micron motion sj

8/14/2019 Micron Motion SJ

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MICRONS MOTION FOR SUMMARY JUDGMENT OFUNENFORCEABILITY BASED ON COLLATERAL

ESTOPPEL

CASE NO.C06-00244RMW

[Counsel Listed On Signature Page]

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

RAMBUS INC.,

Plaintiff,

v.

MICRON TECHNOLOGY, INC. andMICRON SEMICONDUCTORPRODUCTS, INC.,

Defendants.

Case No. C 06-00244 RMW

MICRONS MOTION FOR SUMMARYJUDGMENT OF UNENFORCEABILITYBASED ON COLLATERAL ESTOPPEL

Hearing Date: January 30, 2009Time: 2:00 pmCourtroom: 6, 4th FloorJudge: Ronald M. Whyte

Case 5:05-cv-00334-RMW Document 3121 Filed 01/19/2009 Page 1 of 28


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MICRONS MOTION FOR SUMMARY JUDGMENT OFUNENFORCEABILITY BASED ON COLLATERALESTOPPEL

i


TABLE OF CONTENTS

Page

I. INTRODUCTION....................................................................................................................... 1

II. STATEMENT OF FACTS......................................................................................................... 3A. The Delaware And 244 Actions Are Closely Related........................................... 3

1. Conduct Issues ............................................................................................ 3

2. Rambuss Unclean Hands And Spoliation Of Evidence............................. 4

3. Patent Issues................................................................................................ 5

B. Judge Robinsons Ruling That Rambus Engaged In Bad-Faith SpoliationThat Prejudiced Micron........................................................................................... 6

III. MICRON IS ENTITLED TO SUMMARY JUDGMENT ....................................................... 9

A. Judge Robinsons Findings And Conclusions Must Be Given FullCollateral Estoppel Effect In This Action............................................................... 9

1. Rambus Had A Full And Fair Opportunity To Litigate UncleanHands And Spoliation............................................................................... 10

2. The Unclean Hands And Spoliation Issues Were Actually Litigated

In Delaware............................................................................................... 10

3. Judge Robinsons Ruling Is Final For Purposes Of Collateral

Estoppel..................................................................................................... 14

4. Rambus Is A Party Both Here And In The Delaware Action ................... 15

B. Based On Judge Robinsons Findings And Conclusions, Rambuss PatentsIn This Action Must Be Found Unenforceable Against Micron........................... 15

C. Rambuss Arguments Against Collateral Estoppel Are Baseless......................... 17

1. Because There Is Mutuality Of Parties, The Application Of

Collateral Estoppel Here Is Not Discretionary.......................................... 18

2. The Actions Do Not Need To Be Identical For Collateral EstoppelTo Apply ................................................................................................... 19

3. The Application Of Collateral Estoppel Does Not Hinge OnLitigation Misconduct ............................................................................... 20

4. This Court Cannot Second-Guess Judge Robinsons Ruling.................... 21IV. CONCLUSION....................................................................................................................... 22



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iii


McQuillion v. Schwarzenegger,369 F.3d 1091 (9th Cir. 2004)..................................................................................... 18

Montana v. United States,440 U.S. 147 (1979).................................................................................................... 19

In re Napster, Inc. Copyright Lit.,462 F. Supp. 2d 1060 (N.D. Cal. 2006) ................................................................ 12, 13

Natl Assoc. of Radiation Survivors v. Turnage,

115 F.R.D. 543 (N.D. Cal. 1987)................................................................................ 12

Nursing Home Pension Fund v. Oracle Corp.,

2008 WL 4093497 (N.D. Cal. Sept. 2, 2008) ............................................................. 12

Parklane Hosiery Co. v. Shore,

439 U.S. 335 (1979).................................................................................................... 16

Robi v. Five Platters, Inc.,

838 F.2d 318 (9th Cir. 1988)......................................................................................... 9

Sec. People, Inc. v. Medeco Sec. Locks, Inc.,

59 F. Supp. 2d 1040 (N.D. Cal. 1999) ........................................................................ 14

Southern Pac. R.R. Co. v. United States,

168 U.S. 1 (1897).......................................................................................................... 9

Stevenson v. Sears, Roebuck & Co.,

713 F.2d 705 (Fed. Cir. 1983)..................................................................................... 21

United States v. Mendoza,

464 U.S. 154 (1984)...................................................................................................... 9

United States v. Moser,

266 U.S. 236 (1924)...................................................................................................... 9

United States v. Rubenstein,

971 F.2d 288 (9th Cir. 1992)....................................................................................... 21

United States v. 22 Santa Barbara Drive,264 F.3d 860 (9th Cir. 2001)....................................................................................... 18

Zubulake v. UBS Warburg LLC,

220 F.R.D. 212 (S.D.N.Y. 2003) ................................................................................ 12



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NOTICE OF MOTION AND MOTION

TO ALL PARTIES AND THEIR COUNSEL OF RECORD:

PLEASE TAKE NOTICE that on January 30, 2009, at 2:00 p.m. or as soon

thereafter as the matter may be heard before the Honorable Ronald M. Whyte, United States

District Court for the Northern District of California, 280 South First Street, San Jose, California,

defendants and counterclaimants Micron Technology, Inc. and Micron Semiconductor Products

Inc. (Micron) will and hereby do move this Court for (1) an order granting summary judgment

that the Rambus patents-in-suit in this case1 (the 244 Action) are unenforceable against Micron

based on the collateral estoppel effect of Judge Robinsons opinion and order on unclean hands

and spoliation in the related Delaware action,2

and (2) entry of judgment in favor of Micron and

against Rambus on its claims for patent infringement in the 244 Action.

This motion is based on the following memorandum of points and authorities, the

accompanying declaration of John Beynon (Beynon Decl.), documentary evidence submitted

herewith or cited herein, the complete record of this action and the Delaware action, the evidence

and argument presented at the hearing on this motion, and all matters of which the Court may

take judicial notice.

1Rambus Inc., v. Micron Technology, Inc. and Micron Semiconductor Products, Inc., Case No. C

06-00244 RMW.

2Micron Technology, Inc., et al. v. Rambus Inc., Civil Action No. 00-792-SLR.



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1


MEMORANDUM OF POINTS AND AUTHORITIES

I.

INTRODUCTION

In the District of Delaware, where a lawsuit between Micron and Rambus has been

pending since 2000, Micron and Rambus tried the issue of Rambuss unclean hands and bad-faith

spoliation of evidence to Judge Robinson in November 2007. The trial lasted five full days

Judge Robinson heard live testimony from key witnesses, including Joel Karp, Dan Johnson

Allen Roberts, and Lester Vincent. In total, the record includes over thirty hours of testimony

live and by deposition. Judge Robinson received nearly three hundred exhibits into evidence

She considered lengthy post-trial briefs and heard two rounds of closing arguments.

