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K&L GATES LLP Michael J. Bettinger (Bar No. 122196) mike.bettinger@klgates.com Stephen M. Everett (Bar No. 121619) stephen.everett@klgates.com Curt Holbreich (Bar No. 168053) curt.holbreich@klgates.com Elaine Y. Chow (State Bar No. 194063) elaine.chow@klgates.com Four Embarcadero Center, Suite 1200 San Francisco, CA 94111 Tel: (415) 882-8200 Fax: (415) 882-8220 QUINN EMANUEL URQUHART & SULLIVAN, LLP Sean Pak (Bar No. 219032) seanpak@quinnemanuel.com Peter A. Klivans (Bar No. 236673) peterklivans@quinnemanuel.com 50 California Street, 22nd Floor San Francisco, California 94111-4788 Telephone: (415) 875-6600 Facsimile: (415) 875-6700 QUINN EMANUEL URQUHART & SULLIVAN, LLP Michael D. Powell (Bar No. 202850) mikepowell@quinnemanuel.com 555 Twin Dolphin Drive, 5th Floor Redwood Shores, CA 94065 Telephone: (650) 801-5000 Facsimile: (650) 801-5100 Attorneys for Defendants & Counterclaimants STMICROELECTRONICS N.V. and STMICROELECTRONICS, INC.

QUINN EMANUEL URQUHART & SULLIVAN, LLP Thomas D. Pease (Bar No. 2671741 (NY)) thomaspease@quinnemanuel.com 51 Madison Avenue, 22nd Floor New York, NY 10010 Telephone: (212) 849-7000 Facsimile: (212) 849-7100 QUINN EMANUEL URQUHART & SULLIVAN, LLP Robert J. Becher (Bar No. 193431) robertbecher@quinnemanuel.com 865 S. Figueroa St., 10th Floor Los Angeles, California 90017 Telephone: (213) 443-3000 Facsimile: (213) 443-3100

UNITED STATES DISTRICT COURT 21 NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION 22 23 24 25 v. RAMBUS INC., Plaintiff, ) ) ) ) ) ) ) ) ) ) Case No. 3:10-cv-05449-RS STMICROELECTRONICS N.V. AND STMICROELECTRONICS, INC.S FIRST AMENDED ANSWER TO COMPLAINT AND COUNTERCLAIMS DEMAND FOR JURY TRIAL

26 STMICROELECTRONICS N.V.; STMICROELECTRONICS INC., 27 Defendants. 28

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1 2 3 4 5

Defendants STMicroelectronics N.V. and STMicroelectronics, Inc. (collectively, STMicro) answer plaintiff Rambus Inc.s Complaint for Patent Infringement (Complaint) as follows: I. THE PARTIES 1. STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them.

6 7 2. 8 place of business at 39, Chemin de Champ des Filles, 1228 Plan-Les-Ouates, Geneva, 9 Switzerland. 10 3. 11 wholly-owned subsidiary of STMicroelectronics N.V., having a place of business at 12 1310 Electronics Dr., Carrollton, Texas 75006. 13 4. 14 judicial district and elsewhere in the United States. Except as so admitted, STMicro 15 denies each and every remaining allegation of this paragraph. 16 5. 17 committed by, on behalf of, and/or for the benefit of STMicro. 18 II. 19 NATURE OF THE ACTION 20 21 22 23 24 25 26 8. 27 U.S.C. 271, and that this Court has subject matter jurisdiction pursuant to 28 U.S.C. 28
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STMicroelectronics N.V. admits that it is a Netherlands corporation with a principal

STMicroelectronics, Inc. admits that it is a Delaware corporation and an indirect,

STMicroelectronics, Inc. admits that it has contacts and transacts business in this

Unless specifically stated otherwise, STMicro denies the acts complained of were

6. 7.

STMicro admits that the Complaint purports to be an action for patent infringement. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro denies each and every remaining allegation of this paragraph. III. JURISDICTION AND VENUE STMicro admits that this action arises under 35 U.S.C. 1 et seq., including 35

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1 2 3 4 5 6 7 8 9 10 A. 11 11. 12 13 12. 14 15 13. 16 17 14. 18 19 15. 20 21 B. 22 16. 23 24 17. 25 26 18. 27 28 10. 9.

1331 and 1338(a). Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. STMicroelectronics, Inc. admits that this Court has personal jurisdiction over it in this action. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. STMicroelectronics, Inc. admits that venue is proper in this Court as to it. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. IV. FACTUAL BACKGROUND Rambus STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them. STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them. STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them. STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them. STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them. Asserted Patents STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them. STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them. STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them.
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1. 19.

