Case 5:05-cv-00334-RMW Document 2226 Filed 09/19/2008 Page 1 of 9

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Attorney list on signature page
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4 IN THE UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
5
RAMBUS, INC.,
6
Plaintiff.
7 v.
8 HYNIX SEMICONDUCTOR INC., HYNIX Case No. C 05-00334 RMW
SEMICONDUCTOR AMERICA INC.,
9 HYNIX SAMSUNG’S SUPPLEMENTAL BRIEF IN
SEMICONDUCTOR MANUFACTURING SUPPORT OF ITS MOTION IN LIMINE
10 AMERICA INC.,
TO EXCLUDE PRIVILEGED
11 SAMSUNG ELECTRONICS CO., LTD., DOCUMENTS PRODUCED
SAMSUNG ELECTRONICS AMERICA, PURSUANT TO THE COURT’S
12 INC., IMPLIED WAIVER ORDER
SAMSUNG SEMICONDUCTOR, INC.,
13 SAMSUNG AUSTIN SEMICONDUCTOR, [PUBLIC VERSION]
L.P.,
14 Place: Courtroom 6
NANYA TECHNOLOGY CORPORATION, Judge: Hon. Ronald M. Whyte
15 NANYA TECHNOLOGY CORPORATION
U.S.A.,
16

17 Defendants.
18 RAMBUS, INC.,
19 Plaintiff.
v.
20
SAMSUNG ELECTRONICS CO., LTD.,
21 Case No. C 05-02298 RMW
SAMSUNG ELECTRONICS AMERICA,
INC.,
22 SAMSUNG SEMICONDUCTOR, INC.,
SAMSUNG AUSTIN SEMICONDUCTOR,
23 L.P.,
24 Defendants.
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SAMSUNG’S SUPPLEMENTAL BRIEF IN CASE NO. C 05 00334 RMW

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1 TABLE OF CONTENTS
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TABLE OF AUTHORITIES .................................................................................................................. III
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PRELIMINARY STATEMENT............................................................................................................... 1
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ARGUMENT ...................................................................................................................................... 2
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I. CONFIDENTIAL COMMUNICATIONS THAT ARE MADE OR DIRECTED BY AN
6 ATTORNEY TO A CLIENT IN FURTHERANCE OF LEGAL ADVICE ARE PRIVILEGED. ............... 2
7 II. EACH EXHIBIT IS A DOCUMENT THAT WAS COMMUNICATED TO THE CLIENT IN
CONFIDENCE AND FOR PURPOSES OF GIVING LEGAL ADVICE. ............................................. 3
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CONCLUSION .................................................................................................................................... 5
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1
TABLE OF AUTHORITIES
2

3
Cases
4
Clarke v. Am. Commerce Nat’l Bank,
5 974 F.2d 127 (9th Cir. 1992)........................................................................................................ 4
6 Fisher v. United States,
425 U.S. 391 (1976)..................................................................................................................... 3
7
Jack Winter, Inc. v. Koratron Co.,
8 54 F.R.D. 44 (N.D. Cal. 1971)..................................................................................................... 3
9 Larson v. Harrington,
11 F. Supp. 2d 1198 (E.D. Cal. 1998).......................................................................................... 3
10
United States v. Chen,
11 99 F.3d 1495 (9th Cir. 1996)........................................................................................................ 2
12 United States v. DeFonte,
441 F.3d 92 (2d Cir. 2006)........................................................................................................... 3
13
United States v. Plache,
14 913 F.2d 1375 (9th Cir. 1990)...................................................................................................... 2
15 Walter v. Cincinnati Zoo & Botanical Garden,
No. 1:05cv327, 2006 U.S. Dist. LEXIS 25841 (S.D. Ohio May 3, 2006)................................... 3
16

17
Treatises
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WIGMORE, EVIDENCE § 2292 (McNaughton Rev. 1961) ................................................................. 2
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1
PRELIMINARY STATEMENT
2
At the September 16, 2008 pretrial conference, this Court approved a process for resolving
3

