Case 5:05-cv-00334-RMW

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1 (Attorneys Listed On Signature Page)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

13 Plaintiff,
14 v.
15

12 RAMBUS INC.,

Case No. C 05-00334 RM
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY
Hearng Date: Time:
September 5, 2008
9:00 a.m.

16
17

HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUACTURING AMERICA INC.,

Courtroom: Judge:

6

Hon. Ronald M. Whyte

20 L.P.,

18 SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., 19 SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR,

21 NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION

22 U.S.A.,

23 Defendants.
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25

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27 28
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY

CASE No. C 05 00334 RMW; CASE No. C 05 02298 RMW;
CASE No. C 06 00244 RMW

Case 5:05-cv-00334-RMW

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2 Plaintiff,
3 v.
4 SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., 5 SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR,

1 RAMBUS INC.,

Case No. C 05-02298 RMW

6 L.P.,
8

7 Defendants.
RAMBUS INC.,

9
10
11

Case No. C 06-00244 RMW
Plaintiff,

v.

12
13

MICRON TECHNOLOGY, INC. and MICRON SEMICONDUCTOR PRODUCTS, INC.,
Defendants.

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15

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17 18

19

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23

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MICRON'S MOTION FOR SEPARATE TRIALS AND A STAY FOR

CASE No. C 05 00334 RMW; CASE No. C 05 02298 RMW;
CASE No. C 06 00244 RMW

Case 5:05-cv-00334-RMW

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1

TABLE OF CONTENTS
Page
i.
II.

2
3

INTRODUCTION .............................................................................................................. 2

4
5

BACKGROUN ................................................................................................................4
A. Procedural Summary Of The Pending Rambus Litigations .......... ...... ............. ....... 4

6 7
8

B. The Patent Trial Schedule ....................................................................................... 5
III.

TRIAL OF RAMBUS'S PATENT ININGEMENT CLAIMS AGAINST MICRON SHOULD NOT BE CONSOLIDATED WITH THOSE AGAINST THE OTHER MANUFACTURRS ...........................................................................................6
A. It Would Be Highly Prejudicial To Micron To Defend Against Rambus's

9

Infringement Claims In A Consolidated Trial With Hynix, Samsung, And Nanya......................................................................................................................8

10
11

1. Hynix I Jury Verdict and License Agreement............................................ 8
2. Samsung-Rambus SDRAM License and Older SDR and DDR

12
13

SDRAM Products .....................................................................................10
3. Nanya's Older SDR and DDR SDRAM Products ....................................11
B. Consolidation Could Impact The Admissibility Of A Spoliation Finding In

14
15

The Delaware Action ............................................................................................ 11
C. The Unfairness Of A Consolidated Trial Would Be Prejudicial To Micron ........12
1. A Consolidated Trial Would Require Prejudicial Compromise of

16
17

Micron's Trial Strategy .............................................................................12
2. A Consolidated Trial Would Risk Admission of Highly Prejudicial

18 19

Evidence That is Inadmissible Against Micron....... .... ................. ..... ... .... 13

3. A Consolidated Trial Would Be Unduly Confusing................................. 14
4. A Consolidated Trial Would Unfairly Play Into Rambus's Trial

20
21

Strategy ..................................................................................................... 15

iv.

THE PROCEEDINGS AGAINST MICRON SHOULD BE STAYED .........................~. 16
A. Trial Of Rambus's Patent Claims Against Micron Should Be Stayed
Pending The Resolution Of

22
23

Micron's Unclean Hands Defense In Delaware....... 16

B. Trial Of Rambus's Patent Infringement Claims Against Micron Should Be

Stayed Pending The Resolution Of Any Appeal Of The Hynix I Judgment ........ 18
24
25
V.

C. A Stay Would Not Prejudice Rambus...................................................................18
CONCLUSION .................................................................................................................20

26 27 28
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY

CASE No. C 05 00334 RM; CASE No. C 05 02298
RMW; CASE No. C 0600244 RMW

Case 5:05-cv-00334-RMW

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1

TABLE OF AUTHORITIES
Page(s)

2
3

4
5

CASES
Amato v. City of Saratoga Springs, New York,

170 F.3d 311 (2d Cir. 1999)................................................................................................8
Atkinson v. Roth, 297 F.2d 570 (3d Cir. 1961)................................................................................................7
CMAX, Inc. v. Hall,

6
7
8

9 10
11
City of

300 F.2d 265 (9th Cir. 1962)............................................................................................. 16
Capstraw v. New York Cent. R. Co., 15 F.R.D. 267 (N.D.N.Y. 1954)....................................................................................9,13
Harper Woods Employees Retirement Sys. v. ATX, Inc.,

12
13

No. C 04-04362 MJJ, 2005 WL 318813 (N.D. CaL., Feb. 7, 2005) ....................................7
Clopay Corp. v. Newell Cos., Inc.,
527 F. Supp. 733 (D. DeL. 1981) .........................................................................................9

14
15

DuPont v. Southern Pac. Co.,

16
17 18

366 F.2d 193 (5th Cir. 1966)............................................................................................... 7
E.E.O.c. v. HBE Corp.,

135 F.3d 543 (8th Cir. 1998)...............................................................................................7

19

FormFactor, Inc. v. Micronics Japan Co., No. CV-06-07159 JSW, 2008 U.S. Dist. LEXIS 13114 (N.D. CaL. 2008) .......................19
Henderson v. Prado,

20
21

Nos. C-05-0234 VRW, C-05-4220 VRW, 2007 WL 1229330 (N.D. CaL., Apr. 24, 2007) ...............................................................................................................................2,7

22
23

Hirst v. Gertzen, 676 F.2d 1252 (9th Cir. 1982)............................................................................................. 8
Houseman v. U.S. Aviation Underwriters, 171 F.3d 1117 (7th Cir. 1999).............................................................................................8
Hynix Semiconductor Inc., et aL. v. Rambus Inc., No. CV-00-20905-RMW, 2006 WL 2458761 (N.D. CaL., Aug. 22, 2006) ..............1,5,16

24
25

26
27 28

MICRON'S MOTION IN OPPOSITON OF CONSOLIDATION
AND FOR A

STAY ii

CASE No. C 05 00334 RM; CASE No. C 05 02298 RMW; CASE No. C 06 00244 RMW

Case 5:05-cv-00334-RMW

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1

2
3

TABLE OF AUTHORITIES (continued)
Page(s)

4
5

Indiana State Dist. Council of Laborers and Hod Carriers Pension Fund, et ai., v. Gecht, et ai., No. C-06-7274 EMC, 2007 WL 902554 at (N.D. CaL., Mar. 22, 2007) .............................7
Kelly v. Kelly,

6 7
8

911 F. Supp. 66 (N.D.N.Y. 1996) .......................................................................................6
Malcolm v. National Gypsum Co., 995 F.2d 346 (2d Cir. 1993)..................................,..........................................................2,7

9
10

Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93 (9th Cir. 1982)............................................................................................... 17
In re Paris Air Crash of

11

March 3,1974, 69 F.R.D. 310 (C.D. CaL. 1975) .........................................................................................7

12
13

Paxonet Comms., Inc. v. TranSwitch Corp.,
303 F. Supp. 2d 1027 (N.D. CaL. 2003) ........................................................................6, 17

14
15

Quintanila v. City of Downey,

84 F.3d 353 (9th Cir. 1996).................................................................................................8
16 17

Serco Services Co., L.P. v. Kelley Co., 51 F.3d 1031 (Fed.Cir. 1995)............................................................................................17

