Itc 3

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION

Washington, D.C. 20436
Before the Honorable Theodore R. Essex

Administrative Law Judge
In the Matter of
CERTAIN SEMICONDUCTOR CHIPS Investigation No. 337-TA-753

AND PRODUCTS CONTAINING SAME
AMENDED RESPONSE OF STMICROELECTRONICS INC. AND

STMICROELECTRONICS N.V. TO COMPLAINT UNDER SECTION 337 OF THE
TARIFF ACT OF 1930, AS AMENDED, AND NOTICE OF INVESTIGATION
Pursuant to 19 C.F.R. § 210.13, Respondents STMicroelectronics Inc. and
STMicroelectronics N.V. (collectively, “STMicro”) hereby responds to the Complaint filed
under Section 337 of the Tariff Act of 1930 (“Section 337”) by Rambus Inc. (“Rambus” or
“Complainant”) on December 1, 2010 and to the Notice of Investigation issued by the United
States International Trade Commission (“the Commission”) on December 29, 2010. As an initial
matter, STMicro denies that it has engaged in unfair competition or violated Section 337 of the
Tariff Act of 1930, as amended, by importing, selling for importation, or selling within the
United States after importation any product that infringes any valid and enforceable intellectual
property right at issue in this investigation. STMicro further denies that any patent claims at
issue in this investigation are valid or enforceable. STMicro further avers that it is without
sufficient knowledge or information to form a belief as to whether an industry exists in the
United States as required by subsection(a)(2) of section 337, and therefore denies that any such
industry exists. STMicro further reserves the right to amend or supplement its response based on
additional facts or developments that become available or that arise after the filing of this
PUBLIC VERSION
Response. In this light, STMicro responds to the Complaint by admitting only those facts
expressly admitted below and denying all others averred in the Complaint.
STMicro has adopted the headings found in the Complaint for ease of reference.
However, to the extent that such headings themselves contain factual and legal characterizations,
STMicro denies such characterizations.
RESPONSE TO THE COMPLAINT
I. INTRODUCTION
1. STMicro admits that Rambus has requested that the Commission commence an
investigation pursuant to Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337. STMicro
denies each and every remaining allegation of paragraph 1, and specifically denies that it has
engaged in the unlawful importation into the United States, the sale for importation, and/or the
sale within the United States after importation of any product that infringes any valid and
enforceable claim of any United States patent asserted against STMicro in this investigation.
2. STMicro does not have sufficient knowledge or information to form a belief
regarding the truth of the allegations of paragraph 2 and on that basis denies them.
5. STMicro admits that Rambus has requested that the Commission commence an
investigation pursuant to Section 337 of the Tariff Act of 1930, 19 U.S.C. §1337. STMicro
denies each and every remaining allegation of paragraph 5, and specifically denies that it has
engaged in the unlawful importation into the United States, the sale for importation, and/or the
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STMicro’s Response to the Complaint & Notice of Investigation
PUBLIC VERSION
sale within the United States after importation of any product that infringes any valid and
enforceable claim of any United States patent asserted against STMicro in this investigation.
6. STMicro admits that Rambus has named Freescale Semiconductor, Inc.
("Freescale"), Broadcom Corporation ("Broadcom"), LSI Corporation ("LSI"), MediaTek Inc.
("MediaTek"), nVidia Corporation ("nVidia"), and STMicroelectronics N.V. and
STMicroelectronics Inc. (collectively "STMicro"), as well as the following alleged customers of
these companies, Audio Partnership Plc ("Audio Partnership"), Asustek Computer Inc. and Asus
Computer International Inc. (collectively, "Asus"), Biostar Microtech (U.S.A.) Corporation and
Biostar Microtech International Corporation (collectively "Biostar"), Cisco Systems, Inc.
("Cisco"), Elitegroup Computer Systems ("ECS"), EVGA Corporation ("EVGA"), Galaxy
Microsystems LTC ("Galaxy"), Garmin International ("Garmin"), G.B.T. Inc. and Giga-Byte
Technology Co., Ltd. (collectively "Gigabyte"), Hewlett-Packard Company ("HP"), Hitachi GST
("Hitachi"), Jaton Corporation and Jaton Technology TPE (collectively "Jaton"), Micro-Star
International Co. and MSI Computer Corporation (collectively "MSI"), Motorola, Inc.
("Motorola"), Oppo Digital, Inc. ("Oppo"), Gracom Technologies LLC (formerly Palit
Multimedia Inc.) and Palit Microsystems Ltd. (collectively "Palit"), Pine Technology Holdings,
Ltd. ("Pine"), Seagate Technology ("Seagate"), Sparkle Computer Co., Ltd. ("Sparkle"), and
Zotac International (MCO) Ltd. and Zotac USA Inc. (collectively "Zotac") as respondents to the
Complaint. STMicro denies the remaining allegations of paragraph 6.
7. STMicro admits that Rambus has asserted that the Accused Products in this
investigation are memory controller products that incorporate double data rate (“DDR”) memory
controllers and so-called DDRx memory controllers, where DDRx is defined by Rambus to
include at least double data rate two (“DDR2”) memory controllers and double data rate three
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(“DDR3”) memory controllers; mobile (“mDDR”), low power DDR (“LPDDR”) and low power
DDR2 (“LPDDR2”) memory controllers; and GRRRy memory controllers, where GDDRy
includes at least graphics double data rate three (“GDDR3”) memory controllers, including
chips, cards, motherboards, computers, and systems incorporating the same, imported, sold for
importation or sold in products after importation by STMicro. STMicro denies that any of its
products infringe any valid, enforceable claim of any Asserted Patent. STMicro lacks sufficient
knowledge and information to admit or deny the remaining allegations contained in Paragraph 7
of the Complaint and, therefore, denies those allegations.
8. STMicro admits that Rambus has asserted that the Accused Products in this
investigation also include peripheral interface products having certain peripheral interfaces,
including PCI Express interfaces, DisplayPort interfaces, and certain Serial AT Attachment
(“SATA”) and Serial Attached SCSI (“SAS”) interfaces, including chips, cards, motherboards,
personal computers, workstations, servers, hard drives and systems incorporating the same,
imported, sold for importation or sold in products after importation by STMicro. STMicro
denies that any of its products infringe any valid, enforceable claim of a Rambus patent.
STMicro lacks sufficient knowledge and information to admit or deny the remaining allegations
contained in Paragraph 8 of the Complaint and, therefore, denies those allegations.
9. STMicro admits that it sells certain products to certain named Respondents and
denies that such STMicro products are incorporated into the products of these named
Respondents that are the subject of this Investigation. STMicro denies that any of its products
infringe any valid, enforceable claim of any Asserted Patent. STMicro lacks sufficient
knowledge and information to admit or deny the remaining allegations contained in Paragraph 9
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11. STMicro admits that Rambus has asserted that the STMicro Accused Products
include memory controller products and/or peripheral interface products, including one or more
of at least microcontrollers, microprocessors, digital signal processors, communications
processor, applications processors, host processors, network processors, switches, VoIP
processors, baseband processors, multimedia processors, media access controllers, ethernet
controllers, television processors, set-top box processors, receivers and decoders, system I/O
processors, video/audio encoders and decoders, security processors and/or products that are part
of STMicro’s so-called BCM and HE, HT, HC-SI, and TME product lines. STMicro denies that
any of its products infringe any valid, enforceable claim of a Rambus patent. STMicro denies
that it imports, sells for importation, or sells after importation other products that infringe any
valid, enforceable claim of a Rambus patent. STMicro lacks sufficient knowledge and
information to admit or deny the remaining allegations contained in Paragraph 9 of the
Complaint and, therefore, denies those allegations.
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16. STMicro admits that Rambus has asserted that the Accused Products of named
respondents Audio Partnership, Asus, Cisco, Garmin, Hitachi, HP, Motorola, Oppo, and/or
Seagate include memory controller products and/or peripheral interface products and that some
of these products incorporate Accused Products from one or more of Freescale, STMicro, LSI,
MediaTek, and STMicro. STMicro denies that any of its products infringe any valid,
enforceable claim of any Asserted Patent. STMicro lacks sufficient knowledge and information
to admit or deny the remaining allegations contained in Paragraph 16 of the Complaint and,
therefore, denies those allegations.
18. STMicro admits that Rambus asserts infringement by certain Respondents of
claims of the following patents: U.S. Patent No. 6,470,405 (the “405” patent”), U.S. Patent No.
6,591,353 (the “’353 patent”), and U.S. Patent No. 7,287,109 (the “’109 patent”). STMicro
admits that Rambus also asserts infringement by certain Respondents of claims of the following
patents: U.S. Patent No. 7,602,857 (the “’857 patent”); U.S. Patent No. 7,602,858 (the “’858
patent”); and U.S. Patent No. 7, 715,494 (the “‘494 Patent”). STMicro denies that it has
infringed any valid and enforceable claim of the Asserted Patents, or otherwise acted unlawfully
under Section 337. STMicro lacks sufficient knowledge and information to admit or deny the
remaining allegations contained in Paragraph 18 of the Complaint and, therefore, denies those
allegations.
19. STMicro denies that is has infringed any valid and enforceable claim of the
Asserted Patents, or otherwise acted unlawfully under Section 337. To the extent the allegations
of Paragraph 19 of the Complaint assert legal conclusions, no answer is required. STMicro lacks
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sufficient knowledge and information to admit or deny the remaining allegations contained in
Paragraph 19 of the Complaint and, therefore, denies those allegations.
20. STMicro admits that Rambus seeks a general exclusion order and a cease and
desist order but denies that Rambus is entitled to such relief, or any other relief. To the extent
the allegations of Paragraph 20 of the Complaint assert legal conclusions, no answer is required.
STMicro denies that it has infringed any valid and enforceable claim of the Asserted Patents, or
that it has otherwise acted unlawfully under Section 337. As to the remaining allegations in
Paragraph 20 of the Complaint, STMicro lacks sufficient knowledge or information to admit or
deny the allegations and, therefore, denies those allegations.
21. STMicro admits that Rambus seeks a general exclusion order and a cease and
desist order but denies that Rambus is entitled to such relief, or any other relief. To the extent
STMicro denies that it has infringed any valid and enforceable claim of the Asserted Patents, or
otherwise acted unlawfully under Section 337. As to the remaining allegations in Paragraph 21
of the Complaint, STMicro lacks sufficient knowledge or information to admit or deny the
