Micron Technology, Inc. v. Rambus Inc.

255 F.R.D. 135, 2009 U.S. Dist. LEXIS 1260, 2009 WL 54887
CourtDistrict Court, D. Delaware
DecidedJanuary 9, 2009
DocketCiv. No. 00-792-SLR
StatusPublished
Cited by12 cases

This text of 255 F.R.D. 135 (Micron Technology, Inc. v. Rambus Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Micron Technology, Inc. v. Rambus Inc., 255 F.R.D. 135, 2009 U.S. Dist. LEXIS 1260, 2009 WL 54887 (D. Del. 2009).

Opinion

[137]*137OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

This action arises out of a dispute between Micron Technology, Inc., Micron Electronics, Inc., and Micron Semiconductor Products, Inc. (collectively, “Micron”) and Rambus Inc. (“Rambus”) over Micron’s alleged infringement of multiple Rambus patents.1 The case has been trifurcated (D.I. 739), and the court has held a bench trial on the issues of Ram-bus’ alleged spoliation of evidence and unclean hands and the appropriate sanction, if any, arising from those allegations. These issues have been fully briefed post-trial. (D.I. 1074, 1076, 1079, 1083, 1084, 1086, 1087)

II. FINDINGS OF FACT

1. Rambus Inc. (“Rambus”) was founded in March 1990 by Professors Mike Farmwald and Mark Horowitz. (MTX 48 at 0048-0003; RAMTX 212-0004) Rambus has described itself as a technology company employing semiconductor, system architecture, and system packaging technologies. (MTX 48 at 0048-0003) At the outset, Rambus focused on solving the so-called “memory bottleneck” problem — a scenario then foreseen in the industry where microprocessors’ speed would far outstrip the speed at which memory components, such as dynamic random access memory (“DRAM”), transferred data to and from microprocessors. (D.I. 1061 at 1244:6-14; D.I. 1062 at 1670:16-1673:10; RAMTX 212; see also RAMTX 259; D.I. 1061 at 1242:19-1245:7) Farmwald and Horowitz ultimately developed a potential DRAM solution.2 (D.I. 1061 at 1240:14-1241:22, 1257:6-1260:3; RAMTX 211)

2. In April 1990, Farmwald and Horowitz filed a patent application on behalf of Ram-bus containing the DRAM inventions.3 (D.I. 1061 at 1226:6-17) Rambus’ plan was to license its DRAM technology, “RDRAM,”4 to DRAM manufacturers. (D.I. 1062 at 1656— 3:9; D.I. 1061 at 1124:12-23) Rambus’ goal, by making RDRAM widely compatible, was to achieve industry-wide adoption. (D.I. 1061 at 1247:4-1248:4,1123:3-24:23)

3. In 1991, representatives from chip technology owners (including Rambus), chip manufacturers (including Micron), and chip purchasers began meeting through the Joint Electronic Design Engineering Council (“JE-DEC”) (MTX 203 at 2) to discuss and adopt industry-wide standards for computer memory chips.5 (D.I. 1058 at 160:16-161:4) One [138]*138standard these representatives sought was for what became SDRAM.6 (D.I. 1058 at 171:15-18)

4. Starting around this period, Rambus became concerned that DRAM manufacturers were using Rambus’ technology to develop their own competing DRAMs.7 (D.I. 1061 at 1133:5-19, 1135:7-13, 1082:2-1083:9; D.I. 1060 at 798:12-22, 686:2-13) From 1991 to 1995, Rambus representatives took information learned at JEDEC meetings and passed it along to Rambus’ patent prosecution counsel in an effort to solidify and extend Ram-bus’ patent claims to cover SDRAM, DDR SDRAM, and other potentially competing memory types.8 (D.I. 1060 at 693:23-695:21; see also id. at 724:23-725:18, 736:9-21, 798:12-799:8, 806:24-807:14; RAMTX 069; RAMTX 85; MTX 40) Statements made by Rambus employees in 1996 and 1997 reveal that Rambus planned to create a patent “minefield” that it could use to its advantage in dealing with other companies in the industry.9 (MTX 253; MTX 183; MTX 235) Ram-bus wanted to be able to “[g]et all infringers to license our IP with royalties [greater than] RDRAM ... OR sue.” (MTX 279 at ¶ 18(C); see also D.I. 1060 at 751:3-13)

