Final”
10 Invalidity Contentions.
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These additional rounds of invalidity contentions were not justified under the
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Patent Local Rules. Patent L.R. 3-6(b)3 allows a party to serve “Final Invalidity Contentions”
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not later than fifty days4 following the Court’s claim constructing ruling without leave of court in
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15 two limited instances.5 Neither applies here. First, although this Court issued claim construction
16 orders on July 10, July 25, and August 27, 2008 (see Docket Nos. 1392, 1400 & 1429 in 244
17 Case), the Manufacturers could not have believed in good faith that these claim construction
18 rulings required amendment of their invalidity contentions under Patent L.R. 3-6(b)(2). In
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Because this case was pending prior to March 1, 2008, the new Local Patent
23 Rules, along with their elimination of supplementation without leave of court, do not apply here.
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24 This Court’s July 16, 2008 Patent Trial Scheduling Order set August 22, 2008 as
the deadline for Final Invalidity Contentions. (See Docket No. 1393 in 244 Case at 2.)
25
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The Manufacturers did not move for leave to amend their invalidity contentions
26 under Patent L.R. 3-7, presumably because they could not meet the “good cause” requirement.
27 As such, only Patent L.R. 3-6(b) is potentially applicable here.
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1 particular, the claim construction orders largely accepted the very same claim construction
2 interpretations (i.e., Rambus’s) the Manufacturers claimed to use in their invalidity contentions.6
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And second, Patent L.R. 3-6(b)(1), which allows the service of “Final Invalidity
4
Contentions” without leave of court if the opposing party has severed “Final Infringement
5
Contentions” is similarly inapplicable. Rambus acknowledges serving Final Infringement
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Contentions on August 1, 2008. (See Docket No. 1393 in 244 Case at 2 (setting August 1
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8 deadline for Final Infringement Contentions).) The Manufacturers will likely argue that they
9 were given carte blanche to serve Final Invalidity Contentions on August 22 under Patent L.R.
10 3-6(b)(1) when Rambus served its Final Infringement Contentions on August 1. But Rambus’s
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Final Infringement Contentions, which simply addressed accused products and product families
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that were either not in existence at the time of the original infringement contentions or for which
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the Manufacturers had refused to produce information, were based on the same previously
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15 disclosed theories of infringement.7 As such, they do not justify the eleventh-hour disclosure of
16 numerous additional prior art references which unfairly prejudice Rambus at this late date in the
17 case.
18 Patent L.R. 3-6(b)(1) does not expressly require a party’s “Final Invalidity
19
Contentions” to have any relation to the opposing party’s “Final Infringement Contentions.” It is
20
clear, however, that courts will not allow a party filing “Final Invalidity Contentions” under
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Patent L.R. 3-6(b)(1) to completely sandbag its opponent years into a case and on the eve of the
22
23 close of fact discovery, as the Manufacturers have done here. For example, Chief Judge Patel in
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The August 27, 2008 claim construction ruling could not, of course, provide the
25 “good faith” justification, as it followed the Manufacturers’ August 22, 2008 Final Infringement
Contentions.
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27 Additionally, this Court struck the portions of Rambus’s Final Infringement
Contentions relating to GDDR5 on September 19, 2008.
28
9
1 IXYS Corp. v. Advanced Power Technology, Inc., No. C 02-03942 MHP, 2004 WL 1368860
2 (N.D. Cal. 2004) stated that, even when a party had the right to serve “Final Invalidity
3
Contentions” under Patent L.R. 3-6(b), “as in all cases of amendment, that right is subject to the
4
court’s (and [the defendant’s]) countervailing duty to avoid prejudicing [the patent holder
5
plaintiff] through eleventh-hour alterations.” Id. at *1 (emphasis added). Chief Judge Patel
6
ruled that, even though the defendant in IXYS Corp. had the right to amend its invalidity
7
8 contentions under Patent L.R. 3-3(b), it would be precluded from doing so where its amended
9 contentions relied on ninety pages of documents produced to the plaintiff shortly before the due
10 date for the plaintiff’s rebuttal expert report. Id. at *1-2; see also Coopervision, Inc. v. Ciba
11
Vision Corp., 480 F. Supp. 2d 884, 887 (E.D. Tex. 2007) (right to amend under Eastern District
12
of Texas’ patent rules is subject to the court’s duty to avoid prejudice); Finisar Corp. v. DirecTV
13
MCKOOL SMITH
DALLAS, TEXAS
Group, Inc., 424 F. Supp. 2d 896, 900 (E.D. Tex. 2006) (“Of course, the right to amend under
14
15 P.R. 3-6 is still subject to the court’s and DirecTV’s countervailing duty to avoid unfairly
16 prejudicing Finisar ‘through eleventh-hour alterations.’”) (quoting IXYS Corp., 2004 WL
17 1368860, at *1).
18 Similarly, Magistrate Judge Brazil, in Immersion Corp. v. Sony Computer, Case
19
No. C-02-02710 CW, slip op. at 7 (N.D. Cal. Feb. 26, 2004) (attached hereto as Ex. Q),
20
specifically rejected the “contention that there can be no restraints on the scope of amendments
21
to preliminary invalidity contentions once a plaintiff elects to file Final Infringement
22
23 Contentions.” The court could “imagine some setting in which proffered changes would be so
24 radical, so surprising, and/or so unjustified . . . that the court’s need to preserve the fundamental
25 fairness of the litigation process would impose restraints despite the absence of qualifying
26
verbiage in Patent Local Rule 3-6(b)(1).” Id. at 7.
27
28
10
1 C. After April 28, 2008, the Manufacturers Disclosed Eight New Prior
Art References that are Relied on in the McAlexander Expert Report
2
Even though April 28, 2008 was the deadline to disclose invalidity contentions,
3
4 the Manufacturers served—without any justification, years into these cases, and days before fact
5 discovery closed—two additional sets of invalidity contentions: their “second supplemental”
6 invalidity contentions on July 28, 2008 and their “Final Invalidity Contentions” on August 22,
7 2008. Fact discovery closed on August 29, 2008. Shortly thereafter, on September 5, 2008, the
8
Manufacturers served the McAlexander Expert Report, which heavily relies on eight of the
9
untimely-disclosed references in reaching its invalidity conclusions. (See II.16, supra.) Notably,
10
the Manufacturers untimely-disclosed far more than the eight references specifically referred to
11
12 by Rambus here. Such disclosure further hampered Rambus’s ability to focus on the references
13 that would ultimately by opined on by Mr. McAlexander.

