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KENNETH L. NISSLY (SBN 77589) knissly@omm.com SUSAN van KEULEN (SBN 136060) svankeulen@omm.com SUSAN ROEDER (SBN 160897) sroeder@omm.com OMELVENY & MYERS LLP 2765 Sand Hill Road Menlo Park, California 94025 Telephone: (650) 473-2600 Facsimile: (650) 473-2601 KENNETH R. OROURKE (SBN 120144) korourke@omm.com OMELVENY & MYERS LLP 400 South Hope Street Los Angeles, California 90071 Telephone: (213) 430-6000 Facsimile: (213) 430-6407 THEODORE G. BROWN, III (SBN 114672) tbrown@kilpatricktownsend.com KILPATRICK TOWNSEND & STOCKTON LLP 1080 Marsh Road Menlo Park, California 94025 Telephone: (650) 324-6353 Facsimile: (650) 618-2029 Attorneys for Plaintiffs SK HYNIX INC., SK HYNIX AMERICA INC., SK HYNIX U.K. LIMITED, and SK HYNIX DEUTSCHLAND GmbH UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

SK HYNIX INC., SK HYNIX AMERICA INC., SK HYNIX U.K. LIMITED, and SK HYNIX DEUTSCHLAND GmbH, Plaintiffs, v. RAMBUS INC., Defendant.

Case No. C-00-20905 RMW SK HYNIXS NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT OF UNENFORCEABILITY BASED ON COLLATERAL ESTOPPEL EFFECT OF JANUARY 2, 2013 DECISION OF DELAWARE DISTRICT COURT Hearing Time: Place: Judge: Date: March 1, 2013 9:00 a.m. Courtroom 6 Hon. Ronald M. Whyte

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TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: Please take notice that on March 1, 2013 at 9:00 a.m. in Courtroom 6 before the Honorable Ronald M. Whyte, Plaintiffs SK hynix Inc., SK hynix America Inc., SK hynix U.K. Ltd., and SK hynix Deutschland GmbH (collectively, Hynix) will and hereby do move for summary judgment under Federal Rule of Civil Procedure 56(a) that U.S. Patent Nos. 5,915,105; 5,953,263; 5,954,804; 5,995,443; 6,032,214; 6,032,215; 6,034,918; 6,035,365; 6,038,195; 6,067,592; 6,101,152; 6,324,120; 6,378,020; 6,426,916; and 6,452,863 are unenforceable against Hynix based on the collateral estoppel effect of the January 2, 2013 decision of the United States District Court for the District of Delaware in Micron Technology, Inc. v. Rambus Inc., Case No. 00-792-SLR (Micron III) (ECF 1151). In Micron III, the Delaware district court held that the appropriate sanction for Rambuss bad faith, prejudicial spoliation is to declare the Farmwald/Horowitz patents-in-suit in that case unenforceable against Micron. That decision is entitled to collateral estoppel effect on the issue of an appropriate sanction in this case, where this Court has similarly held that Rambus engaged in bad faith, prejudicial spoliation. This motion is based on this notice of motion and motion, the accompanying memorandum of points and authorities, the declaration of Kenneth L. Nissly in support of this motion, and such other and further written and oral argument and authorities as may be presented at or before the hearing of this motion.

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Dated: January 25, 2013

Respectfully submitted, OMELVENY & MYERS LLP

By:

/s/ Kenneth L. Nissly Kenneth L. Nissly KENNETH L. NISSLY SUSAN van KEULEN SUSAN ROEDER OMELVENY & MYERS LLP KENNETH OROURKE OMELVENY & MYERS LLP THEODORE G. BROWN III KILPATRICK TOWNSEND & STOCKTON LLP

Attorneys for Plaintiffs SK HYNIX INC., SK HYNIX AMERICA INC.; HYNIX U.K. LIMITED., and SK HYNIX DEUTSCHLAND GmbH

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 III. C. I. II.

