Rambus'S Opposition To Broadcom'S Motion To Stay CASE NO. 3:10-CV-05437-RS

Case3:10-cv-05437-RS Document23 Filed02/17/11 Page1 of 21
1 GREGORY P. STONE (SBN 078329)

[email protected]
2 HEATHER E. TAKAHASHI (SBN 245845)
[email protected]
3 MUNGER, TOLLES & OLSON LLP
355 South Grand Avenue, 35th Floor
4 Los Angeles, CA 90071-1560
Telephone: (213) 683-9100
5 Facsimile: (213) 687-3702
6 PETER A. DETRE (SBN 182619)
[email protected]
560 Mission Street, 27th Floor
8 San Francisco, CA 94105
Telephone: (415) 512-4000
9 Facsimile: (415) 512-4077
10 Attorneys for RAMBUS INC.
11 UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
12 SAN JOSE DIVISION
13 RAMBUS INC.,
Case No. 3:10-cv-05437-RS
14 Plaintiff,
RAMBUS’S OPPOSITION TO
15 v. BROADCOM’S MOTION TO STAY
PATENT INFRINGEMENT CASE
16 BROADCOM CORP.,
Date: March 10, 2011
17 Defendant. Time: 1:30 p.m.
Judge: Hon. Richard Seeborg
18 Courtroom 3 - 17th Floor
19
20
21
22
23
24
25
26
27
28
BROADCOM’S MOTION TO STAY
CASE NO. 3:10-CV-05437-RS
1 Table of Contents
2 Page
3 I. Introduction ......................................................................................................................... 1
II. Factual Background ............................................................................................................ 2
4
A. The District Court and ITC Actions........................................................................ 2
5 B. The Farmwald/Horowitz Patents............................................................................. 3
6 C. The Barth Patents .................................................................................................... 3
D. The Dally Patents .................................................................................................... 4
7
E. Broadcom’s Statements to the Federal Trade Commission and Its Failure to
8 Accept a License from Rambus .............................................................................. 4
III. Broadcom Is Not Entitled to a Stay with Respect to the FH Patents .................................. 5
9
A. 28 U.S.C. § 1659 Does Not Apply to the FH Patents ............................................. 5
10 B. Broadcom Cannot Meet Its Burden of Showing that a Discretionary Stay Is
Warranted................................................................................................................ 5
11
1. Legal Standards for a Discretionary Stay.................................................... 5
12 2. A Stay with Respect to the FH Patents Will Not Simplify or Reduce
the Number of Issues This Court Must Decide........................................... 7
13
3. The Balance of Hardships Weighs Against a Stay.................................... 10
14 a. There Is a “Fair Possibility” that the Requested Stay Will
Harm Rambus’s Interests in this Litigation .................................. 10
15
b. Broadcom Cannot Show a Pressing Need for a Stay .................... 12
16 4. A Discretionary Stay Pending the Federal Circuit’s Decision in the
Micron/Hynix Appeals Is Not Warranted ................................................. 13
17
5. A Discretionary Stay Pending Reexamination Is Not Warranted............. 14
18 IV. Conclusion ........................................................................................................................ 17
19
20
21
22
23
24
25
26
27
28
i
1 TABLE OF AUTHORITIES
2 PAGE(S)
3 Alltech, Inc. v. Cenzone Tech, Inc.,
4 No. 06-cv-0153, 2007 WL 935516 (S.D. Cal. Mar. 21, 2007) ............................................... 17
5 Am. Honda Motor Co. v. Coast Distribution Sys.,

No. 06-cv-04752 JSW, 2007 WL 672521 (N.D. Cal. Feb. 26, 2007)................................. 9, 13
6
Baden Sports, Inc. v. Kabushiki Kaisha Molten,
7 No. C06-cv-210, 2007 WL 2790777 (W.D. Wash. Sept. 25, 2007) ....................................... 12
8 Boston Scientific Corp. v. Micrus Corp.,
No. 04-cv-04072 JW, 2006 WL 708669 (N.D. Cal. Mar. 21, 2006) ...................................... 17
9
10 Cherokee Nation of Okla. v. United States,

124 F.3d 1413 (Fed. Cir. 1997)................................................................................................. 6
11
Clinton v. Jones,
12 520 U.S. 681 (1997) ............................................................................................................ 6, 11
13 CMAX, Inc. v. Hall,
300 F.2d 265 (9th Cir. 1962)..................................................................................................... 6
14
15 Commonwealth Scientific & Indus. Research Org. v. Buffalo Tech. Inc.,

492 F. Supp. 2d 600 (E.D. Tex. 2007) .................................................................................... 11
16
Flexsys Americas, LP v. Kumho Tire, U.S.A., Inc.,
17 No. 05-cv-156, 2005 WL 1126750 (N.D. Ohio Apr. 29, 2005) ............................................... 8
18 FormFactor, Inc. v. Micronics Japan Co., Ltd.,

No. 06-cv-07159 JSW, 2008 WL 361128 (N.D. Cal. Feb. 11, 2008)....................................... 8
19
Fresenius Med. Care Holdings, Inc. v. Baxter Int’l,
20
No. C 03-1431 SBA, 2007 WL 1655625 (N.D. Cal. June 7, 2007) ....................................... 14
21
Furminator, Inc. v. Ontel Prods. Corp.,
22 No. 06-cv-1294, 2006 WL 2711642 (E.D. Mo. Sept. 21, 2006) .............................................. 7
23 Humanscale Corp. v. CompX Int’l Inc.,

No. 09-cv-86, 2009 WL 1444312 (E.D. Va. May 21, 2009) .............................................. 9, 11
24
Iljin USA v. NTN Corp.,
25 No. 06-cv-10145, 2006 WL 568351 (E.D. Mich. Mar. 7, 2006) .......................................... 8, 9
26
IMAX Corp. v. In-Three, Inc.,
27 385 F. Supp. 2d 1030 (C.D. Cal. 2005) .................................................................................. 16
28
- ii - BROADCOM’S MOTION TO STAY
1 Kahn v. General Motors Corp.,

