IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

NVIDIA CORPORATION, )
) Civil Action No.
Plaintiff, ) 1:08-CV-473-UA-WWD
)
v. )
)
RAMBUS, INC. )
Defendant. )
______________________________________ )

NVIDIA CORPORATION’S MEMORANDUM IN OPPOSITION TO

RAMBUS INC.’S MOTION TO TRANSFER

Case 1:08-cv-00473-UA-WWD Document 19 Filed 10/07/2008 Page 1 of 27

 TABLE OF CONTENTS

Page

I. INTRODUCTION................................................................................................... 1
II. STATEMENT OF FACTS...................................................................................... 3
A. Rambus’ CA Patent Suit Against NVIDIA Does Not Involve Claims
of Antitrust Misconduct................................................................................ 3
B. NVIDIA Is an Integral Part of the Durham Community and a Hub of
Innovation in North Carolina ....................................................................... 4
C. Anticompetitive Behavior Within the Technology Market for
Computer Memory Directly Injures North Carolina.................................... 5
III. QUESTION PRESENTED ..................................................................................... 7
IV. ARGUMENT .......................................................................................................... 7
A. Rambus’ CA Patent Suit Against NVIDIA is Not “First-Filed”
Under Applicable Law ................................................................................. 7
1. The Fourth Circuit Applies the First-to-File Theory Where
An Identity of Issues Exists............................................................... 7
2. There Is No Identity of Issues Between the Antitrust Issues in
the Instant Action and Rambus’ CA Patent Suit Against
NVIDIA............................................................................................. 8
3. Rambus Improperly Focuses on California Litigations to
Which NVIDIA is Not a Party .......................................................... 9
4. NVIDIA Should Not Be Forced to Plead Its Antitrust Claim
as a Counterclaim and in a Venue Not of Its Choosing .................. 10
B. The 28 U.S.C. §1404(a) Factors Favor North Carolina as the Proper
Venue for This Action................................................................................ 11
1. NVIDIA’s Choice of North Carolina Should Be Given
Substantial Deference Because Its Cause of Action Bears
Relation to North Carolina .............................................................. 13
2. The Sources of Proof Exist in North Carolina and Are Easily
Obtained From Other Jurisdictions (Factor 2) ................................ 15
3. The Remaining § 1404(a) Factors Are Either Irrelevant or Do
Not Favor Transfer .......................................................................... 16
a. Compulsory Process (Factor 3)............................................ 16
b. Fairness Considerations (Factor 6) ...................................... 17

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 TABLE OF CONTENTS
(continued)
Page

c. Practical Considerations (Factor 7)...................................... 17

d. Local Interest (Factor 8)....................................................... 18
e. Administrative Considerations (Factor 9)............................ 18
f. Conflict-of-Laws (Factor 11) ............................................... 19
4. Rambus Has Failed to Prove That the 1404(a) Factors
Strongly Favor Transfer .................................................................. 20
V. CONCLUSION ..................................................................................................... 20

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 TABLE OF AUTHORITIES

Page
CASES
Aventis Cropscience, N.V. v. Pioneer Hi-Bred Int’l, Inc.,
No. 1:00CV00463, 2001 WL 604185 (M.D.N.C. April 23, 2001)............................ 19
Burlington Industries, Inc. v. Milliken & Co.,
690 F.2d 380 (4th Cir. 1982) ..................................................................................... 11
CACI Intern., Inc. v. Pentagen Technologies Intern., Ltd.,
70 F.3d 111 1995 WL 679952 (4th Cir. Nov. 16, 1995) ............................................. 8
Collins v. Straight, Inc.,
748 F.2d 916 (4th Cir. 1984) ...............................................................................12, 13
Commercial Equipment Co., Inc., v. Barclay Furniture Co.,
738 F. Supp. 974 (W.D.N.C. 1990) ........................................................................... 13
Cortex Surveillance Automation, Inc. v. Security Integrators and
Consultants, Inc.,
No. 1:05CV562, 2006 WL 994951, (M.D.N.C. April 12, 2006)............................... 20
Critical-Vac Filtration Corp. v. Minuteman Int’l, Inc.,
233 F.3d 697 (2d Cir. 2000)........................................................................................ 9
Gulf Oil v. Gilbert,
330 U.S. 501(1946) ................................................................................................... 12
Harris v. Nussbaum,
No. 1:97CV01029, 1998 U.S. Dist. LEXIS 15144 (M.D.N.C. June 19,
1998) .......................................................................................................................... 13
Hydranautics v. FilmTec Corp.,
70 F.3d 533 (9thCir. 1995) ..................................................................................10, 11
Jefferson Pilot Life Ins. Co. v. Griffin,
No. 1:07CV0096, 2008 WL 2485598 (M.D.N.C. June 16, 2008)............................... 8
Koh v. Microtek Int’l, Inc.,
250 F.Supp.2d 627 (E.D. Va. 2003) .......................................................................... 13
Kontoulas v. A.H. Robins Co., Inc.,
745 F.2d 312 (4th Cir. 1984) ..................................................................................... 12
Mercoid Corp. v. Mid-Continent Inv. Co.,
320 U.S. 661 (1994)................................................................................................... 11
Orrell v. Motorcarparts of America, Inc.,
Civ. No. 3:06CV418-C, 2007 WL 895503, (W.D.N.C. March 22, 2007) ..........19, 20
Parham v. Weave Corp.,
323 F. Supp. 2d 670 (M.D.N.C. 2004) ...................................................................... 13
PBM Products, Inc. v. Mead Johnson & Co.,
No. Civ. A. 3:01CV199, 2001 WL 841047 (E.D. Va. April 4, 2001)......................... 8
People v. Brick,
No. 87-7310, 1998 WL 33796, (4th Cir. April 11, 1988) ........................................... 8

