3885

1 Gregory P. Stone (SBN 078329) Rollin A.
Ransom (SBN 196126)

Andrea Weiss Jeffries (SBN 183408) SIDLEY AUSTIN LLP
2 Fred A. Rowley, Jr. (SBN 192298) 555 West Fifth Street, Suite 4000
MUNGER, TOLLES & OLSON LLP Los Angeles, California 90013-1010
3 355 South Grand Avenue, 35th Floor Telephone: (213) 896-6000
Los Angeles, CA 90071-1560 Facsimile: (213) 896-6600
4 Telephone: (213) 683-9100 Email: rransom@sidley.com
Facsimile: (213) 687-3702
5 Email: gregory.stone@mto.com Pierre J. Hubert (Pro Hac Vice)
Email: andrea.jeffries@mto.com Craig N. Tolliver (Pro Hac Vice)
6 Email: fred.rowley@mto.com McKOOL SMITH PC
300 West 6th Street, Suite 1700
7 Peter A. Detre (SBN 182619) Austin, Texas 78701
Rosemarie T. Ring (SBN 220769) Telephone: (512) 692-8700
8 Jennifer L. Polse (SBN 219202) Facsimile: (512) 692-8744
MUNGER, TOLLES & OLSON LLP Email: phubert@mckoolsmith.com;
9 560 Mission Street, 27th Floor Email: ctolliver@mckoolsmith.com
San Francisco, CA 94105
10 Telephone: (415) 512-4000
Facsimile: (415) 512-4077
11 Email: peter.detre@mto.com
Email: rose.ring@mto.com
12 Email: jen.polse@mto.com
13 Attorneys for RAMBUS INC.
14 UNITED STATES DISTRICT COURT
15 NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
16
17 RAMBUS INC., CASE NO.: C 05-00334 RMW

18 Plaintiff, RAMBUS INC.’S CONSOLIDATED
OPPOSITION TO MOTIONS OF
19 vs. MANUFACTURERS FOR SUMMARY
JUDGMENT BASED UPON
20 HYNIX SEMICONDUCTOR INC., et al., COLLATERAL ESTOPPEL
21 Defendants.
22 Date: January 30, 2009
Time: 2:00 p.m.
23 Courtroom: 6
Judge: Hon. Ronald M. Whyte
24
25
26
27
28
RAMBUS INC.’S CONSOLIDATED OPPOSITION TO
COLLATERAL ESTOPPEL SJ MOTIONS
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1
RAMBUS INC., CASE NO.: C 05-02298 RMW
2
Plaintiff,
3
vs.
4
SAMSUNG ELECTRONICS CO., LTD.,
5 et al.,
6 Defendants.
7
RAMBUS INC., CASE NO.: C 06-00244 RMW
8
Plaintiff,
9
vs.
10
MICRON TECHNOLOGY INC., et al.,
11
Defendants.
12
13 HYNIX SEMICONDUCTOR, INC., et al., CASE NO.: CV 00-20905 RMW

14 Plaintiffs,
15 vs.
16 RAMBUS INC.,
17 Defendant.
18
19
20
21
22
23
24
25
26
27
28
COLLATERAL ESTOPPEL SJ MOTIONS
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1
3 TABLE OF CONTENTS
4 I INTRODUCTION .............................................................................................................. 1
II. ARGUMENT ...................................................................................................................... 3
5
A. The Manufacturers Cannot Demonstrate That the Delaware Ruling is
6 Entitled to Collateral Estoppel Effect, Because the Issues Are Non-
Identical................................................................................................................... 4
7
1. The Delaware Court’s Determinations About Prejudice, Bad Faith,
8 and the Appropriate Sanction Rested in Part Upon Purported
Litigation Misconduct by Rambus that is Irrelevant Here .......................... 4
9
a. Rambus’s Purported Litigation Misconduct Was Material to
10 the Delaware Court’s Prejudice and Sanction
Determinations ................................................................................ 5
11
b. The Purported Litigation Misconduct Relied Upon by the
12 District Court is Irrelevant to this Case, and Renders the
Issues of Prejudice and Sanction Distinct ....................................... 7
13
c. The Manufacturers’ Attempt to Link the Litigation
14 Misconduct to this Case Are Meritless ......................................... 12
15 2. The Manufacturers Have Failed to Show that the Issue of Spoliation

is Identical ................................................................................................. 15
16 a. The Differences Among Products Raise Different Issues as
17 to When Rambus Incurred a Duty to Preserve Documents........... 15
b. The Circumstances Presented by Rambus’s Infringement
18 Action Against Hynix, Samsung, and Nanya Each Raise
19 Unique Spoliation and Prejudice Issues that Cannot Be
Resolved by the Delaware Ruling................................................. 16
20 B. This Court Should Exercise its Discretion to Reject the Efforts by
Samsung, Nanya, and Hynix to Invoke Collateral Estoppel Based Upon
21
Inconsistent Rulings, Efficiency, and Fairness Concerns ..................................... 19
22 1. The Delaware Court’s Findings Are Fundamentally Inconsistent
with this Court’s Spoliation Determinations in Hynix I............................ 20
23
2. The Discretionary Factors Apply to Hynix, Samsung, and Nanya’s
24 Assertion of Non-Mutual Collateral Estoppel........................................... 22
25 a. Courts Have Discretion to Consider the Fairness of
Applying Non-Mutual Collateral Estoppel Even When It Is
26 Defensive ...................................................................................... 22
27 b. Regardless, the Manufacturers Assert a Species of Offensive
Collateral Estoppel Because Rambus was the Defendant in
28 Delaware ....................................................................................... 25
i COLLATERAL ESTOPPEL SJ MOTIONS
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1
3 c. Hynix’s Implausible “Last in Time” Argument is Expressly

Refuted by Controlling Ninth Circuit Law ................................... 28
4
3. Collateral Estoppel Also Is Properly Denied Because It Will Not
5 Result In Judicial Economy ...................................................................... 28
6 C. Nanya’s Particularized Requests for Issue Preclusion Are Equally
Impermissible and Unfair...................................................................................... 29
7 D. The Delaware Court’s Ruling is Unpersuasive..................................................... 30
8 1. The Delaware Court’s Determination that Rambus Was Required to
Preserve Documents in December 1998 Is Erroneous.............................. 30
9
2. The Delaware Court’s Prejudice Analysis is Erroneous ........................... 33
10
a. There is No Support for the Delaware Court’s Conclusion
11 that the Spoliated Documents Had a Prejudicial Effect on
the Manufacturers’ JEDEC-Related Defenses in this
12 Litigation....................................................................................... 34
13 b. There is No Support for the Delaware Court’s Conclusion
that the Spoliated Documents Had a Prejudicial Effect on
14 the Equitable Conduct Defenses That Remain to be Tried ........... 36
15 3. The Delaware Court’s Gave Inadequate Consideration to Sanction

Options, and Offered No Reasoned Basis for Dismissing Rambus’s
16 Patent Claims ............................................................................................ 37
17 III. CONCLUSION ................................................................................................................. 38
18
19
20
21
22
23
24
25
26
27
28
ii COLLATERAL ESTOPPEL SJ MOTIONS
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1
TABLE OF AUTHORITIES
2
FEDERAL CASES
3
A.J. Canfield Co. v. Vess Beverage, Inc.,
4 859 F.2d 36 (7th Cir. 1988)....................................................................................................... 1
5 American Fabrics, Inc. v. L&L Textiles, Inc.,
754 F.2d 1524 (9th Cir. 1985)................................................................................................. 31
6 Aptix Corp. v. Quickturn Design Sys., Inc.,
269 F.3d 1369 (Fed. Cir. 2001)..................................................................................... 8, 13, 14
7
Blonder-Tongue Labs., Inc. v. University of Ill. Found.,
8 402 U.S. 313 (1971) ......................................................................................................... passim
Brewer v. Dupree,
9 2003 WL 23507795 (M.D. Ala. 2003).................................................................................... 27
10 Central Delta Wager Agency v. United States,
306 F.3d 938 (9th Cir. 2002)............................................................................................... 1, 12
11 Comair Rotron, Inc. v. Nippon Densan Corp.,
49 F.3d 1535 (Fed. Cir. 1995)................................................................................................... 4
12
Delgado v. United States,
13 536 F.Supp.2d 1328 (Ct. Int’l Trade 2007)............................................................................. 27
Eureka Fed. Sav. & Loan Ass’n v. Am. Cas. Co.,
14 873 F.2d 229 (9th Cir. 1989)..................................................................................................... 7
15 Fireman’s Fund Ins. Co. v. Int’l Market Place,
773 F.2d 1068 (9th Cir. 1985)................................................................................................. 24
16 Fund for Animals, Inc. v. Lujan,
962 F.2d 1391 (9th Cir. 1992)................................................................................................. 12
17
Gates Rubber Co. v. Bando Chem. Indus., Ltd.,
18 167 F.R.D. 90 (D. Colo. 1996)................................................................................................ 37
Halaco Eng’g Co. v. Costle,
19 843 F.2d 376 (9th Cir. 1988)................................................................................................... 38
20 Healey v. Labgold,
271 F. Supp. 2d 303 (D.D.C. 2003) .......................................................................................... 8
21 Hydranautics v. FilmTec Corp.,
204 F.3d 880 (9th Cir. 2000)..................................................................................................... 4
22
Hynix Semiconductor Inc. v. Rambus Inc.,
23 No. CV-00-20905-RMW (N.D. Cal. Apr. 22, 2005) .............................................................. 28
Hynix Semiconductor Inc. v. Rambus, Inc.,
24 F. Supp. 2d , 2006 WL 565893 (N.D. Cal. 2006) .................................................... passim
25 In re Ameriserve Food Distrib., Inc.,
267 B.R. 668 (D. Del. 2001) ................................................................................................... 26
26 In Re Reynoso,
477 F.3d 1117 (9th Cir. 2007)................................................................................................... 4
27
28
iii COLLATERAL ESTOPPEL SJ MOTIONS
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 Jean Alexander Cosmetics, Inc. v. L’Oreal USA, Inc.,
458 F.3d 244 (3d Cir. 2006).............................................................................................. 27, 28
2
Keystone Driller Co. v. General Excavator Co.,
3 290 U.S. 240 (1933) ............................................................................................................ 8, 13
Liberty Mut. Ins. Co. v. FAG Bearings Corp.,
4 335 F.3d 752 (8th Cir. 2003)................................................................................................... 27
5 McNellis v. First Fed. Sav. & Loan Ass’n,
364 F.2d 251 (2d Cir. 1966)...................................................................................................... 7
6 Memphis-Shelby County Airport Aut. v. Braniff Airways, Inc.,
783 F.2d 1283 (5th Cir. 1986)................................................................................................... 7
7
Micron Tech., Inc. v. Rambus Inc.,
8 No. 00-792-SLR (D. Del. Jan. 9, 2009) .......................................................................... 1, 3, 23
Morris v. Union Pacific RR,
9 373 F.3d 896 (8th Cir. 2004)................................................................................................... 38
10 Mozart Co. v. Mercedes-Benz of North America, Inc.,
833 F.2d 1342 (9th Cir. 1987)................................................................................................. 17
11 Offshore Sportswear, Inc. v. Vaurnet Int’l, B.V.,
114 F.3d 848 (9th Cir. 1997)................................................................................................. 3, 4
12
Parklane Hosiery v. Shore,
13 439 U.S. 322 (1979) ......................................................................................................... passim
Precision Instr. Mfg. v. Auto.Maintenance Mach. Co.,
14 324 U.S. 806 (1945) .......................................................................................................... 14, 19
15 Provau v. State Farm Mut. Auto. Ins. Co.,
772 F.2d 817 (11th Cir. 1985)................................................................................................. 30
16 Rambus, Inc. v. Infineon Techs.,
155 F. Supp. 2d 668 (E.D. Va. 2001)................................................................................ 10, 11
17
Rambus, Inc. v. Infineon Techs. AG,
18 222 F.R.D. 280 (E.D. Va. 2004) ...................................................................................... passim
Reyn’s Pasta Bella, LLC v. Visa USA, Inc.,
19 442 F.3d 741 (9th Cir. 2006)..................................................................................................... 4
20 Robi v. Five Platters, Inc.,
838 F.2d 318 (9th Cir. 1988)............................................................................................. 31, 32
21 S.E.C. v. Monarch Funding Corp.,
192 F.3d 295 (2d Cir. 1999).................................................................................................... 32
22
Samsung Elecs. Co., Ltd. v. Rambus, Inc.,
23 523 F.3d 1374 (Fed. Cir. 2008)................................................................................... 19, 23, 24
Schmid v. Milwaukee Elec. Tool Corp.,
24 13 F.3d 76 (3d Cir. 1994)........................................................................................................ 37
25 Setter v. A.H. Robbins Co.,
748 F.2d 1328 (8th Cir. 1984)................................................................................................... 7
26 SmithKline Beacham Corp. v. Apotex Corp.,
232 F.R.D. 467 (E.D. Pa. 2005) .............................................................................................. 36
27
Southwestern Bell Telephone, L.P. v. Arthur Collins, Inc.,
28 2005 WL 6225305 (N.D. Tex. 2005)...................................................................................... 27