889 F.2d 1078 (Fed. Cir. 1989)................................................................................................. 6
2
Landis v. N. Am. Co.,
3
299 U.S. 248 (1936) ........................................................................................................ 1, 6, 13
4
LG Elecs., Inc. v. Eastman Kodak Co.,
5 No. 09-cv-0344, 2009 WL 1468703 (S.D. Cal. May 26, 2009) ............................................... 9
6 Micron Tech. v. Mosel Vitelic Corp.,

No. 98-cv-0293, 1999 WL 458168 (D. Idaho Mar. 31, 1999).............................................. 6, 9
7
Network Appliance, Inc. v. Sun Microsystems, Inc.,
8 No. 07-cv-06053 EDL, 2008 WL 2168917 (N.D. Cal. May 23, 2008) .................................. 15
9
Phillips v. AWH Corp.,
10 415 F.3d 1303 (Fed. Cir. 2005)................................................................................................. 8
11 Rambus, Inc. v. Nvidia Corp.,

No. 08-cv-3343 SI, 2008 WL 5427599 (N.D. Cal. Dec. 30, 2008) .................................... 9, 14
12
SanDisk Corp. v. Phison Elecs. Corp.,
13 538 F. Supp. 2d 1060 (W.D. Wis. 2008) .............................................................................. 5, 8
14
Saxon Innovations, LLC v. Palm, Inc.,
15 No. 6:09-cv-272, 2009 WL 3755041 (E.D. Tex. Nov. 4, 2009) ............................................... 5
16 Sorensen v. Lexar Media, Inc.,

No. 08-cv-00095 JW, 2008 U.S. Dist. LEXIS 87511 (N.D. Cal. Apr. 30, 2008)............. 14, 17
17
STX, Inc. v. Trik Stik, Inc.,
18 708 F. Supp. 1551 (N.D. Cal. 1988) ....................................................................................... 11
19 Telemac Corp. v. Teledigital, Inc.,
20 450 F. Supp. 2d 1107 (N.D. Cal. 2006) .................................................................................. 14
21 Texas Instruments, Inc. v. United States Int’l Trade Comm’n,

