Case 5:05-cv-00334-RMW Document 2311 Filed 09/29/2008 Page 1 of 8

1 ROBERT E. FREITAS (STATE BAR NO. 80948)

CRAIG R. KAUFMAN (STATE BAR NO. 159458)
2 VICKIE L. FEEMAN (STATE BAR NO. 177487)
THERESA E. NORTON (STATE BAR NO. 193530)
3 ORRICK, HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road
4 Menlo Park, CA 94025
Telephone: +1-650-614-7400
5 Facsimile: +1-650-614-7401

6 Attorneys for Defendants

NANYA TECHNOLOGY CORPORATION
7 NANYA TECHNOLOGY CORPORATION U.S.A.

8
UNITED STATES DISTRICT COURT
9
NORTHERN DISTRICT OF CALIFORNIA
10
SAN JOSE DIVISION
11

12
RAMBUS, INC., Case No. C 05-00334 RMW
13
Plaintiff, NANYA TECHNOLOGY
14 CORPORATION AND NANYA
v. TECHNOLOGY CORPORATION
15 USA’S REPLY TO RAMBUS’
HYNIX SEMICONDUCTOR INC.; HYNIX OPPOSITION TO THE MOTION TO
16 SEMICONDUCTOR AMERICA, INC.; RE-OPEN DISCOVERY AS TO
HYNIX SEMICONDUCTOR CERTAIN DEPOSITIONS
17 MANUFACTURING AMERICA, INC.;
Date: October 1, 2008
18 SAMSUNG ELECTRONICS CO., LTD., Time: 8:30 a.m.
SAMSUNG ELECTRONICS AMERICA, Location: Telephonic Hearing
19 INC., SAMSUNG SEMICONDUCTOR, Judge: Hon. Read A. Ambler (Ret.)
INC., SAMSUNG AUSTIN
20 SEMICONDUCTOR, L.P.,

21 NANYA TECHNOLOGY CORPORATION,

NANYA TECHNOLOGY CORPORATION
22 U.S.A.,

23 Defendants.

24
AND RELATED CROSS ACTIONS
25

26

27

28
NANYA’S REPLY IN SUPPORT OF ITS MOTION TO REOPEN
DISCOVERY TO PERMIT JEDEC DEPOSITIONS
CASE NO. 05-00334 RMW
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1 Nanya Technology Corporation (“Nanya”) and Nanya Technology Corporation USA

2 (“Nanya USA”) have moved the Court to reopen discovery to permit them to depose five

3 additional third party witnesses: David Chapman, Howard Kalter, Mark Kellogg, Juan Pineda,

4 and Earnest Powell (collectively “the JEDEC witnesses”).1 As set forth in Nanya and Nanya

5 USA’s opening brief, all of the parties, including Rambus Inc. (“Rambus”), agreed during a

6 teleconference on August 22, 2008 that these depositions could go forward after the close of

7 discovery. Although Rambus now denies that it made this agreement, Rambus’ own conduct

8 contradicts its position. First, Rambus knew that Nanya and Nanya USA were making plans to

9 take these depositions in September (like many other depositions the parties had discussed), and

10 yet Rambus waited until after the close of discovery to raise any objection to this timing. Second,

11 Rambus’ characterization of its own statements supports Nanya and Nanya USA’s position on the

12 parties’ agreement. And third, Rambus relied on this very same agreement to schedule its own

13 third party deposition in September after the close of discovery. The Court should not permit

14 Rambus to engage in this sort of gamesmanship in which Rambus “lies in wait,” allows the time

15 for discovery to run out, and only then surprises Nanya and Nanya USA with its position that it

16 never made the agreement Nanya and Nanya USA (and the other parties) had understood.

17 Moreover, Nanya and Nanya USA exercised diligence in scheduling and preparing for

18 these depositions. Nanya and Nanya USA served the subpoenas following months of

19 investigation to locate and identify witnesses who could ostensibly rebut Rambus’ claims. Lastly,

20 the prejudice to Nanya and Nanya USA, if Rambus were successful in preventing these

21 depositions from going forward, would be great. There is no significant corresponding prejudice

22 to Rambus that would result from permitting these depositions to proceed. Thus, this Court

23 should reopen discovery and allow Nanya and Nanya USA to take these depositions.

