UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, D.C.

Before the Honorable Theodore R. Essex rn

Administrative Law Judge I

h
.

i
’I

In the Matter of
Investigation No. 337-TA-661 I

CERTAIN SEMICONDUCTOR CHIPS

HAVING SYNCHRONOUS DYNAMIC _ _
t ?
--
RANDOM ACCESS MEMORY
CONTROLLERS AND PRODUCTS
- -.--
-. ..~~
-c
CONTAINING SAME

DISCOVERY STATEMENT OF COMPLAINANT RAMBUS, INC.

Complainant Rambus, Inc. (hereinafter “Rambus”) hereby submits this Discovery

Statement pursuant to Order No. 2 (December 10,2008).

I. DESCRIPTION OF INFORMATION AND EVIDENCE THAT RAMBUS

INTENDS TO SUBMIT TO PROVE ITS CASE

A. Ownership of the Asserted Patents

Rambus will demonstrate ownership of the asserted patents through, among other

documents, the assignments by the inventors.

B. Importation and Sale

Rambus expects to present evidence obtained from the Respondents, such as documents,

statements, testimony, communications, invoices, agreements, purchase orders, and

advertisements, demonstrating that Respondents have sold for importation, imported, or sold

after importation in the United States the accused semiconductor chips and products containing

the same. Rambus anticipates that this issue can be resolved prior to the hearing through the

appropriate stipulations or through a motion for summary determination.

 C. Infringement

Rambus expects to present evidence obtained from the Respondents proving that the

accused semiconductor chips and products containing the same infringe one or more of the

asserted claims of the asserted patents. To the extent necessary, Rambus will present evidence

on the proper interpretation of the asserted patent claims, which evidence will rely primarily on

the language of the claims, the specification, and the prosecution histories of the patents.

Rambus will also introduce evidence by way of documents and testimony, including expert

testimony, demonstrating how the accused semiconductor chips and products containing the

same operate and utilize the apparatuses and methods protected by the asserted patent claims.

D. Validity and Enforceability

Depending on what, if any, invalidity or unenforceability defenses are raised in

Respondents’ Answers to the Complaint, Rambus will offer evidence and argument to refute

those defenses. Depending on the nature of Respondents’ contentions by the time the

investigation reaches trial, Rambus may rely on evidence such as testimony, including expert

testimony, evidence in the prosecution histories of the asserted patents, testimony from the

inventors or the attorneys involved in prosecution of the patents, documents or testimony of

current andor former Rambus employees, testimony or documents obtained from Respondents

or third parties, prior art references, and documents regarding the non-obviousness of the

claimed inventions.

E. Other Defenses

Depending on what, if any, other defenses are raised in Respondents’ Answers to the

Complaint, Rambus will present evidence and argument to counter those defenses.

2
 F. Domestic Industry

Rambus expects to present documents, statements, testimony, and other relevant

information demonstrating that a domestic industry, as defined by 19 U.S.C. 8 1337(a)(3), exists

in connection with Rambus’s significant licensing activity relating to the asserted patents. The

question of domestic industry can likely be resolved prior to any hearing through summary

determination.

G. Remedy

Rambus expects to present documents, statements, testimony, and other relevant

information demonstrating the necessity for the issuance of (1) a permanent limited exclusion

order forbidding entry into the United States of all Respondents’ infringing semiconductor chips

and products containing the same; (2) cease and desist orders directing Respondents to cease and

desist from using, selling, offering for sale, advertising, marketing, or promoting the accused

products in the United States, or seeking distributors and service operators for the accused

products in the United States; andor (3) a general exclusion order forbidding entry into the

United States of all infringing semiconductor chips and products containing the same.

H. Bond

Rambus expects to present documents, statements, testimony, and other relevant

information demonstrating the appropriate bond during the Presidential review period.