851 F.2d 342 (Fed. Cir. 1988)................................................................................................. 10
22
FEDERAL STATUTES AND RULES
23
28 U.S.C. § 1659 ......................................................................................................................... 5, 9
24
35 U.S.C. § 134(b) ........................................................................................................................ 17
25
35 U.S.C. § 141 ............................................................................................................................. 17
26
27 37 C.F.R. § 1.530(j) ...................................................................................................................... 16
28
- iii - BROADCOM’S MOTION TO STAY
1
I. Introduction
2
The only contested issue before this Court is whether a stay with respect to the ten
3
asserted patents in the Farmwald/Horowitz (“FH”) patent family is warranted. As Rambus has
4
not asserted the FH patents at the ITC, Broadcom lacks any statutory basis for moving to stay
5
Rambus’s claims related to those patents. Broadcom therefore must seek from this Court a
6
discretionary stay with respect to the FH patents.
7
Broadcom cannot meet its heavy burden to show that such a stay is warranted in this case.
8
Because the FH patents are in a different family from the patents at issue at the ITC, involving
9
claims to different inventions by different inventors, different specifications, and different
10
prosecution histories, staying this case with respect to the FH patents will not result in the
11
conservation of judicial resources required to justify a stay. See Landis v. N. Am. Co., 299 U.S.
12
248, 254 (1936) (power to stay proceedings arises from court’s inherent power “to control the
13
disposition of the causes on its docket with economy of time and effort for itself, for counsel, and
14
for litigants”) (emphasis added). Indeed, Broadcom can cite no case in which a court has stayed
15
claims relating to patents in a family of patents different from those before the ITC. Rather, in
16
each of the cases cited by Broadcom in which the court stayed infringement claims involving
17
patents not before the ITC, the non-overlapping patents were in the same patent family as the
18
patents before the ITC.
19
Also weighing against a discretionary stay is the harm it will cause to Rambus. While this
20
case lies dormant for the two to three years it might take to litigate the ITC case through a final
21
determination and appeal to the Federal Circuit, witnesses’ memories of key facts are likely to
22
fade, and documents of third parties may be lost or destroyed. In the meantime, Broadcom will
23
continue to avoid its royalty obligations to Rambus, harming Rambus’s goodwill and reputation
24
as an innovator, artificially depressing royalty rates for Rambus’s patents, reducing research and
25
development opportunities, and discouraging the adoption of and market share for Rambus’s own
26
products. On the other hand, proceeding with litigation with respect to the FH patents will not
27
28
-1- BROADCOM’S MOTION TO STAY
1
prejudice Broadcom, will not unduly burden this Court, and will promote the orderly course of
2
justice.
3
While primarily focusing on the ITC proceedings, Broadcom also urges the Court to stay
4
this litigation in light of two pending Federal Circuit appeals and a host of reexamination
5
proceedings initiated by Rambus’s litigation opponents. There is no justification for staying this
6
case while awaiting the Federal Circuit’s rulings. The Federal Circuit’s rulings could not render
7
any patents unenforceable as to Broadcom, which is not a party to the appeals. And the
8
reexaminations thus far have confirmed the great majority of Rambus’s reexamined FH patent
9
claims, the viability of which no longer “remains in doubt” (Opening Br. [D.N. 19], at 14) in the
10
manner Broadcom suggests justifies a stay.
11
For these reasons, and as more fully discussed below, Broadcom’s motion to stay claims
12
relating to the FH patents should be denied.
13
II. Factual Background
14
A. The District Court and ITC Actions
15
Rambus filed this suit against Broadcom on December 1, 2010. The suit alleges
16
infringement by Broadcom of nineteen patents from three distinct patent families: ten patents
17
claiming technology invented by Rambus founders Michael Farmwald and Mark Horowitz, three
18
patents claiming technology invented by Richard Barth and others, and six patents claiming
19
technology invented by William J. Dally. See Compl. ¶¶ 14–41.
20
That same day, Rambus filed a complaint in the ITC seeking an exclusion order with
21
respect to all of the Barth patents and three of the Dally patents at issue in this suit. See Thackray
22
Decl., Ex. A (ITC Complaint). The ITC initiated an investigation on December 29, 2010. See
23
Takahashi Decl., Ex. A (ITC Notice of Investigation). The FH patents are not at issue in the ITC
24
action. The table below lists all of the patents asserted in the instant action, with the patents that
25
Rambus also asserted in the ITC in grey.1
26
27 1
Broadcom’s similar table contains numerous errors. For clarity, Rambus lists the patents in each
28 family here.
2
Farmwald/ Horowitz Barth Dally
3
6,034,918 6,038,195 6,470,405 6,542,555
4 6,260,097 6,304,937 6,591,353 7,099,404
5 6,426,916 6,564,281 7,287,109 7,580,474
6 6,584,037 6,715,020 7,602,857
7 6,751,696 7,209,997 7,602,858
8 7,715,494
9
B. The Farmwald/Horowitz Patents
10
The ten FH patents are all part of the same patent family, derived from an application first
11
filed in the Patent Office in 1990. At that time, improvements in the performance of computer
12
processors (i.e., “CPUs”) were far outstripping improvements in performance of computer
13
memory, resulting in the rate of data transfer to and from the memory controller and the memory
14
becoming a bottleneck to improvements in system performance. The FH patents disclose
15
numerous inventions related to solving this “memory bottleneck” problem. The ten asserted FH
16
patents include inventions generally directed towards improving the function of a computer’s
17
memory controller, which manages communication between a computer’s CPU and its main
18
memory, such as may be found in features known as programmable latency, variable block size,
19
and double data rate.
20
C. The Barth Patents
21
The three Barth patents claim priority to an application filed in the Patent Office in 1995.
22
The Barth patents are generally directed to controlling data transfers to and from memory devices.
23
In synchronous memory systems, data transfers occur synchronously with respect to a clock
24
signal. The Barth patents disclose, among other things, using a strobe signal in addition to a
25
clock signal to transfer data. The strobe signal indicates when a memory device should sample
26
data. For example, the Barth patents disclose a memory controller that issues a write command to
27
a memory device and then issues a strobe signal to signal the memory device to sample data. The
28
1
use of a strobe signal, which was not disclosed in the FH patents, increases the efficiency and data
2
rates.
3
In January 2010, an administrative law judge at the ITC determined after a full hearing
4
that the Barth patents were valid, enforceable, and infringed by the memory controllers of
5
NVIDIA Corporation (“NVIDIA”). In August 2010, that decision was affirmed by the
6
Commission. See Takahashi Decl. Ex. B (Commission Opinion, No. 337-TA-661 (Aug. 10,
7
2010)).
8
D. The Dally Patents
9
The six Dally patents disclose novel ways to improve signal integrity and transmission in
10
high-speed, chip-to-chip communication systems. The Dally inventions are generally related to
11
peripheral interfaces, which provide connections between certain devices in a computer system,
