Memorandum of Points and Authorities in Support of Rambus Inc.'S Motion To Compel Samsung To Produce Discovery Relating To (1) Sales of Accused Products and (2) Memory Controllers

Case 5:05-cv-00334-RMW Document 2021-2 Filed 08/07/2008 Page 1 of 17
1 Gregory P. Stone (SBN 078329) Pierre J. Hubert (Pro Hac Vice)

Steven M. Perry (SBN 106154) Craig N. Tolliver (Pro Hac Vice)
2 David C. Yang (SBN 246132) McKOOL SMITH PC
MUNGER, TOLLES & OLSON LLP 300 West 6th Street, Suite 1700
3 355 South Grand Avenue, 35th Floor Austin, TX 78701
Los Angeles, CA 90071-1560 Telephone: (512) 692-8700
4 Telephone: (213) 683-9100 Facsimile: (512) 692-8744
Facsimile: (213) 687-3702 Email: phubert@mckoolsmith.com
5 Email: gregory.stone@mto.com Email: ctolliver@mckoolsmith.com
Email: steven.perry@mto.com
6 Email: david.yang@mto.com
7 Peter A. Detre (SBN 182619)
Carolyn Hoecker Luedtke (SBN 207976)
8 Jennifer L. Polse (SBN 219202)
MUNGER, TOLLES & OLSON LLP
9 560 Mission Street, 27th Floor
San Francisco, CA 94105
10 Telephone: (415) 512-4000
Facsimile: (415) 512-4077
11 Email: peter.detre@mto.com
Email: carolyn.luedtke@mto.com
12 Email: jen.polse@mto.com
13 Attorneys for RAMBUS INC.
14 UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
15
RAMBUS INC., CASE NO. C 05-00334 RMW
16
Plaintiff, MEMORANDUM OF POINTS AND
17 v. AUTHORITIES IN SUPPORT OF
RAMBUS INC.’S MOTION TO
18 HYNIX SEMICONDUCTOR INC., et al, COMPEL SAMSUNG TO PRODUCE
DISCOVERY RELATING TO (1)
19 Defendants. SALES OF ACCUSED PRODUCTS;
and (2) MEMORY CONTROLLERS
20
Date: August 25, 2008
21 Time: 8:30 a.m.
Location: Telephonic Hearing
22
Judge: Hon. Read Ambler (Ret.)
23
RAMBUS INC., CASE NO. C 05-02298 RMW
24
Plaintiff,
25 v.
26 SAMSUNG ELECTRONICS CO., LTD., et al,
27 Defendants.
28
RAMBUS’S MOTION TO COMPEL SAMSUNG TO
PRODUCE DISCOVERY RE SALES AND MEMORY
5689576.2
CONTROLLERS; NOS. C 05-00334 RMW, C 05-02298
RMW
1 I. INTRODUCTION
2 Pursuant to Federal Rule of Civil Procedure 37(a), Rambus Inc. (“Rambus”)
3 hereby moves for an order compelling Samsung Electronics Co., Ltd., Samsung Electronics Co.,
4 Ltd., Samsung Electronics America, Inc., Samsung Semiconductor, Inc., and Samsung Austin
5 Semiconductor, L.P. (“Samsung”), to provide discovery related to the sales of its accused
6 products, and also to produce both sales and technical information relating to its memory
7 controllers.
8 There is no dispute that sales information pertaining to Samsung’s accused
9 memory devices is relevant and discoverable. Indeed, except with respect to memory controllers,
10 discussed separately below, Samsung has not explicitly refused to produce the sales information
11 requested by Rambus. Samsung has not even refused to produce that sales data in native format.
12 Rather, Rambus has been forced to bring this motion because although Samsung has made
13 repeated representations that it is “diligently” investigating the available information, and
14 “considering” Rambus’s native document request, it has not provided any firm response as to
15 what it will produce and by when. With the September 5 deadline for opening expert reports
16 rapidly approaching, Rambus does not have time to engage in this all-too-familiar cat and mouse
17 game with Samsung. As this Court has previously recognized, the duty to meet and confer in
18 good faith does not require Rambus to sit on its hands while Samsung takes its time to “explore
19 and evaluate” the issues Rambus has raised, particularly where Samsung agreed to produce the
20 requested sales information several months ago in response to Rambus’s discovery requests but
21 failed to include it in its document production, and where it does not now raise any objection to
22 producing the information. There is no legitimate reason for Samsung not to produce,
23 immediately, the requested sales data relating to the accused products -- undoubtedly maintained
24 in an electronic database or set of databases-- in native format as the other manufacturers
25 voluntarily have agreed to do.
26 The situation with respect to Samsung’s memory controllers is different. Samsung
27 argues that it is not required to produce any information relating to its memory controllers
28
5689576.2 -1- CONTROLLERS; NOS. C 05-00334 RMW, C 05-02298
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1 because these products were not specifically “charted” in Rambus’s Preliminary Infringement
2 Contentions, despite the fact that Samsung’s memory controllers were explicitly identified as
3 “Accused Products” in the operative Complaint and in Rambus’s discovery requests, and the fact
4 that Rambus’s Preliminary Infringement Contentions did actually explain how Samsung’s
5 memory controllers satisfied the elements of the relevant claims. As explained herein, Samsung’s
6 argument is contrary to the Patent Local Rules themselves (Rule 2-5), and settled case law. The
7 Federal Circuit and courts of this district have addressed this precise issue and expressly held that
8 discovery is governed by the Federal Rules of Civil Procedure, not the Patent Local Rules and is
9 thus not restricted by Preliminary Infringement Contentions.
10 Rambus respectfully requests that the Special Master put an end to Samsung ’s
11 heel dragging with respect to sales data and refusal to produce discovery on its memory
12 controllers, and compel Samsung immediately to produce the requested discovery.
13 II. STATEMENT OF FACTS
14 Rambus has accused of patent infringement in the -344 and -2298 cases a number
15 of Samsung’s DRAM products, including products known as SDRAM, DDR, DDR2, DDR3,
16 SGRAM, GDDR, GDDR2, GDDR3, and GDDR4, and “memory controllers” for these DRAM
17 components. (First Amended Complaint for Patent Infringement and Jury Demand in 334 action
18 dated 6/05 at ¶ 13; Rambus, Inc.’s Reply to Samsung’s Second Amended Answer and
19 Counterclaims and Rambus’s Counterclaims on Reply in 334 action dated 7/07 at 128, ¶ 2;
20 Complaint for Patent Infringement and Jury Demand in 2298 action dated 6/05 at ¶ 10.) Indeed,
21 Rambus has served several rounds of document requests and interrogatories specifically
22 identifying the various iterations of DRAM memory components, and their associated memory
23 controllers in its operative definition of “Accused Products.” See, e.g., Jeffries Decl., Ex. A
24 (Rambus’s First Set Of RFPs to Samsung in 334 action dated 10/05) ¶ 8 (defining “Accused
25 Products” to include various memory components, memory modules and memory controllers);
26 Id., Ex. B (Rambus’s Second Set of RFPs to Samsung in 334 action dated 6/06) ¶ 8 (same); Id.,
27 Ex. C (Rambus’s Third Set of RFPs to Samsung in 334 action dated 3/07) ¶ 8 (defining “Accused
28 Products” to include various memory components and memory controllers); Id., Ex. D (Rambus’s
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1 Fourth Set of RFPs in 334 action dated 5/08) ¶ 7 (defining “Accused Products” to include various
2 memory components, memory controllers, mobile versions of those products); Id., Ex. E
3 (Rambus’s Sixth Set of RFPs in 334 action dated 7/08) ¶ 9 (including GDDR5 memory
4 controllers in the definition of “GDDR5 Products”); Id., Ex. F (Rambus’s First Set of RFPs to
5 Samsung in -2298 action dated 10/05) ¶ 8 (same as definition in First Set of RRPs in -334 action);
6 Id., Ex. G (Corrected Definitions 7 and 8 to Rambus Inc’s First Set of RFPs to Samsung in 2298
7 action dated 5/06) ¶ 8 (including memory controllers for SDR SDRAM and DDR SDRAM in the
8 definition of “Accused Products”); Id., Ex. H (Rambus’s Second Set of RFPs to Samsung in 2298