Single Chip Sys. Corp. v. Intermec IP Corp.,
18

495 F. Supp. 2d 1052 (S.D. CaL. 2007) ...............................................................................7

19

Transeastern Shipping Corp. v. India Supply Mission,

20
21

53 F.R.D. 204 (S.D.N.Y. 1971) .......................................................................................... 7
U.S. v. Ibrahim, 522 F.3d 1003 (9th Cir. 2008)........................................................................................... 19

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23

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STATUTES
Fed. R. Civ. P. 19, 20, 21................................................................................................................6
Fed. R. Civ. P. 42(b) .......................................................................................................................7

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27 28

FOR

MICRON'S MOTION FOR SEPARATE TRIALS AND A STAY

II

CASE No. C 05 00334 RM; CASE No. C 05 02298 RMW; CASE No. C 0600244 RM

Case 5:05-cv-00334-RMW

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1

NOTICE OF MOTION AND MOTION

2

3 TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
4 PLEASE TAKE NOTICE that on September 5,2008,1 at 9:00 a.m., or as soon thereafter
5 as the matter may be heard before the Honorable Ronald M. Whyte, United States District Court

6 for the Northern District of California, 280 South First Street, San Jose, California 95110,

7 Defendants and Counterclaimants Micron Technology, Inc. and Micron Semiconductor Products,

8 Inc. ("Micron") wil and hereby do move this Court for an order that Rambus' s patent
9 infringement claims and Micron's related defenses and counterclaims in Case No. C 06-00244

10 RMW ("the '244 action") wil be tried separately from the patent infringement claims that
11 Rambus has asserted, and defenses and counterclaims thereto, in its suit against the Hynix,
12 Samsung, and Nanya entities2 ("the '334 action") and its suit against the Samsung entities3 ("the

13 '2298 action"; all three collectively, the "DDR2 Actions").

14 Micron further requests a stay of the proceedings against Micron in the '244 action
15 pending (1) resolution of

Micron's unclean hands defense before Judge Robinson in the Delaware

16 Action,4 which involves many of the same patents and products at issue here, and (2) the outcome
17 of the expected appeal of the forthcoming final judgment in Hynix IS.
18 19

20
21

22
23

1 Following issuance of the Court's July 16, 2008 Scheduling Order, September 5, 2008 was the
first available date for a hearng on this motion. As such, Micron is filing this motion on August

24
25

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1,2008 - 35 days prior to the hearng date pursuant to Civil Local Rule 7.2 ("... all motions must be filed, served and noticed in writing on the motion calendar of the assigned Judge for hearng not less than 35 days after service of the motion") 2 Rambus Inc. v. Hynix Semiconductor Inc., et al., Case No. C 05-00334 RMW. 3 Rambus Inc. v. Samsung Semiconductor Co., Ltd., et ai., Case No. C 05-02298 RM.
4 Micron Technology, Inc., et al. v. Rambus Inc., Civil Action No. 00-792-SLR.
5 Hynix Semiconductor Inc., et al. v. Rambuslnc., Case No. C 00-20905 RMW.
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY
CASE No. C 05 00334 RMW; CASE No. C 05 02298
1
RMW; CASE No. C 06 00244

RM

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1

MEMORANDUM OF POINTS AND AUTHORITIES

2 I.

INTRODUCTION

3 Consolidation of cases for trial often serves the worthy objective of judicial economy. In

4 our system of justice, however, the interest in judicial economy "must yield to a paramount
5 concern for a fair and imparial triaL." Malcolm v. National Gypsum Co., 995 F.2d 346, 350 (2d
6 Cir. 1993) (benefits of consolidation "can never be purchased at the cost of fairness"); Henderson

7 v. Prado, Nos. C-05-0234 VRW, C-05-4220 VRW, 2007 WL 1229330 at *1 (N.D. CaL., Apr. 24,

8 2007) (1. Walker). For the reasons set forth below, Micron strongly opposes consolidation and
9 urges the Court to try these cases separately.

10 Rambus' s patent claims against Micron - which were brought in a separate proceeding

11 from Rambus's patent claims against the other Manufacturers - and Micron's related defenses
12 and counterclaims must be tried separately to preserve a fair and imparial trial and avoid undue

13 prejudice to Micron. The circumstances of each of the four Manufacturers differ fundamentally
14 in ways that would make a fair and impartial trial impossible if the cases were tried together. For
15 example:
16
17
18
. Hynix: Micron has not been a pary to any proceeding in which any of

19

20
21

Rambus's patents have been held valid or infringed. In contrast, in Hynix I, Rambus secured a jury verdict against Hynix that certain Hynix SDRAM products infringe several of Rambus's FarwaldIorowitz patents, including four patents that Rambus has asserted against Micron in the '244 action. The Hynix I verdict also upheld the validity of those Rambus patents. Rambus surely wil try to get the Hynix I verdict admitted into evidence against Hynix in subsequent patent litigations, just as it tried to do in the Conduct TriaL. If Rambus's case against Micron were consolidated with the case against Hynix, and if the Hynix I verdict came into evidence against Hynix, Micron would be

severely prejudiced. Furthermore, Micron has not entered into a license agreement with Rambus for any JEDEC compliant SDRAM products. In
contrast, Hynix previously entered into a license agreement with Rambus that includes an "Other DRAM" clause. Rambus argued during the Conduct Trial

22
23

that the clause covers "SDRAM and DDR SDRAM." Rambus wil surely
attempt to argue in any subsequent patent trial that the Rambus/Hynix license

24
25

agreement is an admission by Hynix that Rambus's patents are valid and infringed. Allowing Rambus to make this argument in a consolidated tral
would be highly prejudicial to Micron.
. Samsung: Micron has not entered into a license agreement with Rambus for

26 27 28

any JEDEC compliant SDRAM products. In contrast, in 2000, Samsung
agreed to pay Rambus royalties for varous generations of JEDEC SDRAMs.

Rambus wil surely argue that this is an admission by Samsung that the FarwaldIorowitz patents are valid and infringed and is evidence of a
MICRON'S MOTION FOR SEPARATE TRIALS AND FORA STAY

2

CASE No. C 05 00334 RMW; CASE No. C 05 02298

RMW; CASE No. C 0600244 RM

Case 5:05-cv-00334-RMW

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1

2
3

minimum or accepted royalty. Allowing Rambus to pursue these arguments in a consolidated trial would be highly prejudicial to Micron. In addition, Micron's SDR SDRAM and DDR SDRAM products are not at issue in the '244 action. In contrast, Samsung is fighting charges of infringement against these older generations of SDRAM. The presence of these older Samsung products in a consolidated trial with Micron would be prejudicial, because
those products may require evidence and testimony about, and evaluation of,

4
5

different hypothetical license negotiations than if those products were not in the case. All of this would create complexity and risk juror confusion.
. Nanya: Like Samsung, but unlike Micron, Nanya is fighting Rambus's

6

charges that its older generations of SDRAM products infringe Rambus
7
8
9. Conversely, because of Micron's unique position - Micron is the only Manufacturer that
patents. As explained above, the presence of these older Nanya products in a

consolidated trial with Micron would be highly prejudiciaL.