12
including peripheral devices, such as graphics cards, sound cards, or Ethernet cards.
13
E. Broadcom’s Statements to the Federal Trade Commission and Its Failure to
14 Accept a License from Rambus
15 Broadcom has already effectively admitted that it infringes the FH and Barth patents.
16 Specifically, in an amicus brief filed with the Federal Trade Commission (“FTC”) in 2006,
17 Broadcom acknowledged that Rambus owns patents “that read on JEDEC’s SDRAM standards.”
18 Takahashi Decl. Ex. C (Brief of Amicus Curiae), at 1. Broadcom explained that these Rambus
19 patents include “any U.S. patents owned or assigned to Rambus that have a filing date or that
20 claim a priority date prior to June 17, 1996 and that read on any method or product implementing
21 a JEDEC SDRAM standard, including SDR, DDR, and DDR2” (id. at 1 n.3), which would
22 include the FH and Barth patents at issue in this litigation. Broadcom told the FTC that the
23 memory controllers in Broadcom’s products “comply with the JEDEC SDRAM standards”
24 because they “must be compatible with the memory they are controlling.” Id. Broadcom urged
25 the FTC to issue an order prohibiting Rambus from seeking royalties from Broadcom because
26 Broadcom uses “JEDEC-compliant designs,” and, therefore, “Rambus is in a position to assert
27 that [Broadcom’s] products incorporate Rambus technology.” Id. at 5–6 (emphasis added).
28
1
The FTC declined to impose the “no-enforcement” remedy advocated by Broadcom, and
2
the Court of Appeals for the District of Columbia ultimately vacated even the lesser remedy the
3
FTC had imposed, holding that the FTC had failed to demonstrate that Rambus’s conduct was
4
unlawful. See Rambus Inc. v. F.T.C., 522 F.3d 456, 469 (D.C. Cir. 2008). Subsequently, the
5
FTC dismissed its claims against Rambus. See Takahashi Decl. Ex. D (Order Returning Matter to
6
Adjudication and Dismissing Complaint).
7
Rambus has attempted to negotiate a license with Broadcom for the use of Rambus’s
8
patents. See, e.g., Compl. ¶ 50. Despite the fact that Broadcom previously admitted to the FTC
9
that Rambus’s patents read on Broadcom’s memory controllers, Broadcom has not accepted a
10
license and has continued its knowing infringement of the FH and other Rambus patents.
11
III. Broadcom Is Not Entitled to a Stay with Respect to the FH Patents
12
A. 28 U.S.C. § 1659 Does Not Apply to the FH Patents
13
Upon request by a defendant in parallel actions before a district court and the ITC, the
14
district court must stay its proceedings “with respect to any claim that involves the same issues
15
involved in the proceeding before the Commission” until the Commission’s determination
16
becomes final. 28 U.S.C. § 1659. As Broadcom itself concedes, the mandatory stay in 28 U.S.C.
17
§ 1659 does not apply to claims in the non-overlapping patents. See SanDisk Corp. v. Phison
18
Elecs. Corp., 538 F. Supp. 2d 1060, 1064 (W.D. Wis. 2008) (holding that § 1659 does not apply
19
to patent claims that are not pending before the ITC, regardless of whether they “share important
20
factual or legal disputes” with patent claims that are pending before the ITC); Saxon Innovations,
21
LLC v. Palm, Inc., No. 6:09-cv-272, 2009 WL 3755041, at *2 (E.D. Tex. Nov. 4, 2009). As
22
Rambus has not asserted the FH patents at the ITC, the mandatory stay provision in 28 U.S.C. §
23
1659 does not apply to the FH patents.
24
B. Broadcom Cannot Meet Its Burden of Showing that a Discretionary Stay Is
25 Warranted
26 1. Legal Standards for a Discretionary Stay
27 In the absence of a statutory basis for a stay, “the power to stay proceedings is incidental
28 to the power inherent in every court to control the disposition of the causes on its docket with
1
economy of time and effort for itself, for counsel, and for litigants.” Landis, 299 U.S. at 254. In
2
determining whether to stay an action, courts must weigh the following competing interests that
3
will be affected by the granting or refusal to grant a stay, namely:
4
1. “the possible damage which may result from the granting of a stay”;
5
2. “the hardship or inequity which a party may suffer in being required to go
6 forward”; and
7 3. “the orderly course of justice measured in terms of the simplifying or
complicating of issues, proof, and questions of law which could be expected to
8 result from a stay.”
9 CMAX, Inc. v. Hall, 300 F.2d 265, 268 (9th Cir. 1962) (citing Landis, 299 U.S. at 254–55).
10 “Overarching this balancing is the court’s paramount obligation to exercise jurisdiction timely in
11 cases properly before it.” Cherokee Nation of Okla. v. United States, 124 F.3d 1413, 1416 (Fed.
12 Cir. 1997); see also Kahn v. General Motors Corp., 889 F.2d 1078, 1080 (Fed. Cir. 1989)
13 (recognizing the existence of a “strong public policy favoring expeditious resolution of
14 litigation”).
15 Broadcom bears the burden of proving that such a discretionary stay is warranted. See
16 Clinton v. Jones, 520 U.S. 681, 708 (1997) (citing Landis, 299 U.S. at 255); Micron Tech. v.
17 Mosel Vitelic Corp., No. 98-cv-0293, 1999 WL 458168, at *3 (D. Idaho Mar. 31, 1999)
18 (“Defendants must establish that the Court should, in the exercise of its discretion, stay the instant
19 action pending resolution of the claims before the ITC because of judicial efficiency, the burden
20 of going forward with the instant action imposed upon Defendants and the lack of prejudice
21 imposed upon Plaintiff due to a delay in the resolution of this action.”). “[I]f there is even a fair
22 possibility that the stay for which [the movant] prays will work damage to someone else,” the
23 movant “must make out a clear case of hardship or inequity in being required to go forward.”
24 CMAX, 300 F.2d at 268 (quoting Landis, 299 U.S. at 255).
25 Broadcom’s motion to stay claims related to the FH patents should be denied because (1)
26 such a stay will not simplify or reduce the number of issues this Court must decide; (2) Rambus
27 will suffer prejudice if its patent infringement claims related to the FH patents are stayed; and (3)
28
1
Broadcom cannot show a clear case of hardship or inequity in being required to go forward on the
2
FH claims.
3
2. A Stay with Respect to the FH Patents Will Not Simplify or Reduce the
4 Number of Issues This Court Must Decide
5 Staying this case with respect to the FH patents during the pendency of the ITC
6 proceeding will not simplify or reduce the number of issues this Court must decide. Broadcom
7 argues that a stay would “avoid redundant litigation” because the FH patents and the Barth
8 patents relate to the same field of technology, are allegedly infringed by the same products, and
9 share certain claim terms. See Opening Br. [D.N. 19], at 7–11. These arguments fail for at least
10 the following reasons.
11 First, a closer examination of the two patent families reveals that they cover different
12 inventions. The FH patents read on improvements to memory controllers that claim priority to an
13 application filed five years before the earliest Barth application. None of the inventors of the FH
14 patents are inventors of the Barth patents. The FH patents claim different inventions from the
15 Barth patents, including features such as programmable latency, variable block size, and double
16 data rate. The Barth patents describe innovative features for controlling and communicating with
17 the computer’s main memory that were not disclosed in the FH patents — in particular the use of
18 a strobe signal to signal to the memory device when to sample data. Like the inventions they
19 describe, the specifications of the FH patents and Barth patents also are different. Compare
20 Takahashi Decl. Ex. E (U.S. Patent No. 6,715,020) (example of an FH patent) with Ex. F (U.S.
21 Patent No. 7,287,109) (example of a Barth patent).
