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Gregory P. Stone (SBN 078329) Steven M. Perry (SBN 106154) David C. Yang (SBN 246132) MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, 35th Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 Email: gregory.stone@mto.com Email: steven.perry@mto.com Email: david.yang@mto.com Peter A. Detre (SBN 182619) Carolyn Hoecker Luedtke (SBN 207976) Jennifer L. Polse (SBN 219202) MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (415) 512-4077 Email: peter.detre@mto.com Email: carolyn.luedtke@mto.com Email: jen.polse@mto.com Attorneys for RAMBUS INC.

Pierre J. Hubert (Pro Hac Vice) Craig N. Tolliver (Pro Hac Vice) McKOOL SMITH PC 300 West 6th Street, Suite 1700 Austin, TX 78701 Telephone: (512) 692-8700 Facsimile: (512) 692-8744 Email: phubert@mckoolsmith.com Email: ctolliver@mckoolsmith.com Rollin A. Ransom (State Bar No. 196126) SIDLEY AUSTIN LLP 555 West Fifth Street, Suite 4000 Los Angeles, California 90013-1010 Telephone: (213) 896-6000 Facsimile: (213) 896-6600 Email: rransom@sidley.com

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION RAMBUS INC., CASE NO. C 05-00334 RMW MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF RAMBUS INC.’S MOTION TO COMPEL SAMSUNG AND MICRON TO PROVIDE DISCOVERY ON THEIR NEW DRAM PRODUCTS, INCLUDING GDDR5, AND ON THEIR UNDER-DEVELOPMENT DRAM PRODUCTS Date: Time: Location: Judge: RAMBUS INC., Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD., et al, Defendants.
RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

16 Plaintiff, 17 18 19 20 21 22 23 24 25 26 27 28 August 20, 2008 8:30 a.m. Telephonic Hearing Hon. Read Ambler (Ret.) v. HYNIX SEMICONDUCTOR INC., et al, Defendants.

CASE NO. C 05-02298 RMW

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1 RAMBUS INC., 2 Plaintiff, 3 vs. 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
RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

CASE NO.: C-06-00244 RMW

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

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I.

INTRODUCTION Pursuant to Federal Rule of Civil Procedure 37(a), Rambus Inc. (“Rambus”)

hereby moves for an order compelling Samsung Electronics Co., Ltd., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor, L.P. (“Samsung”), and Micron Technology, Inc. and Micron Semiconductor Products, Inc. (“Micron”) to provide discovery on their new DRAM products, such as Samsung’s recently announced GDDR5 product, as well as DRAM products that are currently under development. 1 The design, development, and operation of such products are relevant to a number of issues to be tried at the January 2009 patent trial. For instance, whether Samsung’s new DRAM products, such as the GDDR5 product that Samsung has touted as a successor to an accused product in this action, use Rambus’s patented inventions is relevant at least to Samsung’s willfulness in infringing Rambus’s patents in its earlier products, the availability of noninfringing alternatives, design around, and the value of Rambus’s inventions. Whether Samsung and Micron are today still designing their future products to use Rambus’s patented inventions is relevant for the same reasons. Samsung and Micron have categorically refused to provide any discovery on their new and under-development products, including discovery that would allow Rambus to determine whether these products have been designed to continue to use Rambus’s patented inventions. Samsung’s and Micron’s refusal threatens to deprive Rambus of critical evidence it needs to present its case at the patent trial. II. STATEMENT OF FACTS Rambus has accused of infringement in the ‘334, ‘2298, and ‘244 cases a number of Samsung’s and Micron’s DRAM products, including products known as SDRAM, DDR,

Rambus filed a similar motion against Hynix on July 28, 2008, which was originally scheduled to be heard on August 13, 2008, at 11:00 a.m. Because Micron, Hynix, and Samsung are all available on August 20, the parties have agreed to delay the hearing on Rambus’s motion against Hynix to August 20, to allow it to be consolidated with the present motion. -1RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

