Mckool 397228V2

Case3:08-cv-03343-SI Document243
Filed08/29/11 Page1 of 9
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A PROFESSIONAL CORPORATION ATTORNEYS DALLAS, TEXAS
Mike McKool, Jr. (pro hac vice) Douglas Cawley (pro hac vice) McKOOL SMITH P.C. 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4000 Facsimile: (214) 978-4044 Email: mmckool@mckoolsmith.com; dcawley@mckoolsmith.com Scott L. Cole (pro hac vice) Pierre J. Hubert (pro hac vice) Craig N. Tolliver (pro hac vice) McKOOL SMITH P.C. 300 W. 6th Street, Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Facsimile: (512) 692-8744 Email: scole@mckoolsmith.com; phubert@mckoolsmith.com; ctolliver@mckoolsmith.com Attorneys for Plaintiff RAMBUS INC.
J. Daniel Sharp (CSB No. 131042) CROWELL & MORING LLP 275 Battery Street, 23rd Floor San Francisco, California 94111 Telephone: (415) 986-2800 Facsimile: (415) 986-2827 Email: dsharp@crowell.com
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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA, SAN FRANCISCO DIVISION RAMBUS INC., Case No. C-08-03343 SI RAMBUSS NOTICE OF MOTION AND MOTION: 1) TO COMPEL NVIDIA TO PROVIDE ITS PATENT LOCAL RULE 4-1 SUBMISSION NVIDIA FAILED TO PROVIDE BY THE COURT-ORDERED DEADLINE AND 2) FOR EXPEDITED BRIEFING AND HEARING SCHEDULE Date: TBD Time: TBD Judge: Honorable Susan Illston
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Rambuss Motion 1) to Compel NVIDIAs P.L.R. 4-1 Submission and 2) for Expedited Scheduling Case No. C-08-03343 SI McKool 397228v2
Plaintiff, v. NVIDIA CORPORATION, Defendant.
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NOTICE OF MOTION AND MOTION TO COMPEL AND FOR EXPEDITED BRIEFING AND HEARING SCHEDULE TO DEFENDANT NVIDIA CORPORATION AND ITS ATTORNEYS OF RECORD: PLEASE TAKE NOTICE that plaintiff Rambus Inc. (Rambus) moves the Court for an order compelling defendant NVIDIA Corporation (NVIDIA) to provide its overdue Patent Local Rule 4-1 (P.L.R.) submission that NVIDIA failed to provide by the Court-ordered August 26th deadline, to be heard in the Courtroom of the Honorable Susan Illston in the United States District Court for the Northern District of California, at 450 Golden Gate Avenue, San Francisco, California. This motion is based on the accompanying Memorandum, all pleadings and papers of record or on file in this action, and on such other and further written and oral argument and authorities as may be presented at or before the hearing on this matter. The relief Rambus seeks is an order compelling NVIDIA to comply within two (2) business days with P.L.R. 4-1. Expedited Briefing and Hearing Schedule In accordance with Civil Local Rule 6-2, Rambus requests expedited consideration and briefing of its motion to be completed before September 16th because NVIDIAs P.L.R. 4-1 disclosure of claim terms NVIDIA contends should be construed is already overdue, and the Court set a September 16th deadline for the parties to exchange proposed constructions of claim terms that were to be identified in the parties P.L.R. 4-1 disclosures ordered to be exchanged by August 26th. (Decl. of Pierre J. Hubert in Support of Rambuss Motion filed herewith (Hubert Decl.), 2.) Rambus will be further prejudiced if NVIDIA continues to withhold its P.L.R. 4-1 statement1 or refuses to provide its proposed claim constructions and supporting materials under NVIDIAs position appears to be that Discovery Master Infantes recent order (which stays Rambuss infringement-related discovery as to accused products for a handful of days after Rambus presents reformatted and amended infringement contentions) somehow disrupts the P.L.R. 4-1 deadline. As set forth in Rambuss Memorandum infra, NVIDIAs position is unavailing and does not excuse NVIDIAs noncompliance with the existing schedule. First, NVIDIAs own affirmative claims of patent invalidity are pending, and claim construction including an exchange under P.L.R. 4-1 is required under the Courts schedule for NVIDIAs claims. Discovery Master Infantes order on its face is tailored to implement a short stay on Rambuss infringement-related discovery as to accused products but does not disturb or extend
Rambuss Motion 1) to Compel NVIDIAs P.L.R. 4-1 Submission and 2) for Expedited Scheduling Case No. C-08-03343 SI McKool 397228v2 1
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P.L.R. 4-2 by the Courts September 16th deadline. (Id. at 3.) Without NVIDIAs P.L.R. 4-1 disclosure identifying claim terms NVIDIA proposes to be construed, Rambus does not know which such terms to address in its P.L.R. 4-2 submission due on September 16th. (Id.) Further, P.L.R. 4-2, and thus the Courts order, mandate a bilateral, simultaneous exchange of such materials, and Rambus will be prejudiced by unilaterally disclosing its positions if NVIDIA fails to meet the Courts September 16th deadline as it failed to meet the Courts August 26th deadline. (Id.) Rambus advised NVIDIA that Rambus would move to compel NVIDIA to comply with the Courts order if NVIDIA failed to provide its P.L.R. 4-1 submission (Id. at Ex. 3). Rambus invited NVIDIA to meet-and-confer on August 26th and also made itself available to NVIDIA throughout the weekend of August 27-28 to discuss, but NVIDIA did not respond. (Id. at 9, Ex. 3.) On August 29th, Rambus counsel contacted NVIDIA counsel and inquired whether NVIDIA would agree to Rambuss motion, and NVIDIA indicated it would oppose. (Id. at 9.) Rambus therefore requests that this motion be heard no later than September 9, 2011, that any opposition to this motion be due by September 6th and any reply be due on September 7th, as set forth in the accompanying proposed order.
