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[Counsel Listed On Signature Page]

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

RAMBUS INC., Plaintiff, v. MICRON TECHNOLOGY, INC. and MICRON SEMICONDUCTOR PRODUCTS, INC., Defendants.

Case No. C 06-00244 RMW MICRON’S MOTION FOR SUMMARY JUDGMENT OF UNENFORCEABILITY BASED ON COLLATERAL ESTOPPEL

Hearing Date: Time: Courtroom: Judge:

January 30, 2009 2:00 pm 6, 4th Floor Ronald M. Whyte

MICRON’S MOTION FOR SUMMARY JUDGMENT OF UNENFORCEABILITY BASED ON COLLATERAL ESTOPPEL

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TABLE OF CONTENTS Page I. INTRODUCTION ....................................................................................................................... 1 II. STATEMENT OF FACTS......................................................................................................... 3 A. The Delaware And ‘244 Actions Are Closely Related ........................................... 3 1. 2. 3. Conduct Issues ............................................................................................ 3 Rambus’s Unclean Hands And Spoliation Of Evidence............................. 4 Patent Issues ................................................................................................ 5

Judge Robinson’s Ruling That Rambus Engaged In Bad-Faith Spoliation That Prejudiced Micron........................................................................................... 6 Judge Robinson’s Findings And Conclusions Must Be Given Full Collateral Estoppel Effect In This Action............................................................... 9 1. 2. Rambus Had A Full And Fair Opportunity To Litigate Unclean Hands And Spoliation ............................................................................... 10 The Unclean Hands And Spoliation Issues Were Actually Litigated In Delaware ............................................................................................... 10 Judge Robinson’s Ruling Is Final For Purposes Of Collateral Estoppel..................................................................................................... 14 Rambus Is A Party Both Here And In The Delaware Action ................... 15

III. MICRON IS ENTITLED TO SUMMARY JUDGMENT ....................................................... 9

Based On Judge Robinson’s Findings And Conclusions, Rambus’s Patents In This Action Must Be Found Unenforceable Against Micron........................... 15 Rambus’s Arguments Against Collateral Estoppel Are Baseless ......................... 17 1. Because There Is Mutuality Of Parties, The Application Of Collateral Estoppel Here Is Not Discretionary.......................................... 18 The Actions Do Not Need To Be Identical For Collateral Estoppel To Apply ................................................................................................... 19 The Application Of Collateral Estoppel Does Not Hinge On Litigation Misconduct ............................................................................... 20 This Court Cannot Second-Guess Judge Robinson’s Ruling.................... 21

IV. CONCLUSION....................................................................................................................... 22

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TABLE OF AUTHORITIES Page CASES

Appling v. State Farm Mutual Automobile Insurance Co., 340 F.3d 769 (9th Cir. 2003)....................................................................................... 18 Aptix Corp. v. Quickturn Design Sys., 269 F.3d 1369 (Fed. Cir. 2001)................................................................................... 20 Arkla, Inc. v. United States, 37 F.3d 621 (Fed. Cir. 1994)....................................................................................... 21 Bautista v. Park West Gallery, 2008 WL 5210662 (C.D. Cal. Dec. 11, 2008) ...................................................... 10, 15 Bio-Technology Gen. Corp. v. Genentech, Inc., 80 F.3d 1553 (Fed. Cir. 1996)..................................................................................... 20 Blonder-Tongue Laboratories, Inc. v. University of Ill. Foundation, 402 U.S. 313 (1971) .................................................................................................... 19 Compare Schmid v. Milwaukee Electric Tool Corp., 13 F.3d 76 (3d Cir. 1994)............................................................................................ 12 Cygnus Telecom. Tech., LLC v. America Intern. Telephonics, LLC, 569 F. Supp. 2d 1035 (N.D. Cal. 2008) ................................................................ 16, 21 Hamilton v. Signature Flight Support Corp., 2005 WL 3481423 (N.D. Cal. Dec. 20, 2005) ............................................................ 12 Hynix Semiconductor Inc. v. Rambus Inc., 2006 WL 565893 (N.D. Cal. Jan. 5, 2006) ................................................................. 12 Kamilche Co. v. United States, 53 F.3d 1059 (9th Cir. 1995)....................................................................................... 10 Keystone Driller Co. v. General Excavator Co., 290 U.S. 240 (1933) .................................................................................................... 21 Leon v. IDX Systems Corp., 464 F.3d 951 (9th Cir. 2006)....................................................................................... 12 In re Lockard, 884 F.2d 1171 (9th Cir. 1989)..................................................................................... 14
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McQuillion v. Schwarzenegger, 369 F.3d 1091 (9th Cir. 2004)..................................................................................... 18 Montana v. United States, 440 U.S. 147 (1979) .................................................................................................... 19 In re Napster, Inc. Copyright Lit., 462 F. Supp. 2d 1060 (N.D. Cal. 2006) ................................................................ 12, 13 Nat’l Assoc. of Radiation Survivors v. Turnage, 115 F.R.D. 543 (N.D. Cal. 1987) ................................................................................ 12 Nursing Home Pension Fund v. Oracle Corp., 2008 WL 4093497 (N.D. Cal. Sept. 2, 2008) ............................................................. 12 Parklane Hosiery Co. v. Shore, 439 U.S. 335 (1979) .................................................................................................... 16 Robi v. Five Platters, Inc., 838 F.2d 318 (9th Cir. 1988)......................................................................................... 9 Sec. People, Inc. v. Medeco Sec. Locks, Inc., 59 F. Supp. 2d 1040 (N.D. Cal. 1999) ........................................................................ 14 Southern Pac. R.R. Co. v. United States, 168 U.S. 1 (1897) .......................................................................................................... 9 Stevenson v. Sears, Roebuck & Co., 713 F.2d 705 (Fed. Cir. 1983)..................................................................................... 21 United States v. Mendoza, 464 U.S. 154 (1984) ...................................................................................................... 9 United States v. Moser, 266 U.S. 236 (1924) ...................................................................................................... 9 United States v. Rubenstein, 971 F.2d 288 (9th Cir. 1992)....................................................................................... 21 United States v. 22 Santa Barbara Drive, 264 F.3d 860 (9th Cir. 2001)....................................................................................... 18 Zubulake v. UBS Warburg LLC, 220 F.R.D. 212 (S.D.N.Y. 2003) ................................................................................ 12

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NOTICE OF MOTION AND MOTION TO ALL PARTIES AND THEIR COUNSEL OF RECORD: PLEASE TAKE NOTICE that on January 30, 2009, at 2:00 p.m. or as soon thereafter as the matter may be heard before the Honorable Ronald M. Whyte, United States District Court for the Northern District of California, 280 South First Street, San Jose, California, defendants and counterclaimants Micron Technology, Inc. and Micron Semiconductor Products, Inc. (“Micron”) will and hereby do move this Court for (1) an order granting summary judgment that the Rambus patents-in-suit in this case1 (“the ‘244 Action”) are unenforceable against Micron based on the collateral estoppel effect of Judge Robinson’s opinion and order on unclean hands and spoliation in the related Delaware action,2 and (2) entry of judgment in favor of Micron and against Rambus on its claims for patent infringement in the ‘244 Action. This motion is based on the following memorandum of points and authorities, the accompanying declaration of John Beynon (“Beynon Decl.”), documentary evidence submitted herewith or cited herein, the complete record of this action and the Delaware action, the evidence and argument presented at the hearing on this motion, and all matters of which the Court may take judicial notice.

