Notice of Motion and Motion To Stay Patent Infringement Case Memorandum of Points and Authorities in Support Thereof

Case 3:08-cv-03343-SI Document 60 Filed 12/04/2008 Page 1 of 14
1 I. NEEL CHATTERJEE (STATE BAR NO. 173985)

[email protected]
2 DEBORAH E. FISHMAN (STATE BAR NO. 197584)
[email protected]
3 ROBERT W. RICKETSON (STATE BAR NO. 148481)
[email protected]
4 ORRICK, HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road
5 Menlo Park, CA 94025
Telephone: +1-650-614-7400
6 Facsimile: +1-650-614-7401
7 Attorneys for Defendant

NVIDIA Corporation
8
9 UNITED STATES DISTRICT COURT
10 NORTHERN DISTRICT OF CALIFORNIA
11 SAN FRANCISCO DIVISION
12
13 RAMBUS, INC., Case No. C-08-03343 SI
14 Plaintiff, NOTICE OF MOTION AND

MOTION TO STAY PATENT
15 v. INFRINGEMENT CASE;
MEMORANDUM OF POINTS AND
16 NVIDIA CORPORATION, AUTHORITIES IN SUPPORT
THEREOF.
17 Defendant.
Date: January 9 ,2009
18 Time: 9:00 a.m
Judge: The Hon. Susan Illston
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MOTION TO STAY ACTION
C-08-03343 SI
1 TABLE OF CONTENTS
2 Page
3 MEMORANDUM OF POINTS AND AUTHORITIES ..............................................................1
4 I. INTRODUCTION...........................................................................................................1
5 II. FACTUAL BACKGROUND ..........................................................................................2
6 A. Rambus’s Infringement Claims in this Court Are Subject to a Mandatory

Stay as to the Patents at Issue Before the ITC......................................................4
7
B. The Remaining Claims in this Action Should be Stayed in the Interests of
8 Justice and Judicial Efficiency..............................................................................5
IV. CONCLUSION .............................................................................................................10
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-i- C-08-03343 SI
1 TABLE OF AUTHORITIES
2 FEDERAL CASES
3 Page
4 Alloc, Inc. v. Unilin Decor N.V.,

2003 WL. 21640372 (D. Del. July 11, 2003) .........................................................................6
5
American Honda Motor Co. v. Coast Distrib. Sys., JSW,
6 2007 WL. 672521 (N.D. Cal. Feb. 26, 2007) .........................................................................7
7 Flexsys Americas, LP, v. Kumho Tire, U.S.A., Inc.,

No. 5:05CV156, 2005 WL. 1126750 (N.D. Ohio 2005).........................................................6
8
FormFactor, Inc. v. Micronics Japan Co., Ltd.,
9 CV-06-7159 JSW, 2008 WL 361128 (N.D. Cal. 2008) .............................................. 6, 7, 8, 9
10 Fuji Photo Film Co., Ltd. v. Benun,

463 F.3d 1252 (Fed. Cir. 2006)..............................................................................................5
11
Landis v. N. Am. Co.,
12 299 U.S. 248 (1936) ..............................................................................................................1
13 Micron Tech., Inc. v. Mosel Vitelic Corp.,

1999 WL. 458168 (D. Idaho Mar. 31, 1999)......................................................................6, 7
14
Organon Teknika Corp. v. Hoffmann La Roche, Inc.,
15 No. 1997 U.S. Dist. LEXIS 3798 (M.D.N.C. Feb. 19, 1997)..................................................7
16 SanDisk Corp. v. Phison Electronics Corp.,