1

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DDR2, DDR3, GDDR3, and GDDR4. In the related ‘905 case, the Hynix versions of certain of these products were found to infringe claims of certain Rambus patents. Generally speaking, Rambus alleges that Samsung, Micron, and the other Manufacturers used a number of Rambus’s patented inventions in their earliest accused products, and have continued to use those inventions, in conjunction with additional Rambus inventions, in subsequent generations of products. In late 2007, Samsung announced a new DRAM product called GDDR5. Declaration of Peter A. Detre in Support of Rambus’s Motion to Compel (“Detre Decl.”), ¶ 2 & Ex. A-1. Samsung’s press release described GDDR5 as a successor to GDDR3, which is an accused product in this case. Id., Ex. A-1. Other Samsung promotional materials state that its GDDR5 products are “in volume production today.” Id., Ex. A-2. Despite its introduction of a GDDR5 product, Samsung has refused to produce documents relating to this product or its development. Detre Decl. ¶ 6. Such documents would be responsive to certain of Rambus’s requests for production that seek documents pertaining to Samsung’s use or evaluation of certain features, or consideration of alternative technologies to those features, in “any memory device.” Id., Ex. B-1 (Requests for Production No. 33 and 38). On June 19, 2008, Rambus served a Rule 30(b)(6) notice to take the deposition of Samsung on various technical issues pertaining to Samsung’s DRAM products, but Samsung refused to provide a witness to testify as to GDDR5 and under-development products. Id., Exs. C-1, C-2, E. On July 2, 2008, Rambus served its Sixth Set of Requests for Production on Samsung, which includes both requests directed to Samsung’s DRAM products generally and to its GDDR5 products specifically. Id., Ex. D. Samsung has not yet submitted written responses, but has indicated that it will not produce documents relating to GDDR5. Id., Ex. E. In mid-July, the parties held a teleconference regarding Rambus’s 30(b)(6) notice to Samsung. Detre Decl. ¶ 7. On this call, counsel for Samsung indicated that Samsung would likely refuse to produce a witness to testify as to GDDR5 and under-development products. Id. Counsel for Rambus explained that information about these products is relevant for a number of reasons, including Samsung’s willful infringement, the value of Rambus’s patented inventions, -2RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

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and whether any alternative and/or design-around existed to any of the inventions. Id. Nevertheless, in a subsequent email exchange on July 25, 2008, counsel for Samsung made clear that it would not produce any discovery—testimony or documents—regarding GDDR5 and under-development products because Rambus has not accused them of infringement in the case. Id., Ex. E. Although Micron has not yet announced a GDDR5 product, like Samsung, it is in the process of developing new DRAM products. On June 19, 2008, Rambus served a Rule 30(b)(6) notice to take the deposition of Micron on various technical issues pertaining to Micron’s DRAM products, but Micron refused to produce a witness to testify as to future products. Id., Exs. F, G. On July 2, 2008, Rambus served its Fourth Requests For Production to Micron, which includes requests directed to Micron’s DRAM products generally, as well as to GDDR5 specifically. Id. Ex. H. While Micron has not yet provided written responses, given its position on Rambus’s 30(b)(6) notice, Rambus expects that it will refuse to produce documents related to future products not already accused of infringement. Such documents would additionally be responsive to certain earlier-served Requests pertaining to Micron’s use or evaluation of certain features, or consideration of alternative technologies to those features, in “any memory device.” Id., Ex. I (Requests for Production No. 31 and 36). In mid-July, Rambus’s counsel held a telephone conference regarding Rambus’s 30(b)(6) notice to Micron. Detre Decl. ¶12. On this call, counsel for Micron indicated that Micron would evaluate whether to produce a witness to testify regarding products under development. In an e-mail dated July 25, 2008, Micron refused to produce a witness to discuss products under development and that had not been accused of infringement. Id., Ex. G. Rambus certifies that it has met and conferred in good faith with Samsung and Micron and that this dispute is ripe for resolution by this Court. III. ARGUMENT Rambus is entitled to discovery on Samsung’s and Micron’s (“the Manufacturers”) new DRAM products and its under-development DRAM products because information regarding such products is relevant to Rambus’s claims and defenses in this action. The Manufacturers -3RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

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cannot justify their refusal to provide relevant discovery, which is not otherwise available, on the grounds that Rambus has not accused these products of infringement. A. Legal Standard 1. Courts Broadly Construe the Permissible Scope of Discovery Under Federal Rule of Civil Procedure 26.