5. On April 30, 1996, the PTO issued to Rambus United States Patent No. 5,513,327 (“the '327 patent”). (MTX 200) Also in 1996, Intel agreed to use RDRAM with its microprocessors. (D.I. 1061 at 1128:22-29:5; D.I. 1062 at 1619:17-1620:2; RAMTX 241) The Intel agreement was “critieal[ly]” significant to Rambus because, at that time, “almost all [personal computers] used Intel’s microprocessor and Intel’s chipset” (D.I. 1061 at 1128:13-18), and personal computers represented approximately half of the total DRAM market. (D.I. 1061 at 1127:14-17) Around that same time, Rambus entered into licensing agreements for RDRAM with eleven of the twelve major DRAM manufacturers, including Micron, with the goal of developing a new version of RDRAM (Direct RDRAM) in conjunction with these manufacturers. (D.I. 1061 at 1148:3-8, 1129:13-1130:6; RAMTX 67)

6. On August 12,1997, the PTO issued to Rambus United States Patent No. 5,657,481 (“the '481 patent”). (MTX 256) A few weeks later, in October 1997, Rambus hired Joel Karp as Vice President of Intellectual Property. (D.I. 1058 at 154:1-4, 291:23-292:1) Prior to joining Rambus, Karp had worked for several years at Samsung, where he participated in patent license negotiations. (D.I. 1059 at 405:5-12) Rambus hired Karp to work on a licensing program for non-Rambus technologies, including SDRAMs and DDR10 DRAMs, that CEO Tate said infringed the Rambus patents.11 (D.I. 1058 at 171:19-175:1) Karp was responsible for “assessing [the Rambus] patent portfolio, determining when chips infringe [the Rambus] patent [139]*139portfolio, setting licensing strategies for infringing chips, and for negotiations with companies that build and sell infringing chips.” (RAMTX 6) When Rambus hired Karp, Tate told him that any company wanting to license Rambus’ present and future patents for infringing DRAM would have to pay a royalty greater than the royalty for RDRAM. (MTX 263) Tate also advised Rambus executives to “have their spin control ready” to “downplay the whole infringemenf/lP issue” that could be raised in the industry by Karp’s hiring. (MTX 263) Tate advised other Ram-bus employees similarly and reminded them that “[asserting the Rambus] patents [is] really just a backup line of defense. [T]he # 1 strategy for winning must continue to be having the best solution____[I] think [Ram-bus is] well positioned to do this but we have a LOT to do to complete our programs/commitments on Direct Rambus and Concurrent Rambus over the next several quarters.” (RAMTX 6; see also D.I. 1061 at 1145:5-1147:3; D.I. 1071 at 154:23-155:14; D.I. 1059 at 405:21—406:24)

7. On January 7, 1998, Tate met with Karp and instructed him to prepare a presentation for the March 1998 Board of Directors (“the Board”) meeting discussing, inter alia, a licensing framework and a litigation strategy. (MTX 385-0022; MTX 270-0006; D.I. 1058 at 182:5-24, 184:9-185:14) Accordingly, Karp called Diane Savage, an attorney practicing in the Cooley Godward law firm’s technology transactions group with whom he had previously worked, and asked to be referred to a litigator. (D.I. 1059 at 597:9-598:15, 441:7-19) Savage then contacted Dan Johnson, a litigation partner at Cooley Godward, and arranged a meeting. (Id. at 599:1-7) Another Cooley Godward attorney, John Girvin, had primary responsibility for assisting Rambus in its engagement — which Cooley Godward identified as concerning “licensing activities” — but Johnson and attorneys Peter Leal and William Winters were also staffed on the Ram-bus matter.12 (RAMTX 83)

8. On January 13, 1998, Karp and Tate met with Leal. (D.I. 1058 at 187:18-188:2; see also

Free access — add to your briefcase to read the full text and ask questions with AI

Related

BDO USA, LLP v. EverGlade Global, Inc.
Superior Court of Delaware, 2023
Rogers v. Averitt Express, Inc.
215 F. Supp. 3d 510 (M.D. Louisiana, 2017)
Danberger v. Danberger
95 A.3d 53 (Delaware Family Court, 2013)
Micron Technology, Inc. v. Rambus Inc.
917 F. Supp. 2d 300 (D. Delaware, 2013)
Hynix Semiconductor Inc. v. Rambus Inc.
897 F. Supp. 2d 939 (N.D. California, 2012)
Micron Technology, Inc. v. Rambus Inc.
645 F.3d 1311 (Federal Circuit, 2011)
Hynix Semiconductor Inc. v. Rambus Inc.
645 F.3d 1336 (Federal Circuit, 2011)
Beard Research, Inc. v. Kates
981 A.2d 1175 (Court of Chancery of Delaware, 2009)

Cite This Page — Counsel Stack

Bluebook (online)
255 F.R.D. 135, 2009 U.S. Dist. LEXIS 1260, 2009 WL 54887, Counsel Stack Legal Research, https://law.counselstack.com/opinion/micron-technology-inc-v-rambus-inc-ded-2009.