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 TABLE OF AUTHORITIES
(continued)
Page
Reiffen v. Microsoft Corp.,
104 F.Supp.2d 48 (D.D.C. 2000) ................................................................................. 9
Rice v. Bellsouth Advertising & Pub. Corp.,
240 F. Supp. 2d 526 (W.D.N.C. 2002) ...................................................................... 20
Samsung Electronics Co., Ltd. v. Rambus, Inc., 386 F.Supp.2d 708. .............2, 16, 17, 18
SAS Institute, Inc. v. Practicingsmart, Inc.,
353 F. Supp. 2d 614 (M.D.N.C. 2005) ....................................................................... 8
Speed Trac Technologies, Inc. v. Estes Express Lines, Inc.,
567 F.Supp.2d 799 (M.D.N.C. 2008) ..................................................................13, 15
Stewart Org., Inc. v. Ricoh Corp.,
487 U.S. 22 (1988).....................................................................................................12
Sweeney v. Pennsylvania Nat’l Mut. Cas. Ins. Co.,
No. 1:05CV00931, 2007 WL 496699 (M.D.N.C. Feb. 27, 2007) ............................ 12
Tank Insulation Intern., Inc. v. Insultherm, Inc.,
104 F.3d 83 (5th Cir. 1997) ....................................................................................... 11
Tools USA & Equip. Co. v. Champ Frame Straightening Equip., Inc.,
841 F.Supp. 719 (M.D.N.C. 1993) ............................................................................ 12
WLC, LLC v. Watkins,
454 F. Supp. 2d 426 (M.D.N.C. 2006). ....................................................................... 8

STATUTES
28 U.S.C. § 1404(a) ..................................................................................................passim

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I. INTRODUCTION

NVIDIA Corporation (“NVIDIA”) filed this lawsuit to challenge Rambus Inc.’s

(“Rambus”) coercive licensing practices, anticompetitive conduct and abuse of the patent

continuation process at the expense of NVIDIA’s operations and customers in North

Carolina. Rambus now seeks to deprive NVIDIA of its choice of forum and to force

NVIDIA to litigate its antitrust claims in a forum of Rambus’ choosing.

But Rambus does not and cannot argue that: (1) NVIDIA’s North Carolina

claims are compulsory counterclaims to Rambus’ California patent infringement action

against NVIDIA (“CA Patent Suit”); (2) this Court lacks personal jurisdiction over

Rambus; or (3) venue is improper in North Carolina. Instead, Rambus argues that its CA

Patent Suit should be considered a first-filed action and that NVIDIA’s choice of North

Carolina as a forum is not entitled to any deference. Rambus’ arguments must fail.

Rambus’ “first-to-file” argument ignores that NVIDIA’s antitrust allegations do

not involve the same claims or issues presented by Rambus’ CA Patent Suit.

Additionally, Rambus treats as operative the consolidated actions before Judge Whyte to

which NVIDIA is not and has never been a party, rather than Rambus’ own CA Patent

Suit against NVIDIA. Because NVIDIA’s antitrust claims are not compulsory

counterclaims to and will not be resolved by Rambus’ CA Patent Suit, the first-to-file

theory is inapplicable here.

Rambus’ convenience of forum argument likewise relies on the faulty premise that

NVIDIA has no real connection to North Carolina. Both NVIDIA and Rambus maintain

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offices in North Carolina and conduct business in the state and, for its part, NVIDIA has

longstanding ties to North Carolina and its residents. Rambus’ anticompetitive conduct

directly harms NVIDIA’s North Carolina operations (“NVIDIA N.C.”), employees,

customers, and product consumers in the state and worldwide. NVIDIA’s choice to

litigate its claims in North Carolina is thus entitled to substantial deference.

Rambus, not NVIDIA, is forum shopping here. Rambus has carefully analyzed

the desirability of potential litigation venues as part of an extensive “license or litigate”

strategy.1 In furtherance of that strategy, Rambus brought suit against Hitachi in

Delaware, Infineon and Samsung in Virginia, and later moved to transfer each of those

lawsuits to the Northern District of California — one of Rambus’ three “most favored”

litigation forums2 — where they remain today.3 Judge Payne of the Eastern District of

Virginia has admonished Rambus for its forum shopping:

Rambus and its counsel put considerable effort into

identifying potentially advantageous forums in which to
conduct patent litigation against specifically identified targets.
After extensive and meticulous study and deliberation,
Rambus determined that the Eastern District of Virginia was
among the three best locations for conducting Rambus’ patent
litigation. . . .Far from being an inconvenience, the prospect
of litigating in this district was an attractive option for
Rambus. In fact, this forum did not become inconvenient to
1
See Samsung Electronics Co., Ltd. v. Rambus, Inc., 386 F.Supp.2d 708, 711 (E.D.Va
2005).
2
Rambus identified the Northern District of California, the Eastern District of Virginia
and the District of Delaware as its “most favored” venues for bringing patent
infringement suits. See Exh. A to the Declaration of Karen D. Thompson in Support of
NVIDIA’s Opposition to Rambus’ Motion to Transfer Venue (hereafter “Thompson
Decl.”).
3
Samsung, 386 F.Supp.2d at 711.

