Hynix Semiconductor Inc. v. Rambus Inc.

• Citation: 645 F.3d 1336,98 U.S.P.Q.2d 1711
• Decision Date: 29 July 2011
• Docket Number: 2009–1347.,Nos. 2009–1299,s. 2009–1299
• Parties: HYNIX SEMICONDUCTOR INC., Hynix Semiconductor America Inc., Hynix Semiconductor U.K. Ltd.; and Hynix Semiconductor Deutschland GMBH, Plaintiffs–Appellants,v.RAMBUS INC., Defendant–Cross Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

645 F.3d 1336

98 U.S.P.Q.2d 1711

HYNIX SEMICONDUCTOR INC., Hynix Semiconductor America Inc., Hynix Semiconductor U.K. Ltd.; and Hynix Semiconductor Deutschland GMBH, Plaintiffs–Appellants,

v.RAMBUS INC., Defendant–Cross Appellant.

Nos. 2009–1299

2009–1347.

United States Court of Appeals, Federal Circuit.

May 13, 2011.Rehearing and Rehearing En Banc Denied July 29, 2011.

Sri Srinivasan, O'Melveny & Myers LLP, of Washington, DC, argued for plaintiffs-appellants. With him on the brief were Walter Dellinger, Mark S. Davies, Meaghan E.M. VerGow, Kathryn E. Tarbert, Micah W.J. Smith, Loren L. AliKhan; and Kenneth L. Nissly and Susan Roeder, of Menlo Park, CA. Of counsel on the brief were Theodore G. Brown, III and Julie J. Han, Townsend and Townsend and Crew LLP, of Palo Alto, CA.Richard G. Taranto, Farr & Taranto, of Washington, DC, argued for defendant- cross appellant. Of counsel on the brief were Michael J. Schaengold, Patton Boggs LLP, of Washington, DC; and Gregory P. Stone, Fred A. Rowley, Jr., and Jeffrey Y. Wu, Munger, Tolles & Olson LLP, of Los Angeles, CA; and Carter G. Phillips, Rollin A. Ransom, Eric A. Shumsky, Sidley Austin LLP, of Washington, DC. Of counsel were Ryan C. Morris, Eric M. Solovy and Rachel H. Townsend, of Sidley Austin LLP, of Washington, DC; and Mark Remy Yohalem, Munger, Tolles & Olson LLP, of Los Angeles, CA.Robert E. Freitas, Orrick, Herrington & Sutcliffe LLP, of Menlo Park, CA, for amicus curiae Nanya Technology Corporation, et al. With him on the brief were Jason S. Angell and Craig R. Kaufman.Before NEWMAN, LOURIE, BRYSON, GAJARSA and LINN, Circuit Judges.Opinion for the court filed by Circuit Judge LINN, with whom LOURIE and BRYSON, Circuit Judges, join. Concurring-in-part, dissenting-in-part opinion filed by Circuit Judge GAJARSA, with whom NEWMAN, Circuit Judge, joins.LINN, Circuit Judge.

This patent infringement action concerns Synchronous Dynamic Random Access Memory (“SDRAM”) and Double Data Rate SDRAM memory (“DDR SDRAM”), in standard use in many computers beginning in the 1990s. The district court entered a final judgment of infringement and non-invalidity of claim 33 of Rambus Inc.'s (“Rambus”) U.S. Patent No. 6,324,120 (“'120 patent”); claims 32 and 36 of U.S. Patent No. 6,378,020 (“'020 patent”); claims 9, 28, and 40 of U.S. Patent No. 6,426,916 (“'916 patent”); claim 16 of U.S. Patent No. 6,452,863 (“'863 patent”); claim 34 of U.S. Patent No. 5,915,105 (“'105 patent”); and claims 24 and 33 of U.S. Patent No. 6,034,918 (“'918 patent”); entered judgment in the amount of $349,035,842; required Hynix to pay prejudgment interest; and set a royalty rate for infringing products. Hynix Semiconductor, Inc. v. Rambus Inc., No. 00–CV20905 (N.D.Cal. Mar. 10, 2009) (“ Judgment ”). Hynix Semiconductor Inc., Hynix Semiconductor America Inc., Hynix Semiconductor U.K. LTD, and Hynix Semiconductor Deutschland (collectively, “Hynix”) appeal the district court's: (1) denial of Hynix's motion to dismiss due to unenforceability arising from Rambus's alleged spoliation of documents, Hynix Semiconductor Inc. v. Rambus Inc., 591 F.Supp.2d 1038 (N.D.Cal.2006) (Whyte, J.) (“ Spoliation ”); (2) claim construction, Hynix Semiconductor Inc. v. Rambus Inc., No. 00–CV–20905, 2004 WL 2610012 (N.D.Cal. Nov. 15, 2004) (“ Claim Construction ”); (3) denial of Hynix's motion for judgment as a matter of law or for a new trial on the basis of written description, Hynix Semiconductor Inc. v. Rambus Inc., No. 00–CV–20905, 2009 WL 230039 (N.D.Cal. Jan. 27, 2009) (“ Written Description ”); (4) denial of Hynix's motion for a new trial on obviousness, Hynix Semiconductor Inc. v. Rambus Inc., No. 00–CV–20905, 2009 WL 112834 (N.D.Cal. Jan. 16, 2009) (“ Obviousness ”); and (5) rejection of Hynix's equitable arguments of unenforceability due to implied waiver and equitable estoppel. Hynix Semiconductor Inc. v. Rambus Inc., 609 F.Supp.2d 988 (N.D.Cal.2009) ( “ Estoppel ”).