538 F. Supp. 2d 1060 (W.D. Wis. 2008) ........................................................................ 5, 6, 7
17
FEDERAL STATUTES
18
28 U.S.C. §1659 (a) ................................................................................................................2, 5
19
1994 U.S.C.C.A.N. 3773, at 3912 ...............................................................................................5
20
H.R.Rep. No. 103-826(I), at 140 .................................................................................................5
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- ii - C-08-03343 SI
1 NOTICE OF MOTION
2 TO PLAINTIFF RAMBUS, INC. AND ITS ATTORNEYS OF RECORD:
3 PLEASE TAKE NOTICE that on January 9, 20091, at 9:00 A.M. or as soon thereafter as it
4 may be heard, in Courtroom 10 of this Court, before the Honorable Susan Illston, defendant
5 NVIDIA Corporation (“NVIDIA”) will and hereby does move for an order staying all patent
6 infringement claims in this action in its entirety until such time as certain proceedings before the
7 United States International Trade Commission (“ITC”) are concluded and the determination of
8 the ITC becomes final. This motion is made pursuant to 28 U.S.C. § 1659(a), which provides for
9 a mandatory stay of litigation of patents herein that are also the subject of the ITC proceeding. As
10 to the patents-in-suit that are not before the ITC, this motion is made pursuant to the power
11 inherent in every court to control disposition of the causes on its docket with economy of time
12 and effort for itself, for counsel, and for litigants, on grounds that proceeding with litigation of
13 only a subset of the patents-in-suit would not be in the interests of justice or judicial efficiency
14 under the circumstances present here, given both the pendency of the ITC proceeding and other
15 litigation brought by plaintiff Rambus, Inc. (“Rambus”) involving those patents. See Landis v.
16 N. Am. Co., 299 U.S. 248, 254 (1936).
17 This motion is based on the accompanying Memorandum, the Declaration of Robert W.
18 Ricketson filed herewith (“Ricketson Decl.”), and all pleadings and papers that are of record and
19 on file in this case.
20 MEMORANDUM OF POINTS AND AUTHORITIES