22 Broadcom also urges the Court to stay this case so that the FH and Barth patents undergo
23 claim construction at the same time, but such a delay is unnecessary. Although the common
24 terms “memory device,” “memory cells,” and “code” appear in many of the FH and Barth patents
25 — as they do, of course, in perhaps hundreds of other unrelated patents — numerous claim terms
26 essential to an infringement decision on the FH patents are not present in the Barth patents and
27 vice versa. See Furminator, Inc. v. Ontel Prods. Corp., No. 06-cv-1294, 2006 WL 2711642, at
28 *2 (E.D. Mo. Sept. 21, 2006) (denying motion to stay where different claim language was at issue
1
in two pending infringement cases). Indeed, claim terms that are common across patents may
2
require different constructions consistent with the unique specifications of each patent. See, e.g.,
3
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he specification is always
4
highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best
5
guide to the meaning of a disputed term.”). Accordingly, this Court will need to consider claim
6
construction of the FH patents de novo, taking into consideration the different claims,
7
specifications, and prosecution histories of the FH and Barth patents.
8
Similarly, the questions surrounding infringement of the FH patents and Barth patents are
9
different. The memory controllers in Broadcom’s accused products infringe the Barth patents by,
10
for example, employing a strobe signal to tell the memory device when to sample data. See
11
Takahashi Decl. Ex. F (U.S. Patent No. 7,287,109) (example of a Barth patent). In contrast, the
12
memory controllers in Broadcom’s accused products infringe the FH patents by, for example,
13
instructing the memory device regarding the amount of data to be output in response to a read
14
command. See Takahashi Decl. Ex. E (U.S. Patent No. 6,715,020) (example of an FH patent).
15
The differences between these infringement inquiries further underscore the fact that permitting
16
this litigation to go forward with respect to the FH patents will not subject Broadcom or this
17
Court to overlapping and duplicative litigation.
18
Second, there is no precedent for staying claims related to one patent family in favor of an
19
ITC proceeding involving a distinct patent family. In each case cited by Broadcom in which the
20
court stayed infringement claims involving patents not before the ITC, the non-overlapping
21
patents were in the same patent family as the patents before the ITC. See, e.g., SanDisk Corp. v.
22
Phison Elecs. Corp., 538 F. Supp. 2d 1060, 1066 (W.D. Wis. 2008) (patents asserted in the
23
district court action were from the same patent family as the patents asserted in the ITC);
24
FormFactor, Inc. v. Micronics Japan Co., Ltd., No. 06-cv-07159 JSW, 2008 WL 361128, at *3
25
(N.D. Cal. Feb. 11, 2008) (same); Flexsys Americas, LP v. Kumho Tire, U.S.A., Inc., No. 05-cv-
26
156, 2005 WL 1126750, at *2 (N.D. Ohio Apr. 29, 2005) (same). Although Broadcom also cites
27
repeatedly to Iljin USA v. NTN Corp., No. 06-cv-10145, 2006 WL 568351 (E.D. Mich. Mar. 7,
28
1
2006) (see Opening Br. [D.N. 19], at 6, 10, 13), that case is even more inapposite; there, only one
2
patent was asserted in that district court action, and it was the same one asserted at the ITC. See
3
Iljin, 2006 WL 568351, at *1.2
4
Courts routinely deny motions to stay where the patent family asserted in the district court
5
differs from the patent family before the ITC — even where the technology and accused products
6
overlap with the ITC case. See, e.g., Am. Honda Motor Co. v. Coast Distribution Sys., No. 06-cv-
7
04752 JSW, 2007 WL 672521, at *2 (N.D. Cal. Feb. 26, 2007) (“While the ITC proceeding will
8
potentially involve the same products as the current suit, the patents relate to different portions
9
and pieces of the engine in the allegedly infringing products.”); LG Elecs., Inc. v. Eastman Kodak
10
Co., No. 09-cv-0344, 2009 WL 1468703, at *3 (S.D. Cal. May 26, 2009) (“[W]hile these
11
inventions may be used in the same devices, they do not perform the same function.”);
12
Humanscale Corp. v. CompX Int’l Inc., No. 09-cv-86, 2009 WL 1444312, at *2–3 (E.D. Va. May
13
21, 2009) (finding a stay would not result in “any significant efficiencies or economies,” despite
14
the fact that the non-overlapping patents “share the same subject matter, similar technologies, and
15
same products”); Mosel Vitelic Corp., 1999 WL 458168, at *3 (permitting discovery to proceed
16
where “all of the eleven patents at issue were infringed by two Mosel products and [] all of the
17
patents relate to the same basic technology field”). Judge Illston reached the same conclusion in
18
Rambus v. Nvidia, in which she denied NVIDIA’s motion to stay Rambus’s infringement claims
19
related to six FH patents pending the outcome of an ITC investigation involving the Barth patents
20
and reexaminations by the Patent and Trademark Office (“PTO”) of certain FH patents. See
21
Rambus, Inc. v. Nvidia Corp., No. 08-cv-3343 SI, 2008 WL 5427599, at *2 (N.D. Cal. Dec. 30,
22
2008). Moreover, at a recent case management conference in NVIDIA, Judge Illston indicated
23
24
2
25 In Iljin, the patent owner filed an ITC complaint, and the respondent in the ITC investigation
filed an action for declaratory relief in the district court, naming the patent owner as a defendant.
26 Because only one patent had been asserted in both actions, the patent owner argued that a stay
was appropriate under 28 U.S.C. § 1659; the alleged infringer argued that § 1659 makes no
27 provision for patent owners to seek a stay. See Iljin USA’s Opp’n Br., No. 06-10145, 2006 WL
678723 (filed Feb. 23, 2006); NTN’s Reply Br., No. 06-10145, 2006 WL 1036661 (filed Mar. 1,
28 2006).
1
that formal discovery should move forward on all issues not before the ITC, such as damages for
2
NVIDIA’s infringement of the FH patents. See Takahashi Decl. Ex. G (Letter to Judge Infante).
3
Finally, Broadcom’s assertion that a years-long stay will promote judicial efficiency is
4
unsupported because the ITC’s findings are not binding on this Court. See Texas Instruments,
5
Inc. v. United States Int’l Trade Comm’n, 851 F.2d 342, 344 (Fed. Cir. 1988) (“[T]his court has
6
stated that the ITC’s determinations regarding patent issues should be given no res judicata or
7
collateral estoppel effect.”) Nor will this Court be able to benefit from any determination by the
8
ITC of the parties’ positions with respect to the infringement, validity, or unenforceability of the
9
FH patents. Those FH-related issues are not before the ITC. No matter what the ITC decides
10
with respect to the Barth patents, infringement of the FH patents and damages will remain to be
11
adjudicated between the parties. The ITC has set a target date of approximately sixteen months
12
(May 4, 2012), which means that any final determination by the administrative law judge will be
13
filed no later than January 4, 2012 — well before trial in this case. See Takahashi Decl. Ex. H
14
(Order No. 14, No. 337-TA-753 (Feb. 15, 2011)). In the meantime, the ITC’s decision from an
15
earlier proceeding regarding the validity, infringement, and enforceability of the Barth patents is
16
available already. See Takahashi Decl. Ex. B (Commission Opinion, No. 337-TA-661 (Aug. 10,
17
2010)).
18
For all of these reasons, the orderly course of justice requires that the present case proceed
19
as to the FH patents without imposing an unwarranted delay.
20
3. The Balance of Hardships Weighs Against a Stay
21
Further militating against a stay is the risk to that evidence will be forgotten or lost and the
22
damage Rambus will suffer to its reputation, goodwill, and competitive position as a result of
23
Broadcom’s continuing infringement.
24
a. There Is a “Fair Possibility” that the Requested Stay Will