TABLE OF CONTENTS Page INTRODUCTION .............................................................................................................. 1 ARGUMENT ...................................................................................................................... 1 A. This Court has previously given collateral estoppel effect to the finding of spoliation in Micron I and Micron II....................................................................... 2 B. Micron IIIs sanction holding satisfies the four requirements for collateral estoppel ................................................................................................................... 3 Any discretion the Court may have in the application of collateral estoppel compels it to apply collateral estoppel to the determination in Micron III that Rambuss patents are unenforceable ................................................................ 4 1. This is a question of defensive, not offensive, collateral estoppel .............. 4 2.

Fairness and justice favor application of collateral estoppel to the Delaware courts sanction determination .................................................... 5 CONCLUSION ................................................................................................................... 9

Case5:00-cv-20905-RMW Document4238 Filed01/25/13 Page5 of 15 TABLE OF AUTHORITIES Page(s) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CASES Allstate Ins. Co. v. Blount, 491 F.3d 903 (8th Cir. 2007)...................................................................................................... 4 Blonder-Tongue Labs., Inc. v. Univ of Ill. Found., 402 U.S. 313 (1971) ............................................................................................................... 5, 7 Collegenet, Inc. v. Applyyourself, Inc., No. CV-02-484 HU, 2008 U.S. Dist. LEXIS 90156 (D. Or. Oct. 28, 2008) ............................. 2 Collins v. D.R. Horton, Inc., 505 F.3d 874 (9th Cir. 2007)...................................................................................................... 5 Cygnus Telecomm. Tech., LLC v. Amer. Intl Telephonics, LLC, 569 F. Supp. 2d 1035 (N.D. Cal. 2008) ..................................................................................... 7 Del. River Port Auth. v. Fraternal Order of Police, 290 F.3d 567 (3d Cir. 2002) ....................................................................................................... 5 Delgado v. United States, 536 F.Supp.2d 1328 (Ct. Intl Trade 2007)................................................................................ 5 Haberer v. Woodbury County, 188 F.3d 957 (8th Cir. 1999)...................................................................................................... 4 Hynix Semiconductor Inc. v. Rambus Inc., --- F. Supp. 2d ---, No. C-00-20905, 2012 WL 4238999 (N.D. Cal. Sept. 21, 2012) ................................................................................................................................. passim Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336 (Fed. Cir. 2011) .......................................................................................... 1, 6, 8 Jean Alexander Cosmetics, Inc. v. LOreal USA, Inc., 458 F.3d 244 (3d Cir. 2006) ....................................................................................................... 5 Kendall v. Visa USA, Inc., 518 F.3d 1042 (9th Cir. 2008) ..................................................................................................... 3 Kent v. United of Omaha, 484 F.3d 988 (8th Cir. 2007) ....................................................................................................... 5 Liberty Mut. Ins. Co. v. FAG Bearings Corp., 335 F.3d 752 (8th Cir. 2003)...................................................................................................... 5 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ................................................................................................................... 1 Micron Tech. Inc. v. Rambus Inc., 255 F.R.D. 135 (D. Del. 2009)............................................................................................... 2, 6 ii
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Micron Tech. Inc. v. Rambus Inc., 645 F.3d 1311 (Fed. Cir. 2011) .......................................................................................... 2, 3, 6 Micron Tech., Inc. v. Rambus Inc. Memorandum Opinion (January 2, 2013) ........................................................................ passim Muegler v. Bening, 413 F.3d 980 (9th Cir. 2005)...................................................................................................... 2 Nobelpharma Ab v. Implant Innovations, 141 F.3d 1059 (Fed. Cir. 1998) .................................................................................................. 4 Parklane Hosiery Co., Inc., et al. v. Shore, 439 U.S. 322 (1979) ................................................................................................................... 5 Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945) ................................................................................................................... 8 RULES Fed. R. Civ. P. 56(a)......................................................................................................................... 2 OTHER AUTHORITIES 18 Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice and Procedure 4426 (2nd ed. 2002) ......................................................................................... 7 Restatement 2d, Judgments, 16 ..................................................................................................... 7

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I.