3
11. INFORMATION THAT THE PARTIES WILL SEEK FROM EACH OTHER
AND THIRD PARTIES

A. Information Rambus Will Seek From Respondents

Rambus has served interrogatories and document requests on the Respondents, and will

likely serve additional interrogatories, document requests, and requests for admission on

Respondents and take depositions of Respondents and their employees seeking documents and

information regarding the following issues, among others:

1. The manufacture, design, and operation of the accused products, importation of

accused products into the United States, the sale for importation into the United States and the

sale after importation of the accused products, Respondents’ inventory of infringing products and

whether Respondents are aware of any other entities that import, sell for importation or sell after

importation into the United States accused products that infringe the asserted patents, including

the role played by component suppliers in the sale for importation, importation, and sale after

importation of accused products;

2. Respondents’ claim construction, non-infringement, invalidity and

unenforceability contentions concerning the asserted patents;

3. Respondents’ patent and literature searches, opinions, investigations and studies

concerning the asserted patents and their validity or enforceability and infringement of each of

the asserted patents;

4. Information concerning the organization of Respondents and their relationship to

one another, including the specific role played by each entity within the Respondents’

organizations in the manufacture, sale for importation, importation, and sale after importation of

the accused products;

4
 5. Information related to any other defenses asserted by Respondents in this

investigation;

6. Information relating to the appropriate remedy and bond; and

7. The identification of persons with knowledge of particular facts and the location

of relevant documents, including electronic documents.

B. Information Rambus Will Seek From Third Parties

It is possible that discovery of third parties will be necessary during the course of this

investigation. Third-party discovery will take the form of subpoenas seeking production of

documents and possibly depositions.

111. INFORMATION TO BE OBTAINED ONLY BY DEPOSITION,

INTERROGATORY, SUBPOENA OR REQUEST FOR ADMISSION

Rambus believes that most of the information set forth in Section II above will be

obtained through formal discovery in this Investigation. Discovery has already begun in this

Investigation and the private parties have already exchanged document requests and

interrogatories.

IV. STATUS OF ANY SETTLEMENT DISCUSSIONS

Presently, there have been no settlement discussions between the parties.

V. STATUS OF ANY LITIGATION THAT MAY AFFECT ANY ISSUE IN THIS

INVESTIGATION

Rambus is currently litigating the Asserted Patents and other patents in an action against

NVIDIA filed on July 10, 2008, in the District Court for the Northern District of California,

Rambus Inc. v. WZDIA Corp., No. 8-3343 (N.D. Cal.). NVIDIA filed a motion to stay that

action under 28 U.S.C. 0 1659. That motion has not been ruled on.

5
 On July 11, 2008, one day after the action identified above was filed, NVIDIA filed an

antitrust action in the District Court for the Middle District of North Carolina against Rambus,

NVZDIA Corp. v. Rambus, Znc., No. 1:08-CV-473 (M.D.N.C.). That case was recently

transferred to the United States District Court for the Northern District of California. Rambus

has filed a motion to consolidate that action with the earlier-filed California action and an

administrative motion to consider whether the cases should be related under the Local Rules of

the Northern District of California. Those motions have not been ruled on.

VI. STATUS OF ANY REEXAMINATION BEFORE THE UNITED STATES

PATENT AND TRADEMARK OFFICE

On December 8, 2008, Nvidia requested ex parte reexamination of claims 7, 13, 21, and

22 of U.S. Patent No. 7,177,998. The PTO has not acted on that request.

On December 8, 2008, Nvidia requested ex parte reexamination of claims 7, 13, 21, and

22 of U S . Patent No. 7,210,016. The PTO has not acted on that request.

On December 18, 2008, Nvidia requested ex parte reexamination of claims 21 and 22 of

U.S. Patent No. 7,287,119. The PTO has not acted on that request.

On December 19,2008, Nvidia requested exparte reexamination of claims 21, 22 and 24

of U.S. Patent No. 7,330,952. The PTO has not acted on that request.

On December 19, 2008, Nvidia requested ex parte reexamination of claim 25 of U.S.

Patent No. 7,330,953. The PTO has not acted on that request.