25 Harm Rambus’s Interests in this Litigation
26 Broadcom suggests that Rambus will suffer no harm if this case is stayed, as Rambus is
27 not seeking injunctive relief because the FH patents have largely expired. Rambus still faces
28 significant harm if a stay is granted, however. For example, a stay will increase the risk that
- 10 - BROADCOM’S MOTION TO STAY
1
evidence in the possession of third parties that is relevant to the case will be lost. The Supreme
2
Court has reversed entries of stays to avoid such harm, recognizing that delaying a trial increases
3
“the danger of prejudice resulting from the loss of evidence, including the inability of witnesses
4
to recall specific facts.” Clinton, 520 U.S. at 708. This danger is inherent in any stay and is a
5
factor that the Court must consider. Moreover, as the parties’ naturally experience turnover in
6
workforces during a stay, they may lose their ability to compel deposition and trial testimony
7
from employees who leave the companies. See STX, Inc. v. Trik Stik, Inc., 708 F. Supp. 1551,
8
1556 (N.D. Cal. 1988) (a party may compel the testimony of its employees at trial).
9
In response to Rambus’s allegations that Broadcom has infringed the FH patents,
10
Broadcom has asserted affirmative defenses including patent invalidity, estoppel, patent
11
exhaustion, patent misuse, first sale doctrine, unclean hands, and license. While the parameters of
12
many of these defenses is unclear from Broadcom’s bare-bones pleading, many of the documents
13
relevant to these defenses may be in the possession of third parties that are not obligated to
14
preserve that evidence. For example, documents relevant to the license defense that Broadcom
15
asserts could belong to such third parties. Courts have recognized that the ITC process, including
16
potential appeals to the Federal Circuit, may be lengthy. See, e.g., Humanscale Corp., 2009 WL
17
1444312, at *3. Proceeding to discovery and trial on these issues without delay is the surest way
18
to mitigate this risk.
19
Furthermore, Broadcom’s continuing infringement and its refusal to pay royalties for its
20
past infringement harms Rambus’s goodwill and reputation. Rambus depends on its image as a
21
leader in high-performance memory interface design to attract licensees as well as research and
22
development opportunities. Broadcom’s refusal to license the very technology it has already
23
admitted infringing sends a false message to other would-be licensees that Rambus’s technology
24
can be used without prompt payment to Rambus. This perception will be exacerbated if
25
Broadcom’s motion for a stay is granted, further delaying Rambus’s opportunity to vindicate
26
itself as a technology leader. See Commonwealth Scientific & Indus. Research Org. v. Buffalo
27
Tech. Inc., 492 F. Supp. 2d 600, 604 (E.D. Tex. 2007) (finding irreparable harm based in part
28
1
upon the harm that the defendant’s infringement caused to the patentee’s reputation); Baden
2
Sports, Inc. v. Kabushiki Kaisha Molten, No. C06-cv-210, 2007 WL 2790777, at *3 (W.D. Wash.
3
Sept. 25, 2007) (finding hardship to patentee where infringement would “continue to erode the
4
good will that [the patentee] has created with its customers and retailers”). Moreover, the very
5
delay in paying Rambus for the use of its inventions that Broadcom seeks would result in harm to
6
Rambus as the money it is owed would be unavailable to fund its core research and development
7
activities and pursue new business opportunities.
8
b. Broadcom Cannot Show a Pressing Need for a Stay
9
Because the requested stay will harm Rambus, Broadcom must make out a clear case of
10
hardship or inequity in being required to go forward in order to justify the stay.
11
Broadcom falls short of satisfying this burden. The only alleged “harm” that Broadcom
12
has articulated is the risk of duplicative discovery and briefing. As explained in detail in Part
13
III.B.2 above, however, this alleged “harm” is purely illusory. There are ten FH patents in the
14
present action for which discovery is needed, in which the issues of infringement, validity,
15
enforceability, patent exhaustion, unclean hands, prosecution laches, prosecution history estoppel,
16
and license would not necessarily overlap with the Barth patents. Consequently, discovery into
17
Broadcom’s products and its affirmative defenses that is taken now in relation to the FH patents
18
will help to streamline the litigation after the ITC proceedings conclude. Additionally, to the
19
extent that there is discovery that is common to this case and the ITC proceeding, this should
20
create efficiency rather than hardship for Broadcom because common material collected for the
21
ITC action can be produced in this action without having to collect it again.
22
And while Broadcom makes much of the fact that, absent a stay, it would have to defend
23
itself in both this Court and the ITC, see Opening Br. [D.N. 19], at 11–12, this should not be a
24
problem for a large corporation like Broadcom that is constantly involved in litigating in multiple
25
fora around the country.3 Even if simultaneous proceedings were a problem, it is one entirely of
26
27 3
For example, with respect to patent litigation alone, Broadcom is currently litigating other cases
in this district, see, e.g., U.S. Ethernet Innovations, LLC v. Acer, Inc. et al., 10-cv-03724-JW
28 (N.D. Cal.), as well as cases in far-flung jurisdictions, see, e.g., Advanced Encoding Sol’ns LLC v.
1
Broadcom’s own making. Broadcom chose to infringe patents belonging to multiple families. It
2
has known since at least 2006 that its products infringe at least the FH and Barth patents and that
3
its infringement risked manifold litigation. Rambus is entitled to pursue expeditious injunctive
4
relief at the ITC in connection with the Barth and Dally patents, while simultaneously litigating
5
its claims against Broadcom for infringing the FH patents in the district court. In any event, “the
6
hardship attendant with being forced to defend a lawsuit is irrelevant when considering whether
7
to grant a stay.” American Honda, 2007 WL 672521, at *2 (citing Lockyer v. Mirant Corp., 398
8
F.3d 1098, 1112 (9th Cir. 2005)). Because being required to defend a suit and proceed to trial,
9
without more, does not constitute a clear case of hardship or inequity, Broadcom cannot satisfy its
10
Landis burden.
11
4. A Discretionary Stay Pending the Federal Circuit’s Decision in the
12 Micron/Hynix Appeals Is Not Warranted
13 Broadcom also urges the Court to stay these proceedings pending the Federal Circuit’s
14 decisions in two cases: Micron Tech., Inc. v. Rambus Inc. (Fed. Cir. Appeal No. 2009-1263) and
15 Hynix Semiconductor, Inc. v. Rambus Inc. (Fed. Cir. Appeal No. 2009-1299).
16 A stay of the instant action pending the Federal Circuit’s dispositions in the Micron/Hynix
17 appeals is unwarranted. Broadcom has failed to identify any particular prejudice it will suffer if
18 the action is not stayed during the Micron/Hynix appeals; it merely asserts that the Federal
19 Circuit’s decisions will be controlling on this Court as to Broadcom’s defense of unclean hands.
20 Broadcom misstates the import of the Federal Circuit’s impending decisions. A Federal Circuit
21 decision in Rambus’s favor could indeed deal a fatal blow to Broadcom’s defense of unclean
22 hands; however, any ruling against Rambus would not relieve Broadcom of its burden of proving
23 required fact-intensive elements specific to Broadcom, such as how its defense in this case has
24 allegedly been prejudiced. Such Broadcom-specific issues are not in front of the Federal Circuit.
25 A stay pending the outcome of the Federal Circuit’s decisions is unwarranted and prejudicial to
26 Rambus for the reasons already described.
27
28 Broadcom Corp., 11-cv-00024-LED (E.D. Tx).