Rambus Inc., v. Micron Technology, Inc. and Micron Semiconductor Products, Inc., Case No. C 06-00244 RMW.
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Micron Technology, Inc., et al. v. Rambus Inc., Civil Action No. 00-792-SLR.
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MEMORANDUM OF POINTS AND AUTHORITIES I. INTRODUCTION In the District of Delaware, where a lawsuit between Micron and Rambus has been pending since 2000, Micron and Rambus tried the issue of Rambus’s unclean hands and bad-faith spoliation of evidence to Judge Robinson in November 2007. The trial lasted five full days. Judge Robinson heard live testimony from key witnesses, including Joel Karp, Dan Johnson, Allen Roberts, and Lester Vincent. In total, the record includes over thirty hours of testimony, live and by deposition. Judge Robinson received nearly three hundred exhibits into evidence. She considered lengthy post-trial briefs and heard two rounds of closing arguments. Based on this thorough record, Judge Robinson made findings of fact and conclusions of law in a detailed, 33-page decision dated January 9, 2009. See Beynon Decl., Exh. 1 (Del. Spoliation Opinion). She found by clear and convincing evidence that Rambus had engaged in bad-faith spoliation of evidence, that Rambus’s spoliation had prejudiced Micron in pursuing its antitrust, patent misuse, unfair competition, and inequitable conduct claims and defenses, and that any remedy short of declaring Rambus’s patents unenforceable would be meaningless. See Beynon Decl., Exh. 1 at 32-33 ¶¶ 56-57 (Del. Spoliation Opinion). Based on these findings, Judge Robinson entered an order that the twelve Rambus patents-in-suit in Delaware – all of which claim priority to the 1990 Farmwald/Horowitz application – are unenforceable against Micron. Under the doctrine of collateral estoppel, these findings and conclusions are binding on Rambus in this case. Micron raised the same issues of unclean hands and spoliation in this case that were tried in Delaware. Rambus had a full and fair opportunity to contest these common issues during a multi-day trial. And Rambus has conceded that Judge Robinson’s decision is sufficiently final for purposes of collateral estoppel. Here, the Court must give Judge Robinson’s decision collateral estoppel effect and enter judgment that the Rambus patents-in-suit in this case are likewise unenforceable against Micron.
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As a matter of law, when there is complete mutuality of parties, as there is here, the Court does not have discretion whether to give Judge Robinson’s findings and conclusions collateral estoppel effect – it must do so. This result is neither harsh nor unfair nor surprising. In fact, the parties and the Courts have recognized all along that Judge Robinson’s decision in Delaware would be binding in this Court because the issues that were tried in Delaware are identical to the issues to be tried in this Court. Rambus previously represented to the Delaware Court (in support of a motion to transfer the Delaware case to California) that Micron had “raised in California the very same unclean hands claim that it has asserted in [Delaware].”3 Because it recognized that the issues were identical, Rambus then represented to this Court in 2007 that the issues of unclean hands and spoliation should not be relitigated in this Court because they were being litigated in Delaware: “Micron’s unclean hands defense is properly left for resolution by Judge Robinson of the United States District Court for the District of Delaware, where Micron elected to try these allegations.”4 Rambus specifically argued that this was just and fair, asserting in no uncertain terms that allowing further litigation on those issues in this Court would be wrong: We just tried unclean hands in the Micron case that Micron brought in Delaware. In my view, that’s their – they took their shot at spoliation and unclean hands and that should be it. They should – the result of the Micron case in Delaware should bind them and they shouldn’t come back trying to raise spoliation issues here or trying to retry the issues here. Everybody should have one shot at it. Nov. 21, 2007 Hearing Tr. at 170:17-171:1; see also 151:12-152:6, 153:1-16 (questions posed by Court) (‘244 D.E. 721). Rambus had its shot at litigating a dispositive issue with Micron. Rambus lost. That should end Rambus’s attempts to enforce these patent claims against Micron. Yet, Rambus refuses to stand down. Indeed, Rambus now renounces its prior representations here and in Delaware, arguing that it should be given the chance to relitigate the exact same unclean hands Beynon Decl., Exh. 2 at 12-13 (Rambus Inc.’s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007). Rambus Inc.’s Motion In Limine No. 5 To Preclude The Manufacturers From Introducing Evidence Related To Rambus’s Document Retention Or Document Destruction, Dec. 7, 2007 (‘244 D.E. 467).
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and spoliation issues in this Court that it lost in Delaware. A more improper, unjust, and inefficient position is hard to conceive. Collateral estoppel serves the parties’ and the Court’s interests in just and efficient case resolution. Rambus’s approach would undermine these

objectives by forcing the parties to relitigate issues that Rambus already tried and lost. II.

6 STATEMENT OF FACTS 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 A. The Delaware And ‘244 Actions Are Closely Related

The Delaware action and the instant ‘244 Action are closely related. Both actions involve allegations of antitrust, unfair competition, patent misuse, and fraud arising from Rambus’s unlawful attempts to undermine the standard-setting process at JEDEC and control the high-performance DRAM market. Both actions involve allegations that Micron infringes patents claiming priority to the 1990 Farmwald/Horowitz application (S/N 07/510,898), as well as related defenses that the patents are invalid (under 35 U.S.C. §§ 102, 103, and 112) and unenforceable (due to inequitable conduct). Both actions also involve unclean hands and

spoliation issues arising from Rambus’s widespread destruction of documents at a time when it anticipated litigation. Based on this overlap, Rambus has represented to the Delaware court that the Delaware action and this action were “simultaneous proceedings in different forums on the same issues.” Beynon Decl., Exh. 2 at 17 (Rambus Inc.’s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007). 1. Conduct Issues

In both the Delaware action and this action, Micron’s conduct claims and defenses relate, among other things, to Rambus’s attempts to control the high-performance DRAM market by undermining the JEDEC standard-setting process and capturing the standards with its patents.5 In each case, Micron asserted that Rambus’s conduct supported a finding of monopolization, attempted monopolization, fraud, patent misuse, breach of contract, fraud, negligent misrepresentation, unfair competition, equitable estoppel, implied license, waiver, and laches, and sought, among other remedies, a judgment that Rambus’s patents are unenforceable against Micron. Compare, e.g., July 31, 2007 NDCA Joint Case Management Statement at Attachment 2 (‘244 D.E. 118) with Beynon Decl., Exh. 3 (Sept. 5, 2007 Del. Micron Second Amended
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Micron has asserted in both actions that “Rambus’ manipulation of JEDEC and its fraudulent conduct and multiple breaches of its contractual duties to JEDEC and the other participants in JEDEC led microprocessor manufacturers to adopt high-performance DRAM interface technology that is compatible only with the high-performance DRAM interface technology that defendant Rambus claims to have patented and to control.” Beynon Decl., Exh. 3 ¶ 150 (Micron Del. Second Amended Complaint, filed Sept. 5, 2007) and Micron’s First Amended Answer and Counterclaims, filed May 30, 2007, ¶ 269 (‘244 D.E. 87). There is essentially complete overlap between the conduct allegations in the two cases. Compare Beynon Decl., Exh. 3, ¶¶ 1-13, 19-97 (Micron Del. Second Amended Complaint, filed Sept. 5, 2007) with Micron’s First Amended Answer and Counterclaims, filed May 30, 2007, ¶¶ 80-176 (‘244 D.E. 87). Before losing in Delaware, Rambus freely and repeatedly represented to the Delaware court that the conduct issues in the Delaware and California cases were identical. In seeking to transfer the Delaware action to California, Rambus argued that the “allegations supporting Micron’s JEDEC-related claims in this [Delaware] case and in the California Micron case that is to be tried in nine months are word-for-word identical.” Beynon Decl., Exh. 2 at 2 n.1 (Rambus Inc.’s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007). Rambus also argued to the Delaware court that resolution of the conduct issues in California would necessarily decide those issues in Delaware: [T]he January 2008 trial in California on claims and defenses relating to Rambus’s alleged conduct at JEDEC will decide virtually all of the claims in Micron’s complaint here [in Delaware], including its antitrust, fraud, breach of contract, equitable estoppel, deceptive practices and unfair competition claims against Rambus, which are all based on Rambus’s alleged conduct at JEDEC. Beynon Decl., Exh. 2 at 1 (Rambus Inc.’s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007). 2. Rambus’s Unclean Hands And Spoliation Of Evidence