4 Samsung’s Motion in Limine, by which Rambus would designate the particular exhibits and

5 deposition testimony that are subject to Samsung’s Motion in Limine that Rambus intends to use
6 at trial, the parties would then meet and confer, and Samsung would submit supplemental briefing
7
to the Court regarding the privileged nature of the particular documents. See 9/16/08 Tr. at 29-30,
8
35. The parties have satisfied their meet and confer obligations, and Samsung withdrew its claim
9
of privilege for several of the deposition excerpts. The parties continue to dispute, however, the
10

11 privileged nature of the documents addressed herein. Based on Rambus’s identification to

12 Samsung of the specific privileged documents that Rambus seeks to introduce at trial,1 Samsung

13 submits this supplemental brief to demonstrate the privileged nature of those documents.2 As
14 discussed below, these documents are protected by the attorney-client privilege, and thus should
15
be protected from disclosure and use at trial. In particular, the supporting declarations confirm
16
that these documents are not, as Rambus has erroneously characterized them, merely scrivener-
17
type notes of business meetings. See, e.g., Rambus’s Opp. at 12. Rather, the documents are
18

19 privileged because they represent confidential communications that were provided to the client

20

21 1
Rambus has identified the following documents (as designated on Rambus’s trial exhibit list) as
the ones subject to Samsung’s Motion in Limine that Rambus wishes to use at trial: 9061 or
22 9129, 9077/9077A, 9078/9078A, 9079, 9081/9081A, 9126, 9128, 9134, 9136/9137, 9138, 9139,
23 9336, 9337, 10697, and 10698. The exhibits listed in a pairing with a “/” indicate a Korean and
English translation version of the same document. Further, 9061 and 9129 are copies of the same
24 document, only with different excerpts redacted.
2
25 Rambus also seeks to use various deposition-testimony excerpts, which Samsung contends are
privileged because they discuss the privileged documents at issue. See Ex. 2 (listing the various
26 deposition excerpts sought to be used at trial by Rambus). The privileged nature of these excerpts
turns on the determination of privilege for the relevant privileged documents, and Samsung thus
27 urges the Court to conclude that the deposition excerpts are privileged for the same reasons that
the underlying documents themselves are privileged.
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1 for, inter alia, the purpose of rendering legal advice in ongoing licensing negotiations.3 Each
2 document at issue is privileged and Samsung’s motion in limine should be granted.
3

