Stmicroelectronics' Opposition To Rambus Inc.'S Motion For Relief From Nondispositive Pretrial Order of Special Master Dated March 18, 2013

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04395.52001/5263530.6

STMICROELECTRONICS' OPPOSITION TO RAMBUS INC.'S MOTION FOR RELIEF FROM
NONDISPOSITIVE PRETRIAL ORDER OF SPECIAL MASTER DATED MARCH 18, 2013
K&L GATES LLP
Michael J. Bettinger (Bar No. 122196)
mike.bettinger@klgates.com
Stephen M. Everett (Bar No. 121619)
stephen.everett@klgates.com
Curt Holbreich (Bar No. 168053)
curt.holbreich@klgates.com
Elaine Y. Chow (State Bar No. 194063)
elaine.chow@klgates.com
Four Embarcadero Center, Suite 1200
San Francisco, CA 94111
Tel: (415) 882-8200
Fax: (415) 882-8220

QUINN EMANUEL URQUHART &
SULLIVAN, LLP
Sean Pak (Bar No. 219032)
seanpak@quinnemanuel.com
Peter A. Klivans (Bar No. 236673)
peterklivans@quinnemanuel.com
50 California Street, 22
nd
Floor
San Francisco, California 94111-4788
Telephone: (415) 875-6600
Facsimile: (415) 875-6700

SULLIVAN, LLP
Michael D. Powell (Bar No. 202850)
mikepowell@quinnemanuel.com
555 Twin Dolphin Drive, 5
th
Floor
Redwood Shores, CA 94065
Telephone: (650) 801-5000
Facsimile: (650) 801-5100
SULLIVAN, LLP
Thomas D. Pease (Bar No. 2671741 (NY))
thomaspease@quinnemanuel.com
51 Madison Avenue, 22
nd
Floor
New York, NY 10010
Telephone: (212) 849-7000
Facsimile: (212) 849-7100

SULLIVAN, LLP
Robert J. Becher (Bar No. 193431)
robertbecher@quinnemanuel.com
865 S. Figueroa St., 10th Floor
Los Angeles, California 90017
Telephone: (213) 443-3000
Facsimile: (213) 443-3100

Attorneys for Defendants & Counterclaimants
STMICROELECTRONICS N.V. and
STMICROELECTRONICS, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA, SAN FRANCISCO DIVISION

RAMBUS INC.,

Plaintiff,

vs.

STMICROELECTRONICS N.V.;
STMICROELECTRONICS INC.,

Defendants.

CASE NO. C 10-05449

STMICROELECTRONICS' OPPOSITION
TO RAMBUS INC.'S MOTION FOR
RELIEF FROM NONDISPOSITIVE
PRETRIAL ORDER OF SPECIAL
MASTER DATED MARCH 18, 2013