- iv - COLLATERAL ESTOPPEL SJ MOTIONS
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 State of Idaho Potato Comm’n v. GT&T Terminal Packaging, Inc.,
425 F.3d 708 (9th Cir. 2005)................................................................................................... 29
2
Stevenson v. Sears, Roebuck & Co.,
3 713 F.2d 705 (Fed. Cir. 1983)................................................................................................. 27
The Regents of the Univ. of Cal. v. Micro Therapeutics, Inc.,
4 2007 WL 1670120 (N.D. Cal. June 6, 2007) .......................................................................... 37
5 Western Oil and Gas Ass’n v. E.P.A.,
633 F.2d 803 (9th Cir. 1980)................................................................................................... 21
6 Zdanok v. Glidden Co.,
327 F.2d 944 (2d Cir. 1963).................................................................................................... 29
7
8 FEDERAL RULES
9 FRCP 30(b)(6)............................................................................................................................. 8, 9
FRCP 54(b) ............................................................................................................................. 17, 43
10
FRCP 60(b) ............................................................................................................................. 17, 43
11
TREATISES AND ARTICLES
12
9 Stan. L. Rev. 281, 290-92 (1957)............................................................................................... 29
13
Currie, “Civil Procedure: The Tempest Brews,” 53 Cal. L. Rev. 25 (1965)................................. 30
14 McClintock on Equity § 26 (2d ed. 1948)....................................................................................... 8
15 P. Mennell, et al., Patent Case Management Judicial Guide 5-69 ................................................ 24
Restatement (Second) of Judgments § 27 ..................................................................................... 33
16
Restatement (Second) of Judgments § 29 ................................................................................. 4, 25
17 Restatement (Second) of Judgments § 88 (Tent. Draft No. 2, Apr. 15 1975) .............................. 26
18 Wright & Miller, Federal Practice & Procedure § 4465.1 at 741 ................................................. 30
Wright & Miller, Federal Procedure & Practice § 5178 ............................................................... 43
19
20
21
22
23
24
25
26
27
28
-v- COLLATERAL ESTOPPEL SJ MOTIONS
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 I. INTRODUCTION
2 This Court should decline to accord collateral estoppel effect to the Delaware Court’s
3 ruling on unclean hands and spoliation issued in Micron Tech., Inc. v. Rambus Inc., No. 00-792-
4 SLR (D. Del. Jan. 9, 2009) (the “Delaware Ruling” or “Ruling”). When the Delaware Ruling is
5 analyzed in light of the governing standards, none of the Manufacturers is entitled to invoke
6 collateral estoppel here, including Micron, the sole defendant with a claim to mutuality.
7 At one end of the preclusion spectrum sits Hynix. Having litigated and lost its spoliation
8 and unclean hands contentions in this very Court, it can articulate no plausible ground for
9 invoking the Delaware Ruling here. Collateral estoppel is intended to prevent litigants from
10 getting a “second bite at a single apple,” not to enable it. See A.J. Canfield Co. v. Vess
11 Beverages, Inc., 859 F.2d 36, 37 (7th Cir. 1988). Samsung, having already tried its unclean hands
12 defense before this Court, is closely aligned with Hynix. Although Nanya has yet to litigate
13 spoliation or unclean hands, its collateral estoppel arguments fare little better, for it must invoke
14 the doctrine in the face of critical differences in the issues and flatly inconsistent rulings. Only
15 Micron has a colorable claim to collateral estoppel, having litigated spoliation and unclean hands
16 against Rambus and prevailed in Delaware. Ultimately, however, the differences between the
17 issues decided in Delaware and those posed by Micron’s unclean hands defense in this action
18 foreclose the application of collateral estoppel even as to Micron.
19 The principal bar to collateral estoppel here—and the defect that cuts across the
20 Manufacturers’ briefs—is that the unclean hands issues addressed in the Delaware Ruling are not
21 identical to the issues presented in this case. The requirement of identical issues is mandatory,
22 and requires the Manufacturers to show more than a mere similarity or semblance. See Central
23 Delta Wager Agency v. United States, 306 F.3d 938, 953 (9th Cir. 2002). The record evidence
24 makes clear that key factual and legal differences pervade the issues of prejudice and the
25 appropriate sanction, as well as the question of spoliation simpliciter. The Delaware Court’s
26 determination of prejudice hinges in part on purported litigation misconduct in that case and in
27 the Infineon matter in the Eastern District of Virginia. But, as Micron’s own spoliation papers
28 and the undisputed record shows, the representations, testimony, and discovery conduct
1 COLLATERAL ESTOPPEL SJ MOTIONS
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 referenced in the Delaware Ruling did not take place in or even affect the coordinated cases.
2 Most of the purported misrepresentations were known long before Rambus even brought its
3 actions against the Manufacturers, and all of the challenged conduct was addressed before these
4 cases left the most preliminary phases.
5 The question of whether Rambus spoliated evidence for purposes of this litigation is also
6 necessarily different from the spoliation issues decided in Delaware. Spoliation turns on when
7 Rambus incurred a duty to preserve documents. That question cannot be answered without
8 examining the facts and circumstances surrounding the introduction and marketing of particular
9 accused DRAM products. As this Court recognized in Hynix I, Rambus’s litigation strategy
10 hinged on a variety of factors involving its relationship with DRAM manufacturers, its licensing
11 negotiations, and its investigation of the competing DRAM device. The Delaware Court’s
12 resolution of the duty issue as to earlier generations of products therefore cannot dictate the result
13 with respect to the Manufacturers’ later products. These differences are exacerbated by the
14 unique facts and circumstances presented by the non-mutual Manufacturers, whether that be
15 Hynix’s prior spoliation loss in this Court, Samsung’s licenses with Rambus, or Nanya’s later
16 entry into, and comparatively minor position in, the DRAM industry.
17 The second defect goes to this Court’s discretionary authority to refuse collateral estoppel
18 when, as in this instance, it is being asserted offensively and by non-mutual parties. The law is
19 settled that the existence of conflicting rulings on an issue itself weighs against the application of
20 collateral estoppel. The Delaware Ruling diverges from the Hynix I spoliation order not only in
21 its reasoning, but also in the conclusions it reached on key spoliation issues. These include when
22 the duty to preserve evidence arose, whether any prejudice resulted from the alleged destruction
23 of documents, whether Rambus acted in bad faith, and what sanction—if any—is appropriate.
24 See Hynix Semiconductor Inc. v. Rambus, Inc., F. Supp. 2d , 2006 WL 565893 (N.D. Cal.
25 Jan. 5, 2006). Even beyond these inconsistencies, applying the doctrine here would not advance
26 the efficiency goals underlying it. Hynix and Samsung’s unclean hands defenses have already
27 been tried; Hynix’s defense has already been rejected; and the extensive spoliation record built in
28 those cases promises to streamline the trial of Nanya’s defense.
-2- COLLATERAL ESTOPPEL SJ MOTIONS
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 The non-mutual Manufacturers attempt to circumvent the discretionary factors by arguing
2 that they apply only in the offensive context, and that theirs is a defensive form of collateral
3 estoppel. This argument fails. One of the foundational cases on collateral estoppel, Blonder-
4 Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971), makes clear that the Court has
5 discretion to consider the fairness of applying the doctrine, regardless of the non-mutual parties’
6 positions. In any event, as this Court recognized in Hynix I, any effort by the Manufacturers to
7 invoke another court’s spoliation order in this case is inherently offensive. It is the position of the
8 parties in the first case that matters, and Rambus did not choose Delaware as the forum, or
9 Micron as an adverse party. See Parklane Hosiery Co. v. Shore, 439 U.S. 322 (1979).
10 Finally, the Manufacturers are wrong in suggesting that the Delaware Ruling constitutes
11 persuasive authority, and that it is cause for the Court to reconsider its Hynix I ruling or to re-open
12 the Samsung record. This Court has carefully analyzed the duty to preserve, the nature and scope
13 of Rambus’s productions to the Manufacturers, and whether any viable defenses were prejudiced
14 by the destroyed documents. Far from casting doubt on this analysis, the Delaware Ruling
15 underscores the accuracy and rigor of this Court’s decision.
16 II. ARGUMENT
17 The doctrine of collateral estoppel bars parties from re-litigating only such issues as were
18 actually litigated and necessarily decided by a final judgment in another case. See Offshore
19 Sportswear, Inc. v. Vaurnet Int’l, B.V., 114 F.3d 848, 850 (9th Cir. 1997). As this Court has
20 noted, the Manufacturers must establish four elements in order to invoke the doctrine: “‘(1) there
21 was a full and fair opportunity to litigate the issue in the previous action; (2) the issue was
22 actually litigated in that action; (3) the issue was lost as a result of a final judgment in that action;
23 and (4) the person against whom collateral estoppel is asserted in the present action was a party or
24 in privity with a party in the previous action.’” Order Denying Hynix’s Mot. to Dismiss Patent
25 Claims for Unclean Hands on Basis of Collateral Estoppel, Apr. 25, 2005 (“CE Order re:
26 Infineon”), at 2 (citation omitted); accord Reyn’s Pasta Bella, LLC v. Visa USA, Inc., 442 F.3d
27 741, 746 (9th Cir. 2006). The Manufacturers bear the burden to prove these elements “with
28 clarity and certainty.” Offshore Sportswear, 114 F.3d at 850. Even if the Manufacturers establish

CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 that all of these elements are satisfied—and they cannot—this Court can and should exercise its
2 discretion to deny collateral estoppel to the Delaware Court’s ruling. See Parklane Hosiery, 439
3 U.S. at 331; Blonder-Tongue Labs., 402 U.S. at 333-34; Restatement (Second) of Judgments
4 § 29.
5 A. The Manufacturers Cannot Demonstrate That the Delaware Ruling is
Entitled to Collateral Estoppel Effect, Because the Issues Are Non-Identical
6
Collateral estoppel may apply only if the previously adjudicated issues are identical to
7
those before this Court. See Hydranautics v. FilmTec Corp., 204 F.3d 880, 885 (9th Cir. 2000)
8
(noting that collateral estoppel requires that “the issue necessarily decided at the previous
9
proceeding is identical to the one which is sought to be relitigated”); accord Comair Rotron, Inc.
10
v. Nippon Densan Corp., 49 F.3d 1535, 1537 (Fed. Cir. 1995). The doctrine may not be applied
11
if there is even “some possibility” that the issues are not identical. In Re Reynoso, 477 F.3d 1117,
12
1123 (9th Cir. 2007). And because the requirement of identical issues is mandatory, any variance
13
in the issues presented here bars all four of the Manufacturers from invoking the Delaware Ruling
14
for collateral estoppel purposes.
15
As resolved by the Delaware Court, the unclean hands issues in that case differ from those
16
before this Court in at least two critical respects. First, the issue of whether the Manufacturers
17
have suffered any prejudice in this litigation and, if so, the proper remedy for any such spoliation,
18
was not decided by the Delaware Court. In evaluating the extent of Rambus’s purported “bad
19
faith” and the “prejudice” to Micron, and in deciding to exercise its remedial discretion, the
20
Delaware Court relied upon purported litigation misconduct in its case and Infineon, a factor that
21
(among others) is inapplicable in this case. Second, Rambus’s infringement case against each of
22
the Manufacturers presents unique legal and factual issues that preclude giving collateral estoppel
23
effect to the Delaware Court’s spoliation determinations.
24
1. The Delaware Court’s Determinations About Prejudice, Bad Faith,
25 and the Appropriate Sanction Rested in Part Upon Purported
Litigation Misconduct by Rambus that is Irrelevant Here
26
27 Contrary to the Manufacturers’s suggestion (e.g., Samsung CE Mot. 18), the Delaware
28 Court expressly relied upon purported litigation misconduct in determining prejudice, bad faith,
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 and the proper remedy. That purported misconduct is demonstrably irrelevant here, because all of
2 the challenged acts were already aired before the coordinated cases were at issue.
3 a. Rambus’s Purported Litigation Misconduct Was Material to
the Delaware Court’s Prejudice and Sanction Determinations
4
In arriving at its prejudice determination and in fixing what it believed to be the
5
appropriate sanction, the Delaware Court specifically relied upon purported litigation misconduct
6
by Rambus that was distinct from spoliation. The Delaware Court concluded that Micron was
7
prejudiced by Rambus’s destruction of documents, and that the “prejudice has been compounded
8
by Rambus’[s] litigation conduct.” (Del. Ruling, at 33.) In the Court’s view, Rambus’s
9
spoliation, “when considered in light of Rambus[’s] litigation conduct,” warranted a declaration
10
that its patents were unenforceable. (Id..) While focusing on spoliation, the Delaware Court
11
expressly predicated its prejudice and remedial determinations on the litigation misconduct set
12
out in the ruling, including purported false testimony and misrepresentations to the Courts in
13
Delaware and Virginia. (Id. at 23-25.)
14
The contrary interpretation offered by Samsung and Micron is countertextual, and ignores
15
load-bearing portions of the Delaware Court’s analysis. Samsung argues that “the court applied a
16
sanction based on a finding of spoliation, not litigation misconduct.” (Samsung’s Motion for
17
Entry of J. of Unenforceability of Rambus’s Asserted Patents or, in the Alternative, for Summ. J.
18
(“Samsung CE Mot.”), at 18 (emphasis in original).) Similarly, Micron maintains that the
19
Delaware Court “made clear that Rambus’s spoliation alone fully supported her conclusions of
20
bad faith, prejudice, and inadequacy of remedies other than unenforceability.” (Micron’s Mot. for
21
Summ. J. of Unenforceability Based on Collateral Estoppel (“Micron CE Mot.”), at 20.) But this
22
interpretation overlooks the Delaware Court’s language expressly linking Rambus’s purported
23
spoliation with its purported litigation misconduct. In determining that Micron suffered
24
prejudice, the Court did not treat litigation misconduct as an extraneous consideration; it
25
specifically weighed Rambus’s alleged spoliation “in light of [its alleged] litigation misconduct,”
26
and concluded that the misconduct “compounded” the prejudice to Micron. (Del. Ruling, at 33.)
27
The Manufacturers argue that the Delaware Court included the litigation misconduct only
28
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 “to establish Rambus’s bad faith and an overall scheme of spoliation and litigation.” (Samsung
2 CE Mot., at 18; accord Micron CE Mot., at 21.) The Delaware Court’s discussion of litigation
3 misconduct makes clear, however, that it did not view this factor as a subordinate part of
4 Rambus’s spoliation conduct, or as solely probative of bad faith. The Court referenced litigation
5 misconduct in the context of discussing “the degree of prejudice suffered by Micron” and “the
6 potential sanctions for the conduct of record.” (Del. Ruling, at 32-33.) In the section of the
7 Ruling setting forth its factual conclusions, the Court addressed litigation misconduct separately
8 from spoliation, in paragraphs setting out, albeit erroneously, purportedly false testimony,
9 misrepresentations, and discovery failings. (Id. at 24-25.) Only by ignoring these findings and
10 quoting subordinate clauses out of context (e.g., Samsung CE Mot., at 18 (citing Del. Ruling, at
11 24; quoting id. at 33)) are the Manufacturers able to cabin the role of litigation misconduct in the
12 Delaware Court’s ruling. When the Ruling is viewed as a whole, however, it is apparent that the
13 Manufacturers’ arguments are baseless.1
14 In any event, a tie as to whether the Court’s litigation misconduct determinations were
15 necessary to its ruling must go to Rambus. It is black letter law that a Court may not give
16 preclusive effect to a ruling if it is unclear what issues were actually decided or necessary to the
17 judgment. See Eureka Fed. Sav. & Loan Ass’n v. Am. Cas. Co., 873 F.2d 229, 233 (9th Cir.
18 1989) (“Collateral estoppel is inappropriate if there is any doubt as to whether an issue was
19 actually litigated in a prior proceeding.”); In re Braniff Airways, Inc., 783 F.2d 1283, 1289 (5th
20 Cir. 1986) (“[I]f reasonable doubt exists as to what was decided in the first action, the doctrine of
21 res judicata should not be applied.”); Setter v. A.H. Robbins Co., 748 F.2d 1328, 1331 (8th Cir.
22 1984) (similar). Even if, as the Manufacturers suggest, the Delaware Court did not mean what it
23 said, the Court’s ruling would be at best ambiguous as to the significance and weight of Rambus’s
24 purported litigation misconduct, and it would be unfair to invoke it as grounds for imposing “the
25 1
For the above reasons, Micron’s repeated out-of-context quotations from prior Rambus hearings
26 are inapposite. (See, e.g., Micron CE Mot., at 14 & n.18.) Rambus did not argue or concede that
the spoliation issues in Delaware were identical to those in this case for collateral estoppel
27 purposes, but even if it had, it would have been impossible at the time to anticipate that the
Delaware Court would rely upon purported case-specific litigation conduct in analyzing the issue,
28 thereby rendering the issues fundamentally distinct.
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 drastic remedy of foreclosing a party from litigating an essential issue.” McNellis v. First Fed.
2 Sav. & Loan Ass’n, 364 F.2d 251, 257 (2d Cir. 1966).
3 b. The Purported Litigation Misconduct Relied Upon by the
District Court is Irrelevant to this Case, and Renders the Issues
4 of Prejudice and Sanction Distinct
5 In light of its reasoning, the prejudice and sanction issues resolved by the Delaware Court
6 are distinct from, and certainly not identical to, those presented here. The Manufacturers have
7 made no showing that the purported litigation misconduct found by the Delaware Court
8 prejudiced Micron or any of the other Manufacturers in this litigation, or that it had any effect on
9 the “integrity of the litigation process” before this Court. (Cf. Del. Ruling, at 33.) The acts of
10 misconduct alleged by Micron and relied upon by the Delaware Court were not only complete but
11 also well known by the time the coordinated cases were brought. Nearly all of the challenged
12 representations, testimony, and discovery actions took place between 2000 and 2001 in the
13 Infineon and Delaware litigations, and were ultimately ventilated in motion practice before those
14 courts. If anything, the undisputed facts make clear that the challenged litigation actions could
15 not have deceived the parties or the Court in the current proceedings.
16 The Federal Circuit has specifically recognized that a finding of litigation misconduct and
17 unclean hands in one case does not bar the patentholder from seeking relief in later cases. See
18 Aptix Corp. v. Quickturn Design Sys., Inc., 269 F.3d 1369, 1376 (Fed. Cir. 2001). Because the
19 unclean hands defense “only provides a bar to relief in the case at hand,” litigation misconduct
20 will not “defeat the right to affirmative relief” if “the misconduct has ceased and the right claimed
21 in the suit did not accrue because of it.” Id. (quoting McClintock on Equity § 26 (2d ed. 1948)).
22 The case law makes clear that a court may not impose sanctions for out-of-court conduct unless it
23 directly infected the current proceedings. See Keystone Driller Co. v. General Excavator Co.,
24 290 U.S. 240, 245 (1933) (explaining that unclean hands furnishes a remedy “only for such
25 violations of conscience as in some measure affect the equitable relations between the parties in
26 respect of something brought before the court for adjudication”); Healey v. Labgold, 271 F. Supp.
27 2d 303, 305 (D.D.C. 2003) (“[I]t would be an obvious usurpation of jurisdiction for this Court to
28 exercise its inherent authority to sanction behavior before another district court.”). This means
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 that in order to match up the prejudice and sanction issues decided by the Delaware Court, the
2 Manufacturers must show that every instance of the alleged litigation misconduct identified by the
3 Delaware Court had the same effect in the coordinated cases, and they must meet that burden as a
4 matter of law. The Manufacturers’ motions manifestly fail to meet that test:
5 Deposition Testimony About the Presentation of the Document Retention Policy to
6 Rambus’s Board and Number of Shred Days: The Delaware Court concluded that one of
7 Rambus’s Rule 30(b)(6) witnesses inaccurately testified at deposition that the Document
8 Retention Policy had not been presented to the Rambus Board. (Del. Ruling, at 24, ¶ 37.) But to
9 the extent the documents cited by the Delaware Court tell the true facts, they were publicly
10 known, and thus no longer concealed from the Manufacturers, before the coordinated cases even
11 got off the ground. To begin with, as Micron itself acknowledged in its post-trial Delaware
12 briefing, the board presentations that allegedly prove the testimony inaccurate were produced to
13 Infineon following the Virginia Court’s May 18, 2004 production order. (See Wu Decl. Ex. A
14 [Micron’s Post-Trial Brief re Rambus’s Litig. Misconduct and the Proper Sanction for Rambus’s
15 Spoliation, Case No. 00-792 (SLR), D. Del. Dct. No. 1084 (“Micron Spoliation Br.”)] at 35-36.)
16 With the disclosure of the “misconduct” to a litigation adversary, Rambus could hardly be
17 accused of “relying” on this purportedly false testimony in the consolidated cases, and there has
18 been no showing of any such attempt. More fundamentally, these exhibits were used in open
19 court as exhibits in the Infineon trial at the outset of the ‘334 case against Hynix, Nanya, and
20 Samsung, and long before Rambus sued Samsung in the ‘2294 action. (See Wu Decl. ¶¶ 5-6.)2
21 The same is true of the documents and facts underlying the Delaware Court’s
22 determination that Rambus’s Rule 30(b)(6) witnesses gave false deposition testimony about the
23 number of “shred days” held at the company. (Del. Ruling, at 24.) As Micron acknowledges,
24 one of these witnesses agreed in a February 2004 deposition that there were, in fact, three
25 housekeeping events held between 1998 and 2000. (Micron Spoliation Br., at 34 (citing Kramer
26 Depo. 170:3-171:6); accord Wu Decl. Ex. B [Kramer Depo. 170:3-171:6].) Indeed, the Virginia
27 2
The Infineon trial began on February 21, 2005, less than one month after Rambus brought the
28 ‘334 action. (Wu Decl. ¶ 2 .)
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 Court specifically noted in its May 18, 2004 order that there was evidence Rambus held
2 housekeeping events in 1998, 1999, and 2000. See Rambus, Inc. v. Infineon Techs. AG, 222
3 F.R.D. 280, 286 (E.D. Va. 2004). With these facts out in the open, there is no basis in fact for the
4 Manufacturers to suggest that the initial deposition testimony had any affect on the coordinated
5 cases here.
6 Rambus’s Purported Misrepresentation About the Timing and Purpose of the Document
7 Retention Policy: The Delaware Court concluded that Rambus made a misrepresentation about
8 the timing of its Document Retention Policy in a September 17, 2001 brief opposing Micron’s
9 Motion for Sanctions. (Del. Ruling, at 24-25, ¶ 39a.) According to the Delaware Court, notes
10 from a February 12, 1998 meeting between Karp and outside counsel made it misleading for
11 Rambus to assert that it implemented the policy “long before Rambus even contemplated [a
12 patent infringement] action.” (Id.) But it is undisputed that Rambus produced these otherwise
13 privileged meeting notes in response to the Virginia Court’s May 18, 2004 discovery order.
14 (Micron Spoliation Br., at 38.) Indeed, long before obtaining this document in discovery, the
15 Manufacturers asserted that Rambus’s document retention policy was developed in connection
16 with, and coterminously to, anticipated patent litigation. As early as 2001, Infineon argued, and
17 the Virginia Court agreed, that Rambus “contemplated that it might be bringing patent
18 infringement suits” when it initiated its document retention policy in 1998. See Rambus, Inc. v.
19 Infineon Techs., 155 F. Supp. 2d 668, 682 (E.D. Va. 2001). Hynix made a similar argument when
20 it filed its motion seeking a spoliation sanction from this Court in October 2004, suggesting that a
21 1998 presentation established a link between the Document Retention Policy and anticipated
22 litigation. (See Hynix’s Mot. to Dismiss Patent Claims as a Sanction for Litig. Miconduct, Case
23 No. 00-2-0-5, Dkt. No. 524, at 5.)
24 To the extent there was anything misleading about Rambus’s argument that its Document
25 Retention Policy “had nothing to do with litigation” (Del. Ruling, at 25, ¶ 39b), the corrective
26 documents and facts were available months and even years before these proceedings began. The
27 Delaware Court concluded that this argument amounted to a misrepresentation because “several
28 documents reveal that Rambus considered the policy to be part of its litigation preparation.” (Id.)
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 This allegation has been made by DRAM manufacturers since at least the early stages of the
2 Infineon litigation. See 155 F. Supp. 2d at 682. As Micron itself notes, at least one of the
3 documents cited by the Delaware Court in its ruling—a list of Rambus Intellectual Property
4 Department goals—was produced in 2002. (Micron Spoliation Br., at 39 n.153.) Other
5 documents relied upon by the District Court were produced in Infineon following the Virginia
6 Court’s May 18, 2004 discovery order, (id.), and shown in open court at the Infineon trial in 2005.
7 (Wu Decl. ¶¶ 8-11.) Indeed, the 2004 discovery orders issued by the Virginia Court themselves
8 reference the same Intellectual Property Department goals cited in the Delaware Ruling. See
9 Rambus, Inc. v. Infineon Techs. AG, 220 F.R.D. 264, 287 (E.D. Va. 2004) (discussing an “internal
10 Rambus document created by Rambus’[s] intellectual property team in June 1999 that discusses
11 the company’s goals for 1999”); id. at 294 (similar). These preexisting contentions and
12 determinations foreclose any inference that Rambus’s purported misrepresentation had any effect
13 in these later-filed litigations.
14 Richard Crisp’s Representation that He Was Minimally Involved with Rambus’s Patent
15 Prosecution Efforts: The Delaware Court relied upon a purported discrepancy in Rambus JEDEC
16 representative Richard Crisp’s testimony that was identified long ago, citing documents that have
17 been in the possession of Micron for years. According to the Delaware Court, Crisp gave
18 misleading testimony by indicating that he was minimally involved in Rambus’s patent
19 prosecution. (Del. Ruling, at 25.) But as early as August 2001, the Virginia Court concluded, in
20 a published order, that notes written by patent counsel Lester Vincent “establish that Rambus[’s]
21 JEDEC representative Richard Crisp was intimately involved in the patent-drafting efforts,” and
22 that Crisp had initially given “false or misleading testimony.” Infineon, 155 F. Supp. 2d at 681.
23 The “misconduct” was therefore uncovered and disclosed long before these cases were filed.
24 Geoffrey Tate’s Purported Testimony About Amending Rambus’s Patent Claims: The
25 Delaware Court determined that, in the Infineon matter, former Rambus CEO Geoffrey Tate
26 falsely denied taking steps to amend Rambus’s patent claims to cover SDRAM features. (Del.
27 Ruling, at 25.) As with Crisp’s testimony, the Virginia Court identified this purported
28 discrepancy in Tate’s testimony in its attorney’s fees order in Infineon, which was issued on
- 10 - COLLATERAL ESTOPPEL SJ MOTIONS
