The Honorable Sue L. RobinsonAugust 24, 2012Page 2relevant documents, assuming it occurred, shows only spoliation, not material prejudice. Theonly two defenses the Commission addressed in discussing prejudice were anticipation andinequitable conduct in connection with a draft SyncLink specification produced by Rambus. Op.at 54-55. Both failed independently on the merits.
Although the Commission noted “that we
have rejected [those defenses] on the merits cannot be dispositive because a patent need not be
invalid or unenforceable for other reasons in order for it to be unenforceable for spoliation,”
,both of those
defenses failed for reasons that had nothing to do with Rambus’s internal
documents. The Commission found that the draft SyncLink specification did not constitute priorart because it was not publicly available. Op. at 25-27. The Commission further found, underthe inequitable conduct doctrine, that the draft specification was immaterial because it was not
prior art. Op. at 34. Given these determinations, Rambus’s document destruction could not have
been materially prejudicial.
See Micron Tech., Inc. v. Rambus Inc.
, 255 F.R.D. 135, 151 n.59(D. Del. 2009) (
) (no prejudice to invalidity defenses because “prior art references (bydefinition) must be publicly available”);
Ring Plus, Inc. v. Cingular Wireless, Inc.
, 614 F.3d1354, 1361 (Fed. Cir. 2
010) (“the materiality standard [for inequitable conduct] is an objectiveone”).
Second, the Commission then compounded its errors by conclusorily affirming
(Op. at 55) the “harsh sanction” of unenforceability without engaging in a rigorous analysis of “the degree of fault,” “the degree of prejudice,” and the availability of lesser sanctions.
, 645 F.3d at 1328-29 (citation omitted). The Commission did not consider the fact that
Respondents’ supposedly prejudiced defenses contain essential prio
r art elements thatRespondents could not prove regardless of what Rambus did. Nor did the Commission giveadequate consideration to the fact that Rambus adopted an industry-standard, content-neutralpolicy under the advice of counsel years before the asserted Barth patents issued. TheCommission then rejected without explanation the lesser sanctions proposed by the ITC staff andRambus, even though
requires “the least onerous sanction corresponding to the
willfulness of the destructive act and
the prejudice suffered by the victim,”
at 1329 (citationomitted).As Rambus has explained at length, the objective legal standards governing
Micron’s defenses defeat any inference of material prejudice based on Rambus’s document
policy. And Rambus, i
n any event, preserved and produced the relevant documents for Micron’s
defenses, including all prior art.
1130, Rambus’s Responsive Remand Br., Dec.
21,2011, at 12-17; D.I.
1124, Rambus’s Opening Remand Br., Nov.
9, 2011, at 9-25. While nosanction is warranted, terminating sanctions would be clearly inappropriate under the
standard. D.I. 1130 at 18-25; D.I. 1124 at 25-30.
The Commission found the asserted Barth claims anticipated and rendered obvious by otherprior art. Op. at 24-32.
Case 1:00-cv-00792-SLR Document 1147 Filed 08/24/12 Page 2 of 3 PageID #: 11692