24 I. RAMBUS DID NOT OBJECT WHEN NANYA PROPOSED DATES IN

SEPTEMBER FOR THE DEPOSITIONS OF THE JEDEC WITNESSES
25
Rambus argues that the parties never agreed to allow the JEDEC witnesses’ depositions to
26
proceed in September, after the discovery cut-off of August 29, 2008. Yet, Rambus’ own conduct
27
1
In light of the filing of the parties’ stipulation to dismiss claims relating to the Ware patents,
28 Nanya and Nanya USA are not pursuing this motion with respect to Winston Lee.
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1 tells a different story. Rambus acknowledges that in the course of the parties’ August 22 meet

2 and confer teleconference, both Rambus and the Manufacturers proposed deposing several

3 individuals after the discovery cut-off, and agreed that the discovery cut-off would be extended as

4 to these individuals. See Declaration of Rollin A. Ransom in support of Rambus’ opposition

5 (“Ransom Decl.”), ¶ 7; see also Declaration of Theresa E. Norton in support of Nanya and Nanya

6 USA’s motion (“Norton Decl.”), ¶¶ 9-10. Rambus appears to now take the position that it had

7 agreed that some of the parties’ noticed depositions could forward after the close of discovery, but

8 not others. However, if this were truly Rambus’ position, Rambus did not articulate it during the

9 August 22 teleconference. Rather, Rambus agrees that Nanya and Nanya USA listed each of the

10 JEDEC witnesses who had been subpoenaed by name and discussed their availability both in

11 August and in September. See Ransom Decl., ¶ 7 (detailing August and September dates that

12 were discussed for the JEDEC witnesses). Rambus does not dispute that it made no objection at

13 that time to these depositions taking place in September.

14 In light of the parties’ undisputed agreement that other depositions (including, but not

15 limited to Craig Hampel, Donald Stark, and Nanya’s 30(b)(6) witness, see Ransom Decl., ¶ 7)

16 could go forward after the close of discovery, Rambus’ position that the JEDEC witnesses were

17 not included in this agreement makes no sense. The JEDEC witnesses were named in the course

18 of the same discussion as Mr. Hampel, Mr. Stark, and Nanya’s 30(b)(6) witness. The parties

19 discussed dates for all of these witnesses in September. Rambus made no objection2 to the dates

20 for the JEDEC witnesses. Obviously the parties’ agreement to extend the discovery cut-off

21 included them.3

22 2
Rambus did make an objection as to a different witness – Wingyu Leung – on the basis that his
deposition date was past the discovery cut-off. The parties discussed their disagreement, and the
23 matter was not resolved during the August 22 teleconference. See Norton Decl., ¶ 10. The fact
that Rambus articulated its objection as to Mr. Leung’s deposition being scheduled after the close
24 of discovery, but remained silent as to the JEDEC witnesses, reinforces the conclusion that the
JEDEC witnesses were part of the parties’ agreement.
25
3
Following the close of discovery, Rambus attempted to create a paper trail to support its new
26 position that the parties had not in fact reached an agreement on August 22 to extend the
discovery cut-off as to previously noticed depositions. Rambus’ self-serving correspondence
27 should not be given the same weight as Rambus’ conduct. Moreover, the author of this
correspondence was not a participant on the August 22 teleconference, and was not in a position
28 to know what Rambus did or did not agree to on that call. Lastly, Rambus attempts to
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1 Rambus’ silence would be sufficient evidence of its agreement to allow the JEDEC

2 witnesses’ depositions to proceed in September. However, in addition, Rambus agrees that it also

3 made an affirmative comment regarding the scheduling of depositions after the discovery cut-off.

4 While the parties recall that comment slightly differently, arguably the meaning is the same.

5 Nanya and Nanya USA recall that Rambus stated that:

6 the agreement to extend the discovery cut-off only applied to depositions

that had already been noticed to take place in the first instance prior to the
7 discovery cut-off, and the parties should not interpret the agreement to be
a license to serve new notices or subpoenas scheduling depositions to take
8 place after the close of discovery.
9 Norton Decl., ¶ 9.4 Remarkably, Rambus’ own recollection of this statement uses similar words.

10 Rambus’ recollection is that it stated that:

11 the parties’ discussion of allowing certain depositions to go forward after

the close of discovery was not a license to ignore the discovery cut-off in
12 scheduling new depositions.
13 Ransom Decl., ¶ 7. Clearly Rambus’ reference to “new depositions” could only have been a

14 reference to a prohibition on serving new deposition notices or subpoenas. It would not have

15 made sense for Rambus’ reference to “new depositions” to refer to previously noticed, but not yet

16 scheduled depositions. This is because several of the depositions that Rambus agrees fell within

17 the parties’ agreement had not yet been scheduled, including at least Mr. Stark and SGI.

18 It was not until September 3, 2008, after the close of discovery, that Rambus first objected

19 to the depositions of the JEDEC witnesses going forward in September. Norton Decl., ¶¶ 12-14;

20 see also Ring Decl., Exh. B.