Date: TBD
Time: 1:30 pm
Crtrm.: Courtroom 3, 17
th
Floor

Case3:10-cv-05449-RS Document159 Filed04/15/13 Page1 of 9
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04395.52001/5263530.6
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Preliminary Statement
Rambus challenges the Special Master's ruling denying its motion to compel responses to
various requests for production by arguing that STMicro's subjective understanding of JEDEC's
disclosure policies is relevant. But, even if Rambus is right on this narrow issue, the Special
Master's decision to deny Rambus's motion should still be affirmed because Rambus's document
requests sought irrelevant information and were overbroad and unduly burdensome. STMicro's
defense based on Rambus's JEDEC misconduct relates to Rambus's involvement with a specific
JEDEC committee, JC-42.3, during the 1991 to 1996 time period. But the document requests
Rambus moved to compel were not limited to the JC-42.3 committee and were not limited to the
1991 to 1996 time period. Instead, Rambus's document requests called for information about
numerous other JEDEC committees and sought documents dated long after 1996. Because
Rambus made no effort to limit its document requests to documents relevant to this case and its
requests are overbroad, this Court should affirm the denial of its motion to compel.
Factual Background
The Document Requests at Issue in the Underlying Motion to Compel: Rambus's
document requests numbers 42-51 that were the subject of the underlying motion to compel
contain broad requests such as request 43 seeking "All documents received from or submitted to
JEDEC," request 44 seeking "All documents relating to any DRAM standards developed by
JEDEC," and request 49 seeking "All documents relating to any STMicro patent or patent
application that relates to the work of any JEDEC committee or subcommittee in which STMicro
participated, and/or relate to any ballots taken by any such committee or subcommittee."
STMicro's Offer to Produce: As part of its meet and confer with Rambus before the
Special Master ruled on its motion to compel, STMicro offered to produce to Rambus documents
related to one committee of JEDEC, JC 42.3, from the time period when Rambus was a member
of JEDEC, 1991 to 1996. April 4, 2013 Declaration of Jeffrey Y. Wu ("Wu Decl."), Exh. F at 5.
Rambus refused this offer. Instead, Rambus insisted on receiving documents for all JEDEC
committees through the year 2001. Wu Decl., Exh. G at 37:23-38:8.
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04395.52001/5263530.6
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Rambus's Motion to Compel. On February 27, 2013, Rambus moved to compel responses
to requests for production numbers 42-51. Wu Decl., Exh. D at 7-8. On March 7, 2013, STMicro
opposed Rambus's motion. STMicro explained that the requests were not limited to the relevant
time period nor the relevant JEDEC committee where Rambus's misconduct took place. Wu
Decl., Exh. F at 2. STMicro pointed out that it had offered to produce documents subject to these
limitations but that Rambus rejected the offer. Id. at 2, 4. In addition, STMicro also pointed out
that, while Rambus did not agree to STMicro's proposal to narrow the requests, Rambus had
agreed to narrow the scope of several of its document requests. Id. at 3, n3. STMicro also argued
that it would be burdensome to respond to Rambus's document requests, particularly because the
events took place between fifteen and twenty years ago. Id. at 4.
Order Denying Rambus's Motion and Rambus's Subsequent Service of Narrowed
Document Requests. Although the Special Master expressed his views about the motion to
compel responses to Rambus's document requests related to JEDEC during the March 8, 2013
telephonic hearing and stated it would be denied, the March 18, 2013 Order denying Rambus's
motion to compel does not state the grounds for the denial. Wu Decl., Exh. A.
Five days after the Special Master stated he would deny Rambus's motion to compel,
Rambus served a Third Set of Requests for Production that narrowly focused on STMicro's
understanding of the JEDEC disclosure obligations in JC-42.3 from 1991 to 1996. Declaration of
Robert J. Becher ("Becher Decl."), Exh. A at 8-9. This included the following: (i) Request 104
seeking "All documents from the period January 1, 1991 through December 31, 1996 related to
any duty to disclose intellectual property owed by participants in JC 42.3"; (ii) Request 106
seeking "All documents from the period January 1, 1991 through December 31, 1996 related to
STMicros understanding regarding any duty to disclose intellectual property owed by participants
in JC 42.3"; (iii) Request 108 seeking "All communications from the period January 1, 1991
through December 31, 1996 involving any STMicro agent or employee related to any duty to
disclose intellectual property owed by participants in JC 42.3"; and (iv) Request 110 seeking "All
communications from the period January 1, 1991 through December 31, 1996 involving any
STMicro agent or employee related to the disclosure of or failure to disclose intellectual property
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04395.52001/5263530.6
-3-
by a participant in JC 42.3." STMicro responded that it would conduct a reasonably diligent
search for documents responsive to these four narrowed requests. Becher Decl., Exh. B.
ARGUMENT
I. THE SPECIAL MASTER DID NOT ABUSE HIS DISCRETION IN DENYING
RAMBUS'S MOTION
The Special Master 's denial of Rambus's motion to compel should be affirmed. While the
Special Master only stated at the hearing that he was denying the motion because STMicro's
subjective understanding of JEDEC's policies is irrelevant, the Order Regarding Rambus's
February 27, 2013 Motion to Compel ("Order") that followed did not state the grounds for the
decision. Under these circumstances, this Court is not limited to affirming the decision on the
grounds stated at the hearing. Instead, it can affirm the Order based on any other ground that
supports it. Sok v. Immigration and Naturalization Service, 67 F.Supp.2d 1166,1167 (E.D. Cal.
1999) (affirming Magistrate Judge's recommendation on different grounds than Magistrate). Here,
it was proper to deny Rambus's motion because its requests for production--as written and served
on STMicro--sought irrelevant information and were overbroad and burdensome. This Court
should affirm the denial of Rambus's motion to compel.
A. Rambus's Requests Sought Irrelevant Information
Rambus argues that STMicro's understanding of JEDEC policies is relevant because
STMicro contends there was an expectation of disclosure among members and that it relied on its
understanding of JEDEC policies.
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Motion, at 4. But it does not follow that the Special Master