allegations and, therefore, denies those allegations.
22. STMicro lacks sufficient knowledge or information to admit or deny the
allegations contained in Paragraph 22 of the Complaint and, therefore, denies them.
II. BACKGROUND OF THE TECHNOLOGY
23. STMicro admits the Barth I Patents are entitled "Protocol for Communication
with Dynamic Memory" and identify the field of the invention as follows: "The present
invention relates to dynamic random access memory (DRAM), and more specifically, to a
method and apparatus for controlling data transfers to and from a dynamic random access
memory." STMicro admits that a computer can include main memory, that the main memory for
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a computer can include more than one memory device, and that the main memory of a computer
can be used to store information that is utilized by a central processing unit (CPU). STMicro
admits that information in a longer-term storage device, such as a hard drive, can in certain
circumstances be retrieved into the main memory of a computer and accessed by a CPU.
STMicro admits that a memory controller can generally be used to retrieve information from a
memory device. STMicro admits that a memory controller can generally be used as an interface
between the main memory of a computer and that the CPU of a computer can generally process
data. STMicro denies that the statements in Paragraph 23 describe the Asserted Patents.
STMicro denies that the Asserted Patents are valid and enforceable, and denies that any of the
Asserted Patents describe anything inventive or novel. STMicro denies that any accused
STMicro products infringe any valid or enforceable claim of the Asserted Barth I Patents.
STMicro lacks sufficient knowledge to admit or deny the remaining allegations in Paragraph 23
24. STMicro admits that in certain circumstances, certain memory controllers can be
used to control a random access memory (RAM). STMicro further admits that DRAM is a type
of RAM and that in certain circumstances, certain types of DRAM can be found in personal
computers and other types of products. STMicro admits that certain types of DRAM can store
data in capacitors that leak charge and are refreshed. STMicro denies that the statements in
Paragraph 24 describe the Asserted Patents. STMicro denies that the Asserted Patents are valid
and enforceable, and denies that any of the Asserted Patents describe anything inventive or
novel. STMicro denies that the STMicro Accused Products infringe any valid and enforceable
claim of the Asserted Patents. STMicro lacks sufficient knowledge or information to admit or
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deny the remaining allegations contained in Paragraph 24 of the Complaint and, therefore, denies
those allegations.
25. STMicro admits that in certain circumstances, certain memory controllers can be
configured to control certain types of DRAM, such as those identified in Paragraph 25 of the
Complaint. STMicro also admits that in certain circumstances, a memory controller can issue
signals to synchronous memory devices. STMicro also admits that in certain circumstances, data
can be written into and read out of a synchronous memory devices. STMicro further admits that
certain standards have been developed for certain types of DRAM, such as those identified in
Paragraph 25 of the Complaint, and that in certain circumstances certain memory controllers can
provide signals to certain types of DRAM that allow the DRAM to be operated. STMicro denies
that the statements in Paragraph 25 describe the Asserted Patents. STMicro denies that the
Asserted Patents are valid and enforceable, and denies that any of the Asserted Patents describe
anything inventive or novel. STMicro further denies that the STMicro Accused Products
infringe any valid and enforceable claim of the Asserted Patents. STMicro lacks sufficient
knowledge or information to admit or deny the remaining allegations contained in Paragraph 25
26. STMicro admits that the asserted Dally Patents are entitled "Digital Transmitter"
and state as follows in the Abstract: "An equalizer provided in a digital transmitter compensates
for attenuation in a signal channel to a digital receiver." STMicro denies that the statements in
Paragraph 26 describe the Asserted Dally Patents. STMicro further denies that the Asserted
Dally Patents are valid and enforceable, and denies that any of the Asserted Dally Patents
describe or claim anything inventive or novel. STMicro denies that any accused STMicro
products infringe any valid or enforceable claim of the Asserted Patents. STMicro lacks
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sufficient knowledge to admit or deny the remaining allegations in Paragraph 26 of the
27. STMicro admits that PCI Express, DisplayPort, SATA and SAS are names given
to certain types of interfaces that can be used in certain circumstances with certain peripheral
devices. STMicro denies that these types of interfaces implement any technology that would
cause a product that incorporates these types of interfaces to infringe any valid or enforceable
claim of the Asserted Dally Patents. STMicro also denies that the statements in Paragraph 27
describe the Asserted Dally Patents. STMicro further denies that the Asserted Dally Patents are
valid and enforceable, and denies that any of the Asserted Dally Patents describe or claim
anything inventive or novel. STMicro denies that any accused STMicro products infringe any
valid or enforceable claim of the Asserted Dally Patents. STMicro lacks sufficient knowledge to
admit or deny the remaining allegations in Paragraph 27 of the Complaint and, therefore, denies
those allegations.
III. COMPLAINANT RAMBUS
28. STMicro lacks sufficient knowledge to admit or deny the remaining allegations in
31. STMicro denies that the statements in Paragraph 31 describe the Asserted Patents.
STMicro further denies that the Asserted Patents are valid and enforceable, and denies that any
of the Asserted Patents describe or claim anything inventive or novel. STMicro denies that any
accused STMicro products infringe any valid or enforceable claim of the Asserted Patents.
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IV. THE ASSERTED PATENTS
34. STMicro admits that Rambus purports to assert in the Complaint that
Respondents infringe certain claims of the asserted Barth I and Dally patents. STMicro admits
the Barth I Patents are entitled "Protocol for Communication with Dynamic Memory" and
identify the field of the invention as follows: "The present invention relates to dynamic random
access memory (DRAM), and more specifically, to a method and apparatus for controlling data
transfers to and from a dynamic random access memory." STMicro denies that the statements in
Paragraph 34 describe the Asserted Patents. STMicro further denies that the Asserted Patents are
valid and enforceable, and denies that any of the Asserted Patents describe or claim anything
inventive or novel. STMicro lacks sufficient knowledge to admit or deny the remaining
allegations in Paragraph 34 of the Complaint and, therefore, denies those allegations.
Paragraph 35 describe the Asserted Patents. STMicro further denies that the Asserted Patents are
valid and enforceable, and denies that any of the Asserted Patents describe or claim anything
inventive or novel. STMicro lacks sufficient knowledge to admit or deny the remaining
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A. THE BARTH I PATENTS
36. STMicro admits that the ‘405, ‘353, and ‘109 patents purport to claim priority to
Application No. 08/545,292, which was purportedly filed on October 19, 1995. STMicro admits
that the ‘405, ‘353, and ‘109 patents purport to name Richard M. Barth, Frederick A. Ware, John
B. Dillon, Donald C. Stark, Craig E. Hampel, and Matthew M. Griffin as inventors. To the extent
1. Non-Technical Description of the Barth I Patents
37. STMicro admits the Barth I Patents are entitled "Protocol for Communication
with Dynamic Memory" and identify the field of the invention as follows: "The present
invention relates to dynamic random access memory (DRAM), and more specifically, to a
method and apparatus for controlling data transfers to and from a dynamic random access
memory." STMicro denies that the statements in Paragraph 37 describe or are relevant to the
subject matter of the asserted Barth I Patent claims. STMicro further denies that the asserted
claims of the Barth I Patents are valid and enforceable, and denies that any of the Barth I Patents
describe or claim anything inventive or novel. STMicro denies that any accused STMicro
products infringe any valid or enforceable claim of the Barth I Patents. STMicro lacks sufficient
knowledge to admit or deny the remaining allegations in Paragraph 37 of the Complaint and,
2. U.S. Patent No. 6,470,405
a. Identification and Ownership of the ‘405 Patent
38. STMicro admits that the ‘405 patent purports to indicate on its face that it was
issued on October 22, 2002, that it is entitled “Protocol for Communication with Dynamic
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Memory,” that it has been assigned to Rambus, and that Richard M. Barth, Frederick A. Ware,
John B. Dillon, Donald C. Stark, Craig E. Hampel, and Matthew M. Griffin are the named
inventors. STMicro admits that a purported certified copy of the ‘405 patent is attached to the
Complaint as Complainant Exhibit 1. To the extent the allegations of Paragraph 38 of the
Complaint assert legal conclusions, no answer is required. STMicro lacks sufficient knowledge
to admit or deny the remaining allegations in Paragraph 38 of the Complaint and, therefore,
denies those allegations.
issued from U.S. Patent Application No. 09/870,322, which was purportedly filed on May 29,
2001 as a continuation of application No. 09/561,868, which was purportedly filed on May 1,
2001 as a continuation of application No. 09/480,767, which was purportedly filed on Jan. 10,
2000 as a continuation of application No. 08/979,402, which was purportedly filed on Nov. 26,
1997 and has now issued as U.S. Pat. No. 6,122,688, which purportedly is a division of
application No. 08/545,292, which was purportedly filed on Oct. 19, 1995 and has now issued as
U.S. Pat. No. 5,748,914. STMicro admits that Appendix A3 includes what purports to be a
certified copy of the prosecution history of the ‘405 patent. STMicro admits that Rambus
attached purported copies of the technical references identified in the prosecution history of the
‘405 patent as Appendix C to the Complaint. To the extent the allegations of Paragraph 39 of the
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40. STMicro admits that Appendix A1, A2, A4, and A5 to the Complaint include
what purport to be certified copies of the prosecution histories of the ‘914, ‘688, ‘353, and ‘449
patents.
41. STMicro admits that what purports to be a certified copy of an assignment for the
‘405 patent is attached as Complainant Exhibit 4. To the extent the allegations of Paragraph 41
of the Complaint assert legal conclusions, no answer is required. STMicro lacks sufficient
b. Reexamination of the ‘405 Patent
42. STMicro lacks sufficient knowledge to admit or deny the allegations in Paragraph
42 of the Complaint and, therefore, denies those allegations.
3. U.S. Patent No. 6,591,353
issued on July 8, 2003, that it is entitled “Protocol for Communication with Dynamic Memory,”
that it has been assigned to Rambus, and that Richard M. Barth, Frederick A. Ware, John B.
