Case 3:08-cv-03343-SI Document 50 Filed 11/19/2008 Page 1 of 6

1 Mike McKool, Jr. (pro hac vice)

Douglas Cawley (pro hac vice)
2 McKOOL SMITH P.C.
300 Crescent Court
3 Suite 1500
Dallas, Texas 75201
4 Telephone: (214) 978-4000
Facsimile: (214) 978-4044
5 Email: mmckool@mckoolsmith.com;
dcawley@mckoolsmith.com
6
Scott L. Cole (pro hac vice)
7 Pierre J. Hubert (pro hac vice)
Craig N. Tolliver (pro hac vice)
8 McKOOL SMITH P.C.
300 W. 6th Street
9 Suite 1700
Austin, Texas 78701
10 Telephone: (512) 692-8700
Facsimile: (512) 692-8744
11 Email: scole@mckoolsmith.com;
phubert@mckoolsmith.com;
300 Crescent Court, Suite 1500
McKOOL SMITH P.C.

12 ctolliver@mckoolsmith.com
Dallas, TX 75201

13 Julie S. Turner (State Bar No. 191146)

THE TURNER LAW FIRM
14 344 Tennessee Lane
Palo Alto, California 94306
15 Telephone: (650) 494-1530
Facsimile: (650) 472-8028
16 Email: jturner@julieturnerlaw.com

17 Attorneys for Plaintiff

RAMBUS INC.
18

19 UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA
20 SAN FRANCISCO DIVISION
21
RAMBUS INC.,
22 Case No. C-08-03343 SI
Plaintiff,
23 RAMBUS INC.’S OPPOSITION TO
v. NVIDIA CORPORATION’S
24 MOTION TO CONTINUE CASE
NVIDIA CORPORATION, MANAGEMENT CONFERENCE
25
Defendant. Judge: The Hon. Susan Illston
26

27

28
Rambus Inc.’s Opposition to NVIDIA Corp.’s
Motion to Continue Case Management Conference
Case No. C-08-03343 SI
Austin 47169v3
 Case 3:08-cv-03343-SI Document 50 Filed 11/19/2008 Page 2 of 6

1 In its motion seeking to extend the time for the upcoming December 5th case management

2 conference, NVIDIA argues that the conference should be put off due to (i) a motion to transfer

3 pending in the Middle District of North Carolina and (ii) an imminent ITC investigation that

4 involves a subset of the patents at issue in the case at bar. Neither argument has merit.

5 NVIDIA’s motion represents the same sort of delay tactic as NVIDIA’s motion to dismiss that

6 the Court denied without a hearing.1 NVIDIA’s motion should be denied.

7 I. NVIDIA’S ARGUMENT THAT THE PENDENCY OF A MOTION TO

TRANSFER IN THE MIDDLE DISTRICT OF NORTH CAROLINA MANDATES
8 EXTENDING THE DECEMBER 5TH DATE IN THE CASE AT BAR IS A RED
HERRING
9

10 NVIDIA argues that the decision of the Middle District of North Carolina on Rambus’s
11 motion to transfer will have a “significant” impact on the management of the case at bar.
300 Crescent Court, Suite 1500
McKOOL SMITH P.C.

12 Notably, however, NVIDIA offers no explanation of how or why the transfer of NVIDIA’s
Dallas, TX 75201

13 claims from that action will impact management of the case at bar. NVIDIA’s argument is a red
14 herring, in at least two respects.
15 First, NVIDIA omits from its motion that NVIDIA must Answer Rambus’s complaint in
16 the case at bar before the December 5th case management conference. So to the extent NVIDIA
17 seeks to preserve and pursue its claims from the Middle District of North Carolina regarding the
18 patents on which Rambus accuses NVIDIA of infringement in the case at bar, NVIDIA’s claims
19 presumably will be at issue in this case before the December 5th case management conference,
20 regardless of any determination on the motion to transfer in Middle District of North Carolina.
21 Second, NVIDIA incorrectly implies that Rambus agreed to resolve the transfer motion
22 in the Carolina case prior to any case management conference in the case at bar. NVIDIA’s
23