21 I. INTRODUCTION
22 NVIDIA requests that the Court stay this patent infringement case. Rambus has chosen to
23 litigate its patent infringement claims against NVIDIA in a forum other than this Court. Namely,
24 on November 6, 2008 (approximately four months after filing this case), Rambus filed a
25 complaint with the ITC alleging infringement of nine of the patents that are also asserted in this
26 case. Additionally, all of the NVIDIA products accused by Rambus in the ITC are also at issue
27 1
NVIDIA intends to file a motion for an order compressing the time for briefing this motion and
providing that it will be submitted without oral argument.
28
-1- C-08-03343 SI
1 here. Pursuant to 28 U.S.C. §1659, the district court litigation on those nine patents is subject to a
2 mandatory stay until a final decision issues from the ITC.
3 Rambus elected not to assert six of the patents at issue in this case in its ITC complaint.
4 These six patents appear to accuse many, if not all, of the same products at issue in the ITC. A
5 stay of these six remaining patents is also warranted. Where going forward with only part of a
6 patent infringement case with overlapping issues would only cause undue burden and squander
7 court and party resources, courts have discretion to stay the entire action. Additionally, Rambus
8 has other litigation pending in this District in which decisions are likely to issue in the near future
9 bearing on the six remaining patents. Those other actions are set for trial in the near future and
10 the outcome of which may narrow the issues in dispute here. Finally, some of the six asserted
11 patents (and other patents in the same family) are currently subject to reexamination proceedings
12 before the U.S. Patent and Trademark Office, which proceedings may also narrow the disputed
13 issues here. For these reasons, NVIDIA’s motion to stay this action should be granted.
14 II. FACTUAL BACKGROUND
15 Rambus filed this action on July 10, 2008, charging NVIDIA with direct, contributory,
16 and induced infringement of seventeen U.S. patents, all of which relate to memory and memory
17 controllers in semiconductor devices.2 Nearly four months later, Rambus filed a complaint with
18 the ITC against NVIDIA and many of NVIDIA’s customers, alleging that NVIDIA products
19 imported into this country infringe nine U.S. patents.3
20 The nine patents at issue in the ITC proceeding all list either Richard M. Barth or
21 Frederick A. Ware as the first-named inventor (the “Barth/Ware patents”), and all nine of those
22 patents are asserted in this action. 4 On December 4, 2008, Rambus announced that the ITC has
23 2
On September 17, 2008, Rambus unilaterally filed a covenant not to sue as to two of the patents
24 in suit, thereby reducing the number of patents being asserted here to fifteen. See Docket No. 39.
3
25 See Ricketson Decl. Exh. 1.
26 4
The Ware patents are U.S. Patent Nos. 7,210,016 and 7,177,998. The Barth patents are Nos.
6,470,405; 6,591,353; 7,287,109; 7,287,119; 7,330,952; 7,330,953, 7,360,050. See ITC
27 Complaint, ¶¶ 154, 288, 520.
28
-2- C-08-03343 SI
1 instituted an investigation based on Rambus’s complaint.5
2 Rambus did not assert in the ITC the remaining six patents in suit here, all of which list
3 Paul Farmwald as the first-named inventor (“the Farmwald patents”) and all of which appear to
4 claim priority to a common original application filed in 1990.6 The claimed inventions of the
5 Farmwald patents and the Barth/Ware patents relate to overlapping or similar technology and the
6 nearly all of the same products are alleged to infringe in both the present action and the ITC
7 complaint.
8 The patents themselves shows that the technology at issue in the Barth/Ware and
9 Farmwald patents overlaps. All of the Barth/Ware patents cite at least one patent in the Farmwald
10 patent family as prior art. Some of the patents even have similar figures. For example, Figure 1
11 of the ’097 patent (one of the Farmwald patents) illustrates a basic 2-D organization of memory
12 devices. Figure 1A of the ’353 patent displays a more detailed, but very similar figure and
13 describes it as “prior art.” See Ricketson Decl. Exhs. 3 and 4. Because Rambus’s claims
14 regarding the Barth/Ware patents will delve into the scope and content of the prior art – including
15 the cited Farmwald patents – there will be considerable overlap and duplication in the discovery
16 required and the arguments presented on these patents both before the ITC and here if the patent
17 action is allowed to proceed.
18 Even Rambus’s pleadings demonstrate the substantial technology overlap between the
19 Barth/Ware and Farmwald patents. All of Rambus’s patents asserted in this action are alleged to
20 relate to devices and methods for optimizing memory performance. See generally, FAC
21 ¶¶ 12-28. Indeed, Rambus’s allegations of infringement in this action and in the ITC action
22 describe the accused NVIDIA products in very similar terms. In both cases, Rambus alleges
23 infringement by NVIDIA’s GeForce, Quadro, nForce, Tesla, and Tegra product lines. In both
24
5
25 See Ricketson Decl. Exh. 2 (12/4/08 Rambus Press Release).
26 6
The Farmwald patents are the first three and last three listed in the complaint in this action:
U.S. Patent Nos. 7,209,997; 6,751,696; 6,564,281; 6,260,097; 6,304,937; and, 6,715,020. See
27 First Amended Complaint at ¶ 5.
28
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1 complaints, infringement is alleged to arise from use of “DDR memory controllers, DDRx
2 memory controllers (where x includes at least DDR2 and DDR3), GDDR memory controllers,
3 and/or GDDRy memory controllers (where y includes at least GDDR2 and GDDR3 memory
4 controllers).” ITC complaint, ¶ 27, compare FAC at ¶ 11.
5 In addition, most of the Farmwald patents are also the subject of separate proceedings
6 which may give rise to collateral estoppel. For example, Rambus is litigating in this District
7 against defendants who, unlike NVIDIA, manufacture memory. In those cases, Rambus is
8 charging infringement of four of the six Farmwald patents at issue here, as well as infringement
9 of other patents in the same Farmwald patent family. Numerous dispositive motions are now
10 pending in that litigation and trial is scheduled to commence in early 2009.7 Indeed, despite
11 Rambus’s effort to obtain a finding of infringement on 11 patent claims, summary judgment was
12 only granted as to one of the 11, leaving the rest for trial. Rambus v. Hynix, Case No. C05-00334
13 RMW Dkt. No. 2608 (November 24, 2008).8 Consequently, some of the decisions in Rambus’s
14 concurrent litigation against the memory manufacturers may serve to focus or narrow the parties’
15 disputes here.
16 Procedurally, this case is in its infancy. The Court recently ruled on NVIDIA’s motion
17 requesting dismissal of the complaint, or in the alternative, a more definite statement. No answer
18 has been filed; no scheduling order has been issued by the Court; and the parties have not yet
19 engaged in substantive discovery or claim construction disclosures.
20 Because the vast majority of the patents at issue in this case are now the subject of other
21 proceedings, a stay of Rambus’s patent infringement case against NVIDIA is warranted.
22 III. ANALYSIS
23 A. Rambus’s Infringement Claims in this Court Are Subject to a Mandatory