MCKOOL SMITH
DALLAS, TEXAS
14 D. The Court Should Strike Those Portions of the McAlexander Expert Report
that Rely on Undisclosed Or Improperly-Disclosed Invalidity Arguments
15
Because the Manufacturers served two rounds of invalidity contentions following
16
the April 28, 2008 deadline in violation of the Patent Local Rules, they should not be allowed to
17
have their expert opine on any untimely-disclosed prior art reference. Nor should this Court
18
allow Mr. McAlexander to opine that Rambus’s patents are invalid for failure to satisfy the “best
19
mode” requirement, as this claim was never disclosed by the Manufacturers in any (timely or
20
not) invalidity contentions or interrogatory responses.
21
The Manufacturers cannot establish the good cause necessary to rely on an
22
undisclosed invalidity argument and untimely-disclosed prior art references. The Federal Circuit
23
has held that good cause requires a showing of diligence by the party seeking to amend (here, the
24
Manufacturers). See O2 Micro, 467 F.3d at 1366. In fact, Mr. McAlexander alleges that all
25
eight of the untimely-disclosed references have been available since the 1980s. Two of them are
26
published patents, and a third publicly available at M.I.T. The eight references were not
27
28
11
1
disclosed by the Manufacturers until years into these cases. There is simply no evidence of
2
diligence on the part of the Manufacturers with respect to these eight references. The untimely
3
disclosure is a case of sandbagging.
4
Other factors relevant to the good cause inquiry also favor Rambus. In particular,
5
Rambus will be severely prejudiced if this Court allows the Manufacturers to rely on their
6
undisclosed invalidity argument and untimely-disclosed prior art references. See, e.g., Yodlee,
7
Inc. v. CashEdge, Inc., No. C 05-01550 SI, 2007 WL 1454259, at *3 (N.D. Cal. May 17, 2007)
8
(considering prejudice to opposing party). This Court has twice commented on the number of
9
the Manufacturers’ prior art references, and indicated that this number should be pared down
10
significantly. (See Jul. 16, 2008 Scheduling Order, Docket No. 1393 in 244 Case at 2 n.1 (“The
11
court expects that the Manufacturers will have significantly narrowed the number of prior art
12
references supporting their invalidity contentions” with the filing of their invalidity expert
13
MCKOOL SMITH
report); Aug. 27, 2008 Supplemental Claim Construction Order, Docket No. 1041 in 298 Case at
DALLAS, TEXAS
14
10 (“The court did not anticipate that the Manufacturers would assert ‘nearly three-hundred
15
(300) separate purported references[]’. . . . It is hard for the court to imagine a legitimate basis
16
for asserting more than two allegedly anticipating references and two or three obviousness
17
combinations per claim.”).) Rambus’s rebuttal expert report on invalidity is due in less than one
18
week, and fact discovery closed before Rambus received the McAlexander Expert Report. Thus,
19
while distracting Rambus for over a year with hundreds of alleged prior art references and
20
numerous invalidity theories, the Manufacturers waited until just days before the close of fact
21
discovery to disclose a significant portion of the references they would ultimately rely on. This
22
improper conduct effectively prevented Rambus from pursuing any discovery or making any
23
preparation in connection with these newly disclosed invalidity references and invalidity
24
argument.
25
For these reasons, the appropriate remedy for the Manufacturers’ belated
26
disclosure and unjustifiable tactic of laying in wait is to strike those portions of the McAlexander
27
28
12
1
Expert Report that rely on references or invalidity arguments not disclosed before April 28,
2
2008.
3
V. CONCLUSION
4
The Manufacturers have engaged in last minute sandbagging with their untimely
5
and undisclosed invalidity arguments, severely prejudicing Rambus. For this reason, as well as
6
7 those described above, Rambus respectfully requests this Court to strike those portions of the
8 McAlexander Expert Report that opine or reference purported prior art references and arguments
9 not disclosed by April 28, 2008.