9 action dated 6/06) ¶ 8 (same); Id., Ex. I (Rambus’s Third Set of RFPs to Samsung in 2298 action
10 dated 3/07) ¶¶ 8,9 (defining “Accused Products” and “Other Accused Products” to include the
11 various iterations of DRAM memory components and memory controllers).
12 Rambus’s document requests and interrogatories have sought technical
13 information about the Accused Products (as defined in the requests and interrogatories), as well as
14 sales data regarding the Accused Products. See, e.g., Ex. D, RFP Nos. 1-A, 2-A, 4-A (seeking
15 technical information), and RFP Nos. 130, 131, 70-A (seeking sales information). In response to
16 these document requests, Samsung provided boilerplate objections, followed by agreements to
17 produce responsive documents. E.g., Jeffries Decl. Ex. J (Samsung’s Responses and Objections
18 to Rambus, Inc.’s Fourth Set of Requests for Production of Documents in 334 action dated 6/08).
19 On July 14, Rambus sent a letter to Samsung to inform Samsung of deficiencies in
20 its document production. Jeffries Decl., Ex. K. That letter focused primarily on sales data that
21 had not been produced. Specifically, Rambus complained that Samsung’s document production
22 contained very little sales data at all for time periods after 2002, and that the pre-2002 sales data
23 was incomplete. Id. at 2. Rambus requested a response to that letter by July 18. Id. Samsung
24 produced three sales related documents on July 18, but did not respond to the July 14 letter.
25 Jeffries Decl. ¶ 3. Counsel for Rambus contacted counsel for Samsung on Thursday, July 24, and
26 the parties set up a meet and confer to discuss the deficiencies of Samsung’s production on
27 Monday, July 28. See Jeffries Decl., Exs. L, M. In advance of that meet and confer, counsel for
28 Rambus sent Samsung a further discovery letter, outlining why Samsung’s three recently
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1 produced documents failed to address the deficiencies of Samsung’s earlier production and to
2 provide Rambus the information it needed. Jeffries Decl., Ex. N.
3 The parties conducted a telephonic meet and confer on Monday, July 28th. In that
4 discussion, Samsung’s counsel represented that he was in the process of trying to gain a better
5 understanding of the type of sales information Samsung maintains and how it maintains that
6 information, and that he would contact counsel for Rambus within a few days to further the
7 discussion. Jeffries Decl., ¶ 6; see Ex. O. Counsel for Rambus explained, again, the sales data it
8 required, and repeated the request it had made in both its July 14 and July 25 letters that the sales
9 data be provided in native electronic format. Jeffries Decl. ¶ 6; see Exs. K, N, and O. Counsel
10 for Rambus made clear that Rambus was not seeking all responsive materials, but rather that it
11 was primarily interested in summary sales data that Samsung likely maintained in a database, and
12 that while it would want to see a sampling of underlying and/or supporting data (such as invoices)
13 to understand how sales information is translated into the summary format, it would not seek all
14 or even a substantial quantity of that underlying data. Jeffries Decl. ¶ 6; see Ex. O. Counsel for
15 Samsung expressed an understanding of the information Rambus was seeking. He neither stated
16 that he believed the requests to be unreasonable nor that Samsung would refuse to satisfy any of
17 them. Jeffries Decl. ¶ 6, see Ex. O. Although Samsung’s responses to interrogatories 6 and 8 --
18 also relating to sales information -- were not explicitly discussed during the meet and confer, they
19 had been raised in the July 25 letter, and were again raised in the letter summarizing the July 28
20 meet and confer. Exs. N, O.
21 As to memory controllers, Samsung’s counsel took the position during the meet
22 and confer that Samsung would not produce any discovery (sales or technical data) because
23 Rambus had not specifically “charted” Samsung’s memory controllers in its Preliminary
24 Infringement Contentions. Samsung’s counsel further stated that he would set forth in writing
25 Samsung’s complete position, including any legal authority in support of that position, by
26 Wednesday, July 30. Jeffries Decl. ¶ 7; see Ex. O.
27 At the close of the meet and confer, and in the July 28 letter, counsel for Rambus
28 emphasized its urgent need for the requested materials due to the upcoming expert report
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1 deadlines. Samsung’s counsel said that he understood and that Samsung was working as
2 diligently as possible. Jeffries Decl. ¶ 8; see Ex. O.
3 In the days that followed the July 28 meet and confer, counsel for Samsung
4 continued to represent that Samsung was “in the process of evaluating Rambus’s requests,” and
5 would “continue to explore and evaluate the issues raised in [Rambus’s] letters,” Jeffries Decl.,
6 Ex. P at 1, but failed to provide any substantive response as to the sales materials it would
7 produce, or to provide a date certain as to when it would be willing to produce any additional
8 materials. See id. Instead, Counsel for Samsung offered a rationale for stalling Samsung’s
9 production (by attempting to connect it to unrelated discovery issues), presented a speculative
10 argument regarding the possible difficulty to Samsung of tracking its own products, attempted to
11 shift the burden to Rambus to justify discovery relating to controllers (which Rambus had already
12 explained), and failed to follow through on his promise to call Rambus’s counsel with
13 information regarding Samsung’s sales information database. Jeffries Decl., ¶ 12 & Exs. P, Q.
14 On July 31, Samsung did provide its articulation of the basis for its refusal to respond to
15 discovery relating to memory controllers, which was essentially a repeat of what Samsung’s
16 counsel had said during the telephonic meet and confer on July 28 regarding their non-charting in
17 Rambus’s Preliminary Infringement Contentions. Jeffries Decl., Ex. Q. On that same date,
18 Samsung served Rambus with Objections and Responses To Rambus Inc’s Notice Of Deposition
19 Of Samsung Pursuant to Fed. R. Civ. P. 30(b)(6), refusing to provide a witness on two topics
20 relating to Samsung’s memory controllers on the same grounds. Jeffries Decl., Ex. R.
21 Also on July 31, Rambus’s counsel left a voice mail message regarding the
22 promised sales database information update, but that message went unreturned. Jeffries Decl. ¶
23 15. In fact, as of this writing, Samsung has still not provided Rambus with any explanation of the
24 way in which Samsung maintains its sales information and what information is available to be
25 produced to Rambus in what format, despite its repeated representations that it is working
26 diligently to obtain this very information. Id. Just hours before Rambus’s papers on this motion
27 were due, Samsung produced ten additional reports apparently generated from its electronic
28 database(s) in pdf format. While these reports contain more of the data Rambus has been seeking
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1 from Samsung, they remain incomplete. Id., ¶ 17. Additionally, the fact that they are incomplete
2 at over 900 pages further mandates in favor of native file production.
3 Rambus believes that it has met and conferred in good faith with Samsung and that
4 this dispute is now ripe for resolution by this Court.
5 III. ARGUMENT
6 Rambus is entitled to the narrowly tailored supplemental discovery it seeks