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 August 9, 2001. See 155 F. Supp. 2d at 681-82 (challenging Tate’s testimony “that he did not
2 believe that Rambus drafted claims to cover JEDEC’s standard-setting work”). The
3 Manufacturers can therefore claim no prejudice here.
4 Rambus’s Response to Micron’s Request for Production of Records Regarding Shredding
5 and Removable Electronic Media: The District Court concluded that Micron requested
6 documents regarding shredding services and back-up tapes in 2001, but that Rambus “failed to
7 produce all responsive documents until much later.” (Del. Ruling, at 24.) By Micron’s own
8 account, however, Rambus produced the challenged shredding invoices on February 17, 2004,
9 some eleven months before any of these cases commenced. (Micron Spoliation Br., at 37 (citing
10 MTX 683); accord Wu Decl. Ex. C [MTX 683].) Moreover, there can be no harm to the
11 Manufacturers in the coordinated cases as a result of Rambus’s March and April 2005 discovery
12 of removable electronic media, including some back-up tapes. The matter was the subject of
13 detailed disclosures by Rambus in its April 22, 2005 verified statement. (See Wu Decl. Ex. D
14 [Rambus’s Verified Statement Re: Discovery of Backup Tapes, filed Apr. 27, 2005, in Case No.
15 CV 00-20905].) The productions from, and disclosures about, the back-up tapes all took place
16 before Rambus brought suit against Micron in the ‘244 case, and before discovery had begun in
17 any of the DDR2 cases.
18 The Issues of Prejudice and Proper Remedy Raise Triable Issues Precluding Summary
19 Judgment: Because the Manufacturers cannot show that the litigation misconduct found in
20 Delaware had any consequences, much less any prejudicial effect, in these cases, the issues of
21 prejudice, bad faith, and proper remedy are non-identical. Even if the Manufacturers could point
22 to some possible effect on the consolidated cases, it is not enough for issues to be “similar”; an
23 order may only be given collateral estoppel effect if it decided the “identical” issue before the
24 Court. See Central Delta Wager Agency, 306 F.3d at 953 (emphasizing that “the issues litigated
25 must not be ‘merely similar,’ but must be ‘identical’”), accord Fund for Animals, Inc. v. Lujan,
26 962 F.2d 1391, 1399 (9th Cir. 1992) (“The doctrine is inapplicable if the issues are merely
27 similar.”). The Manufacturers cannot sustain this burden.
28
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 c. The Manufacturers’ Attempt to Link the Litigation Misconduct
to this Case Are Meritless
2
Unable to escape this clear lack of identity, the Manufacturers attempt to import the
3
litigation misconduct into this case by stretching the law and the facts. Neither their arguments
4
nor the authority they cite, however, suggests that a party’s purported unclean hands in one trial
5
taints its rights in a subsequent trial.
6
First, the Manufacturers insist that Aptix has no application here because it does not
7
expressly address collateral estoppel. (Samsung CE Mot., at 18; Micron CE Mot., at 20.) But the
8
Federal Circuit’s observation that “a finding of unclean hands generally does not prejudice the
9
offending party in subsequent cases,” 269 F.3d at 1376, reflects not only the longstanding
10
principle that such equitable relief is inherently case-specific, but also the collateral estoppel
11
requirement that the issues before the two courts be identical. If, as the Manufacturers suggest, a
12
court must mechanically apply a sanction imposed by another court for past litigation misconduct
13
merely because the litigations have some relationship, the Federal Circuit’s reasoning in Aptix
14
would be meaningless.
15
Far from supporting the Manufacturers’ position (Samsung CE Mot., at 18; Micron CE
16
Mot., at 21), Keystone Driller highlights why the Delaware Court’s litigation misconduct
17
determinations render the prejudice and remedy issues distinct here. In that case, the patentholder
18
secured a judgment of validity and infringement by purchasing the testimony of an inventor who
19
had devised a prior use. See 290 U.S. at 243. In a second action, the patentholder attempted to
20
leverage the fraudulently-obtained judgment in pursuing patent infringement claims, including
21
injunctive relief, against additional defendants. Id. at 246. Because the patentholder attempted to
22
use the fraudulent judgment in the second action, the Court upheld the defendant’s unclean hands
23
defense and denied the patentholder relief. Id. at 247. Nevertheless, as the Federal Circuit noted
24
in Aptix, the Supreme Court did not hold that the plaintiff was barred from asserting its patents in
25
future cases. 269 F.3d at 1377. On the contrary, just two years later, the Supreme Court
26
acknowledged the earlier fraud, but then resolved on the merits an assertion of the same patents
27
by the same party. Id.
28
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 The Manufacturers have offered no plausible theory under which Rambus benefited in this
2 litigation from the purported misconduct identified by the Delaware Court. The Manufacturers
3 do not contend that Rambus attempted in the consolidated cases to leverage any particular order
4 or result flowing from the challenged briefs, testimony, and actions in Virginia and Delaware.
5 Nor would there have been any occasion or way for Rambus to do so. The purported
6 misrepresentations and false testimony had been identified and, in many instances, even litigated
7 in Infineon and Delaware at the time the present actions were brought. Micron suggests that
8 Rambus used its litigation misconduct to obtain favorable licenses that it then, in turn, used to its
9 advantage in this litigation. (Micron CE Mot., at 21.) But this argument is both beside the point
10 and wrong. Even if there were anything to this tenuous causal chain—and there is not—the issue
11 of prejudice would still be distinct. Micron assumes, but offers no case showing, that a business
12 benefit allegedly resulting from litigation misconduct can, by virtue of its use as evidence, bar a
13 party from seeking relief in a subsequent proceeding. That assumption is fundamentally at odds
14 with Aptix and Keystone Drilling, which involved litigation misconduct directly affecting the
15 subsequent action and unmediated by dealings with third parties. In any event, if what Micron
16 means to challenge here is Rambus’s reliance upon the licenses negotiated in 2000, nearly all of
17 those licenses were negotiated and/or executed before the alleged litigation misconduct found by
18 the Delaware Court had ever occurred. (See Wu Confidential Decl. Ex. 1 .) With one exception,
19 the challenged conduct took place in or after 2001. (Micron Spoliation Br., at 33-45.) And
20 although Crisp offered the challenged deposition testimony in November 2000, Rambus had by
21 then negotiated licenses with Toshiba, Hitachi, Samsung, Mitsubishi, NEC, and Elpida, among
22 others. (See Wu Confidential Decl. Ex. 1.)
23 Under the Manufacturers’ theory, a plaintiff found to have engaged in litigation
24 misconduct would be forever barred from seeking relief in the courts, even if there were no actual
25 prejudice to the defendant. That is not the law. The unclean hands defense “requires that any
26 alleged misconduct must pertain to the very subject matter involved and affect the equitable
27 relations between the litigants,” 2006 WL 565893, at *26, and does not turn on whether
28 claimants in equity “have led blameless lives.” Precision Instr. Mfg. v. Auto. Maintenance Mach.
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 Co., 324 U.S. 806, 814 (1945). Because, at a minimum, the litigation misconduct found by the
2 Delaware Court cuts differently in this case, its ruling cannot be binding on this Court.
3 2. The Manufacturers Have Failed to Show that the Issue of Spoliation is
Identical
4
In their Motions, the Manufacturers argue that the Delaware Ruling must be given
5
collateral estoppel effect here notwithstanding the fact that the upcoming trial involves different
6
products. (Micron CE Mot., at 19; Samsung CE Mot., at 13-14.) Of course, the Manufacturers
7
have previously maintained that two of the key products at issue in the Delaware litigation,
8
SDRAM and DDR, are so different from the DDR2+ products at issue here that they warranted
9
separate trials. (E.g., Micron Mot. for Separate Trials, Dkt. No. 2005, at 10, 14; Samsung Mot.
10
for Separate Trials, Dkt. No. 2016, at 6; Nanya’s Mot. to Sever, Dkt. No. 2006, at 12.) And when
11
Rambus proposed streamlining these proceedings by extending any infringement finding in the
12
upcoming trial to SDRAM and DDR, the Manufacturers refused. (See Dec. 29, 2008 Letter Br.;
13
Dkt. No. 3003; id. Exh. C.) The Manufacturers refused despite the clear collateral estoppel effect
14
of such a finding of infringement: Samsung and Nanya’s SDRAM and DDR devices share some
15
of the same features with accused products in the upcoming trial, and Rambus has asserted some
16
of the same patents with respect to those SDRAM and/or DDR devices.
17
While insisting that collateral estoppel would not apply to these virtually indistinguishable
18
infringement and validity issues, the Manufacturers argue that the collateral estoppel must apply
19
to the wholly distinct issue of how spoliation applies to Rambus’s claims against the
20
Manufacturers’ products. On the latter question, the Manufacturers have offered no persuasive
21
response to the spoliation issues identified in Rambus’s initial collateral estoppel brief. (See
22
Rambus’s Br. on Delaware Ct. Ruling, at 10-13.) Their main tack is to argue that the Delaware
23
Court drew no distinctions among accused products in assessing Rambus’s duty to preserve
24
documents vis-a-vis Micron. (E.g., Samsung CE Mot., at 13.) But that merely begs the question
25
of whether the facts relating to accused products that were not before the Delaware Court raise
26
different duty and spoliation issues. The Hynix I spoliation order makes clear that different
27
products might well alter when Rambus incurred a duty to preserve documents as to all of the
28
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 Manufacturers. And the unique circumstances presented by the non-mutual Manufacturers refute
2 the notion that the Delaware Ruling’s duty and spoliation findings may be applied in blunderbuss
3 fashion here.
4 a. The Difference in Products Raise Different Issues as to When
Rambus Incurred a Duty to Preserve Documents
5
In Hynix I, this Court noted that the question of when Rambus reasonably anticipated
6
litigation against DRAM manufacturers is inherently fact-bound. This is because Rambus’s
7
decision to sue rested on many contingent factors, reflecting the company’s need to balance
8
business relationships against protection of its intellectual property. Rambus did not plan to
9
institute an infringement action until, inter alia, “product samples from potentially infringing
10
DRAM manufacturers” were “available in the market,” the competing devises were reverse
11
engineered and claims charts made, a business decision to initiate licensing negotiations was
12
made and approved, and licensing efforts had come to naught. 2006 WL 5658983, at *22. To
13
determine, then, when the prospect for litigation over a particular accused product triggered a
14
preservation duty, this Court considered and made findings about the rollout of, and dealings
15
over, that product. Id.
16
This analysis could profoundly alter the preservation duty with respect to the accused
17
products at issue here that do not overlap with Delaware. For example, JEDEC did not begin
18
discussing DDR3 until 2002, and the Manufacturers did not begin to sell the product until 2006
19
and 2007. Were the Court to give effect to the Delaware Court’s December 1998 duty date across
20
all of the accused products built by each of the Manufacturers here, it would essentially treat
21
Rambus as anticipating litigation, indiscriminately, against any and all DRAM devices
22
manufactured after that date. The Manufacturers have made no such showing. Nor does it matter
23
that the particular factors and conditions bearing on Rambus’s litigation decisions may have
24
evolved over time. What matters is that Rambus’s duty to preserve raises product-specific issues
25
that render the Delaware Ruling too inapposite for collateral estoppel to apply.
26
27
28
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 b. The Circumstances Presented by Rambus’s Infringement
Action Against Hynix, Samsung, and Nanya Each Raise Unique
2 Spoliation and Prejudice Issues that Cannot Be Resolved by the
Delaware Ruling
3
As Rambus has explained, the spoliation and unclean hands defenses asserted by each of
4
the non-mutual Manufacturers raise legal or factual issues that distinguish them from the unclean
5
hands defense upheld by the Delaware Court in Micron’s favor. (See Rambus Br. on Delaware
6
Ct. Ruling, at 11-13.)
7
Hynix: Hynix is unique among the Manufacturers, because it has already tried its
8
spoliation allegations and unclean hands defense to this Court and lost. Hynix cannot undo this
9
Court’s binding decision on the merits simply by pointing to a subsequent, contrary adjudication
10
of the defense, as raised by a different party. As the Ninth Circuit has explained,
11
It would be a curious use of affirmative collateral estoppel to permit one
12 who had lost before the jury on certain facts to overturn that verdict by
pointing out that on different facts, but identical legal principles, the winner
13 before the jury had lost a jury verdict to a stranger on an earlier day and in
a different court.
14
Mozart Co. v. Mercedes-Benz of North America, Inc., 833 F.2d 1342, 1348 (9th Cir. 1987).
15
Hynix’s main rejoinder is that it is asserting defensive collateral estoppel, and that the
16
discretionary factors do not apply. (Hynix Mot. for S. J. on Unclean Hands, for Relief from
17
Order Under FRCP 60(b), for Entry of J. under FRCP 54(b), and for Stay (“Hynix CE Mot.”), at
18
15-17.) But that argument is wrong (see discussion infra), and the law is clear that a party may
19
not circumvent its own loss by invoking another party’s successful litigation of the issue
20
elsewhere. See. 18A Charles A. Wright & Arthur R. Miller, Federal Practice & Procedure
21
4465.2, at 772 (2002) (“[A] party who has lost a judgment should not be able to defeat the claim-
22
preclusion effects of the judgment by relying on inconsistent findings made in subsequent
23
litigation between another party and a common adversary.”).3
24
Samsung: Samsung’s status as a licensee of Rambus makes it differently situated than
25
26 3
The issues are also distinct as to Hynix because Hynix itself engaged in the destruction of
27 documents, including after litigation with Rambus commenced. (See, e.g., Rambus’s Opposition
to Motion In Limine To Exclude Evidence Of Or Reference To Hynix’s Document Retention
28 Program (filed July 30, 2006 in Case No. CV 00-20905 RMW), at 2-6.)
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 Micron for purposes of its spoliation allegations. Whether Rambus reasonably anticipated
2 litigation against Samsung in light of their relationship and their successful negotiations poses a
3 completely different question than whether Rambus anticipated litigation against Micron.
4 Samsung and Rambus successfully negotiated an RDRAM technology agreement in 1994, and
5 further entered into a license agreement for SDRAM and DDR products in 2000. (Rambus’s
6 Proposed Post-Trial Findings of Fact, Oct. 15, 2008, Dkt. No. 1238, at 12, 14 (“Rambus Findings
7 re Samsung”).) As Rambus demonstrated at the September spoliation trial, Rambus did not
8 reasonably anticipate litigation against Samsung until 2005 (id. at 14), years after the destruction
9 of documents at issue in the Delaware litigation. Moreover, any earlier duty to preserve
10 documents was necessarily extinguished in 2000 upon the execution of the non-compatible
11 license agreement, thereby rendering any prior document destruction immaterial. (Id.)
12 Samsung maintains that the District Court did not deem Micron’s RDRAM license as
13 altering the foreseeability of litigation. (Samsung CE Mot., at 14-15.) But even assuming that is
14 correct—and the ruling is silent on the matter—the Delaware Court had no occasion to consider
15 how a license with Micron for non-compatible products might have affected Rambus’s litigation
16 calculus. That issue is squarely presented by Samsung’s 2000 license, and it must be
17 independently resolved regardless of whether Rambus believed the license to be limited to
18 SDRAM and DDR.
19 Second, and in addition to the unique spoliation issues, the question of prejudice as to
20 Samsung is entirely different from the prejudice issue resolved by the Delaware Court. As
21 Rambus has explained, Samsung has waived all the defenses to which the documents destroyed
22 by Rambus could have been prejudicial. “An unclean hands defense further requires proof that
23 the offending conduct materially prejudiced a party’s ability to defend itself.” Hynix I, 2006 WL
24 565893, at *38. The Delaware Court specifically noted that destruction of Rambus’s internal
25 documents could have been prejudicial only as to Micron’s inequitable conduct and JEDEC-based
26 defenses, i.e., fraud, antitrust violations, and unfair competition. (Del. Ruling, at 32 & n.59.)
27 But Samsung has not asserted an inequitable conduct defense, and it has already waived all of its
28 defenses based upon JEDEC. (Stipulation and Order Dismissing Portions of Certain Claims and
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 Defenses with Prejudice, Sept. 16, 2008, Dkt. No. 2210.) This means that the Delaware Court’s
2 prejudice analysis is wholly inapplicable to Samsung: this Court must determine whether the
3 purported spoliation affected any other defense based upon the evidence and argument adduced in
4 the September trial. Samsung pushes against an open door when it argues that it has not waived
5 its unclean hands defense. (Samsung CE Mot., at 16.) The point is not that Samsung has given
6 up that defense; it is that Samsung has given up the only defenses that the Delaware Court
7 deemed prejudiced by the spoliation it found.
8 Finally, as Rambus has explained, Samsung’s own improper destruction of documents
9 undercuts its unclean hands defense and request for equitable relief. (See Rambus Findings re