24 Stay as to the Patents at Issue Before the ITC.
25
7
See Hynix Semiconductor, Inc. et al. v. Rambus, Inc. , and related cases, Nos. C-00-20905-
26 RMW; C-05-00334 RMW; C-05-02298 RMW; and C-06-00244-RMW.
27 8
See Ricketson Decl. Exh. 5. The patent found to be infringed in the Hynix case is not at issue in
this case.
28
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1 Section 1659 (a) of Title 28 of the U.S. Code provides, in relevant part:
2 In a civil action involving parties that are also parties to a

proceeding before the United States International Trade
3 Commission . . . at the request of a party that is also a respondent in
the proceeding before the Commission, the district court shall stay,
4 until the determination of the Commission becomes final,
proceedings in the civil action with respect to any claim that
5 involves the same issues involved in the proceeding before the
Commission . . . .
6
7 (emphasis added). The Federal Circuit has explained that this provision, “places limits on the
8 timing of parallel actions involving the Commission and a district court” and that, “[s]pecifically,
9 the district court must await a final decision from the Commission before proceeding with its
10 action.” Fuji Photo Film Co., Ltd. v. Benun, 463 F.3d 1252, 1256 (Fed. Cir. 2006).
11 Section 1659 (a) is applicable to Rambus’s claims arising from the Barth/Ware patents
12 and that upon timely motion, this litigation must be stayed as to those patents. As required by
13 section 1659(a)(1), this motion was filed within 30 days of the institution by the ITC of the
14 proceeding against NVIDIA. Accordingly, the motion should be granted as to the Barth/Ware
15 patents.
16 B. The Remaining Claims in this Action Should be Stayed in the Interests of
Justice and Judicial Efficiency.
17
18 The legislative history of Section 1659 demonstrates that Congress was concerned with
19 the inherent unfairness and inefficiency that would arise where a defendant was forced to respond
20 to infringement claims in both the ITC and a district court action simultaneously. See SanDisk
21 Corp. v. Phison Electronics Corp., 538 F.Supp.2d 1060, 1065, (W.D. Wis. 2008) (citing
22 H.R.Rep. No. 103-826(I), at 140, as reprinted in 1994 U.S.C.C.A.N. 3773, at 3912 “Congress
23 passed § 1659 to address the unfairness of requiring importers and producers to ‘defend claims in
24 both the Commission and in district court, possibly at the same time.’”) Thus, in addition to
25 providing for a mandatory stay as to any claim that “involves the same issues” pending before the
26 ITC, Congress also expressly incorporated in the statute reference to the courts’ discretionary
27 power to stay any and all other claims.
28
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1 Under circumstances like those present here, courts in this District and elsewhere have
2 typically concluded that a complete stay of court proceedings is warranted to prevent prejudice to
3 defendants, wasteful duplication of efforts by the parties and the courts, and general inefficiencies
4 in case management. For example, in FormFactor, Inc. v. Micronics Japan Co., Ltd., CV-06-
5 7159 JSW, 2008 WL 361128 (N.D. Cal. 2008), Judge White granted a stay of an entire patent
6 infringement action in view of an ITC complaint that only alleged infringement of two of the five
7 patents in suit because doing so was a “prudential action” that avoided prejudice to the defendant,
8 prevented unnecessary duplication of efforts, and which would allow the court “to gain the
9 additional knowledge of the ITC proceedings” and “to benefit from litigating the four patents in
10 this action together, rather than separately.” Id at *2-4.9
11 SanDisk Corp. v. Phison Electronics Corp., 538 F.Supp.2d 1060 (W.D. Wis. 2008), is
12 also instructive. The SanDisk court evaluated the extent to which various factual and legal issues
13 necessarily would overlap given, among other things, identity in the accused products, and
14 concluded that litigating the two sets of patents separately would, “impose a burden on the court
15 and on defendants.” 538 F.Supp.2d at 1066. Because that burden outweighed the interests in
16 going forward on parallel tracks, the stay was granted. See also, Flexsys Americas, LP, v. Kumho
17 Tire, U.S.A., Inc., No. 5:05CV156, 2005 WL 1126750 (N.D.Ohio 2005) (stay of entire action
18 granted; “requiring this case to proceed only with respect to the ‘541 Patent would create an
19 undue burden on defendants . . . . In addition, the Court finds that a temporary stay will result in
20 a tremendous savings of judicial time and resources.”); Alloc, Inc. v. Unilin Decor N.V., 2003 WL
21 21640372 (D.Del. July 11, 2003) (stay granted; followed in Flexys).
22 The three primary factors to be considered in evaluating the propriety of a stay are:
23 (1) possible damage which may result from the granting of a stay;
24 9
Rambus previously incorrectly argued to this Court, and may attempt to assert again here, that
FormFactor “indicates” that NVIDIA has a “heavy burden” to prove a complete stay is
25 warranted. See Rambus’s Opposition to NVIDIA’s Motion to Continue Case Management
Conference (hereafter “Opposition re CMC”), Docket No. 50 at p. 4 n. 6. The word “heavy”
26 does not appear in the FormFactor decision, and nothing in the court’s discussion suggests the
burden is any different from that which a moving party ordinarily faces in showing that the
27 requested relief is warranted.
28
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1 (2) the hardship or inequity which a party may suffer in being