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 Rambus until it experienced adverse litigation results in this
district.4

As in Samsung, Rambus seeks to avoid the uncertainty of litigating in North Carolina by

compelling NVIDIA to litigate its own antitrust claims in a venue chosen by Rambus.5

NVIDIA’s unique legal claims and ties to the forum demonstrate that NVIDIA’s

choice of forum is entitled to substantial weight and that Rambus’ motion to transfer

should be denied.

II. STATEMENT OF FACTS

A. Rambus’ CA Patent Suit Against NVIDIA Does Not Involve Claims of

Antitrust Misconduct

Rambus’ CA Patent Suit before Judge Illston does not involve any antitrust claims

and is currently the subject of a motion to dismiss. By contrast, NVIDIA’s lawsuit before

this Court alleges that, through a series of anticompetitive acts, Rambus has and will

continue to stifle competition and gouge NVIDIA and its downstream customers, while

preventing them from obtaining their rightfully earned profits.6 Rambus’ anticompetitive

acts include, but are not limited to:

• Abusing the patent continuation process by concealing its patent

applications until the industry had become locked into industry
standards; (FAC at ¶¶2, 16)

4
Samsung, 386 F.Supp.2d at 711 (emphasis added); see also Thompson Decl., Exh. B.
5
Rambus’ motion to transfer constitutes its second attempt to maneuver the instant
litigation to its preferred venue, the Northern District of California. Rambus has already
tried, unsuccessfully, to relate its patent infringement action to pending litigations in the
Northern District of California. See Thompson Decl., Exh. C.
6
See Docket No. 7 (NVIDIA’s First Amended Complaint (“FAC”)) at ¶¶ 139-141.

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 • Coercing NVIDIA to either abandon standards compliance or pay an
extortionate rate to license Rambus’ patents; (FAC at ¶¶ 106)

• Demanding that NVIDIA take a license to a package of Rambus’

patents that include non-essential patents and pay royalties on
worldwide sales despite the absence of patent coverage on such sales;
(FAC at ¶¶ 113, 139-141) and

• Coercing NVIDIA to either pay supracompetitive royalties or to incur

millions of dollars defending against Rambus’ patent infringement
litigation. (FAC at ¶¶ 139-141).

NVIDIA’s antitrust claims do not depend on the invalidity or unenforceability of

Rambus’ patents and will not be resolved by Rambus’ CA Patent Suit.

B. NVIDIA Is an Integral Part of the Durham Community and a Hub of

Innovation in North Carolina

NVIDIA N.C. is based in Durham and has been in continuous operation for at

least 10 years. In fact, NVIDIA N.C. is NVIDIA’s oldest site outside of California in the

United States.7 NVIDIA N.C. provides faculty funding, grants, and donations of

hardware to the three major universities in the Research Triangle Park, and NVIDIA N.C.

heavily recruits talent from the three universities as well as from small colleges and

junior colleges in the area.8

NVIDIA N.C. employs 73 individuals and has grown its hiring by approximately

10% each year.9 Most of this employee growth is centered on Research and

7
See the Declaration of Scott Baker in Support of NVIDIA’s Opposition to Rambus’
Motion to Transfer Venue (hereafter the “Baker Decl.”) at ¶ 3.
8
See id. at ¶ 6.
9
See id. at ¶ 4.

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Development (R&D). In fact, NVIDIA N.C. has applied for and received dozens of

patents from the U.S. Patent and Trademark Office.10

NVIDIA N.C.’s software and hardware architects and engineers are involved in

creating, testing and developing NVIDIA’s current and next generation architectures,

including NVIDIA’s new Compute Unified Device Architecture (“CUDA”).11 CUDA is

one of NVIDIA’s most important areas of investment and growth, and the technology is

already influencing computer use worldwide.12

NVIDIA also has significant commercial ties to North Carolina. Among

NVIDIA’s most significant commercial customers are Lenovo (Morrisville, NC) and

IBM (Research Triangle). NVIDIA received more than $100M in revenue from these

companies in 2007 and anticipates that it will receive more than $120M from these

companies in 2008.13

C. Anticompetitive Behavior Within the Technology Market for

Computer Memory Directly Injures North Carolina

North Carolina has already recognized that anticompetitive schemes to

monopolize the market for computer memory harms the residents and government of

North Carolina. In October 2007, Attorney General Roy Cooper joined in a class action

lawsuit on behalf of North Carolina, its State Agencies, Political Subdivisions and natural

person and business consumers (collectively, “North Carolina Consumers”) against

10
Id. at ¶ 7.
11
Id. at ¶ 8.
12
Id.; see also Thompson Decl., Exhs. D and E.
13
See Baker Decl. at ¶ 10.

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Case 1:08-cv-00473-UA-WWD Document 19 Filed 10/07/2008 Page 10 of 27

DRAM manufacturers14 alleging antitrust violations. The antitrust action noted the deep

impact that price manipulation of memory technologies has on North Carolina and,

specifically, that the price manipulation of DRAM “caused substantial damage and

injury” to North Carolina Consumers.15

DRAM, SDRAM, DDR and DDR2 technologies are an integral part of NVIDIA

N.C.’s innovation.16 Rambus contends that nearly all of NVIDIA’s products, including in

particular its high-end graphics card, require a license. Rambus’ “license or litigate”

strategy has and will injure NVIDIA, its customers, employees and residents of North