Both the Delaware and California ‘244 actions involve identical allegations of unclean hands based on Rambus’s spoliation of evidence. Micron’s pleadings, Judge Robinson’s

Complaint), Exh. 4 (Mar. 15, 2006 Del. Micron’s Reply and Counterclaims to Rambus Inc.’s Supplemental and Second Amended Counterclaims).
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opinion, and the parties’ post-trial briefing on unclean hands and spoliation in Delaware clearly demonstrate that the issues are identical in both actions. Micron’s defense in both actions arises from Rambus’s massive and intentional campaign to destroy relevant evidence while it anticipated litigation.6 In both actions, Micron seeks unenforceability of Rambus’s patents as the remedy for Rambus’s spoliation of evidence. Against this backdrop, it should come as no surprise that Rambus previously admitted in Delaware that the unclean hands defense asserted by Micron in both actions is “the very same”: “Micron has since also raised in California the very same unclean hands claim that it has asserted in this case.” Beynon Decl., Exh. 2 at 12-13 (Rambus Inc.'s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007). Presumably on that basis, Rambus represented to this Court that “[e]verybody should have one shot” at trying the unclean hands defense and that the outcome of the Delaware action should be binding in this case. Nov. 21, 2007 Hearing Tr. at 170:17-171:1 (‘244 D.E. 721). 3. Patent Issues

In Delaware, Rambus alleged that Micron has infringed twelve patents, all of which claim priority to the original Farmwald/Horowitz Application (U.S. Patent Application 07/510,898).7 These twelve patents include claims that are directed to features such as dual edge clocking, onchip DLL, variable block size, auto precharge, and programmable write and read latency. Beynon Decl., Exh. 5 (Conduct Trial Claim Chart); see also Exh. 6 (claim 19 of U.S. Patent No. 5,953,263 directed, in part, to a “programmable” “time delay” “representative of a time delay

Micron’s First Amended Answer and Counterclaims, filed May 30, 2007, ¶ 164 (‘244 D.E. 87) (“Rambus developed and then carried out a plan to destroy evidence as a precursor to implementing its litigation strategy. Rambus intentionally destroyed a massive amount of relevant and/or potentially relevant information contained in millions of pages of documents and electronic storage, including e-mail when it was both anticipating litigation and when it was actually involved in litigation. Rambus’s counsel went so far as to instruct its outside counsel to sanitize their files of discoverable material, and its outside counsel obliged.”).
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United States Patent Nos. 5,915,105; 5,953,263; 5,954,804; 5,995,443; 6,032,214; 6,032,215; 6,034,918; 6,038,195; 6,324,120; 6,378,020; 6,426,916; 6,452,863. Beynon Decl., Exh. 1 at 1 n.1 (Del. Spoliation Opinion). 5
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after which the memory device responds” to a “write request”). Rambus alleged that Micron products, including DDR2 SDRAM and RLDRAM II, infringe these patents. Similarly, in this case, Rambus is asserting patents against Micron that claim priority to the 1990 Farmwald/Horowitz application.8 They are directed to the same six features of dual edge clocking, on-chip DLL, variable block size, auto precharge, and variable write and read latency. Beynon Decl., Exh. 5 (Conduct Trial Claim Chart). In fact, four of the ten patents asserted here also are asserted against Micron in Delaware, namely, U.S. Patent Nos. 6,324,120, 6,378,020, 6,426,916, and 6,452,863. Rambus is asserting its patents against Micron’s DRAMs, including the same DDR2 SDRAM and RLDRAM II products at issue in Delaware. Importantly, there are overlapping patent applications that led to the patents-in-suit in Delaware and California. Application Nos. 954,945 (U.S. Patent No. 5,319,755) and 222,646 (U.S. Patent No. 5,513,327) are in the prosecution chain leading to all of the Farmwald/Horowitz patents-in-suit in California and all but one of the patents-in-suit in Delaware. Beynon Decl., Exh. 7 (cover pages of Farmwald/Horowitz patents-in-suit in California and Delaware); Beynon Decl., Exh. 8 (cover pages of U.S. Patent Nos. 5,319,755 and 5,513,327). Indeed, given the close relationship between the patent issues in Delaware and California, Rambus previously argued in Delaware that “there is substantial legal and factual overlap between the Rambus patent cases before [this Court] and the [Delaware court].” Beynon Decl., Exh. 2 at 5 (Rambus’s Reply Brief ISO Renewed Motion to Transfer). B. Judge Robinson’s Ruling That Rambus Engaged In Bad-Faith Spoliation That Prejudiced Micron

Like this Court, the Court in Delaware trifurcated the proceedings into phases. The Delaware Court decided to try unclean hands and spoliation first, followed if necessary by a trial on Rambus’s patent claims, followed by a trial on Micron’s antitrust, fraud, and unfair competition claims. Compare, e.g., Apr. 24, 2007 NDCA Joint Case Management Order at 1-3

U.S. Patent Nos. 6,182,184; 6,266,285; 6,314,051; 6,324,120; 6,378,020; 6,426,916; 6,452,863; 6,546,446; 6,584,037; 6751,696. See Beynon Decl., Exh. 10 (Rambus Final Infringement Contentions).
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(‘244 D.E. 70) with Beynon Decl., Exh. 9 at 6 (Mar. 16, 2006 Del. Scheduling Order Re-Setting Case for Trial). The unclean hands and spoliation trial commenced before Judge Robinson in November 2007. The five-day bench trial concluded on November 15, 2007. Almost three hundred exhibits were admitted into evidence and the Court heard the testimony of more than twenty witnesses (many of them live) during the trial. Beynon Decl., Exh. 11 (Del. Spoliation Trial Exhibit List). Joel Karp, Lester Vincent, Sean Cunningham, Dan Johnson, Allen Roberts, Mike Farmwald, Mark Horowitz, John Christian Montaña (Rambus’s purported expert on document retention policies), Allen Brill (Rambus’s purported security expert from Kroll), and David Rhoades (the operator of the document shredding business) all testified live before Judge Robinson. Beynon Decl., Exh. 12 (compilation of first pages of live witnesses’ testimony from Del. Trial Tr.). After the trial was completed, the parties submitted the equivalent of four additional hours of prior testimony from twenty-two witnesses. Beynon Decl., Exh. 12

