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GREGORY P. STONE (SBN 078329) gregory.stone@mto.com PETER E. GRATZINGER (SBN 228764) peter.gratzinger@mto.com JEFFREY Y. WU (SBN 248784) jeffrey.wu@mto.com KEITH R.D. HAMILTON (SBN 252115) keith.hamilton@mto.com DAVID H. PENNINGTON (SBN 272238) david.pennington@mto.com MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, 35th Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 PETER A. DETRE (SBN 182619) peter.detre@mto.com MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (415) 512-4077 Attorneys for Plaintiff RAMBUS INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION RAMBUS INC., Plaintiff, v. STMICROELECTRONICS N.V.; STMICROELECTRONICS INC., Defendants. Case No. 3:10-cv-05449 RS RAMBUS INC'S OPPOSITION TO DEFENDANTS MOTION FOR RELIEF FROM NONDISPOSITIVE PRETRIAL ORDER OF SPECIAL MASTER DATED FEBRUARY 21, 2013

RAMBUS INC'S OPPOSITION TO DEFENDANTS MOTION FOR RELIEF FROM FEB. 21 ORDER CASE NO. 3:10-CV-05449 RS
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I.

INTRODUCTION After multiple motions and hearings over the course of six months regarding STMicros

grossly inadequate document production, Judge Walker ordered STMicro to provide a declaration of an STMicro officer, director, or managing agent within this Courts personal jurisdiction setting forth under penalty of perjury what STMicro did to search for documents, and attesting to the adequacy of that search. See Ex. A (Order) to the Pennington Declaration (Decl.). Judge Walker explained the reasoning behind his Order at the most recent hearing on the issue: [I]t appears that we may be moving to a point at which there will be a motion on [Rambuss] part for sanctions for failure to comply with discovery obligations. That requires a specific court order. See Ex. B (Feb. 21, 2013 Tr.) at 10:22-25. STMicro objects to Judge Walkers Order on two grounds: (1) the relevant executive does not live in this district; and, (2) it would be impossible for him to attest that no other documents exist. Mot. at 1. Neither objection is valid. STMicro has indicated that a managing agent in Texas has the relevant knowledge about STMicros document collection efforts, and that agent can easily agree to submit to the jurisdiction of this Court, or submit a declaration and ask to be relieved of the personal jurisdiction requirement, but STMicro has chosen to do neither. As to its second objection, STMicro ignores the paragraph of the Order which provides that if the executive cannot attest that no other documents exist, then he or she shall describe in full the reasons that said responses are not complete and shall identify the responsive documents that exist but have not been produced. See Order. Judge Walker is not nave about how discovery or document collection works. His Order included this option to avoid the spurious argument STMicro now makes that the Order is impossible to comply with. The STMicro declarant could have complied with the Order by describing any additional sources of potentially responsive documents that were not searched, and the reasons they were not searched. The real reason that STMicro is so keen to avoid Judge Walkers Order is that it has not, in fact, complied with its discovery obligations. This litigation involves multiple patents and over 100 infringing products that STMicroa global company with over 40,000 employees developed, made, and sold over the course of six years. Rambus has produced over 1.3 million -120236240.3

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documents in this litigation. After over a year of discovery and with the fact discovery cutoff fast approaching, STMicro has produced approximately 3,000 documents. About half of the documents produced by STMicro are a jumble of invoices and shipping documents. Much of the other half is made up of SEC filings and other public documents. STMicro has produced fewer than one email per accused product, and most of those are emails with Rambus. For numerous accused products, there are no documents at allno design, technical, marketing, or sales documents, all of which are called for by Rambuss requests. Rambus is entitled to relief, and Judge Walkers Order is a sensible first step toward either pushing STMicro to take its discovery obligations seriously, or to sanctioning STMicro for its failure to do so. The Order should be affirmed. II. PROCEDURAL HISTORY A. First Motion To Compel

On August 24, 2012, faced with the glaring deficiencies outlined above, Rambus moved to compel documents responsive to its Requests for Production 4, 5, 8, 14, and 31. These requests seek design, development, testing, manufacturing, marketing, and sales documents, including emails, related to the accused products, as well as documents related to Rambus. See Ex. C. At the September 14, 2012 hearing on Rambuss motion to compel, STMicro did not argue the relevance of these requests, and had previously agreed to produce responsive documents. See Ex. D (Sep. 14, 2012 Tr.) at 43:12-45:24, 47:2-23; Ex. C. Instead, its opposition pointed to a lastminute promise made by letter the same day Rambuss motion was filed that a complete production was on the way. Ex. E. STMicro told Judge Walker and Rambus that its production responsive to the requests would be substantially complete by September 28, 2012. See Ex. F at 1. At the hearing, Judge Walker told Rambus, [a]s I understand STs response, you will have substantially complete production on the 28th of September, and held, [l]ets just wait to see what happens on the 28th. And if that doesnt satisfy you, we can take that up. Ex. D at 43:15-17; 45:22-24. September 28, 2012 came and went, and STMicro produced nothing. On October 18th, STMicro made an additional production of 5 emails, and one 166-page document that was
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apparently misprocessed and contains several email chains. Decl. 2. This was not consistent with the representations that STMicro made to Rambus and to Judge Walker. B. Renewed Motion To Compel