10 Samsung, at 57-60.) Despite the fact that it hired litigation counsel and contemplated litigation
11 against Rambus in August 2000, Samsung proceeded to destroy relevant documents, including
12 draft license agreements, communications regarding license agreements, and emails of key
13 witnesses. (Id. at 59-60.) Samsung attempts to wash its unclean hands by arguing that its
14 conduct is immaterial, reasoning that “[i]f the plaintiff has unclean hands and seeks equitable
15 relief, the defendant’s own improper behavior serves as no bar to its equitable defenses.”
16 (Samsung CE Mot., at 19 (quoting Precision Instrument, 324 U.S. at 814).) This is precisely
17 backwards. It is Samsung that is seeking affirmative equitable relief, and equity does not permit
18 pots to call kettles black.
19 Nanya: Like Samsung, Nanya’s unclean hands defense presents issues distinct from those
20 tried in the Delaware litigation, particularly with regard to the reasonable anticipation of
21 litigation. Unlike the other, more established Manufacturers, Nanya was not formed until 1995,
22 Nanya USA not until 1997, and Nanya USA began to sell a “small amount” of SDRAM only in
23 1998. (See Wu Decl. Ex. E [Conduct Trial RT 2730:9-12, 2752:16-19 (Hurley)].) As a then-
24 minor player in the DRAM industry, and unlike the other Manufacturers, Nanya was not named
25 in the “nuclear winter” memorandum upon which the Delaware Court relied to conclude that the
26 litigation with Micron was reasonably foreseeable. (See Del. Ruling, at 16-17; see also
27 Declaration of Susan Roeder in Support of Hynix’s Mot. for Summ. J., Jan. 30, 2009 (“Roeder
28 Decl.”), Ex. J.) Nanya’s relative insignificance at that time is further illustrated by the fact that
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 the Delaware Court’s ruling makes no mention of Nanya whatsoever. Nanya attempts to counter
2 these omissions by asserting that its name appeared “in a chart that compared different DRAM
3 companies,” allegedly as potential litigation targets. (Nanya Mot. for Summary Judgment on
4 Unclean Hands Defense,4 at 5.) The speciousness of this argument is demonstrated by Nanya’s
5 near-bottom “score” in those rankings and the fact that it was not mentioned in the section of the
6 memo referencing “targets.” (Cornuelle Decl. Ex. D. (MTX 468) at 468-003, 468-006.) To this
7 document shows anything, then, it demonstrates that Nanya was not a litigation target, and cannot
8 be assumed identical to Micron.
9 B. This Court Should Exercise its Discretion to Reject the Efforts by Samsung,
Nanya, and Hynix to Invoke Collateral Estoppel Based Upon Inconsistent
10 Rulings, Efficiency, and Fairness Concerns
11 When the Court weighs and exercises its discretionary power to apply issue preclusion,
12 “no one set of facts, no one collection of words or phrases, will provide an automatic formula for
13 proper rulings on estoppel pleas. In the end, decision will necessarily rest on the trial courts’
14 sense of justice and equity.” Blonder-Tongue, 402 U.S. at 333-34. Accordingly, a trial court may
15 consider any factor bearing on fairness in a particular case, and may refuse offensive collateral
16 estoppel “either for the reasons discussed [by the Supreme Court] or for other reasons” if “the
17 application of offensive estoppel would be unfair to a defendant.” Parklane Hosiery, 439 U.S. at
18 331 (emphasis added). “The circumstances of each case must provide the touchstone for
19 decision.” Western Oil and Gas Ass’n v. E.P.A., 633 F.2d 803, 809-10 (9th Cir. 1980).
20 This case is marked by the inconsistent rulings on spoliation and unclean hands. The
21 Manufacturers’ arguments for denying the Court the discretion to consider the contradictions
22 between its Hynix I spoliation order and the Delaware Ruling are meritless: the discretionary
23 factors apply here regardless of whether the application of collateral estoppel is offensive or
24 defensive, and the Court’s previous application of discretionary factors in an analogous context is
25 firmly grounded in Parklane Hosiery and foundational preclusion principles.
26 4
Nanya has divided its arguments between its motion for summary judgment and its motion for
27 collateral estoppel. Because the summary judgment motion rests entirely upon obtaining
preclusive effect for the Delaware Ruling, the remainder of this brief is addressed only to that
28 motion. Rambus, of course, opposes summary judgment in addition to collateral estoppel.
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 1. The Delaware Court’s Findings Are Fundamentally Inconsistent with
this Court’s Spoliation Determinations in Hynix I
2
As this Court has recognized, the fact that the asserted ruling is inconsistent with other
3
rulings favorable to Rambus is a factor weighing against issue preclusion. (CE Order re:
4
Infineon, at 7.) Parklane Hosiery specifically notes that applying the doctrine may be “unfair to a
5
defendant if the judgment relied upon as a basis for the estoppel is itself inconsistent with one or
6
more previous judgments in favor of the defendant.” 439 U.S. at 330. That is precisely the
7
situation here. The ruling the Manufacturers seek to assert is flatly inconsistent with this Court’s
8
prior order rejecting Hynix’s spoliation contentions and its unclean hands defense.
9
The Delaware Court’s ruling is inconsistent with this Court’s Hynix I spoliation Order in
10
three critical respects. First, the Delaware Court found that “a duty to preserve potentially
11
relevant evidence arose in December 1998,” when Rambus’s then-Vice President of Intellectual
12
Property, Joel Karp, circulated a memo outlining a strategy for responding to a hypothetical
13
“nuclear winter” scenario in which Intel turned to industry standard DRAMs. (Del. Ruling, at
14
32.) According to the Delaware ruling, litigation was “reasonably foreseeable [by Rambus] no
15
later than [this time]” because Karp “articulated a time frame and a motive for implementation of
16
the Rambus litigation strategy.” (Id. at 31.) This Court, in contrast, found that Rambus did not
17
actively contemplate litigation until late 1999, when the conditions that made it necessary and
18
foreseeable actually obtained. See 2006 WL 565893, at *22-*23. Rambus did not intend to
19
pursue litigation unless and until a number of conditions fell into place, including, critically, a
20
business decision by the Rambus Board to authorize non-compatible license negotiations, and the
21
refusal of the license target to negotiate. Id. Rambus did not actually anticipate litigation until
22
late 1999, when Rambus obtained the first of the patents in suit, made a business decision to
23
initiate non-compatible license negotiations with Hitachi in light of the then-existing business
24
climate, and the negotiation process broke down. Id. at *23. This Court found not only that
25
“Rambus’s adoption and implementation of its content-neutral Document Retention Policy in
26
mid-1998 was a permissible business decision,” but also that its continued application during the
27
“shred days” was not improper. Id. at *24 (emphasis added).
28
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 Second, the Delaware Court concluded the destruction of documents prejudiced Micron.
2 The Delaware Court found that the documents destroyed under Rambus’s Document Retention
3 Policy included documents that “were discoverable and the type of document relevant to the
4 instant litigation,” specifically, to Micron’s JEDEC-related patent misuse, antitrust, and unfair
5 competition claims and inequitable conduct defenses. (Del. Ruling, at 32.) These aspects of the
6 Delaware Ruling contrasts sharply with the approach taken by this Court in Hynix I. This Court
7 concluded that “Rambus has produced a large volume of these documents to the Manufacturers,”
8 and that to the extent relevant documents were destroyed, “adequate similar and material
9 documents or classes of documents were not destroyed.” 2006 WL 565893, at *27. The Court
10 found that “essentially the material JEDEC materials are available”; that Rambus had produced a
11 “fairly complete record” of contract-related documents; and that Rambus produced substantial
12 materials relating to the patents in suit, including documents bearing on conception and reduction
13 to practice of the parallel inventions. Id. at *17-*18; accord Wu Decl. Ex. K [Conduct Trial Tr.
14 5912:15-17] (Manufacturers’ Counsel: “In this case, there’s a pretty good written record of what
15 was going on really in the ‘90s in terms of how Rambus got its monopoly power.”).
16 Third, the Delaware Court approached the spoliation issue in a fundamentally different
17 way from this Court’s reasoning in Hynix I. While acknowledging that the controlling legal
18 standard required it to impose “the least harsh sanction,” the Delaware Court determined that the
19 only appropriate sanction was to declare outright that the Rambus patents-in-suit were not
20 enforceable against Micron. (Del. Ruling, at 33 (emphasis added).) When this Court considered
21 the appropriate sanction in light of the facts in Hynix I, it “d[id] not find dismissal to be an
22 appropriate sanction because it does not find the application of the unclean hands doctrine to be
23 warranted.” 2006 WL 565893, at *28.
24 The Manufacturers attempt to invoke Infineon and Samsung to mitigate the inconsistency
25 between Micron and Hynix I. But the “findings” in Infineon and Samsung relied upon by the
26 Manufacturers are not properly considered by this Court—or any other court—in analyzing
27 collateral estoppel. They were either (in the case of Infineon) never reduced to a formal opinion
28 or (in the case of Samsung) thrown out by the Court of Appeals. As a treatise co-authored by
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 Samsung’s lead counsel states, it is axiomatic that “issues … that cannot be appealed cannot be
2 accorded preclusive effect.” P. Mennell, et al., Patent Case Management Judicial Guide 5-69
3 (forthcoming 2009), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1328659.
4 Plainly, Rambus could not appeal the oral remarks made by the Infineon court prior to its
5 settlement of the case. And Samsung held that the district court lacked subject matter jurisdiction
6 to enter its order at all. Samsung Electronics Co., Ltd. v. Rambus, Inc., 523 F.3d 1374, 1378,
7 1381 (Fed. Cir. 2008).5 Indeed, the Federal Circuit went on to explain that the district court’s
8 findings constituted an “impermissible advisory opinion.” Id. at 1380 (emphasis added).
9 Moreover, because the district court’s order in Samsung “denied Samsung the only relief sought,”
10 523 F.3d at 1377, Rambus was the winning party in that order, and it is well-established in the
11 Ninth Circuit that “[a] determination adverse to the winning party does not have preclusive
12 effect,” Fireman’s Fund Ins. Co. v. Int’l Market Place, 773 F.2d 1068, 1069 (9th Cir. 1985).
13 2. The Discretionary Factors Apply to Hynix, Samsung, and Nanya’s
Assertion of Non-Mutual Collateral Estoppel
14
The Manufacturers ultimately cannot offer any good reason why this Court should
15
abandon its own established spoliation judgment in order to give collateral estoppel to the
16
inconsistent ruling of another court of no greater authority. Instead, they argue that the Court
17
must give preclusive effect to the Delaware Court’s decision because this Court has no choice in
18
the matter. This argument, as advanced by Hynix (Hynix CE Mot., at 15-17), Samsung (Samsung
19
CE Mot., at 21-22), and Nanya (Nanya CE Mot., at 3-5), rests upon two erroneous premises:
20
first, that a court has no discretion to deny defensive non-mutual collateral estoppel; and, second,
21
that the form of estoppel they assert is defensive, not offensive. These premises are refuted by
22
case law, the leading treatises, and the policy rationales upon which Parklane Hosiery rests.
23
a. Courts Have Discretion to Consider the Fairness of Applying
24 Non-Mutual Collateral Estoppel Even When It Is Defensive
25 Both Wright & Miller in Federal Procedure and Practice and the Restatement make clear
26 5
Contrary to Samsung’s assertion, Rambus did challenge the correctness of those factual
27 findings. See, e.g., 2006 WL 3884284 at *49-52 (Rambus’s Opening Brief on appeal). Because
the Virginia court’s ruling was not merely wrong but impermissibly beyond the court’s subject
28 matter jurisdiction, the Federal Circuit had no occasion to address the factual findings.
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 that the discretionary factors set forth in Parklane Hosiery apply to both offensive and defensive
2 non-mutual collateral estoppel; it is the non-mutuality, not the offensive nature, of the collateral
3 estoppel that triggers judicial discretion. 18A Wright & Miller § 4465, at 730 (2002) (“[T]here is
4 discretion to deny nonmutual preclusion when preclusion would not be fair or in order to achieve
5 justice and equity.”); id. § 4465.2 at 763-64 (“Nonmutual preclusion may also be measured
6 against special factors that weaken trust in the first result…. The existence of inconsistent prior
7 judgments is perhaps the single most easily identified factor that suggests strongly that neither
8 should be given preclusive effect.”);6 Restatement (Second) of Judgments § 29. That courts have
9 discretion with respect to defensive non-mutual collateral estoppel is clear from Blonder-Tongue.
10 There, the Supreme Court explained, with respect to defensive non-mutual collateral estoppel, that
11 “no one set of facts, no one collection of words or phrases, will provide an automatic formula for
12 proper rulings on estoppel pleas. In the end, the decision will necessarily rest of the trial courts’
13 sense of justice and equity.” 402 U.S. at 333-34.
14 Parklane Hosiery reaffirmed the discretionary power of courts to deny any unfair
15 assertion of non-mutual collateral estoppel. As the Court made clear in that decision, “there is no
16 intrinsic difference between ‘offensive’ as distinct from ‘defensive’ issue preclusion, although a
17 stronger showing that the opportunity to litigate was adequate may be required in the former
18 situation.” 439 U.S. at 331 n.16 (quoting Restatement (Second) of Judgments § 88 (Tent. Draft
19 No. 2, Apr. 15 1975)). Although Parklane Hosiery generally spoke about offensive collateral
20 estoppel, it is clear that many of the considerations the Court advanced must apply in both
21 circumstances: for example, whether the defendant in the first action had incentive to vigorously
22 defend the suit, whether there are inconsistent prior judgments, whether there are procedural
23 opportunities that were not available to the defendant in the first action, or a lack of access to
24 6
Nanya has revised Wright & Miller in an attempt to get out from under the treatise’s weight.
25 Taking a quotation in which the treatise criticizes courts for applying discretion to cases of mutual
collateral estoppel, Nanya deletes the quotation’s context and inserts the word “offensive.”
26 (Nanya CE Mot., at 4 n.1.) Nanya’s insertion of “offensive” has no basis in the text.
Compounding its adulteration, Nanya then omits the following sentence that confirms the
27 illegitimacy of its edit: “The need for clear and reliable preclusion rules must defeat any
significant element of discretion outside the distinctively risky use of nonmutual preclusion.”
28 18A Wright & Miller § 4416 (emphasis added).
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 witnesses. Id. at 330-31 & n.15. The Court indicated that these factors apply to both offensive
2 and defensive collateral estoppel by noting that “[t]he problem of unfairness is especially acute in
3 cases of offensive estoppel.” Id. at 331 n.15. In other words, fairness factors into both situations,
4 though perhaps more strongly where the estoppel is offensive.
5 Several cases clearly support this Court’s right to consider the fairness of what the
6 Manufacturers demand. In In re Ameriserve Food Distrib., Inc., 267 B.R. 668 (D. Del. 2001), the
7 court considered a summary judgment motion “premised upon defensive collateral estoppel.” Id.
8 at 671. Based on fairness considerations, it exercised its discretion to deny the motion. Id. at
9 671-72. In response to the defendant’s “suggest[ion] that only offensive collateral estoppel
10 permits a fairness assessment,” the Court cited Blonder-Tongue and Parklane, concluding that
11 “[t]o apply [a fairness assessment] to some cases [i.e., offensive cases] and not to others [i.e.,
12 defensive cases] is itself unfair, and certainly does not comport with the notion that there is ‘no
13 intrinsic difference’ between offensive and defensive issue preclusion.” Id. at 672. Courts
14 reached the same result in Southwestern Bell Telephone, L.P. v. Arthur Collins, Inc., 2005 WL
15 6225305 at *3-*4 (N.D. Tex. 2005) (“[A]pplication of offensive or defensive collateral estoppel
16 is fact specific inquiry driven by considerations of fairness.”), and again in Brewer v. Dupree,
17 2003 WL 23507795 at *4-5 (M.D. Ala. 2003) (“While defensive use of nonmutual collateral
18 esoppel is an accepted practice … it still must conform to the requirements of fairness.” (citation
19 omitted)). In addition to these cases, the Federal Circuit has considered the existence of a prior
20 inconsistent decision when applying Blonder-Tongue in a case of defensive collateral estoppel.
21 Stevenson v. Sears, Roebuck & Co., 713 F.2d 705, 712 (Fed. Cir. 1983) (“Because of the
22 seemingly inconsistent determination on ‘validity’ by the CCPA, the district court was required to
23 apply the full and fair criteria very carefully.”).
24 The cases the Manufacturers claim refute this rule are inapposite. Delgado v. United
25 States, 536 F. Supp. 2d 1328 (Ct. Int’l Trade 2007), addressed whether it was proper for a
26 magistrate judge to bypass the mandatory factors in a case of offensive nonmutual collateral
27 estoppel and reach a decision based solely on the discretionary factors. Id. at 1338-39 (“Although
28 a trial judge does indeed have ‘broad discretion’ to decide whether or not offensive collateral
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 estoppel may be applied, that discretion does not include the option to bypass the fundamental
2 determination as to whether collateral estoppel may be applied in the first place.”). Liberty Mut.
3 Ins. Co. v. FAG Bearings Corp., 335 F.3d 752 (8th Cir. 2003), addressed the applicability of the
