Case 5:05-cv-00334-RMW Document 2304 Filed 09/25/2008 Page 1 of 7

1 ROBERT E. FREITAS (STATE BAR NO. 80948)

CRAIG R. KAUFMAN (STATE BAR NO. 159458)
2 VICKIE L. FEEMAN (STATE BAR NO. 177487)
THERESA E. NORTON (STATE BAR NO. 193530)
3 ORRICK, HERRINGTON & SUTCLIFFE LLP
1000 Marsh Road
4 Menlo Park, CA 94025
Telephone: +1-650-614-7400
5 Facsimile: +1-650-614-7401
6 Attorneys for Defendants and Counterclaim Plaintiffs
NANYA TECHNOLOGY CORPORATION and
7 NANYA TECHNOLOGY CORPORATION USA
8
UNITED STATES DISTRICT COURT
9
NORTHERN DISTRICT OF CALIFORNIA
10
SAN JOSE DIVISION
11

12
RAMBUS INC., Case No. CV-05-003334 RMW
13
Plaintiff, NANYA TECHNOLOGY
14 CORPORATION’S OPPOSITION TO
v. RAMBUS’ MOTION TO COMPEL
15 NANYA TECHNOLOGY
HYNIX SEMICONDUCTOR INC.; HYNIX CORPORATION TO PRODUCE
16 SEMICONDUCTOR AMERICA, INC.; DOCUMENTS
HYNIX SEMICONDUCTOR
17 MANUFACTURING AMERICA, INC., Date: October 2, 2008
Time: 9:00 a.m.
18 SAMSUNG ELECTRONICS CO., LTD., Location: Telephonic Hearing
SAMSUNG ELECTRONICS AMERICA, Judge: Hon. Read Ambler (Ret.)
19 INC., SAMSUNG SEMICONDUCTOR,
INC., SAMSUNG AUSTIN
20 SEMICONDUCTOR, L.P.,

21 NANYA TECHNOLOGY CORPORATION,

NANYA TECHNOLOGY CORPORATION
22 USA,

23 Defendants.

24
AND RELATED ACTIONS.
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NANYA’S OPPOSITION TO RAMBUS’ MOTION TO COMPEL
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1 Plaintiff Rambus, Inc. (“Rambus”) seeks the production of two highly confidential and
2 irrelevant documents.1 There is no basis to produce these documents, as they are irrelevant to the
3 calculation of a reasonable royalty rate during a hypothetical negotiation taking place in 2001.
4 The first document, an agreement between Nanya Technology Corporation (“Nanya”) and
5 Fujitsu, (the “Fujitsu Agreement”), was executed on September 2, 2008. Such a recent agreement
6 is both outside of the discovery period and bears no relevance to a hypothetical negotiations in
7 2001. The second document, the Nanya and Micron Joint Venture Agreement (“JV Agreement”),
8 has no relevance to the royalty rate of the hypothetical negotiation because it is simply not a
9 patent license agreement. The Court should deny Rambus’ motion because these documents are
10 irrelevant and are not responsive to any legitimate discovery request. Moreover, Rambus’ motion
11 is untimely in violation of the Court’s local rules.
12 I. BOTH NANYA AND MICRON TIMELY OBJECTED TO THE PRODUCTION
OF THE DOCUMENTS RAMBUS SEEKS TO COMPEL
13

14 In its response to Rambus’ fourth set of requests for documents, Nanya objected that the
15 requests, including requests 20-A and 48-A, were not sufficiently limited in time. Declaration of
16 Matthew T. Powers (“Powers Decl.”) in support of Rambus’ motion, ¶ 3 and Ex. 2 at page 4
17 (Nanya’s General Objection Number 18). Nanya also objected to the requests to the extent they
18 sought documents that were irrelevant and not reasonably calculated to lead to the discovery of
19 admissible evidence. Id., ¶ 3 and Ex. 2 at page 1 (Nanya’s General Objection Number 3). In
20 addition, Nanya objected to Request No. 48-A on the grounds that it was “vague, ambiguous,
21 overly broad and unduly burdensome and not reasonably calculated to lead to admissible
22 evidence.” Id., ¶ 3 and Ex. 2 at pages 31-32.
23 On April 21, 2008, Nanya entered into the JV Agreement with Micron Technology, Inc.
24 (“Micron”). Norton Decl. at ¶ 2. As part of the JV Agreement, Nanya and Micron also executed
25 two Technology Transfer License Agreements (“TTLAs”). These TTLAs specifically exclude
26 patent rights from the scope of the JV Agreement. Id. at ¶¶ 2-3.
27 1
In its motion, Rambus also sought the production of a third document, the Samsung/Nanya
license agreement. Nanya will agree to produce this document, and has requested permission
28 from Samsung to do so.
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1 On May 9, 2008, Rambus propounded to Micron document requests identical to requests