7 relating to Samsung’s sales data, and to technical and sales data relating to Samsung’s memory
8 controllers. Samsung’s failure to promptly provide information regarding its sales data, and to
9 produce that information in native format is not justified where, as here, the requested
10 information is highly relevant to the damages analysis to be performed by Rambus’s expert prior
11 to September 5, and is not burdensome to produce. Samsung’s flat refusal to provide discovery
12 on memory controllers also is not justified. As recognized by the courts of the Northern District
13 and the Federal Circuit, the discovery rules expressly provide for discovery that is more
14 expansive than “charted” products in Preliminary Infringement Contentions.1
15 A. The Specific Sales Data Sought By Rambus Is Highly Relevant To This Action
and Is Not Burdensome To Produce
16
1. Samsung Has Agreed To Provide The Requested Information
17
There is no dispute that data relating to Samsung’s sales of its accused products
18
from 2000 to the present is discoverable. Such data is relevant to the reasonable royalty to be
19
paid by Samsung on products that are found to infringe Rambus’s asserted patent claims. See
20
generally Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). As
21
outlined in Rambus’s letters of July 14 and 25, Rambus requires internal Samsung documentation
22
and/or database information that will enable it and its experts to understand the details of
23
Samsung’s sales of accused products, including: the volume of each of its DRAM memory
24
components (preferably by product code/number), modules, and memory controllers made and
25
26 1
On August 1, Rambus timely served its Final Infringement Contentions, which identify
27 Samsung’s memory controllers as Accused Instrumentalities pursuant to Patent Local Rule 3-6. A
true and correct copy of relevant portions of Rambus’s Final Infringement Contentions is attached
28 to the Jeffries Declaration as Exhibit S.
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1 sold worldwide, the place of each manufacture and sale, and the dollar amount of these sales.
2 Insofar as the total volume of products made and sold is concerned, Rambus requires information
3 not only about Samsung’s stand alone products, but also information relating to embedded
4 DRAM products, system on chip (SOC) products, and products transferred among Samsung units
5 or related entities for inclusion in end products such as televisions and cell phones. See Jeffries
6 Decl., Exs. K, N.
7 All of this information was requested by Rambus in document requests and
8 interrogatories propounded long ago.2 E.g., Jeffries Decl., Exs. A-D (RFP Nos. 11, 26, 47, 48,
9 50, 51, 52, 58, 69, 70, 70A, 71, 72, 130, 131 ).3 In its written responses to document requests,
10 Samsung provided general boilerplate objections, but agreed to produce responsive documents.
11 Jeffries Decl., Exs. J, T-W. Samsung has not, even during the recent meet and confer refused to
12 produce any of these categories of information. In fact, in response to Rambus’s July 14 letter,
13 Samsung produced one document that contains some, but not all, of this very information. E.g.,
14 Jeffries Decl., Ex. X. And, in the hours before these motion papers were due, Samsung produced
15 ten additional reports, apparently from Samsung’s sales database(s), which contain some of the
16 additional information Rambus has been requesting. By this motion, Rambus is simply seeking
17 the complete set of information of which these recently produced reports are a part. See Jeffries
18 Decl., Ex. N.
19 2. Samsung Should Be Required To Immediately Produce Its Sales Data
In Native Electronic Format
20
The Special Master has previously held that although the parties agreed to produce
21
documents as TIFF images as a “default” form of production, they did not waive their right under
22
23 2
Rambus recently served its Seventh Set of RFPs on July 22, 2008. This Seventh Set contains
two requests, RFP Nos. 184 and 185, which seek specific information previously within the scope
24 of earlier propounded requests. Samsung has suggested that it may delay its production of long
overdue documents and information responsive to earlier propounded requests as a result of
25 Rambus’s propounding its Seventh Set. Jeffries Decl., Ex. P. Naturally, Samsung has provided
no authority for this unsupportable position. See id.
26 3
As reflected in some of these same document requests, Rambus also requested additional,
27 related information such as information relating to costs of production, margins, profits, and
accounting more generally. Samsung also agreed to produce documents responsive to these
28 requests, but as with sales data, its production has been scant.
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1 the Federal Rules of Civil Procedure to seek production of particular documents in native format
2 as they are kept in the ordinary course of business. Order Granting Rambus’s Motion To Compel
3 Production of Schematics In Native Format at 3 (September 21, 2007).4 Indeed, in ordering
4 Samsung to produce its schematics in native format, the Special Master recognized that the TIFF
5 default is inappropriate for certain types of ESI.
6 Fed. R. Civ. P. 34, as amended in 2006, provides that electronically stored
7 information must be produced “in a form or forms in which it is ordinarily maintained or in a
8 form or forms that are reasonably useable . . .” FRCP 34 (b)(ii). Thus, Samsung must produce its
9 electronically stored sales information in the form in which it is ordinarily maintained (i.e., in a
10 database), or in a form that is reasonably useable. See Ex. Y at 9. The Advisory Committee Notes
11 to the 2006 amendment explains that:
12 The option to produce in a reasonably useable form does not mean
that a responding party is free to convert electronically stored
13 information from the form in which it is ordinarily maintained to a
different form that makes it more difficult or burdensome for the
14 requesting party to use the information efficiently in the litigation.
If the responding party ordinarily maintains the information it
15 is producing in a way that makes the information searchable by
electronic means, the information should not be produced in a
16 form that removes or significantly degrades this feature . . ..
17 (emphasis added).
18 As Rambus noted in its meet and confer exchanges with Samsung, the three
19 documents produced on July 18 appear to have been derived from an internal Samsung database.
20 Jeffries Decl., Ex. N at 2. (Maintaining such a database seems extremely likely in this day and
21 age, particularly for an international technology conglomerate comprising many divisions and
22 related entities). Rambus has inquired as to whether this is the case and requested an explanation
23 of the way in which Samsung maintains manufacturing and sales data so it could determine the
24 most efficient way for Samsung to produce the above-described information. Id. Samsung has
25 failed to respond, despite repeated inquiries.
26
27 4
A copy of this Order is attached as Exhibit Y to the Jeffries Declaration for the Special Master’s
28 convenience.
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1 Assuming that Samsung does maintain a database or a set of databases which

