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1 TOWNSEND and TOWNSEND and CREW LLP

DANIEL J. FURNISS (SBN 73531) djfurniss@townsend.com
2 THEODORE G. BROWN, III (SBN 114672) tgbrown@townsend.com
JORDAN TRENT JONES (SBN 166600) jtjones@townsend.com
3 379 Lytton Avenue
Palo Alto, California 94301
4 Telephone: (650) 326-2400; Facsimile: (650) 326-2422
5 THELEN LLP
KENNETH L. NISSLY (SBN 77589) kennissly@thelen.com
6 SUSAN van KEULEN (SBN 136060) svankeulen@thelen.com
GEOFFREY H. YOST (SBN 159687) gyost@thelen.com
7 225 West Santa Clara Street, Suite 1200
San Jose, California 95113
8 Telephone: (408) 292-5800; Facsimile: (408) 287-8040
9 O'MELVENY & MYERS LLP
KENNETH R. O'ROURKE (SBN 120144) korourke@omm.com
10 WALLACE A. ALLAN (SBN 102054) tallan@omm.com
400 South Hope Street, Suite 1060
11 Los Angeles, California 90071-2899
Telephone: (213) 430-6000; Facsimile (213) 430-6407
12
Attorneys for Defendants and Counterclaim Plaintiffs
13 HYNIX SEMICONDUCTOR INC.,
HYNIX SEMICONDUCTOR AMERICA INC., HYNIX
14 SEMICONDUCTOR MANUFACTURING AMERICA INC.,
HYNIX SEMICONDUCTOR U.K. LTD., and
15 HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH
16 UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
17 SAN JOSE DIVISION
18 RAMBUS INC.,
Plaintiff, Case No. C 05-00334 RMW
19 v.
HYNIX’S OPPOSITION TO
20 HYNIX SEMICONDUCTOR INC., HYNIX RAMBUS, INC.’S MOTION TO
SEMICONDUCTOR AMERICA INC., HYNIX COMPEL DEPOSITION RELATING
21 SEMICONDUCTOR MANUFACTURING TO GDDR5 AND DDR4
AMERICA INC.,
22 Date: October 20, 2008
SAMSUNG ELECTRONICS CO., LTD., Time: 3:00 p.m.
23 SAMSUNG ELECTRONICS AMERICA, INC., Location: Telephonic Hearing
SAMSUNG SEMICONDUCTOR, INC., Judge: Hon. Read Ambler (Ret.)
24 SAMSUNG AUSTIN SEMICONDUCTOR, Special Master
L.P.,
25
NANYA TECHNOLOGY CORPORATION,
26 NANYA TECHNOLOGY CORPORATION
U.S.A.,
27
Defendants
28

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1 HYNIX SEMICONDUCTOR INC., HYNIX

SEMICONDUCTOR AMERICA INC., HYNIX
2 SEMICONDUCTOR MANUFACTURING
AMERICA INC., HYNIX SEMICONDUCTOR
3 U.K. LTD., HYNIX SEMICONDUCTOR
DEUTSCHLAND GmbH,
4
Counterclaim Plaintiffs,
5 v.
6 RAMBUS INC.,
7 Counterdefendant.
8

9 Rambus's Motion to Compel The Deposition of Hynix on Design-Around and Alternatives As

10 To GDDR5 and DDR4 is directed solely to discovery about products that are not and cannot be

11 accused of infringement in this lawsuit. The Court has already struck Rambus's infringement

12 contentions against GDDR5 SDRAM, and it is undisputed that DDR4 SDRAM will not be

13 manufactured, sold, or even designed until after all of the patents in suit have expired. Far from being

14 "plainly relevant," deposition sought by Rambus would delve solely into matters that are utterly

15 irrelevant to this lawsuit and appears to be no more than an attempt to unnecessarily burden Hynix and

16 divert its resources when all parties should be concentrating on their preparations for trial in January,

