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GREGORY P. STONE (SBN 078329) gregory.stone@mto.com PETER E. GRATZINGER (SBN 228764) peter.gratzinger@mto.com JEFFREY Y. WU (SBN 248784) jeffrey.wu@mto.com KEITH R.D. HAMILTON (SBN 252115) keith.hamilton@mto.com DAVID H. PENNINGTON (SBN 272238) david.pennington@mto.com MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, 35th Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 PETER A. DETRE (SBN 182619) peter.detre@mto.com MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (415) 512-4077 Attorneys for Plaintiff RAMBUS INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION RAMBUS INC., Plaintiff, v. STMICROELECTRONICS N.V.; STMICROELECTRONICS INC., Defendants. Case No. 3:10-cv-05449 RS RAMBUS INC.S MOTION FOR RELIEF FROM NONDISPOSITIVE PRETRIAL ORDER OF SPECIAL MASTER DATED MARCH 18, 2013

RAMBUSS MOT. FOR RELIEF FROM NONDISPOSITIVE PRETRIAL ORDER OF SPECIAL MASTER CASE NO. 3:10-CV-05449 RS

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1 I. 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 II. 24 25 26 27 28 All exhibits are attached to the Declaration of Jeffrey Y. Wu, submitted concurrently. All of Rambuss objections to the portion of the March 18 Order regarding STMicros production of JEDEC documents are set forth in this Motion. The pleadings and transcripts from the proceeding before the Special Master are submitted solely for the Courts convenience. -1RAMBUSS MOT. FOR RELIEF FROM NONDISPOSITIVE PRETRIAL ORDER OF SPECIAL MASTER CASE NO. 3:10-CV-05449 RS
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INTRODUCTION Pursuant to Fed. Civ. P. 72(a) and Civil L.R. 72-2, Plaintiff Rambus Inc. moves for relief

from the Special Masters March 18, 2013 Order Regarding Rambuss February 27, 2013 Motion to Compel. See Ex. A, at 2, 6.1 In response to Rambuss patent infringement claims, STMicro has asserted equitable defenses based on Rambuss alleged conduct, including alleged failure to comply with purported disclosure duties, at an industry standard-setting organization known as the Joint Electron Devices Engineering Council (JEDEC). See STMicros First Amended Answer (Dkt. 156) at 14, 6. Despite contending that it was a JEDEC member during the same time period as Rambus and relied on Rambuss conduct there, STMicro refused to search for and produce documents related to its involvmenet in JEDEC. On Rambuss motion to compel, the Special Master found that Rambuss requests for STMicros JEDEC-related documents are not reasonably calculated to lead to the discovery of admissible evidence, on the ground that the JEDEC disclosure duty is objective. While Rambus agrees that any JEDEC disclosure duty is objective, see, e.g., Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1104 (Fed. Cir. 2003), STMicros documents are discoverable because STMicro claims it relied upon its subjective understanding of JEDEC disclosure duties. Moreover, STMicro contends that the disclosure duty extends to members subjective intentions. The issue on a discovery motion is not the merits of Rambuss and STMicros theories regarding JEDEC disclosure duties, but whether Rambus is entitled to obtain documents likely to be probative of STMicros own contentions. Rambus respectfully requests an order from this Court vacating the portion of the Special Masters Order denying Ramuss motion to compel with regard to Rambuss JEDEC-related document requests. Cf. Ex. A at 2, 6. FACTS Between 1991 and 1996, Rambus was a member of a JEDEC standard-setting committee

