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KILPATRICK TOWNSEND & STOCKTON LLP THEODORE G. BROWN, III (SBN 114672) G. ROSS ALLEN (SBN 262869) 1080 Marsh Road Menlo Park, California 94025 Telephone: (650) 326-2400 Facsimile: (650) 326-2422 Email: tbrown@kilpatricktownsend.com grallen@kilpatricktownsend.com OMELVENY & MYERS LLP KENNETH L. NISSLY (SBN 77589) SUSAN van KEULEN (SBN 136060) SUSAN ROEDER (SBN 160897) 2765 Sand Hill Road Menlo Park, California 94025 Telephone: (650) 473-2600 Facsimile: (650) 473-2601 Email: knissly@omm.com svankeulen@omm.com sroeder@omm.com Attorneys for Plaintiffs, HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH, Plaintiffs, v. RAMBUS INC., Defendant. Case No. CV 00-20905 RMW HYNIXS RESPONSE IN SUPPORT OF HYNIXS SECOND SUPPLEMENTAL BILL OF COSTS PURSUANT TO FEDERAL RULE OF APPELLATE PROCEDURE 39

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The Federal Circuit explicitly awarded Hynix its costs on appeal without qualification or reservation. Rambus, however, seeks to avoid paying Hynix its awarded costs by confusing costs awarded under Federal Rule of Civil Procedure 54 (Rule 54) and costs awarded under Federal Rule of Appellate Procedure 39 (Rule 39). Hynixs well-supported appellate costs under Rule 39 should be taxed now and should not be reduced according to Rambuss mathematical approach. First, no legitimate ground exists to delay awarding Hynix its appellate costs that the Federal Circuit explicitly awarded to Hynix. As explained in Hynixs Response in Support of Hynixs Bill of Costs and Supplement Bill of Costs Pursuant to Federal Rule of Appellate Procedure 39 (Dkt. No. 4076 at 6-8) (Previous Response), Rambus provides no sound basis for delaying or denying Hynix this award. Rambus erroneously relies on Rule 54 to support its proposition that Hynix must ultimately prevail in the entire action to recover its fees.1 Rule 39 does not require that a prevailing party awarded costs on appeal must prevail on remand or, even, ultimately in the action. See Simpson v. Thomas, 2008 WL 5381809, at *3 n.2 (E.D. Cal. Dec. 22, 2008) ([T]he Court disagrees with Defendants assertion that Plaintiff must ultimately prevail in this action in order to recover fees pursuant to FRAP 39(e).). The correct focus is that the Federal Circuit awarded costs to Hynix without qualification: Costs are awarded to Hynix. Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1355 (Fed. Cir. 2011). Delaying Hynixs awarded costs to determine whether Hynix may ultimately prevail would render Rule 39(e) meaningless. See Record Club of Am., Inc. v. United Artists Records, Inc., 731 F. Supp. 602, 603 (S.D.N.Y. 1990) (Since the Second Circuit Court concluded its opinion vacating this Courts prior judgment with the words costs to defendant [UAR], RCOA cannot argue persuasively that taxing of costs by the district court under Fed.R.App.P. 39(e) is premature.). Hynixs costs under Rule 39(e) should be decided now. Second, Rambuss argument that the Court should reduce the award of costs based on Rambus again relies on inapposite cases for its unsupported proposition that Hynix must ultimately prevail in this action to recover its Rule 39 costs (Dkt. No. 4106 at 2). See Berthelsen v. Kane, 907 F.2d 617, 622-23 (6th Cir. 1990) (denying defendant-appellants costs where the appellate court vacated the district courts default judgment) (emphasis added); Wal-Mart Stores, Inc. v. Crist, 123 F.R.D. 590, 592 (W.D. Ark. 1988) (The court agrees that the receiver for the insolvent insurance company should not be required to pay to Wal-Mart the sum of $30,139.00 as reimbursement for the premiums paid . . .) (emphasis added).
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Hynixs percentage of success on appeal (Dkt. No. 4106 at 3) is unwarranted and unsupported by the law. See Dkt. No. 4076 at 8-9; see also Hensley v. Eckerhart, 461 U.S. 424, 435 n.11 (1983) (We agree with the District Courts rejection of a mathematical approach comparing the total number of issues in the case with those actually prevailed upon. Record 220. Such a ratio provides little aid in determining what is a reasonable fee in light of all the relevant factors. Nor is it necessarily significant that a prevailing plaintiff did not receive all the relief requested.). Third, Hynixs costs are reasonable and supported, as fully explained in Hynixs Previous Response. See Dkt. No. 4076 at 9-15. Rambus again relies on Johnson v. Pacific Lighting Land, 878 F.2d 297 (9th Cir. 1989), but Johnson is still distinguishable. Where a letter of credit has been used and the total costs has been no greater than a supersedeas bond without collateral, the charge for the letter of credit has been treated as the equivalent of premiums paid for the costs of a supersedeas bond. Id. at 298 (citing Bose Corp. v. Consumers Union of U.S., Inc., 806 F.2d 304, 305 (1st Cir. 1986)). This Court has broad discretion to tax costs of collateral required to obtain Hynixs supersedeas bonds. See Bose, 806 F.2d at 305 (upholding taxation of costs for a letter of credit); Trans World Airlines, Inc. v. Hughes, 515 F.2d 173, 177 (2d Cir. 1974) ([T]he costs of obtaining a supersedeas bond have long been held to be a proper item of costs.); Dana Corp. v. IPC LP, 925 F.2d 1480, at *1 (Fed. Cir. 1991) (unpub.) (refusing to adopt plaintiffs argument that the Ninth Circuits decision in Johnson mandated that a district court abuses its discretion by awarding costs pad for letters of credit). Because Hynixs costs were necessary to obtain the required supersedeas bonds pending appeal, and thus reasonable, Hynixs costs should be granted. As stated here and in Hynixs Previous Response (Dkt. No. 4076), the Court should provide Hynix the costs explicitly awarded by the Federal Circuit under Rule 39. This issue is ripe for resolution and no grounds exist for delaying these costs.

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Dated: January 5, 2012

Respectfully submitted, KILPATRICK TOWNSEND & STOCKTON LLP

By: /s/ Theodore G. Brown, III Theodore G. Brown, III G. Ross Allen KILPATRICK TOWNSEND & STOCKTON LLP 1080 Marsh Road Menlo Park, California 94025 Tel: (650) 326-2400 Fax: (650) 326-2422 Email: tbrown@kilpatricktownsend.com grallen@kilpatricktownsend.com Attorneys for Plaintiffs, HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH
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HYNIXS RESPONSE ISO HYNIXS SECOND SUPPLEMENTAL BILL OF COSTS CASE NO. CV-00-20905 RMW