(compilation of first pages of witnesses’ prior testimony from Del. Trial Tr.). Based on this extensive record, and after two rounds of post-trial briefing and two rounds of closing arguments, Judge Robinson issued her opinion and order that Rambus’s patents were unenforceable based on bad-faith spoliation. Beynon Decl., Exh 1 (Del. Spoliation Opinion); Exh. 13 (Del. Spoliation Order). In her ruling, Judge Robinson made specific findings and conclusions that mandate unenforceability in this case. She found by clear and convincing evidence that (1) Rambus spoliated documents in bad faith that were relevant to Micron’s antitrust, unfair competition, patent misuse, and inequitable conduct claims and defenses, (2) Micron has been prejudiced in its ability to pursue those claims and defenses as the result of Rambus’s bad faith spoliation, and (3) sanctions other than unenforceability were “impractical, bordering on meaningless, under these circumstances.” Beynon Decl., Exh. 1 at 32-33 ¶¶ 56-57 (Del. Spoliation Opinion). Among her findings and conclusions, Judge Robinson held (at

paragraphs 56 and 57 of her opinion) as follows: 56. In determining the degree of prejudice suffered by Micron as a result of spoliation of evidence, Micron has carried its burden under Schmid to prove that the documents destroyed were discoverable and the type of documents that would
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be relevant to the instant litigation. More specifically, Micron asserts unenforceability due to patent misuse and violation of the antitrust and unfair competition laws (based in part on Rambus’ conduct at JEDEC), as well as inequitable conduct. These are defenses that are illuminated by evidence of a nonpublic nature, e.g., by internal Rambus documents. Because the record demonstrates that there were documents relevant to these defenses, the court concludes that Micron has been prejudiced by Rambus’ conduct. That prejudice has been compounded by Rambus’ litigation conduct, which has been obstructive at best, misleading at worst. 57. In determining which of the potential sanctions for spoliation should be imposed, the court is directed to find the least harsh sanction that serves both to avoid substantial unfairness to Micron but deter such conduct in the future. In reviewing the record, the court concludes that the showing of bad faith is so clear and convincing that the showing of prejudice can be proportionally less. The spoliation conduct was extensive, including within its scope the destruction of innumerable documents relating to all aspects of Rambus’ business; when considered in light of Rambus’ litigation conduct, the very integrity of the litigation process has been impugned. Sanctions such as adverse jury instructions and preclusion of evidence are impractical, bordering on meaningless, under these circumstances and in the context of a typical jury trial. Therefore, the court concludes that the appropriate sanction for the conduct of record is to declare the patents in suit unenforceable against Micron. Beynon Decl., Exh. 1 at 32-33 ¶¶ 56-57 (Del. Spoliation Opinion). Patent prosecution files were among the documents that Judge Robinson found that Rambus had spoliated. She determined that in or around July 1999, Lester Vincent – Rambus’s patent prosecution attorney – purged his files at Joel Karp’s direction. Beynon Decl., Exh. 1 at 18 n.42 (Del. Spoliation Opinion); see also Exh. 14 at 1338:11-1348:1 (Nov. 14, 2007 Del. Trial Tr. (Testimony of L. Vincent)); Exh. 15 (Del. Micron Trial Exh. MTX 601). These purged files correspond to patent applications in the chain of

applications that led to the Farmwald/Horowitz patents-in-suit in this case and nine of the twelve patents-in-suit in Delaware. Beynon Decl., Exh. 15 (Del. Micron Trial Exh. MTX 601). The Delaware trial record also established that for many of the other patents-in-suit, the patent files were irreversibly purged. See, e.g., Beynon Decl., Exh. 14 at 1338:111348:1 (Nov. 14, 2007 Del. Trial Tr. (Testimony of L. Vincent)); Exh. 15 (Del. Micron Trial Exh. MTX 601).

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III. MICRON IS ENTITLED TO SUMMARY JUDGMENT Micron is entitled to summary judgment that Rambus’s patent claims are unenforceable in this action based on Judge Robinson’s findings and conclusions of unclean hands and bad faith spoliation of evidence in Delaware. A. Judge Robinson’s Findings And Conclusions Must Be Given Full Collateral Estoppel Effect In This Action

Judge Robinson’s decision, and her findings of bad faith spoliation, prejudice, and inadequacy of remedies short of unenforceability, are binding on Rambus in this action under the doctrine of collateral estoppel. As the Supreme Court has held, once an issue has been

determined as between two parties in one lawsuit, it “must” be taken as conclusively established in a second lawsuit between those two parties: “[A] right, question or fact distinctly put in issue and directly determined by a court of competent jurisdiction, as a ground of recovery, cannot be disputed in a subsequent suit between the same parties or their privies; and even if the second suit is for a different cause of action, the right, question or fact once so determined must, as between the same parties or their privies, be taken as conclusively established, so long as the judgment in the first suit remains unmodified.” United States v. Moser, 266 U.S. 236, 241 (1924) (citing Southern Pac. R.R. Co. v. United States, 168 U. S. 1, 48 (1897)) (emphasis added). It is black letter law that collateral estoppel applies not only to findings of fact, but also conclusions of law. United States v. Mendoza, 464 U.S. 154, 158 (1984) (“Under the judicially-developed doctrine of collateral estoppel, once a court has decided an issue of fact or law necessary to its judgment, that decision is conclusive in a subsequent suit based on a different cause of action involving a party to the prior litigation.”) (emphasis added); Robi v. Five Platters, Inc., 838 F.2d 318, 322 (9th Cir. 1988) (“The doctrine of issue preclusion prevents relitigation of all issues of fact or law that were actually litigated and necessarily decided in a prior proceeding.”) (emphasis added).

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Under Ninth Circuit precedent,9 collateral estoppel applies where (1) there was a full and fair opportunity to litigate the issue in the previous action; (2) the issue was actually litigated in that action; (3) the issue was lost as a result of a final judgment; and (4) the person against whom collateral estoppel is asserted in the present action was a party or in privity with a party in the previous action. Bautista v. Park West Gallery, 2008 WL 5210662, at *1 (C.D. Cal. Dec. 11, 2008) (granting motion to dismiss based on collateral estoppel) (citing In re Palmer, 207 F.3d 566, 568 (9th Cir. 2000)). Here, this test is met in full as a matter of law. 1. Rambus Had A Full And Fair Opportunity To Litigate Unclean Hands And Spoliation

Rambus had a full and fair opportunity to litigate unclean hands and spoliation in Delaware. Judge Robinson’s ruling is based on a fully developed record that resulted from a five-day bench trial that concluded on November 15, 2007. Almost three hundred exhibits were admitted into evidence in the course of the bench trial. The Court heard the testimony of more than twenty witnesses, including live testimony from Rambus witnesses who live beyond the subpoena power of the Delaware Court (such as Joel Karp, Lester Vincent, Sean Cunningham, Allen Roberts, and Dan Johnson). The record was further developed through four hours of prior deposition and trial testimony from twenty-two witnesses. Rambus cannot argue that it did not have a full and fair opportunity to litigate unclean hands and spoliation in Delaware. 2. The Unclean Hands And Spoliation Issues Were Actually Litigated In Delaware