Based on this thorough record, Judge Robinson made findings of fact and conclusions of

law in a detailed, 33-page decision dated January 9, 2009. See Beynon Decl., Exh. 1 (Del

Spoliation Opinion). She found by clear and convincing evidence that Rambus had engaged in

bad-faith spoliation of evidence, that Rambuss spoliation had prejudiced Micron in pursuing its

antitrust, patent misuse, unfair competition, and inequitable conduct claims and defenses, and that

any remedy short of declaring Rambuss patents unenforceable would be meaningless. See

Beynon Decl., Exh. 1 at 32-33 56-57 (Del. Spoliation Opinion). Based on these findings

Judge Robinson entered an order that the twelve Rambus patents-in-suit in Delaware all of

which claim priority to the 1990 Farmwald/Horowitz application are unenforceable against

Micron.

Under the doctrine of collateral estoppel, these findings and conclusions are binding on

Rambus in this case. Micron raised the same issues of unclean hands and spoliation in this case

that were tried in Delaware. Rambus had a full and fair opportunity to contest these common

issues during a multi-day trial. And Rambus has conceded that Judge Robinsons decision is

sufficiently final for purposes of collateral estoppel.

Here, the Court must give Judge Robinsons decision collateral estoppel effect and enter

judgment that the Rambus patents-in-suit in this case are likewise unenforceable against Micron



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As a matter of law, when there is complete mutuality of parties, as there is here, the Court does

not have discretion whether to give Judge Robinsons findings and conclusions collateral estoppel

effect it must do so. This result is neither harsh nor unfair nor surprising. In fact, the parties

and the Courts have recognized all along that Judge Robinsons decision in Delaware would be

binding in this Court because the issues that were tried in Delaware are identical to the issues to

be tried in this Court. Rambus previously represented to the Delaware Court (in support of a

motion to transfer the Delaware case to California) that Micron had raised in California the

very same unclean hands claim that it has asserted in [Delaware].3 Because it recognized

that the issues were identical, Rambus then represented to this Court in 2007 that the issues of

unclean hands and spoliation should not be relitigated in this Court because they were being

litigated in Delaware: Microns unclean hands defense is properly left for resolution by

Judge Robinson of the United States District Court for the District of Delaware, where

Micronelected to try these allegations.4 Rambus specifically argued that this was just and fair

asserting in no uncertain terms that allowing further litigation on those issues in this Court would

be wrong:

We just tried unclean hands in the Micron case that Micron brought in Delaware.In my view, thats their they took their shot at spoliation and unclean hands and

that should be it. They should the result of the Micron case in Delaware shouldbind them and they shouldnt come back trying to raise spoliation issues here ortrying to retry the issues here. Everybody should have one shot at it.

Nov. 21, 2007 Hearing Tr. at 170:17-171:1; see also 151:12-152:6, 153:1-16 (questions posed by

Court) (244 D.E. 721).

Rambus had its shot at litigating a dispositive issue with Micron. Rambus lost. That

should end Rambuss attempts to enforce these patent claims against Micron. Yet, Rambus

refuses to stand down. Indeed, Rambus now renounces its prior representations here and in

Delaware, arguing that it should be given the chance to relitigate the exact same unclean hands

3 Beynon Decl., Exh. 2 at 12-13 (Rambus Inc.s Reply Brief In Support Of Its Renewed Motion

To Transfer, May 1, 2007).

4 Rambus Inc.s Motion In Limine No. 5 To Preclude The Manufacturers From Introducing

Evidence Related To Rambuss Document Retention Or Document Destruction, Dec. 7, 2007(244 D.E. 467).



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and spoliation issues in this Court that it lost in Delaware. A more improper, unjust, and

inefficient position is hard to conceive. Collateral estoppel serves the parties and the Courts

interests in just and efficient case resolution. Rambuss approach would undermine these

objectives by forcing the parties to relitigate issues that Rambus already tried and lost.

II.

STATEMENT OF FACTS

A. The Delaware And 244 Actions Are Closely RelatedThe Delaware action and the instant 244 Action are closely related. Both actions

involve allegations of antitrust, unfair competition, patent misuse, and fraud arising from

Rambuss unlawful attempts to undermine the standard-setting process at JEDEC and control the

high-performance DRAM market. Both actions involve allegations that Micron infringes patents

claiming priority to the 1990 Farmwald/Horowitz application (S/N 07/510,898), as well as

related defenses that the patents are invalid (under 35 U.S.C. 102, 103, and 112) and

unenforceable (due to inequitable conduct). Both actions also involve unclean hands and

spoliation issues arising from Rambuss widespread destruction of documents at a time when it

anticipated litigation. Based on this overlap, Rambus has represented to the Delaware court that

the Delaware action and this action were simultaneous proceedings in different forums on the

same issues. Beynon Decl., Exh. 2 at 17 (Rambus Inc.s Reply Brief In Support Of Its

Renewed Motion To Transfer, May 1, 2007).

1. Conduct IssuesIn both the Delaware action and this action, Microns conduct claims and defenses relate

among other things, to Rambuss attempts to control the high-performance DRAM market by

undermining the JEDEC standard-setting process and capturing the standards with its patents.5

5 In each case, Micron asserted that Rambuss conduct supported a finding of monopolization

attempted monopolization, fraud, patent misuse, breach of contract, fraud, negligent

misrepresentation, unfair competition, equitable estoppel, implied license, waiver, and laches, andsought, among other remedies, a judgment that Rambuss patents are unenforceable against

Micron. Compare, e.g., July 31, 2007 NDCA Joint Case Management Statement at Attachment 2

(244 D.E. 118) with Beynon Decl., Exh. 3 (Sept. 5, 2007 Del. Micron Second Amended



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Micron has asserted in both actions that Rambus manipulation of JEDEC and its fraudulent

conduct and multiple breaches of its contractual duties to JEDEC and the other participants in

JEDEC led microprocessor manufacturers to adopt high-performance DRAM interface

technology that is compatible only with the high-performance DRAM interface technology that

defendant Rambus claims to have patented and to control. Beynon Decl., Exh. 3 150 (Micron

Del. Second Amended Complaint, filed Sept. 5, 2007) and Microns First Amended Answer and

Counterclaims, filed May 30, 2007, 269 (244 D.E. 87). There is essentially complete overlap

between the conduct allegations in the two cases. Compare Beynon Decl., Exh. 3, 1-13, 19-97

(Micron Del. Second Amended Complaint, filed Sept. 5, 2007) with Microns First Amended

Answer and Counterclaims, filed May 30, 2007, 80-176 (244 D.E. 87).

Before losing in Delaware, Rambus freely and repeatedly represented to the Delaware

court that the conduct issues in the Delaware and California cases were identical. In seeking to

transfer the Delaware action to California, Rambus argued that the allegations supporting

Microns JEDEC-related claims in this [Delaware] case and in the California Micron case that is

to be tried in nine months are word-for-word identical. Beynon Decl., Exh. 2 at 2 n.1

(Rambus Inc.s Reply Brief In Support Of Its Renewed Motion To Transfer, May 1, 2007).

