Case3:08-cv-03343-SI Document260-1

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I. NEEL CHATTERJEE (STATE BAR NO. 173985) nchatterjee@orrick.com THERESA A. SUTTON (STATE BAR NO. 211857) tsutton@orrick.com BARRINGTON E. DYER (STATE BAR NO. 264762) bdyer@orrick.com ORRICK, HERRINGTON & SUTCLIFFE LLP 1000 Marsh Road Menlo Park, CA 94025 Telephone: 650 614-7400 Facsimile: 650 614-7401 DAVID M. GOLDSTEIN (STATE BAR NO. 142334) dgoldstein@orrick.com CATHERINE N. KROW (STATE BAR NO. 208412) Orrick, Herrington & Sutcliffe LLP The Orrick Bldg 405 Howard Street San Francisco, CA 94105-2669 Telephone: 415 773-5700 Facsimile: 415 773-5759 Attorneys for Defendant NVIDIA Corporation UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

RAMBUS, INC., Plaintiff, v. NVIDIA CORPORATION, Defendant.

Case No. C-08-03343-SI Consolidated with C-08-0550 SI NVIDIA CORPORATIONS RESPONSE TO RAMBUSS ADMINSTRATIVE MOTION TO CONSIDER WHETHER CASES SHOULD BE RELATED UNDER CIVIL LOCAL RULE 3-12 Court: Dept. 10, 19th Floor Judge: Honorable Susan Illston

NVIDIAS RESPONSE TO RAMBUSS ADMIN MOTION TO RELATE CASES CASE NO. 3:08-CV-03343 SI

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I.

INTRODUCTION NVIDIA Corporation does not oppose Rambus, Inc.s motion to relate the newly filed

action against NVIDIA, but believes the remaining five cases should not be related here. While the new case involves a different set of patents and different technologies (thereby not satisfying Rule 3-12(a)(2)), the parties in the two cases are the same. The remaining five cases at issue, however, do not involve any party to the present action (other than Rambus) or any of the accused end products here. Rambus cannot satisfy Local Rule 3-12 with regard to the remaining cases and, thus, its Motion should be denied as to those matters. II. BACKGROUND On December 1, 2010, Rambus filed six new patent cases, each one naming a distinct defendant and entirely different accused products.1 NVIDIA is a party to one of the newly filed cases, namely Rambus Inc. v. NVIDIA Corp., No. 5:10-cv-05448 HRL (NVIDIA II). The following table identifies each of the separately named defendants and the products accused in each matter: Defendant Broadcom Accused Products Broadband Communications, Mobile & Wireless, and Networking Infrastructure product lines. Broadcom Corp., No. 3:10-CV-05437 RS, Dkt. No. 1 44. [A]utomotive, consumer, industrial and networking applications. Freescale Semiconductor, No. 3:10-CV-05445 PVT, Dkt. No. 1 44. Storage (e.g. MegaRAID, LSISAS RAID-on-Chip, and TrueStore) and networking (e.g., APP, and Tarari) product lines. LSI Corp., No. 3:10-CV-05446, Dkt. No. 1 44. Digital Consumer DVD, DTV, and PC Optical Storage Drive Product lines. MediaTek Inc., No. 3:10-CV-05447 BZ, Dkt. No. 1 32. STMicrolectronicss automotive, computer and communication infrastructure,

Freescale LSI

MediaTek STMicro
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The new cases are: (1) Rambus Inc., et al. v. Broadcom Corp., No. 3:10-CV-05437 RS (2) Rambus Inc., et al. v. Freescale Semiconductor, Inc., No. 3:10-CV-05445 PVT (3) Rambus Inc., et al. v. LSI Corp., No. 3:10-CV-05446 (4) Rambus Inc. v. MediaTek Inc., No. 3:10-CV-05447 BZ (5) Rambus Inc., et al. v. NVIDIA Corp., No. 5:10-CV-05448 HRL (6) Rambus Inc., et al. v. STMicroelectronics N.V., et al., No. 3:10-CV-05449 JL -1NVIDIAS RESPONSE TO RAMBUSS ADMIN MOTION TO RELATE CASES CASE NO. 3:08-CV-03343 SI

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home entertainment and displays, industrial and multisegment sector, and microcontroller product lines. STMicroelectronics N.V., et al., No. 3:10-CV-05449 JL, Docket No 1 46. On December 3, 2010, Rambus filed a motion to relate these new cases to the above captioned matter, pursuant to Civil Local Rule 3-12. Dkt. No. 164.2 III. ARGUMENT Civil Local Rule 3-12(a) authorizes this Court to relate later filed matters where: (1) The actions concern substantially the same parties, property, transaction or event; and (2) It appears likely that there will be an unduly burdensome duplication of labor and expense or conflicting results if the cases are conducted before different Judges. Civil L.R. 3-12(a). A. NVIDIA II Should Be Related To The Present Action