Issue preclusion applies to issues that were actually litigated in a previous action. Kamilche Co. v. United States, 53 F.3d 1059, 1062 (9th Cir. 1995), amended by 75 F.3d 1391 (9th Cir. 1996). Rambus cannot credibly dispute this prong of the test, because Rambus has argued both to the Delaware Court and to this Court that the unclean hands and spoliation issues in the two actions are the same in both cases. To the Delaware Court, Rambus argued that

The Federal Circuit defers to regional circuit law on issues of collateral estoppel. See TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1327 (Fed. Cir. 2003) (“[W]e review the application of collateral estoppel as a matter of regional circuit law.”).
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Micron had “raised in California the very same unclean hands claim that it has asserted in [Delaware].”10 Rambus further argued that the Delaware action and this action were “simultaneous proceedings in different forums on the same issues.”11 To this Court, Rambus argued that no spoliation trial for Micron was needed here because the same issues were already before the Delaware Court: “Micron’s unclean hands defense is properly left for resolution by Judge Robinson of the United States District Court for the District of Delaware, where Micron elected to try these allegations.”12 After losing in Delaware, Rambus should not be allowed to change its position and argue that the issues are not the same. In any event, Rambus was right – there is identity of issue as a matter of law under the Ninth Circuit’s four-part test: (1) is there substantial overlap between the evidence or argument to be advanced in the second proceeding and that advanced in the first? (2) does the new evidence or argument involve the application of the same rule of law as that involved in the prior proceeding? (3) could pretrial preparation and discovery related to the matter presented in the first action reasonably be expected to have embraced the matter sought to be presented in the second? (4) how closely related are the claims involved in the two proceedings? Kamilche, 53 F.3d at 1062. Here, under this four-part analysis, the unclean hands and spoliation issues already decided in Delaware are “identical” for purposes of collateral estoppel to those that would be re-tried in this case were Rambus given a second shot. First, there is complete overlap in the evidence and arguments as to unclean hands and spoliation between the proceedings. In both actions, Micron’s defense is that Rambus destroyed documents in bad faith at a time when litigation was reasonably foreseeable and that a sanction less then unenforceability of the patents-in-suit would be inadequate given Rambus’s bad faith

10

Beynon Decl., Exh. 2 at 12-13 (Rambus Inc.'s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007).

Beynon Decl., Exh. 2 at 17 (Rambus Inc.'s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007) (emphasis added). Rambus Inc.’s Motion In Limine No. 5 To Preclude The Manufacturers From Introducing Evidence Related To Rambus’s Document Retention Or Document Destruction, Dec. 7, 2007 at 1 (‘244 D.E. 467)).
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and the prejudice to Micron. See Beynon Decl., Exh. 1 at 30-33 ¶¶ 50-57 (Del. Spoliation Opinion). Judge Robinson ruled that Micron had proven this theory with clear and convincing evidence; Micron would rely on the same evidence to support its defense before this Court. See Beynon Decl., Exh. 1 at 33 ¶ 57 (Del. Spoliation Opinion). Rambus has admitted to this Court, as explained above, that the issues related to unclean hands and spoliation are identical to those here. Second, the same general rule of law applies to spoliation in Delaware and California. The Third Circuit applies the same general rule of law on spoliation as the Ninth Circuit. Compare Schmid v. Milwaukee Elec. Tool Corp., 13 F.3d 76, 79 (3d Cir. 1994) (establishing key considerations for spoliation as (1) degree of fault, (2) degree of prejudice, and (3) availability of lesser sanctions) with Leon v. IDX Systems Corp., 464 F.3d 951, 960-61 (9th Cir. 2006) (affirming dismissal due to spoliation based on findings of (1) degree of fault, (2) degree of prejudice, and (3) availability of lesser sanctions). In fact, this Court has favorably cited and directly applied the Third Circuit’s standard for spoliation from Schmid in making spoliation determinations. See, e.g., Nursing Home Pension Fund v. Oracle Corp., 2008 WL 4093497, at *4 (N.D. Cal. Sept. 2, 2008) (J. Illston); In re Napster, Inc. Copyright Litigation, 462 F. Supp. 2d 1060, 1070 (N.D. Cal. 2006) (J. Patel); Hamilton v. Signature Flight Support Corp., 2005 WL 3481423, at *3 (N.D. Cal. Dec. 20, 2005) (M.J. James). Furthermore, Judge Robinson cited in her opinion authority from this Court on spoliation,13 as well as authority from other courts that has been cited by this Court in rendering a spoliation decision.14 The only significant difference in law between the districts – that Micron faced a clear and convincing burden of proof on its spoliation defense in Delaware but would face a lesser burden of proof before this Court – only further supports that the well-founded findings and conclusions in Delaware should be given collateral estoppel effect. See Beynon Decl., Exh. 1 at 29-30 ¶¶ 48-49 (Del. Spoliation Opinion) Beynon Decl., Exh. 1 at 26 ¶ 42 (Del. Spoliation Opinion) (citing In re Napster, Inc., 462 F. Supp. 2d 1060 (N.D. Cal 2006); Nat’l Ass’n of Radiation Survivors v. Turnage, 115 F.R.D. 543 (N.D. Cal. 1987)).
14 13

Compare Beynon Decl., Exh. 1 at 26 ¶ 42 (Del. Spoliation Opinion) (citing Kronisch v. U.S., 150 F.3d 112 (2d Cir. 1998) & 27 ¶ 43 (citing Zubulake v. UBS Warburg LLC, 220 F.R.D. 212 (S.D.N.Y. 2003)) with Hynix Semiconductor Inc. v. Rambus Inc., 2006 WL 565893, at *20 (citing Zubulake) & *21 (citing Kronisch) (N.D. Cal. Jan. 5, 2006) (J. Whyte). 12
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(placing a clear and convincing burden on Micron’s spoliation defense); In re Napster, 462 F. Supp. 2d 1060, 1072 (N.D. Cal. 2006) (stating that no Ninth Circuit authority applies clear and convincing standard to the exercise of the court's inherent authority to impose dismissal or default sanctions and therefore declining to do so). Therefore, it is indisputable that the same general rules of law for spoliation apply in Delaware and in this Court. Third, the pretrial preparation and discovery in Delaware on unclean hands and spoliation embraces the same subject matter that would be presented to this Court. Rambus had access to the record on spoliation from Hynix I and introduced prior testimony from that proceeding in Delaware. See, e.g., Beynon Decl. Exh. 16 at 1612 (Nov. 15, 2007 Del. Trial Tr.) (Rambus reads Geoff Tate testimony given on 10/28/05 in Hynix I). Under this Court’s scheduling order, all of the testimony from the Delaware trial would be usable in a trial before this Court on the unclean hands and spoliation issues to the same extent as if it had been given in this case. See Apr. 24, 2007 Case Management Order at 5(b)(2) (“All depositions or other sworn testimony in the Rambus Related Actions may be used by any party in the Rambus NDCal Cases as if taken in each of the Rambus NDCal Cases.”) (‘244 D.E. 70). Indeed, Rambus successfully sought to limit the discovery the parties could pursue in this action so as not to duplicate prior discovery, including on spoliation. See, e.g., id. at 5(c)(1) (“This court recognizes the significant volume of testimony previously elicited from current and former Rambus officers, directors, and employees in the various Rambus Related Actions. In light of this extensive record, the court is setting limits on further deposition discovery.”) (‘244 D.E. 70). Having two separate courts decide the exact same issues between the exact same parties involving the exact same evidence is precisely what collateral estoppel is intended to prevent. Finally, the Delaware action and this action indisputably are closely related. In both actions, Micron has asserted the same antitrust, unfair competition, patent misuse, and other conduct-related claims.15 In both actions, identical or closely-related patents and products are in