Rambus also argued to the Delaware court that resolution of the conduct issues in California

would necessarily decide those issues in Delaware:

[T]he January 2008 trial in California on claims and defenses relating to Rambussalleged conduct at JEDEC will decide virtually all of the claims in Micronscomplaint here [in Delaware], including its antitrust, fraud, breach of contract,equitable estoppel, deceptive practices and unfair competition claims againstRambus, which are all based on Rambuss alleged conduct at JEDEC.

Beynon Decl., Exh. 2 at 1 (Rambus Inc.s Reply Brief In Support Of Its Renewed Motion To

Transfer, May 1, 2007).

2. Rambuss Unclean Hands And Spoliation Of EvidenceBoth the Delaware and California 244 actions involve identical allegations of unclean

hands based on Rambuss spoliation of evidence. Microns pleadings, Judge Robinsons

Complaint), Exh. 4 (Mar. 15, 2006 Del. Microns Reply and Counterclaims to Rambus Inc.sSupplemental and Second Amended Counterclaims).



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opinion, and the parties post-trial briefing on unclean hands and spoliation in Delaware clearly

demonstrate that the issues are identical in both actions. Microns defense in both actions arises

from Rambuss massive and intentional campaign to destroy relevant evidence while it

anticipated litigation.6

In both actions, Micron seeks unenforceability of Rambuss patents as the

remedy for Rambuss spoliation of evidence.

Against this backdrop, it should come as no surprise that Rambus previously admitted in

Delaware that the unclean hands defense asserted by Micron in both actions is the very same:

Micron has since also raised in California the very same unclean hands claim that it has

asserted in this case. Beynon Decl., Exh. 2 at 12-13 (Rambus Inc.'s Reply Brief In Support Of

Its Renewed Motion To Transfer, May 1, 2007). Presumably on that basis, Rambus represented

to this Court that [e]verybody should have one shot at trying the unclean hands defense and

that the outcome of the Delaware action should be binding in this case. Nov. 21, 2007 Hearing

Tr. at 170:17-171:1 (244 D.E. 721).

3. Patent IssuesIn Delaware, Rambus alleged that Micron has infringed twelve patents, all of which claim

priority to the original Farmwald/Horowitz Application (U.S. Patent Application 07/510,898).7

These twelve patents include claims that are directed to features such as dual edge clocking, on-

chip DLL, variable block size, auto precharge, and programmable write and read latency.

Beynon Decl., Exh. 5 (Conduct Trial Claim Chart); see also Exh. 6 (claim 19 of U.S. Patent No

5,953,263 directed, in part, to a programmable time delay representative of a time delay

6Microns First Amended Answer and Counterclaims, filed May 30, 2007, 164 (244 D.E. 87)

(Rambus developed and then carried out a plan to destroy evidence as a precursor toimplementing its litigation strategy. Rambus intentionally destroyed a massive amount of

relevant and/or potentially relevant information contained in millions of pages of documents and

electronic storage, including e-mail when it was both anticipating litigation and when it wasactually involved in litigation. Rambuss counsel went so far as to instruct its outside counsel to

sanitize their files of discoverable material, and its outside counsel obliged.).7 United States Patent Nos. 5,915,105; 5,953,263; 5,954,804; 5,995,443; 6,032,214; 6,032,2156,034,918; 6,038,195; 6,324,120; 6,378,020; 6,426,916; 6,452,863. Beynon Decl., Exh. 1 at 1 n.1(Del. Spoliation Opinion).



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after which the memory device responds to a write request). Rambus alleged that Micron

products, including DDR2 SDRAM and RLDRAM II, infringe these patents.

Similarly, in this case, Rambus is asserting patents against Micron that claim priority to

the 1990 Farmwald/Horowitz application.8

They are directed to the same six features of dual

edge clocking, on-chip DLL, variable block size, auto precharge, and variable write and read

latency. Beynon Decl., Exh. 5 (Conduct Trial Claim Chart). In fact, four of the ten patents

asserted here also are asserted against Micron in Delaware, namely, U.S. Patent Nos. 6,324,120

6,378,020, 6,426,916, and 6,452,863. Rambus is asserting its patents against Microns DRAMs

including the same DDR2 SDRAM and RLDRAM II products at issue in Delaware.

Importantly, there are overlapping patent applications that led to the patents-in-suit in

Delaware and California. Application Nos. 954,945 (U.S. Patent No. 5,319,755) and 222,646

(U.S. Patent No. 5,513,327) are in the prosecution chain leading to all of the Farmwald/Horowitz

patents-in-suit in California and all but one of the patents-in-suit in Delaware. Beynon Decl.

Exh. 7 (cover pages of Farmwald/Horowitz patents-in-suit in California and Delaware); Beynon

Decl., Exh. 8 (cover pages of U.S. Patent Nos. 5,319,755 and 5,513,327).

Indeed, given the close relationship between the patent issues in Delaware and California

Rambus previously argued in Delaware that there is substantial legal and factual overlap

between the Rambus patent cases before [this Court] and the [Delaware court]. Beynon Decl.

Exh. 2 at 5 (Rambuss Reply Brief ISO Renewed Motion to Transfer).

B. Judge Robinsons Ruling That Rambus Engaged In Bad-Faith SpoliationThat Prejudiced Micron

Like this Court, the Court in Delaware trifurcated the proceedings into phases. The

Delaware Court decided to try unclean hands and spoliation first, followed if necessary by a trial

on Rambuss patent claims, followed by a trial on Microns antitrust, fraud, and unfair

competition claims. Compare, e.g., Apr. 24, 2007 NDCA Joint Case Management Order at 1-3

8 U.S. Patent Nos. 6,182,184; 6,266,285; 6,314,051; 6,324,120; 6,378,020; 6,426,916; 6,452,863

6,546,446; 6,584,037; 6751,696. See Beynon Decl., Exh. 10 (Rambus Final InfringementContentions).



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(244 D.E. 70) with Beynon Decl., Exh. 9 at 6 (Mar. 16, 2006 Del. Scheduling Order Re-Setting

Case for Trial).

The unclean hands and spoliation trial commenced before Judge Robinson in November

2007. The five-day bench trial concluded on November 15, 2007. Almost three hundred

exhibits were admitted into evidence and the Court heard the testimony of more than twenty

witnesses (many of them live) during the trial. Beynon Decl., Exh. 11 (Del. Spoliation Trial

Exhibit List). Joel Karp, Lester Vincent, Sean Cunningham, Dan Johnson, Allen Roberts, Mike

Farmwald, Mark Horowitz, John Christian Montaa (Rambuss purported expert on document

retention policies), Allen Brill (Rambuss purported security expert from Kroll), and David

Rhoades (the operator of the document shredding business) all testified live before Judge

Robinson. Beynon Decl., Exh. 12 (compilation of first pages of live witnesses testimony from

Del. Trial Tr.). After the trial was completed, the parties submitted the equivalent of four

additional hours of prior testimony from twenty-two witnesses. Beynon Decl., Exh. 12

(compilation of first pages of witnesses prior testimony from Del. Trial Tr.).