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the dates of NVIDIAs affirmative counterclaim of patent invalidity, the due date of NVIDIAs invalidity contentions, or any of the dates for claim construction including the P.L.R. 4-1 date. Indeed, NVIDIAs motion preceding that order never sought disruption of the P.L.R. 4-1 deadline or any subsequent Markman deadlines. Second, it is black letter law that claim construction is done without an eye to the accused devices, so there is no reason not to proceed with the beginnings of the claim construction process, including P.L.R. 4-1, in parallel with Rambus reformatting and amending its contentions regarding accused devices into an easier-tounderstand format. 2
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MEMORANDUM OF POINTS AND AUTHORITIES I. INTRODUCTION AND SUMMARY OF ARGUMENT Rambus moves that the Court order NVIDIA to provide, within two (2) business days, NVIDIAs overdue Patent Local Rule (P.L.R.) 4-1 submission that NVIDIA failed to provide by the Courts August 26th deadline.2 Rambus believes that expedited review is warranted to prevent NVIDIA from gaining (by default through noncompliance) the months-long extension of all current claim construction deadlines that it has indicated it will seek via motion. At the June 24, 2011 case management conference, the Court and the parties discussed a claim construction schedule, including dates for any NVIDIA counterclaim of invalidity, any invalidity contentions, and dates for submissions under P.L.R. 4-1 et seq. Pursuant to that
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schedule, NVIDIA filed an affirmative counterclaim of patent invalidity and later served materials styled Invalidity Contentions (the latter which Rambus is still reviewing for sufficiency). The next date on the schedule, set by explicit order of the Court, is the August 26th date for Patent Local Rule 4-13 exchange of proposals for claim terms to be construed. By email received by Rambuss counsel on August 26th, the day of the deadline, NVIDIA proposed that the parties change the claim construction schedule, and indicated that NVIDIA would file a motion to alter the deadline if Rambus did not agree to seek a change to the schedule. Rambus Rambus directs the present motion to the Court because it is the Courts deadline for the exchange of claim terms to be construed with which NVIDIA has not complied. Rambus understands that NVIDIAs noncompliance with the Courts schedule is based upon a misapplication of an order entered by Discovery Master Infante, and Rambus is providing a courtesy copy of this motion to Discovery Master Infante so that he may provide any guidance deemed appropriate. 3 P.L.R. 4-1 provides in part: (a) Not later than 14 days after service of the Invalidity Contentions pursuant to Patent L.R. 3-3, each party shall serve on each other party a list of claim terms which that party contends should be construed by the Court, and identify any claim term which that party contends should be governed by 35 U.S.C. 112(6). (b) The parties shall thereafter meet and confer for the purposes of limiting the terms in dispute by narrowing or resolving differences and facilitating the ultimate preparation of a Joint Claim Construction and Prehearing Statement. The parties shall also jointly identify the 10 terms likely to be most significant to resolving the parties dispute, including those terms for which construction may be case or claim dispositive. 3
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refused to seek to alter the schedule, however, given that NVIDIA provided no good reason to do so. Rambus provided its P.L.R. 4-1 submission to NVIDIA on the August 26th deadline.