1
While Broadcom asserts that “several” cases have been stayed pending the Federal Circuit
2
decisions, it can cite only two, one of which involves Hynix Semiconductor Inc. (“Hynix”) and
3
the other Micron Technology (“Micron”). See Opening Br. [D.N. 19], at 14. Thus, unlike in the
4
instant case, the Federal Circuit’s decision could control the previously stayed cases because they
5
involve the parties to the pending appeals. Broadcom also cites Rambus Inc. v. NVIDIA Corp.,
6
asserting that, in that case, the court “stay[ed] motion practice and only allow[ed] limited
7
discovery.” Id. Broadcom thus acknowledges that the court in NVIDIA refused to grant the
8
complete stay that Broadcom seeks here. Indeed, as discussed above, Judge Illston recently
9
affirmed that formal discovery should move forward on all issues not before the ITC, including
10
Rambus’s damages resulting from NVIDIA’s infringement of the FH patents. See Takahashi
11
Decl. Ex. G (Letter to Judge Infante). Likewise, this Court should allow litigation to proceed
12
with respect to the FH patents.
13
5. A Discretionary Stay Pending Reexamination Is Not Warranted
14
Finally, Broadcom argues that a stay of the instant action is appropriate because nine of
15
the ten asserted FH patents are currently subject to reexamination proceedings. Courts have
16
typically considered the following factors in determining whether to stay proceedings pending
17
reexamination of the patents-in-suit: (1) whether a stay would unduly prejudice or present a clear
18
tactical disadvantage to the nonmoving party; (2) whether a stay will simplify the issues in
19
question and trial of the case; and (3) the stage of litigation. Telemac Corp. v. Teledigital, Inc.,
20
450 F. Supp. 2d 1107, 1111 (N.D. Cal. 2006). “A court is under no obligation to delay its own
21
proceedings by yielding to ongoing PTO patent re-examinations, regardless of their relevancy to
22
infringement claims which the court must analyze.” Fresenius Med. Care Holdings, Inc. v.
23
Baxter Int’l, Inc., No. C 03-1431 SBA, 2007 WL 1655625, at *3 (N.D. Cal. June 7, 2007); accord
24
Sorensen v. Lexar Media, Inc., No. 08-cv-00095 JW, 2008 U.S. Dist. LEXIS 87511, at *2–*3
25
(N.D. Cal. Apr. 30, 2008).
26
27
28
1
Indeed, this Court has expressed concern over the inefficiency of the reexamination
2
process and the growing use of seeking a stay pending reexamination as a dilatory tactic.
3
Magistrate Judge LaPorte recently observed:
4
There appears to be a growing concern among at least some judges
5 in this district that, on balance, staying a case even in its early
stages pending reexamination has not led to the just, speedy, and
6 efficient management of the litigation, but instead has tended to
prolong it without achieving sufficient benefits in simplification to
7 justify the delay. This concern stems in part from the unpredictable
but often lengthy duration of the stay due to the length of PTO
8 reexamination proceedings, as discussed in further detail below, in
contrast to the salutary effect of firm deadlines on efficient case
9 management.
10
Network Appliance, Inc. v. Sun Microsystems, Inc., No. 07-cv-06053 EDL, 2008 WL 2168917, at
11
*3 (N.D. Cal. May 23, 2008).
12
Despite the fact that this case is in the early stages, other considerations weigh against a
13
stay. For the past several years, a number of Rambus’s litigation opponents — including Micron,
14
Hynix, and NVIDIA — have filed multiple reexamination challenges at the PTO. Between 2007
15
and 2010, twenty requests for reexamination were filed with respect to the ten FH patents asserted
16
in this action. The PTO denied three requests and initiated seventeen reexamination proceedings.
17
So far, of the reexamination proceedings that either have been completed or are pending on
18
appeal, PTO examiners have rejected claims in only two proceedings. Those two decisions,
19
involving U.S. Patent Nos. 6,034,918 (the “’918 patent”) and 6,260,097 (the “’097 patent”), are
20
currently on appeal to the Federal Circuit and the Board of Patent Appeals and Interferences
21
(“BPAI”), respectively.4 Meanwhile, PTO examiners have confirmed all of the challenged claims
22
in ten other reexaminations.5 The table below shows the current status of all seventeen
23
reexaminations:
24
25
26
4
Broadcom incorrectly suggests that claims of the ’037 patent were rejected by the examiner, but
27 in fact they were confirmed. Micron has appealed this determination to the BPAI.
5
28 Certain reexaminations involving the same patents were merged.
1 Reexam Control
Patent Filed Status6
Number Status of Claims
2 6,034,918 2/23/2009 90/010,420
Federal Claims 24 and 33 confirmed;
Circuit claim 18 rejected
3 6,038,195 12/19/2007 90/010,082 Complete All challenged claims confirmed
6,260,097 1/9/2009 95/001,134 BPAI Claims 6, 9, 13, 14–25, 27, 33
4 confirmed; claims 1–5, 7, 8, 10–
12, 14, 26, 28–32, 34, 35
5 rejected
6 6,304,937 5/13/2009 90/010,537 Complete All challenged claims confirmed
5/12/2009 95/001,188 Examiner Pending
7 6,426,916 11/20/2008 95/001,122 BPAI All challenged claims confirmed
8/22/2007 95/000,166 BPAI All challenged claims confirmed
8
6,564,281 5/14/2009 95/000,470 Examiner Pending
9 5/14/2009 90/010,540 Complete All challenged claims confirmed
6,584,037 11/7/2008 95/001,108 BPAI All challenged claims confirmed
10 3/3/2009 95/001,154 BPAI All challenged claims confirmed
6,715,020 10/1/2007 95/001,008 Examiner Pending
11
10/20/2010 95/001,472 Examiner Pending
12 6,751,696 11/6/2008 95/001,105 BPAI All challenged claims confirmed
12/31/2008 95/001,133 BPAI All challenged claims confirmed
13 7,209,997 5/15/2009 95/000,471 Examiner Pending
5/15/2009 90/010,542 Complete All challenged claims confirmed
14
15 Broadcom’s argument for a stay pending reexamination is largely premised on the PTO
16 rejecting the claims being reexamined.7 A stay pending reexamination may simplify the issues
17 for trial when claims are invalidated in reexamination, thereby perhaps mooting the need for a
18 trial on those particular claims. However, as is readily apparent from the table above, no such
19 wholesale invalidation will occur with respect to the FH patents. The majority of the FH patents
have survived reexamination so far, and it is likely that many if not most of the FH patents will
20
emerge from reexamination unscathed. “[W]hen reexamination potentially will eliminate only
21
one issue out of many, a stay is not warranted.” IMAX Corp. v. In-Three, Inc., 385 F. Supp. 2d
22
1030, 1032 (C.D. Cal. 2005).
23
24 6
“Federal Circuit” indicates that an appeal is pending before the Federal Circuit; “BPAI”
25 indicates an appeal is pending before the BPAI; “Examiner” indicates that a final office action by
the examiner assigned to the reexamination has not issued yet; and “Complete” indicates that the
26 reexamination has been completed and no appeals are pending.
7
Claims cannot be amended during reexamination for patents that have expired or that will expire
27 during the reexamination. See 37 C.F.R. § 1.530(j) (“No amendment may be proposed for entry
in an expired patent. Moreover, no amendment, other than the cancellation of claims, will be
28 incorporated into the patent by a certificate issued after the expiration of the patent.”).
1
In the meantime, Rambus would be prejudiced by a stay. Several reexaminations are still
2
pending before the examiner; appeals to the BPAI and the Federal Circuit may follow the
3
examiners’ decisions in those proceedings. See 35 U.S.C. § 134(b); 35 U.S.C. § 141. In the
4
lengthy delay that would inevitably ensue if a stay were granted until all of the reexaminations
5
conclude, evidence could be lost and witnesses’ memories could fade. See Alltech, Inc. v.
6
Cenzone Tech, Inc., No. 06-cv-0153, 2007 WL 935516, at *2 (S.D. Cal. Mar. 21, 2007). In
7
addition, Rambus will continue to lose reputation and goodwill due to Broadcom’s continued
8
refusal to pay for the infringement to which it has already admitted.
9
Moreover, Broadcom’s argument implies that this case could be stayed indefinitely as
10
other prospective licensees file serial reexamination requests. Given the flood of reexamination
11
requests since 2007, this distinct possibility further militates against granting Broadcom’s motion.
12
In contrast, denying the stay would allow this court to “make substantial progress in interpreting
13
the patent[s] at issue and otherwise moving the action toward the resolution.” Sorenson, 2008
14
U.S. Dist. LEXIS 87511, at *3 (denying request for stay); Boston Scientific Corp. v. Micrus
15
Corp., No. 04-cv-04072 JW, 2006 WL 708669, at *2 (N.D. Cal. Mar. 21, 2006) (denying motion
16
to stay).
17
IV. Conclusion
18
For the reasons set forth above, Rambus respectfully submits that the Motion to Stay
19
should be denied with respect to the FH patents.
20