Carolina. Each dollar that NVIDIA spends defending against Rambus’ CA Patent Suit

diminishes spending on R&D by a proportional amount.17 Likewise, any acceptance of

Rambus’ supracompetitive licensing fees will encumber NVIDIA’s products and will

translate into a reduction in R&D spending. Under either scenario, Rambus’

anticompetitive conduct taxes innovation and harms NVIDIA’s ability to innovate,

employ and engage in commerce in North Carolina.18

III. QUESTION PRESENTED

Whether this case should remain in the Middle District of North Carolina where:

(1) Rambus’ CA Patent Suit does not entertain similar issues or claims as those raised by

14
NVIDIA is not a memory (DRAM) manufacturer and does not create memory products
for consumer electronics and mobile devices as do Hynix, Samsung, Micron and
Infineon, among others. Docket No. 7 at ¶ 10. Rather, NVIDIA is an “OEM” of
software and hardware that incorporates memory manufactured by other companies.
15
See Thompson Decl., Exh. F at ¶ 150.
16
See Docket No. 7 at ¶¶ 20-26 for an overview of DRAM technologies.
17
See Byron Decl. at ¶ 19.
18
See id. at ¶¶ 20-23.

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Case 1:08-cv-00473-UA-WWD Document 19 Filed 10/07/2008 Page 11 of 27

the instant suit; (2) both parties have working offices and engage in substantial activity in

North Carolina; and (3) where Rambus’ anticompetitive acts have and will have a

substantial impact on North Carolina residents and consumers.

IV. ARGUMENT

A. Rambus’ CA Patent Suit Against NVIDIA is Not “First-Filed” Under

Applicable Law

Rambus’ argument that there is “substantial overlap between NVIDIA’s second -

filed suit and Rambus’ first-filed California suit” is wrong on the facts and the merits.19

Indeed, the number of times NVIDIA mentioned “patent” in its suit is of no moment;

what is critical, however, are Rambus’ monopolistic abuses of those patents and the

direct effect such abuses have on North Carolina, which were raised by NVIDIA just one

day after Rambus filed its lawsuit.

1. The Fourth Circuit Applies the First-to-File Theory Where An

Identity of Issues Exists

Rambus incorrectly asserts that the standard for giving priority to a first-filed suit

is whether there is “substantial overlap” between the two suits.20 However, the Middle

District of North Carolina has noted that the first-to-file theory is applicable only where

suits are “parallel”—that is, involving the same issues.21 Neither of the cases cited by

19
See Rambus MTT at 7.
20
See Rambus MTT at 5-6.
21
See WLC, LLC v. Watkins, 454 F. Supp. 2d 426, 430 n.3 (M.D.N.C. 2006)

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Case 1:08-cv-00473-UA-WWD Document 19 Filed 10/07/2008 Page 12 of 27

Rambus as support for the “substantial overlap” standard emerged from the Middle

District or the Fourth Circuit.22

The applicability of the first-filed theory is determined through a case-by-case,

fact-sensitive inquiry and “is not to be applied mechanically.”23 Whether or not a court

may retain jurisdiction over an action even where it was second-filed remains in the

sound discretion of the district court.24 Generally, however, the first-to-file rule is

applied where two federal courts have to “coordinate jurisdiction over actions involving

the same issue(s), in order to determine the proper venue in which to litigate the

dispute.”25 A comparison between the underlying facts, issues and claims before this

Court to those raised in Rambus’ CA Patent Suit renders the first-to-file rule inapplicable

here.

2. There Is No Identity of Issues Between the Antitrust Issues in

the Instant Action and Rambus’ CA Patent Suit Against
NVIDIA

There is no identity of issues between the instant antitrust action and Rambus’

patent action against NVIDIA in California. The Federal Circuit has recognized that

“Antitrust claims based on patent misuse . . . are likely to involve factual issues distinct

22
See Rambus MTT at 5-7.
23
PBM Products, Inc. v. Mead Johnson & Co., No. Civ. A. 3:01CV199, 2001 WL
841047 at *2 (E.D.Va. April 4, 2001).
24
Id.; CACI Intern., Inc. v. Pentagen Technologies Intern., Ltd., 70 F.3d 111, Nos. 94-
2058, 94-2220, 1995 WL 679952 at *6 (4th Cir. Nov. 16, 1995).
25
Jefferson Pilot Life Ins. Co. v. Griffin, No. 1:07CV0096, 2008 WL 2485598 at *3
(M.D.N.C. June 16, 2008); SAS Institute, Inc. v. Practicingsmart, Inc., 353 F. Supp. 2d
614, 617 (M.D.N.C. 2005); see also People v. Brick, No. 87-7310, 1998 WL 33796, at
*1 (4th Cir. April 11, 1988).

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Case 1:08-cv-00473-UA-WWD Document 19 Filed 10/07/2008 Page 13 of 27

from those involved in patent infringement litigation between the same parties.”26

Rambus’ reliance on Reiffin v. Microsoft is misplaced because NVIDIA's antitrust claims

do not depend on the invalidity of Rambus’ patents.27 NVIDIA’s antitrust suit addresses

Rambus’ anticompetitive use of its patents and licensing practices to create and maintain

a monopoly. Because NVIDIA’s North Carolina antitrust claims and allegations will not

be resolved by a determination of the invalidity or unenforceability of Rambus’ patents,

those issues will remain unaddressed by Rambus’ CA Patent Suit.