17 2009. Rambus's motion should be denied.1

18 I. BACKGROUND
19 Trial in this lawsuit is set to begin January 9, 2009, on 12 claims of the 10 Rambus patents

20 that remaining in this case. Brown Decl., ¶ 2 and Exh. 1. All 12 claims and 10 patents claim priority

21 to a single patent application filed April 18, 1990. Brown Decl., ¶ 2. All of the Rambus's patents in

22 suit will expire in April, 2010. See 35 U.S.C. § 154(a)(2).2

23
1
In addition to this memorandum, Hynix's opposition to Rambus's Motion is supported by the
24 accompanying Declarations of Theodore G. Brown, III ("Brown Decl.") and Yongki Kim ("Kim
Decl.").
25
2
Until recently, the patents in suit included two patents naming Fred Ware and others as inventors.
26 These two "Ware" patents will not expire until October, 2015; however, Rambus has withdrawn these
patents from the litigation and has covenanted not to sue Hynix or any of the other parties to this
27 litigation for infringement of the Ware patents. See Brown Decl., Exh. 5.
28

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1 Rambus accuses Hynix's DDR2 SDRAM, DDR3 SDRAM, GDDR3 SDRAM, and GDDR4
2 SDRAM of infringing its patents. Brown Decl., Exh. 2. On August 8, 2008, without seeking leave of
3 the Court as required by the Local Patent Rules, Rambus served Final Infringement Contentions that,
4 for the first time in this litigation, accused Hynix's GDDR5 SDRAM products of infringement. Brown
5 Decl., Exh 3, page 3:7-13.3 On September 29, 2009, the Court granted Hynix's and Samsung's
6 Motions to Strike Rambus's Final Contentions as to GDDR5 SDRAM. Brown Decl. Exh. 4.4 Rambus
7 has never accused any Hynix (or other) DDR4 SDRAM of infringement.
8 Hynix's GDDR5 SDRAM product, as with all of Hynix's other accused DRAM products, is
9 and was designed to comply with the relevant standards set for such products by the industry standard
10 organization, JEDEC. JEDEC’s standardization activities relating to GDDR5 SDRAM began in late
11 2005 through a Future DRAM Task Group of the JC42.3 Committee. Kim Decl., ¶ 3. JEDEC
12 activities regarding the development of the standard for GDDR5 SDRAM have continued to this day,
13 and are expected to continue in the future. Id. Currently, the target of the JC 42.3 Committee is to
14 present a complete specification for GDDR5 SDRAM to the Committee in about March, 2009. Id.
15 JEDEC has yet not adopted or published a complete standard for this product. However, the basic
16 architectural features of GDDR5 SDRAM were largely established by late 2007, as evidenced by the
17 presentation to the JC 42.3 Committee of a draft GDDR5 SDRAM specification in March, 2008. Id.,
18 ¶ 4. Yongki Kim, Hynix's Rule 30(b)(6) representative regarding DDR2 SDRAM and DDR3
19 SDRAM, and a designer of Hynix's GDDR5 SDRAM products, was questioned regarding this draft
20 JEDEC GDDR5 SDRAM specification at his deposition in July, 2008. Id. Both Rambus and Hynix
21 have produced copious documentation regarding the development of the JEDEC standard for GDDR5
22 SDRAM. Brown Decl. ¶¶ 10, 12 and Exhs. 9-11.
23

24 3
Rambus's Final Infringement Contentions also asserted infringement by Samsung's GDDR5
SDRAM products; neither Micron nor Nanya, the other defendants in this consolidated litigation,
25 makes or sells GDDR5 SDRAM, although Micron performed some design work for a possible
GDDR5 SDRAM product.
26
4
The Hynix and Rambus Memoranda relating to the motion leading to this order are attached as
27 Brown Decl., Exhs. 6-8.
28