24 1
NVIDIA filed its case in Middle District of North Carolina one day after Rambus filed the case
at bar against NVIDIA. Since then, NVIDIA repeatedly has sought to delay deadlines in this
25 case, the first-filed case, while seeking to accelerate deadlines in the Middle District of North
Carolina. See, e.g., Dkt. Nos. 22, 34 and 38, and Declaration of Pierre Hubert ISO Opposition to
26 Motion to Continue CMC (“Hubert Decl.”), filed herewith, Ex. G (NVIDIA seeking to delay
26(f) in California and accelerate 26(f) in North Carolina). If NVIDIA truly were motivated to
27 achieve a more efficient resolution of this case, it would be asking this Court to accelerate, not
delay, the December 5th case management conference.
28
Rambus Inc.’s Opposition to NVIDIA Corp.’s
Motion to Continue Case Management Conference
Case No. C-08-03343 SI
1
 Case 3:08-cv-03343-SI Document 50 Filed 11/19/2008 Page 3 of 6

1 argument misrepresents not only the parties’ agreement, but also what NVIDIA argued to the

2 District Court for the Middle District of North Carolina. In the Carolina action, neither NVIDIA

3 nor Rambus has indicated that it contemplates any movement in the December 5th case

4 management conference date in the case at bar. In fact, both NVIDIA and Rambus agreed to

5 move the Court in Carolina to expedite consideration of the motion to transfer based on the

6 premise of a December 5, 2008 case management conference here.2 Rambus notes that the

7 Middle District of North Carolina Court already has issued an order referring Rambus’s motion

8 to transfer for decision. See Hubert Decl. Ex. B. Rambus has no reason to believe that the Court

9 will not rule on the motion to transfer before December 5th, and if NVIDIA has any reason for

10 such a belief NVIDIA has not articulated it.

11 Regardless of the motion to transfer, since the time that the parties sought to expedite a
300 Crescent Court, Suite 1500
McKOOL SMITH P.C.

12 ruling on the motion to transfer in the Middle District of North Carolina, the Court here has
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13 denied NVIDIA’s motion to dismiss. See Dkt. No. 45. NVIDIA now is required to Answer

14 Rambus’s complaint without further delay, so NVIDIA’s argument regarding the motion to

15 transfer pending in Middle District of North Carolina is not only largely disingenuous, but moot.

16 I. THE EFFECTS OF THE ITC INSTITUTING AN INVESTIGATION ON A

SUBSET OF THE PATENTS IN THE CASE AT BAR CAN ALREADY BE
17 CONTEMPLATED AT THIS TIME, AND DO NOT REQUIRE EXTENDING
THE DECEMBER 5TH CASE MANAGEMENT DATE
18
NVIDIA argues that because of the imminent ITC investigation, “at least until December
19
8th, the parties and this Court are faced with substantial uncertainties regarding the scope and
20
2
See Hubert Decl. Ex. A, October 27, 2008 Email from NVIDIA’s counsel to Rambus’s counsel,
21 at 2 (“We’d like Rambus to consent to a joint request that the Court set a hearing on the pending
motions, or otherwise consider those motions on an expedited basis prior to the December 5
22 CMC in California.”) (emphasis added); Hubert Decl. Ex. C, October 30, 2008 Email from
Rambus’s counsel to NVIDIA’s counsel, at 1 (“In response to your inquiry as to whether
23 Rambus is amenable to a joint request for expedited consideration of Rambus’s motion to
transfer the M.D.N.C. case in view of the upcoming case management conference in the first-
24 filed California case on December 5th, Rambus is generally amenable to expedited treatment of
the motion to transfer….”); Hubert Decl. Ex. D, NVIDIA’s Motion to Expedite (M.D.N.C.), at 2
25 (“In that Northern District of California action, the court has ordered a case management
conference to proceed on December 5, 2008”) (emphasis added); Hubert Decl. Ex. E, Rambus’s
26 Opposition to NVIDIA’s Motion to Expedite (M.D.N.C.), at 2 (“Rambus does agree that both
parties would benefit by an expedited resolution of the Motion to Transfer, since there is a Case
27 Management Conference in the first-filed California action on December 5, 2008.”) (emphasis
added).
28
Rambus Inc.’s Opposition to NVIDIA Corp.’s
Motion to Continue Case Management Conference
Case No. C-08-03343 SI
2
 Case 3:08-cv-03343-SI Document 50 Filed 11/19/2008 Page 4 of 6