10 is litigating patent infringement issues against Rambus in Delaware - Rambus would surely seek

11 to exclude evidence in a consolidated trial that would be admissible in a separate trial with
12 Micron. For example, if Judge Robinson in Delaware finds in favor of Micron on its unclean
13 hands defense, or makes a finding that Rambus spoliated evidence, Rambus would seek to
14 exclude the evidence in a consolidated trial on the grounds that it would unfairly benefit the other

15 Manufacturers. Such an outcome would unduly prejudice Micron, which should be allowed to
16 present the jury with evidence that Rambus acted in bad faith and that Micron's ability to defend

17 itself has been damaged by Rambus's spoliation.

18 Moreover, as the Manufacturers' experience In the Conduct Trial demonstrated,
19 consolidation would substantially compromise Micron's ability to try its own case, would be

20 unduly confusing for a jury, would create otherwise unnecessary and prejudicial evidentiary

21 disputes, and would unfairly play into Rambus's litigation strategy of portraying the
22 Manufacturers as ganging up on Rambus.

23 Given the posture of these cases, the Hynix I case, and the Delaware Action, Micron also
24 opposes proceeding with a trial in January. Instead, for a host of reasons that wil further the

25 administration of justice, Rambus' s patent suit against Micron should be stayed pending

26 adjudication of Micron's unclean hands defense in the Delaware Action and the expected appeal
27 in Hynix i. A determnation in Micron's favor on its unclean hands defense in Delaware could

28 render a patent trial in this District unnecessary, or could substantially reduce or change the scope
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY
CASE No. C 05 00334 RMW; CASE No. C 05 02298

3

RMW; CASE No. C 0600244 RM

Case 5:05-cv-00334-RMW

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Page 9 of 26

1 of the trial, because many of the patents-in-suit and accused products overlap between the '244

2 action and the Delaware Action.6 Likewise, the Federal Circuit's rulings on the anticipated
3 appeal in Hynix I wil impact Rambus's patent infringement claims against Micron. For example,

4 should the Federal Circuit reverse the jury's antitrust verdict, a patent trial would be wholly
5 unnecessary. A patent trial also would be unnecessary or substantially narowed if the Federal
6 Circuit decides in favor of Hynix on claim construction or written description. Even if the

7 Federal Circuit were to decide in favor of Rambus, the Federal Circuit's rulings on claim
8 construction, written description, and obviousness, while not binding on Micron, nonetheless

9 would certainly influence subsequent proceedings in this case, just as the decision of the Federal

10 Circuit in the Infineon case was briefed and argued during claim construction in this case. In
11 contrast, Rambus would not suffer any substantial prejudice from a stay, because it represented to
12 the Court and the Jury during the Conduct Trial that it is not seeking an injunction, only monetary

13 damages. 3-25-08 Trial Tr. at 5964:24-5965:14 (D.E. 1751)7; 2-5-08 Trial Tr. at 426:12-17 (D.E.
14 1724).
15

II.

BACKGROUN
A.

16

Procedural Summary Of The Pending Rambus Litigations

17 There are two cases pending between Micron and Rambus - one before this Court and
18 another in Delaware - that involve overlapping patents and products. Rambus sued Hynix,

19 Samsung, and Nanya for patent infringement in this District in two separate suits not involving
20 Micron.

21 Micron filed the Delaware Action against Rambus on August 28, 2000, seeking a
22 declaratory judgment of invalidity and non-infringement of eight patents that claim priority to the

23 original Farmwald/orowitz application. Rambus countersued, alleging infringement of its
24
25

26 27 28

6 The vast majority of patents-in-suit in the '244 Action claim priority to U.S. Application SIN 510,898, filed April 18, 1990. All of the patents-in-suit in the Delaware Action claim priority to the same application. 7 Unless otherwise stated, Docket Entry ("D.E.") refers to the Docket Entry in Rambus Inc. v. Hynix Semiconductor Inc., et ai., Case No. C 05-00334 RMW.
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY

4

CASE No. C 05 00334 RMW; CASE No. C 05 02298

RMW; CASE No. C 06 00244 RM

Case 5:05-cv-00334-RMW

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Page 10 of 26

1 patents. Declaration of Sven Raz ("Raz Decl.), Exh. A (Rambus's Answer and Counterclaims to

2 Micron's Amended Complaint (D. DeL., Feb. 15,2001)).
3 Four years later, on January 25, 2005, Rambus fied suit against Hynix and Nanya in the

4 Northern District of California, alleging infringement of certain Rambus patents (the '334
5 Action). Rambus's January 25,2005 '334 Complaint (D.E. 1). Later that year, on June 6, 2005,
6 Rambus filed suit against Samsung for patent infringement, also in the Northern District of
7 California. Rambus's June 6, 2005 '2298 Complaint (Samsung D.E.8 1). That same day,

8 Rambus amended its complaint against Hynix and Nanya in the '334 Action by adding Samsung
9 as a pary to that lawsuit. Rambus's June 6,2005 Amended '334 Complaint (D.E. 23).

10 Days later, Rambus filed a motion in the Delaware Action against Micron for leave to
11 amend its counterclaims to add four additional patents: U.S. Patent Nos. 6,324,120 ("the '120
12 Patent"), 6,378,020 ("the '8,020 Patent"), 6,426,916 ("the '916 Patent"), and 6,452,863 ("the '863
13 Patent"). Raz Decl. Exh. B (Rambus's Motion for Leave to File Supplemental and Second

14 Amended Counterclaims (D. DeL., June 13, 2005) and Rambus's Supplemental and Second
15 Amended Counterclaims (without exhibits)). The Delaware court granted Rambus's motion on
16 January 13,2006. Raz Decl. Exh. C (Memorandum Opinion (D. DeL., Jan. 13,2006)).

17 That same day, Rambus filed a separate lawsuit, the '244 Action, against Micron in the

18 Northern District of California, alleging patent infringement. Rambus's January 13, 2006
19 Complaint, (Micron D.E. 19). In July 2007, Rambus filed Counterclaims On Reply in the '334
20 and '244 Actions, alleging infringement by the Manufacturers of the '120, '8,020, '916, and '863

21 patents that it had previously asserted against Micron in the Delaware Action. See Rambus's
22 Counterclaims On Reply (Micron D.E. 101; D.E. 250, 251, and 252).
23

B.

The Patent Trial Schedule

24
25

Last year, this Court consolidated for trial the Manufacturers' claims and counterclaims
against Rambus that arose from Rambus's JEDEC misconduct, including its secret plan to draft

26 27 28

patent claims in an effort to cover the JEDEC SDRAM standards and then enforce those claims
8 Docket Entry in the '2298 Action.
9 Docket Entry in the '224 Action.
MICRON'S MOTION FOR SEPARATE TRIALS AND FORA STAY
CASE No. C 05 00334 RMW; CASE No. C 05 02298

5

RMW; CASE No. C 06 00244 RMW

Case 5:05-cv-00334-RMW

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Page 11 of 26

1 against the JEDEC membership. The Court did so over Micron's objection. February 16, 2007
2 Tr. at 29-34; 3/23/07 CMC Statement (Micron D.E. 63) (Micron opposing consolidation); April

3 24, 2007 Joint Case Management Order (D.E. 174) at § 1.a.
4 At the same time, the Court explained that it would be "premature to decide whether all
5 the patent claims in all three of the 05-06 Cases should be coordinated for purposes of triaL." June

6 25, 2007 Further Case Management Order, Section V (D.E. 222) (holding that the January 19,

7 2009 patent trial date was reserved for either "the trial or first trial (if more than one)";

8 emphasis added); see also April 24, 2007 Joint Case Management Order (D.E. 174) at §1.b.,
9 Attachments C, D (referring to "5-06 Patent Trial(s))" (emphasis added). The Court revisited the

10 issue for the first time a year later, on July 16, 2008, when it issued its Patent Trial Scheduling

11 Order. There, the Court stated that its schedule "proceeds on the expectation of holding a
12 consolidated triaL." Patent Trial Scheduling Order (D.E. 1963). The Court also invited the paries

13 to file a motion requesting severance by August 1, 2008 for good cause. Id.1O

14 III. TRIAL OF RAMBUS'S PATENT INFRINGEMENT CLAIMS AGAINST MICRON SHOULD NOT BE CONSOLIDATED WITH THOSE AGAINST THE

15 OTHER MANUACTURRS

16 Rambus brought its patent infringement claims against Micron in this district in a separate
17 lawsuit, the '244 Action, from its patent infringement claims against Hynix, Samsung, and Nanya

18 (the '334 and '2298 Actions). Federal Rule of Civil Procedure 42(aJ permts consolidation of
19 "actions... involv(ing) a common question of law or fact" in the interest of judicial convenience.