21

22

23 mischaracterize Micron’s correspondence as supporting its position that no agreement was

reached. Micron’s August 28th reference to a “proposed agreement” related instead to the still-
24 uncertain issue of whether the parties would agree on a date for the parties to supplement their
expert reports based on the depositions that would go forward after the close of discovery. See
25 Norton Decl., ¶ 11. Notably, after Rambus mischaracterized Micron’s position, Micron corrected
Rambus’ misstatements and confirmed that the parties had indeed reached an agreement during
26 the August 22 teleconference. See Norton Decl., ¶ 13 and Exh. G.
27 4
Micron also stated that it understood the parties’ agreement to be that all currently noticed
depositions and subpoenas fell within the parties’ agreement to extend the discovery cut-off. See
28 Norton Decl., Exh. G.
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1 II. RAMBUS RELIED ON THE PARTIES’ AGREEMENT IN SCHEDULING ITS

OWN THIRD PARTY DEPOSITION IN SEPTEMBER
2

3 Throughout its opposition, Rambus stresses its position that Rambus never agreed to

4 permit third-party depositions to go forward after the close of discovery. Rambus’ Opposition at

5 3:12-14; 3:17-20; 8:12-14. Again, this position is belied by Rambus’ own conduct. During the

6 August 22 teleconference, one of the depositions discussed was that of a company called Silicon

7 Graphics, Inc. (“SGI”). Like the JEDEC witnesses, SGI is a third party. Rambus had served a

8 subpoena on SGI on August 14, 2008, two weeks before the discovery cutoff and on

9 approximately the same day that Nanya and Nanya USA had subpoenaed the JEDEC witnesses.

10 Declaration of Jacob M. Heath in support of Nanya and Nanya USA’s reply (“Heath Reply

11 Decl.”), ¶ 3. During the August 22 teleconference, Rambus was unable to provide the parties

12 with any proposed date for SGI’s deposition, and the potential dates that the parties discussed for

13 this deposition were in September, after the discovery cut-off. Declaration of Theresa E. Norton

14 in support of Nanya and Nanya USA’s reply (“Norton Reply Decl.”), ¶ 2. Thus, as of August 22,

15 the circumstances of third party SGI’s deposition were identical to the depositions of the third

16 party JEDEC witnesses.

17 If, as Rambus argues, Rambus would never have agreed to permit third-party depositions

18 to go forward after the close of discovery (Rambus’ Opposition at 3:12-14), then the SGI

19 deposition should have been excluded from the parties’ agreement. However, on September 4,

20 when Rambus circulated its proposed stipulation to extend the discovery cut-off as to certain

21 depositions, the SGI deposition was included in the stipulation. Norton Reply Decl., ¶ 3 and Exh.

22 A. Rambus deposed SGI on September 17, 2008, well-after the discovery cut-off. Norton Reply

23 Decl., ¶ 4. The only difference between SGI and the similarly-situated third-party JEDEC

24 witnesses is that Rambus is the party that noticed SGI.

25 Rambus’ own conduct thus directly contradicts its argument that it would never have

26 agreed to permit third-party depositions to go forward after the close of discovery. In scheduling

27 and taking SGI’s deposition after the close of discovery, Rambus clearly relied on the parties’

28
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CASE NO. 05-00334 RMW
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1 August 22 agreement that the third party depositions noticed as of that date could go forward after

2 the close of discovery.

3 III. NANYA AND NANYA USA EXERCISED DILIGENCE IN SEEKING THE

DEPOSITIONS OF THE JEDEC WITNESSES
4

5 In the same way, Rambus’ argument that Nanya and Nanya USA failed to exercise

6 diligence in scheduling the JEDEC witnesses’ depositions is without merit. Rambus criticizes

7 Nanya and Nanya USA’s act of serving subpoenas on these third-party witnesses two weeks

8 before the discovery cut-off, arguing Nanya and Nanya USA should have identified these

9 witnesses and served the subpoenas earlier in the discovery process. As an initial matter, Rambus

10 did the same thing via its subpoena to SGI. More importantly, however, Rambus fails to

11 appreciate the significant undertaking that was necessary to identify, locate, and ultimately

12 determine which JEDEC attendees to depose.

13 Over 100 individuals attended JEDEC meetings during the 1980s and 1990s on behalf of

14 JEDEC member companies. Heath Reply Decl., ¶ 2. Based on JEDEC meeting minutes and

15 attachments, prior deposition and trial testimony, and other publications, Nanya and Nanya USA

16 identified more than 80 individuals who possessed information that could potentially rebut

17 Rambus’ claims. Id., ¶ 2. Relying in some instances on contact information more than two-

18 decades old, Nanya spent a great deal of time locating potential witnesses and considering their

19 ability to testify. Id., ¶ 2. Contrary to Rambus’ suggestion, determining a final list of JEDEC

20 witnesses was not as easy as reviewing a list of attendees and prior deposition testimony. When

21 Nanya and Nanya USA finally served their subpoenas on these witnesses in mid-August, it was

22 the culmination of great investigation effort which had commenced months before.