Based on this extensive record, and after two rounds of post-trial briefing and two rounds

of closing arguments, Judge Robinson issued her opinion and order that Rambuss patents were

unenforceable based on bad-faith spoliation. Beynon Decl., Exh 1 (Del. Spoliation Opinion);

Exh. 13 (Del. Spoliation Order). In her ruling, Judge Robinson made specific findings and

conclusions that mandate unenforceability in this case. She found by clear and convincing

evidence that (1) Rambus spoliated documents in bad faith that were relevant to Microns

antitrust, unfair competition, patent misuse, and inequitable conduct claims and defenses, (2)

Micron has been prejudiced in its ability to pursue those claims and defenses as the result of

Rambuss bad faith spoliation, and (3) sanctions other than unenforceability were impractical,

bordering on meaningless, under these circumstances. Beynon Decl., Exh. 1 at 32-33 56-57

(Del. Spoliation Opinion). Among her findings and conclusions, Judge Robinson held (at

paragraphs 56 and 57 of her opinion) as follows:

56. In determining the degree of prejudice suffered by Micron as a result ofspoliation of evidence, Micron has carried its burden under Schmid to prove thatthe documents destroyed were discoverable and the type of documents that would



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be relevant to the instant litigation. More specifically, Micron assertsunenforceability due to patent misuse and violation of the antitrust and unfaircompetition laws (based in part on Rambus conduct at JEDEC), as well asinequitable conduct. These are defenses that are illuminated by evidence of a non-public nature, e.g., by internal Rambus documents. Because the recorddemonstrates that there were documents relevant to these defenses, the courtconcludes that Micron has been prejudiced by Rambus conduct. That prejudice

has been compounded by Rambus litigation conduct, which has been obstructiveat best, misleading at worst.

57. In determining which of the potential sanctions for spoliation should beimposed, the court is directed to find the least harsh sanction that serves both toavoid substantial unfairness to Micron but deter such conduct in the future. Inreviewing the record, the court concludes that the showing of bad faith is so clearand convincing that the showing of prejudice can be proportionally less. Thespoliation conduct was extensive, including within its scope the destruction ofinnumerable documents relating to all aspects of Rambus business; whenconsidered in light of Rambus litigation conduct, the very integrity of thelitigation process has been impugned. Sanctions such as adverse jury instructionsand preclusion of evidence are impractical, bordering on meaningless, under thesecircumstances and in the context of a typical jury trial. Therefore, the courtconcludes that the appropriate sanction for the conduct of record is to declare thepatents in suit unenforceable against Micron.

Beynon Decl., Exh. 1 at 32-33 56-57 (Del. Spoliation Opinion).

Patent prosecution files were among the documents that Judge Robinson found

that Rambus had spoliated. She determined that in or around July 1999, Lester Vincent

Rambuss patent prosecution attorney purged his files at Joel Karps direction. Beynon

Decl., Exh. 1 at 18 n.42 (Del. Spoliation Opinion);see also

Exh. 14 at 1338:11-1348:1(Nov. 14, 2007 Del. Trial Tr. (Testimony of L. Vincent)); Exh. 15 (Del. Micron Trial Exh.

MTX 601). These purged files correspond to patent applications in the chain of

applications that led to the Farmwald/Horowitz patents-in-suit in this case and nine of the

twelve patents-in-suit in Delaware. Beynon Decl., Exh. 15 (Del. Micron Trial Exh. MTX

601). The Delaware trial record also established that for many of the other patents-in-suit,

the patent files were irreversibly purged. See, e.g., Beynon Decl., Exh. 14 at 1338:11-

1348:1 (Nov. 14, 2007 Del. Trial Tr. (Testimony of L. Vincent)); Exh. 15 (Del. Micron

Trial Exh. MTX 601).



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III.

MICRON IS ENTITLED TO SUMMARY JUDGMENT

Micron is entitled to summary judgment that Rambuss patent claims are unenforceable in

this action based on Judge Robinsons findings and conclusions of unclean hands and bad faith

spoliation of evidence in Delaware.

A. Judge Robinsons Findings And Conclusions Must Be Given Full CollateralEstoppel Effect In This Action

Judge Robinsons decision, and her findings of bad faith spoliation, prejudice, and

inadequacy of remedies short of unenforceability, are binding on Rambus in this action under the

doctrine of collateral estoppel. As the Supreme Court has held, once an issue has been

determined as between two parties in one lawsuit, it must be taken as conclusively established

in a second lawsuit between those two parties:

[A] right, question or fact distinctly put in issue and directly determined by acourt of competent jurisdiction, as a ground of recovery, cannot be disputed in asubsequent suit between the same parties or their privies; and even if the secondsuit is for a different cause of action, the right, question or fact once sodetermined must, as between the same parties or their privies, be taken asconclusively established, so long as the judgment in the first suit remainsunmodified.

United States v. Moser, 266 U.S. 236, 241 (1924) (citing

Southern Pac. R.R. Co. v. United States

168 U. S. 1, 48 (1897)) (emphasis added). It is black letter law that collateral estoppel applies no

only to findings of fact, but also conclusions of law. United States v. Mendoza, 464 U.S. 154

158 (1984) (Under the judicially-developed doctrine of collateral estoppel, once a court has

decided an issue of fact or law necessary to its judgment, that decision is conclusive in a

subsequent suit based on a different cause of action involving a party to the prior litigation.)

(emphasis added);Robi v. Five Platters, Inc., 838 F.2d 318, 322 (9th Cir. 1988) (The doctrine of

issue preclusion prevents relitigation ofall issues of fact or law that were actually litigated and

necessarily decided in a prior proceeding.) (emphasis added).



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Under Ninth Circuit precedent,9 collateral estoppel applies where (1) there was a full and

fair opportunity to litigate the issue in the previous action; (2) the issue was actually litigated in

that action; (3) the issue was lost as a result of a final judgment; and (4) the person against whom

collateral estoppel is asserted in the present action was a party or in privity with a party in the

previous action. Bautista v. Park West Gallery, 2008 WL 5210662, at *1 (C.D. Cal. Dec. 11

2008) (granting motion to dismiss based on collateral estoppel) (citing In re Palmer, 207 F.3d

566, 568 (9th Cir. 2000)). Here, this test is met in full as a matter of law.

1. Rambus Had A Full And Fair Opportunity To Litigate Unclean HandsAnd Spoliation

Rambus had a full and fair opportunity to litigate unclean hands and spoliation in

Delaware. Judge Robinsons ruling is based on a fully developed record that resulted from a

five-day bench trial that concluded on November 15, 2007. Almost three hundred exhibits were

admitted into evidence in the course of the bench trial. The Court heard the testimony of more

than twenty witnesses, including live testimony from Rambus witnesses who live beyond the

subpoena power of the Delaware Court (such as Joel Karp, Lester Vincent, Sean Cunningham,

Allen Roberts, and Dan Johnson). The record was further developed through four hours of prior

deposition and trial testimony from twenty-two witnesses. Rambus cannot argue that it did not

have a full and fair opportunity to litigate unclean hands and spoliation in Delaware.