Dillon, Donald C. Stark, Craig E. Hampel, and Matthew M. Griffin are the named inventors.
STMicro admits that a purported certified copy of the ‘353 patent is attached to the Complaint as
Complainant Exhibit 2. To the extent the allegations of Paragraph 44 of the Complaint assert
legal conclusions, no answer is required. STMicro lacks sufficient knowledge to admit or deny
the remaining allegations in Paragraph 44 of the Complaint and, therefore, denies those
allegations.
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issued from U.S. Patent Application No. 09/561,868, which was purportedly filed on May 1,
2000 as a continuation of application No. 09/480,767, which was purportedly filed on January 1,
2000 as a continuation of application No. 08/979,402, which was purportedly filed on Nov. 26,
1997 as a division of application No. 08/545,292, which was purportedly filed on Oct. 19, 1995
and has now issued as U.S. Pat. No. 5,748,914. To the extent the allegations of Paragraph 45 of
the Complaint assert legal conclusions, no answer is required. STMicro lacks sufficient
46. STMicro admits that Appendix A4 shows a purported certified copy of the
prosecution history of the ‘353 patent. STMicro admits that Rambus attached purported copies
of the technical references identified in the prosecution history of the ‘353 patent as Appendix C
to the Complaint.
47. STMicro admits that Appendix A1, A2, and A5 show purported certified copies
of the prosecution histories of the ‘914, ‘688, and ‘449 patents.
48. STMicro admits that a purported certified copy of an assignment for the ‘353
patent is attached as Complainant Exhibit 4. To the extent the allegations of Paragraph 47 of the
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4. U.S. Patent No. 7,287,109
issued on October 23, 2007, that it is entitled “Method of Controlling a Memory Device Having
a Memory Core,” that it has been assigned to Rambus, and that Richard M. Barth, Frederick A.
Ware, John B. Dillon, Donald C. Stark, Craig E. Hampel, and Matthew M. Griffin are the named
inventors. STMicro admits that a purported certified copy of the ‘109 patent is attached to the
Complaint as Complainant Exhibit 3. To the extent the allegations of Paragraph 51 of the
52. STMicro admits that the ‘109 patent purports to indicate that it was issued from
U.S. Patent Application No. 10/966,767, which was purportedly filed on October 15, 2004 as a
continuation of application No. 10/094,547, which was purportedly filed on March 8, 2002 as a
continuation of application No. 09/870,322, which was purportedly filed May 29, 2001 as a
continuation of application no. 09/561,868, which was purportedly filed May 1, 2000 as a
continuation of 09/480,767, which was purportedly filed on January 1, 2000 as a continuation of
application No. 08/979,402, which was purportedly filed on Nov. 26, 1997 as a division of
application No. 08/545,292, which was purportedly filed on Oct. 19, 1995. STMicro admits that
Appendix A7 shows a purported certified copy of the prosecution history of the ‘109 patent.
STMicro admits that Rambus attached purported copies of the technical references identified in
the prosecution history of the ‘109 patent as Appendix C to the Complaint. To the extent the
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allegations of Paragraph 52 of the Complaint assert legal conclusions, no answer is required.
53. STMicro admits that Appendices A-A6 show purported certified copies of the
prosecution histories of the ‘914, ‘688, ‘405, ‘353, ‘449, and ‘467 patents.
patent is attached as Complainant Exhibit 4. To the extent the allegations of Paragraph 54 of the
5. Foreign Counterparts of the Barth I Patents
6. Licenses to the Barth I Patents
59. STMicro admits that Confidential Complainant Exhibit 13 purports to identify
parties with a license to the Barth I patents. To the extent the allegations of Paragraph 59 of the
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B. THE DALLY PATENTS
60. STMicro admits that the ‘857, ‘858, and ‘494 patents purport to claim priority to
Application No. 08/880,980, which was purportedly filed on June 23, 1997, and to Application
No. 60/050,098, which was purportedly filed on June 20, 1997. STMicro admits that the ‘857,
‘858, and ‘494 patents purport to name William J. Dally as the sole inventor. To the extent the
61. STMicro admits that a purported copy of an assignment for the ‘857, ‘858, ‘and
‘494 patents is attached as Complainant Exhibit 8. STMicro admits that certain purported
agreements are attached as Complaint Exhibits 12A-12E, including a purported “Exclusive
License Agreement,” a purported “Amendment No. 1 to Exclusive Patent License Agreement,” a
purported “Amendment No. 2 to Exclusive Patent License Agreement,” and a purported
“Amended and Restated Exclusive Patent License Agreement.” To the extent the allegations of
Paragraph 61 of the Complaint assert legal conclusions, no answer is required. STMicro lacks
1. Non-Technical Description of the Dally Patents
Paragraph 62 describe or are relevant to the subject matter of the asserted Dally Patent claims.
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STMicro further denies that the asserted Dally Patent claims are valid and enforceable, and
denies that any of the Dally Patents describe or claim anything inventive or novel. STMicro
denies that any accused STMicro products infringe any valid or enforceable claim of the Dally
Patents. STMicro lacks sufficient knowledge to admit or deny the remaining allegations in
2. U.S. Patent No. 7,602,857
issued on October 13, 2009, that it is entitled “Digital Transmitter,” that it has been assigned to
MIT, and that William J. Dally is the sole named inventor. STMicro admits that a purported
certified copy of the ‘857 patent is attached to the Complaint as Complainant Exhibit 5. To the
extent the allegations of Paragraph 63 of the Complaint assert legal conclusions, no answer is
required. STMicro lacks sufficient knowledge to admit or deny the remaining allegations in
64. STMicro admits that the face of the ‘857 patent states that it purportedly issued
from U.S. Patent Application No. 11/514,577, which was purportedly filed on August 31, 2006.
STMicro admits that the face of the ‘857 patent states that it purportedly is a continuation of
Application No. 11/483,971, purportedly filed on July 10, 2006, which purportedly is a
continuation of Application No. 10/372,630, purportedly filed on February 24, 2003, which
purportedly is a continuation of Application No. 09/852,481, purportedly filed on May 10, 2001,
which purportedly is a continuation of Application No. 08/882,252, purportedly filed on June 25,
1997, which purportedly is a continuation of Application No. 08/880,980, purportedly filed June
23, 2001, which purportedly claims priority to Provisional Application No. 60/050,098,
purportedly filed June 20, 1997. To the extent the allegations of Paragraph 64 of the Complaint
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assert legal conclusions, no answer is required. STMicro lacks sufficient knowledge to admit or
deny the remaining allegations in Paragraph 64 of the Complaint and, therefore, denies those
allegations.
65. STMicro admits that Appendix B7 shows a purported certified copy of the
to the Complaint. STMicro admits that Appendices B1, B2, B3, B4, B5, and B6 show purported
certified copies of the prosecution histories of Application No. 11/483,971, the ‘404, ‘555, and
‘379 patents, and Application Nos. 08/880,980 and 60/050,098. To the extent the allegations of
patent is attached as Complainant Exhibit 8. STMicro admits that purported agreements are
attached as Complainant Exhibits 12A-12E. To the extent the allegations of Paragraph 66 of the
3. U.S. Patent No. 7,602,858
issued on October 13, 2009, that it is entitled “Digital Transmitter,” that it has been assigned to
MIT, and that William J. Dally is the sole named inventor. STMicro admits that a purported
certified copy of the ‘858 patent is attached to the Complaint as Complainant Exhibit 6. To the
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required. STMicro lacks sufficient knowledge to admit or deny the remaining allegations in
68. STMicro admits that the ‘858 patent purports to indicate that it was issued from
U.S. Patent Application No. 11/514,460, which was purportedly filed on August 31, 2006 as a
continuation of Application No. 11/483,971, which was purportedly filed on July 10, 2006 as a
continuation of Application No. 10/372,630, which was purportedly filed on February 24, 2003
as a continuation of Application No. 09/852,481, which was purportedly filed on May 10, 2001
as a continuation of Application No. 08/882,252, which was purportedly filed on June 25, 1997
as a continuation of Application No. 08/880,980, which was purportedly filed June 23, 2001 and
claims priority to Provisional Application No. 60/050,098, which was purportedly filed June 20,
1997. To the extent the allegations of Paragraph 68 of the Complaint assert legal conclusions, no
answer is required. STMicro lacks sufficient knowledge to admit or deny the remaining
to the Complaint. STMicro admits that Appendices B1, B2, B3, B4, B5, and B6 show purported
certified copies of the prosecution histories of Application No. 11/483,971, the ‘404, ‘555, and
‘379 patents, and Application Nos. 08/880,980 and 60/050,098. To the extent the allegations of
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patent is attached as Complainant Exhibit 8. STMicro admits that purported agreements are
4. U.S. Patent No. 7,715,494
issued on May 11, 2010, that it is entitled “Digital Transmitter,” that it has been assigned to MIT,
and that William J. Dally is the sole named inventor. STMicro admits that a purported certified
copy of the ‘494 patent is attached to the Complaint as Complainant Exhibit 7. To the extent the
issued from U.S. Patent Application No. 11/514,637, which was purportedly filed on August 31,
2006 as a continuation of Application No. 11/483,971, which was purportedly filed on July 10,
2006 as a continuation of Application No. 11/479,138, which was purportedly filed June 30,
2006 as a continuation of Application No. 10/372,630, which was purportedly filed on February
24, 2003 as a continuation of Application No. 09/852,481, which was purportedly filed on May
10, 2001 as a continuation of Application No. 08/882,252, which was purportedly filed on June
25, 1997 as a continuation of Application No. 08/880,980, which was purportedly filed on June
23, 2001, which purportedly claims priority to Provisional Application No. 60/050,098, which
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was purportedly filed June 20, 1997. To the extent the allegations of Paragraph 72 of the
to the Complaint. STMicro admits that Appendices B1, B2, B3, B4, B5, and B6 include what
purport to be certified copies of the prosecution histories of Application No. 11/483,971, the
‘404, ‘555, and ‘379 patents, and Application Nos. 08/880,980 and 60/050,098. To the extent
74. STMicro admits that what purports to be a certified copy of an assignment for the
‘494 patent is attached as Complainant Exhibit 8. STMicro admits that purported agreements are
5. Foreign Counterparts of the Dally Patents
STMicro lacks sufficient knowledge to admit or deny the allegations in
unnumbered paragraph following Paragraph 75 of the Complaint and, therefore, denies those
allegations.
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6. Licenses to the Barth I Patents
V. PROPOSED PRIMARY RESPONDENTS, PROOF OF IMPORTATION, AND