On December 19, 2008, Nvidia requested ex parte reexamination of claims 29 and 3 1 of

U.S. Patent No. 7,360,050. The PTO has not acted on that request.

VII. PROPOSAL FOR MODIFICATIONS TO THE GROUND RULES

Rambus does not propose any modifications to the Ground Rules at this time.

6
 Rambus and Respondents have discussed entering into certain stipulations regarding

discovery and expect to propose those stipulations for approval shortly. These stipulations are

not expected to require modifications of the Ground Rules.

VIII. PROPOSAL FOR ANY MODIFICATIONS OF THE PROTECTIVE ORDER

NOW IN EFFECT FOR THIS INVESTIGATION

Rambus and Respondents have discussed proposed modifications to the Protective Order

regarding source code produced by the parties, but have not reached an agreement at this time.

To the extent necessary, the parties will file a motion to amend the Protective Order as soon as

an agreement is reached.

IX. POSITION AS TO TARGET DATE

The investigation was instituted by notice on December 10, 2008. The investigation

involves nine patents, in three patent families. The asserted patents address the same types of

accused products. While there are a number of named Respondents, counsel for Nvidia is

representing all of the other Respondents. Rambus and the Respondents have discussed, and

generally agree on, a 15-16 month target date.

7
 Respectfully Submitted,
n

Dated: December 31,2008

J. Michael Jakes
Doris Johnson Hines
Kathleen A. Daley
Christine E. Lehman
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
901 New York Avenue, N W
Washington, DC 2000 1-4413
Telephone: (202) 408-4000
Facsimile: (202) 408-4400

Counsel for Complainant Rambus, Inc.

8
 CERTAIN SEMICONDUCTOR CHIPS HAVING Inv. No. 337-TA-661
SYNCHRONOUS DYNAMIC RANDOM ACCESS
MEMORY CONTROLLERS AND PRODUCTS
CONTAINING SAME

CERTIFICATE OF SERVICE

I, Colleen Martin, hereby certify that on December 3 1,2008, copies of the foregoing
document were filed and served upon the following parties as indicated:
~~ ~

Marilyn R. Abbott
Secretary c]Via First Class Mail
U.S. International Trade Commission 0 Via Courier (FedEx)
500 E Street, S.W., Room 112-F [XI Via Hand Delivery
Washington, DC 20436 Via Facsimile
(Original and 6 Copies) 0 Via Email (PDF File)
The Honorable Theodore R. Essex
Administrative Law Judge 0 Via First Class Mail
U.S. International Trade Commission 17 Via Courier (FedEx)
500 E Street, S.W., Room 3 17-F Via Hand Delivery
Washington, DC 20436 0 Via Facsimile
(2 Copies) Via Email (PDF File)

Tamara.Lee@usitc. gov
~~ ~

Vu Bui, Esq.
Office of Unfair Import Investigations 0 Via First Class Mail
U.S. International Trade Commission 0 Via Courier (FedEx)
500 E Street, S.W., Room 401-R [XI Via Hand Delivery
Washington, DC 20436 Via Facsimile
Via Email (PDF File)
Vu.Bui@usitc.gov
 CERTAIN SEMICONDUCTOR CHIPS HAVING Inv. No. 337-TA-661
SYNCHRONOUS DYNAMIC RANDOM ACCESS
MEMORY CONTROLLERS AND PRODUCTS
CONTAINING SAME

~ ~

Counselfor Respondents:
Ruffin Cordell, Esq.
Andrew R. Kopsidas, Esq.
Fish & Richardson PC
1425 K Street, N.W., Suite 1100
Washington, DC 20005
[7 Via First Class Mail
c]Via Hand Delivery
0 Via Courier (FedEx)
0 Via Facsimile
Via Email (PDF File)

ark@fr.com

Colleen Martin
Case Manager
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
901 New York Avenue, NW
Washington, DC 2000 1
(202) 408-4000 (Telephone)
(202) 408-4400 (Facsimile)