1 nature of this case that make case management options both hypothetical and difficult to

2 evaluate.” NVIDIA’s Motion at 2. This argument also falls flat.

3 First, NVIDIA fails to mention that the ITC can and frequently does institute

4 investigations prior to the 30-day deadline, so that December 8th date--only three days after the

5 currently scheduled date of December 5th-- represents the worst-case scenario.3 Tellingly,

6 despite December 8th coming only three days after the currently scheduled date of December 5th,

7 NVIDIA seeks an extension to December 23rd or later. NVIDIA offers no justification for

8 seeking an extension to December 23rd, which is not only long after December 8th, but after the

9 December 18th and 19th dates that NVIDIA proposed to Rambus during a meet-and-confer. See

10 Hubert Decl. Ex. H, November 15, 2008 Letter Hubert to Fishman.

11 Second, NVIDIA has not identified any reason why the parties cannot plan for case
300 Crescent Court, Suite 1500
McKOOL SMITH P.C.

12 management based on the ITC investigation being instituted and NVIDIA seeking a stay as to
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13 the patents that are common to the ITC investigation. See 28 U.S.C. § 1659. NVIDIA appears

14 to suggest to this Court that NVIDIA has not made up its mind on staying the patents that are

15 also before the ITC.4 But before the Middle District of North Carolina, NVIDIA already has

16 indicated that it intends to seek a stay as to the common patents.5 Accordingly, if NVIDIA’s

17 representations to the Middle District of North Carolina Court are to be believed, the parties in

18

19

20 3
For investigations filed subsequent to September 1, 2008, the ITC has taken an average of 27
days to institute a complaint. See, e.g., 73 Fed. Reg. 53441 (ITC Inv. No. 337-TA-655 instituted
21 27 days after filing of complaint); 73 Fed. Reg. 54164 (ITC Inv. No. 337-TA-656 instituted 27
days after filing of complaint); 73 Fed. Reg. 54617 (ITC Inv. No. 337-TA-657 instituted 24 days
22 after filing of complaint); 73 Fed. Reg. 54854 (ITC Inv. No. 337-TA-658 instituted 27 days after
filing of complaint); 73 Fed. Reg. 66919 (ITC Inv. No. 337-TA-659 instituted 30 days after
23 filing of complaint).
4
24 See NVIDIA’s Motion at 2 (NVIDIA apparently noncommittal in noting that “NVIDIA would
be entitled to stay this action as to the patents overlapping in the two proceedings”) (emphasis
25 added).
5
See Hubert Decl. Ex. F, NVIDIA’s Supplemental Opposition to Rambus’s Motion to Transfer
26 (M.D.N.C.), at 1 (“The practical effect of Defendant’s ITC filing is that most [sic] of the
California Action will be stayed pursuant to 28 U.S.C. § 1659(a)”) (emphasis added); id. at 2
27 (“NVIDIA respectfully submits that the imminent stay in the California action [weighs against
transfer] to that soon-to-be-stayed proceeding.”) (emphasis added)
28
Rambus Inc.’s Opposition to NVIDIA Corp.’s
Motion to Continue Case Management Conference
Case No. C-08-03343 SI
3
 Case 3:08-cv-03343-SI Document 50 Filed 11/19/2008 Page 5 of 6

