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MCKOOL SMITH
A PROFESSIONAL CORPORATION ATTORNEYS

Pierre J. Hubert Direct Dial: (512) 692-8709 phubert@mckoolsmith.com

300 West 6th Street Suite 1700 Austin, Texas 78701

Telephone: (512) 692-8700 Telecopier: (512) 692-8744

August 30, 2011 VIA ECF Honorable Susan Illston United States District Court Northern District of California Courtroom 10, 19th Floor 450 Golden Gate Avenue San Francisco, California 94102 Re: Rambus v. NVIDIA, Case No. 08-cv-03343 SI

Rambuss Reply letter brief in support of Rambuss Motion Docket No. 243 Dear Judge Illston: Yesterday NVIDIA filed Docket No. 245, Letter from NVIDIA Corporation In Response to Motion to Compel. Accordingly Rambus now submits this Reply letter brief, in support of Rambuss Motion to Compel (Docket No. 243).1 For the reasons set forth in Rambuss Motion and this Reply letter brief, the Court should order NVIDIA to comply with the Courts Markman deadlines and provide Rambus with a 4-1 Statement within two (2) days. If the Court would like to discuss these issues with counsel at a telephonic hearing, Rambus counsel will make itself available at whatever time the Court prefers. I. As a Threshold Matter, This Motion Is in Regard to Claim Construction, an Issue for the Court and Scheduled by the Court, as Opposed to a Dispute Over Fact Discovery

NVIDIA suggests that the issue of the Rule 4-1 Exchange of Claim Terms for Construction is an issue for Discovery Master Infante. Claim construction, however, is an issue of law for the Court and scheduled by the Court, and not a dispute over fact discovery overseen by Discovery Master Infante. For example, the parties and the Court discussed Markman
Rambus notes that there is no procedure in the Local Rules for an opposing party like NVIDIA simply to file a letter indicating it will file its own offensive motion on a slower schedule that it unilaterally believes will supplant a previously-filed motion like Rambuss motion. Despite NVIDIAs representations in email correspondence, NVIDIA failed to file a motion on August 26th in lieu of the Patent Local Rule (P.L.R.) 4-1 Statement. (Dkt. No. 243 at 5-6.) NVIDIA did not comply with the Court-ordered deadline, whereas Rambus did. (Id.) Therefore Rambus promptly filed its motion to compel yesterday, on August 28th, seeking expedited review to avoid any further delay by NVIDIA regarding approaching Markman deadlines.
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scheduling and procedures at the last case management conference, and the parties agreed as to a schedule. In fact, NVIDIA had dedicated a section of the case management statement to its allegation that Rambus Has Provided Insufficient Infringement Contentions, (Dkt. No. 212, Ex. B, II.B) but NVIDIA still agreed to a Rule 4-1 exchange on August 26th at the case management conference. The parties also discussed with the Court the mechanics of the Markman hearing, as well as other dates on the Markman calendar. The Rule 4-1 Exchange of Claim Terms is unquestionably part of the claim construction process because it is the first step in the process by which the parties choose the claim terms that they believe are appropriate for construction by the Court at the Markman hearing. In sum, as Rambus indicated in its Motion and repeats again now, Rambus welcomes any guidance from Discovery Master Infante that the Court deems appropriate, as NVIDIAs argument for its failure to comply with the Courts P.L.R. 4-1 deadline is based on a misapplication of Discovery Master Infantes order. But disputes over Markman scheduling, including the exchange under Rule 4-1, are not fact discovery disputes, and therefore Rambus brings this dispute regarding NVIDIAs noncompliance with Rule 4-1 to the Court, as it believes it was required to do. II. NVIDIAs Noncompliance with the Beginnings of Claim Construction Is Not Excused By a Short Stay of Infringement-Related Discovery as to Accused Products

NVIDIAs eleventh-hour reliance on its misinterpretation of Discovery Master Infantes order to avoid its Markman obligations is misplaced. Regardless of any discovery as to accused products, NVIDIA itself has asserted an affirmative claim of patent invalidity and provided materials styled Invalidity Contentions. Claim construction is required as to NVIDIAs claims, regardless of the short stay as to Rambuss infringement-related discovery as to the accused NVIDIA products. On its face, Discovery Master Infantes order does not disrupt the Courts claim construction schedule in any waynor did NVIDIAs motion request Discovery Master Infante to disturb any of those dates. Throughout Discovery Master Infantes order, references are to infringement-related discovery as to accused productsnot claim construction nor invalidity-related discovery.2 And to the extent NVIDIA did seek relief regarding its invalidity contentions, Discovery Master Infantes order is silent as to relief as to NVIDIAs affirmative claim of invalidity, and notably does not disturb or extend the due date of NVIDIAs invalidity contentions.
See Dkt. No. 241 at 4 (NVIDIAs motion seeks an order staying infringement-related discovery), 17 (NVIDIA contends that a stay of infringement-related discovery is warranted), 18 (a stay of infringementrelated discovery is appropriate. NVIDIAs request for stay of infringement-related discovery is GRANTED. All infringement-related discovery is stayed until five days after Rambuss filing of its Amended Disclosure.), 20 (a brief stay on infringement-related discovery; While interrogatories 10 and 11 generally seek damages information, the inclusion of the term Accused Products in the interrogatories renders the interrogatories infringement-related, and thus subject to the temporary stay.; the stay of infringement-related discovery).)
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Further, it is well-established that claim construction is not done with an eye to accused products, so a short stay as to discovery as to accused products does not affect the beginnings of the claim construction process such as the parties Rule 4-1 exchange of claim terms proposed to be construed. See, e.g., Neomagic Corp. v. Trident Microsystems, 287 F.3d 1062, 1074 (Fed. Cir. 2002) (It is well settled that claims may not be construed by reference to the accused device.); SRI Int'l. v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc) (A claim is construed in light of the claim language, the other claims, the prior art, the prosecution history, and the specification, not in light of the accused device.). Finally, the local rules and the Courts scheduling order contemplate discovery as to accused products even after claim construction, a further indication that a short stay of Rambuss infringement-related discovery as to accused products has no impact on the beginning of claim construction such as NVIDIAs Rule 4-1 submission. For all of these reasons, the Court should order NVIDIA to comply with Rule 4-1 per the Courts Markman schedule, before any other Markman deadlines are affected. III. NVIDIA Mischaracterizes Discovery Master Infantes Order