2. The Unclean Hands And Spoliation Issues Were Actually Litigated InDelaware

Issue preclusion applies to issues that were actually litigated in a previous action

Kamilche Co. v. United States, 53 F.3d 1059, 1062 (9th Cir. 1995), amended by 75 F.3d 1391

(9th Cir. 1996). Rambus cannot credibly dispute this prong of the test, because Rambus has

argued both to the Delaware Court and to this Court that the unclean hands and spoliation issues

in the two actions are the same in both cases. To the Delaware Court, Rambus argued that

9 The Federal Circuit defers to regional circuit law on issues of collateral estoppel. SeeTorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1327 (Fed. Cir. 2003) ([W]e review theapplication of collateral estoppel as a matter of regional circuit law.).



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Micron had raised in California the very same unclean hands claim that it has asserted in

[Delaware].10

Rambus further argued that the Delaware action and this action were

simultaneous proceedings in different forums on the same issues.11

To this Court, Rambus

argued that no spoliation trial for Micron was needed here because the same issues were already

before the Delaware Court: Microns unclean hands defense is properly left for resolution by

Judge Robinson of the United States District Court for the District of Delaware, where Micron

elected to try these allegations.12 After losing in Delaware, Rambus should not be allowed to

change its position and argue that the issues are not the same.

In any event, Rambus was right there is identity of issue as a matter of law under the

Ninth Circuits four-part test:

(1)is there substantial overlap between the evidence or argument to be advancedin the second proceeding and that advanced in the first?

(2)does the new evidence or argument involve the application of the same rule oflaw as that involved in the prior proceeding?

(3)could pretrial preparation and discovery related to the matter presented in thefirst action reasonably be expected to have embraced the matter sought to bepresented in the second?

(4)how closely related are the claims involved in the two proceedings?Kamilche, 53 F.3d at 1062. Here, under this four-part analysis, the unclean hands and spoliation

issues already decided in Delaware are identical for purposes of collateral estoppel to those that

would be re-tried in this case were Rambus given a second shot.

First, there is complete overlap in the evidence and arguments as to unclean hands and

spoliation between the proceedings. In both actions, Microns defense is that Rambus destroyed

documents in bad faith at a time when litigation was reasonably foreseeable and that a sanction

less then unenforceability of the patents-in-suit would be inadequate given Rambuss bad faith

10 Beynon Decl., Exh. 2 at 12-13 (Rambus Inc.'s Reply Brief In Support Of Its Renewed Motion


11 Beynon Decl., Exh. 2 at 17 (Rambus Inc.'s Reply Brief In Support Of Its Renewed Motion To

Transfer, May 1, 2007) (emphasis added).

12 Rambus Inc.s Motion In Limine No. 5 To Preclude The Manufacturers From Introducing

Evidence Related To Rambuss Document Retention Or Document Destruction, Dec. 7, 2007 at 1(244 D.E. 467)).



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and the prejudice to Micron. See Beynon Decl., Exh. 1 at 30-33 50-57 (Del. Spoliation

Opinion). Judge Robinson ruled that Micron had proven this theory with clear and convincing

evidence; Micron would rely on the same evidence to support its defense before this Court. See

Beynon Decl., Exh. 1 at 33 57 (Del. Spoliation Opinion). Rambus has admitted to this Court, as

explained above, that the issues related to unclean hands and spoliation are identical to those here

Second, the same general rule of law applies to spoliation in Delaware and California

The Third Circuit applies the same general rule of law on spoliation as the Ninth Circuit

Compare Schmid v. Milwaukee Elec. Tool Corp., 13 F.3d 76, 79 (3d Cir. 1994) (establishing key

considerations for spoliation as (1) degree of fault, (2) degree of prejudice, and (3) availability of

lesser sanctions) with Leon v. IDX Systems Corp., 464 F.3d 951, 960-61 (9th Cir. 2006)

(affirming dismissal due to spoliation based on findings of (1) degree of fault, (2) degree of

prejudice, and (3) availability of lesser sanctions). In fact, this Court has favorably cited and

directly applied the Third Circuits standard for spoliation from Schmid in making spoliation

determinations. See, e.g.,Nursing Home Pension Fund v. Oracle Corp., 2008 WL 4093497, at *4

(N.D. Cal. Sept. 2, 2008) (J. Illston); In re Napster, Inc. Copyright Litigation, 462 F. Supp. 2d

1060, 1070 (N.D. Cal. 2006) (J. Patel); Hamilton v. Signature Flight Support Corp., 2005 WL

3481423, at *3 (N.D. Cal. Dec. 20, 2005) (M.J. James). Furthermore, Judge Robinson cited in

her opinion authority from this Court on spoliation,13

as well as authority from other courts that

has been cited by this Court in rendering a spoliation decision.14 The only significant difference

in law between the districts that Micron faced a clear and convincing burden of proof on its

spoliation defense in Delaware but would face a lesser burden of proof before this Court only

further supports that the well-founded findings and conclusions in Delaware should be given

collateral estoppel effect. See Beynon Decl., Exh. 1 at 29-30 48-49 (Del. Spoliation Opinion)

13 Beynon Decl., Exh. 1 at 26 42 (Del. Spoliation Opinion) (citing In re Napster, Inc., 462 F

Supp. 2d 1060 (N.D. Cal 2006); Natl Assn of Radiation Survivors v. Turnage, 115 F.R.D. 543(N.D. Cal. 1987)).

14Compare Beynon Decl., Exh. 1 at 26 42 (Del. Spoliation Opinion) (citing Kronisch v. U.S.

150 F.3d 112 (2d Cir. 1998) & 27 43 (citingZubulake v. UBS Warburg LLC, 220 F.R.D. 212

(S.D.N.Y. 2003)) withHynix Semiconductor Inc. v. Rambus Inc., 2006 WL 565893, at *20 (citingZubulake) & *21 (citing Kronisch) (N.D. Cal. Jan. 5, 2006) (J. Whyte).



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(placing a clear and convincing burden on Microns spoliation defense); In re Napster, 462 F

Supp. 2d 1060, 1072 (N.D. Cal. 2006) (stating that no Ninth Circuit authority applies clear and

convincing standard to the exercise of the court's inherent authority to impose dismissal or defaul

sanctions and therefore declining to do so). Therefore, it is indisputable that the same genera

rules of law for spoliation apply in Delaware and in this Court.