10
11
Dated: September 23, 2008 Respectfully submitted,

12
MUNGER, TOLLES & OLSON LLP
13
MCKOOL SMITH
DALLAS, TEXAS
SIDLEY AUSTIN LLP

14
MCKOOL SMITH, P.C.
15
16
17 /s/ Pierre J. Hubert

Pierre J. Hubert
18
Attorneys for Rambus Inc.
19
Austin 46268v7
20
21
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13

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Case 5:05-cv-00334-RMW Document 2278 Filed 09/23/2008 Page 1 of 18

12 Attorneys for RAMBUS INC.

14 UNITED STATES DISTRICT COURT

RAMBUS INC.’S MOTION TO STRIKE PORTIONS OF THE MCALEXANDER EXPORT REPORT

1 RAMBUS INC., ) Case No. C 05-002298 RMW

2 MEMORANDUM OF POINTS AND AUTHORITIES.............................................................1

McAlexander Expert Report ..................................................................................11

McAlexander Expert Report that Rely on Undisclosed Or

Improperly-Disclosed Invalidity Arguments .........................................................11

9 Coopervision, Inc. v. Ciba Vision Corp.,

14 Informatica Corp. v. Bus. Objects Data Integration, Inc.,

19 O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,

3 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

4 and respectfully shows as follows:

5 I. SUMMARY OF THE ARGUMENT

6 On September 5, 2008, the Manufacturers served an expert report (the “Report” or

15 Court strike the offending portions of the McAlexander Expert Report.

16 II. STATEMENT OF RELEVANT FACTS

22 2. On May 18, 2006, Samsung served a set of preliminary invalidity

23 contentions, totaling 525 pages and referring to 133 references.

24 3. On May 11, 2007, Micron served its preliminary invalidity contentions,

25 totaling, by Rambus’s count, 3,699 pages and referring to 258 references.

invalidity arguments and references disclosed on or before April 28, 2008.

additional rounds of invalidity contentions.

claims invalid. (See id.)

No. C06-00044 JW (HRL), 2008 WL 913326, at *2 (N.D. Cal. Apr. 2, 2008).

24 This Court allowed the Manufacturers to serve Supplemental Invalidity

16 prejudicing Finisar ‘through eleventh-hour alterations.’”) (quoting IXYS Corp., 2004 WL

5 discovery closed—two additional sets of invalidity contentions: their “second supplemental”

13 that would ultimately by opined on by Mr. McAlexander.

9 not disclosed by April 28, 2008.

Dated: September 23, 2008 Respectfully submitted,

SIDLEY AUSTIN LLP

17 /s/ Pierre J. Hubert

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