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Case No. C 10-05449
MOTION FOR LEAVE TO AMEND ANSWER AND COUNTERCLAIMS
K&L GATES LLP
Michael J. Bettinger (Bar No. 122196)
mike.bettinger@klgates.com
Stephen M. Everett (Bar No. 121619)
stephen.everett@klgates.com
Curt Holbreich (Bar No. 168053)
curt.holbreich@klgates.com
Elaine Y. Chow (State Bar No. 194063)
elaine.chow@klgates.com
Four Embarcadero Center, Suite 1200
San Francisco, CA 94111
Tel: (415) 882-8200
Fax: (415) 882-8220

QUINN EMANUEL URQUHART &
SULLIVAN, LLP
Sean Pak (Bar No. 219032)
seanpak@quinnemanuel.com
Peter A. Klivans (Bar No. 236673)
peterklivans@quinnemanuel.com
50 California Street, 22
nd
Floor
San Francisco, California 94111-4788
Telephone: (415) 875-6600
Facsimile: (415) 875-6700

QUINN EMANUEL URQUHART &
SULLIVAN, LLP
Michael D. Powell (Bar No. 202850)
mikepowell@quinnemanuel.com
555 Twin Dolphin Drive, 5
th
Floor
Redwood Shores, CA 94065
Telephone: (650) 801-5000
Facsimile: (650) 801-5100
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
Thomas D. Pease (Bar No. 2671741 (NY))
thomaspease@quinnemanuel.com
51 Madison Avenue, 22
nd
Floor
New York, NY 10010
Telephone: (212) 849-7000
Facsimile: (212) 849-7100

QUINN EMANUEL URQUHART &
SULLIVAN, LLP
Robert J. Becher (Bar No. 193431)
robertbecher@quinnemanuel.com
865 S. Figueroa St., 10th Floor
Los Angeles, California 90017
Telephone: (213) 443-3000
Facsimile: (213) 443-3100


Attorneys for Defendants & Counterclaimants
STMICROELECTRONICS N.V. and
STMICROELECTRONICS, INC.

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA, SAN FRANCISCO DIVISION

RAMBUS INC.,

Plaintiff,

vs.

STMICROELECTRONICS N.V.;
STMICROELECTRONICS, INC.,

Defendants.

CASE NO. C 10-05449

ST MI CROE L E CTRONI CS' MOTI ON
F OR L E AVE T O AMEND ANSWER AND
COUNT ERCL AI MS

Date: February 28, 2013
Time: 1:30 pm
Crtrm.: Courtroom 3, 17
th
Floor

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04395.52001/5144738.1
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Case No. C 10-05449
MOTION FOR LEAVE TO AMEND ANSWER AND COUNTERCLAIMS
NOTI CE OF MOTI ON
Please take notice that on February 28, 2013, or as soon as this matter may be heard,
before the Honorable Richard Seeborg of the United States District Court For the Northern
District of California, located at 450 Golden Gate Avenue in San Francisco, California,
DeIendants STMicroelectronics N.V. and STMicroelectronics Inc. (collectively, 'STMicro or
"Defendant") will and hereby do move for an order permitting them to file an Amended Answer
to Complaint and Counterclaims (hereinafter, "Amended Answer") in the above-titled action.
STMicro seeks leave to supplement its inequitable conduct affirmative defense with facts
related to the Farmwald-Horowitz patents and to update its unclean hands affirmative defense with
additional details. This motion is based on this notice, the supporting memorandum of points and
authorities, the accompanying declaration of Elaine Chow, the attached Proposed Amended
Answer and Counterclaims, the record in this case, and on such other oral and documentary
evidence as may be presented at the hearing on this motion.