Farmwald/Horowitz Patents STMicro admits that U.S. Patent No. 6,034,918 is titled Method of Operating a Memory Having a Variable Data Output Length and a Programmable Register, issued on March 7, 2000, and names Michael Farmwald and Mark Horowitz as inventors. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

20.

STMicro admits that U.S. Patent No. 6,038,195 is titled Synchronous Memory Device Having a Delay Time Register and Method of Operating Same, issued on March 14, 2000, and names Michael Farmwald and Mark Horowitz as inventors. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

21.

STMicro admits that U.S. Patent No. 6,260,097 is titled Method and Apparatus for Controlling a Synchronous Memory Device, issued on July 10, 2001, and names Michael Farmwald and Mark Horowitz as inventors. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

22.

STMicro admits that U.S. Patent No. 6,304,937 is titled Method of Operation of a Memory Controller, issued on October 16, 2001, and names Michael Farmwald and Mark Horowitz as inventors. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

23.

STMicro admits that U.S. Patent No. 6,426,916 is titled Memory Device Having a Variable Data Output Length and a Programmable Register, issued on July 30, 2002, and names Michael Farmwald and Mark Horowitz as inventors. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

24.

STMicro admits that U.S. Patent No. 6,564,281 is titled Synchronous Memory Device Having Automatic Precharge, issued on May 13, 2003, and names Michael Farmwald and Mark Horowitz as inventors. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

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25.

STMicro admits that U.S. Patent No. 6,584,037 is titled Memory Device Which Samples Data After an Amount of Time Expires, issued on June 24, 2003, and names Michael Farmwald and Mark Horowitz as inventors. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

26.

STMicro admits that U.S. Patent No. 6,715,020 is titled Synchronous Integrated Circuit Device, issued on March 30, 2004, and names Michael Farmwald and Mark Horowitz as inventors. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

27.

STMicro admits that U.S. Patent No. 6,751,696 is titled Memory Device Having a Programmable Register, issued on June 15, 2004, and names Michael Farmwald and Mark Horowitz as inventors. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

28.

STMicro admits that U.S. Patent No. 7,209,997 is titled Controller Device and Method for Operating Same, issued on April 24, 2007, and names Michael Farmwald and Mark Horowitz as inventors. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

29.

STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them.

30.

STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them.

2. 31.

Barth Patents STMicro admits that U.S. Patent No. 6,470,405 is titled Protocol for Communication with Dynamic Memory, issued on October 22, 2002, and names Richard M. Barth as inventor. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

32.

STMicro admits that U.S. Patent No. 6,591,353 is titled Protocol for Communication with Dynamic Memory, issued on July 8, 2003, and names Richard M. Barth as

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 40. 39. 38. 37. 3. 36. 35. 34. 33.

inventor. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. STMicro admits that U.S. Patent No. 7,287,109 is titled Method of Controlling a Memory Device Having a Memory Core, issued on October 23, 2007, and names Richard M. Barth as inventor. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them. STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them. Dally Patents STMicro admits that U.S. Patent No. 6,542,555 is titled Digital Transmitter with Equalization, issued on April 1, 2003, and names William J. Dally as inventor. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. STMicro admits that U.S. Patent No. 7,099,404 is titled Digital Transmitter, issued on August 29, 2006, and names William J. Dally as inventor. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. STMicro admits that U.S. Patent No. 7,580,474 is titled Digital Transmitter, issued on August 25, 2009, and names William J. Dally as inventor. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. STMicro admits that U.S. Patent No. 7,602,857 is titled Digital Transmitter, issued on October 13, 2009, and names William J. Dally as inventor. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. STMicro admits that U.S. Patent No. 7,602,858 is titled Digital Transmitter, issued on October 13, 2009, and names William J. Dally as inventor. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 C.

41.

STMicro admits that U.S. Patent No. 7,715,494 is titled Digital Transmitter, issued on May 11, 2010, and names William J. Dally as inventor. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph.

42.

STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them.

43.

STMicro lacks sufficient knowledge or information to form a belief as to the truth of the allegations of this paragraph and, on that basis, denies them.

