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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. /// /// /// /// ///
HYNIXS MOTION TO RELEASE ESCROW ACCOUNT CASE NO. CV-00-20905 RMW

Case No. CV 00-20905 RMW HYNIXS MOTION TO RELEASE ESCROW ACCOUNT Hearing Date: April 6, 2012 Time: 9:00 a.m. Courtroom: 6, 4th Floor Judge: Hon. Ronald M. Whyte

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I.

NOTICE OF MOTION AND MOTION PLEASE TAKE NOTICE THAT on Friday, April 6, 2012 at 9:00 a.m., or as soon

thereafter as the matter may be heard, in the United States District Court, Northern District of California, San Jose Division, Courtroom 6, 4th Floor, located at San Jose, CA, before the Hon. Ronald M. Whyte, Plaintiffs Hynix Semiconductor Inc., Hynix Semiconductor America Inc., Hynix Semiconductor U.K. Ltd., and Hynix Semiconductor Deutschland GmbH (collectively, Hynix) will, and hereby does, move for an Order releasing the funds of the Escrow Account on the grounds that all conditions precedent for releasing the funds provided in the Courts November 24, 2009 Order have been satisfied. This motion is based on this Notice of Motion and Motion, the accompanying Memorandum of Points and Authorities, the pleadings on file in this action, and upon such other matters presented to the Court at the time of the hearing. II. STATEMENT OF ISSUE TO BE DECIDED Whether Hynix is entitled to an Order releasing the funds of the Escrow Account where all conditions precedent for releasing of the funds provided in this Courts November 24, 2009 Order have been satisfied. III. FACTUAL STATEMENT On March 10, 2009, this Court entered Final Judgment for Rambus and required Hynix to pay specified royalties on an on-going basis to Rambus for Hynixs allegedly infringing conduct during the period of February 1, 2009 through April 17, 2010. Dkt. No. 3911 [Final Judgment of March 10, 2009], at 4. This Court stayed execution of the Judgment, however, and permitted Hynix to pay the royalties into an Escrow Account rather than to Rambus directly. Dkt. No. 3965 [Order of May 14, 2009], at 4. Since April 2009, Hynix has maintained the Escrow Account and deposited the on-going royalty according to the terms of the Final Judgment.1 See Dkt. No. 3911, at 3-4. As required by the Courts Order (id. at 6) Hynix has provided complete accountings of these deposited funds to Rambus on a quarterly basis. See Declaration of G. Ross Allen in
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Hynixs on-going royalty obligations ended on April 17, 2010. See Dkt. No. 3911, at 3:23-4:5. All of the patents-in-suit expired the following day, April 18, 2010, 20 years after the date the initial Farmwald/Horowitz application was filed. -1-

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Support of Hynixs Motion to Release Escrow Account (Allen Decl.), Exh. 1. On November 24, 2009, this Court provided conditions upon which the funds in the Escrow Account shall be released. Specifically, this Court ordered: If the Final Judgment is reversed or vacated so as to affect the basis for the Ongoing Royalty award, the funds in the Escrow Account, including interest and/or profits therein, shall not be released to any party pending further proceedings before this Court, but shall be released in accordance with any further order by the Court. No funds in the Escrow Account shall be released sooner than (1) thirty days following the later of remand to the district court following completion of all proceedings in the United States Supreme Court, if a petition for writ or [sic] certiorari is granted; (2) denial of any petition for writ of certiorari to the United States Supreme Court; (3) expiration of the time to file a petition for writ of certiorari if no such petition is filed; or (4) until such time as is otherwise ordered by this court. Dkt. No. 4001 [Stipulation and Order of November 24, 2009], at 4:5-13 (emphases added). Thus, the November 24, 2009 Order provided that the funds in the Escrow Account should be released by an order from this Court once the Supreme Court denies any petition for writ of certiorari to the United States Supreme Court. Hynix filed a petition for certiorari on October 27, 2011 seeking review of the Federal Circuits Order regarding claim construction and Hynixs inequitable conduct allegations. On December 9, 2011, Hynix requested that this Court lift Hynixs obligations to maintain the Escrow Account. Dkt No. 4097, at 2:7-3:8. This request was denied on January 11, 2012. See Dkt. No. 4115, at 12-13. On February 21, 2012, however, the United States Supreme Court denied Hynixs petition for writ of certiorari in this case. Allen Decl., Exh. 2. This satisfied the final substantive condition precedent for release of the funds in the Escrow Account under the Courts November 24, 2009 Order. See Dkt. No. 4001, at 4:5-13. Therefore, Hynixs counsel contacted Rambuss counsel to propose the parties stipulate to releasing the Escrow Account.2,3 Rambuss counsel
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Although Hynixs request stated that the earliest date the escrow could be released was 30 days after the denial of certiorari, this statement was mistaken. There is no 30-day waiting period to release the funds as Hynixs and Rambuss counsel discuss in Exhibit 3 of the Allen Declaration. Rather, the Courts November 24, 2009 only requires a 30-day waiting period following completion of all proceedings in the United States Supreme Court, if a petition for writ or [sic] certiorari is granted. Dkt. No. 4001, at 4:8-13 (emphasis added). Therefore, the 30-day waiting period is inapplicable here because the Supreme Court denied Hynixs petition. -2-

