Case No. 3:10cv5447 RS
O O L
M I T H
E N N I G A N
R O F E S S I O N A L
O R P O R A T I O N
T T O R N E Y S
In addition, rather than to attempt to ameliorate the prejudice it has caused, ST has used its own delay at every turn to gain a further unfair advantage and make what little discoveryRambus has been afforded as onerous as possible (
, §§ II.1, II.3 and FN. 1, below).
And now that discovery has come to a close, ST is attempting to open the floodgates of informationon the NeXTBus chip from the witnesses to which it cites, both of whom are represented by ST’sown law firm in this case. ST’s year-long delay and subsequent attempts to leverage that delayare the quintessential abuses that timely invalidity contentions are designed to prevent. Rambusrespectfully submits that ST’s Motion should be denied accordingly.
ST’s Motion is unprecedented. ST is unable to cite a single case where invaliditycontentions were allowed to be amended this late in the case – even where the movant was ableto prove diligence, which is not the case here. ST proposes a four-factor test for showing good cause based on
Yodlee, Inc. v. CashEdge, Inc.
, 2007 WL 1454259, *2-3 (N.D. Cal. May 17,2007). In fact,
proves only how egregious ST’s actions have been in contrast to a diligentamendment, as exhibited in that case. As an initial matter, the
case involved: (i) acompletely new prior art reference that was (ii) recently found after continuous and diligentsearching (iii) in a notoriously difficult subject area to search for prior art, and (iv) disclosed immediately when found and (v) proposed
before the discovery cutoff.
, 2007 WL1454259, at *2-3 (noting, among other factors, that prejudice is minimized because “there isample time left to conduct discovery.”). None of that is true here.Further, the
court notes that each of the four considerations ST advances weighsheavily in favor of the movant. ST, on the other hand, does not address two out of the four
For example, rather than make deposing the new witnesses as efficient as possible, ST forced Rambus to track down and subpoena Kevin Grundy at his residence. Rambus asked STrepeatedly whether Mr. Grundy was represented and if ST could accept service on his behalf.
, Ex. A to the Declaration of Ramzi Khazen in Support of Rambus’s Response to ST’sMotion for Leave to Supplement Preliminary Invalidity Contentions (hereinafter “KhazenDecl.”). Knowing that time was running out, ST refused to answer. ST also refused to statewhere Mr. Grundy could be located and actually failed to provide this information in the initialdisclosures even though it was known to ST’s lawyers. Rambus came to find out after trackingdown and serving Mr. Grundy at his residence that he had been represented by ST’s lawyers,and none of this additional effort was necessary.
Case3:10-cv-05449-RS Document167 Filed05/09/13 Page3 of 9