Case3:10-cv-05449-RS Document129 Filed12/28/12 Page1 of 5

1 2 3 4 5 6 7 8 9 10 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

United States District Court

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For the Northern District of California

RAMBUS, INC., Plaintiff, v. LSI CORPORATION, Defendant. ____________________________________/ RAMBUS, INC., Plaintiff, v. STMICROELECTRONICS N.V., STMICROELECTRONICS INC., Defendants. I.

Nos. C 10-05446 and C 10-05449 ORDER GRANTING DEFENDANTS MOTION TO LIMIT THE NUMBER OF ASSERTED CLAIMS

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INTRODUCTION

At the May 10, 2012, case management conference, defendants LSI Corporation (LSI) and STMicroelectronics, N.V. and STMicroelectronics, Inc. (STMicro), asked the Court to limit Rambuss number of claims to 20. Rambus responded that 35 was the appropriate number of claims on which to proceed at that stage in the litigation. The Court limited the number of claims from 81 to 35 at that time, subject to a further reduction in the number of permitted claims at a later point.
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Defendants argue that a further reduction in the number of claims on which Rambus is allowed to proceed is now appropriate, and move to reduce that number of claims to 20 presently and to 10 at trial. Rambus agrees that it could limit its claims to 20 at this point, but asks that the Court order defendants to disclose their invalidity contentions to Rambus before it selects the 20 on which it will proceed. Rambus further requests that the Court limit the prior art defendants are allowed to present with respect to each of its claims. II. BACKGROUND

All parties agree that the scope of this case needs to be narrowed down in some fashion. Rambus currently asserts 35 claims from nine patents in the Farmwald/Howrowitz patent family. More than 800 products are accused of infringement. Each defendants contentions list includes slightly over 100 prior art references. For each claim, each defendant has listed a set of primary references as well as secondary references which may be combined with the primary references to form combinations rendering the claim obvious. Rambus contends that proceeding in this manner has allowed each defendant to allege up to 500 obviousness combinations for a single claim. Plantiff and defendants agree that limiting the number of claims to 20 at this point would be appropriate, but they disagree about how it should be accomplished. Some developments have occurred since the May 2012 CMC related to asserted patents. The USPTO Board of Patent Appeals and Interferences issued an opinion in Rambus, Inv. v. NVIDIA, Inc., No. 2012-000171, upholding the examiners rejection of claims 1-5, 7, 8, 10-12, 14, 26, 28-32, 34, and 35 of U.S. Patent No. 6,260,097. The USPTO did not find claim 6, which Rambus asserts against defendants, unpatentable. Rambus filed a notice of appeal of the BPAI opinion to the U.S. Court of Appeals for the Federal Circuit. On August 15, 2012, the Federal Circuit issued an opinion in In re Rambus, Inc., No. 2011-1247, providing a claim construction for the term memory device. And of course, this Court issued its claim construction order on September 26, 2012. Expert discovery and dispositive motion practice have not yet begun in this case. Defendants served their invalidity contentions on Rambus on March 30, 2012. Yet, Rambus complains that defendants have thusfar refused to reveal their noninfringement theories. Rambus
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For the Northern District of California

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served interrogatories on defendants on July 8, 2012, asking them to state the bases for their denials in their answers that their products infringe. LSI objected to responding to the interrogatory until after Rambus identified its asserted claims and the LSI products that allegedly infringe on those claims and after the Court issued its claim construction order. Both preconditions have now passedRambus served its infringement contentions on October 4, 2012. LSI still has not provided a supplemental response to this interrogatory. STMicro objected to the interrogatory as being premature and more properly the subject of expert testimony. It subsequently said it would reveal its noninfringement theories after the claim construction order was issued, but it still has not done so nearly two and half months after that order was issued. On their parts, defendants say that they cannot lock in their invalidity arguments at this time because Rambus has refused to provide adequately detailed infringement contentions, even in response to defendants requests that Rambus supplement them. III. LEGAL STANDARD

United States District Court

For the Northern District of California

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The Federal Rules of Civil Procedure entrust the Court with the discretion to secure the just, speedy, and inexpensive determination of every action and proceeding before it. In the patent context, the Federal Circuit has approved of district courts common practice of limiting the number of claims that can be asserted in order to streamline the litigation. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011). IV. DISCUSSION

Both parties agree that 20 is an appropriate number of claims to narrow Rambus to at this juncture. Rambus does not argue that selecting only 20 claims on which to proceed would prevent it from presenting unique issues as to liability or damages in this case. Id. at 1312. Rambus argues instead that streamlining the litigation should be a two-way street and that defendants should first be required to reveal their noninfringement theories to allow Rambus to choose the most appropriate 20 claims upon which to proceed at this time in light of the defenses Defendants intend to raise. Rambus also asks the Court to limit the number of prior art references that defendants may use to three alleged anticipatory references and three allege obviousness combinations per asserted claim. Rambus does not cite any law in support of its position that it must be given the benefit of knowing
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defendants noninfrigement theories in order to select its 20 strongest claims, or that it would be proper to limit the number of prior art references that defendants may use. Just recently in DCG Systems, Inc. v. Checkpoint Technologies, No. 11-03792-PSG, 2012 U.S. Dist. LEXIS 117370 (N.D. Cal. Aug. 20, 2012), a judge of the Northern District remarked that a request that a defendant be required to reduce proportionately the number of prior art references as [plaintiff] has reduced its asserted claims is without precedent. Defendants object to Rambuss proposal, arguing that it flouts the basic principle of patent law that invalidity is a defense to a claim for patent infringement. See 35 U.S.C. 282(b). Indeed, the Northern District of Californias Patent Local Rules recognize invalidity as a defense that is disclosed only after a plaintiff has identified its claim assertions. See Patent L.R. 3-3. If Rambus believes that it is being stiffed on discovery that it is owed, it may always bring a motion to compel against defendants.1 That is a separate issue from whether it is entitled to advance knowledge of defendants defenses in order to most advantageously select the claims that remain in its case. This is an opportune time in the litigation to narrow the number of claims going forward. Rambus has the benefit of the courts claim construction order. Furthermore, a smaller number of claims moving into expert discovery and dispositive motion practice will significantly reduce the financial burden on the parties and streamline the litigation to help manage the Courts docket. Rambus has admitted that limiting itself to 20 claims at this point will not cause it prejudice. It is not entitled to advance notice of defendantss invalidity theories before making that selectionand the absence of that benefit is not in itself a burden. It remains premature at this point to make a decision about the number of claims on which Rambus will be permitted to go to trial, given that expert discovery has not occurred and defendants still owe Rambus discovery responses. The parties may revisit that issue at a more appropriate time.

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For the Northern District of California

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Likewise, defendants can seek relief from the Court if necessary to require Rambus to supplement its infringement contentions.
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1 2 3 4 5 6 7 8 9 10 Dated: 12/28/12

V.

CONCLUSION

Rambus shall be limited to 20 asserted claims at this juncture of the litigation subject to a further reduction in the number of permitted claims at a later point in this action. IT IS SO ORDERED.

RICHARD SEEBORG
UNITED STATES DISTRICT JUDGE

United States District Court

For the Northern District of California

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