3. Rambus Improperly Focuses on California Litigations to Which

NVIDIA is Not a Party

Rambus argues that the first-to-file rule should apply because NVIDIA’s North

Carolina lawsuit “almost perfectly tracks the JEDEC-based counterclaims recently

rejected in the earlier California cases.”28 This argument is a bait-and-switch. Rambus

relies on consolidated cases before Judge Whyte to which NVIDIA is not even a party,

rather than its own CA Patent Suit against NVIDIA. The relevant comparison reveals

stark differences between the theories of liability and underlying issues in NVIDIA’s

antitrust suit as compared to Rambus’ CA Patent Suit against NVIDIA.

In any event, Judge Whyte has already determined that Rambus’ CA Patent Suit

against NVIDIA does not substantially overlap with the issues presented in the unrelated,

26
Critical-Vac Filtration Corp. v. Minuteman Int’l, Inc., 233 F.3d 697, 703 (2d Cir.
2000) (emphasis in original).
27
Reiffen v. Microsoft Corp., 104 F.Supp.2d 48, 54 (D.D.C. 2000).
28
Rambus MTT at 3.

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consolidated California action.29 Indeed, Judge Whyte expressly declined to relate

Rambus’ CA Patent Suit to Rambus’ already pending consolidated patent/antitrust cases

before him, finding that the CA Patent Suit: (1) “does not concern ‘substantially the

same parties, property, transaction or event,’”30 and (2) “that relating the cases is not

necessary to avoid an unduly burdensome duplication of labor and expense or to

minimize the chance of conflicting results.”31

4. NVIDIA Should Not Be Forced to Plead Its Antitrust Claim as a

Counterclaim and in a Venue Not of Its Choosing

Rambus also incorrectly argues that the possible assertion of counterclaims by

NVIDIA in the CA Patent Suit forecloses NVIDIA’s current antitrust suit in North

Carolina.32 “A claim that patent infringement litigation violated an antitrust statute is a

permissive, not a mandatory, counterclaim in a patent infringement case, and is not

barred in a subsequent suit by failure to raise it in the infringement suit.”33 Accordingly,

regardless of whether counterclaims could be asserted in the CA Patent Suit, NVIDIA’s

antitrust claim — that does not allege patent invalidity — may be brought as a separate

29
See Thompson Decl., Exh. C at 4-5.
30
See Thompson Decl., Exh. C at 4.
31
See Thompson Decl., Exh. B at 5.
32
See Rambus MTT at 8.
33
Hydranautics v. FilmTec Corp., 70 F.3d 533, 536 (9th Cir. 1995).

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Case 1:08-cv-00473-UA-WWD Document 19 Filed 10/07/2008 Page 15 of 27

action. 34 Moreover, there is “a significant difference . . . between the facts which control

the patent infringement claim and the facts which control the antitrust claim.”35

Even where the evidence between patent claims and antitrust claims overlap, and

where “two claims raise common issues of law and fact, including the allegedly

fraudulent procurement of the subject patent, the validity of the patent and the existence

vel non of any infringement,” the Supreme Court has carved out a limited exception that

antitrust actions may be pled as permissive counterclaims, and thus be raised as a

separate action.36 NVIDIA thereby properly requests examination of its antitrust claims

by this Court as the first-to-file party in North Carolina and seeks an end to the abusive,

monopolistic actions of Rambus in this forum.

B. The 28 U.S.C. §1404(a) Factors Favor North Carolina as the Proper

Venue for This Action

A court may transfer a civil action to any other district in which original venue

would be proper “[f]or the convenience of parties and witnesses [and] in the interest of

34
See, e.g., Critical-Vac at 704 (citing Teague I. Donahey, ANTITRUST COUNTERCLAIMS
IN PATENT INFRINGEMENT LITIGATION: CLARIFYING THE SUPREME COURT'S ENIGMATIC
MERCOID DECISION, 39 IDEA: J.L. & Tech. 225, 249-50 (1999)).
35
See Hydranautics, 70 F.3d at 537.
36
Tank Insulation Intern., Inc. v. Insultherm, Inc., 104 F.3d 83, 86 (5th Cir. 1997)
(discussing Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661, 669-72 (1944)).
Despite having questioned Mercoid in a different context, the Fourth Circuit has
acknowledged the exception where “the [first-filed] complaint did not demand a
declaratory judgment on the issue of the enforceability of the patents or of any license
agreement under which those patents were licensed.” Burlington Industries, Inc. v.
Milliken & Co., 690 F.2d 380, 389 (4th Cir. 1982). Given the absence of a declaratory
judgment before this court, this exception to the first-filed rule also applies here.

