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1 QUINN EMANUEL URQUHART & SULLIVAN, LLP Charles K. Verhoeven (SBN 170151) 2 charlesverhoeven@quinnemanuel.com Sean S. Pak (SBN 219032) 3 seanpak@quinnemanuel.com Gillian W. Thackray (SBN 196756) 4 gillianthackray@quinnemanuel.com 50 California Street, 22nd Floor 5 San Francisco, CA 94111 Telephone: (415) 875-6600 6 Facsimile: (415) 875-6700 7 Attorneys for Defendants MediaTek Inc. and Broadcom Corporation 8 9 10 11 12 RAMBUS, INC., 13 14 v. Plaintiff, UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION Case No. 10-CV-05437 RS Case No. 10-CV-05447 RS Case No. 10-CV-05449 RS DEFENDANTS MEDIATEK, BROADCOM AND STMICROELECTRONICSS NOTICE OF MOTION AND MOTION FOR LEAVE TO FILE MOTION FOR RECONSIDERATION OF ORDER GRANTING IN PART AND DENYING IN PART MOTIONS TO STAY Date: September 8, 2011 Time: 1:30 p.m. Courtroom: 3 Judge: Honorable Richard Seeborg

15 MEDIATEK INC. 16 17 RAMBUS, INC., 18 19 v. Plaintiff, Defendant.

20 BROADCOM CORP., 21 22 RAMBUS, INC., 23 24 v. Plaintiff, Defendant.

25 STMICROELECTRONICS N.V.; STMICROELECTRONICS INC., 26 Defendants. 27 28

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DEFENDANTS MEDIATEK, BROADCOM, AND STMICROELECTRONICS MOTION FOR LEAVE TO FILE MOTION FOR RECONSIDERATION

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NOTICE OF MOTION TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: PLEASE TAKE NOTICE THAT pursuant to Civil Local Rule 7-9, Defendants MediaTek

4 Inc. ("MediaTek"), Broadcom Corporation ("Broadcom"), and STMicroelectronics N.V. and 5 STMicroelectronics Inc. ("STMicroelectronics") hereby move the Court for leave to file a Motion 6 for Reconsideration of its Order Granting in Part and Denying in Part Motions to Stay. This 7 Motion for Leave is made on the grounds that since the Court entered its Order Granting in Part 8 and Denying Part Motions to Stay ("Stay Order") on June 13, 2011, a new material fact and 9 change of law has emerged, specifically the district court's July 11, 2011 Order Granting 10 Defendants' Motion to Stay Proceedings Pursuant to 28 U.S.C. 1659 in Kaneka Corp. v. SKC 11 Kolon PI, Inc. et al, 2:11-cv-03397-JHN -RZx (C.D. Cal.). 12 This Motion is based on this Notice of Motion and Motion, the accompanying

13 Memorandum of Points and Authorities in support therefore, and all pleadings and papers on file 14 in this action and upon such matters as may be presented to the Court at the time of the hearing, if 15 any. 16 17 DATED: August 1, 2011 18 By 19 20 21 22 23 24 25 26 27 28
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QUINN EMANUEL URQUHART & SULLIVAN, LLP /s/ Gillian W. Thackray Gillian W. Thackray Attorneys for Defendants Broadcom Corporation and MediaTek Inc. QUINN EMANUEL URQUHART & SULLIVAN, LLP Charles K. Verhoeven (SBN 170151) Sean S. Pak (SBN 219032) Gillian W. Thackray (SBN 196756) 50 California Street, 22nd Floor San Francisco, California 94111-4788 Telephone: (415) 875-6600 Facsimile: (415) 875-6700

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1 DATED: August 1, 2011 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

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K&L GATES LLP By /s/ Michael J. Bettinger Michael J. Bettinger Elaine Y. Chow Curt Holbreich Stephen M. Everett Attorneys for Defendants STMICROELECTRONICS N.V. and STMICROELECTRONICS, INC.