Courts recognize that the scope of discovery permissible under Federal Rule of Civil Procedure 26 should be liberally construed, because “the rule contemplates discovery into any matter that bears on or that reasonably could lead to other matter that could bear on any issue that is or may be raised in a case.” See Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 237 F.R.D. 618, 621 (N.D. Cal. 2006). Patent infringement cases, of course, “are not exceptions to the rule that discovery is liberal and relevancy is broadly construed.” Murata Mfg. Co. v. Bel Fuse, Inc., 422 F. Supp. 2d 934, 945 (N.D. Ill. 2006) (citing Katz v. Batavia Marine & Sporting Supplies, Inc., 984 F.2d 422, 424 (Fed. Cir. 1993)). 2. Courts Allow Discovery to be Taken as to Non-Accused Products Where Such Information is Relevant to the Issues in the Case.

Consistent with the “broad relevancy standard applied under Rule 26,” courts have allowed litigants in patent infringement cases to take discovery on products that have not been accused of infringement. See, e.g., WebSideStory, Inc., v. NetRatings, Inc., No. 06cv408 WQH (AJB), 2007 WL 1109597, at *2 (S.D. Cal. Apr. 4, 2007) (allowing patent holder to take discovery on how non-accused products operate independently and in conjunction with the accused product). Thus, where the discovery sought is relevant and of reasonable scope, courts “will not impose any limitations regarding Accused or Non-Accused Products, or any other limitations, on it.” L.G. Phillips LCD Co., Ltd. v. Tatung Co., No. C 07 80073WHA, 2007 WL 869256, at *1-*2 (N.D. Cal. Mar. 20, 2007) see also EpicRealm, Licensing, LLC v. Autoflex Leasing, Inc., Nos. 2:05-CV-163-DFCMC & 2:05-CV-356-DFCMC, 2007 WL 2580969, at *3 (E.D. Tex. Aug. 27, 2007) (finding “no bright line rule that discovery can only be obtained if related to an accused product” identified in a party’s preliminary infringement contentions). In allowing discovery to be taken on non-accused products, courts have recognized various reasons why such discovery may be relevant. For instance, some courts have held that -4RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

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non-accused products are relevant if they are “reasonably similar” to the accused products. See, e.g., EpicRealm, 2007 WL 2580969, at *3. Courts have also allowed litigants to take discovery on non-accused products in order to determine the interrelationship between the non-accused products and the accused products. Dr. Systems, Inc. v. Fujifilm Med. Sys. USA, Inc., No. CIV 06cv417 JLS (NLS), 2008 WL 1734241, at *3 (S.D. Cal. Apr. 10, 2008); WebSideStory, 2007 WL 1109597, at *2 Similarly, information related to the design, development, or operation of an accused infringer’s non-accused products may be relevant to the issues of willfulness, damages, and design-around, particularly where the non-accused products are precursors or successors to the accused products. See Invacare Corp. v. Sunrise Med. Holdings, No. 1:04CV1439, 2005 WL 1750271, at *2-*3 (N.D. Ohio Jan. 21, 2005) (granting motion to compel discovery on nonaccused precursor products; agreeing that such information is relevant to willfulness and to damages, including the calculation of a reasonable royalty); AMP Inc. v. Molex Inc., No. 84 C 2814, 1988 WL 48276, at *1 (N.D. Ill. May 10, 1988) (granting motion to compel discovery “concerning development work after [the accused infringer] received notice of plaintiff’s claims of infringement concerning any product or device intended to serve the same function as the accused product” because such discovery “is relevant to whether [the accused infringer] has unsuccessfully attempted to design around the patent”). B. The Court Should Compel The Manufacturers to Provide Discovery In Response to Rambus’s Requests Regarding The Manufacturers’ New and Under-Development DRAM Products. The design, development, and operation of the Manufacturers’ new products, including GDDR5, and other under-development products, are relevant to a number of issues to be tried in this case, regardless of whether discovery reveals that such products infringe or do not infringe Rambus’s patented inventions. The recently announced GDDR5 product is likely to be particularly relevant as Samsung itself has touted it as a successor to GDDR3, which is an accused product in this case. Detre Decl., Exs. A-1, A-2; see AMP Inc., 1988 WL 48276, at *1 (compelling discovery on development work undertaken on successor products since receipt of infringement notice); see also EpicRealm, 2007 WL 2580969, at *3 (compelling discovery on -5RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