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Case 1:08-cv-00473-UA-WWD Document 19 Filed 10/07/2008 Page 16 of 27

justice.”37 A decision to transfer under §1404(a) is within the sound discretion of the trial

court, which must “adjudicate motions for transfer according to an individualized, case-

by-case consideration of convenience and fairness.”38 In making such a determination, a

court must respect a plaintiff’s right to choose its forum and, “unless the balance is

strongly in favor of the defendant, the plaintiff’s choice of forum should rarely be

disturbed.”39 The court “should refrain from transferring venue if to do so would simply

shift the inconvenience from one party to another.”40 The moving party bears the burden

of demonstrating that the transfer of venue is warranted under §1404(a).41

In deciding whether to transfer, the court considers a variety of factors:

(1) the plaintiff’s initial choice of forum; (2) relative ease of

access to sources of proof; (3) availability of compulsory
process for attendance of unwilling witnesses, and the cost of
obtaining attendance of willing and unwilling witnesses;
(4) possibility of a view of the premises, if appropriate;
(5) enforceability of a judgment, if one is obtained;
(6) relative advantage and obstacles to a fair trial; (7) other
practical problems that make a trial easy, expeditious, and
inexpensive; (8) administrative difficulties of court
congestion; (9) local interest in having localized controversies
settled at home; (10) appropriateness in having a trial of a
diversity case in a forum that is at home with the state law

37
28 U.S.C. § 1404(a); Kontoulas v. A.H. Robins Co., Inc., 745 F.2d 312, 315 (4th
Cir.1984).
38
See Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988).
39
Collins v. Straight, Inc., 748 F.2d 916, 921 (4th Cir. 1984) (quoting Gulf Oil v. Gilbert,
330 U.S. 501, 508 (1946)).
40
Tools USA & Equip. Co. v. Champ Frame Straightening Equip., Inc., 841 F.Supp. 719,
721 (M.D.N.C. 1993).
41
Sweeney v. Pennsylvania Nat’l Mut. Cas. Ins. Co., No. 1:05CV00931, 2007 WL
496699 at *2 (M.D.N.C. Feb. 27, 2007) (citation omitted).

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 that must govern the action; and (11) avoidance of
unnecessary problems with conflicts of laws.42

The principal factors to be considered in the analysis, however, are “plaintiff’s choice of

forum, witness convenience and access, party convenience, and the interest of justice.”43

Because NVIDIA’s choice of forum should be given substantial deference and its

antitrust allegations bear substantial relation to and connection with North Carolina, in

the interest of justice, Rambus’ motion to transfer should be denied.

1. NVIDIA’s Choice of North Carolina Should Be Given

Substantial Deference Because Its Cause of Action Bears
Relation to North Carolina

A plaintiff’s choice of forum is entitled to deference and should rarely be

disturbed.44 That deference should only be diminished where: (1) the plaintiff chooses a

foreign forum, or (2) the cause of action bears little or no relation to the chosen forum.45

Rambus argues that NVIDIA’s selection of the Middle District of North Carolina is not

entitled to deference because North Carolina bears little relation to the parties’ dispute.46

Contrary to Rambus’ suggestion, no exception to this general rule applies here.

42
Speed Trac Technologies, Inc. v. Estes Express Lines, Inc., 567 F.Supp.2d 799, 802
(M.D.N.C. 2008) (citation omitted).
43
Koh v. Microtek Int’l, Inc., 250 F.Supp.2d 627, 633 (E.D.Va. 2003) (citation omitted).
44
See Collins, 748 F.2d at 921; see also Commercial Equipment Co., Inc., v. Barclay
Furniture Co., 738 F. Supp. 974, 977 (W.D.N.C. 1990).
45
Harris v. Nussbaum, No. 1:97CV01029, 1998 U.S. Dist. LEXIS 15144 at *10-11
(M.D.N.C. June 19, 1998).
46
Rambus MTT at 10-12. Rambus cites Harris and Parham to argue that NVIDIA’s
choice of North Carolina bears little relation to this dispute. See Parham v. Weave Corp.,
323 F. Supp. 2d 670 (M.D.N.C. 2004) (transfer warranted in breach of contract case
where the contract was governed by New Jersey law and the contract was performed and
terminated in that state); Harris, 1998 U.S. Dist. LEXIS 15144 at *9-10 (transfer

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 Rambus’ anticompetitive conduct injures North Carolina commerce and its

residents in the form of higher prices, lower revenue and reduced innovation. Rambus’

“license or litigate” strategy has already forced NVIDIA to incur the cost of defending

against Rambus’ coercive CA Patent Suit at the expense of its R&D program.47

Regardless of the outcome of that litigation, Rambus’ strategy taxes innovation:

NVIDIA, its employees, customers, downstream consumers and residents will suffer

from NVIDIA’s reduced ability to compete in a global economy.

Just as Rambus’ anticompetitive acts have caused higher prices for DRAM, so too

will its conduct cause supracompetitive prices for NVIDIA’s memory controller

products. NVIDIA may absorb those costs and reduce its profitability, which in turn will

reduce its spending on R&D — directly affecting NVIDIA North Carolina.

Alternatively, NVIDIA may be forced to pass that tax on innovation through to its

customers and end users. An inability to purchase computer memory and memory

containing products at free market prices injures North Carolina, its businesses and its

residents.48 Because North Carolina is causally connected to NVIDIA’s antitrust

allegations, NVIDIA’s choice of forum is entitled to substantial deference.

appropriate in tort and Title VII case where all witnesses and all operative facts were
located in Virginia, not North Carolina). Unlike Rambus’ cited cases, North Carolina
bears a causal connection to witnesses, sources of proof, and operative facts underlying
NVIDIA’s antitrust allegations.
47
Byron Decl. at ¶ 19.
48
Thompson Decl., Exh. G at ¶ 150.