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1 Both the JEDEC JC 42.3 Committee and Hynix anticipate that DDR4 SDRAM will not be
2 manufactured or sold until 2011 at the earliest. Discussions at JEDEC of the standard for the future
3 DDR4 SDRAM are at a very preliminary stage. Kim Decl., ¶ 5. JEDEC is still considering proposals
4 for what is called DDR4 SDRAM. It is expected that DDR4 SDRAM will eventually be the successor
5 to the DDR3 SDRAM for main computer memory and other applications. However, the prior
6 generation DDR3 SDRAM was only recently introduced to the market, and is not expected to be the
7 major type of DRAM in the market until 2009 or later. Due to the very preliminary stage of JEDEC’s
8 work on DDR4 SDRAM, Hynix currently has not started any DDR4 SDRAM design project, and
9 Hynix does not anticipate starting such a project until 2010. Id., ¶ 6. In fact, Hynix does not
10 anticipate that it will even have prototype DDR4 SDRAM samples until about 2011 – at the earliest.
11 Id., ¶ 6. This will be at least about a year after all of the Rambus patents-in-suit expire in April, 2010.
12 See Brown Decl. ¶ 2.
13 Hynix has produced significant amounts of documents regarding JEDEC's work regarding
14 DDR4 SDRAM, albeit less than the number of GDDR5 SDRAM-related documents because JEDEC's
15 activities regarding DDR4 SDRAM began only recently. Brown Decl. ¶ 12. Rambus has made no
16 complaint as to the adequacy of Hynix's production of documents regarding either GDDR5 SDRAM
17 or DDR4 SDRAM, as limited by the agreement between counsel. Brown Decl. ¶ 13 and Exhs. 10, 11.
18 Further, although Rambus's Rule 30(b)(6) Deposition Notice (Yang Decl. Exhibit F, Topic 14) sought
19 testimony regarding design-around and alternatives information generally, without any product
20 limitation, Rambus has made no complaint regarding the adequacy of Hynix's discovery on these
21 topics except as to alternatives and design-around information specifically relating to the development
22 of GDDR5 SDRAM and DDR4 SDRAM. Rambus has, to all appearance, accepted Hynix’s prior
23 discovery, expert reports, and testimony regarding alternatives and design around for other Hynix
24 products as sufficient. See Brown Decl. Exh. 12, pages 13-14.
25 II. THE DEPOSITION TESTIMONY RAMBUS SEEKS IS NEITHER RELEVANT TO
ANY ISSUE IN THIS LITIGATION NOR REASONABLY CALCULATED TO LEAD
26 TO THE DISCOVERY OF ADMISSIBLE EVIDENCE.
27 Rambus offers two grounds for the relevance of the deposition testimony it now seeks – willful
28 infringement and the “value” of Rambus’s inventions. Neither of these withstands scrutiny.

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1 Both of Rambus’s justifications for the additional deposition testimony are predicated on the
2 assumption that (1) GDDR5 SDRAMs currently infringe Rambus’s patents in suit or (2) DDR4
3 SDRAMs will infringe Rambus’s patents. Whether Hynix considered alternatives and/or designing
4 around Rambus's patents in developing products that are not accused of infringement does not bear on
5 whether any infringement by the products that are accused of infringement was willful. Any relevance
6 of such efforts depends on whether or not alternatives or design-around were implemented in the
7 accused products; this, in turn, depends on whether the accused products arguably infringe any of
8 Rambus's patents. Similarly, any assertion that Rambus's patents are valuable because Hynix
9 continues to use them depends on an underlying determination of whether Rambus's patents continue
10 to be used in the accused products. The Court, however, has already ruled that Rambus’s
11 infringement claims against GDDR5 SDRAM are not proper in this lawsuit. Further, Rambus has no
12 basis for even alleging that DDR4 SDRAM infringes any of the patents in suit – DDR4 SDRAM will
13 not even be designed, much less manufactured or sold, until after Rambus's patents have expired.
14 Thus, Rambus is foreclosed from the determinations that are necessary predicates to the alleged
15 relevance of the testing it now seeks.
16 The cases Rambus cites are not to the contrary, and do not justify the additional discovery that
17 is sought. In the early stages of a lawsuit, it is not unreasonable to allow discovery on newer products
18 and development activities, especially regarding "reasonably similar" products, since such discovery
19 may point to additional products that may be accused of infringement. See Dr. Systems, Inc. v.
20 Fujifilm Medical Systems USA, Inc., 2008 WL 1734241, *3 (S.D. Cal. 2008); Epicrealm, Licensing,
21 LLC v. Autoflex Leasing, Inc., 2007 WL 258096, *2-*3 (E.D.Tex. 2007) (discovery not strictly limited
22 to explicitly accused products). There is no similar justification for the discovery Rambus now seeks,
23 after discovery has closed, after the Court has struck Rambus's infringement claims against GDDR5
24 SDRAM, and years prior to the introduction of DDR4 SDRAM.
25 III. THE BURDEN OF RAMBUS'S REQUESTED DEPOSITION FAR OUTWEIGHS ANY
CONCEIVABLE RELEVANCE.
26