The present case and NVIDIA II concern the same parties, NVIDIA and Rambus. See NVIDIA, No. 5:10-CV-05448 HRL, Docket No. 1 23. The new case against NVIDIA accuses PCI Express and DisplayPort peripheral interfaces, technologies not accused of infringement in the earlier case. However, judicial economy weighs in favor of relating these two matters between NVIDIA and Rambus. Consequently, NVIDIA does not oppose having NVIDIA II related to the present action for the sake of judicial economy. B. The Other Cases Do Not Concern Substantially The Same Parties, Property, Transaction or Event As This Action

Judge Whyte has previously considered and rejected a similar overture by Rambus in the past. In this case, Rambus filed an administrative request to relate the present case to another case pending before Judge Whyte. Judge Whyte found Local Rule 3-12 did not apply because neither prong of Local Rule 3-12 was met. See Dkt. No. 31 (Order denying Rambuss Administrative Motion to relate this matter, Rambus Inc., et al. v. NVIDIA Corp., No. 3:08-CV2

The other five defendants from the new cases only recently received notice of this Motion by mail service to their corporate headquarters. -2NVIDIAS RESPONSE TO RAMBUSS ADMIN MOTION TO RELATE CASES CASE NO. 3:08-CV-03343 SI

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03343 SI (N.D. Cal), with Rambus Inc. v. Hynix Semiconductor Inc., No. 5:05-CV-20905 RMW (N.D. Cal)). 1. Different Parties

The remaining five new cases, Broadcom, Freescale, LSI, MediaTek, and STMicro (collectively, the New Cases), do not involve NVIDIA as a defendant, and none of the defendants in these New Cases is a party to this case. See Bender v. Exar Corp., No. 3:09-CV01140 WHA, Dkt. No. 45 (N.D. Cal August 3, 2009) (Although the same patent is asserted in all 24 cases, these cases are not related. These cases involve different defendant companies with different products.); see also Target Therapeutic, Inc. v. Scimed Life Systems, Inc., No. 4:96-CV02837 DLJ, 1996 WL 241692 (N.D. Cal. May 2., 1996) (factoring different parties in the courts reasoning for denying the motion to relate). This factor weighs against relating the five New Cases to the present matter. 2. Different Property

The New Cases largely concern different patents. Rambus has asserted three patent families against NVIDIA in this case: (1) the Farmwald/Horowitz patents (2) the Barth I patents; and (3) the Barth II patents. 3 This includes six patents from the Farmwald/Horowitz family, three patents from the Barth I family, and four patents from the Barth II family. Four of the New Cases involve a new family of six patents (the Dally patents), which are unrelated to any of the patents in this case. In addition, each of the New Cases involves four additional Farmwald/Horowitz patents not at issue in this case. None of the New Cases concerns the four Barth II patents-in-suit here. Ultimately, relating Broadcom, Freescale, LSI, or STMicro to this case will result in 14 non-overlapping patents.4 See Dkt. No. 31 at 4 (The majority of the patents in suit differ from the patents before this Court in the existing DRAM cases, so while some of the same property is involved, substantially the same property is not). In addition, MediaTek includes the four
3

Rambus originally alleged NVIDIA infringed a fourth family of patents, the Ware parents, but has granted NVIDIA a covenant not to sue with respect to them. See Dkt. No. 39. 4 This includes the four additional Farmwald/Horowitz patents, the six new Dally patents, and the four Barth II patents. -3NVIDIAS RESPONSE TO RAMBUSS ADMIN MOTION TO RELATE CASES CASE NO. 3:08-CV-03343 SI

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additional Farmwald/Horowitz patents not at issue here and involves accused end products substantially different from this case. More importantly, the majority of these cases includes technology not at issue here. See Target Therapeutics, 1996 WL 241692, *13 (identifying unrelated technology as a factor in the courts reasoning for denying the motion to relate). The technology at issue in this matter relates to memory controllers, which operate in accordance with DRAM industry standards. Conversely, the technology of the Dally patents concerns PCI Express and DisplayPort peripheral interfaces. The two are not related in any sense. Memory controllers are used to control access to a computers memory systems, while PCI Express concerns interfaces for computer expansion. Even Rambus acknowledges that the two technologies are different. See Dkt. No. 164 at 3:16-17. Furthermore, the New Cases implicate substantially different accused end products. See Bender, No. 3:09-CV-01140-WHA, Dkt. No. 45 (denying motion to relate because cases involved different companies with different products). As the Table above demonstrates, the accused products in the New Cases vary substantially in terms of industry and application. This includes, for example, networking, automotive applications, optical storage, displays, DVD, and DTV. None of these is the subject matter of this case. MediaTek in particular, is a producer of Digital Consumer DVD, DTV, and PC Optical Storage Drive Product Lines, not GPUs (like NVIDIA), and therefore does not overlap with the accused end products in this case. See, e.g. Target Therapeutics, 1996 WL 241692, * 13 (observing a significant difference in the accused products). In addition, because the accused products of the five defendants are not the same accused products, they may be subject to different claims in the patents-in-suit and require an understanding of different technology. See Dkt. No. 31 at 4-5. C. The New Cases Should Not Be Related Because Relation Will Increase Burden And Will Not Necessarily Affect Risk Of Conflicting Judgments