23 Equally baseless is Rambus’ speculation that Nanya and Nanya USA could not have

24 deposed the JEDEC witnesses prior to the discovery cut-off. Although Nanya and Nanya USA

25 did provide depositions dates for these witnesses past the August 29 discovery cut-off, they had

26 also confirmed that if necessary, most of the witnesses would be available during the last week of

27 August. Howard Kalter, for example, was tentatively available on August 25, 2008; David

28 Chapman on August 27, 2008; and Juan Pineda during the week of the August 25, 2008. Heath
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1 Reply Decl., ¶¶ 4-5; Norton Decl., ¶ 10 (“Most of the JEDEC witnesses had communicated that

2 they were available on various dates from the end of August to mid September, and I relayed this

3 information to Rambus”); see also Ransom Decl., ¶ 7 (Nanya advised that Chapman was

4 available August 27-29.) Rambus’ claims that Nanya and Nanya USA were incapable of

5 deposing these witnesses before the discovery cut-off is simply not accurate. Had Rambus

6 refused to include the JEDEC witnesses in the parties’ agreement to extend the discovery cut-off,

7 Nanya and Nanya USA would have made every effort to go forward with the originally noticed

8 dates, or other dates prior to the discovery cut-off, even if these dates were not perfectly

9 convenient to either Nanya, Nanya USA, or the witnesses themselves. Norton Decl., ¶ 18. In

10 mid-August, Nanya and Nanya USA were already engaged in contingency preparations to do so.

11 Id., ¶ 18; Heath Reply Decl., ¶ 6. Thus, but for their reliance on Rambus’ agreement that the

12 JEDEC witnesses could be deposed after the discovery cut-off, Nanya and Nanya USA would

13 have taken the depositions of the JEDEC witnesses during the last week of August 2008.

14 IV. RAMBUS WILL NOT SUFFER UNDUE PREJUDICE IF THE COURT REOPENS
DISCOVERY TO PERMIT NANYA AND NANYA USA TO DEPOSE THESE
15 WITNESSES
16 The significant prejudice to Nanya and Nanya USA in lost evidence, if Rambus succeeds

17 in preventing these depositions from going forward, is already discussed in Nanya and Nanya

18 USA’s opening briefing on this motion. In its opposition, Rambus does not attempt to refute the

19 arguments regarding prejudice to Nanya and Nanya USA. Rather, Rambus complains that it

20 would be a “significant” burden to have to incur the time and expense to travel and prepare for

21 out-of-state depositions. Rambus also argues that it would be burdensome to attend these

22 depositions because the parties are in the middle of expert discovery and are preparing to file

23 dispositive motions. Finally, Rambus argues that it would be prejudicial to “requir[e]” Rambus to

24 take these depositions while Rambus is preparing for the Samsung trial. Opposition at 10. None

25 of these arguments has any merit, and all of them pale in contrast to the prejudice of precluding

26 Nanya and Nanya USA from obtaining crucial evidence.

27 First, Rambus would have incurred the same time and expense to attend and prepare for

28 these out-of-state depositions whether they had occurred before or after the discovery cutoff. In
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1 addition, it would not be prejudicial for Rambus to attend additional depositions, despite the fact

2 that the parties are concurrently engaging in expert discovery. Rambus is once again engaging in

3 a double standard – Rambus has filed its own pending motions to compel various fact discovery

4 (including depositions) from Nanya and Nanya USA, and presumably does not consider its own

5 motions to be prejudicial on the basis of their timing. Nor would it be prejudicial to permit these

6 depositions to go forward while Rambus is also preparing its case against Samsung. It is hard to

7 imagine that with counsel from three separate law firms, Rambus would be unable to find one or

8 two attorneys to attend these depositions. And if Rambus determines that the burden is truly too

9 great, Rambus may simply choose not to attend these fact-gathering third party depositions.

10 Contrary to Rambus’ belief, there would be no “requir[ement]” compelling Rambus’ attendance.

11 V. CONCLUSION
12 For the foregoing reasons, Nanya and Nanya USA respectfully request the Court to grant

13 their motion to reopen discovery and allow them to take the depositions of third parties Howard

14 Kalter, David Chapman, Earnest Powell, Juan Pineda, and Mark Kellogg.

15 Respectfully submitted,

16

17 Dated: September 29, 2008 ROBERT E. FREITAS

CRAIG R. KAUFMAN
18 VICKIE L. FEEMAN
THERESA E. NORTON
19 Orrick, Herrington & Sutcliffe LLP
20

21 /s/ Theresa E. Norton

THERESA E. NORTON
22 Attorneys for Defendants
NANYA TECHNOLOGY CORPORATION and
23 NANYA TECHNOLOGY CORPORATION USA
24 OHS West:260522310.1

25

26

27

28
NANYA’S REPLY IN SUPPORT OF ITS MOTION TO REOPEN
-7- DISCOVERY TO PERMIT JEDEC DEPOSITIONS
CASE NO. 05-00334 RMW