DATED: February 17, 2011
22 By: /s/ Heather E. Takahashi
23 Heather E. Takahashi
24 Attorneys for Rambus Inc.
25
26
27
28

Rambus'S Opposition To Broadcom'S Motion To Stay CASE NO. 3:10-CV-05437-RS

Uploaded by

Document Information

Original Description:

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Rambus'S Opposition To Broadcom'S Motion To Stay CASE NO. 3:10-CV-05437-RS

Uploaded by

Copyright:

Available Formats

Case3:10-cv-05437-RS Document23 Filed02/17/11 Page1 of 21

1 GREGORY P. STONE (SBN 078329)

5 Am. Honda Motor Co. v. Coast Distribution Sys.,

10 Cherokee Nation of Okla. v. United States,

15 Commonwealth Scientific & Indus. Research Org. v. Buffalo Tech. Inc.,

18 FormFactor, Inc. v. Micronics Japan Co., Ltd.,

23 Humanscale Corp. v. CompX Int’l Inc.,

1 Kahn v. General Motors Corp.,

6 Micron Tech. v. Mosel Vitelic Corp.,

11 Rambus, Inc. v. Nvidia Corp.,

16 Sorensen v. Lexar Media, Inc.,

21 Texas Instruments, Inc. v. United States Int’l Trade Comm’n,

27 37 C.F.R. § 1.530(j) ...................................................................................................................... 16

26 Broadcom uses “JEDEC-compliant designs,” and, therefore, “Rambus is in a position to assert

13 (recognizing the existence of a “strong public policy favoring expeditious resolution of

24 CMAX, 300 F.2d at 268 (quoting Landis, 299 U.S. at 255).

10 the following reasons.

21 Patent No. 7,287,109) (example of a Barth patent).

26 Rambus for the reasons already described.

28 Broadcom Corp., 11-cv-00024-LED (E.D. Tx).

21 MUNGER, TOLLES & OLSON LLP

24 Attorneys for Rambus Inc.

You might also like