STMicros Acts of Infringement 44. STMicroelectronics, Inc. admits that certain STMicro products include memory controllers that may be used with DDR-and/or LPDDR memory. STMicroelectronics, Inc. further admits that certain STMicro products are imported into the United States by STMicroelectronics, Inc. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph 45. STMicroelectronics, Inc. admits that certain STMicro products include interfaces. STMicroelectronics, Inc. further admits that certain STMicro products containing interfaces are imported into the United States by STMicroelectronics, Inc. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. 46. STMicro admits that Rambus refers to certain products collectively as the Accused Products. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. 47. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. 48. STMicroelectronics, Inc. admits that it had contact with Rambus in 2008 and 2009 regarding certain Rambus patents. STMicroelectronics, Inc. further admits that Rambus informed STMicroelectronics, Inc. as to the existence of the patents referenced in this paragraph on or about the date referenced in this paragraph. Except

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 57. 56. 55. 54. 53. 52. 51. 49. 50.

as so admitted, STMicro denies each and every remaining allegation of this paragraph. STMicro denies each and every allegation of this paragraph. STMicroelectronics, Inc. admits that Rambus provided certain nonpublic information to STMicroelectronics, Inc. regarding the patents referenced in this paragraph on or about the date referenced in this paragraph. Except as so admitted, STMicro denies each and every remaining allegation of this paragraph. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro denies each and every remaining allegation of this paragraph. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro denies each and every remaining allegation of this paragraph. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro denies each and every remaining allegation of this paragraph. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. V. CLAIMS FOR RELIEF COUNT I (Infringement of U.S. Patent No. 6,034,918 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph.
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 65. 64. 63. 62. 61. 60. 59. 58.

COUNT II (Infringement of U.S. Patent No. 6,038,195 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT III (Infringement of U.S. Patent No. 6,260,097 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT IV (Infringement of U.S. Patent No. 6,304,937 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT V (Infringement of U.S. Patent No. 6,426,916 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph.
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 73. 72. 71. 70. 69. 68. 67. 66.

COUNT VI (Infringement of U.S. Patent No. 6,564,281 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT VII (Infringement of U.S. Patent No. 6,584,037 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT VIII (Infringement of U.S. Patent No. 6,715,020 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT IX (Infringement of U.S. Patent No. 6,751,696 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph.
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 81. 80. 79. 78. 77. 76. 75. 74.

COUNT X (Infringement of U.S. Patent No. 7,029,997 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT XI (Infringement of U.S. Patent No. 6,470,405 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT XII (Infringement of U.S. Patent No. 6,591,353 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT XIII (Infringement of U.S. Patent No. 7,287,109 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph.
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 89. 88. 87. 86. 85. 84. 83. 82.

COUNT XIV (Infringement of U.S. Patent No. 6,542,555 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT XV (Infringement of U.S. Patent No. 7,099,404 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT XVI (Infringement of U.S. Patent No. 7,580,474 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT XVII (Infringement of U.S. Patent No. 7,602,857 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph.
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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 93. 92. 91. 90.

COUNT XVIII (Infringement of U.S. Patent No. 7,602,858 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. COUNT XIX (Infringement of U.S. Patent No. 7,715,494 under 35 U.S.C. 271, et seq.) STMicro incorporates its responses to the paragraphs above as though fully set forth herein. To the extent that the allegations of this paragraph are legal conclusions, no answer is required. STMicro otherwise denies each and every remaining allegation of this paragraph. VI. PRAYER FOR RELIEF STMicro denies the allegations of this paragraph and further denies that Rambus is entitled any relief whatsoever in this action, either as requested in its Prayer for Relief or otherwise. VII. JURY DEMAND This paragraph contains no allegations. AFFIRMATIVE DEFENSES FIRST AFFIRMATIVE DEFENSE (Lack of Standing)

26 1. 27 Patent Nos. 6,542,555; 7,099,404; 7,580,474; 7,602,857; 7,602,858; and 7,715,494 28

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Upon information and belief, Rambus does not hold any ownership interest in U.S.