Compare Beynon Decl., Exh. 3, ¶¶ 1-13, 19-97 (Micron Del. Second Am. Compl., filed Sept. 5, 2007) with Micron’s First Amended Answer and Counterclaims, filed May 30, 2007, ¶¶ 80-176 (‘244 D.E. 87).
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suit.16 And in both actions, Micron has asserted unclean hands, spoliation, and unfair competition as defenses to Rambus’s patent enforcement.17 Before losing in Delaware, Rambus freely

admitted that these actions are not only closely related, but that they are “the very same” and “word-for-word identical.”18 3. Judge Robinson’s Ruling Is Final For Purposes Of Collateral Estoppel

During a hearing last Friday before Judge Robinson, counsel for Rambus acknowledged that her decision is sufficiently final to invoke collateral estoppel. In opposing Micron’s request that the Court in Delaware enter final judgment on Rambus’s patent claims pursuant to Rule 54(b) of the Federal Rules of Civil Procedure, Rambus responded as follows: I think Micron has argued to Judge Wh[y]te, and I think Judge Wh[y]te appears to accept the fact that the Court's ruling to date has the level of finality that is necessary to apply collateral estoppel. So I'm not sure there was a need for judgment to give it any greater collateral estoppel effect. I think that the finality necessary for collateral estoppel is probably met by the Court's order as it now stands, at least as Judge Wh[y]te has expressed his view and Micron has expressed theirs. Beynon Decl. Exh. 18 at 7:2-7:11 (Jan. 16, 2009 Hearing Tr.). There is no question that Judge Robinson’s opinion and order are final for purposes of collateral estoppel. In the Ninth Circuit, a “final judgment” “includes any prior adjudication of an issue in another action that is determined to be sufficiently firm to be accorded conclusive effect.” In re Lockard, 884 F.2d 1171, 1175 (9th Cir. 1989). A decision is “sufficiently firm” to

constitute a final judgment, even if it cannot yet be appealed, where the order is supported by a reasoned opinion that is not “avowedly tentative” and where “the parties were fully heard.” Sec. People, Inc. v. Medeco Sec. Locks, Inc., 59 F. Supp. 2d 1040, 1045-46 (N.D. Cal. 1999) (holding

16

Beynon Decl., Exh. 3, ¶¶ 189-228 (Micron Del. Second Am. Compl., filed Sept. 5, 2007); Micron’s First Amended Answer and Counterclaims, filed May 30, 2007, ¶¶ 194-262 (‘244 D.E. 87); Beynon Decl., Exh. 17, ¶ 9 (Rambus Inc’s Suppl. and Second Am. Counterclaims, filed June 13, 2005); Rambus Inc.’s First Am. Compl., filed Apr. 18, 2006 ¶10 (‘244 D.E. 35). Beynon Decl., Exh. 3, ¶¶ 189-228 (Micron Del. Second Am. Compl., filed Sept. 5, 2007); Micron’s First Amended Answer and Counterclaims, filed May 30, 2007, ¶63 (‘244 D.E. 87). Beynon Decl., Exh. 2 at 12-13 (Rambus Inc.’s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007); Beynon Decl., Exh. 2 at 2 n.1 (Rambus Inc.’s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007). 14
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order was “sufficiently firm”); see also Robi, 838 F.2d at 327 (finding judgments “sufficiently firm”). Here, as explained above, Judge Robinson’s decision is based on an extensive trial record. Judge Robinson’s ruling is supported by thirty-three pages of detailed factual findings and legal conclusions. Based on those findings and conclusions, she entered an order that all twelve Rambus patents in suit are unenforceable against Micron, confirming that the ruling is not tentative. There is nothing remaining to litigate on these issues in Delaware. As such, and consistent with Rambus’s admissions, Judge Robinson’s ruling constitutes a final judgment for collateral estoppel purposes. 4. Rambus Is A Party Both Here And In The Delaware Action

It is undisputed that Rambus, the entity “against whom collateral estoppel is asserted in the present action,” is a party in the Delaware action. Bautista, 2008 WL 5210662, at *1 (final element for proving collateral estoppel is that “the person against whom collateral estoppel is asserted in the present action was party or in privity with a party in the previous action.”). Indeed, because both Micron and Rambus are parties in Delaware, the collateral estoppel which Micron invokes in these proceedings is mutual collateral estoppel. B. Based On Judge Robinson’s Findings And Conclusions, Rambus’s Patents In This Action Must Be Found Unenforceable Against Micron

As established above, this Court must give collateral estoppel effect to all of Judge Robinson’s findings and conclusions on unclean hands and spoliation, including Judge Robinson’s findings that (1) Rambus acted in bad faith in spoliating evidence; (2) Rambus’s conduct prejudiced Micron in litigating its patent misuse, antitrust, unfair competition, and inequitable conduct defenses (which are the same in both cases); and (3) sanctions less than unenforceability would be “impractical, bordering on meaningless.” Beynon Decl., Exh. 1 at 3233 (Del. Spoliation Opinion). Judge Robinson found that Micron had presented clear and

convincing evidence in support of spoliation and unenforceability – a higher burden than Micron would face at trial here. In re Napster, 462 F. Supp. 2d at 1072 (stating that Ninth Circuit authority does not apply clear and convincing burden to spoliation claim). These and other findings and conclusions of law in Judge Robinson’s opinion, once given collateral estoppel
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effect, mandate that this Court similarly find the patents-in-suit here unenforceable against Micron. First, unenforceability here is mandated by Judge Robinson’s specific finding that based on Rambus’s bad faith and the prejudice to Micron, “[s]anctions such as adverse jury instructions and preclusion of evidence are impractical, bordering on meaningless, under these circumstances and in the context of a typical jury trial.” Beynon Decl., Exh. 1 at 33 (Del. Spoliation Opinion). Judge Robinson’s finding as to the appropriate equitable remedy must be given preclusive effect, just like any other finding or conclusion. Parklane Hosiery Co. v. Shore, 439 U.S. 322, 335 (1979) (“[A]n equitable determination can have collateral-estoppel effect[.]”); Wright, Miller & Cooper, Federal Practice and Procedure: Jurisdiction 2d § 4417 n.8 (“Final decision in an action for permanent injunctive relief or other equitable relief commands full preclusion effects.”). This Court simply cannot reexamine Judge Robinson’s findings and conclusion on the inadequacy of sanctions less than unenforceability. See supra Sec. III.C.4; see also Cygnus Telecom. Tech., LLC v. Am. Intern. Telephonics, LLC, 569 F. Supp. 2d 1035, 1037 (N.D. Cal. 2008) (J. Whyte) (“[T]he focus for purposes of determining whether collateral estoppel applies is not whether the issue was correctly decided”). Second, unenforceability of the patents-in-suit is mandated by Judge Robinson’s holding that Rambus’s widespread destruction of discoverable documents prejudiced Micron’s ability to adequately pursue its defenses of “patent misuse[,] violation of the antitrust and unfair competition laws (based in part on Rambus’ conduct at JEDEC), as well as inequitable conduct.” Beynon Decl., Exh. 1 at 32 (Del. Spoliation Opinion). These defenses were not patent specific, but cut across all of the patents asserted in both cases. As Rambus has admitted, the antitrust issues in Delaware were identical to the antitrust issues here. Beynon Decl., Exh. 2 at 1 (Rambus Inc.’s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007). Given the Court’s findings of bad faith and of the inadequacy of other remedies, unenforceability is the only appropriate remedy here.19
19