1 the case at bar can prepare for a case management conference with the contingency that the nine

2 patents-in-suit common to the ITC will be stayed.6

3 II. THE PARTIES HAVE MET AND CONFERRED UNDER RULE 26(F) AND ARE
CURRENTLY ENGAGED IN DRAFTING SECTIONS OF A CASE
4 MANAGEMENT STATEMENT, SO THERE IS NO REASON TO DELAY A
CASE MANAGEMENT CONFERENCE
5
The parties already have met and conferred with respect to Rule 26(f) and are engaged in
6
an ongoing meet-and-confer regarding the case management statement. See Hubert Decl. Ex. I,
7
November 17, 2008 Letter Hubert to Fishman. For example, Rambus has prepared a draft of a
8
case management statement that accounts for the institution of the ITC proceeding and the stay
9
of the patents that are also before the ITC, and has exchanged that draft with NVIDIA. See id.
10
Rambus will be prepared for the December 5th case management conference--a deadline that has
11
been on calendar for many weeks--and NVIDIA has not articulated a valid reason why NVIDIA
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McKOOL SMITH P.C.

12
cannot be prepared.
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13
For the foregoing reasons, Rambus respectfully requests that NVIDIA’s motion be
14
Denied.
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21 6
As NVIDIA recognizes, the stay provided for in 28 U.S.C. § 1659(a) applies only to those
patents at issue in the ITC proceeding. With respect to non-overlapping patents, contrary to the
22 implication in NVIDIA’s motion, stays at the discretion of the Court are routinely denied. See,
e.g., Am. Honda Motor Co. v. Coast Distrib. Sys., No. CV-06-04752-JSW, 2007 U.S. Dist.
23 LEXIS 19981 (N.D. Cal. Feb. 26, 2007) (denying discretionary stay where § 1659 stay not
triggered); Broadcom Corp. v. Qualcomm Inc., No. 05-468, 2005 U.S. Dist. LEXIS 45829, at *7
24 (C.D. Cal. Sept. 26, 2005) (denying stay as to issues not before the ITC); Micron Tech., Inc. v.
Mosel Vitelic Corp., No. 98-0293, 1999 U.S. Dist. LEXIS 4792, at *8-14 (D. Idaho Mar. 31,
25 1999) (denying stay as to patents not before the ITC); Organon Teknika Corp. v. Hoffmann La
Roche, Inc., No. 1:95-CV-865, 1997 U.S. Dist. LEXIS 3798, at *8-9 (M.D.N.C. Feb. 19, 1997)
26 (denying stay as to patents not before the ITC). Even the single case cited by NVIDIA indicates
that NVIDIA would bear the heavy burden of proving that a discretionary stay is warranted. See
27 FormFactor, Inc. v. Micronics Japan Co., No. CV-06-7159, 2008 U.S. Dist. LEXIS 13114, at
*4-5 (N.D. Cal. Feb. 11, 2008).
28
Rambus Inc.’s Opposition to NVIDIA Corp.’s
Motion to Continue Case Management Conference
Case No. C-08-03343 SI
4
 Case 3:08-cv-03343-SI Document 50 Filed 11/19/2008 Page 6 of 6

2 Respectfully submitted,

3
DATED: November 19, 2008 MCKOOL SMITH P.C.
4
THE TURNER LAW FIRM
5

6 By: /s/ Pierre J. Hubert

Pierre J. Hubert
7

8 Attorneys for Plaintiff

RAMBUS INC.
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300 Crescent Court, Suite 1500
McKOOL SMITH P.C.

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Dallas, TX 75201

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Rambus Inc.’s Opposition to NVIDIA Corp.’s
Motion to Continue Case Management Conference
Case No. C-08-03343 SI
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