UNFAIR ACTS
77. STMicro denies that the Asserted Patents are valid and enforceable, and denies
that any of the Asserted Patents describe or claim anything inventive or novel. STMicro denies
that any accused STMicro products infringe any valid or enforceable claim of the Asserted
Patents. STMicro lacks sufficient knowledge to admit or deny the remaining allegations in
A. FREESCALE SEMICONDUCTOR
1. Freescale’s Accused Products
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2. Representative Accused Product
3. Proof of Importation
4. Unfair Acts by Freescale With Respect to the Asserted Patents
a. Barth I Patents
(1) The ‘405 Patent
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b. Dally Patents
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B. BROADCOM CORPORATION
1. Broadcom’s Accused Products
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2. Representative Accused Products
4. Unfair Acts by Broadcom With Respect to the Asserted Patents
a. Barth I Patents
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b. Dally Patents
149 of the Complaint and, therefore, denies those allegations
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C. LSI CORPORATION
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1. LSI’s Accused Products
4. Unfair Acts by LSI With Respect to the Asserted Patents
a. Barth I Patents
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b. Dally Patents
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D. MEDIATEK INC.
1. MediaTek’s Accused Products
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4. Unfair Acts by LSI With Respect to the Asserted Patents
a. Barth I Patents
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E. NVIDIA CORPORATION
1. nVidia’s Accused Products
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4. Unfair Acts by nVidia With Respect to the Asserted Patents
a. Barth I Patents
b. Dally Patents
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F. STMICROELECTRONICS N.V. AND STMICROELECTRONICS, INC.
252. STMicroelectronics N.V. admits that it is a Netherlands corporation with a
principal place of business at 39, Chemin de Champ des Filles, 1228 Plan-Les-Ouates, Geneva,
Switzerland. STMicroelectronics Inc. admits that it is a Delaware corporation and an indirect
wholly-owned subsidiary of STMicroelectronics N.V. having a place of business at 1310
Electronics Dr., Carrollton, Texas 75006. Except as so admitted, STMicro denies the remaining
allegations of paragraph 252 of the Complaint.
253. STMicro admits that it offers system-on-a-chip and software solutions to
manufacturers of computing and network equipment, digital entertainment products and mobile
devices. STMicro admits that its product portfolio includes solutions for computers, televisions,
LCD monitors, set-top boxes, handheld devices, VoIP telephones, and hard disk drives. Except
as so admitted, STMicro denies the remaining allegations of paragraph 253 of the Complaint.
254. STMicro denies the allegations and characterizations of Paragraph 254 of the
Complaint, and specifically denies that the Asserted Patents are valid and enforceable, or that a
license for the Asserted Patents would cover any Accused Product.
1. STMicro’s Accused Products
256. STMicro admits that certain STMicro products include memory controllers that
may be used with DDR-and/or LPDDR memory. STMicro admits that certain STMicro products
are imported into the Untied States by STMicroelectronics Inc. or others. STMicro denies the
remaining allegations of Paragraph 256 of the Complaint.
257. STMicro admits that certain STMicro products contain interfaces, including PCI
Express, DisplayPort and/or certain SATA interfaces. STMicro admits that certain STMicro
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products are imported by STMicroelectronics Inc., and that certain STMicro products are sold
after importation by STMicroelectronics, Inc. STMicro denies the remaining allegations of
Paragraph 257 of the Complaint.
258. STMicro admits that certain STMicro products may be used in applications
including automotive products, computer products, home entertainment and displays, and
microcontroller products. Except as so admitted, STMicro denies the remaining allegations of
259. STMicro admits that certain STMicro products include certain memory
controllers that may be used with DDR, LPDDR, and/or GDDR memory. STMicro admits that
certain STMicro products include a PCI Express interface, a DisplayPort interface, and/or certain
SATA and SAS interfaces. Except as so admitted, STMicro denies the remaining allegations of
260. STMicro denies that the SPEAr09B042 and ST B V60131 are representative
products. STMicro further denies that the Asserted Patents are valid and enforceable, and denies
that any of the Asserted Patents describe or claim anything inventive or novel. STMicro denies
that the SPEAr09B042 and ST B V60131, or any other accused STMicro product, infringe any
valid or enforceable claim of the Asserted Patents. STMicro lacks sufficient knowledge to admit
or deny the remaining allegations in Paragraph 260 of the Complaint and, therefore denies those
allegations.
261. STMicro admits that STMicro Exhibits 2A and 2B to the Complaint contain what
are purported to be a receipt and product packaging. STMicro denies that the SPEA09B042 chip
or any other accused STMicro product, infringes any valid or enforceable claim of the Asserted
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Patents. Except as so admitted, STMicro lacks sufficient knowledge to admit or deny the
remaining allegations in Paragraph 261 of the Complaint and, therefore, denies those allegations.
262. STMicro admits that STMicro Exhibits 2C and 2D to the Complaint contain what
are purported to be a receipt and product packaging. STMicro denies that the ST G V60131 chip
or any other accused STMicro product, infringes any valid or enforceable claim of the Asserted
Patents. Except as so admitted, STMicro lacks sufficient knowledge to admit or deny the
remaining allegations in Paragraph 262 of the Complaint and, therefore, denies those allegations.
4. Unfair Acts by STMicro With Respect to the Asserted Patents
a. Barth I Patents
263. To the extent the allegations of Paragraph 263 of the Complaint assert legal
conclusions, no answer is required. STMicro denies that the ‘405 Patent is valid and
enforceable, or otherwise claims anything inventive or novel. STMicro further denies that the
accuse STMicro products infringe any valid or enforceable claim of the ‘405 patent. STMicro
denies the remaining allegations in Paragraph 263 of the Complaint.
264. STMicro denies that certain STMicro products may be operated and/or tested in
the United States by STMicroelectronics, Inc. To the extent the allegations of paragraph 264 of
the Complaint assert legal conclusions, no answer is required. STMicro denies the remaining
allegations in Paragraph 264 of the Complaint.
265. STMicro admits that certain STMicro products are designed to be used with
particular types of memory and that during operation, certain types of such products may issue
certain signals at certain times. To the extent the allegations of Paragraph 265 assert legal
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accused STMicro products infringe any valid or enforceable claim of the ‘405 patent. STMicro
267. STMicro admits that a chart purporting to apply claim 11 of the ‘405 patent to
SPEAr09B042 is attached as STMicro Exhibit 3. STMicro denies the remaining allegations in
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272. STMicro admits that a chart purporting to apply claim 11 of the ‘353 patent to
SPEAr09B042 is attached as STMicro Exhibit 4. STMicro denies the remaining allegations in
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277. STMicro admits that a chart purporting to apply claims 1, 12 and 20 of the ‘109
patent to SPEAr09B042 is attached as STMicro Exhibit 5. STMicro denies the remaining
b. Dally Patents
279. STMicro admits that certain STMicro products may be imported and sold after
importation in the United States by STMicroelectronics, Inc. To the extent the allegations of
paragraph 279 of the Complaint assert legal conclusions, no answer is required. STMicro denies
the remaining allegations in Paragraph 279 of the Complaint.
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280. STMicro admits that certain STMicro products include a SATA interface. To the
required. STMicro denies that the ‘857 Patent is valid and enforceable, or otherwise claims
anything inventive or novel. STMicro further denies that the accuse STMicro products infringe
any valid or enforceable claim of the ‘857 patent. STMicro denies the remaining allegations in
283. STMicro admits that a chart purporting to apply claims 1, 24, 35 and 39 of the
‘857 patent to ST G V60131, is attached as STMicro Exhibit 6. STMicro denies the remaining
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any valid or enforceable claim of the ‘858 Patent. STMicro denies the remaining allegations in
285. STMicro admits that certain STMicro products may be imported, and sold after
importation, in the United States by STMicroelectronics, Inc. To the extent the allegations of
accuse STMicro products infringe any valid or enforceable claim of the ‘858 Patent. STMicro
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289. STMicro admits that a chart purporting to apply claims 1 and 20 of the ‘858
patent to ST G V60131, is attached as STMicro Exhibit 7. STMicro denies the remaining
291. STMicro admits that certain STMicro products may be imported and sold after
importation in the United States by STMicroelectronics, Inc. To the extent the allegations of
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295. STMicro admits that a chart purporting to apply claims 1, 25 and 39 of the ‘494
patent to ST G V60131, is attached as STMicro Exhibit 8. STMicro denies the remaining
G. CUSTOMER RESPONDENTS INCORPORATING BROADCOM,