Although NVIDIA seems to characterize Discovery Master Infantes order implementing a short stay as requiring wholesale changes to Rambuss infringement contentions, NVIDIA distorts the order. Rambuss infringement contentions span over 1500 pages and include hundreds of pages of claim charts, lists of known accused products, and reverse engineering waveforms. Many of the changes directed by Discovery Master Infante require reorganization or basic additions rather than substantive changes. First, the Discovery Master found an excess of reservation of rights language. (Dkt. No. 241 at 9 (In the event that Rambus clarifies the specific devices at issue (by inter alia removal of the at least and exemplary in nature language in the current disclosure) and reorganizes Section I.B of its Disclosure to more clearly identify the accused products on a claim by claim basis, Rambuss amended Disclosure will likely be found to comply with Patent L.R. 3-1(b).).) Rambus intends to amend to delete that language, given the reservation of rights already existing in the Patent Local Rules. See P.L.R. 3-1(b) (requiring disclosure of accused products of which the party is aware and identification of name or model number, if known (emphasis added).) Second, Rambus had organized its contentions into sections requiring some crossreferencing for the sake of brevity. (Dkt. No. 241 at 9 (While the undersigned is able to deduce that Rambus is asserting, inter alia, that NVIDIAs [particular accused products] allegedly infringe claims 36, 38, 39, 40, 43, 44, 45, and 46 of the 281 Patent, Rambuss Disclosure fails to set forth this information in a straightforward fashion.).) Admittedly, there is a tradeoff between a straightforward presentation and a concise presentation, and Rambus intends to amend and reformat its contentions accordingly.

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Third, Rambuss contentions admittedly did not treat the precise language of the GlobalTech case, because that case had not issued at the time of Rambuss original contentions, but can be amended to do so. (See Dkt. No. 241 at 17 (Rambuss Disclosure, however, does not set forth sufficient specific facts to show that NVIDIA acted with willful blindness. This is unsurprising given that the Global-Tech decision setting forth the scope of the doctrine was issued after Rambus filed its present Disclosure.).) Finally, Rambus believes its original contentions already were sufficient in view of the Federal Circuits Fujitsu case regarding standards-based infringement. Fujitsu Ltd., et al. v. Netgear, Inc., 620 F.3d 1321, 1327 (Fed. Cir. 2010) (We hold that a district court may rely on an industry standard in analyzing infringement. An accused infringer is free to either prove that the claims do not cover all implementations of the standard or to prove that it does not practice the standard.) Although NVIDIA had stated during a meet-and-confer that NVIDIA could not confirm nor deny that its products met certain standards, NVIDIAs counterclaim now provides that NVIDIAs products comply with relevant standards adopted by JEDEC. (Dkt. No. 228 at 24, 13.) Rambus believes the Fujitsu case is plainly controlling, and will so indicate in its amended and reformatted contentions.3 Thus Rambuss contentions were thorough, and the changes required to bring them to the level required by Discovery Master Infantes order are relatively minor. The short stay as to Rambuss infringement-related discovery as to accused products does not justify a wholesale change of the unrelated claim construction deadlines and does not permit NVIDIAs unilateral noncompliance with the Courts deadline for the Rule 4-1 exchange of terms to be construed. IV. Rambuss Motion Requires Expedited Consideration

Rambus filed its Motion on August 29th, NVIDIA filed a letter brief in response on August 29th, and now Rambus has filed its reply letter brief. Rambus believes the issues are ripe for adjudication. NVIDIA opposed Rambuss motion for expedited consideration because NVIDIA has made it clear that it intends to continue ignoring upcoming Markman deadlines in an attempt to delay Markman proceedings. NVIDIAs actions are inconsistent with the Courts directives at the last case management conference. Rambus requests that the Court give the parties papers expedited consideration, and compel NVIDIA to comply with the Courts Markman deadlines, including the overdue Rule 4-1 exchange. V. Conclusion

For the reasons explained in Rambuss Motion and in this Reply letter brief, Rambus respectfully requests that the Court grant Rambuss motion and compel NVIDIAs compliance with Rule 4-1 within two (2) days so that the Markman schedule is not affected. If the Court

Rambus is amenable to simply amending and reformatting its contentions to fully comply with Discovery Master Infantes order given that the delay on infringement-related discovery as to accused devices is short, and based on Rambuss present understanding that there are no ramifications on the Courts Markman schedule.

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would like to discuss these issues with counsel at a telephonic hearing, Rambus counsel will make itself available at whatever time the Court prefers.

Respectfully submitted, /s/ Pierre J. Hubert Pierre J. Hubert

cc:

Honorable Edward A. Infante JAMS Two Embarcadero Center, Suite 1500 San Francisco, California 94111 I. Neel Chatterjee Orrick Herrington & Sutcliffe Counsel for NVIDIA

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