!ase3:10-cv-05449-RS Document134 Filed01/24/13 Page2 of 8
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04395.52001/5144738.1
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Case No. C 10-05449
MOTION FOR LEAVE TO AMEND ANSWER AND COUNTERCLAIMS
ME MORANDUM OF POI NTS AND AUT HORI TI ES
I. PRELIMINARY STATEMENT
Defendants STMicroelectronics N.V. and STMicroelectronics Inc. (collectively,
'STMicro) respectfully seek leave to amend their answer and counterclaims. A redline of the
proposed changes is attached as Exhibit B to the Declaration of Elaine Chow. Specifically,
STMicro wishes to amend its existing deIense oI 'UnenIorceability Inequitable Conduct to add
allegations regarding inequitable conduct with respect to the Farmwald-Horowitz patents.
STMicro also seeks to update its existing affirmative defenses oI 'Unclean Hands to add
additional facts regarding recent court decisions.
Because the Court has not yet set a deadline for the parties to amend their pleadings, the
liberal standard of Rule 15(a) controls. Under the liberal standard of Rule 15(a), when there is
little or no prejudice to the opposing party, leave to amend should be freely granted. Here, there is
no prejudice to Rambus based on the amendment to the inequitable conduct defense because the
patent trial is not scheduled until April 14, 2014. And, to the extent the amendment raises issues
that Rambus seeks to explore in discovery, there is plenty of time for Rambus to conduct
discovery. Although there are currently competing proposals for the discovery cutoff for the
patent phase of the case, both proposals should provide adequate time for Rambus to conduct any
additional discovery. As to the unclean hands defense, the proposed additions simply reference
recent court decisions in cases involving Rambus. Rambus does not need any discovery about
these decisions as it is familiar with them.
Accordingly, STMicro respectfully requests the Court grant this Motion in its entirety.
II. FACTUAL BACKGROUND
Rambus filed its complaint on December 1, 2011. Pursuant to the parties' agreement,
STMicro filed its Answer to Complaint and Counterclaims on March 1, 2011. (Dkt. No. 28.)
Although the parties raised the issue of a cut-off for amending the pleadings in the July 28, 2011
Joint Case Management Statement and [Proposed] Order, a cut-off date was never established.
(Dkt. No. 53 at 21.)
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04395.52001/5144738.1
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Case No. C 10-05449
MOTION FOR LEAVE TO AMEND ANSWER AND COUNTERCLAIMS
In its Proposed Amended Answer and Counterclaims, STMicro seeks to amend its
affirmative defenses as follows:
Unenforceability Inequitable Conduct: STMicro previously pled this affirmative defense
and alleged specific facts regarding the Dally patents. STMicro now seeks to add factual
allegations of inequitable conduct relating to the Farmwald-Horowitz patents. These allegations
are based on information regarding the NeXT prior art system and publications that STMicro
learned of after filing its original answer. (Declaration of Elaine Chow at 6-7.)
Unclean Hands: STMicro seeks to add additional factual allegations regarding recent court
decisions related to Rambus`s unclean hands.
III. ARGUMENT
A. THE NINTH CIRCUIT APPLIES A LIBERAL STANDARD IN ALLOWING
LEAVE TO AMEND
Leave to amend "shall be freely given when justice so requires." FED. R. CIV. P. 15(a).
The Supreme Court has stated that "this mandate is to be heeded." Foman v. Davis, 371 U.S. 178,
182 (1962). The standard is one of "extreme liberality." DDC Programs v. Leighton, 833 F.2d
183, 186 (9th Cir. 1987). In determining whether leave to amend is warranted, courts consider
five factors: (1) undue delay; (2) bad faith; (3) prejudice to the opposing party; (4) futility of the
amendment; and (5) whether previously allowed amendments have failed to cure deficiencies.
Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1052 (9th Cir. 2003); see also, Rodriguez
v. Barrita, Inc., 2012 WL 3538014 at *8 (N.D. Cal. March 1, 2012) (Seeborg). Of these factors,
"[p]rejudice is the touchstone of the inquiry under rule 15(a)." Eminence Capital, 316 F. 3d at
1052.
If a court has not ordered a cut-off date to amend the pleadings, the liberal standard of Rule
15 controls, not the good cause standard of Rule 16. Coleman v. Quaker Oats Co., 232 F.3d 1271,
1294 (9th Cir. 2000); TV Interactive Data Corp. v. Sony Corp., 2012 WL 3791414 at *2 (N.D.
Cal. Aug. 31, 2012). Furthermore, the burden rests with the non-moving party to show why leave
to amend should not be granted. See Senza-Gel Corp. v. Seiffhart, 803 F.2d 661, 666 (Fed. Cir.
1986) (applying Ninth Circuit law). The Court "must be guided by the underlying purpose of Rule
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04395.52001/5144738.1
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Case No. C 10-05449
MOTION FOR LEAVE TO AMEND ANSWER AND COUNTERCLAIMS
15 to facilitate decision on the merits, rather than on the pleadings or technicalities." United States
v. Webb, 655 F.2d 977, 979 (9th Cir. 1981). Thus, the general policy strongly favors granting
motions to amend a party`s pleadings. See Building Serv. Emplovees Pension Trust v. Horsemens
Quarter Horse Racing Assn, 98 F.R.D. 458, 460 (N.D. Cal. 1983) (emphasis added). It is an
abuse of discretion to deny leave to file an amended pleading that "is obviously not frivolous, or
made as a dilatory maneuver in bad faith." Hurn v. Retirement Fund Trust, 648 F.2d 1252, 1254
(9th Cir. 1981).
B. STMICRO`S PROPOSED AMENDMENT SHOULD BE PERMITTED AND
WILL NOT PREJUDICE RAMBUS
Because Rambus will not be prejudiced if STMicro is allowed to amend its Answer and