FREESCALE, LSI, MEDIATEK, NVIDIA, OR STMICRO’S ACCUSED
PRODUCTS
1. Asustek Computer Inc. and Asus Computer International Inc.
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a. Asus’s Accused Products
b. Proof of Importation
c. Unfair Acts by Asus With Respect to the Asserted Patents
(1) Barth I Patents
(a) The ‘353 Patent
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(b) The ‘109 Patent
(2) Dally Patents
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(c) The ‘494 Patent
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2. Audio Partnership Plc.
a. Audio Partnership’s Accused Products
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c. Unfair Acts by Audio Partnership With Respect to the

Asserted Patents
(1) Barth I Patents
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3. Biostar Microtech (U.S.A.) Corp. and Biostar Microtech International

Corp.
a. Biostar’s Accused Products
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c. Unfair Acts by Biostar With Respect to the Asserted Patents
(1) Dally Patents
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4. Cisco Systems, Inc.
a. Cisco’s Accused Products
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c. Unfair Acts by Cisco With Respect to the Asserted Patents
(1) Barth I Patents
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(2) Dally Patents
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5. Elitegroup Computer Systems
a. ECS’s Accused Products
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c. Unfair Acts by ECS With Respect to the Asserted Patents
(1) Dally Patents
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6. EVGA Corporation
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a. EVGA’s Accused Products
c. Unfair Acts by EVGA With Respect to the Asserted Patents
(1) Dally Patents
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7. Galaxy Microsystems Ltd.
a. Galaxy’s Accused Products
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c. Unfair Acts by Galaxy With Respect to the Asserted Patents
(1) Dally Patents
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8. Garmin International
484. STMicro denies that the Asserted Patents are valid and enforceable, or otherwise
claim anything inventive or novel. STMicro further denies that the accused STMicro products
infringe any valid or enforceable claim of the Asserted Patents. STMicro lacks sufficient
knowledge to admit or deny the allegations in Paragraph 484 of the Complaint and, therefore,
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a. Garmin’s Accused Products
c. Unfair Acts by Garmin With Respect to the Asserted Patents
(1) Barth I Patents
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9. G.B.T. Inc. and Giga-Byte Technology Co., Ltd.
a. Gigabyte’s Accused Products
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c. Unfair Acts by Gigabyte With Respect to the Asserted Patents
(1) Dally Patents
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10. Hewlett-Packard Company
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a. HP’s Accused Products
c. Unfair Acts by HP With Respect to the Asserted Patents
(1) Barth I Patents
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(2) Dally Patents
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11. Hitachi Global Storage Technologies, Inc.
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a. Hitachi’s Accused Products
c. Unfair Acts by Hitachi With Respect to the Asserted Patents
(1) Barth I Patents
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(2) Dally Patents
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12. Jaton Corporation and Jaton Technology TPE
a. Jaton’s Accused Products
c. Unfair Acts by Asus With Respect to the Asserted Patents
(1) Dally Patents
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13. MSI Computer Corp. and Micro-Star International Co., Ltd.
a. MSI’s Accused Products
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c. Unfair Acts by MSI With Respect to the Asserted Patents
(1) Dally Patents
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14. Motorola, Inc.
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a. Motorola’s Accused Products
c. Unfair Acts by Motorola With Respect to the Asserted Patents
(1) Barth I Patents
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(2) Dally Patents
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15. Oppo Digital Inc.
a. Oppo’s Accused Products
c. Unfair Acts by Oppo With Respect to the Asserted Patents
(1) Barth I Patents
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16. Palit Microsystems Ltd. and Gracom Technologies LLC
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a. Palit’s Accused Products
c. Unfair Acts by Palit With Respect to the Asserted Patents
(1) Dally Patents
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17. Pine Technology Holdings
a. Pine’s Accused Products
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c. Unfair Acts by Pine With Respect to the Asserted Patents
(1) Dally Patents
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18. Seagate Technology LLC
a. Seagate’s Accused Products
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c. Unfair Acts by Seagate With Respect to the Asserted Patents
(1) Barth I Patents
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(2) Dally Patents
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19. Sparkle Computer Co., Ltd.
a. Sparkle’s Accused Products
c. Unfair Acts by Sparkle With Respect to the Asserted Patents
(1) Dally Patents
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20. Zotac International (MCO) Ltd. and Zotac USA Inc.
a. Zotac’s Accused Products
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c. Unfair Acts by Zotac With Respect to the Asserted Patents
(1) Dally Patents
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VI. HARMONIZED TARIFF SCHEDULE INFORMATION
819. STMicro admits that STMicro’s Accused Products fall within the following
classification of the Harmonized Tariff Schedule (“HTS”) of the United States: 8542.31.0000
and 8542.39.0000. STMicro lacks sufficient knowledge to admit or deny the remaining
VII. DOMESTIC INDUSTRY
A. Rambus has a Domestic Industry with Respect to the Asserted Patents
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B. The Commission has Agreed that Rambus has a Domestic Industry with
Respect to the Barth I Patents
C. Rambus’s License of the Barth I Patents to nVidia Further Demonstrates

that Rambus Has a Domestic Industry with Respect to the Barth I Patents
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VIII. RELATED PROCEEDINGS
A. Investigation No. 337-661 (Rambus I)
B. Rambus v. nVidia (N.D. Cal.)
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C. Rambus v. Broadcom, Freescale, LSI, MediaTek, STMicro, and nVidia (N.D.