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 2. The Sources of Proof Exist in North Carolina and Are Easily
Obtained From Other Jurisdictions (Factor 2)

Rambus disingenuously asserts that it is aware of no potential witnesses or

evidence based in the Middle District of North Carolina. This is surprising since

Rambus’ former employee Billy Garrett (a “key executive” involved in the JEDEC

misconduct and spoliation charges49) and its current employee Chris Slocum (involved in

Rambus’ package licensing50) were each deposed in North Carolina as part of Rambus’

consolidated action before Judge Whyte. In any event, since Rambus’ “business” is to

enforce its patents, there is no locus for any of Rambus’ business activities other than its

legal activities, which courts have consistently held to be irrelevant to a motion to

transfer.51 Further, any documentary evidence that Rambus would gather could easily be

collected and produced electronically.

By contrast, NVIDIA’s witnesses and relevant third-party witnesses are located in

North Carolina, and those that are not may be made easily available. In fact, review of

the documents and products that are being developed and tested by NVIDIA for OEMs,

such as Lenovo and IBM, may require access to NVIDIA’s facilities in North Carolina.

49
Thompson Decl., Exh. H at 115 (“[t]he record shows that key Rambus
executives . . .including . . . Billy Garrett . . . destroyed documents”) and Exh. I at 15: 10-
14 (“Q: You testified that you attended approximately four JEDEC meetings on behalf of
Rambus; is that right? A: Something like that, yes.”).
50
Thompson Decl., Exh. J at 22: 9-11 (“Mr. Slocum spent a good deal of time
negotiating with Ken Hurley, the president of Nanya U.S.A., regarding RDRAM.”)
51
Speed Trac Technologies, 567 F.Supp.2d at 804.

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 Notably, despite the absence of an office or any substantial ties to the forum,

Rambus has initiated litigation in both the Eastern District of Virginia and Delaware. In

fact, as Judge Payne noted in denying Rambus’ motion to transfer in the Samsung case:

The ease of access to sources of proof, the cost of securing the

attendance of witnesses at deposition and trial, and the
availability of compulsory process for trial in [the Eastern
District of Virginia] were not factors that Rambus considered
troublesome in the least when it identified [the Eastern District of
Virginia] as a desirable forum for conducting patent litigation
several years ago.52

Rambus’ argument that North Carolina is an “illogical and unduly burdensome” place to

conduct this litigation should, therefore, be viewed with skepticism.

3. The Remaining § 1404(a) Factors Are Either Irrelevant or Do

Not Favor Transfer

The remaining factors that courts consider in deciding motions to transfer for

convenience are either not relevant or do not favor transfer here. Factor 4 (view of

premises), Factor 5 (enforcement of judgment) and Factor 10 (diversity actions) are not

applicable to the facts of this case. As discussed below, the remaining six factors are

either neutral or favor maintaining the action in North Carolina.

a. Compulsory Process (Factor 3)

Rambus contends that “no potential witnesses appear to reside in or near the

Middle District of North Carolina.”53 Rambus’ assertion is both mistaken and

disingenuous, as discussed above. A number of NVIDIA’s witnesses may be based in its

52
Samsung, 386 F.Supp.2d at 717.
53
Rambus MTT at 14

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Durham office and potential third-party witnesses from IBM, Lenovo, and individuals at

the universities within Research Triangle Park are all based in North Carolina and within

the scope of this Court’s subpoena power.

Notably, Rambus provides no basis on which to believe that its own party

witnesses cannot and will not appear and, likewise, Rambus fails to identify any

unwilling third-party witnesses in California who would not otherwise appear for

deposition. As Judge Payne noted in the Eastern District of Virginia, “Rambus has not

established that the witnesses who are beyond compulsion will not appear voluntarily if

Rambus prevails on them to do so.”54 This factor does not favor a transfer.

b. Fairness Considerations (Factor 6)

Rambus argues that fairness favors transfer to California because “the Northern

District of California is the forum in which NVIDIA’s position was recently rejected at

trial.”55 Because NVIDIA’s antitrust claims raise issues that are new and distinct from

the claims and issues raised by other parties in an unrelated litigation, Rambus’ present

motion is but a thinly-veiled attempt by Rambus to forum shop. This factor does not

favor a transfer.

c. Practical Considerations (Factor 7)

Rambus argues that the time and expense of travel strongly favor transferring this

case. Rambus’ argument should be taken with a grain of salt since Rambus already

identified its “most favorable” jurisdictions without regard to the time and expense of

54
Samsung, 386 F.Supp.2d at 718.
55
Rambus MTT at 15.

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travel. In fact, as noted by Judge Payne, until Rambus had an adverse ruling, it preferred

the Eastern District of Virginia to the Northern District of California.56 Rambus has

failed to demonstrate that it would be a burden to defend a lawsuit in North Carolina,

where it maintains offices and employees. This factor does not favor a transfer.

d. Local Interest (Factor 8)

NVIDIA is an integral member of the Durham community as a business, employer

and innovator. The North Carolina Attorney General has already recognized that North

Carolina has an interest in ensuring fairness and competition with respect to the pricing of

memory (DRAM) in North Carolina. The same is true with respect to memory

processors, which are being hijacked by Rambus’ “license or litigate” strategy affects

NVIDIA, its North Carolina employees, customers, downstream consumers, and

residents. North Carolina has a strong interest in ensuring that Rambus’ anticompetitive

conduct does not impair innovation or competition in its state and around the country.