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MEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION Pursuant to Civil Local Rule 7-9, Defendants MediaTek Inc. ("MediaTek") and Broadcom

4 Corporation ("Broadcom"), and STMicroelectronics N.V. and STMicroelectronics Inc. 5 ("STMicroelectronics") respectfully request leave to file a Motion for Reconsideration of the 6 Court's Order Granting in Part and Denying in Part Motions to Stay and supporting declaration 7 (attached hereto as Exhibit A). Since the Court entered its Order Granting in Part and Denying in 8 Part Motions to Stay ("Stay Order") on June 13, 2011, a Central District of California district court 9 has addressed virtually identical issues. See Order Granting Defendants' Motion to Stay

10 Proceedings Pursuant to 28 U.S.C. 1659, Kaneka Corp. v. SKC Kolon PI, Inc. et al, 2:11-cv11 03397-JHN -RZx (C.D. Cal. July 11, 2011). The Kaneka order constitutes a new material fact and 12 change in law warranting reconsideration of the Stay Order. 13 II. 14 ARGUMENT In this district, "new material facts or a change of law occurring after the time of [an

15 interlocutory] order" constitute a basis for reconsideration of that order. Civ. Local Rule 716 9(b)(2). On June 13, 2011, this Court issued an order granting a stay on the Barth and Dally 17 patents, but denying a stay on the Farmwald/Horowitz ("FH") patents. The Court granted the stay 18 as to the Barth and Dally patents pursuant to 28 U.S.C. 1659, whereby the district court must 19 stay a civil action with respect to "any claim that involves the same issues involved in the 20 proceeding before the Commission." Stay Order at 2. However, the Court declined to exercise its 21 discretionary power to also stay the FH patent litigation. Id. In the Stay Order, the Court 22 acknowledged that the Barth and FH patents are both "directed to memory controllers for 23 semiconductor devices and [MediaTek, Broadcom, and STMicroelectronic's] same products are 24 accused of infringing both." Id. at 4-5. The Court also noted that "the FH patents have expired or 25 will expire shortly" and therefore "Rambus is unable to seek injunctive relief in this suit." Id. at 3. 26 However, the Court ultimately determined that "a stay of litigation involving the FH patents until 27 the end of the ITC proceeding involving different patent families is not warranted." Id. at 6. At 28 oral argument, the Court made it clear that one sticking point militating against MediaTek,
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1 Broadcom and STMicroelectronic's motions was the lack of precedent for a stay in these 2 circumstances: 3 4 5 6 4/21/2011 Hearing Transcript at 9:20-10:4. 7 Four weeks later, on July 11, 2011, a Central District of California district court addressed 8 virtually identical issues and granted defendants' stay request in its entirety. See Order Granting 9 Defendants' Motion to Stay Proceedings Pursuant to 28 U.S.C. 1659, Kaneka Corp. v. SKC 10 Kolon PI, Inc. et al, 2:11-cv-03397-JHN -RZx (C.D. Cal. July 11, 2011) (attached as Exhibit A to 11 the Declaration of James Judah). This constitutes a new material fact and a change in the law as to 12 discretionary stays of different patent groups where the rest of the patents in the case are stayed 13 pursuant to 28 U.S.C. 1659. 14 In Kaneka, the Plaintiff asserted five patents in a district court action. Exhibit A at 1. Four 15 of those patents were also asserted in a corresponding ITC Investigation. Id. The fifth patent, not 16 asserted in the ITC Investigation, had expired. Id. Defendants moved to stay the entire action. 17 Plaintiff conceded that the adjudication of the four patents pending before the ITC should be 18 stayed. Id. at 2. However, Plaintiff argued that the action should proceed as to the fifth patent 19 because "the patents were not in the same patent family and involved different inventors, technical 20 references, and patent prosecution attorneys." Id. at 3. The Court granted Defendants' motion and 21 stayed the entire action. 22 In exercising its discretion to grant the stay, the Court held that "Defendants have 23 established that a stay is necessary in the interest of judicial economy and to avoid duplication of 24 labor." Id. at 3. After weighing the factors set forth in CMAX, Inc. v. Hall, 300 F.2d 265, 268 (9th 25 Cir. 1962), the Court determined that: 26 27 28
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Do you agree that as a general matter when we are talking about different patent families, and to make just a fairly general division, you wouldn't be talking about staying in the ordinary course if it's a different patent family. There isn't a whole lot of authority for staying a proceeding in district court pending some litigation about a different family of patents in the ITC or the PTO or the reexamination context. I mean, I don't think there's much out that supports that notion.