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products that are “reasonably similar” to accused products); Dr. Systems, 2008 WL 173424, at *3 (the interrelationship between non-accused and accused products is a proper subject of discovery). For instance, if it turns out that the Manufacturers’ new products do not utilize certain of the features claimed by Rambus’s patents, or that they are now designing their future products not to utilize these features, these facts would be relevant to show that it is possible to design around Rambus’s patents or that non-infringing alternatives existed to Rambus’s inventions. AMP Inc., 1988 WL 48276, at *1. It would thus also tend to show that they acted willfully in infringing Rambus’s patents in its earlier products that were introduced after they knew of Rambus’s patent claims. If, on the other hand, their new products continue to use Rambus’s patented inventions, or if they are now designing their future products to use these inventions, these facts would also be relevant. For instance, it may be the case that the Manufacturers have tried but failed to design around Rambus’s patents—this would tend to show the importance, and hence, the value, of Rambus’s inventions, and that viable non-infringing alternatives do not exist to these inventions. See Invacare Corp., 2005 WL 1750271, at *2-*3 (information regarding non-accused products may be relevant to the calculation of a reasonable royalty); AMP Inc., 1988 WL 48276, at *1 (discovery on development work undertaken by accused infringer after receipt of infringement notice is relevant to whether the accused infringer has unsuccessfully attempted to design around a patent). Alternatively, if is actually the case that the Manufacturers have not even attempted to design around Rambus patents—even though, by now, they have long had notice of Rambus’s patent rights and the parties have been in protracted litigation for many years—then this fact could support an argument that they have willfully disregarded Rambus’s patent rights in designing its DRAM products in general. In other words, discovery relating to the Manufacturers’ new and underdevelopment products is relevant under any circumstance and regardless of what it would reveal. Yet, the Manufacturers have categorically refused to produce discovery relating to these products on the ill-founded basis that Rambus has not accused them of infringement. There is simply no -6RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

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blanket rule that discovery cannot be taken on relevant non-accused products in patent cases, as such an approach would be inconsistent with the liberal standard of Rule 26. See, e.g., L.G. Phillips, 2007 WL 869256, at *1-*2; EpicRealm, 2007 WL 2580969, at *3. The Court should thus compel the Manufacturers to provide discovery in response to Rambus’s requests which seek relevant information relating to the Manufacturers new and under-development products, which are set forth below: Requests for Production No. 33 and 38 to Samsung, and Requests for Production No. 31 and 36 to Micron Documents relating to the Manufacturers’ new and under-development products are directly responsive at least to Rambus’s document requests that seek documents relating to certain relevant DRAM features (which, generally speaking, relate to Rambus’s patent rights) in “any memory device.” As these requests are directed to “any memory device,” they seek a broader scope of documents than other Rambus document requests that are directed to accused products only. Request for Production No. 33 to Samsung and Request for Production No. 31 to Micron are directed to Samsung’s and Micron’s “use or evaluation of the potential benefits or detriments of employing or using” any of the relevant DRAM features “in any memory device.” Detre Decl., Exs. B-1; 2 Ex. I. Documents responsive to this request, including those that concern non-accused products, bear directly upon the importance and value of Rambus’s inventions. Request for Production No. 38 to Samsung and Request for Production No. 36 to Micron are directed to “any possible alternative technologies” for any of the relevant DRAM features “in any memory device.” Id., Exs. B-1; I. To the extent that Samsung and Micron use or have considered any alternative technology or design-around for use in its new and underdevelopment products, such documents would be responsive to this request, and relevant to various issues as set forth above.