2 No. 20-A and 48-A to Nanya. Norton Decl., ¶ 5 and Exh. A. Micron served its objections and
3 responses to these discovery requests on June 12, 2008. Id. at ¶ 6 and Exh. B. Nanya believes
4 that in August 2008, Rambus met and conferred with Micron, requesting the production of the JV
5 Agreement from Micron. Norton Decl., ¶ 7. Nanya believes that Micron informed Rambus that
6 Micron would not produce the JV Agreement because the Agreement was not a patent license
7 agreement between Micron and Nanya. Id. Rambus did not move to compel Micron to produce
8 the JV Agreement. Id. Rambus did not meet and confer with Nanya regarding the production of
9 the JV Agreement during August 2008. Id.
10 On September 8-9, 2008, Rambus deposed Nanya’s 30(b)(6) witness on sales and
11 licensing issues, Dr. Pei Lin Pai. Dr. Pai initially testified that he thought the JV Agreement
12 encompassed a patent license. Powers Decl., ¶ 11 and Exh. 10 at 86:14-87:3. However, after
13 conferring with Suzanne Cho, Director of the Legal Division, who was in charge of drafting and
14 negotiating the JV Agreement, Dr. Pai corrected his testimony to say that the JV Agreement was
15 not a patent license agreement. Id., ¶ 11 and Exh. 10 at 120:1-7; 121:15-24.
16 Fact discovery closed on August 29, 2008. Pursuant to Local Rule 26-2, motions to
17 compel fact discovery were to be filed by September 10, 2008. The Fujitsu Agreement was
18 executed on September 2, 2008, after discovery had already closed. Norton Decl., ¶ 8. Rambus
19 knew of the existence of the Fujitsu Agreement at least by September 3, 2008. Powers Decl. at
20 Exhs. 6-7; Norton Decl., ¶ 8. However, Rambus did not move to compel the production of the
21 Fujitsu Agreement until September 15, 2008.
22 II. GOOD CAUSE DOES NOT EXIST TO COMPEL PRODUCTION OF THESE
DOCUMENTS
23