INTRODUCTION In a January 2, 2013 decision on remand from the Federal Circuit, the Delaware district

court held that the appropriate sanction for Rambuss bad faith, prejudicial spoliation of evidence is to declare the Farmwald/Horowitz patents-in-suit in that case unenforceable against Micron. See Memorandum Opinion in Micron Tech., Inc. v. Rambus Inc (referred to herein as Micron III), enclosure to January 2, 2013 letter from Kenneth L. Nissly to the Hon. Ronald M. Whyte (D.E. 4229), at pp. 45-46. The Micron III decision holding Rambus Farmwald/Horowitz patents unenforceable as a spoliation sanction meets all the requirements for application of collateral estoppel. Accordingly, this Court should now give collateral estoppel effect to the Delaware district courts determination of an appropriate sanction in Micron III and rule that the appropriate sanction for Rambuss spoliation is to hold the Farmwald/Horowitz patents-in-suit unenforceable against Hynix. Unenforceability is the appropriate sanction for Rambuss spoliation, and the Federal Circuit has already held that the two cases should not be decided differently. Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1347 (Fed. Cir. 2011). As this Court has noted many times, Rambus has asserted its patents against the DRAM industry based on its argument, now discredited by rulings of the Patent and Trademark Appeal Board (PTAB), that its inventions validly cover the JEDEC-standard interface between the DRAM and the memory controller. To single out Hynix for liability on allegedly standard-essential patents that have been held unenforceable by the other tribunals that have tried the issue of Rambuss spoliation -- and on patents that are invalid as a result of recent PTAB decisions -- would be an affront to the wellestablished principles that patents are affected with a public interest and should be given uniform effect. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996) (noting importance of uniformity in the treatment of a given patent). II. ARGUMENT In this Courts September 21, 2012 Findings of Fact and Conclusions of Law on Spoliation and the Unclean Hands Defense, this Court held that Rambus spoliated documents in bad faith and that Hynix has established prejudice. Hynix Semiconductor Inc. v. Rambus Inc., --F. Supp. 2d ---, No. C-00-20905, 2012 WL 4238999 (N.D. Cal. Sept. 21, 2012) (Sept. 21
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Order), at *43. Similarly, the Delaware district court held in Micron III that Rambus spoliation was done in bad faith and that the spoliation prejudiced Micron. Micron III, slip op. at 45. The courts differ only on the issue of an appropriate sanction for Rambuss bad faith, prejudicial spoliation.1 Micron IIIs holding that the appropriate sanction is to hold the patentsin-suit in that case unenforceable against Micron meets the requirements for application of collateral estoppel. See id.2 Where, as here, a claim or defense is barred by collateral estoppel, summary judgment is appropriate. See Fed. R. Civ. P. 56(a); see also Muegler v. Bening, 413 F.3d 980, 984-85 (9th Cir. 2005); Collegenet, Inc. v. Applyyourself, Inc., No. CV-02-484 HU, 2008 U.S. Dist. LEXIS 90156, at *97 (D. Or. Oct. 28, 2008) (granting summary judgment of invalidity based on collateral estoppel). A. This Court has previously given collateral estoppel effect to the finding of spoliation in Micron I and Micron II

This Court has already held that the Delaware district courts holding on the issue of spoliation in Micron I, as affirmed by the Federal Circuits Micron II decision,3 meets the four requirements for collateral estoppel:
1