Cal.)
842. STMicro admits that Rambus has filed a complaint for patent infringement in the
Northern District of California against STMicro alleging infringement of the Barth I patents, the
Dally patents, and certain other patents. STMicro denies that any of its products infringe any
valid, enforceable claim of a Rambus patent. STMicro lacks sufficient knowledge to admit or
deny the remaining allegations in Paragraph 842 of the Complaint and, therefore, denies those
allegations.
D. Related Oppositions
IX. GENERAL EXCLUSION ORDER
conclusions, no answer is required. STMicro denies that the Asserted Patents are valid and
enforceable. STMicro denies that any accused STMicro products infringe any valid or
enforceable claim of the Asserted Patents. STMicro denies the remaining allegations and
characterizations of Paragraph 845 of the Complaint.
X. RELIEF
(a)-(e) STMicro denies the statements in Complainant’s Relief requested section to the
extent that those statements purport to allege the existence of any factual or legal predicates for
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the relief requested. Further, STMicro denies that Complainant is entitled to any of the relief
requested.
RESPONSE TO NOTICE OF INVESTIGATION
Pursuant to Commission Rule 210.13, STMicro responds to the Notice of Investigation
issued by the U.S. International Trade Commission on December 29, 2010 and published in the
Federal Register on January 4, 2011, 76 Fed. Reg. 384as follows:
STMicro admits that Rambus filed an original Complaint with the Commission on
December 1, 2010, as set forth in the Notice of Investigation. STMicro admits that the
Complaint generally sets forth the allegations summarized in the Notice of Investigation.
STMicro further admits that the Complainant has requested that an investigation be
instituted and that, after the investigation, a general exclusion order, and a cease and desist order
be issued, as set forth in the Notice of Investigation.
STMicro also admits that the Commission has instituted an investigation in accordance
with the terms set forth in the Notice of Investigation. STMicro denies that it has violated any
provision of Section 337 of the Tariff Act of 1930, as amended.
Specifically, STMicro denies that it has engaged in any action that would constitute
unlawful importation into the United States, sale for importation, or sale within the United States
after importation, of Certain Semiconductor Chips and Products Containing Same. STMicro
further contends that the asserted claims of the Asserted Patents are invalid or unenforceable and
cannot support any remedy for alleged infringement.
STMicro denies that Complainant is entitled to any relief in this proceeding.
Pursuant to Rule 210.13(b), STMicro provides the following additional information. By
providing this information, STMicro intends only to supply data required by 19 C.F.R. §
210.13(b). STMicro specifically denies that any of the information or data supplied below relate
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to or support any allegations of infringement against STMicro or any violation of 19 U.S.C. §
1337.
1. Statistical Data on the Quantity and Value of Imports
STMicro objects to Rambus’s definition of “Accused Products” as vague and overbroad.
Given Rambus’s purported definition of “Accused Products,” STMicro is unable to determine at
the present time the quantity and value of accused imports of the products accused by Rambus.
STMicro’s investigation is ongoing and it will provide this information when available.
STMicro denies that it imports or sells the accused SPEAr09B042 and ST G V60131 products in
the United States.
2. Harmonized Tariff Schedule Items Numbers
STMicro admits that STMicro’s Accused Products fall within the following classification of the
Harmonized Tariff Schedule (“HTS”) of the United States: 8542.31.0000 and 8542.39.0000.
STMicro’s investigation is ongoing and it will provide any additional information when
available.
3. STMicro’s Capacity to Produce the Accused Article(s)
Given Rambus’s purported definition of “Accused Products,” STMicro is unable to determine at
the present time its capacity to produce the products accused by Rambus. STMicro’s
investigation is ongoing and it will provide this information when available.
4. The Relative Significance of the U.S. Market to STMicro’s Operations
The United States does not constitute a significant market for STMicro products.
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AFFIRMATIVE DEFENSES
STMicro specifically alleges and asserts the following defenses, undertaking the burden
of proof only as to those defenses that are deemed by law to be affirmative defenses. STMicro
further states that it has not had a sufficient opportunity to collect and review information
relevant to potentially available defenses against the allegations of the Complaint, and thus
reserves the right to modify defenses or to raise additional defenses as discovery proceeds in this
investigation.
First Affirmative Defense: Non-infringement
1. STMicro does not infringe, and has not infringed (either directly, contributorily,
by inducement, jointly, literally, or under the doctrine equivalents) any valid and enforceable
claim of the Asserted Patents.
2. STMicro has not imported, sold for importation, or sold within the United States
after importation, any product that is covered by any valid and enforceable claim of any of the
Asserted Patents.
Second Affirmative Defense: Invalidity
3. One or more claims of the Asserted Patents are invalid or void for failing to
comply with one or more of the conditions for patentability set forth in Part II of Title 35 of the
United States Code, including, but not limited to, §§ 101, 102, 103, and/or 112.
Third Affirmative Defense: Lack of Domestic Industry
4. Rambus has not adequately alleged and cannot prove the existence of a domestic
industry, as required by Section 337(a)(2) and defined by Section 337(a)(3) in connection with
any of the patents in suit, or that such domestic industry is in the process of being established.
5. Rambus cannot establish that it or its licensees have made “significant
investment” in plant, equipment, labor, or capital relating to articles protected by at least one
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claim of each of the Asserted Patents. Furthermore, Rambus cannot establish a “substantial
investment” in licensing, research and development, or other qualifying activities relating to each
of the Asserted Patents, sufficient to satisfy the economic prong of the domestic industry
requirement. Finally, Rambus cannot establish satisfaction of the technical prong of the
domestic industry requirement in this case.
Fourth Affirmative Defense: Unenforceability – Estoppel, Acquiescence, and Waiver
6. Rambus is barred in whole or in part by the doctrine of estoppel, acquiescence,
and waiver from enforcing the Asserted Patents against STMicro.
7. Rambus is barred in whole or in part by or based on its participation in,
interaction with, or communications with certain standards setting organizations or bodies.
Fifth Affirmative Defense: Unenforceability – Patent Exhaustion/First Sale Doctrine
8. Rambus is barred in whole or in part by the doctrines of patent exhaustion and/or
the first sale doctrine from enforcing the Asserted Patents against STMicro.
9. On information and belief, Rambus’s licensing program for Accused Products is
an attempt to secure double royalties and extend the physical and temporal scope of the patent
grant with anticompetitive effect.
Sixth Affirmative Defense: Inequitable Conduct
10. The ‘857, ‘858, and ‘494 patents are unenforceable due to inequitable conduct in
the procurement of the patents, the facts and circumstances of which are set forth below.
11. Upon information and belief, during prosecution of the ‘857, ‘858, and ‘494
patents, the patentee failed to disclose to the U.S. Patent & Trademark Office the identity, or
falsely minimized the contribution, of John Poulton (“Poulton”) as a co-inventor of Patent
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Application No. 601050,098, filed on June 20, 1997, which was the basis for the ‘857, ‘858, and
‘494 patents.
12. William Dally ("Dally") and Poulton co-authored a paper titled “Transmitter
Equalization for 4Gb/s Signaling,” which was published in or around August 1996.
13. Dally and Poulton co-authored a paper titled “Transmitter Equalization for 4Gb/s
Signaling,” which was published in or around January 1997.
14. Upon information and belief, the papers referenced in the previous two
paragraphs were the foundation for Patent Application No. 601050,098, filed on June 20, 1997.
Patent Application No. 601050,098 was the basis for the ‘555, ‘404, ‘474, ‘857, ‘858, and ‘494
patents.
15. The inequitable conduct as alleged in paragraphs above so permeates the
enforceability of the ‘857, ‘858, and ‘494 patents that it renders them unenforceable.
Seventh Affirmative Defense: Unclean Hands
16. The scope of this Investigation includes SDRAM products that Rambus alleges