24 As the moving party, Rambus carries the burden to demonstrate actual and substantial
25 prejudice from the denial of the documents. See The Rutter Group, Federal Civil Procedure
26 Before Trial ¶ 11:2379.1 (2008). Good cause must also be shown in order to obtain an order
27 compelling the production of discovery. See Fed. R. Civ. P. 26(b)(1). As discussed below,
28 Rambus cannot meet this burden because a) Rambus waived its right to seek this discovery by
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1 filing an untimely motion; b) neither document Rambus seeks is relevant; and c) the Fujitsu
2 Agreement is not discoverable as it was executed after the close of discovery.
3 A. Rambus’ Motion Is Untimely And Barred By Local Rule 26-2.
4 September 10, 2008 was the last day to file discovery motions. See L.R. 26-2 (motion to
5 compel discovery must be filed within seven court days after fact discovery deadline). Absent
6 special circumstances, a motion to compel discovery filed after the deadline must be denied. See,
7 e.g., Draper v. Coombs, 792 F.2d 915, 924 (9th Cir. 1986) (finding no abuse of discretion by
8 district court for denying motion to compel filed late). See also Gault v. Nabisco Biscuit Co., 184
9 F.R.D. 620, 622 (D. Nev. 1999) (absent unusual circumstances, motions to compel should be filed
10 before scheduled date).
11 Here, there are no special circumstances. The JV Agreement was executed in April 2008.
12 Rambus knew of the existence of this document, as evidenced by its meet and confer
13 communications on this issue with Micron during August 2008, but chose not to move to compel
14 its production at that time. Similarly, there are no special circumstances with respect to the
15 Fujitsu Agreement. Rambus knew of its existence at least by September 3, 2008, a week before
16 the motion deadline. Rambus’ motion is untimely, with no special circumstances excusing the
17 delay, and the Court should deny it on this ground alone.
18 B. The Documents Sought Are Irrelevant And Not Responsive To Rambus’
Discovery Requests.
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20 Rambus argues that the Fujitsu Agreement and the JV Agreement are relevant because
21 they purportedly relate to the determination of a reasonable royalty rate in this matter. See
22 Rambus’ motion at 5:24-25. This is not accurate. Rambus itself has argued that the hypothetical
23 negotiation in this case would have taken place in January 2001.2 Norton Decl., ¶ 9 and Exh. C
24 at page 12. The royalty rate contained in the Fujitsu Agreement, executed in September 2008,
25 seven years later, is very remote in time to the hypothetical negotiation date, and would have very
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Nanya does not agree that this is the appropriate date for the hypothetical negotiation. In any
27 event, Nanya agrees that the date was no later than 2001. Thus, the Fijitsu agreement would be
too remote in time to be relevant regardless of whether the Court uses Nanya’s or Rambus’ date
28 for the hypothetical negotiation.
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1 little relevance to a determination of what the parties would have considered reasonable back in
2 2001. The Fujitsu Agreement is a highly confidential document, and its production would serve
3 no utility or purpose.
4 In the same way, the JV Agreement is not relevant. It specifically excludes patent rights
5 from its scope. Dr. Pai’s initial misstatement and subsequent clarification of the nature of the JV
6 Agreement should not be a basis for finding good cause to compel Nanya to produce an irrelevant
7 document. In any event, even if it included the licensing of patents – which it does not – like the
8 Fujitsu Agreement it is too remote in time to be relevant to a hypothetical negotiation that would
9 have occurred in 2001.
10 Rambus also contends that Nanya has waived its objections to producing these documents.
11 However, this is not accurate; Nanya did assert the objections at issue here in its Responses.
12 Nanya’s General Objection No. 18, that the document requests were not sufficiently limited in
13 time, applies to requests Nos. 20-A and 48-A. Powers Decl., ¶ 3 and Exh. 2 at page 4. Nanya’s
14 General Objection No. 3 that the requests sought irrelevant documents, equally applies to these
15 requests. Id., ¶ 3 and Exh. 2 at page 1. Further, Nanya specifically objected to request No. 48-A
16 as vague, ambiguous, and irrelevant. Id., ¶ 3 and Exh. 2 at pages 31-32.
17 C. Nanya Has Complied With Its Duty To Supplement Under Rule 26(e).
18 Rule 26(e) of the Federal Rules of Civil Procedure requires a supplementation of
19 discovery responses if the “party learns in some material respect the disclosure or response is
20 incomplete or incorrect.” Fed. R. Civ. P. 26(e)(1)(A). At the time of its discovery responses on
21 June 11, 2008 and at the fact discovery cut-off date of August 29, 2008, Nanya’s discovery
22 responses and production were complete. Nanya had fulfilled its obligations in producing all
23 documents that were responsive to the discovery requests.
24 The Fujitsu Agreement was executed on September 2, 2008, after the close of discovery.
25 The duty to supplement under Rule 26(e) is only triggered if the newly discovered information
26 materially changes the response. See also 8 Wright & Miller, Federal Practice and Procedure
27 § 2049.1 (2d ed. 2008). The subsequent creation of the Fujitsu Agreement cannot be said to
28 materially change the completeness of Nanya’s response as of the close of discovery. Nor is the
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1 Fujitsu Agreement material. The purpose of Rambus’ discovery requests was to determine a
2 reasonable royalty rate in this matter. The royalty rate of the Fujitsu Agreement – more than
3 seven years later – has no relevance to a hypothetical negotiation that would have taken place in
4 January 2001. Since the Fijitsu Agreement is irrelevant and clearly falls within Nanya’s
5 objections to Rambus’ overbroad discovery requests, there is no duty to supplement production
6 with this document. Nanya’s discovery responses remain complete and correct after the
7 execution of the Fujitsu Agreement.
8 Rambus cites U.S. v. Boyce, 148 F.Supp. 2d 1069, 1088 (S.D. Cal. 2001) for the
9 proposition that the duty to supplement under Rule 26(e) includes documents that were created
10 after the close of discovery. However, Boyce only discusses documents that the deponents did
11 not have when they were deposed. 148 F. Supp. at 1088. Boyce does not address the issue of
12 documents created after the close of fact discovery. To extrapolate the finding in Boyce to create
13 an obligation for a party to produce documents that did not exist until after close of fact discovery
14 would render this deadline useless. If Rambus’ proposition is to be applied, the result is that
15 discovery would be endless. Such a proposition is neither tenable nor contemplated under the
16 Case Management Order in this matter which set August 29, 2008 as the fact discovery cut-off.
17 D. In The Alternative, Nanya Would Be Willing To Produce The Documents To
The Court For An In Camera Review.
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19 As set forth above, neither the Fujitsu Agreement nor the JV Agreement are relevant to a
20 hypothetical negotiation of the royalty rate in 2001. The JV Agreement does not contain
21 provisions relating to patent licensing. However, should the Court nevertheless prefer to review
22 these documents before ruling on Rambus’ motion, Nanya is willing, in the alternative, to
23 produce the documents to the Court for an in camera review to confirm Nanya’s representations.
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1 IV. CONCLUSION
2 For the foregoing reasons, Nanya respectfully requests that the Court deny Rambus’
3 untimely motion seeking the production of irrelevant documents.
4

5 Respectfully submitted,
6 Dated: September 25, 2008 ROBERT E. FREITAS
CRAIG R. KAUFMAN
7 VICKIE L. FEEMAN
THERESA E. NORTON
8
Orrick, Herrington & Sutcliffe LLP
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/s/ Theresa E. Norton
11 THERESA E. NORTON
Attorneys for Defendants and Counterclaim
12 Plaintiffs
NANYA TECHNOLOGY CORPORATION and
13 NANYA TECHNOLOGY CORPORATION USA
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OHS West:260516935.2
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