The Micron III decision now makes clear that Micron, a relevant Hynix competitor, does not owe any royalties to Rambus. Accordingly, even if this Court declines to give the unenforceability determination in Micron III collateral estoppel effect and instead abides by its previous decision to limit Rambuss recovery to a royalty that does not place[] Hynix at a competitive disadvantage (Sept. 21 Order 65:1-15), it must now factor in that Micron will be paying an effective royalty rate (ERR) of zero percent. This will make the average ERR being paid by Hynixs competitors significantly lower than the average ERR previously calculated by Hynix, which took into account the ERRs being paid by Infineon, Samsung, and Elpida, but not Micron. See SK hynixs Brief Regarding Sanctions for Rambuss Spoliation, filed October 30, 2012 (D.E. 4209) 2:22-23. 2 The 12 Farmwald/Horowitz patents-in-suit in the Delaware action are also in suit against Hynix in this case. There are three additional patents-in-suit here that are not in suit in Delaware (U.S. Patent Nos. 6,035,365, 6,067,592, and 6,101,152), but all of these patents are within the same Farmwald/Horowitz family, and Rambus did not elect to try any claims from those patents against Hynix. In any event, no prior decision regarding Rambuss spoliation has turned on any aspect of the scope of any of the patents within the Farmwald/Horowitz patent family, and any minor differences between the patents-in-suit in the two actions is irrelevant given the indiscriminate nature of Rambuss spoliation. 3 Micron I refers to the Delaware district courts January 9, 2009 decision on spoliation, Micron Tech. Inc. v. Rambus Inc., 255 F.R.D. 135 (D. Del. 2009). Micron II refers to the Federal Circuits May 13, 2011 decision in the appeal from Micron I, 645 F.3d 1311 (Fed. Cir. 2011). 2
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(1) Rambus had a full and fair opportunity to litigate the issue of spoliation in the Micron action; (2) the spoliation issue actually was litigated; (3) the issue was decided adversely to Rambus as a result of a final judgment in Micron I; and (4) Rambus was a party in the Micron I action. Sept. 21 Order, 2012 WL 4238999, at *33 n.7 (citing Kendall v. Visa USA, Inc., 518 F.3d 1042, 1050 (9th Cir. 2008)). In its Sept. 21 Order, however, this Court declined to give collateral estoppel effect to the issues of bad faith, prejudice, or appropriate sanction, which were then under submission on remand in the Micron case. See id. at *31. B. Micron IIIs sanction holding satisfies the four requirements for collateral estoppel

Now that the Delaware district court has ruled on remand, its determination of an appropriate sanction is entitled to be given collateral estoppel effect. Like the spoliation determination in the Micron case, there can be no serious dispute that the four collateral estoppel requirements are satisfied with respect to the determination of an appropriate sanction. The Federal Circuit directed both district courts to employ the Micron II framework in considering an appropriate sanction, thus the sanction issue decided by the Delaware district court was the same issue that is present here, that issue was actually litigated in Delaware and was decided adversely to Rambus, and Rambus had a full and fair opportunity to litigate the issue of an appropriate sanction on remand in Delaware. The Micron III decision is final for collateral estoppel purposes, as evidenced by the fact that Rambus and Micron agree that there is nothing left for the Delaware district court to resolve with regard to the spoliation issue before it may enter judgment. Ex. A to Declaration of Kenneth L. Nissly in support of this motion (Jan. 17, 2013 Joint Status Report filed by Rambus and Micron in Delaware), at 2. Judge Robinson has ordered that entry of judgment be entered 30 days after January 24, 2013 (see Ex. B to Nissly Decl.), and Hynix brings this motion for summary judgment now rather than awaiting formal entry of judgment in Delaware to avoid delay in the final resolution of this case.

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C.