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known as JC 42.3, which dealt with computer memory. STMicro has stated the theories for its JEDEC-based defenses in its interrogatory responses. STMicro claims, in essence, that JEDEC members had a duty to disclose patents, patent applications, or subjective intentions to file or amend patent applications in the future, which relate in unspecified ways to standards being developed at JEDEC, and that Rambus breached that duty by failing to make the supposedly required disclosures. STMicro claims that [t]here was a widely-held expectation among JEDEC members that a participant would disclose known patents and patent applications as well as planned applications that related to the standard setting work of JEDEC if that participant later planned to enforce patent rights on the JEDEC-compliant products. Ex. B at 7 (STMicros First Amended/Supplemental Responses to Plaintiff Rambus Inc.s Interrog. Nos. 8 & 9, June 29, 2012) (emphasis added) . STMicro further claims that [o]n information and belief, Defendants relied on their understanding of the JEDEC process and policies and therefore believed that it could use JEDEC standards and independently develop technology related thereto without fear of non-FRAND patent demands by JEDEC members and participants. Id. at 8 (emphasis added). STMicro further claims that Rambus made misrepresentations and/or material omissions directly to JEDEC members and participants. Id. Rambus served Document Requests Nos. 42-51, which seek documents related to STMicros participation in JEDEC, including STMicros understanding of and reliance upon the purported JEDEC policies and standards. Ex. C at 37-43 (STMicros Responses to Rambuss First Set of Requests for Production, Oct. 3, 2011). STMicro objected and agreed to produce only documents that would show the dates of its membership and the identities of employees who participated in JEDEC meetings. Id. Rambus then moved to compel. Rambus explained, inter alia, that document requests are probative of STMicros contention that it relied upon JEDEC disclosure policies. Ex. D at 7-8 (Letter from Peter Gratzinger to Judge Walker, Feb. 27, 2013). In subsequent meet-and-confers, STMicro objected mainly to producing documents related to committees other than JC 42.3 and documents from the period after 1996. Ex. E at 3 (Email from Peter Klivans to Peter Gratzinger et al., Mar. 5, 2013). Rambus offered to narrow the time period of the requests to 1991-2001, and to further narrow the requests for committees other than JC -2-

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42.3. Id. at 1 (Email from Jeffrey Wu to Robert Becher et al., Mar. 6, 2013). STMicro stated that it was ready to agree to search for documents from between 1991 and 1996 for the JC 42.3 committeethus confirming that it has not conducted a searchbut also stated that it likely has few responsive documents because STMicro spun off its memory division in 2008. Ex. F at 2-5 & n.4 (Letter from Elaine Y. Chow to Judge Walker, Mar. 7, 2013). On March 8, 2013, the Special Master, the Honorable Vaughn R. Walker (ret.), held a telephonic hearing. While the Special Master expressed concern about the breadth of the document requests, he explained that his overriding concern was that it does not appear that this discovery is likely to lead to admissible evidence. Ex. G at 54:11-13 (Hearing Transcript, Mar. 8, 2013). He explained: [W]hether or not STMicro complied or did not comply with the JEDEC standards is really an objective question rather than whether STMicro complied or did not comply with its own internal quote, understanding, close quote, of those standards. So Im not at all convinced that any of this is going to lead anywhere in terms of advancing the ultimate resolution of this litigation. Id. at 54:18-25; 64:2-4. The Special Master did not specifically address why STMicros documents would not be relevant to STMicros own claim that it relied upon JEDEC disclosure policies. On March 18, 2013, the Special Master issued and counsel for Rambus was served by email with the Order denying its motion to compel with regard to JEDECrelated document requests. Cf. Ex. A at 2, 6; Wu Decl. 2. Rambus now objects to that aspect of the Order. Fed. R. Civ. P. 72(a); Fed. R. Civ. P. 6(d). III. ARGUMENT The Special Masters decision may be vacated for an abuse of discretion. Fed. R. Civ. P. 53(f)(5). Respectfully, there was an abuse of discretion because the Special Master overlooked the potential relevance of STMicros documents to STMicros own JEDEC contentions. A. According to STMicros Own Theory, STMicros Documents Are Relevant to its JEDEC-Based Affirmative Defenses

Rambuss conduct at JEDEC has been extensively litigated in other cases, resulting in three published appellate decisions rejecting claims of alleged misconduct by Rambus at JEDEC. 27 See Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1347-49 (Fed. Cir. 2011); Infineon, 28 -3-