This factor favors North Carolina retaining jurisdiction.

e. Administrative Considerations (Factor 9)

The Northern District of California struggles with a docket that is nearly five times

the size of the docket of the Middle District of North Carolina. According to the West

Litigation Monitor, the Northern District of California currently has more than 5,700

cases pending.57 Judge Illston, who presides over Rambus’ CA Patent Suit against

NVIDIA, has the second largest caseload of any other judge in the Northern District of

56
Samsung, 386 F.Supp.2d at 711.
57
Thompson Decl., Exh. K; cf. Thompson Decl., Exh. L.

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Case 1:08-cv-00473-UA-WWD Document 19 Filed 10/07/2008 Page 23 of 27

California.58 Transferring a case involving North Carolina state claims and state interests

to the Northern District of California will further burden an already burgeoning docket

and will undoubtedly delay the adjudication of NVIDIA’s claims. This factor favors

North Carolina retaining jurisdiction.

f. Conflict-of-Laws (Factor 11)

Rambus’ conflicts-of-law argument is internally inconsistent and, ultimately,

irrelevant. Rambus acknowledges that a transferee district court must apply the laws of

the state of the transferor district court in order to argue that NVIDIA will be no worse

off if its North Carolina state antitrust claims are removed to Northern California.59 In

the same breath, Rambus argues that North Carolina law may not even govern NVIDIA’s

allegations before the North Carolina court.60 In the end, Rambus’ arguments are an

irrelevant distraction.

NVIDIA’s FAC alleges North Carolina statutory violation that concern issues of

particular importance to North Carolina.61 While it is well-settled that federal district

courts are equally capable of applying federal law,62 federal courts sitting within a state

are better equipped to apply the laws of that state than a district court sitting outside the

58
Id.
59
Rambus MTT at 18.
60
Id.
61
Docket No. 7 (FAC) at ¶¶ 150-159.
62
See Orrell v. Motorcarparts of America, Inc., Civ. No. 3:06CV418-C, 2007 WL
895503, at *3 (W.D.N.C. March 22, 2007); Aventis Cropscience, N.V. v. Pioneer Hi-Bred
Int’l, Inc., No. 1:00CV00463, 2001 WL 604185, at *5 (M.D.N.C. April 23, 2001).

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Case 1:08-cv-00473-UA-WWD Document 19 Filed 10/07/2008 Page 24 of 27

state.63 Thus, North Carolina has a genuine interest in having claims that arise within its

borders resolved therein.64 Next, because NVIDIA’s antitrust claims bear a “significant

relationship” to North Carolina, Rambus has no basis for suggesting that Northern

District of California law would be applied to those claims. This factor does not favor

transfer and, if anything, favors North Carolina retaining jurisdiction.

4. Rambus Has Failed to Prove That the 1404(a) Factors Strongly

Favor Transfer

NVIDIA’s antitrust allegations and the vast array of wrongs that Rambus’

monopolistic conduct creates are causally connected to North Carolina. Whether through

defending litigations or paying supracompetitive royalties, such harms will be felt acutely

by NVIDIA’s employees, potential recruits, customers, and users of NVIDIA’s

technology in North Carolina. Where there is a casual connection between a plaintiff’s

choice of forum and the issues presented, a defendant must demonstrate that the 1404(a)

factors strongly favor transfer.65 Rambus has failed to meet its heavy burden here.

V. CONCLUSION

For the foregoing reasons, NVIDIA respectfully requests that this Court deny

Rambus’ motion to transfer.

63
See Orrell at *3; Rice v. Bellsouth Advertising & Pub. Corp., 240 F. Supp. 2d 526, 531
(W.D.N.C. 2002).
64
See Rice, 240 F. Supp. 2d at 531.
65
Cortex Surveillance Automation, Inc. v. Security Integrators and Consultants, Inc., No.
1:05CV562, 2006 WL 994951, at *5 (M.D.N.C. April 12, 2006).

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Case 1:08-cv-00473-UA-WWD Document 19 Filed 10/07/2008 Page 25 of 27

 Respectfully Submitted,

/s/ Jason Hicks

Mark N. Poovey (NC Bar No. 9416)
John F. Morrow, Jr. (NC Bar No. 23382)
Jason Hicks (NC Bar No. 33575)
Attorneys for Plaintiff NVIDIA Corporation
WOMBLE CARLYLE SANDRIDGE & RICE, PLLC
One West Fourth Street
Winston-Salem, North Carolina 27101
Telephone: (336) 721-3600
Telephone: (336) 721-3660
mpoovey@wcsr.com
jmorrow@wcsr.com
jahicks@wcsr.com
-and-

J. Peter Coll, Esq.

Karen D. Thompson, Esq.
ORRICK, HERRINGTON & SUTCLIFFE LLP
666 Fifth Avenue
New York, New York 10103
Telephone: (212) 506-5000
Facsimile: (212) 506-5151

I. Neel Chatterjee, Esq.

Deborah Fishman, Esq.
ORRICK, HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road
Menlo Park, CA 94025-1015
Telephone: (650) 614-7400
Facsimile: (650) 614-7401

Garret G. Rasmussen, Esq.

ORRICK, HERRINGTON & SUTCLIFFE LLP
Columbia Center
1152 15th Street, N.W.
Washington, D.C.
Telephone: (202) 339-8400
Facsimile: (202) 339-8500

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