required to go forward, and;
2
(3) the orderly course of justice measured in terms of the
3 simplifying or complicating of issues, proof, and questions of
law which could be expected to result from a stay.
4
5 2008 WL 361128 at *1 (quoting CMAX, Inc. v. Hall, 300 F.2d 265, 268 (9th Cir.1962)).
6 Here, as in FormFactor, all three factors weigh in favor of a stay.
7 Previously, Rambus incorrectly argued that courts “routinely” deny complete stays in
8 circumstances like these, and cited four cases to support that proposition. Docket No. 50 at p. 4 n.
9 6. Those cases do not support Rambus’s proposition, and they are inapplicable here. In
10 American Honda Motor Co. v. Coast Distrib. Sys., JSW, 2007 WL 672521 (N.D. Cal. Feb. 26,
11 2007), the party seeking a stay was not a party to the pending ITC proceeding. In Broadcom
12 Corp. v. Qualcomm Inc., 2005 WL 5925585 (C.D. Cal. Sept. 26, 2005), the court in fact had
13 stayed the entire patent action pending completion of the ITC proceeding and only considered
14 whether that stay precluded the court from enjoining the plaintiff from litigating a pending state
15 court case in violation of a forum selection clause. In Organon Teknika Corp. v. Hoffmann La
16 Roche, Inc., No. 1997 U.S. Dist. LEXIS 3798 (M.D.N.C. Feb. 19, 1997), the party seeking the
17 stay was not the respondent in the ITC proceeding, and therefore could not claim prejudice from
18 being forced to defend infringement claims in two fora simultaneously. Finally, even in Micron
19 Tech., Inc. v. Mosel Vitelic Corp.,1999 WL 458168 (D. Idaho Mar. 31, 1999), the court did not
20 allow substantive proceedings on the non-overlapping claims until completion of the ITC action.
21 The facts and procedural posture here mirror those in FormFactor, SanDisk, and the other
22 cases cited above. These facts warrant a stay.
23 1. No Significant Damage to Rambus Will Result From a Stay
24 Rambus cannot point to any significant harm it will suffer by a discretionary stay of this
25 litigation as to the Farmwald patents. Nor can Rambus demonstrate any urgency. The original
26 Farmwald patent application from which the asserted patents claim priority was filed more than
27
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1 18 years ago and Rambus chose to delay obtaining claims to the asserted patents.10 In fact,
2 according to Rambus, it chose to delay filing the present action against NVIDIA for years. 11
3 Finally, Rambus elected not to assert the Farmwald patents in the ITC, as it was free to do. Under
4 these circumstances, Rambus cannot reasonably argue that it will be harmed by the relatively
5 minimal delay that will result from waiting for conclusion of the ITC proceedings.
6 2. Hardship and Inequity to NVIDIA Will Result If a Stay Is Denied
7 As noted above, it would prejudice NVIDIA to require it to defend claims of infringement
8 against the same sets of products in two different fora simultaneously. All of the patents relate to
9 the same technologically complex field. Both sets of patents (and Rambus’s contentions of
10 infringement submitted to the ITC) appear to be directed to techniques for producing memory
11 devices that operate more efficiently and at higher speeds and the NVIDIA products and product
12 lines accused in this in this action appear to be at issue in the ITC proceeding as well.
13 In this scenario, a significant portion of the discovery and the legal and factual analysis
14 that will be involved in litigating both sets of patents will likely overlap. Even where different
15 material qualifies as prior art for particular patents due to different application dates or
16 differences in details of the specific claims, the commonalities in the technological field and the
17 set of accused products would make it inefficient and burdensome to go forward on both fronts
18 simultaneously.
19 As the FormFactor court observed, while the mere burden of being a defendant in
20 litigation does not qualify as an undue hardship, duplication in discovery proceedings does. 2008
21 WL 361128 at *2. Here, as in FormFactor, the “similar technology and products” will
22 necessarily lead to “significant overlap in discovery” that warrants imposition of a stay.
23
24
25 10
See Rambus v. Hynix, No. C05-033 RMW, Order entered November 26, 2007 at p7.
(“Evidence also suggests that Rambus repeatedly delayed issuing its patents or informing others
26 about them until the DRAM industry committed to making infringing products.”), attached hereto
as Ricketson Decl., Exh 6.
27
11