infringe one or more claims of the Asserted Patents.
17. SDRAM technology was at least in part developed by a standard-setting
organization known as the Joint Electronic Design Engineering Counsel (“JEDEC”), which,
upon information and belief, Rambus was a member of (or otherwise was a participant in) from
at least 1991 to until at least 1996.
18. Various of the Asserted Patents, including the ’405, ’353, and ’109, claim earliest
effective filing dates in either 1995 or 1997.
19. Upon information and belief, as early as 1996, Rambus was considering industry-
wide adoption of its DRAM technology (referred to as Rambus DRAM, or “RDRAM”).
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20. Upon information and belief, in an aggressive approach to enforce its intellectual
property against, for example, entities considering or using competing DRAM technologies (e.g.,
SDRAM), Rambus (i) endeavored to create a “patent minefield” by extending claims in its
patents to cover SDRAM, DDR SDRAM, and other potentially competing memory types and (ii)
as of early 1998, anticipated and commenced plans for litigation in order to enforce its
intellectual property.
21. Upon information and belief, based on Rambus’s goals and under the
circumstances Rambus found itself in regarding the use of competing memory technologies by
potential licensees, it was at least reasonably foreseeable and at most inevitable that litigation
would take place between Rambus and one or more of the potential licensees.
22. Upon information and belief, the Rambus litigation strategy implemented in 1998
set forth a “document retention policy,” under which millions of pages of documents were
destroyed during so-called “shred days,” that, upon information and belief, occurred in at least
1998, 1999, and 2000.
23. Upon information and belief, the destroyed documents included, for example,
documents from Rambus’s patent files, documents connected with licensing negotiations
between Rambus and third parties regarding Rambus’s patents and/or DRAM technology,
documents connected with Rambus’s involvement with and/or participation in JEDEC, and
documents questioning the patentability of Rambus’s purported inventions.
24. More specifically, upon information and belief, in expediting Rambus’s
“document retention policy” at a time when it was at least reasonably foreseeable to Rambus that
litigation would commence on one or more of its memory patents, Rambus’s in-house counsel as
well as its outside counsel under direction of Rambus systematically purged Rambus’s patent
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files. The destroyed patent file documents included “hard and electronic copies of draft
amendments, draft claims, and attorneys’ handwritten notes, and correspondence regarding
patent prosecution, some of which did not exist in any other form.” January 9, 2009 Opinion in
Micron Technology, Inc. v. Rambus, Inc. (D. Del.), Civ. No. 00-702-SLR, pp. 17-18. “These
kinds of materials are typically sought in discovery in patent cases.” Id. at p. 18, n. 44.
864. Various courts that have adjudicated litigation involving Rambus and its memory
patents have found that Rambus engaged in the spoliation of evidence. In Rambus v. Infineon,
the United States District Court for the Eastern District of Virginia stated that: “It is settled that
Rambus instituted a document destruction policy and thereby intentionally destroyed documents.
It is also settled that the destroyed documents covered all of the major categories of documents
generated in the ordinary course of Rambus’s business. Through depositions, Infineon has
established that Rambus’s document purging program resulted in the destruction of evidence
relevant to this action, including evidence related to: the prosecution of the patents-in-suit,
Rambus’s participation in JEDEC, Rambus’s prosecution of JEDEC-related patents, the
relationship of Rambus’s patent applications and pending claims to JEDEC standards,
presentations to Rambus’s Board of Directors regarding intellectual property, potentially
damaging or invalidating prior art, and Rambus’s SDRAM licensing negotiations.” Rambus, Inc.
v. Infineon Technologies AG, et al., 222 F.R.D. 280, 290 (E.D. Va. 2004) (citations omitted).1
25. In Samsung Electronics Co., Ltd. v. Rambus Inc., the United States District Court
for the Eastern District of Virginia found that “[t]he record proves that Rambus engaged in
1
It is noted that in connection with the Eastern District of Virginia Rambus v. Infineon
litigation, the United States Court of Appeals for the Federal Circuit reversed in part an earlier
judgment in that litigation. However, on remand, the district court noted that “Rambus did not
appeal the findings of litigation misconduct, including the finding that it had intentionally
destroyed relevant documents in anticipation of litigation.” See id. at p. 286.
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pervasive document destruction in 1998 and 1999 while it anticipated litigation, or reasonably
should have anticipated litigation, and in 2000 while it was actually engaged in litigation.” July
18, 2006 Memorandum Opinion in Samsung Electronics Co., Ltd. v. Rambus Inc. (E.D. Va.),
Civ. No. 3:05cv406, p. 80.
26. In Micron Technology, Inc. v. Rambus, Inc., the United States District Court for
the District of Delaware found that litigation concerning Rambus’s intellectual property “was
reasonably foreseeable [by Rambus] no later than December 1998” and that “a duty to preserve
potentially relevant evidence arose in December 1998 and any documents purged from that time
forward are deemed to have been intentionally destroyed, i.e., destroyed in bad faith.” January 9,
2009 Opinion in Micron Technology, Inc. v. Rambus, Inc. (D. Del.), Civ. No. 00-702-SLR, pp.
31-32. The Court concluded that “the showing of bad faith is so clear and convincing” and “the
spoliation conduct was extensive, including within its scope the destruction of innumerable
documents relating to all aspects of Rambus’s business . . . .” Id. at p. 33. This resulted in the
Court ruling the twelve Rambus patents asserted in that litigation as being unenforceable against
Micron Technology, Inc.
27. Upon information and belief, the adjudged mass spoliation of evidence by
Rambus included the destruction of non-public documents that would have been relevant and/or
material to STMicro’s defense in this investigation, including at least defenses asserting:
unenforceability due to patent misuse and violation of antitrust and unfair competition laws;
equitable estoppel; and inequitable conduct.
28. Moreover, upon information and belief, due to the (a) relatedness among the
timing of the Asserted Patents, the accused technologies in this Investigation and other Rambus
litigations in which spoliation has been found, and (b) the period of time associated with
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Rambus’s destruction of documents, such as those documents connected with Rambus’s
prosecution of JEDEC-related patents, Rambus’s SDRAM licensing negotiations, and the
relationship of Rambus’s patent applications and pending claims to JEDEC standards, Rambus
has destroyed documents that would have been relevant to the validity, enforceability, and/or
interpretation of the Asserted Barth I Patents.
29. Accordingly, Rambus’s request to initiate this Investigation and its assertion of
the Asserted Patents against STMicro to obtain equitable relief in this Investigation have been
done with “unclean hands,” and the Asserted Patents should be declared unenforceable against
STMicro.
Eighth Affirmative Defense: Prosecution Laches
30. The relief sought by Rambus is barred in whole or in part on the grounds of
prosecution laches. In particular, the asserted claims of the ‘405 and ‘353 patents are
unenforceable because they were granted to the patentee(s) after an unreasonable and
unexplained delay in prosecution. The ‘405 and ‘353 patents are purportedly continuations of a
series of patent applications the first of which was filed on October 19, 1995.
31. The asserted claims of the ‘857, ‘858, and ‘494 patents are unenforceable because
they were granted to the patentee(s) after an unreasonable and unexplained delay in prosecution.
The '857, ‘858, and ‘494 patents are purportedly continuations of a series of patent applications
the first of which was filed on June 20, 1997.
Ninth Affirmative Defense: License
32. Upon information and belief, through licenses granted by Rambus, STMicro has
rights to one or more of the Asserted Patents and/or is licensed to make, use, sell, and/or offer for
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PUBLIC VERSION
D. Deny Complainant’s request for an exclusion order, cease and desist order, bond,
or any other relief requested as to STMicro or its products; and
E. Award STMicro such other relief as the Commission deems appropriate based on
the facts determined by the authority of the Commission.
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PUBLIC VERSION
Respectfully submitted,
Dated: March 29, 2011 /s/ Eric C. Rusnak