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Rambus claims that the duty of disclosure is actually measured by an objective standard, but
this is contradicted by the case law. A participant in a standards-setting organization has a duty to
disclose its patents and patent applications reasonably necessary to practice the standards if the
participants as a whole consider the standards-setting body to impose such a duty, even if the duty
to disclose is not expressly stated in the written policies of the standards setting-organization.
Qualcomm Inc. v. Broadcom Corp., 2007 WL 1031373, *7 (S.D. Cal. 2007)("A duty to speak can
arise from a group relationship in which the working policy of disclosure of related intellectual
property rights (IPR) is treated by the group as a whole as imposing an obligation to disclose
information in order to support and advance the purposes of the group."); Rambus Inc. v. Infineon
Tech. Ag, 318 F.3d 1081, 1098, 1100 (Fed. Cir. 2003)(relying on views of JEDEC members to
interpret disclosure duty).
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04395.52001/5263530.6
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abused his discretion in denying Rambus's motion to compel. To the contrary, Rambus's motion
was properly denied. The document requests at issue seek documents regarding STMicro's
interpretation of JEDEC policies during an unlimited time period and documents regarding the
interpretation of JEDEC's policies by persons who did not even participate in the same JEDEC
committee as Rambus. Indeed, in an apparent concession that its document requests were not
narrowly tailored to seek relevant information, Rambus subsequently served STMicro with a
narrowed set of request for production that were limited to JC-42.3--the committee Rambus
participated in--and the 1991 to 1996 time period. Becher Decl., Exh. A at 8-9. And, on April 12,
2013, STMicro agreed to produce documents in response to these narrowed requests. Becher
Decl., Exh. B. As a result, Rambus will receive documents in STMicro's possession regarding its
understanding of JEDEC's disclosure policies in connection with JC-42.3 in the 1991 to 1996 time
period and STMicro is not refusing to provide such documents.
If the Court decides to further consider the objections to the discovery that was the subject
of the underlying motion on the merits, it should uphold the denial of the motion because
Rambus's requests were neither limited to the time period when Rambus was a member of JEDEC
(1991-1996) nor to the relevant JEDEC committee where Rambus's misconduct occurred (JC-
42.3). As summarized by the district court in the Micron action, From 1991 to 1995, Rambus
representatives took information learned at JEDEC meetings and passed it along to Rambus
patent prosecution counsel in an effort to solidify and extend Rambus patent claims to cover
SDRAM and other potentially competing memory types. Micron Tech., Inc. v. Rambus Inc., ---
F. Supp. 2d ---, 2013 WL 227630 at *2 (Jan. 2, 2013 D. Del.). Rambus was a member of JEDEC's
JC42.3 subcommittee from December 1991 to June 1996. Rambus Inc. v. Infineon Tech. AG, 318
F.3d 1081, 1085-86 (Fed. Cir. 2003). Moreover, [d]uring Rambuss membership on committee
JC-42.3, JEDEC adopted a standard for synchronous dynamic random access memory
(SDRAM). Id. Rambus has directed its infringement claims in this case against STMicros
products that include DRAM memory controllers and that are related to standards drafted by the
JC-42.3 subcommittee.
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04395.52001/5263530.6
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Even though Rambus only participated in JEDEC committee JC-42.3 and only participated
from 1991 of 1996, Rambus did not tailor its document requests to focus on this committee or
time period.
2
It sought documents related to all of JEDEC's committees despite the fact that
JEDEC has 14 committees, each with multiple subcommittees, and these committees relate to a
wide range of technologies that are not at issue here. See, e.g., http://www.jedec.org/committees.
And Rambus did not limit the timeframe covered by its requests either.
3
Because Rambus's
document requests sought irrelevant information, the Special Master's decision to deny its motion
to compel was not an abuse of discretion.
B. Rambus's Requests Were Also Overbroad
In its Motion for Relief, Rambus does not even address the merits of STMicro's claim that
its requests were overbroad. It simply states that this objection can be addressed by the Special
Master on remand. Motion for Relief, at 5. But the overbreadth of Rambus's requests provides
another reason why the Court should affirm the Special Master's denial of Rambus's motion to
compel. Sallis v. Univ. of Minnesota, 408 F.3d 470, 478 (8th cir. 2005) (affirming district courts
limiting of unduly burdensome document requests to the relevant time period). Under Fed. R.
Civ. P. 26(b)(2)(C), a court must limit the extent of discovery if it determines that the burden or

