Case 1:00-cv-00792-SLR Document 1147 Filed 08/24/12 Page 1 of 3 PageID #: 11691

MORRIS, NICHOLS, ARSHT

&

TUNNELL

LLP

1201 N ORTH M ARKET S TREET P.O. B OX 1347 W ILMINGTON , D ELAWARE 19899-1347 (302) 658-9200 (302) 658-3989 FAX
MARY B. GRAHAM (302) 351-9199 mgraham@mnat.com

August 24, 2012

BY E-FILING The Honorable Sue L. Robinson U.S. District Court for the District of Delaware J. Caleb Boggs Federal Building 844 N. King Street, Room 4124, Unit 31 Wilmington, DE 19801-3568 Re: Dear Judge Robinson: I write in response to Mr. Cottrell’s letter dated August 20, 2012 regarding the International Trade Commission’s opinion in Investigation No. 337-TA-753. (D.I. 1146.) Among other rulings, the Commission found all of the asserted Barth patent claims to be invalid. The Commission also affirmed, over the opposition of the ITC staff, Judge Essex’s determination of unenforceability for the asserted Barth patents under the unclean hands doctrine. The Commission’s opinion adds little, if anything, to Judge Essex’s opinion, which is unpersuasive for reasons discussed in my letter dated March 28, 2012 (D.I. 1137).1 Mr. Cottrell noted that the Commission affirmed Judge Essex’s determination of prejudice and imposition of the maximum sanction of unenforceability. However, the Commission’s analysis on each of these issues is deeply flawed. First, in addressing prejudice, rather than analyzing Respondents’ defenses to determine whether and to what extent their “substantial rights” were “affecte[d],” Micron Tech., Inc. v. Rambus Inc., 645 F.3d 1311, 1328 (Fed. Cir. 2011) (Micron II), the Commission incorrectly put the burden on Rambus to demonstrate that “the materials destroyed did not include prior art” and other prior-art-related documents, Op. at 55. But the destruction of
1

Micron Technologies, Inc. v. Rambus Inc. C.A. No. 00-792 (SLR)

Rambus has also discussed the errors in Judge Essex’s opinions in more detail in D.I. 1138-1, at 56-95 (the unclean hands section of Rambus’s Petition for Review of the Initial Determination by Judge Essex).

Case 1:00-cv-00792-SLR Document 1147 Filed 08/24/12 Page 2 of 3 PageID #: 11692 The Honorable Sue L. Robinson August 24, 2012 Page 2

relevant documents, assuming it occurred, shows only spoliation, not material prejudice. The only two defenses the Commission addressed in discussing prejudice were anticipation and inequitable conduct in connection with a draft SyncLink specification produced by Rambus. Op. at 54-55. Both failed independently on the merits.2 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,” id., 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 prior art because it was not publicly available. Op. at 25-27. The Commission further found, under the 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) (Micron I) (no prejudice to invalidity defenses because “prior art references (by definition) must be publicly available”); Ring Plus, Inc. v. Cingular Wireless, Inc., 614 F.3d 1354, 1361 (Fed. Cir. 2010) (“the materiality standard [for inequitable conduct] is an objective one”). 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. Micron II, 645 F.3d at 1328-29 (citation omitted). The Commission did not consider the fact that Respondents’ supposedly prejudiced defenses contain essential prior art elements that Respondents could not prove regardless of what Rambus did. Nor did the Commission give adequate consideration to the fact that Rambus adopted an industry-standard, content-neutral policy under the advice of counsel years before the asserted Barth patents issued. The Commission then rejected without explanation the lesser sanctions proposed by the ITC staff and Rambus, even though Micron II requires “the least onerous sanction corresponding to the willfulness of the destructive act and the prejudice suffered by the victim,” id. at 1329 (citation omitted). 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, in any event, preserved and produced the relevant documents for Micron’s defenses, including all prior art. See D.I. 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 no sanction is warranted, terminating sanctions would be clearly inappropriate under the Micron II standard. D.I. 1130 at 18-25; D.I. 1124 at 25-30.

2

The Commission found the asserted Barth claims anticipated and rendered obvious by other prior art. Op. at 24-32.

Case 1:00-cv-00792-SLR Document 1147 Filed 08/24/12 Page 3 of 3 PageID #: 11693 The Honorable Sue L. Robinson August 24, 2012 Page 3

Respectfully,

/s/ Mary B. Graham
Mary B. Graham (#2256) MBG/dam cc: Frederick L. Cottrell, III, Esq. (by e-mail) Matthew D. Powers, Esq.(by e-mail) Gregory P. Stone, Esq.(by e-mail) Charles W. Douglas, Esq. (by e-mail)
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