20 While a common question of fact or law is a prerequisite to consolidation, the mere presence of a
21 common question does not require consolidation. E.g. Kelly v. Kelly, 911 F. Supp. 66, 69

22 (N.D.N.Y. 1996). Moreover, a court's discretion to consolidate cases against different defendants
23 is limited by a paramount concern for a fair and imparial triaL. A court must "weigh() the interest

24 in judicial convenience against the potential for delay, (jury) confusion, and prejudice caused by
25 consolidation." E.g., Paxonet Comms., Inc. v. TranSwitch Corp., 303 F. Supp. 2d 1027, 1028

26

27 10 Micron is not moving for a severance under Federal Rule of Civil Procedure 21 because that

presumes that the paries are "joined" in a single action. See, e.g., Fed. R Civ. P. 19, 20, 21.
28 Here, Rambus has brought its claims against Micron in a separate action.
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY
CASE No. C 05 00334 RMW; CASE No. C 05 02298 RMW; CASE No. C 0600244 RMW

6

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Page 12 of 26

1 (N.D. CaL. 2003) ("(t)o determne whether to consolidate, a court weighs the interest in judicial
2 convenience against the potential for delay, confusion, and prejudice caused by consolidation.");
3 see also FED. R. Civ. P. 42(b) (permtting deconsolidation of an action for trial for convenience,

4 avoidance of prejudice, and economy). Significantly, "(c)onsolidation is inappropriate () if it
5 leads to inefficiency, inconvenience, or unfair prejudice to a party."ll E.E.O.c. v. HBE Corp.,

6 135 F.3d 543, 551 (8th Cir. 1998); Malcolm, 995 F.2d at 350 ("The benefits of efficiency can
7 never be purchased at the cost of fairness."); City of Harper Woods Employees Retirement Sys. v.

8 ATX, Inc., No. C 04-04362 MJJ, 2005 WL 318813 at *1 (N.D. CaL., Feb. 7, 2005) (1. Jenkins)
9 (unpublished) (citing Malcom, 995 F.2d at 350) ("While it has broad discretion to consolidate, a
10 court cannot permt the benefits of convenience and judicial economy to outweigh the concern for

11 a fair and imparial triaL"); Henderson, 2007 WL 1229330 at *1 (1. Walker) ("(C)onsiderations of

12 convenience and economy must yield to a paramount concern for a fair and imparial triaL")
13 (denying consolidation). Improper consolidation, resulting in prejudice at trial, is reversible error.

14 Malcolm, 995 F.2d at 350; DuPont v. Southern Pac. Co., 366 F.2d 193, 196 (5th Cir. 1966)
15 (citing Atkinson v. Roth, 297 F.2d 570 (3d Cir. 1961)).

16 The law on separate trials - codified at Federal Rule of Civil Procedure 42(b) - also is
17 designed to ensure that parties receive a fair and imparial triaL. Rule 42(b) permts a court to
18 order separate trials "for convenience, to avoid prejudice, or to expedite and economize." Fed. R

19 Civ. P. 42(b)(emphasis added). Because the standards of convenience, avoidance of prejudice,
20 and what wil be conducive to expedition and economy are all in the alternative, the presence of
21 anyone factor is sufficient for a separate triaL. In re Paris Air Crash of March 3, 1974,69 F.RD.

22
23

11 Since separately filed lawsuits are presumptively tried separately, Micron should not bear the
burden of demonstrating that consolidation is inappropriate. Single Chip Sys. Corp. v. Intermec IP Corp., 495 F. Supp. 2d 1052, 1057 (S.D. CaL. 2007) (movant bears "burden of establishing that

24
25

26 27
28

the judicial economy and convenience benefits of consolidation outweigh any prejudice"); Indiana State Dist. Council of Laborers and Hod Carriers Pension Fund, et ai., v. Gecht, et ai., No. C-06-7274 EMC, 2007 WL 902554 at *1, (N.D. CaL., Mar. 22,2007); Transeastern Shipping Corp. v. India Supply Mission, 53 F.RD. 204, 206 (S.D.N.Y. 1971) ("The burden is on the movant to convince the court that there should be consolidation."). The Court stil needs to make a finding that convenience and economy do not deprive the Manufacturers of a fair and imparial
triaL.
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY
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1 310, 311, 319 (C.D. CaL. 1975); Houseman v. U.S. Aviation Underwriters, 171 F.3d 1117, 1121
2 (7th Cir. 1999) ("only one of

these criteria. . . need be met before a court can order separation.").

3 Separate trials are waranted "to avoid prejudice, as where evidence admissible only on a
4 certain issue may prejudice a party in the minds of the jury on other issues." In re Paris at 320. 5 See also Quintanilla v. City of Downey, 84 F.3d 353, 356 (9th Cir. 1996) (ordering separate trials

6 because evidence admissible only against one defendant would be potentially prejudicial to
7 another defendant and confusing to the jury); see also Amato v. City of Saratoga Springs, New

8 York, 170 F.3d 311, 316 (2d Cir. 1999) (ordering separate trials because evidence against one
9 defendant in the second phase was inadmissible or unfairly prejudicial to the other defendants in
10 the first phase). Separate trials are also appropriate where doing so "simplified the issues for the
11 jury" and reduced "the danger of unnecessary jury confusion." Hirst v. Gertzen, 676 F.2d 1252,

12 1261 (9th Cir. 1982).

13 Here, consolidating the patent infringement suits against Micron and the other
14 Manufacturers for trial would unduly prejudice Micron. First, fundamental differences in the
15 Manufacturers' circumstances make a fair and imparial trial impossible if the patent claims are

16 tried against them in a consolidated triaL. Second, Micron would be unduly prejudiced because
17 Rambus would seek to exclude evidence from a consolidated trial that would be admissible in a

18 Micron-only triaL. Third, consolidation would prejudice Micron by substantially compromising
19 its ability to try its own case, would generate otherwise unnecessary and prejudicial evidentiary

20 issues, and would unfairly play into Rambus's litigation strategy of portraying the Manufacturers
21 as ganging up on Rambus.

22
23

A.

It Would Be Highly Prejudicial To Micron To Defend Against Rambus's Infringement Claims In A Consolidated Trial With Hynix, Samsung, And Nanya
1. Hynix I Jury Verdict and License Agreement

24
25

In Hynix I, Rambus obtained a jury verdict against Hynix that various Farmwald/orowitz

26 27
28

patents, including '120 (claim 33), '8,020 (claim 36), '916 (claim 28), and '863 (claim 16), are
valid and infringed. Special Verdict Form, filed April 24, 2006 (Hynix ID.E.12 2053). Rambus is
12 Docket Entry in the Hynix I case.

MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY

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1 asserting those same patents (and claims) against Micron and the other Manufacturers in these

2 subsequent proceedings. Raz Decl., Exh. D (Rambus Inc.'s Supplemental Disclosure of Asserted

3 Claims and Preliminary Infringement Contentions) at 3. There can be no doubt that Rambus wil
4 seek to introduce the Hynix I jury verdict during the Januar 19 triaL. Indeed, Rambus sought to
5 introduce the Hynix I verdict in the Conduct TriaL. E.g., 1-31-08 Trial Tr. at 138:17-139:4 (D;E.

6 1722). Rambus would do so not only to show that its patents are valid and infringed, but also as
7 evidence of a reasonable royalty. The verdict is inadmissible against Micron, and admitting it
8 into evidence in a consolidated trial, even with a limiting instruction, would taint the proceedings

9 and deprive Micron of a fair trial on the merits. Clopay Corp. v. Newell Cos., Inc., 527 F. Supp.
10 733, 735 (D. DeL. 1981) ("Juries in patent cases are frequently called upon to weigh extraordinary

11 volumes of complex materials. In such situations, it may not be reasonable to expect a jury to
12 screen out, in its deliberations regarding one defendant, evidence it has been instructed to

13 consider with respect to another defendant. In short, the interests of justice in these cases may
14 dictate separate trials to different juries.") (denying motion to consolidate two patent cases); see

15 also Capstraw v. New York Cent. R. Co., 15 F.RD. 267, 268-69 (N.D.N.Y. 1954) ("The ritual of

16 instructing the jury to disregard as to one, and to consider it as to the other, is theoretically correct
17 but in my judgment should be avoided whenever possible.") (denying motion to consolidate).

18 Further, Hynix's status as an alleged licensee would prejudice Micron in a consolidated
19 triaL. While Micron has not entered a license agreement with Rambus covering any generations

20 of SDRAM products, Hynix previously entered into a license agreement which, during the
21 Conduct Trial, Rambus asserted contained a provision - the "Other DRAM" clause - that was

22 broad enough to cover "SDRAM and DDR SDRAM." 2-20-08 Trial Tr. at 1947:14-1949:23

23 (D.E. 1731). Rambus is certain to argue that this license agreement (and its "Other DRAM"
24 clause) is an admission by Hynix that Rambus's patents are valid and that SDRAM and DDR

25 SDRAM infringe. Similarly, admission of Rambus's subsequent license negotiations with Hynix

26 in 2000 for SDRAM products would prejudice Micron. Rambus surely wil argue, as it did
27 during the Hynix I patent trial, that Hynix's alleged failure to object during those negotiations to

28 the royalty rates that Rambus seeks constitutes an admission that they are reasonable. E.g., Raz
MICRON'S MOTION FOR SEPARATE TRIALS AND A STAY FOR
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1 Decl. Exh. G at 165:12-166:11 (Hynix I Patent Trial Tr. (3-16-06)). Forcing Micron to sit as a

2 defendant with Hynix in the face of these allegations would be enormously prejudiciaL. In a
3 consolidated trial, once the jury believes that one defendant has admitted that the patents are
4 valid, infringed, or valuable, the jury is much more likely to think that the other defendants have

5 conceded those issues, too. In addition, a jury is much less likely to accept Micron's attacks on
6 validity, infringement, and damages when those attacks must be made with a co-defendant whom
7 the jury wil be told has admitted infringement and validity.

8

2.

Samsung-Rambus SDRAM License and Older SDR and DDR SDRAM Products

9

10 Unlike Micron, Samsung previously entered into a license agreement with Rambus for
11 varous generations of SDRAM products. See 2-27-08 Trial Tr. at 3069:7-3070:20 (D.E. 1736)

12 (Tate). Rambus undoubtedly wil argue that Samsung's conduct in taking this license is an
13 admission by Samsung that the patents-in-suit are valid and infringed by standardized JEDEC

14 products. Rambus also wil argue that the royalty rate in the original Samsung license agreement
15 is evidence of a minimum royalty, of widespread "acceptance" of the inventions by others in the
16 field, and of commercial success. As explained above, Micron would be prejudiced were it

17 required to defend against these allegations while seated alongside Samsung at counsel table. Put

18 simply, there is a substantial risk that the jury wil view Samsung as having made concessions
19 regarding the validity, infringement, and value of these patents and it wil be much harder for

20 Micron to rebut those charges with Samsung as a co-defendant.

21 Rambus has accused Samsung's older generation SDRAM products of infringement.
22 These products are not at issue in the Micron-only '244 action and raise unique issues that are

23 likely to confuse the jury. For instance, as the older generation SDRAM products predate DDR2

24 SDRAMs, different assumptions may have to be made concerning the date, and conduct, of
25 hypothetical license negotiations in a damages analysis. Given the already complex nature of the

26 case, it would be unnecessarly difficult for the jury to juggle different hypothetical license
27 negotiation dates (and keep straight the different economic and other forces that may be at play at

28 those different dates) for each of the Manufacturers and their different products. Moreover, these
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1 difference also mean that the Manufacturers wil

likely have to rely on different damages experts.

2 Yet, Rambus wil surely argue to the Manufacturers' prejudice that any necessary differences in
3 the experts' opinions mean that none of

them is credible.

4

3.

Nanya's Older SDR and DDR SDRAM Products

5 Like Samsung, but unlike Micron, Nanya's older generation SDR SDRAM and DDR

6 SDRAM products have been accused of infringement. For the reasons outlined above, the
7 inclusion of these products in a consolidated trial would be unduly prejudicial to Micron.

8

B.

Consolidation Could Impact The Admissibilty Of A Spoliation Finding In
The Delaware Action

9 10
11

Micron also would be prejudiced if it could not introduce a judicial decision from the
Delaware Action as a result of consolidation. In Delaware, Micron and Rambus are currently
completing post-trial briefing on Micron's defense of unclean hands and a final hearing on the
defense has been set for September 19, 2008. The defense, which is based in par on allegations

12
13

14
15

that Rambus spoliated evidence, was tried last November. While adjudication of Micron's
unclean hands defense is reserved for a separate phase in the '244 action (CMC Order dated April

16
17 18

24, 2007 (Micron D.E. 70)), a finding of unclean hands or spoliation in Delaware would be
relevant in a patent trial against Micron in this Court. Among other reasons, Micron should be
allowed to present such a finding by the Court in Delaware to explain how Rambus's misconduct
has disadvantaged Micron in this litigation.

19

20
21

In a Micron-only trial, Rambus would have no basis to exclude such a finding from
evidence. In a consolidated trial, however, Rambus wil undoubtedly move in limine to keep out

22
23

a finding of spoliation on the ground that such evidence is inconsistent with the finding of Hynix I

or engenders a risk of jury confusion if Micron - but not the other Manufacturers - is allowed to
rely on a finding of spoliation. Micron would be prejudiced if a spoliation finding from Delaware

24
25

(or other evidence admissible in a Micron-only trial) were kept out because the patent trials were
13
consolidated.

26
27 28

13 Rambus may argue that evidence of spoliation (or an adverse inference) should not be considered by the jury regardless of consolidation, because "any claim or defense" based on "allegations" of Rambus's "destruction of documents, litigation misconduct, or spoliation of
MICRON'S MOTION FOR SEPARATE TRIALS AND CASE No. C 05 00334 RMW; CASE No. C 05 02298

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1

c.