_________________________-
Eric C. Rusnak
K&L GATES LLP
1601 K Street, NW
Washington, DC 20006-1600
Tel: (202) 778-9000
Michael J. Bettinger
Stephen M. Everett
Elaine Y. Chow
K&L GATES LLP
4 Embarcadero Center, Suite 1200
San Francisco, CA 94111
Telephone: (415) 882-8200
Michael J. Abernathy
K&L GATES LLP
70 West Madison Street, Suite 3100
Chicago, IL 60602-4207
Telephone: (312) 372-1121
Counsel for Respondents STMicroelectronics

N.V. and STMicroelectronics Inc.
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CONFIDENTIAL EXHIBIT A
NOT INCLUDED IN
PUBLIC VERSION OF FILING

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PUBLIC VERSION

UNITED STATES INTERNATIONAL TRADE COMMISSION

Before the Honorable Theodore R. Essex

CERTAIN SEMICONDUCTOR CHIPS Investigation No. 337-TA-753

AMENDED RESPONSE OF STMICROELECTRONICS INC. AND

Pursuant to 19 C.F.R. § 210.13, Respondents STMicroelectronics Inc. and

STMicroelectronics N.V. (collectively, “STMicro”) hereby responds to the Complaint filed

sufficient knowledge or information to form a belief as to whether an industry exists in the

STMicro denies such characterizations.

RESPONSE TO THE COMPLAINT

2. STMicro does not have sufficient knowledge or information to form a belief

3. STMicro does not have sufficient knowledge or information to form a belief

4. STMicro does not have sufficient knowledge or information to form a belief

6. STMicro admits that Rambus has named Freescale Semiconductor, Inc.

("Freescale"), Broadcom Corporation ("Broadcom"), LSI Corporation ("LSI"), MediaTek Inc.

("MediaTek"), nVidia Corporation ("nVidia"), and STMicroelectronics N.V. and

STMicroelectronics Inc. (collectively "STMicro"), as well as the following alleged customers of

Biostar Microtech International Corporation (collectively "Biostar"), Cisco Systems, Inc.

("Cisco"), Elitegroup Computer Systems ("ECS"), EVGA Corporation ("EVGA"), Galaxy

Complaint. STMicro denies the remaining allegations of paragraph 6.

of the Complaint and, therefore, denies those allegations.

contained in Paragraph 8 of the Complaint and, therefore, denies those allegations.

of the Complaint and, therefore, denies those allegations.

of at least microcontrollers, microprocessors, digital signal processors, communications

processor, applications processors, host processors, network processors, switches, VoIP

processors, baseband processors, multimedia processors, media access controllers, ethernet

information to admit or deny the remaining allegations contained in Paragraph 9 of the

Complaint and, therefore, denies those allegations.

therefore, denies those allegations.

18. STMicro admits that Rambus asserts infringement by certain Respondents of

Paragraph 19 of the Complaint and, therefore, denies those allegations.

Paragraph 20 of the Complaint, STMicro lacks sufficient knowledge or information to admit or

deny the allegations and, therefore, denies those allegations.

allegations and, therefore, denies those allegations.

22. STMicro lacks sufficient knowledge or information to admit or deny the

allegations contained in Paragraph 22 of the Complaint and, therefore, denies them.

II. BACKGROUND OF THE TECHNOLOGY

of the Complaint and, therefore, denies those allegations.

knowledge or information to admit or deny the remaining allegations contained in Paragraph 25

of the Complaint and, therefore, denies those allegations.

sufficient knowledge to admit or deny the remaining allegations in Paragraph 26 of the

Complaint and, therefore, denies those allegations.

III. COMPLAINANT RAMBUS

Paragraph 28 of the Complaint and, therefore, denies those allegations.

Paragraph 29 of the Complaint and, therefore, denies those allegations.

Paragraph 30 of the Complaint and, therefore, denies those allegations.

of the Complaint and, therefore, denies those allegations.

Paragraph 32 of the Complaint and, therefore, denies those allegations.

Paragraph 33 of the Complaint and, therefore, denies those allegations.

IV. THE ASSERTED PATENTS

allegations in Paragraph 34 of the Complaint and, therefore, denies those allegations.

allegations in Paragraph 35 of the Complaint and, therefore, denies those allegations.

A. THE BARTH I PATENTS

of the Complaint and, therefore, denies those allegations.

1. Non-Technical Description of the Barth I Patents

therefore, denies those allegations.

2. U.S. Patent No. 6,470,405

a. Identification and Ownership of the ‘405 Patent

Complaint as Complainant Exhibit 1. To the extent the allegations of Paragraph 38 of the

denies those allegations.

denies those allegations.

therefore, denies those allegations.