2 includes the type of information Rambus is now seeking, it would be a simple matter for Samsung
3 to produce that database or portions of it in native format, or, alternatively, to run queries in order
4 to isolate the information Rambus is seeking, and export the results into Excel or another readily
5 available database/spreadsheet software.5 Because Samsung has stonewalled Rambus on its
6 questions relating to Samsung’s database(s), Rambus does not have insight into precisely what
7 could be achieved. However, Samsung has not argued that production in native or electronically
8 useful format would be burdensome. In fact, the other manufacturers, including Micron which is
9 represented by the same law firm as Samsung, have produced this very same information from
10 their internal databases in native and/or searchable/sortable format. Jeffries Decl., ¶ 16.
11 The sales data Rambus is seeking from Samsung involves various details about
12 numerous products over an eight year period (2000 to the present). As Rambus has explained to
13 Samsung, production of static reports or print outs generated from a database or other native
14 electronic document(s) is far inferior to production of this type of information in native or
15 electronically useful (i.e., sortable) format. The sheer volume of the spreadsheets received from
16 Hynix and Micron -- thousands of pages from each, Jeffries Decl., ¶ 16 -- confirms the need to
17 receive this information from Samsung in searchable and sortable format. Indeed, the static
18 reports (pdf format) Samsung has produced thus far from its database(s) total about 1,000 pages,
19 roughly 900 of which were produced in the hours before the submission of this memorandum.
20 See Jeffries Decl., ¶ 17. To the extent Samsung maintains this information in a database, it does
21 so, at least in part, so that it can search and/or sort the large volume of information. Rambus
22 should not be deprived of this same ability to search and sort the data by Samsung’s production of
23 static reports, such as that shown in Exhibit X. This is precisely the situation that the Advisory
24 Committee was trying to address in amending Rule 34.
25
5
26 In fact, Samsung did produce an Excel spreadsheet in native format that appears to contain some
sales data. However, this spreadsheet does not adequately identify customers such that sales to
27 customers in the United States may be discerned and a preliminary analysis suggests that the data
are a mere subset of the data contained in other sales data provided by Samsung. Moreover, the
28 Excel data provided are dated June 2004 and earlier.
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1 Moreover, with expert reports coming due on September 5, it would place an