Third, the pretrial preparation and discovery in Delaware on unclean hands and spoliation

embraces the same subject matter that would be presented to this Court. Rambus had access to

the record on spoliation from Hynix Iand introduced prior testimony from that proceeding in

Delaware. See, e.g., Beynon Decl. Exh. 16 at 1612 (Nov. 15, 2007 Del. Trial Tr.) (Rambus reads

Geoff Tate testimony given on 10/28/05 inHynix I). Under this Courts scheduling order, all of

the testimony from the Delaware trial would be usable in a trial before this Court on the unclean

hands and spoliation issues to the same extent as if it had been given in this case. See Apr. 24

2007 Case Management Order at 5(b)(2) (All depositions or other sworn testimony in the

Rambus Related Actions may be used by any party in the Rambus NDCal Cases as if taken in

each of the Rambus NDCal Cases.) (244 D.E. 70). Indeed, Rambus successfully sought to limi

the discovery the parties could pursue in this action so as not to duplicate prior discovery

including on spoliation. See, e.g., id. at 5(c)(1) (This court recognizes the significant volume of

testimony previously elicited from current and former Rambus officers, directors, and employees

in the various Rambus Related Actions. In light of this extensive record, the court is setting limits

on further deposition discovery.) (244 D.E. 70). Having two separate courts decide the exac

same issues between the exact same parties involving the exact same evidence is precisely what

collateral estoppel is intended to prevent.

Finally, the Delaware action and this action indisputably are closely related. In both

actions, Micron has asserted the same antitrust, unfair competition, patent misuse, and other

conduct-related claims.15

In both actions, identical or closely-related patents and products are in

15Compare Beynon Decl., Exh. 3, 1-13, 19-97 (Micron Del. Second Am. Compl., filed Sept.

5, 2007) with Microns First Amended Answer and Counterclaims, filed May 30, 2007, 80-176(244 D.E. 87).



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suit.16 And in both actions, Micron has asserted unclean hands, spoliation, and unfair competition

as defenses to Rambuss patent enforcement.17

Before losing in Delaware, Rambus freely

admitted that these actions are not only closely related, but that they are the very same and

word-for-word identical.18

3. Judge Robinsons Ruling Is Final For Purposes Of Collateral EstoppelDuring a hearing last Friday before Judge Robinson, counsel for Rambus acknowledged

that her decision is sufficiently final to invoke collateral estoppel. In opposing Microns request

that the Court in Delaware enter final judgment on Rambuss patent claims pursuant to Rule 54(b)

of the Federal Rules of Civil Procedure, Rambus responded as follows:

I think Micron has argued to Judge Wh[y]te, and I think Judge Wh[y]te appears to

accept the fact that the Court's ruling to date has the level of finality that isnecessary to apply collateral estoppel. So I'm not sure there was a need for judgment to give it any greater collateral estoppel effect. I think that the finalitynecessary for collateral estoppel is probably met by the Court's order as it nowstands, at least as Judge Wh[y]te has expressed his view and Micron hasexpressed theirs.

Beynon Decl. Exh. 18 at 7:2-7:11 (Jan. 16, 2009 Hearing Tr.).

There is no question that Judge Robinsons opinion and order are final for purposes of

collateral estoppel. In the Ninth Circuit, a final judgment includes any prior adjudication of an

issue in another action that is determined to be sufficiently firm to be accorded conclusive effect.

In re Lockard, 884 F.2d 1171, 1175 (9th Cir. 1989). A decision is sufficiently firm to

constitute a final judgment, even if it cannot yet be appealed, where the order is supported by a

reasoned opinion that is not avowedly tentative and where the parties were fully heard. Sec

People, Inc. v. Medeco Sec. Locks, Inc., 59 F. Supp. 2d 1040, 1045-46 (N.D. Cal. 1999) (holding

16 Beynon Decl., Exh. 3, 189-228 (Micron Del. Second Am. Compl., filed Sept. 5, 2007);

Microns First Amended Answer and Counterclaims, filed May 30, 2007, 194-262 (244 D.E.87); Beynon Decl., Exh. 17, 9 (Rambus Incs Suppl. and Second Am. Counterclaims, filed June

13, 2005); Rambus Inc.s First Am. Compl., filed Apr. 18, 2006 10 (244 D.E. 35).

17 Beynon Decl., Exh. 3, 189-228 (Micron Del. Second Am. Compl., filed Sept. 5, 2007);

Microns First Amended Answer and Counterclaims, filed May 30, 2007, 63 (244 D.E. 87).

18 Beynon Decl., Exh. 2 at 12-13 (Rambus Inc.s Reply Brief In Support Of Its Renewed Motion

To Transfer, May 1, 2007); Beynon Decl., Exh. 2 at 2 n.1 (Rambus Inc.s Reply Brief In SupportOf Its Renewed Motion To Transfer, May 1, 2007).



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order was sufficiently firm); see also Robi, 838 F.2d at 327 (finding judgments sufficiently

firm). Here, as explained above, Judge Robinsons decision is based on an extensive trial

record. Judge Robinsons ruling is supported by thirty-three pages of detailed factual findings

and legal conclusions. Based on those findings and conclusions, she entered an order that al

twelve Rambus patents in suit are unenforceable against Micron, confirming that the ruling is not

tentative. There is nothing remaining to litigate on these issues in Delaware. As such, and

consistent with Rambuss admissions, Judge Robinsons ruling constitutes a final judgment for

collateral estoppel purposes.

4. Rambus Is A Party Both Here And In The Delaware ActionIt is undisputed that Rambus, the entity against whom collateral estoppel is asserted in

the present action, is a party in the Delaware action. Bautista, 2008 WL 5210662, at *1 (final

element for proving collateral estoppel is that the person against whom collateral estoppel is

asserted in the present action was party or in privity with a party in the previous action.).

Indeed, because both Micron and Rambus are parties in Delaware, the collateral estoppel which

Micron invokes in these proceedings is mutual collateral estoppel.

B. Based On Judge Robinsons Findings And Conclusions, Rambuss Patents InThis Action Must Be Found Unenforceable Against Micron

As established above, this Court must give collateral estoppel effect to all of Judge

Robinsons findings and conclusions on unclean hands and spoliation, including Judge

Robinsons findings that (1) Rambus acted in bad faith in spoliating evidence; (2) Rambuss

conduct prejudiced Micron in litigating its patent misuse, antitrust, unfair competition, and

inequitable conduct defenses (which are the same in both cases); and (3) sanctions less than

unenforceability would be impractical, bordering on meaningless. Beynon Decl., Exh. 1 at 32-

33 (Del. Spoliation Opinion). Judge Robinson found that Micron had presented clear and

convincing evidence in support of spoliation and unenforceability a higher burden than Micron

would face at trial here. In re Napster, 462 F. Supp. 2d at 1072 (stating that Ninth Circui

authority does not apply clear and convincing burden to spoliation claim). These and other

findings and conclusions of law in Judge Robinsons opinion, once given collateral estoppel



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Finally, unenforceability is mandated by Judge Robinsons finding that Rambus, in bad

faith, destroyed relevant discoverable documents on patent applications, such as Application Nos

954,945 and 222,646, from which the patents-in-suit descend in this lawsuit. See II.A.3 above

Judge Robinson found that, despite a duty to preserve documents, Rambus instructed its outside

patent prosecution counsel, Lester Vincent, to purge Rambuss patent prosecution files of any

documents not found in the official record at the Patent and Trademark Office. Beynon Decl.