See Ricketson Decl., Exh 7 (7/10/08 Rambus Press Release).
28
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1 3. A Stay Furthers Judicial Efficiency, Serving the Interests of the Court and the
Parties in Efficient Resolution of this Action
2
3 Finally, here as in FormFactor, judicial efficiency will only be served by a stay of the
4 entire action. The FormFactor court observed:
5 This suit involves four patents, all relating to the assembly of probe
cards for testing semiconductor chips, a significantly technical
6 product . . . the claims remaining in this action relate to the patents
before the ITC because they are related to the same device, same
7 patent family, and same subject matter. As a result, the ITC’s
interpretation of the overlapping patents and the additional patents
8 before it could inform this Court about the claims relating to the
non-overlapping patents and also narrow the issues in this matter.
9
10 Id. (emphasis added).
11 Likewise here the Farmwald and Barth/Ware patents involve the same “significantly
12 technical” subject matter, and all the products accused of infringement in the ITC are also at issue
13 in this case. Proceeding with litigation of the Farmwald patents at this juncture would deprive the
14 Court of potential benefits arising from allowing the ITC investigation to conclude first. Id.
15 (“because of the overlap of the two proceedings, this Court will have the opportunity to review
16 the ITC’s view of the technical questions presented in this case.”).12
17 Finally, as noted above, four of the six Farmwald patents are presently the subject of
18 litigation between Rambus and other defendants, now pending before Judge Whyte in this
19 District. Decisions in those actions, which likely will be forthcoming even before the ITC
20 proceedings are completed, also may have the effect of narrowing or clarifying the issues that will
21 be litigated here.13 For this additional reason, a stay will conserve resources and promote judicial
22
23
24
12
The FormFactor court specifically rejected an argument that differences in discovery issues
25 between the patents were sufficient to outweigh this consideration. Id.
26 13
An additional consideration supporting a stay is the fact that several patents in the Farmwald
family, including some patents at issue in this case, are presently the subject of re-examination
27 proceedings pending before the U.S. PTO. Ricketson Decl. ¶ 8.
28
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1 efficiency. 14 This motion should be granted and Rambus’s patent infringement assertions against
2 NVIDIA should be stayed in full.
3 IV. CONCLUSION
4 In view of the inherent inefficiencies and prejudice to a defendant of defending the same
5 infringement claims in two fora simultaneously, Congress provided for an automatic stay of
6 patent infringement litigation in the district court. While the district court retains discretion to
7 determine what additional patent infringement claims in should also be stayed, where the patent
8 infringement claims and products overlap as they do here, the same inefficiencies and prejudice
9 the automatic stay is designed to prevent call for imposition of a discretionary stay of the
10 remainder of the action. NVIDIA’s motion should be granted in its entirety.
11
Dated: December 4, 2008 ORRICK, HERRINGTON & SUTCLIFFE LLP
12
/s/ Robert W. Ricketson /s/
13 ROBERT W. RICKETSON
Attorneys for Defendant
14 NVIDIA CORPORATION
15
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14
None of these considerations favoring a stay of this entire action are affected by the possibility
25 that the antitrust case brought by NVIDIA against Rambus may soon be pending in this Court.
NVIDIA's affirmative claims can and should proceed, as this forum is the only forum where
26 NVIDIA can seek relief and has been brought to this court at the request of Rambus. Nothing in
that case lessens the prejudice to NVIDIA of being forced to defend against related infringement
27 claims in two fora simultaneously or reduce the judicial inefficiencies.
28
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1 CERTIFICATE OF SERVICE
2 I hereby certify that this document(s) filed through the ECF system will be sent
3 electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
4 and paper copies will be sent to those indicated as non registered participants on December 4,
5 2008.
6
/s/ Robert W. Ricketson /s/
Dated: December 4, 2008 Robert W. Ricketson
7
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C-08-03343 SI