NVIDIA did not provide its own P.L.R. 4-1 submission to Rambus despite the Courts deadline, and also did not file any motion seeking relief on August 26th. Based on NVIDIAs eleventh hour correspondence, NVIDIAs argument appears to be that Discovery Master Infantes recent order (which stays Rambuss infringement-related discovery as to accused products for a handful of days after Rambus amends and presents its infringement contentions in a different format) somehow disrupts the P.L.R. 4-1 deadline. NVIDIAs position is unavailing and does not excuse NVIDIAs noncompliance with the existing schedule. First, NVIDIAs own affirmative claims of patent invalidity are pending, and claim construction including an exchange under P.L.R. 4-1 is required under the Courts schedule for NVIDIAs claims. Discovery Master Infantes order on its face is tailored to implement a short stay on Rambuss infringement-related discovery of accused products but does not disturb or extend the dates of NVIDIAs affirmative counterclaim of patent invalidity, the due date of NVIDIAs invalidity contentions, or any of the dates for claim construction including the P.L.R. 4-1 date. Indeed, NVIDIAs motion preceding that order never sought disruption of the P.L.R. 4-1 deadline or any subsequent Markman deadlines. Second, it is black letter law that claim construction is done without an eye to the accused devices, so there is no reason not to proceed with the beginnings of the claim construction process, including P.L.R. 4-1, in parallel with Rambus reformatting and amending its contentions regarding accused devices into an easier-to-understand format. The Court should order NVIDIA to comply with the Courts schedule, and order NVIDIA to provide its now-overdue 4-1 Statement within two (2) days. II. THE PARTIES WERE REQUIRED TO EXCHANGE P.L.R. 4-1 STATEMENTS ON AUGUST 26, 2011 During the June 24th CMC, the Court rejected all of NVIDIAs arguments for phasing and delay and indicated that this case is to proceed. The parties then stipulated that NVIDIAs 4
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invalidity contentions would be due on August 12th and also agreed to subsequent dates for claim construction proceedings, including the August 26th deadline for the P.L.R. 4-1 exchange. This is memorialized in the Courts June 28th Order providing that [t]he Court adopted counsels stipulated patent schedule. (Dkt. 214, at 1.)4 Pursuant to the stipulated schedule, on August 1st, NVIDIA filed its answer to Rambuss complaint and counterclaimed that Rambuss patent claims were invalid. (Dkt. No. 228, at 50, 122-125.) On August 12th, NVIDIA served materials styled Invalidity Contentions (which Rambus is still reviewing for sufficiency). (Hubert Decl., 6.) On August 24th, Discovery Master Infante issued a short stay on
infringement-related discovery, but did not grant NVIDIA's requested relief regarding invalidity contentions, and did not alter the Courts claim construction schedule. (Dkt. No. 241.) On August 26th, whereas Rambus provided its 4-1 Statement to NVIDIA, NVIDIA indicated that it would not be providing any 4-1 Statement to Rambus, but instead would be filing a motion seeking to alter the Courts schedule. (Hubert Decl., 10, Ex. 3.) III. NVIDIA HAS NOT PROVIDED ANY P.L.R. 4-1 SUBMISSION At 12:54 a.m. on August 26ththe day of the P.L.R. 4-1 deadlineRambuss counsel received an email from NVIDIA wherein NVIDIA indicated for the first time that NVIDIA did
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not intend to meet the deadline for the parties P.L.R. 4-1 exchange. NVIDIA propose[d] that 18 Rambus and NVIDIA submit a new stipulated schedule and stated that [s]hould Rambus be 19 unwilling to agree to a new stipulated schedule, NVIDIA is prepared to submit an administrative 20 motion to the Court requesting a new scheduling order. (Id. at Ex. 1.) 21 22 Court-ordered claim construction deadlines, pointing out that the parties dispute regarding 23 24 25 26 27 28 NVIDIAs new argument that Rambuss infringement contentions are insufficient so as to preclude a P.L.R. 4-1 exchange is unavailing, as NVIDIA had raised its position prior to the parties reaching the stipulated schedule including the P.L.R. 4-1 date. Indeed, one week in advance of the June 24th Case Management Conference (CMC), NVIDIA dedicated a section of the case management statement to its allegation that Rambus Has Provided Insufficient Infringement Contentions. (Dkt. 212, Ex. B, II.B.) Yet at the June 24th CMC, the parties reached a stipulated schedule as to claim construction including the August 26th date for P.L.R. 4-1. 5
Rambuss Motion 1) to Compel NVIDIAs P.L.R. 4-1 Submission and 2) for Expedited Scheduling Case No. C-08-03343 SI McKool 397228v2 4
On the afternoon of August 26th, Rambus responded that there is no reason to change the