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6. 5. 4. 3. 2.

and, therefore, lacks standing to assert any claim arising from these patents against STMicro. SECOND AFFIRMATIVE DEFENSE (Failure to State a Claim) The Complaint fails to state a claim upon which relief may be granted. THIRD AFFIRMATIVE DEFENSE (Non-Infringement of the Asserted Patents) STMicro does not infringe and has not infringed (either directly, contributorily, by inducement, jointly, literally, or under the doctrine of equivalents) any valid and/or enforceable claim of U.S. Patent Nos. 6,034,918; 6,038,195; 6,260,097; 6,304,937; 6,426,916; 6,470,405; 6,542,555; 6,564,281; 6,584,037; 6,591,353; 6,715,020; 6,751,696; 7,099,404; 7,209,997; 7,287,109; 7,580,474; 7,602,857; 7,602,858; or 7,715,494 (collectively, Asserted Patents). FOURTH AFFIRMATIVE DEFENSE (Invalidity of the Asserted Patents) One or more claims of the Asserted Patents are invalid or void for failing to comply with one or more of the conditions for patentability set forth in Part II of Title 35 of the United States Code, including, but not limited to, 101, 102, 103, and 112. FIFTH AFFIRMATIVE DEFENSE (Failure to Mark) Rambuss claims for relief are barred, in whole or in part, by failure of Rambus and/or its licensees to comply with the marking and/or notice provisions of 35 U.S.C. 287. SIXTH AFFIRMATIVE DEFENSE (Unenforceability Estoppel, Acquiescence, and Waiver) Rambus is barred in whole or in part by the doctrines of estoppel, acquiescence, and waiver from enforcing the Asserted Patents against STMicro based on Rambuss

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 11. 10. 9. 8.

participation in, interaction with, or communications with certain standards setting organizations or bodies. SEVENTH AFFIRMATIVE DEFENSE (Unenforceability Patent Exhaustion, Patent Misuse, and First Sale Doctrine) 7. Rambus is barred in whole or in part by the doctrines of patent exhaustion, patent misuse, and/or the first sale doctrine from enforcing the Asserted Patents against STMicro because, upon information and belief, Rambuss licensing program for the Accused Products is an attempt to secure double royalties and extend the physical and temporal scope of the patent grant with anticompetitive effect. EIGHTH AFFIRMATIVE DEFENSE (Unenforceability Inequitable Conduct) Upon information and belief, at least U.S. Patent Nos. 6,542,555; 7,099,404; 7,580,474; 7,602,857; 7,602,858; and 7,715,494 are invalid and unenforceable due to the patentees inequitable conduct in their procurement. As described below, the patentee violated his or her duty of candor and good faith by knowingly, intentionally, and with the intent to deceive, failing to disclose to the United States Patent & Trademark Office (PTO) the co-inventor(s) of U.S. Patent Nos. 6,542,555; 7,099,404; 7,580,474; 7,602,857; 7,602,858; and 7,715,494. William Dally (Dally) and John Poulton (Poulton) co-authored a paper titled Transmitter Equalization for 4Gb/s Signaling, which was published in or around August 1996. Dally and Poulton co-authored a paper titled Transmitter Equalization for 4Gb/s Signaling, which was published in or around January 1997. Upon information and belief, the papers referenced in the previous two paragraphs were the foundation for Provisional Application No. 60/050,098, which was filed on June 20, 1997, Patent Application No. 08/880,980, which was filed on June 23, 1997 and Patent Application No. 08/882,252, which was filed on June 25, 1997. Provisional Application No. 60/050,098, Patent Application No. 08/880,980 and
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1 2 3 4 5 6 7 8 9 10 11 12 13. 12.

Patent Application No. 08/882,252 were the basis for U.S. Patent Nos. 6,542,555; 7,099,404; 7,580,474; 7,602,857; 7,602,858; and 7,715,494. Upon information and belief, the patentee violated his or her duty of candor and good faith in dealing with the PTO by knowingly, intentionally, and with deceptive intent, failing to disclose the identity, or falsely minimizing the contribution, of at least Poulton as a co-inventor of Provisional Application No. 60/050,098, Patent Application No. 08/880,980 and Patent Application No. 08/882,252. This deceptive and intentional withholding of material information regarding the inventorship of U.S. Patent Nos. 6,542,555; 7,099,404; 7,580,474; 7,602,857; 7,602,858; and 7,715,494 constitutes inequitable conduct, thereby rendering these patents invalid and unenforceable. NINTH AFFIRMATIVE DEFENSE

13 (Unclean Hands) 14 14. 15 6,034,918; 6,038,195; 6,426,916; 6,304,937; 6,260,097; 6,564,281; 6,584,037; 16 6,715,020; 6,751,696; 7,209,997; 6,470,405; 6,591,353; and 7,287,109 against 17 STMicro is barred by the doctrine of unclean hands due to Rambuss bad faith 18 destruction of documents, as described below, that would have been relevant to 19 STMicros defenses in this action. 20 15. 21 or more claims of the Asserted Patents. 22 16. 23 known as the Joint Electron Device Engineering Counsel (JEDEC), of which, upon 24 information and belief, Rambus was a member (or in which it was otherwise a 25 participant) from at least 1991 to until at least 1996. 26 17. 27 6,426,916; 6,304,937; 6,260,097; 6,564,281; 6,584,037; 6,715,020; 6,751,696; and 28
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Upon information and belief, Rambuss assertion of at least U.S. Patent Nos.