The fact that the jury ruled in favor of Rambus in the Conduct Trial does not change this result. Given the California trial structure, this Court ruled that the jury in the Conduct Trial would not
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Finally, unenforceability is mandated by Judge Robinson’s finding that Rambus, in bad faith, destroyed relevant discoverable documents on patent applications, such as Application Nos. 954,945 and 222,646, from which the patents-in-suit descend in this lawsuit. See II.A.3 above. Judge Robinson found that, despite a duty to preserve documents, Rambus instructed its outside patent prosecution counsel, Lester Vincent, to purge Rambus’s patent prosecution files of any documents not found in the official record at the Patent and Trademark Office. Beynon Decl., Exh. 1 at 17 n.41, 32 (Del. Spoliation Opinion). Judge Robinson found that, from April to July 1999, Mr. Vincent purged “hard and electronic copies of draft amendment, draft claims, and attorneys’ handwritten notes, and correspondence regarding patent prosecution, some of which did not exist in any other form,” and that “[t]hese kinds of materials are typically sought in discovery in patent cases.” Beynon Decl., Exh. 1 at 18 n.44 (Del. Spoliation Opinion). At Mr. Karp’s direction, Mr. Vincent purged “more than sixty patent files over the course of these four months,” including the files for patent applications from which patents in this case descend. Beynon Decl., Exh. 1 at 18 n.42 (Del. Spoliation Opinion); Exh. 14 at 1338-48 (Nov. 14, 2007 Del. Hrg. Tr. (Testimony of L. Vincent)); Exh. 15 (Del. Micron Trial Exh. MTX 601). Judge Robinson’s findings of Rambus’s systematic destruction, in bad faith, of discoverable evidence relevant to the prosecution of the patents-in-suit in Delaware mean that Rambus also destroyed in bad faith documents relevant to the patents-in-suit here. Consequently, Micron would similarly be prejudiced in its ability to argue its inequitable conduct and other defenses here and only a remedy of unenforceability would be appropriate given the inadequacy of lesser sanctions. C. Rambus’s Arguments Against Collateral Estoppel Are Baseless Before losing in Delaware, Rambus conceded that “[e]verybody should have one shot” at the spoliation issue, and that “Micron’s unclean hands defense is properly left for

hear any evidence about Rambus’s spoliation of evidence. Feb. 3, 2008 Rulings on Rambus’s Motions In Limine [Conduct Phase] at 4 (‘244 D.E. 788). That evidence and its impact has now been decided by the Delaware Court. Rambus is bound by that ruling that the spoliated evidence impeded Micron’s ability to fairly litigate its antitrust defense.
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resolution by Judge Robinson.”20 Now, faced with a loss, Rambus reverses its position, asks for a second shot, and asserts that Judge Robinson’s order does not apply and does not resolve Micron’s unclean hands defense. Rambus is wrong. 1. Because There Is Mutuality Of Parties, The Application Of Collateral Estoppel Here Is Not Discretionary

To avoid collateral estoppel effect and impose on this Court the burden of another unclean hands trial, Rambus argues that the Court should exercise discretion not to invoke collateral estoppel. See Rambus Inc’s Brief on Delaware Court Ruling, Jan. 13, 2009 at 4-5 (‘244 D.E. 1978). In making this argument, Rambus ignores well-settled law that the Court has no discretion in this case between Rambus and Micron, because the Court must apply mutual collateral estoppel. It is well-settled that “[a] right, question or fact distinctly put in issue and directly determined by a court of competent jurisdiction . . . must, as between the same parties or their privities, be taken as conclusively established.” Moser, 266 U.S. at 241. Consistent therewith, the Ninth Circuit has held that when there is mutuality of parties, the application of collateral estoppel is reviewed de novo, and not for abuse of discretion. Appling v. State Farm Mut. Auto. Ins. Co., 340 F.3d 769, 775 (9th Cir. 2003) (explaining that, unlike in the ordinary context of mutual collateral estoppel, courts have discretion in the context of non-mutual offensive collateral estoppel); United States v. 22 Santa Barbara Drive, 264 F.3d 860, 868 (9th Cir. 2001) (applying de novo standard in mutual collateral estoppel case, without giving district court discretion); McQuillion v. Schwarzenegger, 369 F.3d 1091, 1096 (9th Cir. 2004) (same). Rambus argues that Parklane stands for the proposition that this Court has discretion whether to apply collateral estoppel. However, Parklane involved non-mutual, offensive,

collateral estoppel. See Appling, 340 F.3d at 775 (citing Parklane, 439 U.S. at 331). Here, application of collateral estoppel is clearly mutual, because the parties to both the Delaware

Nov. 21, 2007 Hearing Tr. at 170:17-171:1 (‘244 D.E. 721); Rambus Inc.’s Motion In Limine No. 5 To Preclude The Manufacturers From Introducing Evidence Related To Rambus’s Document Retention Or Document Destruction, Dec. 7, 2007 (‘244 D.E. 467).
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action and the ‘244 Action are identical. In fact, discretion in applying mutual collateral estoppel runs counter to principles of judicial economy and comity by giving a litigant two bites at the apple. Montana v. United States, 440 U.S. 147, 153-54 (1979) (giving litigants one fair shot at an issue “protects their adversaries from the expense and vexation attending multiple lawsuits, conserves judicial resources, and fosters reliance on judicial action by minimizing the possibility of inconsistent judgments.”).21 2. The Actions Do Not Need To Be Identical For Collateral Estoppel To Apply

Having previously admitted that Micron’s unclean hands and spoliation defenses in Delaware and California are the “very same,”22 Rambus now argues that the spoliation issues in Delaware and California are not “identical” because the accused products and asserted patents are not completely identical. See Rambus Inc’s Brief on Delaware Court Ruling, Jan. 13, 2009 at 10 (‘244 D.E. 1978) (“The upcoming patent trial plainly presents issues that are not part of the Micron case before the Delaware Court. For example, the Delaware litigation does not

encompass DDR3 and does not involve six of the ten patents-in-suit.”). Rambus’s argument erroneously conflates the identity of claims requirement of claim preclusion, which is not at issue here, with the identity of issues requirement of issue preclusion. Issue preclusion applies even where the claims in the two litigations are not identical. There are numerous examples where courts have applied collateral estoppel even where the claims in suit are different. See, e.g., Kamilche, 53 F.3d at 1062 (applying collateral estoppel as to ownership of plot of land where first action involved claim of ownership by condemnation and in the second action ownership was asserted by adverse possession); Blonder-Tongue Laboratories, Inc. v. Univ. of Ill. Found., 402 US 313, 324 (1971) (holding that subsequent defendant with different