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NVIDIAs understanding of what products are accused should not delay claim construction, which is decided as a matter of law and without an eye to accused products. (Id. at Ex. 2.) Rambus also noted that claim construction is necessary to adjudicate NVIDIAs invalidity claims, and that Discovery Master Infantes recent order certainly did not disrupt the Courts schedule. (Id.) NVIDIA responded that it would file a motion requesting a new scheduling order. (Id. at Ex. 3.) Rambus provided its P.L.R. 4-1 statement to NVIDIA on time. (Id. at 10). Rambus also advised NVIDIA that Rambus would move to compel NVIDIA to comply with the Courts order if NVIDIA failed to provide its P.L.R. 4-1 submission (Id. at Ex. 3). Rambus invited NVIDIA to meet-and-confer on August 26th and also made itself available to NVIDIA throughout the weekend of August 27-28th to discuss, but NVIDIA did not respond. (Id. at Ex. 3, 9) Although NVIDIA indicated that it would move the Court for a new scheduling order so that it would not have to meet the P.L.R. 4-1 deadline (id. at Ex. 3), NVIDIA did not file any such motion by August 26th. NVIDIA failed to meet its Court-ordered August 26th deadline, without apprising the Court or filing any motion in advance. IV. NVIDIAS EXPLANATION FOR ITS FAILURE TO COMPLY IS UNAVAILING NVIDIAs argument appears to be that Discovery Master Infantes recent order (which stays Rambuss infringement-related discovery as to accused products for a handful of days after Rambus presents its amended infringement contentions in a different format) somehow disrupts the claim construction schedule. NVIDIAs position is unavailing and does not excuse
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NVIDIAs noncompliance with the existing schedule. Discovery Master Infantes order on its face is tailored to implement a short stay on Rambuss infringement-related discovery as to accused products. Rambus had provided detailed infringement contentions, numbering over 1500 pages, including hundreds of pages of claim charts, lists of known accused products, and reverse engineering waveforms. Discovery Master 6
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Infante ordered Rambus, however, to reformat and amend its infringement contentions, and Rambus intends to fully comply with Discovery Master Infantes order to amend and make its contentions more straightforward.5 Although Discovery Master Infantes order stays Rambuss infringement-related discovery of accused products for a few days, it has no effect on the Courts 4-1 deadline in the Courts Markman schedule. NVIDIAs own affirmative claim of patent invalidity requires claim construction. NVIDIA has asserted claims alleging that Rambuss patents are invalid (Dkt. No. 228, at 50, 122-125) and has served materials styled Invalidity Contentions (which Rambus is still reviewing for sufficiency) (Hubert Decl., 6). Claim construction is a necessary part of adjudication of NVIDIAs affirmative claims and the Courts schedule in that regard should not be disturbed. Discovery Master Infantes order does not disturb or extend the due dates of NVIDIAs affirmative counterclaim of patent invalidity, the due date of NVIDIAs invalidity contentions, or any of the dates for claim construction set in place by the Court based in part on the parties and the Courts schedule. NVIDIAs motion preceding that order never sought disruption of the Court-ordered deadline for P.L.R. 4-1. In sum, the short delay as to
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infringement-related discovery for accused products will not affect claim construction required for disposition of NVIDIAs affirmative claims. Further, even though Rambuss infringement-related discovery as to accused devices is stayed for a few days, it is black letter law that claim construction, a matter of law, is done without an eye to the accused devices. See, e.g., Neomagic Corp. v. Trident Microsystems, 287 F.3d 1062, 1074 (Fed. Cir. 2002) (It is well settled that claims may not be construed by reference to the accused device.); SRI Int'l. v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc) (A claim is construed in light of the claim language, the other claims, the prior art, the prosecution history, and the specification, not in light of the accused
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Rambus intention to fully comply with, rather than appeal, Discovery Master Infantes order is based on Rambuss understanding that a short stay as to infringement-related discovery on accused products has no effect on P.L.R. 4-1 and the beginnings of the current Markman schedule. 7
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device.). Therefore a slight delay associated with Rambus repackaging and amending its contentions regarding accused devices has no effect on the commencement of the claim construction process, including the exchange of P.L.R. 4-1 Statements. V. CONCLUSION NVIDIAs argument regarding P.L.R. 4-1 is unavailing. For the foregoing reasons,
6 Rambus respectfully requests that the Court order an expedited briefing and hearing schedule, 7 and order NVIDIA to comply with Patent Local Rule 4-1 within two (2) business days. 8 9 10
DATED: August 29, 2011
Respectfully submitted, MCKOOL SMITH P.C. CROWELL & MORING LLP By: /s/ Pierre J. Hubert Pierre J. Hubert Attorneys for Plaintiff RAMBUS INC.
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Case3:08-cv-03343-SI Document243

Plaintiff, v. NVIDIA CORPORATION, Defendant.

DATED: August 29, 2011

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