Any discretion the Court may have in the application of collateral estoppel compels it to apply collateral estoppel to the determination in Micron III that Rambuss patents are unenforceable 1. This is a question of defensive, not offensive, collateral estoppel

As Hynix has argued previously, it is seeking to apply collateral estoppel defensively. See, e.g., Hynixs Motion for Summary Judgment on Unclean Hands, filed January 19, 2009 (D.E. 3879), at 15-18, Hynixs Reply in Support of Motion for Summary Judgment of Unclean Hands, filed January 28, 2009 (D.E. 3894), at 11-14; Hynixs Opening Brief Regarding Proceedings on Remand, filed Sept. 30, 2011 (D.E. 4066), at 14-19. Although this Court has disagreed with that characterization of Hynixs collateral estoppel argument (see, e.g., Sept. 21 Order 46:13-15), Hynix respectfully submits that the weight of authority continues to demonstrate that Hynix invokes collateral estoppel defensively in order to establish a defense against the enforceability of the patents-in-suit. In the context of collateral estoppel, [t]he term defensive use means: a stranger to the judgment in the former action, ordinarily the defendant in the second action, relies upon that judgment as conclusively establishing in his [or her] favor an issue which he [or she] must prove as an element of his [or her] defense. Haberer v. Woodbury County, 188 F.3d 957, 962, n.3 (8th Cir. 1999) (emphasis added). In Allstate Ins. Co. v. Blount, 491 F.3d 903 (8th Cir. 2007), for example, the plaintiff, Allstate Insurance Company, had filed a declaratory judgment action in the face of an inevitable garnishment action in which it would have been a defendant. In determining that the additional factors for offensive collateral estoppel should not be considered, the court stated that there was no doubt that Allstate . . . would have raised the same collateral estoppel argument in a defensive fashion. Allstate Ins. Co., supra, 491 F.3d at 912, n.9. Similarly, Hynix is postured as the defendant in this action in defending against Rambuss patent infringement claims. Indeed the Court may recall that Rambus requested, and the Court approved, that it be treated as the plaintiff in the patent phase. Although Hynix brought this declaratory action before an inevitable infringement action by Rambus, Hynix is raising collateral estoppel defensively as a shield to Rambuss patent infringement claims, rather than as a sword to impose liability. Id. at 962. As a result, this is a classic case of defensive collateral estoppel. See Nobelpharma Ab v. Implant Innovations, 141 F.3d 1059, 1070 4
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(Fed. Cir. 1998) (inequitable conduct is an equitable defense in a patent infringement action and serves as a shield, while a more serious finding of fraud potentially exposes a patentee to antitrust liability and thus serves as a sword). The additional factors set forth in Parklane Hosiery Co., Inc., et al., v. Shore, 439 U.S. 322, 330 (1979), are routinely regarded as being available only in cases involving offensive collateral estoppel. See, e.g., Delgado v. United States, 536 F.Supp.2d 1328, 1339, n. 8 (Ct. Intl Trade 2007) (holding that additional considerations are taken into account only when the courts consider allowing the use of offensive collateral estoppel); see also Collins v. D.R. Horton, Inc., 505 F.3d 874, 880 (9th Cir. 2007) (stating that district courts have discretion in the application of offensive non-mutual collateral estoppel); Liberty Mut. Ins. Co. v. FAG Bearings Corp., 335 F.3d 752, 757 (8th Cir. 2003) (noting that Parklane Hosiery adopt[ed] a test of discretion with respect to nonmutual offensive collateral estoppel only). Courts do not have discretion to consider additional factors beyond the four requirements when a party seeks to apply collateral estoppel defensively, such as Hynix does here. See generally Kent v. United of Omaha, 484 F.3d 988, 994 (8th Cir. 2007) and Jean Alexander Cosmetics, Inc. v. LOreal USA, Inc., 458 F.3d 244, 248 (3d Cir. 2006) (both stating that de novo standard of review applies to collateral estoppel determination in cases not involving offensive collateral estoppel); and see Blonder-Tongue Labs., Inc. v. Univ of Ill. Found., 402 U.S. 313, 333 (1971). Because Rambus had a full and fair opportunity to litigate the sanctions issue in Delaware, this Court lacks discretion to deny defensive collateral estoppel where, as here, all four of the necessary elements are satisfied. See Del. River Port Auth. v. Fraternal Order of Police, 290 F.3d 567, 572 n.6 (3d Cir. 2002). 2. Fairness and justice favor application of collateral estoppel to the Delaware courts sanction determination