21

Of course, given the extensive record presented to the Delaware Court on the spoliation issue, and the Court’s detailed findings and conclusions, it would be an abuse of discretion (were discretion available) for this Court to ignore that decision and require Micron to incur the enormous expense of relitigating the exact same issue here. Beynon Decl., Exh. 2 at 12-13 (Rambus Inc.'s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007). 19
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allegedly infringing products may apply collateral estoppel against patentee where patents were previously held invalid). Here, as explained above, the spoliation issues in Delaware are not tied to a specific group of Rambus patents or Micron products. Instead, as Judge Robinson found, the spoliated evidence impacts Micron’s defenses that cut across all of the patents in both cases, including its defenses based on antitrust, unfair competition, and patent misuse. 3. The Application Of Collateral Estoppel Does Not Hinge On Litigation Misconduct

In Rambus’s brief and at the January 14 hearing, Rambus argued that Judge Robinson’s decision should not apply here because her findings regarding Rambus’s litigation misconduct are inapplicable to the California Action. Rambus Inc’s Brief on Delaware Court Ruling, Jan. 13, 2009 at 15:10-11 (‘244 D.E. 1978) (quoting Aptix Corp. v. Quickturn Design Sys., 269 F.3d 1369, 1376 (Fed. Cir. 2001)); Beynon Decl. Exh. 20 at 36:17-22 (Jan. 14, 2009 Hearing Tr.). However, this argument is inconsistent with Judge Robinson’s decision and contrary to the case law on litigation misconduct. First, the Aptix holding is inapposite to the issue of collateral estoppel at hand. Aptix did not involve collateral estoppel or provide guidance on how a second court should apply a ruling of unclean hands. In Aptix, the Federal Circuit affirmed the dismissal of a patent suit based on litigation misconduct, but held that the court could not nullify the underlying grant of a property right from the Patent Office. Aptix, 269 F.3d at 1378.23 Second, while Judge Robinson found litigation misconduct, she made clear that Rambus’s spoliation alone fully supported her conclusions of bad faith, prejudice, and inadequacy of remedies other than unenforceability. See Beynon Decl., Exh. 1 at 32 ¶ 56 (“In determining the degree of prejudice suffered by Micron as a result of this spoliation of evidence, . . .” ); at 33 ¶ 57 (“In determining which of the potential sanctions for spoliation should be imposed, . . .”) (Del.
23

The other case cited by Rambus, Bio-Technology Gen. Corp. v. Genentech, Inc., rejected an unclean hands defense based on prior misconduct for reasons not present here: the litigation misconduct was “largely without evidentiary support on the record” and there was no finding that the misconduct related to the issues in the current litigation. 80 F.3d 1553, 1565 (Fed. Cir. 1996) (cited in Rambus’s Jan. 13, 2009 Letter Brief at 15:11-12).
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Case 5:05-cv-00334-RMW

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Spoliation Opinion). To the extent litigation misconduct was considered, the evidence was probative of bad faith and illustrative of Rambus’s overall scheme of spoliation. Third, the landmark Keystone Driller decision confirms that Rambus’s earlier litigation misconduct from other cases is admissible in this lawsuit. Keystone Driller Co. v. General Excavator Co., 290 U.S. 240 (1933). Similar to the facts of Keystone Driller, Rambus continues to use the spoils of its earlier misconduct – e.g., licenses with other manufacturers – to gain an advantage over Micron in this action. Based on Keystone Driller, the Delaware court previously determined that evidence of Rambus’s litigation misconduct in other cases was admissible in the Delaware case. Beynon Decl., Exh. 19 at 8-10 (Special Master’s Report and Recommendations on Micron’s Motion In Limine Regarding Allegations of Misconduct in Other Cases, dated Aug. 29 , 2007). 4. This Court Cannot Second-Guess Judge Robinson’s Ruling

In its brief, Rambus also argues that this Court should make an “independent prejudice determination” based on what Rambus alleges is the “superior record afforded by the procedural posture of this case.” Rambus Inc’s Brief on Delaware Court Ruling, Jan. 13, 2009 at 14:25–15:2 (‘244 D.E. 1978). In making this argument, Rambus ignores well-settled law that a court should never “second-guess” or reexamine another court’s reasoning or factual determinations before applying collateral estoppel. As this Court has held, “the focus for purposes of determining whether collateral estoppel applies is not whether the issue was correctly decided.” Cygnus Telecom. Tech., LLC v. Am. Intern. Telephonics, LLC, 569 F. Supp. 2d 1035, 1037 (N.D. Cal. 2008) (J. Whyte) (applying collateral estoppel to dismiss complaint of patentee whose patent was held invalid in another case). That a court should not consider whether it would reach a different conclusion is consistent with established law. United States v. Rubenstein, 971 F.2d 288, 293 (9th Cir. 1992) (holding court’s review of the correctness of the prior court’s factual determination “inconsistent with the application of collateral estoppel”); Arkla, Inc. v. United States, 37 F.3d 621, 626 (Fed. Cir. 1994) (“The Court that considers the question of collateral estoppel does not examine the reasoning of the court that decided the issue."); Stevenson v. Sears, Roebuck & Co., 713 F.2d 705, 709 (Fed.
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Cir. 1983) (“[A]n inappropriate inquiry is whether the prior finding of invalidity was correct”). Therefore, it would be inappropriate for this Court to consider whether it would reach a different conclusion than Judge Robinson since it must apply collateral estoppel. IV. CONCLUSION Rambus had a full and fair opportunity to litigate the unclean hands and spoliation issues in Delaware. It has represented over and over again that the Delaware trial would

conclusively resolve those issues between Rambus and Micron – in its own words, everyone should get “one shot” at those issues. Given its prior statements, there can be no real question that had Rambus won the spoliation trial in Delaware, it would be arguing that the issue should not be tried again in California. However, it lost. The application of collateral estoppel does not turn on which party won the prior suit. It turns on the application of the four-factor test discussed above, which is easily met in this case. For the foregoing reasons, the Court should (1) enter an order granting summary judgment that Rambus’s patents-in-suit in the ‘244 Action are unenforceable against Micron based on the collateral estoppel effect of Judge Robinson’s decision in the related Delaware action, and (2) enter judgment in favor of Micron and against Rambus on its claims for patent infringement in the ‘244 Action.

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Dated: January 19, 2009 By: Jared Bobrow JARED BOBROW (Bar No. 133712) Email: jared.bobrow@weil.com SVEN RAZ (Bar No. _222262) Email: sven.raz@weil.com WEIL GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: (650) 802-3000 Facsimile: (650) 802-3100 ELIZABETH STOTLAND WEISWASSER Email: elizabeth.weiswasser@weil.com DAVID LENDER Email: david.lender@weil.com WEIL, GOTSHAL & MANGES LLP 767 Fifth Avenue New York, NY 10153 Telephone: (212) 310-8000 Facsimile: (646) 842-0505 WILLIAM C. PRICE (Bar No. 108542) Email: william.price@quinnemanuel.com HAROLD A. BARZA (Bar No. 80888) Email: halbarza@quinnemanuel.com JON R. STEIGER (Bar No. 229814) Email: jonsteiger@quinnemanuel.com ROBERT J. BECHER (Bar No. 193431) Email: robertbecher@quinnemanuel.com QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 865 South Figueroa Street, 10th Floor Los Angeles, CA 90017 Telephone: (213) 443-3000 Facsimile: (213) 443-3100 Attorneys for Defendants MICRON TECHNOLOGY, INC. and MICRON SEMICONDUCTOR PRODUCTS, INC. /s/

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CASE NO. C 06-00244 RMW

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