Case3:08-cv-03343-SI Document201 Filed03/03/11 Page1 of 3

ORRICK, HERRINGTON & SUTCLIFFE LLP

1000 MARSH ROAD
MENLO PARK, CALIFORNIA 94025

tel +1-650-614-7400
fax +1-650-614-7401

WWW.ORRICK.COM

I. Neel Chatterjee
(650) 614-7356
Via electronic mail to schan@jamsadr.com nchatterjee@orrick.com

March 3, 2011

The Honorable Edward A. Infante, Special Master

JAMS
Two Embarcadero Center, Suite 1500
San Francisco, CA 94111

Re: Rambus v. NVIDIA, Case No. 08-cv-03343 SI

NVIDIA v. Rambus, Case No. 08-cv-05500 SI

Dear Judge Infante:

The parties are scheduled for a teleconference with Your Honor on March 8, 2011 to discuss
Phase 2 discovery and motion practice.1 Phase 1 discovery was scheduled for completion on
February 25 pursuant to your Order re Production of Documents from the ITC Action and Other
Relevant Cases (“Order”) dated January 24, 2011. Dkt. No. 191 (attached hereto as Exh. A).
Unfortunately, it appears that Phase I is incomplete because Rambus has not complied with the
Order. We write to request the Court’s guidance on the completion of Phase 1 discovery.

1. The January 24, 2011 Order

The Order required each party to produce the following from ITC Investigation No. 337-TA-661
(“the ITC action”) by February 25, 2011:

[A]ll of its discovery requests and responses (including documents and things,
interrogatory responses, deposition transcripts including exhibits, responses to request for
admissions and expert disclosures and reports), filings (including motion papers, pre-
hearing briefs, post-hearing briefs, exhibit lists, exhibits, orders and determinations) and
hearing materials (including hearing transcripts and exhibits)[.]

Exh. A at 10:25-11:1. The Order further states that the only responsive documents that may be
withheld (and must be identified on a privilege log) are: (1) attorney-client privilege and/or work
product documents involuntarily produced in the ITC action or other relevant actions; and (2)

1
Regarding motion practice, on March 1, 2011, NVIDIA filed an administrative motion requesting that Judge Illston
renew and set hearing dates for NVIDIA’s fully-briefed Motion to Dismiss and Motion for Partial Summary
Judgment concerning the Farmwald and Barth II patents. Dkt. No. 198. If NVIDIA’s dispositive motions are
granted, all non-stayed patents eligible for Phase 2 discovery will be eliminated from this case. A courtesy copy of
NVIDIA’s administrative motion was e-mailed to Ms. Chan at JAMS on March 1.
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Hon. Edward A. Infante

March 3, 2011
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documents that are the subject of a third party motion objecting to the production of such
documents. Id. at 11:2-7.

2. NVIDIA Complied With The Order

On February 25, 2011, NVIDIA made its production of essentially all of the ITC action
materials. See Exh. B (2/25/11 correspondence from D. Goldstein to T. Campione and P.
Hubert). In order to both comply with the Order and avoid violating the Protective Order in
force in the ITC action, NVIDIA put extensive effort into reviewing the ITC action materials to
identify CBI of any parties other than NVIDIA and Rambus. NVIDIA obtained production
consent from the other ITC action respondents (who are not parties to this litigation). NVIDIA’s
efforts narrowed the universe of documents down to just a handful for which consent must be
obtained from third parties to the ITC action. Id. As to those documents, Rambus is best
positioned to obtain consent to production because the CBI is held by Rambus licensees or
Rambus’ own expert in the ITC action. Id.

Notwithstanding these Rambus consent issues, NVIDIA’s production covers approximately 99%
of its ITC materials and includes all the documents specified in the Order, namely: filings,
production documents, discovery requests and responses, witness depositions (with exhibits),
expert reports (with exhibits), hearing testimony, hearing exhibits and witness statements. Id.
NVIDIA also produced orders issued by the ALJ and Commission after reviewing the orders to
determine that they only contain NVIDIA, other ITC action respondent or Rambus CBI. Id.

NVIDIA also specified for Rambus the precise designation under the Amended Protective Order
that applies to each document, based on whether the document contains only Rambus or
NVIDIA CBI (“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY”) or CBI of other
ITC action respondents or third parties (“HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL
ONLY”). Id.

3. Rambus’ Non-Compliance With The Order

Rambus did not comply with the Order because it failed to produce large volumes of ITC action
materials that do not fall under either of the two specified exceptions. Specifically, Rambus
withheld all confidential materials that post-date the piercing order in the ITC action -- regardless
of whether the CBI in that document even relates to the piercing order. As to every confidential
document dated after July 23, 2009, “Rambus does not authorize access to any other ITC
materials at this time[.]” See Exh. C (2/25/11 correspondence from T. Campione to I. Neel
Chatterjee).

Rambus’ withheld materials include all of its pre-hearing briefing, post-hearing briefing, and
confidential hearing transcripts, witness statements and exhibits from the trial conducted
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Hon. Edward A. Infante

March 3, 2011
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October 13-20, 2009. For reasons that have not been explained, Rambus also withheld the ALJ’s
Initial Determination even though it is already a publicly-available document. Id. Rambus
generally claims the Initial Determination contains Rambus CBI, but does not even relate the
alleged CBI to the piercing issue. Id. Rambus’ approach of denying access to any Rambus CBI
in any ITC materials dated after July 23, 2009 also effectively un-produces the NVIDIA
documents specified in Exh. B that contain any Rambus CBI, without providing any link
between those documents and the piercing order.

Rather than withhold every confidential document dated after July 23, 2009, Rambus should
have reviewed those materials and logged only the ones that it claims contain CBI specifically
relating to the piercing order. Instead, Rambus withheld all post-July 23, 2009 CBI regardless of
relation to the piercing order, including CBI of Rambus, NVIDIA, other 661 respondents, and
other third parties such as its own licensees and expert. Rambus withheld CBI that is technical in
nature, such as that discussed by technical experts.

Notably, on December 27, 2010, Rambus obtained consent from the other ITC action
respondents to produce their CBI that “incorporated in materials Rambus provided in the ITC
investigation (e.g., Rambus’s briefs and expert reports).” Exh. D (12/27/10 e-mail from A.
Kopsidas to T. Campione). Nevertheless, Rambus did not produce any ITC action respondents’
CBI that is contained in ITC materials dated after July 23, 2009.

NVIDIA believes that Rambus’ non-compliance with the Order extends beyond the ITC action
materials discussed above. NVIDIA is currently reviewing the complex set of documents and
prior privilege logs Rambus produced on February 25 in apparent response to the directive in the
Order concerning Rambus’ other litigations.

In view of Rambus’ failure to comply with its own Phase 1 discovery obligations, Rambus’
aggressive pursuit of Phase 2 discovery from NVIDIA seems premature at best. Please let us
know if you would like to discuss Phase 1 issues during the March 8, 2011 teleconference, or
prefer formal motion practice concerning Rambus’ non-compliance with the Order.

Respectfully submitted,

/s/ I. Neel Chatterjee /s/

I. Neel Chatterjee
Attorney for NVIDIA Corporation

cc: Trent Campione, Esq. (via e-mail)

Pierre Hubert, Esq. (via e-mail)