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Case 3:08-cv-03343-SI Document 60 Filed 12/04/2008 Page 1 of 14

1 I. NEEL CHATTERJEE (STATE BAR NO. 173985)

7 Attorneys for Defendant

9 UNITED STATES DISTRICT COURT

10 NORTHERN DISTRICT OF CALIFORNIA

11 SAN FRANCISCO DIVISION

13 RAMBUS, INC., Case No. C-08-03343 SI

14 Plaintiff, NOTICE OF MOTION AND

5 II. FACTUAL BACKGROUND ..........................................................................................2

6 A. Rambus’s Infringement Claims in this Court Are Subject to a Mandatory

4 Alloc, Inc. v. Unilin Decor N.V.,

7 Flexsys Americas, LP, v. Kumho Tire, U.S.A., Inc.,

10 Fuji Photo Film Co., Ltd. v. Benun,

13 Micron Tech., Inc. v. Mosel Vitelic Corp.,

16 SanDisk Corp. v. Phison Electronics Corp.,

2 TO PLAINTIFF RAMBUS, INC. AND ITS ATTORNEYS OF RECORD:

16 N. Am. Co., 299 U.S. 248, 254 (1936).

17 This motion is based on the accompanying Memorandum, the Declaration of Robert W.

19 on file in this case.

20 MEMORANDUM OF POINTS AND AUTHORITIES

2 mandatory stay until a final decision issues from the ITC.

14 II. FACTUAL BACKGROUND

19 imported into this country infringe nine U.S. patents.3

1 instituted an investigation based on Rambus’s complaint.5

17 action is allowed to proceed.

4 controllers).” ITC complaint, ¶ 27, compare FAC at ¶ 11.

19 engaged in substantive discovery or claim construction disclosures.

23 A. Rambus’s Infringement Claims in this Court Are Subject to a Mandatory

2 In a civil action involving parties that are also parties to a

10 this action together, rather than separately.” Id at *2-4.9

1 (2) the hardship or inequity which a party may suffer in being

6 2. Hardship and Inequity to NVIDIA Will Result If a Stay Is Denied

7 As noted above, it would prejudice NVIDIA to require it to defend claims of infringement

22 necessarily lead to “significant overlap in discovery” that warrants imposition of a stay.

4 entire action. The FormFactor court observed:

10 Id. (emphasis added).

16 the ITC’s view of the technical questions presented in this case.”).12

2 NVIDIA should be stayed in full.

10 remainder of the action. NVIDIA’s motion should be granted in its entirety.

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