The scope of this action includes SDRAM products that Rambus alleges infringe one

SDRAM technology was at least in part developed by a standard-setting organization

Various of the Asserted Patents, including U.S. Patent Nos. 6,034,918; 6,038,195;

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 21. 20. 19. 18.

7,209,997 claim an earliest effective filing date in 1990. Other Asserted Patents, including the 6,470,405; 6,591,353; and 7,287,109, claim earliest effective filing dates in either 1995 or 1997. Upon information and belief, as early as 1996, Rambus was considering industrywide adoption of its DRAM technology (referred to as Rambus DRAM or RDRAM). Upon information and belief, in an aggressive approach to enforce its intellectual property against, for example, entities considering or using competing DRAM technologies (e.g., SDRAM), Rambus (i) endeavored to create a patent minefield by extending claims in its patents to cover SDRAM, DDR SDRAM, and other potentially competing memory types and (ii) as of early 1998, anticipated and commenced plans for litigation in order to enforce its intellectual property. Upon information and belief, based upon Rambuss goals and under the circumstances Rambus found itself in regarding the use of competing memory technologies by potential licensees, it was at least reasonably foreseeable and at most inevitable that litigation would take place between Rambus and one or more of the potential licensees. Upon information and belief, the Rambus litigation strategy implemented in 1998 set forth a document retention policy under which millions of pages of documents were destroyed during so-called shred days, that, upon information and belief, occurred in at least 1998, 1999, and 2000. The purpose of this policy was to destroy evidence in Rambuss hands, which Rambus was aware could be used by manufacturers of SDRAM to establish defenses, or claims or elements of defenses or claims, including violation of the antitrust laws; estoppel; fraud; prosecution laches; inadequate written description; inequitable conduct; equitable estoppel; lack of or improper inventorship; invalidity over prior art; obviousness; unfair business practices; reliance; and prejudice.

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1

22.

More specifically, upon information and belief, in expediting Rambuss document retention policy at a time when it was at least reasonably foreseeable to Rambus that litigation would commence on one or more of its memory patents, Rambuss in-house counsel as well as its outside counsel under direction of Rambus systematically purged Rambuss patent files. Upon information and belief, the destroyed documents included, for example, documents from Rambuss patent files, documents connected with licensing negotiations between Rambus and third parties regarding Rambuss patents and/or DRAM technology, documents connected with Rambuss involvement with and/or participation in JEDEC, and documents questioning the patentability of Rambuss purported inventions.

23.

Various courts that have adjudicated litigation involving Rambus and its memory patents have found that Rambus engaged in the spoliation of evidence. In Rambus v. Infineon, the United States District Court for the Eastern District of Virginia stated that: It is settled that Rambus instituted a document destruction policy and thereby intentionally destroyed documents. It is also settled that the destroyed documents covered all of the major categories of documents generated in the ordinary course of Rambuss business. Through depositions, Infineon has established that Rambuss document purging program resulted in the destruction of evidence relevant to this action, including evidence related to: the prosecution of the patents-in-suit, Rambuss participation in JEDEC, Rambuss prosecution of JEDEC-related patents, the relationship of Rambuss patent applications and pending claims to JEDEC standards, presentations to Rambuss Board of Directors regarding intellectual property, potentially damaging or invalidating prior art, and Rambuss SDRAM licensing negotiations.