Exh. 1 at 17 n.41, 32 (Del. Spoliation Opinion). Judge Robinson found that, from April to July

1999, Mr. Vincent purged hard and electronic copies of draft amendment, draft claims, and

attorneys handwritten notes, and correspondence regarding patent prosecution, some of which

did not exist in any other form, and that [t]hese kinds of materials are typically sought in

discovery in patent cases. Beynon Decl., Exh. 1 at 18 n.44 (Del. Spoliation Opinion). At Mr

Karps direction, Mr. Vincent purged more than sixty patent files over the course of these four

months, including the files for patent applications from which patents in this case descend

Beynon Decl., Exh. 1 at 18 n.42 (Del. Spoliation Opinion); Exh. 14 at 1338-48 (Nov. 14, 2007

Del. Hrg. Tr. (Testimony of L. Vincent)); Exh. 15 (Del. Micron Trial Exh. MTX 601). Judge

Robinsons findings of Rambuss systematic destruction, in bad faith, of discoverable evidence

relevant to the prosecution of the patents-in-suit in Delaware mean that Rambus also destroyed in

bad faith documents relevant to the patents-in-suit here. Consequently, Micron would similarly

be prejudiced in its ability to argue its inequitable conduct and other defenses here and only a

remedy of unenforceability would be appropriate given the inadequacy of lesser sanctions.

C. Rambuss Arguments Against Collateral Estoppel Are BaselessBefore losing in Delaware, Rambus conceded that [e]verybody should have one

shot at the spoliation issue, and that Microns unclean hands defense is properly left for

hear any evidence about Rambuss spoliation of evidence. Feb. 3, 2008 Rulings on Rambuss

MotionsIn Limine [Conduct Phase] at 4 (244 D.E. 788). That evidence and its impact has now

been decided by the Delaware Court. Rambus is bound by that ruling that the spoliated evidenceimpeded Microns ability to fairly litigate its antitrust defense.



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resolution by Judge Robinson.20 Now, faced with a loss, Rambus reverses its position, asks for a

second shot, and asserts that Judge Robinsons order does not apply and does not resolve

Microns unclean hands defense. Rambus is wrong.

1. Because There Is Mutuality Of Parties, The Application Of CollateralEstoppel Here Is Not Discretionary

To avoid collateral estoppel effect and impose on this Court the burden of another unclean

hands trial, Rambus argues that the Court should exercise discretion not to invoke collateral

estoppel. See Rambus Incs Brief on Delaware Court Ruling, Jan. 13, 2009 at 4-5 (244 D.E

1978). In making this argument, Rambus ignores well-settled law that the Court has no discretion

in this case between Rambus and Micron, because the Court must apply mutual collateral

estoppel.

It is well-settled that [a] right, question or fact distinctly put in issue and directly

determined by a court of competent jurisdiction . . . must, as between the same parties or their

privities, be taken as conclusively established. Moser, 266 U.S. at 241. Consistent therewith

the Ninth Circuit has held that when there is mutuality of parties, the application of collateral

estoppel is reviewed de novo, and not for abuse of discretion. Appling v. State Farm Mut. Auto

Ins. Co., 340 F.3d 769, 775 (9th Cir. 2003) (explaining that, unlike in the ordinary context of

mutual collateral estoppel, courts have discretion in the context of non-mutual offensive collateral

estoppel); United States v. 22 Santa Barbara Drive, 264 F.3d 860, 868 (9th Cir. 2001) (applying

de novo standard in mutual collateral estoppel case, without giving district court discretion)

McQuillion v. Schwarzenegger, 369 F.3d 1091, 1096 (9th Cir. 2004) (same).

Rambus argues that Parklane stands for the proposition that this Court has discretion

whether to apply collateral estoppel. However, Parklane involved non-mutual, offensive

collateral estoppel. See Appling, 340 F.3d at 775 (citing Parklane, 439 U.S. at 331). Here

application of collateral estoppel is clearly mutual, because the parties to both the Delaware

20 Nov. 21, 2007 Hearing Tr. at 170:17-171:1 (244 D.E. 721); Rambus Inc.s Motion In Limine

No. 5 To Preclude The Manufacturers From Introducing Evidence Related To RambussDocument Retention Or Document Destruction, Dec. 7, 2007 (244 D.E. 467).



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action and the 244 Action are identical. In fact, discretion in applying mutual collateral estoppe

runs counter to principles of judicial economy and comity by giving a litigant two bites at the

apple. Montana v. United States, 440 U.S. 147, 153-54 (1979) (giving litigants one fair shot at an

issue protects their adversaries from the expense and vexation attending multiple lawsuits,

conserves judicial resources, and fosters reliance on judicial action by minimizing the possibility

of inconsistent judgments.).21

2. The Actions Do Not Need To Be Identical For Collateral Estoppel ToApply

Having previously admitted that Microns unclean hands and spoliation defenses in

Delaware and California are the very same,22

Rambus now argues that the spoliation issues in

Delaware and California are not identical because the accused products and asserted patents are

not completely identical. See Rambus Incs Brief on Delaware Court Ruling, Jan. 13, 2009 at 10

(244 D.E. 1978) (The upcoming patent trial plainly presents issues that are not part of the

Micron case before the Delaware Court. For example, the Delaware litigation does not

encompass DDR3 and does not involve six of the ten patents-in-suit.).

Rambuss argument erroneously conflates the identity of claims requirement of claim

preclusion, which is not at issue here, with the identity of issues requirement of issue preclusion

Issue preclusion applies even where the claims in the two litigations are not identical. There are

numerous examples where courts have applied collateral estoppel even where the claims in suit

are different. See, e.g., Kamilche, 53 F.3d at 1062 (applying collateral estoppel as to ownership

of plot of land where first action involved claim of ownership by condemnation and in the second

action ownership was asserted by adverse possession); Blonder-Tongue Laboratories, Inc. v

Univ. of Ill. Found., 402 US 313, 324 (1971) (holding that subsequent defendant with different

21Of course, given the extensive record presented to the Delaware Court on the spoliation issue

and the Courts detailed findings and conclusions, it would be an abuse of discretion (were

discretion available) for this Court to ignore that decision and require Micron to incur the

enormous expense of relitigating the exact same issue here.

22Beynon Decl., Exh. 2 at 12-13 (Rambus Inc.'s Reply Brief In Support Of Its Renewed Motion




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allegedly infringing products may apply collateral estoppel against patentee where patents were

previously held invalid). Here, as explained above, the spoliation issues in Delaware are not tied

to a specific group of Rambus patents or Micron products. Instead, as Judge Robinson found, the

spoliated evidence impacts Microns defenses that cut across all of the patents in both cases

including its defenses based on antitrust, unfair competition, and patent misuse.