Counterclaims, leave to amend is appropriate here. Moreover, the four other factors to be
considered in deciding whether to grant leave also weighs in STMicro`s favor.
1. Granting Leave to Amend Will Not Prejudice Rambus
The most important factor in deciding whether to grant leave to amend is whether the
opposing party would be prejudiced. Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1052
(9th Cir. 2003). Rambus will not suffer any prejudice if STMicro is granted leave to file an
Amended Answer and Counterclaims. The Court has indicated that the patent trial will be
scheduled for April 14, 2014. Defendants have proposed that the discovery cutoff for discovery
related to the patent trial be set for September 20, 2013 and Rambus has countered with an April
26, 2013 discovery cutoff for both the unclean hands and patent phase of the case. (Joint Proposed
Scheduling Order, dated January 4, 2013, Dkt. 130.) The additional allegations of inequitable
conduct are streamlined and relate to a discrete set of facts and events. (Amended Complaint and
Counterclaims, 17-26.) As a result, either discovery cutoff would provide Rambus with
adequate time to conduct any additional discovery related to the inequitable conduct allegations.
If Rambus believes an April 2013 cutoff would not provide it with sufficient time to conduct
discovery, it can support defendants` proposed discovery cutoII date. And the update to the
unclean hands defense will not require any new discovery because it just discusses recent
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04395.52001/5144738.1
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Case No. C 10-05449
MOTION FOR LEAVE TO AMEND ANSWER AND COUNTERCLAIMS
decisions in litigations involving Rambus. As a result, this factor strongly favors granting leave to
amend.
2. All Other Factors Also Support Granting STMicro's Motion To Amend
In addition to prejudice to the opposing party, in determining whether leave to amend is
warranted, courts consider four other factors: (1) undue delay; (2) bad faith; (3) futility of the
amendment; and (4) whether previously allowed amendments have failed to cure deficiencies.
Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1052 (9th Cir. 2003); see also, Rodriguez
v. Barrita, Inc., 2012 WL 3538014 at *8 (N.D. Cal. March 1, 2012) (Seeborg). All four of these
additional factors favor granting STMicro's motion.
STMicro has not unduly delayed seeking to amend its answer and counterclaims. With
respect to the proposed amendment to STMicro`s aIIirmative deIense oI inequitable conduct,
STMicro is seeking leave to amend after learning of new facts which support its inequitable
conduct defense. STMicro learned of this information after it filed its original answer.
(Declaration of Elaine Chow, dated January 23, 2013.) Moreover, there is plenty of time
remaining. The patent trial is over fourteen months away. There are at least several months left
for Rambus to conduct any additional discovery it desires regarding these amended claims and
defenses. Further, "delay alone no matter how lengthy is an insufficient ground for denial of
leave to amend." Webb, 655 F.2d at 980 (referring to earlier analysis in Howey v. United States,
481 F.2d 1187, 1191 (9th Cir. 1973), where a five year delay did not prevent granting leave to
amend). Given that STMicro has not delayed in filing this motion, this factor weighs in favor of
granting leave.
As to the second factor, STMicro has not acted in bad faith. Again, this motion is being
filed far in advance of the patent trial and Rambus has more than adequate time left to conduct
discovery regarding the new inequitable conduct allegations in the proposed amended complaint
and counterclaims. This factor weighs strongly in favor of granting leave to amend.
STMicro`s proposed amendments are not futile either. They are supported by detailed
factual allegations. Each of the elements of the affirmative defenses at issue in this motion to
amend has been properly asserted.
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04395.52001/5144738.1
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Case No. C 10-05449
MOTION FOR LEAVE TO AMEND ANSWER AND COUNTERCLAIMS
The final factor is whether previous amendments have failed to cure deficiencies. This
weighs in favor of amendment too because STMicro has not previously moved to amend its
Answer.
IV. CONCLUSION
Because there would be no prejudice to Rambus if this motion is granted and because all
relevant factors weigh in favor of granting STMicro leave to amend its Answer, the Court should
grant STMicro`s motion Ior leave to file an Amended Answer and Counterclaims.

Dated: January 24, 2013 /s/ Michael J. Bettinger
Michael J. Bettinger
Stephen M. Everett
Curt Holbreich
Elaine Y. Chow
K&L GATES LLP
Four Embarcadero Center, Suite 1200
San Francisco, CA 94111
Tel.: (415) 882-8200
Fax: (415) 882-8220

Sean S. Pak
Peter Klivans
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Tel.: (415) 875-6600
Fax: (415) 875-6700

Robert J. Becher
QUINN EMANUEL URQUHART & SULLIVAN, LLP
865 S. Figueroa St., 10F
Los Angeles, CA 90017
Tel.: (213) 443-3000
Fax: (213) 443-3100
Attorneys for Defendants STMicroelectronics
N.V. and STMicroelectronics, Inc.

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04395.52001/5144738.1
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Case No. C 10-05449
MOTION FOR LEAVE TO AMEND ANSWER AND COUNTERCLAIMS
E-FI LI NG AT T EST ATI ON
I hereby attest that I have on file all holograph signatures for any signatures indicated by a
"conformed" signature (/s/) within this e-filed document.
/s/ Peter Klivans
Peter Klivans
!ase3:10-cv-05449-RS Document134 Filed01/24/13 Page8 of 8