Rambus, Inc. v. Infineon Technologies AG, et al., 222 F.R.D. 280, 290 (E.D. Va. 2004) (citations omitted).1 24. In Samsung Electronics Co., Ltd. v. Rambus Inc., the United States District Court for the Eastern District of Virginia found that [t]he record proves that Rambus engaged It is noted that in connection with the Eastern District of Virginia Rambus v. Infineon litigation, the United States Court of Appeals for the Federal Circuit reversed in part an earlier judgment in that litigation. However, on remand, the district court noted that Rambus did not appeal the findings of litigation misconduct, including the finding that it had intentionally destroyed relevant documents in anticipation of litigation. See id. at p. 286.
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in pervasive document destruction in 1998 and 1999 while it anticipated litigation, or reasonably should have anticipated litigation, and in 2000 while it was actually engaged in litigation. July 18, 2006 Memorandum Opinion in Samsung Electronics Co., Ltd. v. Rambus Inc. (E.D. Va.), Civ. No. 3:05cv406, p. 80. In Micron Technology, Inc. v. Rambus, Inc., the United States District Court for the District of Delaware found that litigation concerning Rambuss intellectual property was reasonably foreseeable [by Rambus] no later than December 1998 and that a duty to preserve potentially relevant evidence arose in December 1998 and any documents purged from that time forward are deemed to have been intentionally destroyed, i.e., destroyed in bad faith. January 9, 2009 Opinion in Micron Technology, Inc. v. Rambus, Inc. (D. Del.), Civ. No. 00-702-SLR, pp. 31-32. The Federal Circuit affirmed the finding that Rambus destroyed documents before the second shred day in violation of a duty to preserve them. Micron Technology, Inc. v. Rambus, Inc., 645 F.3d 1316, 1322 (Fed. Cir. 2011). The District Court subsequently concluded on January 2, 2013 that Rambus engaged in bad faith spoliation of evidence that prejudiced Micron Technology, Inc. and Micron Semiconductor Products, Inc. This resulted in the Court ruling the twelve Rambus patents asserted in that litigation as being unenforceable against Micron Technology, Inc. and Micron Semiconductor Products, Inc. Upon information and belief, the adjudged mass spoliation of evidence by Rambus included the destruction of non-public documents that would have been relevant and/or material to STMicros defenses in this action, including at least defenses asserting: unenforceability due to patent misuse and violation of antitrust and unfair competition laws; equitable estoppel; and inequitable conduct. Moreover, upon information and belief, due to the (a) relatedness among the timing of the Asserted Patents, the accused technologies in this action, and other Rambus litigations in which spoliation has been found; and (b) the period of time associated with Rambuss destruction of documents, such as those documents connected with
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Rambuss prosecution of JEDEC-related patents, Rambuss SDRAM licensing negotiations, and the relationship of Rambuss patent applications and pending claims to JEDEC standards, Rambus has destroyed documents that would have been relevant to the validity, enforceability, and/or interpretation of the Asserted Patents. Rambus, therefore, comes into this Court with unclean hands and, at a minimum, is barred from enforcing at least the U.S. Patent Nos. 6,034,918; 6,038,195; 6,426,916; 6,304,937; 6,260,097; 6,564,281; 6,584,037; 6,715,020; 6,751,696; 7,209,997; 6,470,405; 6,591,353; and 7,287,109. TENTH AFFIRMATIVE DEFENSE (Prosecution History Estoppel) By reason of admissions, arguments, and/or amendments made by or on behalf of the applicants during the proceedings in the U.S. Patent & Trademark Office during prosecution of each of the applications that resulted in the issuance of the Asserted Patents, Rambus is estopped, in whole or in part, under the doctrine of prosecution history estoppel from construing any claim of the Asserted Patents to include any STMicro product, process, or method ELEVENTH AFFIRMATIVE DEFENSE (Prosecution Laches) Rambus is barred in whole or in part from asserting at least U.S. Patent Nos. 6,034,918; 6,038,195; 6,260,097; 6,304,937; 6,426,916; 6,564,281; 6,584,037; 6,715,020; 6,751,696; 7,209,997; 6,470,405; 6,591,353; 7,602,857; 7,602,858; and 7,715,494 on the ground of prosecution laches because these patents were granted to the patentee(s) after an unreasonable and unexplained delay in prosecution. TWELFTH AFFIRMATIVE DEFENSE (License) Upon information and belief, through licenses granted by Rambus, STMicro has rights to one or more of the Asserted Patents and/or is licensed to make, use, sell,

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 33. 32.