[o]n balance, the possible harm to [Plaintiff], which may result from the granting of a stay, appears to be minimal given that it is seeking monetary damages with regard to the expired '064 Patent, not injunctive relief. Second, [Plaintiff's] argument that a delay is likely to cause loss of testimonial and documentary evidence is -2DEFENDANTS MEDIATEK, BROADCOM, AND STMICROELECTRONICS MOTION FOR LEAVE TO FILE MOTION FOR RECONSIDERATION

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unavailing because [Plaintiff] has not presented any factual support for this assertion. Lastly, [Plaintiff's] argument that a stay would complicate eventual litigation of this action is purely speculative [and] has no factual basis.

3 Exhibit A at 3. In contrast, the Court noted the significant harm Defendants would suffer if the 4 case were to go forward: 5 6 7 8 9 the instant action and the ITC Investigation both involve the same type of technology and accused products and both proceedings involve extensive foreign discovery. As such, requiring Defendants to conduct simultaneous discovery in two different forums will not only impose unnecessary burden on Defendants, but, more importantly, will be a waste of judicial resources. Given that discovery issues in both actions will likely overlap, in the interest of judicial economy, the better course of action would be to stay the adjudication of the '064 Patent and await for the resolution of the ITC Investigation, which will likely simplify and streamline factual and legal issues in this action.

10 Id. at 3-4 (internal citations omitted). 11 The Kaneka order is thoroughly and soundly reasoned. Its analysis and conclusions should

12 inform the Court in re-assessing the precedents that exist for staying the litigation as to the FH 13 patents. See Glencore Grain Rotterdam B.V. v. Shivnath Rai Harnarain Co., 284 F.3d 1114, 1122 14 (9th Cir. 2002) (citing "[t]wo recent decisions" by out-of-circuit district courts in a situation with 15 "relatively little authority squarely addressing the issue" because, while they "do not bind this 16 court," they are "well reasoned and persuasive."); Jane Doe I v. Reddy, 2003 WL 23893010 *9-10 17 (N.D. Cal. 2003) (citing district court opinions from outside the Northern District of California as 18 persuasive authority in situation where "[n]either the Supreme Court nor the Ninth Circuit nor, for 19 that matter, any circuit at all, has directly addressed this question" ). MediaTek, Broadcom, and 20 STMicroelectronics respectfully request that the Court grant their request for leave to file a motion 21 to reconsider the Court's order denying the stay as to the FH patents. Granting this request will not 22 cause any delay in the case. 23 III. 24 CONCLUSION For the foregoing reasons, MediaTek, Broadcom, and STMicroelectronics respectfully

25 request leave to file the appended Motion for Reconsideration of the Court's Order Granting in 26 Part and Denying in Part Motions for Stay, along with supporting declaration. 27 28
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1 DATED: _August 1, 2011 2

QUINN EMANUEL URQUHART & SULLIVAN, LLP By /s/ Gillian W. Thackray Gillian W. Thackray Attorneys for Defendants MediaTek Inc. and Broadcom Corporation QUINN EMANUEL URQUHART & SULLIVAN, LLP Charles K. Verhoeven (SBN 170151) Sean S. Pak (SBN 219032) Gillian W. Thackray (SBN 196756) 50 California Street, 22nd Floor San Francisco, California 94111-4788 Telephone: (415) 875-6600 Facsimile: (415) 875-6700 K&L GATES LLP By /s/ Michael J. Bettinger Michael J. Bettinger Elaine Y. Chow Curt Holbreich Stephen M. Everett Attorneys for Defendants STMICROELECTRONICS N.V. and STMICROELECTRONICS, INC.

3 4 5 6 7 8 9 10 11 DATED: August 1, 2011 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

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