On January 15, 2013, Rambus renewed its motion to compel. At the hearing on January 23, 2013, Judge Walker agreed that it appeared from STMicros document production that STMicro has not properly preserved, collected, and produced responsive documents. Ex. G (Jan. 23, 2013 Tr.) at 53:12-54:4. Judge Walker held: there is one way to deal with this. And that is to have a corporate officer submit and counsel submit declarations that an appropriate search was made and to represent that the production consisted of the entirety of what was discovered in making that search and that there is no additional information which could be produced. Id. at 54:9-15. Judge Walker continued, Perhaps it behooves STMicro and its counsel to go back and take another look to see whether there aren't additional documents that are responsive and to provide some assurance to Rambus and to me that a diligent search has been conducted, outlining exactly what that search has consisted of and exactly what it has produced. Id. at 56:6-12. STMicro did not comply with the direction provided by Judge Walker. It did not produce a declaration, and it did not revisit its search and produce further documents. Instead, STMicro submitted an argumentative letter from counsel, setting forth some email searches it had conducted, and arguing that under the Federal Circuit Model Order on electronic discovery (which has not been adopted or even proposed in this case), email discovery should be highly limited. See Ex A to Chow Declaration (Dkt. No. 142-1). While clearly far from what Judge Walker had contemplated, STMicros letter provided some clues as to why its document production to date is so grossly deficient: The three search queries that STMicro claimed to have run were completely inadequate. For example, they omitted half of the accused products, and contained numerous other restrictions and omissions that make them vastly narrower than Rambuss actual document requests. The list of custodians searched was far too narrow. For example, it omitted over a dozen of the technical personnel that STMicro itself has identified in its interrogatory -320236240.3

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responses as the most knowledgeable about the accused products, and failed to list key sales personnel. The letter said nothing at all about searches of paper documents, electronic documents other than email (e.g., files stored on hard drives and in relevant shared server locations), and other common sources of responsive documents. Second Renewed Motion To Compel

After reviewing the letter, Rambus sought Judge Walkers assistance for a third time. Rambus submitted a letter brief on February 11, 2013 setting forth the inadequacies in STMicros response to the directions that Judge Walker gave at the January 23, 2013 hearing. See Ex. H. Rambus requested that Judge Walker set a deadline for STMicro to conduct a reasonably diligent search that met certain proposed minimal standards set forth in Rambuss letter. Id. On February 20, 2013, Judge Walker (through his assistant) asked the parties for a convenient time for a telephonic hearing on the following day. See Ex. I. Rambus said that it could be available at any time. Id. Counsel for STMicro asked to postpone the hearing. Id. Judge Walkers assistant explained that Judge Walker would be leaving the country for two weeks, and asked if any counsel for STMicro could be available. Id. STMicro responded that nobody could be available. Id. Rambus responded that over a dozen attorneys have appeared on behalf of STMicro in this litigation, that someone should be able to make him or herself available at some point in the day, and that in light of the approaching fact discovery deadline, the hearing should go forward or the issues should be decided on the papers. Id. Judge Walkers assistant notified the parties that the hearing would go forward telephonically at 10:00 am. Id. STMicro failed to appear. Subsequent to the hearing, Judge Walker issued the Order that is the subject of this motion.1 III. ARGUMENT The two objections that STMicro raises in its motion are without merit. First, STMicro claims that no STMicro officer, director, or managing agent who could submit the required
STMicro complains that the Order issued after an ex parte hearing held at Rambuss insistence. See Mot. at n.2. STMicro appears to be confusing ex parte communications with its decision to fail to appear at a noticed hearing. In any event, it was the third hearing on the issue, and STMicro has had ample opportunity to be heard.
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declaration resides in the Northern District of California. It is well-established, however, that personal jurisdiction is an individual right which can readily be waived by stipulation, contract, or other means. See, e.g., Insurance Corp. of Ireland, Ltd. v. Compagnie des Bauxites de Guinee 456 U.S. 694, 703 (1982). Thus, there is nothing preventing an appropriate STMicro executive from submitting him or herself to the personal jurisdiction of this Court, see id., or from simply submitting the required declaration and asking to be relieved of the personal jurisdiction requirement, as STMicro admits in its motion. See Mot. at 3. As it stands, STMicro has simply chosen not to provide a detailed description of all steps taken to search for documents responsive to Rambuss requests as required by section 1(a) of Judge Walkers Order. Second, STMicros argument that the Order is impossible to comply with also fails. Rambus agrees that the Federal Rules do not require anything more (or less) than a timely, thorough, and reasonably diligent search. Judge Walkers Order is completely consistent with that standard. To the extent there may be responsive documents that have not been produced, the Order simply requires STMicro to explain why. See Order. Such an explanation could involve, for example, documents in locations that may fall outside the scope of a reasonably diligent search, such as on an inaccessible backup tape. STMicro can and should comply with the Order. STMicro also complains that it has ongoing obligations to supplement under Rule 26(e), and therefore, implies that it cannot ever attest to having completed its production. Mot. at 4. STMicro is confusing its duty to supplement with an open-ended extension to comply with its discovery obligations. See, e.g., Switch Communications Group v. Ballard, 2011 WL 3957434, *9 (D. Nev. 2011) (Although a party may later supplement its answer in accordance with Fed.R.Civ.Pro. 26(e), this is not an excuse for failing to provide complete answers based on the information presently available.). With weeks to go before the close of fact discovery, there is no reason that STMicro should be unable to attest that its present production includes all presently available responsive documents. See id. IV. CONCLUSION In light of the foregoing, Rambus respectfully requests that STMicros motion for relief from Judge Walkers Order of February 21, 2013 be denied. -520236240.3

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Respectfully Submitted, MUNGER, TOLLES & OLSON LLP

By:

/s/ David H. Pennington

Attorneys for Plaintiff RAMBUS INC.

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