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318 F.3d at 1096-1106; Rambus Inc. v. FTC, 522 F.3d 456, 467-69 (D.C. Cir. 2008). The Federal Circuit in Hynix treated the scope of the JEDEC disclosure duty as definitively resolved in Infineon, and further held that the issue of whether Rambus breached that objective duty was likewise definitively resolved, in Rambuss favor, in Infineon. Hynix, 645 F.3d at 1347-50. While Rambus believes that Hynix and Infineon foreclose STMicros JEDEC-based defenses, at the discovery stage the issue is not the merits of STMicros defenses, but whether Rambus should be allowed to obtain documents potentially relevant to STMicros own contentions. First, in denying Rambuss motion, the Special Master did not consider the relevance of STMicros documents to its contention that it relied on [its] understanding of the JEDEC process and policies . Ex. B at 8 (emphasis added). Reliance is an element of STMicros estoppel defense. See A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1042-43 (Fed. Cir. 1992) (en banc) (to prove equitable estoppel [t]he accused infringer must show that, in fact, it substantially relied on the misleading conduct of the patentee in connection with taking some action). STMicros documents are probative of whether STMicro in fact relied on [its] understanding of the JEDEC process and policies, what its alleged understanding was, and the basis for its supposed understanding. Ex. B at 8. STMicros documents are also probative of whether STMicro heard and relied on allegedly misleading statements by Rambus at JEDEC. Id. (alleging misrepresentations). Second, STMicro contends that [t]here was a widely held expectation among JEDEC members that a participant would disclose known patents and patent applications as well as planned applications that related to the standard setting work of JEDEC . Ex. B at 7. The Special Master was right to recognize that STMicros compliance with any JEDEC disclosure duty is measured by an objective standard. See Infineon, 318 F.3d at 1104 (The JEDEC policy, though vague, does not create a duty premised on subjective beliefs. JEDECs disclosure duty erects an objective standard.); id. (A members subjective beliefs, hopes and desires are irrelevant). Under that objective standard, documents regarding members subjective intent are not relevant. But STMicro has a different theory of disclosure duties. STMicro claims that the expectation of disclosure extended to subjective intentions or plans that Infineon held to be -4-

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beyond the scope of any JEDEC disclosure duty, and that its theory of a broad disclosure duty was based on alleged member expectations. Compare Ex. B at 7 (contending that duty extended to planned applications based on widely held expectation among JEDEC members) (emphasis added) with Infineon, 318 F.3d at 1102 (The record does not show that JEDEC applied the disclosure duty to a members plans or intentions). While STMicros contention must ultimately fail on the merits under Infineon, this case is at the discovery stage, and STMicro has itself interjected the issue of subjective member expectations into this case, including whether STMicro itself had the expectation it alleges to have been widely held. Rambus should be allowed to take discovery to respond to STMicros affirmative defenses. B. Any Questions Regarding the Breadth of Rambuss Requests Can Be Remanded for Further Proceedings

STMicro objected to the breadth of Rambuss requests, and Rambus disagrees with those objections. But relevance, not overbreadth, was the basis on which the Special Master denied 13 Rambuss JEDEC-related document requests. STMicros objected mainly on grounds that its 14 search should be limited to documents related to the JC 42.3 committee at JEDEC from the 199115 1996 time period. Supra at 2. The Special Master did not address those objections. If scope was 16 the only issue, then the Special Master would have merely considered the extent of STMicros 17 production obligation, rather than deny all of Rambuss document requests directed to STMicros 18 own JEDEC-based affirmative defense. If the Court concludes that Rambuss requests 19 encompass documents potentially relevant to STMicros own JEDEC contentions, the most 20 efficient way to deal with disputes over the breadth of the requests is to remand them to the 21 Special Master for further proceedings on the appropriate scope of STMicros obligation to search 22 for and produce documents. 23 24 25 paragraph 6 of the Special Masters Order of March 18, 2013 denying Rambuss motion to 26 compel with regard to Document Requests Nos. 42-51. 27 28 -5IV. CONCLUSION For the foregoing reasons, Rambus respectfully requests an order from this Court vacating

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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 -6DATED: April 4, 2013

Respectfully Submitted, MUNGER, TOLLES & OLSON LLP

By:

/s/ Jeffrey Y. Wu Jeffrey Y. Wu

Attorneys for Plaintiff RAMBUS INC.