Rambus served this request in separate pleadings for the ‘334 and ‘2298 cases. Only the ‘334 pleading is attached. -7RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

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Samsung has indicated that it will not produce documents relating to GDDR5. Id., Ex. B-2. In other words, Samsung categorically refused to produce documents relating to its other products even though some such documents may be responsive to Rambus’s requests and relevant to various issues in the case. Likewise, in light of its response to Rambus’s 30(b)(6) topics, Rambus expects that Micron will also refuse to produce documents relating to underdevelopment products. Rule 30(b)(6) Notices of Deposition Served on June 19, 2008 On June 19, 2008, Rambus served Samsung with a Rule 30(b)(6) notice on various technical issues pertaining to Samsung’s DRAM products, including its GDDR5 products and under-development products. Detre Decl., Ex. C-1. Rambus’s notice was not limited to accused products. Samsung has refused to provide a witness to testify regarding its GDDR5 products and under-development products. Id. ¶ 7 & Exs. C-2, E. Similarly, on June 19, 2008, Rambus served Micron with a Rule 30(b)(6) notice on similar topics pertaining to Micron’s DRAM products. Id., Ex. F. In meet and confer, Rambus reiterated that to the extent Micron “is developing or has developed DRAM products since it introduced the accused products,” Rambus sought testimony related to such products as well. Id., Ex. G. Micron has refused to produce a witness to testify regarding any under-development products. Id. Requests for Production Served on July 2, 2008 On July 2, 2008, Rambus served Samsung with its Sixth Set of Requests for Production, and Micron with its Fourth Requests for Production, which includes both requests that are directed to Samsung’s and Micron’s memory products generally and those directed expressly to GDDR5 products. Detre Decl., Exs. D, H. Samsung has refused to produce responsive documents relating to GDDR5. Id., Ex. E. Similarly, given its position on the 30(b)(6) notice, Rambus expects that Micron will likewise refuse to produce documents relating to products that are under development, and are not yet accused of infringement. In short, Samsung and Micron have improperly withheld relevant discovery from Rambus, which threatens to impair Rambus’s preparation of its case for the upcoming patent trial. -8RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

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IV.

CONCLUSION For the foregoing reasons, Rambus respectfully seeks an order from the Court

compelling Samsung and Micron to produce discovery relating to their new products, including GDDR5, and to their under-development products, that are responsive to (1) Rambus’s Requests for Production No. 33 and 38 to Samsung, and Requests for Production No. 31 and 36 to Micron; (2) each topic in Rambus’s Notices of Deposition, served on June 19, 2008, (3) each request in Rambus’s Sixth Set of Requests for Production to Samsung, served on July 2, 2008; and (4) each request in Rambus’s Fourth Set of Requests for Production to Micron, served on July 2, 2008..

DATED: August 4, 2008

MUNGER, TOLLES & OLSON LLP McKOOL SMITH PC

By:

/s/ Jennifer L. Polse JENNIFER L. POLSE

Attorneys for Plaintiff RAMBUS INC.

-9-

RAMBUS’S P&A ISO MTN TO COMPEL SAMSUNG & MICRON TO PROVIDE DISCOVERY ON NEW DRAM PRODUCTS; NOS. C 05-00334, C 05-02298, C 06-00244

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