The Unfairness Of A Consolidated Trial Would Be Prejudicial To Micron

2 Micron wil face substantial prejudice if it is forced to defend itself in a consolidated
3 patent trial because consolidation would require Micron to compromise on strategy, would risk

4 admission of highly prejudicial evidence that would not be admissible in a Micron-only trial,

5 would be impractical, and would unfairly expose Micron to Rambus's collateral allegations that
6 the Manufacturers are ganging up on Rambus.

7
8

1.

A Consolidated Trial Would Require Prejudicial Compromise of Micron's Trial Strategy

9 Presenting a consolidated case would force Micron to compromise its trial strategies to

10 create harony with the other Manufacturers' own strategic views. For example, the parties have
11 unique defenses and counterclaims, and it wil be extremely difficult, if not impossible, to present

12 those effectively in a consolidated patent triaL. See Attachment D(1) of the April 24, 2007 Joint

13 CMC Order (Micron D.E. 70) (listing the Manufacturers' defenses and counterclaims). One of

14 Micron's license defenses, which is premised on an assignment of Dr. Farmwalds rights to the
15 alleged inventions to his former employer (MIPS) and subsequent license of the assigned rights to

16 Micron, would be completely off-topic for all the other Manufacturers. Since the other
17 Manufacturers wil be hesitant to spend time on an issue that is irrelevant to them, or build it into

18 the framework of the trial, it wil be difficult for Micron to present this defense effectively. As
19 such, and perhaps not surprisingly, a pary specific defense is likely to get lost in the shuffe. It

20 would be unfair to Micron to be forced to effectively abandon its unique defenses. Given the
21 differences among the Manufacturers and their positions, it also is likely that Micron would have

22 to compromise its strategies in many other contexts, such as jury selection. A prospective juror's
23 preconceptions may be prejudicial to Micron and its defenses but not to the other Manufacturers,

24 makng coordinated decisions about cause and peremptory challenges unworkable.
25

26

27 evidence" is to be "adjudicated separately" from the patent triaL. CMC Order dated April 24, 2007 (Micron D.E. 70). However, Micron is not asking the jury to adjudicate the issue. Instead,

28 it is the Delaware Court that is adjudicating the issue.
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1

2.

A Consolidated Trial Would Risk Admission of Highly Prejudicial

2

Evidence That is Inadiiissible Against Micron

3 Consolidation also would be prejudicial and unfair to Micron because Rambus is likely, as
4 it did in the Conduct Trial, to offer evidence that is admissible (if at all) against another

5 Manufacturer but inadmissible and highly prejudicial as against Micron. The prejudice resulting
6 therefrom warrants separate trials. See Capstraw, 15 F.R.D. at 268-69 ("The ritual of instructing
7 the jury to disregard as to one, and to consider it as to the other, is theoretically correct but in my

8 judgment should be avoided whenever possible.").
9 Indeed, there were numerous instances during the Conduct Trial where the Court admitted

10 exhibits against Hynix that were inadmissible and prejudicial as against Micron. For example:
11 . The Court admitted Exhibit 6523 as evidence of Hynix's beliefs but not as to Micron

12 or Nanya. This exhibit, an email from Mr. Tabrizi of Hyundai (Hynix) stated that the

13 first 5 claims of U.S. Patent SIN 5,995,443 (a Farwald/orowitz patent), if valid,
14
15

covered "all DDR memories." 3-5-08 Trial Tr. at 3964:21-3966:15 (D.E. 1740).
Admission of this exhibit in a consolidated patent trial would be irreparably

16 17
18

prejudicial to Micron. It would be simply unrealistic to assume that the jury would be
able to consider this evidence only against Hynix but not Micron.
. The Court also admitted Exhibit 5020, a Design Proposal for Hyundai's (Hynix) 64

19

Megabyte SDRAM Fourth Generation Product. 2-19-08 Trial Tr. at 1909:22-1912:22

20
21

(D.E. 1730). Rambus alleges that this document shows that Hynix used the Rambus
RDRAM to implement dual edge clocking in its DDR SDRAM. Id. Indeed, even the
Court found that this evidence "suggest(s) the Manufacturers utilized Rambus's
inventions." July 24,2007 Order Denying the Manufacturers' Motion for a New Trial

22
23

24
25

(D.E.3856). In light thereof, admission of this exhibit in a consolidated trial would be
irreparably prejudicial to Micron even with a limiting instruction.
. The Court also admitted Exhibit 6634, an email from Mr. Tabrizi of Hyundai (Hynix)

26
27 28

as a pary admission by Hynix and overrled Nanya's hearsay objection. 2-6-08 Trial

Tr. at 754:1-754:19 (D.E. 1725). The Exhibit states that Hynix was "putting our
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1 (their) forces together to fight Rambus on their patent claims on SDR/DR."
2 Admission of the Exhibit would be prejudicial in a consolidated patent triaL.

3 Judging by the proceedings in the Conduct Trial, disputes over evidence that may be

4 admissible as to one pary (if at all) but not admissible (and highly prejudicial) as to others would
5 also be a persistent problem in a consolidated patent triaL. Micron should not have to defend
6 against evidence that would not be admissible in a Micron-only triaL.

7
8

3.

A Consolidated Trial Would Be Unduly Confusing

Trying Rambus's patent infringement claims against the Manufacturers on a consolidated
basis would be unduly confusing to the jury and prejudicial to Micron.

9 10
11

A consolidated patent trial would present an unnecessary and prejudicial risk of jury
confusion on the issue of infringement, because the Micron products that Rambus has accused of
infringement are not the same as the products of Hynix, Samsung, and Nanya.14 Rambus has not

12
13

accused Micron's SDRAM or DDR SDRAM products. At the same time, Rambus has accused
Samsung and Nanya's SDRAM and DDR SDRAM products, as well as Samsung's Mobile

14
15

SDRAM and Mobile DDR SDRAM. SDRAM, DDR SDRAM, Mobile SDRAM, and Mobile
DDR SDRAM have different features than DDR2 and DDR3. Similarly, the only Micron

16 17
18

graphics memory par that has been accused of infringement is GDDR3 SDRAM. Yet the jury
wil hear evidence about many other graphics memory products that Micron does not make or

19

sell, but that Hynix and Samsung do make and sell, including GDDR2 SDRAM, GDDR 4

20
21

SDRAM, and Samsung's SGRAM and DDR SGRAM. These graphics memory products do not

all share the same features or functions, which may lead to jury confusion. Given the sheer
number of accused products, the enormous number of asserted patents claims (currently 25), and

22
23

the number of defendants, it wil be extremely difficult and confusing for a jury to try and keep
track of which products are at issue for each of the Manufacturers, which claims they allegedly

24
25

14 Rambus's April 3, 2006 Disclosure of Asserted Claims And Infringement Contentions ('2298

26 27 28

Action) (Raz Decl. Exh. I), Rambus's February 23,2007 Disclosure of Asserted Claims And Infringement Contentions ('244 Action) (Raz Decl. Exh. J); Rambus's February 23,2007 Disclosure of Asserted Claims And Infringement Contentions ('334 Action) (Raz Decl. Exh. K); Rambus's July 20, 2007 Supplemental Disclosure of Asserted Claims And Infringement Contentions (DDR2 Actions) (Raz Decl. Exh. D).
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY

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1 infringe, and which features are at issue. As a result, consolidation would unnecessarily increase

2 the risk that the jury wil consider evidence of alleged infringement by one Manufacturers'
3 product as to another Manufacturers' entirely different product.