Relation of the New Cases also is improper because doing so will result in undue burden to NVIDIA, rather than reduce it. Discovery has been ongoing in this case for 18 months. Phase I discovery is currently set to close on February 25, 2011. Dkt. No. 161. The parties are in the process of producing materials from several other relevant cases, as well as the ITC action -4NVIDIAS RESPONSE TO RAMBUSS ADMIN MOTION TO RELATE CASES CASE NO. 3:08-CV-03343 SI

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(involving virtually the same patents in this matter). Dkt. No. 155. They have engaged Special Master Infante to resolve several discovery disputes. Given the scope of Phase I discovery (the exchange of millions of pages of documents) to date, the issues that have arisen, and the unique overlap of issues between this case and the ITC action, consolidation with any or all of the New Cases would not meaningfully reduce labor and costs. Further, because NVIDIA and Rambus have had an 18 month headstart on discovery, the new parties will be forced to play catch-up, thereby complicating the proceedings and increasing the burden for everyone. Denying Rambuss motion also will not necessarily result in conflicting judgments. As discussed above, because the accused products are entirely different, the outcome for each defendant will necessarily be different regardless of whether those cases are related here or litigated separately. See Bender, No. 3:09-CV-01140 WHA, Dkt. No. 45 (although some validity and inequitable conduct issues would overlap, there would be a plethora of different infringement and damages issues.). Further, as the Court is aware, this case contains an antitrust component, which the defendants in the New Cases may not raise. The unique factual and legal issues that separate the New Cases from the present matter weigh in favor of denying Rambuss motion. IV. REQUESTED RELIEF For the above reasons, NVIDIA respectfully requests that the Court grant Rambuss Motion with regard to NVIDIA II, but otherwise decline to relate the New Cases. Dated: December 7, 2010 Orrick, Herrington & Sutcliffe LLP

/s/ I. Neel Chatterjee /s/ I. NEEL CHATTERJEE Attorneys for Defendant NVIDIA Corporation

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CERTIFICATE OF SERVICE I hereby certify that this document(s) filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF) and paper copies will be sent to those indicated as non registered participants on December 7, 2010. Dated: December 7, 2010. Respectfully submitted, /s/ I. Neel Chatterjee /s/ I. Neel Chatterjee

NVIDIAS RESPONSE TO RAMBUSS ADMIN MOTION TO RELATE CASES CASE NO. 3:08-CV-03343 SI

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I. NEEL CHATTERJEE (STATE BAR NO. 173985) nchatterjee@orrick.com THERESA A. SUTTON (STATE BAR NO. 211857) tsutton@orrick.com BARRINGTON E. DYER (STATE BAR NO. 264762) bdyer@orrick.com ORRICK, HERRINGTON & SUTCLIFFE LLP 1000 Marsh Road Menlo Park, CA 94025 Telephone: 650 614-7400 Facsimile: 650 614-7401 DAVID M. GOLDSTEIN (STATE BAR NO. 142334) dgoldstein@orrick.com CATHERINE N. KROW (STATE BAR NO. 208412) Orrick, Herrington & Sutcliffe LLP The Orrick Bldg 405 Howard Street San Francisco, CA 94105-2669 Telephone: 415 773-5700 Facsimile: 415 773-5759 Attorneys for Defendant NVIDIA Corporation UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

RAMBUS, INC., Plaintiff, v. NVIDIA CORPORATION, Defendant.

Case No. C-08-03343-SI Consolidated with C-08-0550 SI [PROPOSED] ORDER GRANTING IN-PART AND DENYING IN-PART RAMBUSS ADMINISTRATIVE MOTION TO CONSIDER WHETHER CASES SHOULD BE RELATED UNDER CIVIL LOCAL RULE 3-12 Court: Dept. 10, 19th Floor Judge: Honorable Susan Illston

[PROPOSED] ORDER GRANTING-IN-PART RAMBUSS ADMIN MOTION TO RELATE CASES CASE NO. 3:08-CV-03343 SI

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Upon consideration of Rambus Inc.s Administrative Motion to Consider Whether Cases Should be Related Pursuant to Civil Local Rule 3-12 (Dkt. No. 164), filed on December 3, 2010, NVIDIAs Response thereto, and good cause appearing, IT IS HEREBY ORDERED THAT Rambuss Motion is Granted-in-Part and Denied-in-Part, as follows: Rambus Inc. v. NVIDIA Corp., No. 5:10-CV-05448 HRL, is hereby related to the present

The remaining cases do not satisfy Civil Local Rule 3-12 and, thus, shall not be related to the present action.

THE HONORABLE SUSAN ILLSTON UNITED STATES DISTRICT JUDGE

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CERTIFICATE OF SERVICE I hereby certify that this document(s) filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF) and paper copies will be sent to those indicated as non registered participants on December 7, 2010. Dated: December 7, 2010. Respectfully submitted, /s/ I. Neel Chatterjee /s/ I. Neel Chatterjee

[PROPOSED] ORDER GRANTING-IN-PART RAMBUSS ADMIN MOTION TO RELATE CASES CASE NO. 3:08-CV-03343 SI