4 discretionary factors to mutual collateral estoppel. Id. at 757-58 (“Because mutuality is not
5 lacking in this case, the equitable considerations requiring deference to the district court’s
6 evaluation of the overall fairness to the litigants in a nonmutual case are not present.”). Indeed,
7 the court’s analysis strongly suggests that the discretionary fairness analysis should take place in
8 all non-mutual cases. See id.; id. at 758-59 (“However, the ‘full and fair opportunity to litigate’
9 factor was developed to analyze cases where the parties in the first action are not the same as
10 those in the second.”). Finally, Jean Alexander Cosmetics, Inc. v. L’Oreal USA, Inc., 458 F.3d
11 244 (3d Cir. 2006), addresses the proper standard of review for an appeals court, not the power of
12 the district court. Id. at 247-48. With respect to the role of the district court, the most the
13 decision can be said to hold is that “[t]he predominant question in preclusion cases involving
14 defensive or mutual collateral estoppel is whether the basic requirements for issue preclusion are
15 satisfied.” Id. at 248 (emphasis added). Of course, this is perfectly consistent with fairness
16 considerations playing a role, simply a less dramatic role, as Parklane itself indicated.
17 b. Regardless, the Manufacturers Assert a Species of Offensive
Collateral Estoppel Because Rambus was the Defendant in
18 Delaware
19 The question whether the discretionary factors apply to defensive collateral estoppel is
20 ultimately moot, however, because—as this Court has previously recognized—what the
21 Manufacturers assert in this case is a species of offensive, not defensive, collateral estoppel. In
22 Hynix I, this Court rightly recognized that Hynix, like the nonmutual Manufacturers here, was
23 asserting a type of offensive collateral estoppel. (CE Order re: Infineon, at 6 n.1.) Even Samsung
24 concedes that it is trying to prevent Rambus “from re-litigating the same defense to its patent
25 claims that Rambus has previously lost.” (Samsung CE Mot., at 21 (emphasis added).) This
26 reflects the fluid nature of the parties’ identities in this case, where plaintiffs become defendants,
27 and all parties are asserting affirmative cross- and counter-claims against each other. Based on
28 this Court’s own prior judgment, then, the discretionary factors necessarily apply to the
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 Manufacturers’ assertion of collateral estoppel.
2 The Court’s ruling in Hynix I reflects the incompleteness of the typical definitions of
3 “offensive” and “defensive” collateral estoppel, which assume that a plaintiff in the first action
4 will be a plaintiff in the second, and a defendant in the first will be a defendant in the second.
5 See, e.g., Parklane, 439 U.S. at 331 n.15 (“[I]n cases of offensive estoppel … the defendant
6 against whom estoppel is asserted typically will not have chosen the forum in the first
7 action….”); id at 329-30 (“[D]efensive estoppel gives a plaintiff a strong incentive to join all
8 potential defendants in the first action if possible” and “preclude[s] a plaintiff from relitigating
9 issues by merely ‘switching adversaries.’”). Where the plaintiff from the first action becomes a
10 defendant in the second, or vice-versa, this simplistic approach breaks down.
11 In fact, “offensive” collateral estoppel encompasses not only the “fullest possible sense”
12 of a plaintiff asserting estoppel against a defendant that was also the defendant in the prior action,
13 but also a form in which a defendant asserts estoppel against a party that was a defendant in the
14 first action. See Currie, “Mutuality of Collateral Estoppel: Limits of the Bernhard Doctrine,” 9
15 Stan. L. Rev. 281, 290-92 (1957). This observation formed the basis of Professor Curie’s
16 analysis of the “offensive-defensive distinction,” Zdanok v. Glidden Co., 327 F.2d 944, 955-56
17 (2d Cir. 1963), and Professor Currie’s seminal articles on this subject were relied upon by the
18 Supreme Court in both Blonder-Tongue and Parklane. See Parklane, 439 U.S. at 329 n.11, 330
19 n.14; Blonder-Tongue, 402 U.S. at 324 & n.11, 330 n.19. As Currie explained, “[t]he offensive-
20 defensive distinction … is ambiguous” because the determinative factor could be either the fact
21 “that the defendant invokes the plea in one case and the plaintiff in the other” or the fact that “the
22 plea is invoked in the one case against the aggressor in the prior action, and in the other against
23 the former defender.” 9 Stan. L. Rev. at 292.
24 As Professor Currie explained, and as the Supreme Court’s analysis in Blonder-Tongue
25 and Parklane adopted, “there is a significant difference between the situation of a party who has
26 lost a case after choosing the time and place for action, and that of a party who has lost a case in
27 which he had no control over such factors.” Id. at 303. Indeed, Samsung itself clearly agrees
28 with this analysis. Samsung speculates that Micron’s victory in Delaware may “enable it to
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 achieve competitive advantage over others due to as capricious a factor as their … ability to have
2 their case heard in one venue (or by one jurist) rather than another.” (Samsung CE Mot., at 2.) It
3 adds that “this is especially true” when a party “d[oes] not sue ... first and is not in a jurisdiction
4 of its choosing.” (Id.)
5 Currie initially advocated a blanket prohibition under which neither a plaintiff nor a
6 defendant would “be allowed to invoke the former judgment against one who was a defendant in
7 the prior action” because “the opportunity of a defendant to litigate an issue is not necessarily
8 complete and unfettered; it may be impaired by the plaintiff’s strategic use of the initiative.” 9
9 Stan. L. Rev. at 303-04.7 Currie later decided that case-by-case fairness analysis, rather than the
10 blanket prohibition, was the better approach for such scenarios. See Currie, “Civil Procedure:
11 The Tempest Brews,” 53 Cal. L. Rev. 25 (1965). This same concern, and the same discretionary
12 solution, is set forth in both Parklane and Blonder-Tongue. See Parklane, 439 U.S. at 331 n.15
13 (requiring a fairness examination because “the defendant in the first action [might be] forced to
14 defend in an inconvenient forum and therefore unable to engage in full discovery or call
15 witnesses”); Blonder-Tongue, 402 U.S. at 333 (urging courts to consider the fairness of an
16 assertion of estoppel where “without fault of his own the patentee was deprived of crucial
17 evidence or witnesses in the first litigation”). See also 18A Wright & Miller § 4465.1 at 741
18 (“One of the most general concerns attending the abandonment of mutuality has been that it may
19 be unfair to bind a party who did not take the initiative in the first action.”); Provau v. State Farm
20 Mut. Auto. Ins. Co., 772 F.2d 817, 822 (11th Cir. 1985) (“Special difficulties arise when
21 precluding a party who did not have the initiative in the prior action ….”). Indeed, one specific
22 concern of Currie, Parklane, and Blonder-Tongue—that the defendant in the first action might be
23 sued in an inconvenient forum where it lacked access to witnesses—arose in the Delaware case:
24 Rambus was forced to litigate in a place of Micron’s choosing, and could not have compelled the
25
7
26 For that reason, Samsung is simply wrong when it states that Blonder-Tongue and State of Idaho
Potato Comm’n v. GT&T Terminal Packaging, Inc., 425 F.3d 708 (9th Cir. 2005), “construed
27 similar contexts as defensive nonmutual collateral estoppel.” (Samsung CE Mot., at 21-22.) Both
of those decisions involved an assertion of collateral estoppel against a party who had been a
28 plaintiff, not a defendant, in the prior action.
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 appearance of witnesses such as Richard Crisp, one of the live witnesses it put on in its spoliation
2 defense against Hynix in this Court. (See Wu Decl. ¶¶ 20-21.).
3 Because Rambus was a defendant in the Delaware action, the issue preclusion asserted by
4 Hynix, Samsung, and Micron is a type of offensive collateral estoppel. Accordingly, this Court
5 should, consistent with its decision in Hynix I, apply a discretionary fairness analysis, indeed the
6 heightened fairness analysis applicable in offensive cases.
7 c. Hynix’s Implausible “Last in Time” Argument is Expressly
Refuted by Controlling Ninth Circuit Law
8
In a bold maneuver, Hynix suggests that the Delaware Court’s decision as to Micron
9
should supplant this Court’s spoliation decision as to Hynix itself. (Hynix CE Mot, at 17-18.) In
10
other words, Hynix suggests that a different court’s decision as to a different dispute between
11
Rambus and a different party, concerning different infringing devices, should trump this Court’s
12
resolution of Hynix’s claims against Rambus. Hynix attempts to justify this suggestion by citing
13
the “last in time” rule under which res judicata—not collateral estoppel—will be granted to the
14
later of two inconsistent decisions. (Hynix CE Mot., at 17.) Nanya makes the same argument.
15
(Nanya CE Mot., at 8-9.) The Manufacturers attempt to support their theory with the Ninth
16
Circuit’s decision in American Fabrics, Inc. v. L&L Textiles, Inc., 754 F.2d 1524, 1529-30 (9th
17
Cir. 1985) (cited at Hynix CE Mot., at 17-18). What they neglect to tell the Court is that the
18
Ninth Circuit, limiting Americana, expressly rejected the application of the “last in time” rule to
19
cases of non-mutual collateral estoppel. See Robi v. Five Platters, Inc., 838 F.2d 318, 328 (9th
20
Cir. 1988). Particularly damning for Hynix, the Court added that “[t]he unfairness” present when
21
an inconsistent judgment is given preclusive effect “is magnified enormously when, as in the
22
present case, the judgment which [ostensibly] generates issue preclusion … is itself inconsistent
23
with a judgment … obtained against the very [party] … on whose behalf issue preclusion is
24
asserted.” Id. at 330. See also Mozart, 833 F.2d at 1348.
25
3. Collateral Estoppel Also Is Properly Denied Because It Will Not Result
26 In Judicial Economy
27 The primary reason the Supreme Court permits offensive non-mutual collateral estoppel is
28 to save courts and parties the burden of relitigating previously determined issues. See Parklane
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 Hosiery, 439 U.S. at 326, 328-30. That rationale does not apply here with respect to the
2 Delaware Ruling. As to Hynix and Samsung, this Court has already tried the defense, and has
3 issued its order in Hynix I. The application of collateral estoppel would therefore produce no
4 efficiencies as to Hynix or Samsung. The trial of Nanya’s unclean hands defense will likely draw
5 on the prior spoliation records, except as to the Nanya specific facts. The absence of economy is
6 yet another reason for this Court to exercise is discretion to refuse to apply collateral estoppel to
7 the Delaware Court ruling. See S.E.C. v. Monarch Funding Corp., 192 F.3d 295, 306-07, 310
8 (2d Cir. 1999).
9 C. Nanya’s Particularized Requests for Issue Preclusion Are Equally
Impermissible and Unfair
10
Rather than requesting that this Court address the Delaware Ruling in a holistic fashion,
11
Nanya has chopped the decision into no fewer than twenty-seven issues on which to seek
12
collateral estoppel. But the statements Nanya has carved out are either, on the one hand, mere
13
microcosms of the general conclusions addressed above or, on the other hand, such narrow
14
factual findings that they cannot be said to have been “necessary” to the Delaware Court’s
15
judgment. For that reason, the Court should deny all of Nanya’s requests.
16
Most of Nanya’s asserted issues are so narrow that it cannot be said that “the judgment is
17
… dependent upon the determinations.” (Nanya CE Mot., at 7 (quoting Restatement (Second) of
18
Judgments § 27).) For example, the Delaware Ruling did not “depend” upon Issue 22: that “[o]n
19
July 17, 2000, Steinberg sent an email to Rambus executives reminding them to comply with the
20
document retention policy vis-à-vis contracts.” (Nanya CE Mot., at 19 (quoting Del. Ruling, at
21
23 n.57.)) That finding can hardly be deemed the keystone without which the Delaware Court’s
22
ruling would collapse. Indeed, that court’s placement of the finding in a footnote (along with
23
many of Nanya’s other 26 issues) is itself telling. This category of “findings” that are too narrow
24
to be called “necessary” includes Issues 1-11, 15, and 17-23. (Nanya CE Mot., at 10-16, 17-19).
25
An overlapping set of issues, Issues 1-11 (Nanya CE Mot., at 10-16), are plainly irrelevant dicta
26
because they deal with purportedly litigation-related conduct that took place prior to the
27
28
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 December 1998 time frame in which the Delaware Court assumed litigation became foreseeable.
2 (Del. Ruling, at 31.)
3 The remaining issues asserted by Nanya are simply short statements of the ultimate legal
4 conclusions previously discussed in this brief. Like the general propositions for which they stand,
5 they suffer from both a lack of identicality with the issues in this case and an inconsistency with
6 this Court’s prior decision in Hynix I. Into this category fall Issues 12, 14, 16, and 24-27. (Nanya
7 CE Mot., at 16, 17, 19-21.) For the reasons set forth above as to the general request for collateral
8 estoppel, the Court must deny these more narrowly drawn, but ultimately comparable, requests.
9 D. The Delaware Court’s Ruling is Unpersuasive
10 Hynix specifically asks this Court to revisit its Hynix I spoliation ruling in light of the
11 Delaware Ruling. (Hynix CE Mot., at 19-22.) That decision, Hynix reasons, “provides powerful
12 reasons for the Court to change its mind and conclude that Rambus engaged in spoliation.” (Id. at
13 19-20.) Samsung also invokes the Ruling’s “persuasive authority,” urging the Court to give it
14 “decisive weight” in ruling on its unclean hands defense even if the Court refuses collateral
15 estoppel. (Samsung CE Mot., at 25.) But the Delaware Ruling suffers from both legal and
16 factual defects affecting the Court’s spoliation and prejudice determinations, as well as the harsh
17 sanction it ultimately imposed. The Court should not substitute the Delaware Court’s analysis for
18 its own reasoned consideration in Hynix I.
19 1. The Delaware Court’s Determination that Rambus Was Required to
Preserve Documents in December 1998 Is Erroneous
20
In Hynix I, after a full trial on the merits, this Court concluded that Rambus had no duty to
21
preserve potentially relevant evidence as to any DRAM manufacturer until late 1999. This Court
22
recognized that Rambus had engaged in some advanced planning for litigation contingencies
23
since early 1998, but found that “Rambus did not actively contemplate litigation or believe
24
litigation against any particular DRAM manufacturer to be necessary or wise before its
25
negotiation with Hitachi failed, namely in late 1999.” 2006 WL 565893, at *24.
26
For its part, the Delaware Court likewise found that Rambus’s adoption of a document
27
retention policy in July of 1998 was proper. The Delaware Court also took no issue with the
28
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 initial implementation of Rambus’s document retention program (including degaussing of
2 computer back up tapes, and conducting the September 1998 “shred day”). Rather, the Delaware
3 Court asserted that Rambus spoliated evidence in bad faith by continuing to implement its general
4 document retention policy between December 1998, when a duty to preserve potentially relevant
5 evidence purportedly arose, and December 1999, when Rambus implemented a litigation hold.
6 (Del. Ruling, at 31-32, ¶ 55; see id. at 22, ¶ 33.) This was error.
7 In reaching a conclusion as to when Rambus’s obligation to preserve documents arose that
8 differs from this Court’s ruling in Hynix I, the Delaware Court appears simply to have applied a
9 different (and erroneous) standard. The Delaware Court recognized that a duty to preserve did
10 not arise simply because Rambus was prepared to be an aggressive competitor in a very
11 competitive industry, even if that meant “one could safely predict that litigation was inevitable.”
12 (Del. Ruling, at 31.) Rather, the Delaware Court concluded that “litigation was reasonably
13 foreseeable” (and so a duty to preserve arose) in December 1998 because “Karp had articulated a
14 time frame and a motive for implementation of the Rambus litigation strategy.” (Id. at 31.)
15 However, the document upon which the Delaware Court relied as giving rise to the
16 obligation to preserve—Karp’s December 1998 “nuclear winter” memorandum—itself refutes the
17 Delaware Court’s conclusion that Rambus anticipated litigation at that time. The “nuclear
18 winter” memorandum states that it describes a “very unlikely scenario, even for something that’s
19 purely hypothetical.” (Id. at 16-17; Roeder Decl. Ex. J at HTX004.2.) And in discussing the
20 prospect of specific litigation, Karp first and foremost describes the timeframe as “hopefully
21 never.” (Roeder Decl. Ex. J at HTX004.005.)
22 The Delaware Court also described the “nuclear winter” memorandum as providing a
23 “motive” for litigation, namely, “strategies to enable Rambus to survive the termination of its
24 relationship with Intel.” (Del. Ruling, at 31.) This characterization of “motive” is at odds with
25 the language quoted above (e.g., “very unlikely,” “purely hypothetical,” “hopefully never”).
26 More fundamentally, it is inconsistent with the undisputed record evidence demonstrating the
27 strength of both Intel’s and the DRAM industry’s commitment to RDRAM at that time,
28 including: (1) Intel’s October 1998 announcement “that it would invest $500 million in Micron
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 in support of Micron’s commitment to producing Direct RDRAM” (id. at 15); and (2) Samsung’s
2 statement that it was making a “huge commitment” to devote nineteen percent of its capacity to
3 RDRAM production by the fourth quarter of 1999, that it had an “aggressive direct rdram
4 roadmap” which “contemplated future development of ‘much higher performance’ RDRAMs,”
5 and that it was making a substantial increase in resources devoted to RDRAM “in anticipation of
6 increased market demand” (id. at 14-15 & nn.34-35).