4 ARGUMENT

5 I. CONFIDENTIAL COMMUNICATIONS THAT ARE MADE OR DIRECTED BY AN ATTORNEY

TO A CLIENT IN FURTHERANCE OF LEGAL ADVICE ARE PRIVILEGED.
6
As discussed in more detail herein and in the supporting declarations, the documents at
7
issue were communicated in confidence to the client from counsel and advise the client regarding
8
ongoing negotiations and discussions regarding licensing obligations and similar legal matters.
9
The documents were prepared for the purpose of providing information to the client to facilitate
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the furtherance of legal advice, and as such, they are privileged.
11
The black-letter elements of privilege have been recognized time and again: “(1) Where
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legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such,
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(3) the communications relating to that purpose (4) made in confidence (5) by the client, (6) are at
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his instance permanently protected (7) from disclosure by himself or by the legal advisor,
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(8) except the protection be waived.” 8 WIGMORE, EVIDENCE § 2292 (McNaughton Rev. 1961);
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see also, e.g., United States v. Plache, 913 F.2d 1375, 1379 n.1 (9th Cir. 1990) (reciting same).
17
Rambus does not question that the documents were intended to remain confidential
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communications to the client. Rambus merely argues that the documents were not communicated
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to the client in furtherance of legal advice. See, e.g., Rambus’s Opp. at 12. It is clear that
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communications between corporate personnel and their in-house counsel made for the purpose of
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securing legal advice are protected by the privilege: “What matters is whether the lawyer was
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employed with or without ‘reference to his knowledge and discretion in the law,’ to give the
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advice.” United States v. Chen, 99 F.3d 1495, 1502 (9th Cir. 1996) (citation omitted); see also
24
3
Exhibit 9139 does not pertain to license negotiations, but is a confidential memorandum
25 authored and transmitted by Charles Donohoe, then General Patent Counsel for Samsung, to
Young Jo Lim, an attorney and member of Samsung’s IP legal department, regarding a subpoena
26 for documents in the Micron litigation. See Donohoe Decl. at ¶ 7. The purpose of preparing and
sending the memorandum was for in-house counsel to provide legal advice to the client—other
27 attorneys at Samsung—of the pending subpoena, and to counsel the client about the course of
action to be taken by Samsung to comply with its obligations under the subpoena as a third party
28 to existing litigation.
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Fisher v. United States, 425 U.S. 391, 403 (1976) (“Confidential disclosures by a client to an
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attorney made in order to obtain legal assistance are privileged.”). The communications at issue
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were made in order to provide legal advice to Samsung.
4
Indeed, summaries of negotiation positions and communications with licensors and other
5
contracting parties are a practical reality and a necessary tool for an attorney to render legal
6
advice to a multinational corporation. The attorney-client privilege protects documents which
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“involve either client communications intended to keep the attorney apprised of continuing
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business developments, with an implied request for legal advice based thereon, or self-initiated
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attorney communications intended to keep the client posted on legal developments and
10
implications, including implications of client activity noticed by the attorney but with regard to
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which no written request for advice from the client has been found.” Jack Winter, Inc. v.
12
Koratron Co., 54 F.R.D. 44, 46 (N.D. Cal. 1971).
13
Courts have, of course, recognized the privileged nature of such communications. See,
14
e.g., United States v. DeFonte, 441 F.3d 92, 95 (2d Cir. 2006) (explaining that notes prepared in
15
order to facilitate attorney-client communication that are then communicated between counsel
16
and client are protected by attorney-client privilege) (citing cases); Larson v. Harrington, 11 F.
17
Supp. 2d 1198, 1203 (E.D. Cal. 1998) (regarding notes of meeting with third party that were
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taken at direction of attorney and later given to attorney as privileged); Walter v. Cincinnati Zoo
19
& Botanical Garden, No. 1:05cv327, 2006 U.S. Dist. LEXIS 25841, at *6 (S.D. Ohio May 3,
20
2006) (recognizing that “[f]ederal courts have held that contemporaneous notes taken by an
21
individual, and later given by the individual to an attorney, are privileged if the notes were taken
22
with the intent of seeking legal advice.”). This Court should do the same.
23
II. EACH EXHIBIT IS A DOCUMENT THAT WAS COMMUNICATED TO THE CLIENT IN
24 CONFIDENCE AND FOR PURPOSES OF GIVING LEGAL ADVICE.
25 As set out in the supporting declarations, each document is a confidential document that

26 was communicated to the client for the purpose of rendering legal advice. See Donohoe Decl. at