2 enormous burden for Rambus to re-enter the data provided by Samsung into its own database or
3 spreadsheet program to facilitate its analysis by Rambus’s expert(s). Rambus should not have to
4 bear the burdens of Samsung’s failure to earlier produce clearly relevant information.
5 3. Samsung Should Be Compelled To Provide Proper Responses To
Interrogatories 6 and 8
6
Rambus’s Interrogatory 6 requests Samsung to “Identify each and every product
7
manufactured or sold by Samsung that Samsung contends was subject to the Rambus-Samsung
8
license.” Interrogatory 8 requests that, for each of these products, Samsung “state on a quarterly
9
and yearly basis from July 1, 2000 to [the present]: (a) unit sales worldwide and in the United
10
States; (b) sales worldwide and in the United States calculated in U.S. dollars, and (c) royalties
11
paid by Samsung to Rambus pursuant to the Rambus-Samsung license.” Jeffries Decl., Ex. Z.
12
The information sought by these interrogatories, just like the broader set of sales data Rambus is
13
seeking from Samsung, is relevant to Rambus’s computation of its patent damages. Samsung’s
14
initial responses to these interrogatories is clearly inadequate. In response to Interrogatory 6,
15
Samsung provided, “those products that were identified or referred to in the Rambus-Samsung
16
License, as well as those products that, based on Rambus’s conduct, are impliedly covered by the
17
Rambus-Samsung License.” Id. at 3. Rambus is entitled to Samsung’s identification of those
18
products it contents are “impliedly covered by the Rambus-Samsung License. In response to
19
Interrogatory 8, Samsung referred generally to business records it would be producing, but failed
20
to provide any specific identification of documents to enable Rambus to ascertain the answer to
21
the interrogatory. Moreover, as discussed above, Samsung never did produce documentation
22
from which Rambus could derive the answer; Rambus is seeking such documentation as part of
23
this motion. Samsung has not refused to supplement its responses to these interrogatories, but
24
rather, as with its production of documentation and/or ESI has made vague comments about
25
supplementation without committing to any specific supplementation by any date certain.
26
Rambus requests that Samsung immediately be compelled to provide complete, substantive
27
responses to these interrogatories.
28
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1 B. Rambus’s Non-Charting of Memory Controllers In Its Preliminary