Notwithstanding Hynixs argument that the preclusive effect of the Delaware district courts decisions present issues of defensive collateral estoppel, this Court has previously concluded that it has discretion whether to apply collateral estoppel to issues decided in the Delaware action. See, e.g., Sept. 21 Order 46:18-20. Even if this is correct, the Court should exercise that discretion to give collateral estoppel effect to the sanction determination in 5
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Micron III. Application of collateral estoppel to the Micron III sanction determination is indisputably fair because Rambus has already conceded that the cases should not be decided differently, and the Federal Circuit has so held. See Hynix II, 645 F.3d at 1342 n.1 (to the extent the records are in fact different, Rambus has waived any argument that the different records justify different outcomes) and at 1347 (Rambus has agreed that whatever differences the facts present, the two cases should not be decided differently); see also Sept. 21 Order, 2012 WL 4328999 at *33 (noting Federal Circuits observation that Rambus had conceded that the two cases should not be decided differently). Indeed, the records of the two cases are now even more closely aligned than when the Federal Circuit made these statements. See id. at *1 n.2 (stating that record in this case consists of Hynix I spoliation trial record supplemented by (1) evidence that was not available at the time of the trial; and (2) the factual records in Micron II and . Micron I.)4 The fact that this Court came out differently on the issue of an appropriate sanction does not render collateral estoppel unfair here. In fact, the use of collateral estoppel to achieve consistent results among different patent lawsuits is perhaps this Courts most powerful tool in achieving fairness. A final limitation on issue preclusion may be found in occasional statements that it should not be exercised in such a manner as to work an injustice. Such general statements should be approached with great caution. The premise of preclusion itself is that justice is better served in most cases by perpetuating a possibly mistaken decision than by permitting relitigation. If relitigation were permitted whenever it might result in a more accurate determination, in the name of justice, the very values served by preclusion would be quickly destroyed. The risks of imposing a wrong decision on later litigation, moreover, are accounted for in