7 Finally, the Delaware Court’s conclusion regarding Rambus’s purported “anticipation” of
8 litigation in December 1998 is inconsistent with documents much later in 1999 that described
9 Karp’s nascent licensing strategy as still requiring the approval of Rambus’s executive team and
10 Board of Directors (id. at 19; Wu Decl. Ex. F), and that suggest that no “consensus” was even
11 reached among Rambus management regarding the possibility of litigation involving a DRAM
12 company until the very end of September 1999 (Del. Ruling, at 21), which conclusion remained,
13 even at that time, subject to Board consideration and approval (Del. Ruling, at 21-22).
14 In sum, the record evidence not only fails to support the Delaware Court’s conclusion; it
15 actively refutes it. Moreover, contrary to the Delaware Court’s conclusion, even detailed
16 planning for a mere possibility of litigation does not constitute anticipation of litigation. Cf.
17 SmithKline v. Apotex Corp., 232 F.R.D. 467, 484 (E.D. Pa. 2005) (drug patent holder could not
18 “reasonably anticipate litigation” for work product purposes against future generic competitors
19 prior to their entry into market in May 1998, despite fact “that [holder] hired investigators to
20 explore litigation options in 1994, that [holder] retained trial counsel, that [holder’s] counsel
21 prepared draft complaints as early as 1996, or that [holder] secured outside consultants to serve as
22 expert witness”). Consequently, a duty to preserve documents did not arise in December 1998.8
23 8
Even if the Delaware Court had correctly concluded that the duty to preserve actually arose in
December 1998 (rather than in late 1999), the “failure” of Rambus—just like this Court—to
24 recognize this purported “fact” simply does not constitute the type of “bad faith” that warrants
forfeiture of Rambus’s right to enforce the patents-in-suit against the accused products. This is
25 especially true given this Court’s findings in Hynix I that: (1) “[t]he evidence here does not
support the conclusion that Rambus intentionally designed its Document Retention Policy to get
26 rid of particular damaging documents,” 2006 WL 565893, at *25; (2) “[t]he evidence also does
not demonstrate that Rambus targeted any specific document or category of relevant documents
27 with the intent to prevent production in a lawsuit such as the one initiated by Hynix,” id. at *28;
and (3) with respect to Rambus’s April 1999 request to outside counsel to conform their files for
28 issued patents to the PTO file wrapper, “there is no indication that Rambus had particular
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 2. The Delaware Court’s Prejudice Analysis is Erroneous
2 The Delaware Court acknowledged that Rambus’s alleged destruction of documents after
3 December 1998 (and prior to the December 1999 litigation hold) could have no effect on
4 Micron’s defenses of anticipation, obviousness, and inadequate written description. (Del. Ruling,
5 at 32-33 & n.59.) The Court went on, however, to find prejudice as to Micron’s defenses of
6 “patent misuse and violation of the antitrust and unfair competition laws (based in part on
7 Rambus’s conduct at JEDEC), as well as inequitable conduct.”9 (Id.)
8 With respect to the JEDEC-related defenses, the Delaware Court failed to offer any
9 explanation as to what types of Rambus documents containing what types of information could be
10 material to the presentation of these defenses under the circumstances of this case. This is error,
11 as the very authorities relied upon by the Delaware Court make clear, because material prejudice
12 cannot be found absent a plausible and concrete suggestion as to how the allegedly spoliated
13 evidence potentially could have aided Micron’s defenses. See Schmid v. Milwaukee Elec. Tool
14 Corp., 13 F.3d 76, 80 (3d Cir. 1994) (rejecting claim of prejudice where party “speculates that
15 [the precluded] examination of the [instrumentality of injury] might have provided some evidence
16 helpful to it on the causation issue, [but] has not come forward with plausible, concrete
17 suggestions as to what that evidence might have been”); Gates Rubber Co. v. Bando Chem.
18 Indus., Ltd., 167 F.R.D. 90, 104 (D. Colo. 1996) (similar).
19 Even beyond this failure of explanation, the Delaware Court’s prejudice analysis is deeply
20 flawed. The Manufacturers have not demonstrated, and cannot show, that the purportedly
21 destroyed documents prejudiced the JEDEC defenses tried and lost by Micron, Hynix, and
22 Nanya, and voluntarily dismissed by Samsung. Among other things, the conduct trial jury
23 specifically found that Rambus had no duty to disclose its intellectual property plans and
24
concerns regarding the contents of those files[, but rather] just wanted Attorney Johnson’s
25 recommendation carried out,” id. at *26.
9
26 Samsung—unlike its co-defendants—elected not to pursue defenses based on patent misuse,
violation of the antitrust and unfair competition laws, or inequitable conduct. Rather, Samsung
27 has limited its defenses to invalidity, obviousness and inadequate written description (as well as
unclean hands). The Delaware Court’s prejudice conclusions therefore support the denial of
28 Samsung’s pending unclean hands defense.
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 inventions, the internal documents destroyed by Rambus could not have materially aided the
2 Manufacturers’ JEDEC defenses. Nor is there any basis to conclude that the Manufacturers’
3 remaining defenses were prejudiced by the destroyed evidence, for the record shows that any
4 destroyed documents relating to inequitable conduct were either cumulative or privileged.
5 a. There is No Support for the Delaware Court’s Conclusion that
the Spoliated Documents Had a Prejudicial Effect on the
6 Manufacturers’ JEDEC-Related Defenses in this Litigation
7 The record evidence refutes the Delaware Court’s determination that Rambus’s alleged
8 spoliation prejudiced the Manufacturers’ fraud, antitrust, and unfair competition defenses. In this
9 case, a jury has already found that Rambus had no duty to disclose to JEDEC its intellectual
10 property plans and intentions—a determination binding on the Court, but which garnered nary a
11 mention in the Delaware Court’s ruling. This finding mirrored a conclusion reached by Judge
12 Jordan in an earlier discovery ruling in the Delaware action (likewise unacknowledged in the
13 Delaware Court’s opinion) that Micron had failed to demonstrate “that Rambus had a legal duty
14 to disclose anything beyond what it did disclose to JEDEC.” (Wu Decl. Ex. G [June 15, 2006
15 Memorandum Order], at 3.) These findings render the internal Rambus documents that
16 concerned the Delaware Court irrelevant, and foreclose any finding of prejudice.
17 The Delaware Court concluded that the destroyed documents prejudiced Micron’s
18 JEDEC-related defenses because they were “illuminated by evidence of a non-public nature, e.g.,
19 by internal Rambus documents.” (Del. Ruling, at 32.) With respect to these defenses, the
20 reasoning apparently goes, internal documents would be probative of Rambus’s intent: whether
21 Rambus willfully acquired monopoly power; whether it engaged in anticompetitive behavior; and
22 whether it acted with the intent to deceive. (Jury Instructions, at Instructions 25, 26, 32, 35, 38,
23 39.) All of the Manufacturers’ conduct defenses, and thus all of the issues to which Rambus’s
24 internal documents could be relevant, run through JEDEC. The core of the Manufacturers’
25 antitrust and unfair competition claims was their theory that Rambus engaged in “anticompetitive
26 behavior at JEDEC” by making misrepresentations and material omissions about its patent plans.
27 (Id., Instruction 26.) These are, of course, the same allegations underlying the Manufacturers’
28 fraud claim. (Id., Instruction 38, 39.)
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 The conduct trial jury found, however, that JEDEC members shared no clearly defined
2 expectation that members would disclose relevant knowledge they had about patent applications
3 or the intent to file applications on technology being considered for adoption as a JEDEC
4 standard. (Special Verdict, at 12 (question 45).) As the jury instructions make clear, the jury
5 necessarily found, in rejecting these claims, that Rambus had no duty to disclose to JEDEC
6 members, including the Manufacturers, its plans and intentions regarding patent prosecution.
7 (See Jury Instructions, Instruction 41 (noting that “[t]he Manufacturers allege that the relationship
8 and understanding among JEDEC members imposed a duty to disclose potential patent coverage
9 of products that would comply with a JEDEC standard being considered”).) The Delaware Court
10 offered no explanation as to what “internal” documents Rambus might have had that could shed
11 any light on that issue and, in fact, there are none. On the contrary, “internal” documents would
12 go solely to Rambus’s intent and state of mind, but would not, and could not, go to the existence
13 of any disclosure duty at JEDEC in the first instance. That issue turns instead on evidence of
14 what the members as a whole believed and understood. The Delaware Court’s finding of JEDEC-
15 related prejudice is thus erroneous for this reason alone.
16 The Delaware Court’s ruling is also wrong because it includes no explanation for its
17 conclusion that Rambus in fact destroyed any non-cumulative documents relevant to Micron’s
18 JEDEC-related defenses. Such an explanation plainly is necessary. As this Court will recall,
19 following a careful analysis in Hynix I of both the source and nature of the JEDEC documents
20 Rambus produced, this Court concluded that “with the trip reports and Crisp’s e-mail, it appears
21 that essentially the material JEDEC materials are available.” 2006 WL 565893, at *17, ¶¶ 108-
22 110. The Delaware Court did not acknowledge either this Court’s contrary finding or the
23 evidence—identical in both cases—that comprehensive internal JEDEC documents (including no
24 less than two unique sets of Richard Crisp’s JEDEC-related e-mail files) were preserved and
25 produced. See Hynix I, 2006 WL 565893, at *17; accord, e.g., Wu Decl. Ex H [Unclean Hands
26 Trial Tr. 756:8-757:14; 1213:15-1215:10.]
27 Finally, the Delaware Court offered no explanation for its implicit conclusion that the
28 destruction of JEDEC-related documents must have occurred after Rambus purportedly became
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 subject to a duty to preserve in December 1998. However, it is undisputed that Rambus had
2 withdrawn from JEDEC years earlier, attending its last meeting in December 1995. It is also
3 undisputed that Rambus held its first “shred day” in August 1998, at a time when even the
4 Delaware Court acknowledges Rambus was under no obligation to preserve documents. There is
5 simply no reason to believe that documents relating to JEDEC were created after the initial “shred
6 day” (nearly three years after Rambus had left JEDEC) or that pre-existing JEDEC documents
7 (such as Crisp’s e-mail files) that were preserved on the first shred day were then destroyed at
8 some later point. Absent such a showing, however, there is no basis for any finding of prejudice.
9 b. There is No Support for the Delaware Court’s Conclusion that
the Spoliated Documents Had a Prejudicial Effect on the
10 Equitable Conduct Defenses That Remain to be Tried
11 The Delaware Court specifically concluded in its ruling that the documents it believed
12 were destroyed had no bearing on any of the arguments the Manufacturers intend to advance in
13 support of their invalidity defenses. (Del. Ruling, at 32. n.59.) The only evidence that could
14 potentially be relevant to the other unresolved defense, inequitable conduct, would be documents
15 tending to suggest that Rambus concealed prior art or material information from the PTO. But
16 the record offers no basis to infer that the destroyed documents would have included
17 discoverable, non-cumulative documents relevant to this issue. With respect to prior art itself, it
18 is undisputed that neither Rambus’s employees nor its outside counsel destroyed prior art: to the
19 contrary, the evidence is that they consistently retained it. As this Court noted in its Hynix I
20 spoliation ruling, “[t]he witnesses who testified on the matter confirmed that they had retained
21 prior art and that they did not destroy it in implementing the Document Retention Policy.” 2005
22 WL 565893, at *19. Consistent with this evidence and finding, the Delaware Court did not
23 include prior art among the categories of documents that Rambus’s outside counsel, Vincent,
24 purportedly purged from his Rambus prosecution files. (Del. Ruling, at 17.)
25 The Delaware Court’s finding therefore appears directed to the theoretical disposal of
26 documents discussing prior art. In that regard, the Delaware Court concluded that Vincent purged
27 copies of draft amendments, draft claims, attorney notes, and correspondence to parties other than
28 the PTO. (Del. Ruling, at 18.) However, the categories of documents that Vincent destroyed are,
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 in the main, privileged and/or generally beyond the scope of discovery. The Delaware Court
2 itself observed that it “does not generally require the production of draft documents,” including
3 documents “relat[ive] to patent prosecution.” (Id. at 32 n.59.) And as this Court has noted, these
4 drafts, and any attorney notes on matters such as interviews with the inventors, would likely be
5 privileged and hence non-discoverable. Hynix I, 2006 WL 565893, at *28; accord The Regents of
6 the Univ. of Cal. v. Micro Therapeutics, Inc., 2007 WL 1670120, at *3 (N.D. Cal. June 6, 2007).
7 It is difficult, if not impossible, to reconcile the privileged nature of the materials discarded from
8 Vincent’s patent files with the Delaware Court’s subsequent finding of prejudice.
9 Finally, the Delaware Court failed to conduct any analysis of whether there is, in fact, any
10 non-cumulative prior art that Rambus failed to disclose to the PTO. Nor is this failure a mere
11 technicality. For the Delaware Court’s findings to translate to any real prejudice, the Court must
12 have assumed all of the following: (1) Lester Vincent became aware of material prior art that had
13 not – in the prosecution of multiple patent applications – previously been cited to the PTO; (2)
14 such art was also not cumulative of any of the hundreds of references previously cited; (3)
15 notwithstanding his awareness of the art, Vincent did not obtain a copy of the prior art and
16 therefore did not place the art in any file (as it is undisputed that all prior art was maintained); (4)
17 although Vincent did not obtain a copy of the prior art, he did create notes regarding such art; (5)
18 the notes regarding the art reflected an intent to suppress the art from the PTO; (6) the notes were
19 placed in files that were cleaned between December 1998 and December 1999 (i.e., were not
20 maintained in Vincent’s general files or the files for any of the patents-in-suit, all of which were
21 preserved and provided to Rambus for production); and (7) the notes were not privileged and
22 would otherwise have been sought or ordered produced in litigation. The speculative nature of
23 each and every element of this series of assumptions underscores the dubious nature of the
24 Delaware Court’s conclusion.
25 3. The Delaware Court Gave Inadequate Consideration to Sanction
Options, and Offered No Reasoned Basis for Dismissing Rambus’s
26 Patent Claims
27 The Delaware Court’s conclusory sanction analysis also contravenes settled legal
28 principles Although the Delaware Court observed that it was required to “find the least harsh
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 sanction” for Rambus’s purported wrongdoing (Del. Ruling, at 33), the Court in fact went directly
2 to dismissal without meaningfully analyzing the adequacy of a “lesser sanction” that is not so
3 “drastic.” Schmid, 13 F.3d at 79.
4 The Ninth Circuit has held that “the consideration of less severe penalties must be a
5 reasonable explanation of possible and meaningful alternatives.” Halaco Eng’g Co. v. Costle,
6 843 F.2d 376, 381 (9th Cir. 1988). In Halaco, the Ninth Circuit rejected as “an insufficient
7 consideration of lesser sanctions” the district court's conclusory statement that dismissal of the
8 EPA’s counterclaim was an appropriate remedy because “the government’s [spoliation] conduct
9 is so outrageous as to require this sanction.” Id.; see also id. at 382 (finding that court’s order
10 dismissing counterclaim was an abuse of discretion).
11 To the extent the Delaware Court addressed lesser sanctions, its conclusions are also
12 without merit. For example, the court dismissed “adverse jury instructions and preclusion of
13 evidence” as “impractical, bordering in meaningless, under these circumstances and in the context
14 of a typical jury trial.” (Del. Ruling, at 33 (emphasis added).) But this is wrong. In the “typical
15 jury trial,” an adverse jury instruction—directing the jury to assume the worst of the destroyed
16 evidence, 22 Wright & Miller, Federal Procedure & Practice § 5178, or even to take certain
17 alleged facts as true—would be entirely adequate to both alleviate any prejudice to a defendant
18 and to discourage spoliation, see Schmid, 13 F.3d at 79. As one court has observed, “[a]n adverse
19 inference instruction is a powerful tool in a jury trial.” Morris v. Union Pacific RR, 373 F.3d 896,
20 900 (8th Cir. 2004). Yet, the Delaware Court identified nothing about “these circumstances”
21 (Del. Ruling, at 33) rendering this serious sanction inadequate.
22 III. CONCLUSION
23 The Manufacturers have failed to demonstrate that they are entitled to collateral estoppel
24 based upon the Delaware Court’s ruling. For this reason, the Court should deny (1) Micron’s
25 summary judgment motion; (2) Samsung’s motions for summary judgment, for entry of judgment
26 of unenforceability, for dismissal of Rambus’s infringement claim, and to reopen the record; (3)
27 Nanya’s motions for application of issue preclusion and for summary judgment; and (4) Hynix’s
28 motions for summary judgment, Rule 60(b) relief, and for entry of a Rule 54(b) judgment.
CASE NOS. 05-334; 05-2298; 06-244; 00-20905
1 DATED: January 13, 2009 MUNGER, TOLLES & OLSON LLP
SIDLEY AUSTIN LLP
2 McKOOL SMITH P.C.
3
4 By: /s/ Gregory P. Stone