and/or offer for sale within the United States and/or import into the United States the products accused of infringement by Rambus. THIRTEENTH AFFIRMATIVE DEFENSE (Collateral Estoppel) Rambus is estopped from asserting at least U.S. Patent Nos. 6,034,918; 6,038,195; 6,260,097; 6,304,937; 6,426,916; 6,564,281; 6,584,037; 6,715,020; 6,751,696; and 7,209,997 6,470,405; 6,591,353; 7,602,857; 7,602,858; and 7,715,494, against STMicro on the ground of collateral estoppel due the existence of prior decisions or judgments entered in, inter alia, Rambus Inc. v. Infineon Technologies A.G., et al., U.S. District Court for the Eastern District of Virginia, Civil Action No. 3:00-cv00524; Samsung Electronics Co., Ltd. v. Rambus Inc., U.S. District Court for the Eastern District of Virginia, Civil Action No. 3:05-cv-00406; and Micron Technology, Inc. v. Rambus Inc., U.S. District Court for the District of Delaware, Civil Action No. 1:00-cv-00792. FOURTEENTH AFFIRMATIVE DEFENSE (Laches) The relief sought by Rambus is barred in whole or in part by the doctrine of laches, specifically Rambuss unreasonable and unexplained delay in bringing an action against STMicro alleging infringement of U.S. Patent Nos. 6,470,405, 6,591,353, and 7,287,109. Because of a license agreement between Rambus and STMicros predecessor to the memory controller technology called out in the Asserted Patents, Rambus was aware at least as early as December 1996, the effective date of the license, that STMicro had the right to make and sell products utilizing memory controller technology. Despite this knowledge, Rambus delayed for 14 years to claim patent infringement. STMicro has been prejudiced as a result of this delay. FIFTEENTH AFFIRMATIVE DEFENSE (Limitation on Damages and Costs)

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34.

Rambuss claim for relief and prayer for damages are limited by 35 U.S.C. 286 and 287. Rambuss recovery of costs is limited under 35 U.S.C. 288. COUNTERCLAIMS STMicro alleges and counterclaims against Rambus as follows: THE PARTIES

1.

STMicroelectronics N.V. is a Netherlands corporation with a principal place of business at 39, Chemin de Champ des Filles, 1228 Plan-Les-Ouates, Geneva, Switzerland.

2.

STMicroelectronics, Inc. is a Delaware corporation and an indirect, wholly-owned subsidiary of STMicroelectronics N.V., having a place of business at 1310 Electronics Dr., Carrollton, Texas 75006.

3.

Upon information and belief, Rambus is a Delaware corporation with its principal place of business at 1050 Enterprise Way, Sunnyvale, California 94089. JURISDICTION AND VENUE

4.

STMicros counterclaims arise under 35 U.S.C. 1, et seq., and seek relief for which this Court has subject matter jurisdiction pursuant to 28 U.S.C. 1331, 1338, 2201, and 2202.

5.

Rambus is a resident of the State of California and is, therefore, subject to personal jurisdiction in this District. Rambus has furthermore consented to personal jurisdiction by commencing its action against STMicro for patent infringement in this judicial district,

6.

Venue is proper in this judicial district under 28 U.S.C. 1400. NATURE OF THE COUNTERCLAIMS

7.

STMicro counterclaims against Rambus for declaratory judgment pursuant to 28 U.S.C. 2201 and 2202, and in compliance with Federal Rule of Civil Procedure 13. FIRST COUNTERCLAIM (Declaratory Judgment of Non-Infringement of the Asserted Patents)
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8.

STMicro realleges and incorporates by reference the allegations of Paragraphs 1 through 7 of these Counterclaims as if fully set forth herein.

9.

An actual and justiciable controversy exists between STMicro and Rambus with respect to the Asserted Patents because Rambus has brought this action against STMicro alleging that STMicro infringes these patents, which allegations STMicro denies. Absent a declaration of non-infringement, Rambus will continue to wrongfully assert the Asserted Patents against STMicro and thereby cause STMicro irreparable injury and damage.

10.

STMicro has not infringed any of the Asserted Patents directly, indirectly, contributorily, by inducement, literally or under the doctrine of equivalents, willfully or otherwise, and is entitled to a declaration to that effect.

11.

This is an exceptional case entitling STMicro to an award of costs and attorneys fees incurred in connection with this action pursuant to 35 U.S.C. 285. SECOND COUNTERCLAIM (Declaratory Judgment of Invalidity of the Asserted Patents)

12.

STMicro realleges and incorporates by reference the allegations of Paragraphs 1 through 11 of these Counterclaims as if fully set forth herein.

13.

An actual and justiciable controversy exists between STMicro and Rambus with respect to the Asserted Patents because Rambus has brought this action against STMicro alleging that STMicro infringes these patents, which allegations STMicro denies. Absent a declaration of invalidity, Rambus will continue to wrongfully assert the Asserted Patents against STMicro and thereby cause STMicro irreparable injury and damage.

14.

The Asserted Patents are each invalid for failure to meet the Conditions of Patentability of Title 35, United States Code, 102 and 103 because the alleged inventions thereof are taught by, suggested by, and/or are obvious in view of, the prior art, and no claim of the patents in suit against STMicro can be validly construed to cover any STMicro product, process, or method.
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15.