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refused, thereby requiring Hynix to bring the present motion. Allen Decl., Exh. 3. IV. THE FUNDS IN THE ESCROW ACCOUNT SHOULD BE RELEASED ACCORDING TO THE NOVEMBER 24, 2009 ORDER Hynix has satisfied each of the conditions precedent for an Order releasing the funds in the Escrow Account. First, the Federal Circuits May 13, 2011 decision vacated the Judgment, including the sections requiring the payment of on-going royalties, and thus affected the basis for the Courts on-going royalty award. See Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1355 (Fed. Cir. 2011). Second, the Supreme Court has now denied Hynixs petition for writ of certiorari, so any restriction on the release of the funds is no longer applicable. See Dkt. No. 4001, at 4:8-13. Therefore, Hynixs funds in the Escrow Account should be released; all that is required is an Order from this Court and Rambuss agreement to waive any appeal from such an Order, which would be necessary to satisfy the conditions in the Escrow Agreement for release of the funds if Rambus does not simply agree to their release. Allen Decl., Exh. 4 at 5, section 6(1). Further, equities favor the release of the funds in the Escrow Account, as this Account holds a substantial amount of Hynixs funds and Hynixs obligation to pay an on-going royalty has long passed. Although Hynixs annual fees for maintaining the Escrow Account are not significant compared to the Accounts balance, Hynix still has over $80 million tied up in this Account. Not releasing these funds will continue to prevent Hynix from using this capital for other purposes, despite Hynixs on-going royalty obligations ending almost two years ago. See Dkt. No. 3911, at 3:23-4:5. Further, any concerns regarding the calculation and transfer of royalties if Rambus prevails on the merits should not preclude the release of the funds. The calculations of the royalties during the relevant damages period is not difficult, as evidenced by Hynixs complete accounting reports provided to Rambus on a quarterly basis, each accompanied by detailed information data for all sales of products included in the Courts Judgment. See Allen Decl., Exh. 1. While it is possible that Rambus will ultimately prevail in this case and that a future
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A copy of Hynixs Stipulation and [Proposed] Order offered for Rambuss consideration is attached as Exhibit 3 to the Allen Declaration. -3-

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judgment may reflect the amounts currently in escrow, Rambuss refusal to agree to the release of the escrow to Hynix, under the circumstances, is in effect no more than an attempt to attach Hynixs funds to satisfy a potential future judgment. V. CONCLUSION For the foregoing reasons, this Court should enter an Order releasing the funds from the Escrow Account. All conditions required by the November 24, 2009 Order for release of the funds have been satisfied. Dated: March 8, 2012 Respectfully submitted, KILPATRICK TOWNSEND & STOCKTON LLP

By: /s/ G. Ross Allen Theodore G. Brown, III G. Ross Allen KILPATRICK TOWNSEND & STOCKTON LLP 1080 Marsh Road Menlo Park, CA 94025 Tel: (650) 326-2400 Fax: (650) 326-2422 Email: tbrown@kilpatricktownsend.com grallen@kilpatricktownsend.com Kenneth L. Nissly Susan G. van Keulen Susan D. Roeder OMELVENY & MEYERS LLP 2765 Sand Hill Road Menlo Park, California 94025 Tel: (650) 473-2600 Fax: (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
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