Infringement Contentions Does Not Foreclose Discovery
2
1. Fed. R. Civ. P. 26, Not The Local Patent Rules, Governs The Scope Of
3 Discovery
4 As in all cases in the Federal district courts, the scope of discovery in patent cases
5 “should be liberally construed” under Fed. R. Civ. P. 26(b)(1). Dr. Systems, Inc. v. Fujifilm
6 Medical Systems USA, Inc., 2008 WL 1734241 at *2 (S.D. Cal. Apr. 10, 2008). To be valid, any
7 local rule must be consistent with this Rule and its purpose(s). O2 Micro Int’l Ltd. v. Monolithic
8 Power Sys., Inc., 467 F.3d 1355, 1365 (Fed. Cir. 2006). Indeed, as the Federal Circuit noted in
9 evaluating the Patent Local Rules of this District:
10 It is foreseeable that a local patent rule could conflict with the spirit,
if not the letter, of the broad discovery regime under the Federal
11 Rules of Civil Procedure, especially given the particular importance
of discovery in complex patent cases.
12
Id.
13
To avoid this problem, the Patent Local Rules of the Northern District “explicitly
14
yield to the Federal Rules of Civil Procedure,” id., note 11, in providing that, “it shall not be a
15
legitimate ground for objecting to an opposing party’s discovery request [ ] or declining to
16
provide information otherwise required to be disclosed pursuant to FRCivP 26(a)(1) that the
17
discovery request or disclosure requirement [ ] conflicts with[] these Patent Local Rules.” Patent
18
Local Rule 2-5. Moreover, the Courts of the Northern District of California have explicitly held
19
that discovery is not limited by the list of accused devices in preliminary infringement
20
contentions. E.g., Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 2008
21
WL 624771 at *4 (N.D. Cal. Mar. 4, 2008). Thus, courts have permitted discovery of products
22
not identified in Preliminary Infringement Contentions. E.g., L.G. Phillips LCD Co., Ltd. v.
23
Tatung Co., No. C 07 80073WHA, 2007 WL 869256, at *1-*2 (N.D. Cal. Mar. 20, 2007); Dr.
24
Sys. 2008 WL 1734241 at *1. See also EpicRealm, Licensing, LLC v. Autoflex Leasing, Inc.,
25
2007 WL 2580969, at *3 (E.D. Tex. Aug. 27, 2007) (finding “no bright line rule that discovery
26
can only be obtained if related to an accused product” identified in a party’s preliminary
27
infringement contentions); WebSideStory, Inc., v. NetRatings, Inc., 2007 WL 1109597, at *2
28
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1 (S.D. Cal. Apr. 4, 2007) (allowing patent holder to take discovery on how non-accused products
2 operate independently and in conjunction with the accused product). Here, the requested
3 discovery relating to the design and operation of Samsung’s memory controllers is relevant
4 because, despite Rambus’s failure to identify controllers as Accused Instrumentalities in its
5 Preliminary Infringement Contentions, Rambus does contend that Samsung’s memory controllers
6 infringe three of its twenty five asserted patent claims. Jeffries Decl., Ex. S at 5 (claims 1, 2 and
7 14 of U.S. Patent 6,715,020); see also id. at 6 (“The accused devices also include at least the
8 following memory controllers (as well as products containing any of the memory controllers).
9 Samsung’s memory controllers capable of interfacing with and/or controlling any [accused
10 DRAM memory component].”).
11 2. Samsung’s Memory Controllers Have Been Identified As “Accused
Products” From The Outset Of This Action And Samsung Cannot
12 Now Claim Prejudice
13 As detailed above, Rambus has consistently identified Samsung’s memory