3. The Application Of Collateral Estoppel Does Not Hinge On LitigationMisconduct

In Rambuss brief and at the January 14 hearing, Rambus argued that Judge Robinsons

decision should not apply here because her findings regarding Rambuss litigation misconduct are

inapplicable to the California Action. Rambus Incs Brief on Delaware Court Ruling, Jan. 13

2009 at 15:10-11 (244 D.E. 1978) (quoting Aptix Corp. v. Quickturn Design Sys., 269 F.3d 1369

1376 (Fed. Cir. 2001)); Beynon Decl. Exh. 20 at 36:17-22 (Jan. 14, 2009 Hearing Tr.). However

this argument is inconsistent with Judge Robinsons decision and contrary to the case law on

litigation misconduct.

First, theAptix holding is inapposite to the issue of collateral estoppel at hand. Aptix did

not involve collateral estoppel or provide guidance on how a second court should apply a ruling

of unclean hands. In Aptix, the Federal Circuit affirmed the dismissal of a patent suit based on

litigation misconduct, but held that the court could not nullify the underlying grant of a property

right from the Patent Office. Aptix, 269 F.3d at 1378.23

Second, while Judge Robinson found litigation misconduct, she made clear that Rambuss

spoliation alone fully supported her conclusions of bad faith, prejudice, and inadequacy of

remedies other than unenforceability. See Beynon Decl., Exh. 1at 32 56 (In determining the

degree of prejudice suffered by Micron as a result of this spoliation of evidence, . . . ); at 33 57

(In determining which of the potential sanctions for spoliation should be imposed, . . .) (Del.

23The other case cited by Rambus, Bio-Technology Gen. Corp. v. Genentech, Inc., rejected an

unclean hands defense based on prior misconduct for reasons not present here: the litigation

misconduct was largely without evidentiary support on the record and there was no finding that

the misconduct related to the issues in the current litigation. 80 F.3d 1553, 1565 (Fed. Cir. 1996)(cited in Rambuss Jan. 13, 2009 Letter Brief at 15:11-12).



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Spoliation Opinion). To the extent litigation misconduct was considered, the evidence was

probative of bad faith and illustrative of Rambuss overall scheme of spoliation.

Third, the landmark Keystone Driller decision confirms that Rambuss earlier litigation

misconduct from other cases is admissible in this lawsuit. Keystone Driller Co. v. Genera

Excavator Co., 290 U.S. 240 (1933). Similar to the facts ofKeystone Driller, Rambus continues

to use the spoils of its earlier misconduct e.g., licenses with other manufacturers to gain an

advantage over Micron in this action. Based on Keystone Driller, the Delaware court previously

determined that evidence of Rambuss litigation misconduct in other cases was admissible in the

Delaware case. Beynon Decl., Exh. 19 at 8-10 (Special Masters Report and Recommendations

on Microns Motion In Limine Regarding Allegations of Misconduct in Other Cases, dated Aug

29 , 2007).

4. This Court Cannot Second-Guess Judge Robinsons RulingIn its brief, Rambus also argues that this Court should make an independent prejudice

determination based on what Rambus alleges is the superior record afforded by the procedura

posture of this case. Rambus Incs Brief on Delaware Court Ruling, Jan. 13, 2009 at 14:2515:2

(244 D.E. 1978). In making this argument, Rambus ignores well-settled law that a court should

never second-guess or reexamine another courts reasoning or factual determinations before

applying collateral estoppel.

As this Court has held, the focus for purposes of determining whether collateral estoppel

applies is not whether the issue was correctly decided. Cygnus Telecom. Tech., LLC v. Am

Intern. Telephonics, LLC, 569 F. Supp. 2d 1035, 1037 (N.D. Cal. 2008) (J. Whyte) (applying

collateral estoppel to dismiss complaint of patentee whose patent was held invalid in another

case). That a court should not consider whether it would reach a different conclusion is consisten

with established law. United States v. Rubenstein, 971 F.2d 288, 293 (9th Cir. 1992) (holding

courts review of the correctness of the prior courts factual determination inconsistent with the

application of collateral estoppel);Arkla, Inc. v. United States, 37 F.3d 621, 626 (Fed. Cir. 1994)

(The Court that considers the question of collateral estoppel does not examine the reasoning of

the court that decided the issue."); Stevenson v. Sears, Roebuck & Co., 713 F.2d 705, 709 (Fed



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Cir. 1983) ([A]n inappropriate inquiry is whether the prior finding of invalidity was correct).

Therefore, it would be inappropriate for this Court to consider whether it would reach a different

conclusion than Judge Robinson since it must apply collateral estoppel.

IV.

CONCLUSION

Rambus had a full and fair opportunity to litigate the unclean hands and spoliation

issues in Delaware. It has represented over and over again that the Delaware trial would

conclusively resolve those issues between Rambus and Micron in its own words, everyone

should get one shot at those issues. Given its prior statements, there can be no real question

that had Rambus won the spoliation trial in Delaware, it would be arguing that the issue should

not be tried again in California. However, it lost. The application of collateral estoppel does no

turn on which party won the prior suit. It turns on the application of the four-factor test discussed

above, which is easily met in this case. For the foregoing reasons, the Court should (1) enter an

order granting summary judgment that Rambuss patents-in-suit in the 244 Action are

unenforceable against Micron based on the collateral estoppel effect of Judge Robinsons

decision in the related Delaware action, and (2) enter judgment in favor of Micron and against

Rambus on its claims for patent infringement in the 244 Action.



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Dated: January 19, 2009

By: /s/Jared Bobrow

JARED BOBROW (Bar No. 133712)Email: [email protected] RAZ (Bar No. _222262)Email: [email protected] GOTSHAL & MANGES LLP201 Redwood Shores ParkwayRedwood Shores, CA 94065Telephone: (650) 802-3000Facsimile: (650) 802-3100

ELIZABETH STOTLAND WEISWASSEREmail: [email protected] LENDEREmail: [email protected]

WEIL, GOTSHAL & MANGES LLP767 Fifth AvenueNew York, NY 10153Telephone: (212) 310-8000Facsimile: (646) 842-0505

WILLIAM C. PRICE (Bar No. 108542)Email: [email protected] A. BARZA (Bar No. 80888)Email: [email protected] R. STEIGER (Bar No. 229814)Email: [email protected] J. BECHER (Bar No. 193431)

Email: [email protected] EMANUEL URQUHART OLIVER &HEDGES, LLP865 South Figueroa Street, 10th FloorLos Angeles, CA 90017Telephone: (213) 443-3000Facsimile: (213) 443-3100Attorneys for Defendants MICRONTECHNOLOGY, INC. and MICRONSEMICONDUCTOR PRODUCTS, INC.


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