GREGORY P. STONE
5
Attorneys for RAMBUS INC.
6
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
CASE NOS. 05-334; 05-2298; 06-244; 00-20905

3885

Transféré par

Informations du document

Copyright

Formats disponibles

Partager ce document

Partager ou intégrer le document

Options de partage

Avez-vous trouvé ce document utile ?

Ce contenu est-il inapproprié ?

Droits d'auteur :

Formats disponibles

3885

Transféré par

Droits d'auteur :

Formats disponibles

1 Gregory P. Stone (SBN 078329) Rollin A.

Ransom (SBN 196126)

17 RAMBUS INC., CASE NO.: C 05-00334 RMW

13 HYNIX SEMICONDUCTOR, INC., et al., CASE NO.: CV 00-20905 RMW

15 2. The Manufacturers Have Failed to Show that the Issue of Spoliation

3 c. Hynix’s Implausible “Last in Time” Argument is Expressly

15 3. The Delaware Court’s Gave Inadequate Consideration to Sanction

17 III. CONCLUSION ................................................................................................................. 38

RAMBUS INC.’S CONSOLIDATED OPPOSITION TO

18 foreclose the application of collateral estoppel even as to Micron.

RAMBUS INC.’S CONSOLIDATED OPPOSITION TO

7 Rambus’s conduct at JEDEC), as well as inequitable conduct.”9 (Id.)

4 By: /s/ Gregory P. Stone

Vous aimerez peut-être aussi