The Asserted Patents each are invalid for failure to meet the Specification requirements of Title 35, United States Code, 112 because the specifications thereof do not contain written descriptions of the alleged inventions and of the manner and process of making and using them in the form required by 112 and do not conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention, and no claim of the patents in suit against STMicro can be validly construed to cover any STMicro product, process, or method.

16.

This is an exceptional case entitling STMicro to an award of costs and attorneys fees incurred in connection with this action pursuant to 35 U.S.C. 285. THIRD COUNTERCLAIM (Declaratory Judgment of Unenforceability of the Asserted Patents)

17.

STMicro realleges and incorporates by reference the allegations of Paragraphs 1 through 16 of these Counterclaims as if fully set forth herein.

18.

An actual and justiciable controversy exists between STMicro and Rambus with respect to the Asserted Patents because Rambus has brought this action against STMicro alleging that STMicro infringes these patents, which allegations STMicro denies. Absent a declaration of unenforceability, Rambus will continue to wrongfully assert the Asserted Patents against STMicro and thereby cause STMicro irreparable injury and damage.

19.

The Asserted Patents are each unenforceable at least by reason of the acts and omissions described above in STMicros Affirmative Defenses to Rambuss Complaint and STMicro is entitled to a declaration to that effect.

20.

This is an exceptional case entitling STMicro to an award of costs and attorneys fees incurred in connection with this action pursuant to 35 U.S.C. 285. PRAYER FOR RELIEF

WHEREFORE, STMicro prays for judgment as follows: A. That Rambus take nothing by way of its Complaint;
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B. prejudice; C.

That judgment be entered in favor of STMicro and the Complaint be dismissed with

That judgment be entered declaring that STMicro has not directly, indirectly,

contributorily, by inducement, literally or under the doctrine of equivalents, willfully or otherwise, infringed any claim of U.S. Patent Nos. 6,034,918; 6,038,195; 6,260,097; 6,304,937; 6,426,916; 6,470,405; 6,542,555; 6,564,281; 6,584,037; 6,591,353; 6,715,020; 6,751,696; 7,099,404; 7,209,997; 7,287,109; 7,580,474; 7,602,857; 7,602,858; or 7,715,494; D. That judgment be entered declaring the claims of U.S. Patent Nos. 6,034,918;

6,038,195; 6,260,097; 6,304,937; 6,426,916; 6,470,405; 6,542,555; 6,564,281; 6,584,037; 6,591,353; 6,715,020; 6,751,696; 7,099,404; 7,209,997; 7,287,109; 7,580,474; 7,602,857; 7,602,858; and 7,715,494 invalid, void, and/or unenforceable; E. That judgment be entered declaring that Rambus is not entitled to damages for any

alleged infringement, alleged contributory infringement, or alleged induced infringement any claim of U.S. Patent Nos. 6,034,918; 6,038,195; 6,260,097; 6,304,937; 6,426,916; 6,470,405; 6,542,555; 6,564,281; 6,584,037; 6,591,353; 6,715,020; 6,751,696; 7,099,404; 7,209,997; 7,287,109; 7,580,474; 7,602,857; 7,602,858; or 7,715,494; F. That judgment be entered declaring that Rambus is not entitled to injunctive relief

against STMicro, its officers, employees, agents, privies, successors, assigns, and affiliates for any alleged infringement, or alleged contributory or induced infringement of any claim of U.S. Patent Nos. 6,034,918; 6,038,195; 6,260,097; 6,304,937; 6,426,916; 6,470,405; 6,542,555; 6,564,281; 6,584,037; 6,591,353; 6,715,020; 6,751,696; 7,099,404; 7,209,997; 7,287,109; 7,580,474; 7,602,857; 7,602,858; or 7,715,494; G. H. and I. appropriate. That the Court award STMicro such other and further relief as the Court may deem That this be declared an exceptional case under 35 U.S.C. 285; That judgment be entered awarding STMicro its reasonable attorneys fees and costs;

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DEMAND FOR JURY TRIAL STMicro demands a trial by jury on all issues triable as of right by a jury in this action. Dated: March 26, 2013 K&L GATES LLP

By /s/ Michael J. Bettinger Michael J. Bettinger Elaine Y. Chow Curt Holbreich Stephen M. Everett Attorneys for Defendants & Counterclaimants STMICROELECTRONICS N.V. and STMICROELECTRONICS, INC.

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