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¶¶ 3-8; Shim Decl. at ¶¶ 3-10.4 A summary of Samsung’s particular arguments and declaration
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in support of privilege for each document placed in issue by Rambus is presented in a chart
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attached to this brief. See Ex. 1 (identifying each exhibit, its author(s) and addressee(s), the
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relevant declaration, and the supporting privilege argument).
5
Samsung’s supporting declarations directly rebut Rambus’s primary argument against the
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privileged nature of these documents, which was a call for additional substantiation of the
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privilege beyond the face of the documents.5 For example, with regard to memoranda and emails
8
reviewing various negotiation meetings (Exhibits 9077/9077A, 9078/9078A, 9079, 9081/9081A,
9
9126, 9128, 9134, 9136/9137, 9138, 10697, and 10698), the supporting declarations confirm that
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those communications were prepared and communicated to the client in furtherance of the
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particular in-house counsel’s rendering of legal advice to Samsung regarding negotiation
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positions and potential legal obligations under proposed, and existing, license terms. See, e.g.,
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Donohoe Decl. at ¶ 8 (attesting to fact that he directed legal department employee Han-Yong
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Uhm to prepare and transmit the set of meeting minutes summarizing a license-negotiation
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meeting with Rambus that Donohoe attended, Exhibit 9081, to the Samsung IP Legal Department
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to apprise the client of the status of the negotiations and enable him to continue ongoing
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discussions with the client about Samsung’s legal strategy in that regard); id. at ¶ 3 (explaining
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that email (Exhibit 9079) prepared and transmitted to Jay Shim, another attorney in Samsung’s IP
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legal department, summarized a licensing meeting with Rambus that he attended, included mental
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impressions and opinions on the subject, and was prepared and sent to apprise Shim in response
21
to the client’s request that he be updated on the status of the negotiations and in order to provide
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legal analysis with respect to developments at the meeting).
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The supporting declarations similarly confirm that the 2001 memoranda prepared by Jay
24
4
With respect to Trial Exhibit 9128, over which Samsung also continues to assert privilege,
25 Samsung was not able to obtain a declaration from the recipient of that document, who is in
Korea, by the time of filing. Samsung expects to receive that declaration soon and will
26 supplement this filing promptly when the declaration is received.
5
Rambus also repeatedly invokes a need for a line-by-line justification of privilege, but its
27 contention is misplaced. See, e.g., Rambus’s Opp. at 19. That requirement pertains to privilege
of legal bills, not any and every document for which a party asserts privilege. See, e.g., Clarke v.
28 Am. Commerce Nat’l Bank, 974 F.2d 127, 129 (9th Cir. 1992).
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Shim, Samsung in-house counsel, for discussions with the client and other in-house counsel
2
(Exhibits 9336 and 9337) are privileged. See Shim Decl. at ¶¶ 4, 5 (explaining that Exhibits 9336
3
and 9337 are memoranda that he prepared and transmitted to Donohoe and Gwang Ho Kim, both
4
members of Samsung’s IP legal department who are also attorneys, summarizing two telephone
5
conversations that he had with Neil Steinberg regarding the impact of the Infineon litigation on
6
Samsung’s payment of royalties under the parties’ SDR/DDR License and conveying his mental
7
impressions and opinions regarding the conversations, and that the purpose of preparing and
8
sending the memoranda was to inform the recipients about Rambus’s positions and to provide
9
legal analysis with respect to the significance of what was discussed).
10
Mr. Shim’s supporting declaration also confirms that Mr. Shim’s memorandum to “All,”
11
Exhibits 9061 and 9129, is a memorandum prepared and sent to Samsung’s IP legal department,
12
which summarizes a license-negotiation meeting with Rambus that he attended. See Shim Decl.
13
at ¶ 3. The memorandum includes Mr. Shim’s opinions regarding the meeting, and was prepared
14
and communicated to the client to inform the IP Legal Department, in response to their request to
15
be kept updated, of the status of the negotiations, and to provide legal analysis with respect to the
16
significance of what transpired at the meeting. Id.
17
Because the Samsung has submitted evidence and confirmation that the documents at
18
issue are protected by the attorney-client privilege, they should remain privileged and Rambus
19
should be precluded from introducing them or the related deposition testimony in the September
20
Trial.
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CONCLUSION
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For these reasons, as well as those presented in Samsung’s original motion, the Court
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24 should grant Samsung’s motion in limine.

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Dated: September 18, 2008
2
WEIL, GOTSHAL & MANGES, LLP
3

4 By: /s/ Matthew D. Powers

Matthew D. Powers
5
MATTHEW D. POWERS (Bar No. 104795)
6 Email: matthew.powers@weil.com
EDWARD R. REINES (Bar No. 135930)
7 Email: edward.reines@weil.com
WEIL, GOTSHAL & MANGES LLP
8 201 Redwood Shores Parkway
Redwood Shores, CA 94065
9 Telephone: (650) 802-3000
Facsimile: (650) 802-3100
10
Attorneys for Defendants
11 SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC.,
12 SAMSUNG SEMICONDUCTOR, INC., and
SAMSUNG AUSTIN SEMICONDUCTOR, L.P.
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