14 controllers as accused products in this action from the very beginning. Moreover, the three patent
15 Rambus is asserting against Samsung’s memory controllers are not newly asserted claims.
16 Rather, they have been in the case since Rambus submitted its initial Disclosure of Asserted
17 Claims And Preliminary Infringement Contentions pursuant to Patent Local Rule 3-1 in February
18 2007. These claims were again identified in Rambus’s Supplemental Disclosure Of Asserted
19 Claims and Preliminary Infringement Contentions in July 2007. Jeffries Decl., Exs. AA, BB. A
20 plain reading of the three claims clearly shows that they are directed to memory controllers.
21 Claim 1 of U.S. Patent 6,715,020 (“the ‘5,020 patent”) reads:
22 1. A memory controller device for controlling a
synchronous dynamic random access memory device, the
23 controller device comprises:
24 First output driver circuitry to output block size information to the
memory device, wherein the block size information defines an
25 amount of data to be output by the memory device; and
26 Input receiver circuitry to receive the amount of data output by the
memory device.
27
Jeffries Decl., Ex. S at p. 51 (emphasis added). Asserted claims 2 and 14 of the ‘5,020 patent
28
RMW
1 depend from claim 1, and are thus also explicitly directed to a memory controller device. See id.
2 While it is true that Rambus did not specify Samsung’s memory controllers as
3 Accused Instrumentalities in its Preliminary Infringement Contentions, see Jeffries Decl., Exs.
4 AA and BB, Rambus did refer to Samsung’s memory controllers in its claim chart for these
5 claims. For example, for claim 1, Rambus asserted, “Each of Samsung’s DDR2 SDRAM [ ]
6 devices is designed to be controlled by a controller device. (See, e.g., SgDDR2 at 3; 6). Jeffries
7 Decl., Ex. AA at 51; id., Ex. BB at 51. Rambus further described in its initial and supplemental
8 Preliminary Infringement Contentions how Samsung’s memory controllers meet the elements of
9 these three claims. Id., Ex. AA; id., Ex. BB. Thus, in effect, Rambus did explain Samsung’s
10 infringement by referring to the operation of its memory controllers. It is difficult to see how
11 Samsung has suffered any prejudice by Rambus’s technical non-specification of memory
12 controllers as accused products in its Preliminary Infringement Contentions.
13 First, by accusing memory controllers, Rambus is not now seeking to alter its
14 theory of the case or engaging in any gamesmanship. This is confirmed by the claim charts
15 provided with Rambus’s Final Infringement Contentions (timely served on August 1), which
16 include Samsung’s memory controllers as Accused Instrumentalities. Jeffries Decl., Ex. S.
17 Whereas Rambus had previously explained its contentions by describing how Samsung’s DRAMs
18 were controlled by memory controllers, Rambus’s Final Infringement Contentions describe how
19 Samsung’s memory controllers control its DRAMs in accordance with the claims. See, e.g., id. at
20 31-32; 47-49; 51-53. Thus, it is clear that Rambus’s infringement theory is not any different
21 from its prior articulation in the Preliminary Infringement Contentions, but rather articulates the
22 same theory; the subject and object of the articulation are merely switched. As Judge Illston
23 recently explained in granting a motion for leave to amend invalidity contentions:
24 [E]ven though the patent local rules reflect a more conservative
approach to amendment than the liberal policy for amending
25 pleadings, the rationale for that conservative approach is not
threatened here. The Patent Local Rules were designed, among
26 other reasons, to prevent the parties from shifting their theories late
in discovery, leaving the opposing party with little time to conduct
27 discovery on a new theory . . . There is no indication that
gamesmanship motivated HSI’s decision to wait until this juncture
28 to supplement its Preliminary Invalidity Contentions. Further, as
RMW
1 HSI’s amendments do not raise new issues but instead merely

supplement its initial contentions, Golden Hour was already on
2 notice regarding the substance of HSI’s proposed amendments.
3 Golden Hour Data Sys., Inc. v. Health Services Integration, Inc., 2008 WL 2622794 at *4 (N.D.
4 Cal. Jul. 1, 2008). Because Rambus’s infringement theories are not different with the inclusion of
5 memory controllers as Accused Instrumentalities, Samsung cannot argue that it would itself have
6 had different defensive theories had memory controllers earlier been explicitly accused. See
7 Seiko Epson Corp. v. Coretronic Corp., 2008 WL 2563383 at * 3-4 (N.D. Cal. Jun. 23, 2008)
8 (“Seiko’s use of discovery to expand its infringement contentions does not change the court’s
9 analysis. Indeed, discovery is often used to garner information not available to the proponent in
10 order to thereafter expand the scope of litigation. The expansion is legitimate where it comes
11 within the metes and bounds of the patent claims already in issue . . . Coretronic has not
12 demonstrated how their case strategy would have been different had the [newly accused products]
13 been listed in the preliminary infringement contentions.”)
14 Second, expert discovery has not yet commenced. Samsung will have the same
15 opportunity now to address Rambus’s infringement contentions regarding memory controllers
16 through its experts that it would have had if Rambus had identified memory controllers as
17 Accused Instrumentalities in its Preliminary Infringement Contentions. See Golden Hour Data
18 Systems at *4 (“As expert discovery has not yet begun, Golden Hour’s experts will have the
19 opportunity to consider the amended contentions.”).
20 To disallow Rambus to conduct discovery on memory controllers would thus not
21 only conflict with the liberal discovery policy of the Federal Rules of Civil Procedure, it would
22 also elevate the form of the Patent Local Rules over their substance, and allow a mere technicality
23 to trump the merits of the case. See id.
24 3. Preventing Rambus From Pursuing Its Contentions Regarding