4 Confusion also is likely on the issue of damages. In determning a reasonable royalty, the
5 hypothetical license negotiation generally is assumed to take place when the accused infringer

6 began to infringe. Here, it is highly likely that the timing of the hypothetical license negotiation

7 would be very different for each defendant, because the accused products for each Manufacturer
8 are different and because different generations of products are at issue. Samsung, for example,

9 began making or selling its SDR SDRAM products long before Micron began making or selling

10 its DDR2 SDRAM products. Given the complex nature of the case, and numerous products at
11 issue for each Manufacturer, it would be unnecessarily difficult for the jury to apply different

12 assumptions (economic, market, licensing, and otherwise) for the hypothetical license
13 negotiations of each Manufacturer.
14
15

4.

A Consolidated Trial Would Unfairly Play Into Rambus's Trial Strategy

16 Consolidation would be prejudicial to the Manufacturers because the presence of all four
17 Manufacturers at counsel table permts Rambus to taint the jury's perception of the Manufacturers

18 by portraying itself as David facing the collective Goliath. Indeed, Rambus is likely to exploit
19 this procedural posture during a consolidated patent trial, just as it did during the Conduct TriaL.

20 Rambus's presentation of its David v. Goliath theme began only minutes into the triaL. During

21 opening statements, Rambus emphasized the collective size of the Manufacturers by suggesting
22 the Manufacturers together sold hundreds of millions of dollars of DRAMs. 2-4-08 Trial Tr. at

23 318:11-25 (D.E. 1723). Indeed, the Court recognized the prejudicial effect of Rambus's
24 argument and instructed Rambus to stop:

25 What do you think three companies like this would sell of DRAM in eight years? One hundred milion dollars worth? Two hundred millon?
26

The Court: Okay. Let's make opening statement, not an argument.
27 28

Mr. Stone: They had sold - they have sold 50 billion in product worldwide with a huge chunk of that sold in the United States, roughly one-third.
MICRON'S MOTION FOR SEPARATE TRIALS AND FORA STAY
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1 Id. Rambus repeated the same line of argument during closing. 3-25-08 Trial Tr. at 5958:20-22

2 (D.E. 1751). At the same time, Rambus took painstaking steps to present itself as a small and
3 vulnerable company. E.g. 2-4-08 Trial Tr. at 340:10-341:15 (D.E. 1723) ("They were a very

4 small company when they started in 1990 ... . By 1991, they were stil a small company.").
5 Consolidation of the patent trial would unfairly work to Rambus's benefit and deprive the

6 Manufacturers of a fair and imparial trial by distorting the jury's relative perception of the

7 parties.
8 Here, any gains in economy from consolidating Rambus's lawsuit against Micron with
9 those against the other Manufacturers can simply not overcome the prejudice and potential for

10 jury confusion that consolidation would cause.
11

iv.

THE PROCEEDINGS AGAINST MICRON SHOULD BE STAYED

12 As this Court previously recognized, it has discretion to stay this case in a manner that

13 will promote economy of time and effort. Hynix Semiconductor Inc., et ai. v. Rambus Inc., No.
14 CV-00-20905-RMW, 2006 WL 2458761 at *1-2 (N.D. CaL., Aug. 22, 2006) (citing CMAX, Inc. v.

15 Hall, 300 F.2d 265, 268 (9th Cir. 1962)). In determning whether a stay should be granted, the
16 Court must weigh the following competing interests: "the possible damage which may result from

17 the granting of a stay, the hardship or inequity which a pary may suffer in being required to go
18 forward, and the orderly course of justice measured in terms of the simplifying or complicating of
19 issues, proof, and questions of law which could be expected to result from a stay." Id.

20 Here, a stay of Rambus's proceedings against Micron pending resolution of Micron's
21 unclean hands defense in the related litigation in Delaware and resolution of the expected appeal
22 of the forthcoming final judgment in Hynix I would promote economy, reduce hardship on

23 Micron, and simplify the issues, without unduly prejudicing Rambus.
24 25

A.

Trial Of Rambus's Patent Claims Against Micron Should Be Stayed Pending The Resolution Of Micron's Unclean Hands Defense In Delaware

26 Allowing resolution of Micron's defense of unclean hands against Rambus In the
27 Delaware Action before Rambus' s patent infringement claim against Micron can proceed in this

28 case would promote economy and reduce possible hardship on Micron. A finding of spoliation
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY
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1 and a judgment of unclean hands in the Delaware Action may render a patent infringement trial
2 against Micron in the '244 action unnecessary or dramatically reduce its scope. At the very least,

3 Micron would be entitled to present a finding of spoliation to the jury, or use such a finding as
4 justification for an adverse inference to be drawn by the jury.

5 A judgment of unclean hands or a finding of spoliation in the Delaware Action would be
6 directly relevant in this case. Rambus's patent claims in this action and the Delaware Action

7 include many of the same patents (the '120, '8,020, '916, and '863 patents) and products (DDR2

8 and RLDRAM II). Compare Raz Decl. Exh. D, at 3 (Rambus Inc.'s Supplemental Disclosure of
9 Asserted Claims and Preliminary Infringement Contentions) and Rambus's January 13, 2006

10 Complaint against Micron (Micron D.E. 1), in 10 with Raz Decl. Exh. B, in 6 (Rambus's
11 Supplemental and Second Amended Counterclaims (without exhibits) (D. DeL. June 13, 2005)).

12 Given the direct overlap in asserted patents and accused products, a judgment of unclean hands in
13 the Delaware Action would be directly applicable in this case.

14 Staying this case pending resolution of Micron's unclean hands claim in the Delaware
15 Action also would comport with the preference of the judicial system for adjudication of disputes
16 in the venue in which they are first fied. Under the "first-to-file" rule, the venue in which a claim

17 is first filed is given preference over a venue where the same claim is asserted later. Serco
18 Services Co., L.P. v. Kelley Co., 51 F.3d 1037, 1039 (Fed.Cir. 1995); Paxonet, 303 F. Supp. 2d at

19 1029; see also Pacesetter Sys., Inc. v. Medtronic, Inc., 678 F.2d 93, 96 (9th Cir. 1982) ("There is

20 a generally recognized doctrine of federal comity which permts a district court to decline

21 jurisdiction over an action when a complaint involving the same paries and issues has already
22 been filed in another district.").

23 Resolution of Micron's unclean hands defense in Delaware is at handY Micron and
24 Rambus tried the defense to Judge Robinson last November. The parties have already completed
25

15 Micron previously moved to stay proceedings in this case with regard to the '120, '8,020, '916,
26 27 28

and '863 patents pending final resolution of the Delaware Action before its unclean hands defense
was tried. Micron's Motion to Strike Or, In The Alternative, Stay Rambus's Infringement

Counterclaims In Reply, filed July 30, 2007 (Micron D.E. 116). However, this Court did not rule on the issue.
MICRON'S MOTION FOR SEPARATE TRIALS AND A STAY FOR
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1 one round of briefing over the last couple of months and the remainder of the post-trial briefing

2 wil conclude later this month. The final hearng on the post-trial briefing has been set for
3 September 19, 2008.

4
5

B.