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Judge Robinsons recent decision in Micron III made clear that she did not consider additional facts not already in the record from Micron I. See Micron III, slip op. at p. 2, n.1 (The court indicated during oral argument on January 26, 2012 that it would not disturb its factual findings because the Federal Circuits opinion only required this court to explain its analysis more clearly. Accordingly, the courts analysis on remand is confined to the scope of the findings of fact already on record.) (internal citation omitted). Although Judge Robinson, in a footnote, made a statement that this Courts findings of fact were different from those of the instant [Micron] case (see id., slip op. at p. 38 n.25), she did not identify any differences in the factual records in the two cases, nor was she asked to review or apply this Courts decision in that case. 6
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many ways by [the other requirements for application of collateral estoppel]. 18 Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice and Procedure 4426 (2nd ed. 2002); see generally Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., supra, 402 U.S. at 329 (Permitting repeated litigation of the same issue as long as the supply of unrelated defendants holds out reflects either the aura of the gaming table or a lack of discipline and of disinterestedness on the part of the lower courts, hardly a worthy or wise basis for fashioning rules of procedure.). Under these well-established principles, it is entirely fair for the Court to give collateral estoppel effect to the Delaware decision even if the Court does not agree with it. In addition, as this Court has correctly noted, the fact that an action has been fully litigated does not bar application of the [collateral estoppel] doctrine. Sept. 21 Order 48:22-24. Moreover, as stated by this Court in another collateral estoppel case: the focus for purposes of determining whether collateral estoppel applies is not whether the issue was correctly decided. Rather the focus is simply whether [the patent holder] has a full and fair opportunity to argue the [issue] in the earlier case. Cygnus Telecomm. Tech., LLC v. Amer. Intl Telephonics, LLC, 569 F. Supp. 2d 1035, 1037 (N.D. Cal. 2008) (Whyte, J.); and see generally 18 Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice and Procedure 4426 (2nd ed. 2002) (relitigation should not be permitted simply because it might result in a more accurate determination, in the name of justice). Rambus had a full and fair opportunity to litigate the issue of an appropriate sanction in Delaware, in a proceeding in which Rambus had every incentive to litigate and which offered Rambus the same procedural safeguards that are available in this case. See Sept. 21 Order 47:27-48:2. Although there is no reason to believe that Rambus will prevail in an appeal of the Micron III decision, if it does so, it will have recourse in this case even if this Court has given collateral estoppel effect to Micron III. See Restatement 2d, Judgments, 16. The Court should not address the remote possibility of a reversal of Micron III by denying that decision the preclusive effect to which it is entitled. If this Court declines to give collateral estoppel effect to the Delaware decision and ultimately enters judgment against Hynix, despite Rambuss spoliation and the rulings of the 7
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PTAB, the result will be that Rambuss Farmwald/Horowitz patents will be enforceable only against Hynix but unenforceable against all others in this or any other federal district court. There is no principled basis for such a result. A patent by its very nature is affected with a public interest . . . The far-reaching social and economic consequences of a patent, therefore, give the public a paramount interest in seeing that patent monopolies spring from backgrounds free from fraud or other inequitable conduct and that such monopolies are kept within their legitimate scope. Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 815-816 (1945). To that end, the facts in patent cases must be measured by both public and private standards of equity. Id. at 816. Here, the public interest in the integrity of the patent system, not to mention the integrity of the judicial system, is paramount to any private, commercial concerns that Rambus may offer as a reason for denying collateral estoppel effect for the Micron III decision. Hynix respectfully suggests that the Court should be wary of using its equitable powers to assist a party which has been adjudged after full and fair trials by two sister courts and a lengthy hearing before the International Trade Commission to have engaged in spoliation of evidence that renders its patents unenforceable -- particularly where this Court has also held that Rambus engaged in bad faith, prejudicial spoliation. Those other tribunals held trials on the spoliation issue, just as this Court did, and the fact that all of them concluded that Rambuss patents should be held unenforceable should alleviate any concerns this Court may have as to inconsistencies between its decision and Micron III. As the Federal Circuit noted in the prior appeal in this case, the fact that this Court has reached a conclusion inconsistent with other tribunals to have considered an issue may suggest[] the application of a too-strict standard. See Hynix II, 645 F.3d at 1346. Finally, another reason this Court should accord the Micron III decision collateral estoppel effect is to avoid the need for the Federal Circuit to again resolve a conflict between this court and the Delaware district court on the spoliation issue. Rambus has told the Delaware district court that it will appeal the Micron III decision and that it again will seek to coordinate the appeals because the spoliation issues presented in these cases should be decided together. Ex. A to Nissly Decl., at p. 6. Given that the Federal Circuit has already made clear that the cases 8
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should come out the same, there is no reason to put the Federal Circuit (not to mention Hynix) to the burden of again addressing inconsistent outcomes. III. CONCLUSION Hynix should not be held liable on Rambus patents that have been held unenforceable and invalid as to the rest of the world. This Court should give collateral estoppel effect to the Delaware district courts decision in Micron III, which finds that holding Farmwald/Horowitz patents unenforceable is the only appropriate sanction for Rambuss bad faith, prejudicial spoliation. Dated: January 25, 2013 By: /s/ Kenneth L. Nissly Kenneth L. Nissly KENNETH L. NISSLY SUSAN van KEULEN SUSAN ROEDER OMELVENY & MYERS LLP KENNETH R. OROURKE OMELVENY & MYERS LLP THEODORE G. BROWN III KILPATRICK TOWNSEND & STOCKTON LLP Attorneys for Plaintiffs SK HYNIX INC., SK HYNIX AMERICA INC., SK HYNIX U.K. LIMITED, and SK HYNIX DEUTSCHLAND GmbH

SK HYNIXS MOTION FOR SUMMARY JUDGMENT CV 00-20905 RMW