Memory Controllers Would Result In An Unnecessary Waste Of
25 Judicial Resources
26 Should Rambus not be able to pursue discovery relating to memory controllers,
27 and thus be unable to pursue Samsung’s memory controllers as Accused Instrumentalities in this
28 litigation, Rambus will be forced to file a new suit for infringement of the ‘5020 patent at issue
RMW
1 here against Samsung. It would certainly be more efficient for the parties and the Court to
2 dispose of all of the issues relating to the ‘5020 patent in this action, rather than in a separate
3 action. See Leland Stanford Junior Univ., 2008 WL 624771 at *4 (characterizing the prospect of
4 an additional a lawsuit that would result if an amendment to infringement contentions was
5 disallowed as “another compelling reason to allow the amendment.”).
6 4. The Discovery Rambus Is Seeking On Memory Controllers Does Not
Impose An Undue Burden On Samsung
7
The quantum of discovery Rambus requires to understand the design and operation
8
of Samsung’s memory controllers is limited. Rambus is not seeking all technical documentation
9
relating to these products, but rather limited documentation, such as data sheets, product
10
overviews, user’s manuals, schematics, and product specifications sufficient to show the way in
11
which Samsung’s memory controllers control the various DRAM memory components with
12
which they interface. Indeed, subject to mutual agreement, Samsung’s production may further be
13
limited to such documentation describing just a few products that Rambus and Samsung stipulate
14
are representative of the remaining accused memory controllers. Samsung has conclusorily
15
asserted that providing discovery on memory controllers would cause Samsung to incur “very
16
significant expense,” but has failed to provide any specifics as to why that is the case given the
17
limited nature of Rambus’s request.
18
5. Samsung Should Be Required To Produce A 30(b)(6) Witness On The
19 Operation Of Its Controllers
20 In its deposition notice served on June 19 pursuant to Fed. R. Civ. P. 30(b)(6),

21 Rambus requested a corporate witness to testify as to the part numbers of Samsung’s memory
22 controllers made of sold on or after July 1, 2000, and as to “the features, capabilities and
23 operation” of any such memory controllers. Jeffries Decl., Ex. CC. This discovery is directly
24 relevant to Rambus’s contentions of infringement of claims 1, 2 and 14 of the ‘5,020 patent.
25 Samsung has refused to produce a witness on these topics, for the same reason as it has refused to
26 produce discovery on controllers generally, i.e., they were not explicitly identified as Accused
27 Instrumentalities in Rambus’s Preliminary Infringement Contentions. Jeffries Decl., Ex. R.
28 As decribed above, Rambus’s technical failure to explicitly identify Samsung’s
RMW

Memorandum of Points and Authorities in Support of Rambus Inc.'S Motion To Compel Samsung To Produce Discovery Relating To (1) Sales of Accused Products and (2) Memory Controllers

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Memorandum of Points and Authorities in Support of Rambus Inc.'S Motion To Compel Samsung To Produce Discovery Relating To (1) Sales of Accused Products and (2) Memory Controllers

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Case 5:05-cv-00334-RMW Document 2021-2 Filed 08/07/2008 Page 1 of 17

1 Gregory P. Stone (SBN 078329) Pierre J. Hubert (Pro Hac Vice)

26 SAMSUNG ELECTRONICS CO., LTD., et al,

6 Rambus is entitled to the narrowly tailored supplemental discovery it seeks

1 Assuming that Samsung does maintain a database or a set of databases which

1 Moreover, with expert reports coming due on September 5, it would place an

1 B. Rambus’s Non-Charting of Memory Controllers In Its Preliminary

9 evaluating the Patent Local Rules of this District:

13 As detailed above, Rambus has consistently identified Samsung’s memory

1 HSI’s amendments do not raise new issues but instead merely

13 been listed in the preliminary infringement contentions.”)

15 opportunity now to address Rambus’s infringement contentions regarding memory controllers

19 opportunity to consider the amended contentions.”).

20 To disallow Rambus to conduct discovery on memory controllers would thus not

23 to trump the merits of the case. See id.

24 3. Preventing Rambus From Pursuing Its Contentions Regarding

26 Should Rambus not be able to pursue discovery relating to memory controllers,

20 In its deposition notice served on June 19 pursuant to Fed. R. Civ. P. 30(b)(6),

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