27 Even assuming that the deposition testimony Rambus seeks has some de minimis relevance,
28 any relevance is clearly outweighed by the burden that Rambus seeks to impose on Hynix. Rambus

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1 has substantial quantities of documentation regarding GDDR5 SDRAM and, to the extent it exists,
2 DDR4 SDRAM. Brown Decl. ¶¶ 10, 11, 12. Rambus has taken no issue with the adequacy of Hynix's
3 production. Yet, Rambus apparently now seeks a Hynix witness, that has, inter alia, reviewed and is
4 able to summarize the documents that have already been produced to Rambus. Rambus also would
5 have a Hynix witness investigate, and possibly interview, all Hynix persons who may have been
6 involved with either JEDEC or Hynix internal considerations of the features and alternatives proposed
7 or considered for GDDR5 SDRAM and the future DDR4 SDRAM. In short, with fact discovery
8 closed and little more than three months remaining before trial, Rambus would have Hynix spend
9 significant amounts of time and resources preparing a witness to speak for Hynix, pursuant to rule
10 30(b)(6), about the development of standards and products that are not and cannot properly be accused
11 of infringement or otherwise injected into the trial. See, e.g., Planned Parenthood Fed. of Am., Inc. v.
12 Ashcroft, 2004 WL 432222, *1, No. C03-4872 (N.D. Cal., Mar. 5, 2004) (denying motion to compel
13 production of individual patient records because of burden of production in light of, among other
14 considerations, the marginal probative value of the requested information, the short time frame before
15 trial); Meijer, Inc. v. Abbott Lab’s, 2008 WL 2503007, *3, No. C 07-5985 CW (N.D. Cal., June 18,
16 2008) (denying motion to compel sales information because the burden of producing it far outweighed
17 the limited potential of the requested data to provide insight into the issues of the case).
18 IV. CONCLUSION.
19 For the reasons discussed above, Rambus's motion should be denied.
20

21 DATED: October 14, 2008 Respectfully submitted,

22

23 By: /s/ Theodore G. Brown, III

Daniel J. Furniss
24 Theodore G. Brown, III
Jordan Trent Jones
25 TOWNSEND and TOWNSEND and CREW LLP
26 Kenneth L. Nissly
Susan van Keulen
27 Geoffrey H. Yost
THELEN LLP
28

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1 Kenneth R. O'Rourke
Wallace A. Allan
2 O'MELVENY & MYERS LLP
3 Attorneys for
HYNIX SEMICONDUCTOR INC.,
4 HYNIX SEMICONDUCTOR AMERICA INC.,
HYNIX SEMICONDUCTOR
5 MANUFACTURING AMERICA INC., HYNIX
SEMICONDUCTOR U.K. LTD., and HYNIX
6 SEMICONDUCTOR DEUTSCHLAND GmbH
61591330 v1
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