Rambus cross-appeals the district court's grant of summary judgment of non-infringement of claims of 15, 18, 25, and 26 of Rambus's U.S. Patent No. 6,032,214 (“'214 patent”); claims 36 and 40 of the '105 patent; claims 1 and 4 of Rambus's U.S. Patent No. 6,035,365 (“'365 patent”); and claim 14 of its U.S. Patent No. 6,101,152 (“'152 patent”). Hynix Semiconductor Inc. v. Rambus Inc., No. 00–CV–20905 (N.D.Cal. Jan. 5, 2005) (“ Cross–Appeal ”).

This court has jurisdiction over the appeal and the cross-appeal pursuant to 28 U.S.C. § 1295(a)(1).

This case is a companion case to Micron Technology, Inc. v. Rambus Inc., 645 F.3d 1311 (Fed.Cir.2011) (“ Micron II ”) (decided contemporaneously herewith). That case is an appeal from the United States District Court for the District of Delaware, in which Judge Robinson held that Rambus had spoliated documents in dereliction of a duty to preserve, and held Rambus's patents unenforceable as a sanction. See Micron Tech., Inc. v. Rambus Inc., 255 F.R.D. 135, 150–51 (D.Del.2009) (“ Micron I ”).

Because this court concludes that the district court applied too narrow a standard of foreseeability in determining that litigation was not reasonably foreseeable until late 1999, this court (1) vacates the district court's final judgment and its findings of fact and conclusions of law regarding spoliation and remands for the district court to determine when Rambus's duty to preserve documents began under the framework set forth in Micron II, and the appropriate sanction, if any. This court (2) affirms the district court's decision on waiver and equitable estoppel, (3) its claim construction order, (4) its order denying Hynix's motion for JMOL or for a new trial on the basis of written description, and (5) its order denying Hynix's motion for a new trial on the basis of obviousness. This court also (6) affirms the district court's order granting Hynix's motion for summary judgment of noninfringement under Hynix's proposed claim construction challenged in Rambus's cross-appeal.

I. Background

A. Rambus

Rambus was founded in 1990 to commercialize inventions related to features of computer dynamic random access memory (“DRAM”). All of the patents in suit claim priority to Rambus's 07/510,898 application (“'898 application”), filed on April 18, 1990. The first filed and issued of the patents in suit, the ' 105 patent, was filed on November 26, 1997, and issued on June 22, 1999. Rambus prosecuted the patents in suit continuously throughout the 1990s and until 2002.

Rambus's primary business is licensing its intellectual property to DRAM manufacturers. Initially, Rambus focused its efforts on the “Direct RDRAM ramp,” which comprised granting narrow licenses to RAM manufacturers to produce only a particular type of DRAM known as Rambus DRAM (“RDRAM”) and later Direct RDRAM, and restricting the use of Rambus's intellectual property for the production of other types of RAM (what Rambus terms “non-compatible” uses). Rambus achieved a measure of success through this practice, licensing RDRAM production by Samsung, Hynix (then Hyundai), Hitachi, Micron, and several of the largest RAM manufacturers to meet the demand created by Intel's use of RDRAM in its Pentium 4 chipset. During the licensing period, however, several of the manufacturers also produced noncompatible DRAM, including SDRAM and DDR SDRAM, which are at issue in this case. As discussed in further detail in Micron II, Intel eventually began to move away from RDRAM, in favor of SDRAM and DDR SDRAM.

B. Joint Electron Devices Engineering Council

Beginning in February 1992, Rambus became a member of the Joint Electron Devices Engineering Council (“JEDEC”), an open standard setting organization that developed (and continues to develop) standards for semiconductor products, including computer memory interfaces, to facilitate the interchangeability of products produced by different manufacturers. Members of a JEDEC committee meet several times a year to hear presentations by other members on proposed features to be included in the standard. The members then vote for which features to include.

Rambus was represented at JEDEC by Richard Crisp. After Crisp heard presentations on features to be included in the standard at JEDEC, he would discuss the inventions with the attorneys prosecuting Rambus's patents, signaling them to direct Rambus's prosecution efforts to cover those features. JEDEC Trial Tr. vol. 5 day 5, 990, 993. See also Reply Br. of Rambus, Inc., Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1085 (Fed.Cir.2003) ( “ Infineon ”), at 62 (“Rambus changed its pending patent claims based on discussions at public JEDEC meetings.”).

Under JEDEC policies, the members agreed to participate “in good faith under policies and procedures which will assure fairness and unrestricted participation.” Crisp, made no secret of the fact that he did not attend JEDEC in good faith, if “good faith means that you are attending JEDEC with the goal of creating an open standard for JEDEC SDRAM.” Several JEDEC rules governed the behavior of members, including Manual 21–I, discussed below. Estoppel, 609 F.Supp.2d at 999–1000. As of 1993, JEDEC policy “required members to disclose patents and patent applications ‘related to’ the standardization work of the committees.” Infineon, 318 F.3d at 1085. Crisp disclosed one patent, U.S. Patent No. 5,243,703 (“'703 patent”) to JEDEC in September 1993. Id. This patent has a substantially similar specification to the patents in suit, differing only in the claims.

During Rambus's membership, JEDEC adopted SDRAM as a standard. The SDRAM standard incorporated features such as programmable CAS latency, programmable burst length, externally supplied reference voltage, and two-bank design. Id. In December 1995, Rambus attended its last meeting as a member of JEDEC, and formally resigned in June 1996. Meanwhile, by December 1996, JEDEC was busy working on the successor to SDRAM, DDR SDRAM. Id. DDR SDRAM incorporated source-synchronous clocking,...