2
Although Rambus slightly narrowed some of its requests, they still remained overbroad at
the time the Special Master heard its motion. Wu Decl., Exh. F. Rambus offered to narrow
Request No. 44 to all documents that address, refer to, discuss, or relate to any DRAM standard
developed by JEDEC and the patents, patent applications, or intentions to file or amend patent
applications of any JEDEC member and Request No. 49 to all documents related to any ballots
taken by any JEDEC committee or subcommittee in which STMicro participated, and all
documents that address, refer to, discuss, or describe any STMicro patent, patent application or
intention to file or amend a patent application in connection with STMicro's participation in any
JEDEC committee or subcommittee. Rambus further offered to limit Request Nos. 42 and 43 in
the following way: For JEDEC committees or sub-committees other than JC-42.3, all minutes
and ballots of such committees, and all documents related to any JEDEC policies or duties
regarding the disclosure of intellectual property or lack of such policies or duties, including but
not limited to (1) all communications related to the existence, scope, or non-existence of any duty
to disclose patents, patent applications, or intentions to file or to amend patent applications; and
(2) all documents referring to or evidencing any disclosure of any patent, patent application, or
intention to file or amend any patent application. (Wu Decl., Exh. E.)
3
After filing its motion to compel, Rambus offered to limits its requests to the 1991 to 2001
time period. The requests as served did not include such a time limitation. (Wu Decl., Exh. E).
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04395.52001/5263530.6
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expense of the proposed discovery outweighs its likely benefit. In re iPHONE/iPAD Application
Consumer Privacy Litigation, 2012 WL 5897351 (N.D. Cal. Nov. 21, 2012). Rambus sought
documents far outside the relevant time frame and unrelated to JC-42.3 For example, request No.
42 seeks all documents relating to STMicros membership, participation, or attendance in JEDEC
meetings and Request No. 43 seeks all documents received from or submitted to JEDEC.
Because JC-42.3 is the only JEDEC committee at issue in this case and Rambus's membership was
limited to a five year period, Rambus's requests for documents related to dozens of committees
and subcommittees over an unlimited time period were facially overbroad.
Conclusion
Rambus's discovery requests regarding JEDEC sought irrelevant information and were
overbroad. As a result, the Special Master properly denied its motion to compel..

Dated: April 15, 2013 /s/ Michael J. Bettinger
Michael J. Bettinger
Stephen M. Everett
Curt Holbreich
Elaine Y. Chow
K&L GATES LLP
Four Embarcadero Center, Suite 1200
Tel.: (415) 882-8200
Fax: (415) 882-8220

Sean S. Pak
Peter Klivans
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
Tel.: (415) 875-6600
Fax: (415) 875-6700

Robert J. Becher
QUINN EMANUEL URQUHART & SULLIVAN, LLP
865 S. Figueroa St., 10F
Los Angeles, CA 90017
Tel.: (213) 443-3000
Fax: (213) 443-3100
Attorneys for Defendants STMicroelectronics
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04395.52001/5263530.6
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N.V. and STMicroelectronics, Inc.

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04395.52001/5263530.6
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E-FILING ATTESTATION
I hereby attest that I have on file all holograph signatures for any signatures indicated by a
"conformed" signature (/s/) within this e-filed document.
/s/ Peter Klivans
Peter Klivans

Stmicroelectronics' Opposition To Rambus Inc.'S Motion For Relief From Nondispositive Pretrial Order of Special Master Dated March 18, 2013

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