Trial Of Rambus's Patent Infringement Claims Against Micron Should Be

Stayed Pending The Resolution Of Any Appeal Of The Hynix I Judgment
6 The proceedings in this case also should be stayed pending appeal of Hynix i. Although
7 this Court has not yet entered final judgment in Hynix I, all outstanding issues have been briefed

8 and are before this Court. Granting a stay pending appeal of Hynix I could greatly simplify the
9 issues in this case and potentially eliminate the need for a patent trial altogether.

10 For instance, if the Federal Circuit reverses the jury's verdict in the recent consolidated
11 Conduct Trial, then a patent infringement trial would be unnecessary (because Rambus's patents

12 would be unenforceable). If the Federal Circuit decides in favor of Hynix on the claim
13 construction, written description, or obviousness issues from Hynix I, the scope of the patent trial
14 in the '244 action would be greatly reduced, as those rulings would undermne the

15 Farmwald/orowitz patents at issue in the '244 action. Even if the anticipated appeal were
16 resolved in Rambus's favor, the Federal Circuit's rulings on claim construction, written

17 description, and obviousness - while not binding on Micron - would certainly influence
18 subsequent proceedings in this case, just as the Federal Circuit's Infineon decision influenced the

19 claim construction proceedings in this case.

20 As such, a stay of this proceeding pending an appeal of Hynix I would simplify the issues
21 before the Court and the jury and would further judicial economy.
22
23

c.

A Stay Would Not Prejudice Rambus

A stay is particularly waranted in this case because Rambus would not be prejudiced
thereby. Rambus specifically represented to this Court and the jury in the Conduct phase of this
case that it did not commt an antitrust violation because Rambus is "not trying to exclude

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anybody" from using its inventions but rather "just asks for fair and reasonable compensation:"

And all Rambus seeks here, all it's ever been seeking for the past eight years, it
doesn't seek to exclude people. It just asks for fair and reasonable

compensation from those people who use its inventions, and that's not an antitrust
MICRON'S MOTION FOR SEPARATE TRIALS AND STAY
CASE No. C 05 00334 RMW; CASE No. C 05 02298 RMW; CASE No. C 06 00244 RMW

FORA

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violation. Let's look at page - instruction 20 on page 24. Lines 7 and 8. One
more. One more line, Jimmy. I'm sorry. Great. 'A patent owner who does no

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more than take advantage of the right to exclude created by its patent does not violate the antitrust laws.' Well, here Rambus does even less. It's not trying to just wants to be paid a fair price."
exclude anybody. it

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3-25-08 Trial Tr. at 5964:24-5965:14 (D.E. 1751) (emphasis added).

Well, Rambus was feeling like it's our time now to finally stand up and be counted
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and say, okay, we're not trying to stop you from making these products, we
just think you ought to pay us a fair price and many companies can agree to that.

2-5-08 Trial Tr. at 426:12-17 (D.E. 1724) (emphasis added). A stay would not unduly prejudice

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Rambus, because it would still be able to seek money damages after the stay is lifted. See
FormFactor, Inc. v. Micronics Japan Co., No. CV-06-07159 JSW, 2008 U.S. Dist. LEXIS 13114,

*6-7 (N.D. CaL. 2008) (delay in recovering potential monetary damages for patent infringement
not sufficient reason to deny stay).

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While Rambus is now arguing, post Conduct Trial, that it would be irreparably hared if

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this Court were not to issue an injunction against Hynix in Hynix I, it is bound by its
representations during the Conduct Trial on which it prevailed. Application of judicial estoppel
typically requires consideration of "(1) whether a party's later position is 'clearly inconsistent'

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with its original position; (2) whether the pary has successfully persuaded the court of the earlier

position, and (3) whether allowing the inconsistent position would allow the pary to 'derive an
unfair advantage or impose an unfair detriment on the opposing pary.'" U.S. v. Ibrahim, 522

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F.3d 1003, 1009 (9th Cir. 2008). Here, argument that Rambus would be prejudiced if it could not

seek an injunction would be directly contrary to Rambus's argument to the jury and this Court
during the Conduct TriaL. As quoted above, Rambus linked its argument that it would not seek an

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injunction to its argument that it did not violate the antitrust laws - which the jury upheld.
Allowing Rambus to change its position now would provide Rambus with an unfair advantage.

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As such, Rambus should not be permitted to cast off its prior representation to the jury and this
Court.16
16 Moreover, Rambus's argument that it would be irreparably hared by the continued

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manufacture and sale of JEDEC compliant SDRAMs because it allegedly inhibits the adoption of its own proprietary technology is belied by its own actions. Rambus's own website indicates that
MICRON'S MOTION FOR SEPARATE TRIALS AND FOR A STAY

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CASE No. C 05 00334 RM; CASE No. C 05 02298

RMW; CASE No. C 0600244 RM

Case 5:05-cv-00334-RMW

Document 2005

Filed 08/01/2008

Page 25 of 26

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v.

CONCLUSION

2 For the foregoing reasons, Micron respectfully requests that the Court issue an order that
3 the patent trial in the '244 action shall proceed separately from the patent trials in the '334 and

4 '2298 actions. Micron further requests a stay of the proceedings against Micron before this Court
5 pending resolution of Micron's unclean hands defense in the Delaware Action and the outcome of
6 the expected appeal from the forthcoming final judgment in the Hynix I case.

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its current licensing program is not limited to Rambus proprietary products. Instead, Rambus's

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first "licensing option" is to "license ... patent inventions to ... companies who use these
inventions in the development and manufacture of their own products": Licensing Options We offer our customers two alternatives for using our chip interface technologies in their products:
First, we license our broad portfolio of patented inventions to semiconductor and

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system companies who use these inventions in the development and manufacture of
their own products. Such licensing agreements may cover the license of par, or all, of our patent portfolio. Patent license agreements are royalty bearng.
Raz Decl., Exh. E ("Licensing Options" portal on Rambus Website) (emphasis added).

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Moreover, Rambus' s own products include a memory controller interface solution for industry

standard DDR3 SDRAM. Raz Decl., Exh. F ("Products" portal on Rambus Website).
MICRON'S MOTION FOR SEPARATE TRIALS AND FORA STAY

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CASE No. C 05 00334 RMW; CASE No. C 0502298

RMW; CASE No. C 06 00244 RMW

Case 5:05-cv-00334-RMW

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Dated: August 1, 2008

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. By: lsi
PRODUCTS, INC.

WEIL, GOTSHAL & MANGES LLP

JARD BOBROW (Bar No. 133712)
SVEN RAZ (Bar No. 222262)

Email: jared.bobrow&ìweil.com
Email: sven.raz&ìweil.com

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Attorneys for Defendants MICRON TECHNOLOGY, INC., and MICRON SEMICONDUCTOR

WILLIAM C. PRICE (Bar No. 108542)
Email: wiliam.price&ìquinnemanuel.com

HAROLD A. BARZA (Bar No. 80888)
Email: halbarza&ìquinnemanuel.com

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ROBERT J. BECHER (Bar No. 193431)
Email: robertbecher&ìquinnemanuel.com

QUI EMANUL URQUHRT OLIVER &
HEDGES,LLP 865 South Figueroa Street, 10th Floor Los Angeles, CA 90017
Telephone: (213) 443-3000

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Facsimile: (213) 443-3100

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Attorneys for Defendants MICRON TECHNOLOGY, INC. and MICRON SEMICONDUCTOR PRODUCTS, INC.

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MICRON'S MOTION FOR SEPARATE TRIAS AND FOR A

STAY 21

CASE No. C 05 00334 RMW; CASE No. C 05 02298

RMW; CASE No. C 06 00244 RM