Case5:00-cv-20905-RMW Document4097

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KILPATRICK TOWNSEND & STOCKTON LLP THEODORE G. BROWN, III (SBN 114672) G. ROSS ALLEN (SBN 262869) 1080 Marsh Road Menlo Park, California 94025 Telephone: (650) 326-2400 Facsimile: (650) 326-2422 Email: tbrown@kilpatricktownsend.com grallen@kilpatricktownsend.com OMELVENY & MYERS LLP KENNETH L. NISSLY (SBN 77589) SUSAN van KEULEN (SBN 136060) SUSAN ROEDER (SBN 160897) 2765 Sand Hill Road Menlo Park, California 94025 Telephone: (650) 473-2600 Facsimile: (650) 473-2601 Email: knissly@omm.com svankeulen@omm.com sroeder@omm.com Attorneys for Plaintiffs, HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH, Plaintiffs, v. RAMBUS INC., Defendant. /// /// /// /// ///
HYNIXS SUPPL RESPONSE ISO HYNIXS BILL OF COSTS & SUPPL BILLS OF COSTS PER TO FEDERAL RULE OF APPELLATE PROC. 39 - CASE NO. CV-00-20905 RMW

Case No. CV 00-20905 RMW HYNIXS SUPPLEMENTAL RESPONSE IN SUPPORT OF HYNIXS BILL OF COSTS AND SUPPLEMENTAL BILLS OF COSTS PURSUANT TO FEDERAL RULE OF APPELLATE PROCEDURE 39

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Hynix Semiconductor Inc. (Hynix) submits this Supplemental Response in order to bring to the Courts attention additional information that is pertinent to the issues to be considered at the hearing, now set for December 16, 2011. If, as Rambus continues to insist, the bond and escrow remain in place, Hynix will needlessly incur additional costs significantly in excess of $1 million per quarter. Hynix believes that the bond should be discharged and the escrow released at this time. As the Court is aware, the Federal Circuit vacated the March 10, 2009 Judgment (Docket No. 3911) of this Court on May 13, 2011 (Docket No. 4031) and issued its Mandate on August 9, 2011. (Docket No. 4045.) The deadline for filing any Petitions for Certiorari to the U.S. Supreme Court was October 27, 2011. Hynix filed a petition for certiorari, seeking review of the Federal Circuits decisions regarding equitable estoppel and claim construction. Exhibit A. Rambus sought, and was granted, an extension of time to December 30, 2011 to Hynixs Petition. Exhibit B. Rambus did not seek further review of the Federal Circuits decision, either by way of its own petition for certiorari or any conditional cross petition for certiorari. Hynix filed its Bill of Costs on May 27, 2011 (Docket No. 4032) and its Supplemental Bill of Costs on August 24, 2011. (Docket No. 4046.) Hynix has now filed a Second Supplemental Bill of Costs regarding its additional expenses incurred in maintaining the Supersedeas Bond and the Escrow Account for, inter alia, the on-going royalties required by the Judgment. Unless the bond is discharged and the amounts in the escrow released to Hynix, Hynix will continue to incur costs in excess of $1.2 million per quarter. In May, 2009, the Court ordered that execution of the Judgment be stayed, on conditions, including a requirement that Hynix post a supersedeas bond in the amount of $250 million (Docket 3964; Bond Order), which Hynix posted on June 26, 2009. (Docket No. 3978.) The amount of the bond was ordered increased to cover the full amount of the Judgment on September 17, 2010 (Docket No. 4021), and Hynix posted the increased bond on October 18, 2010. (Docket No. 4024.) ///
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The Bond Order provides: This stay shall remain in effect until thirty days following the later of (1) remand to the district court following completion of all proceedings in the United States Supreme Court, if a petition for writ of certiorari is granted; (2) denial of any petition for writ of certiorari to the United States Supreme Court; (3) expiration of the time to file a petition for writ of certiorari if no such petition is filed; or (4) until such time as is otherwise ordered by the court. (Docket No. 3964 at 5.) The Bond Order also required that Hynix pay the on-going royalties, required by the Judgment, into an escrow account. This account was set up by the parties, which memorialized the operation of this escrow account in a stipulated order dated November 24, 2009. (Docket No. 4001; Escrow Order.) The Escrow Order, in language that largely mirrors the language in the Bond Order, provides: If the Final Judgment is reversed or vacated so as to affect the basis for the Ongoing Royalty award, the funds in the Escrow Account, including interest and/or profits therein, shall not be released to any party pending further proceedings before this Court, but shall be released in accordance with any further order by the Court. No funds in the Escrow Account shall be released sooner than (1) thirty days following the later of remand to the district court following completion of all proceedings in the United States Supreme Court, if a petition for writ or certiorari is granted; (2) denial of any petition for writ of certiorari to the United States Supreme Court; (3) expiration of the time to file a petition for writ of certiorari if no such petition is filed; or (4) until such time as is otherwise ordered by this court. (Id. at 4.) On November 3, 2011, after the deadline for filing Petitions for Certiorari had passed, Hynix requested that Rambus agree to orders to discharge the bond and release the funds in escrow to Hynix. Exhibit C (attaching the proposed orders). Over one month later, Rambus refused, stating that both the bond and the escrow should be maintained until Hynixs Petition for Certiorari is finally resolved. Exhibit D. Rambus relied on the fact that Hynix petitioned for certiorari and, thus, that the terms of the Bond Order and the Escrow Order have not literally been satisfied. But Rambus ignores the fact that, regardless of the ultimate resolution of Hynixs Petition, the Courts Judgment has been vacated will not change. Hynixs Petition challenges only the
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Federal Circuits decision regarding issues that, if decided in Hynixs favor, would have led to additional bases for reversing or vacating the judgment. To the extent the Bond Order and Escrow Order literally require that both the bond and the escrow remain, the Courts orders can always be modified for good cause. E.g., City of Los Angeles, Harbor Division v. Santa Monica Baykeeper, 254 F.3d 882, 885 (9th Cir. 2001). This is particularly true where, as here, the reasons that the quoted provisions were imposedsecuring payment of a now-vacated judgmentare no longer relevant. In any event, in view of the circumstances, release of the bond and release of the escrow should be otherwise ordered by the Court. In short, there is no reason to require Hynix to continue to incur substantial costs either to maintain security for a judgment that has been vacated or the amounts in escrow that were paid under a judgment that no longer exists. Dated: December 9, 2011 Respectfully submitted, KILPATRICK TOWNSEND & STOCKTON LLP By: /s/ Theodore G. Brown, III Theodore G. Brown, III G. Ross Allen KILPATRICK TOWNSEND & STOCKTON LLP 1080 Marsh Road Menlo Park, CA 94025 Tel: (650) 326-2400/Fax: (650) 326-2422 Email: tbrown@kilpatricktownsend.com grallen@kilpatricktownsend.com Kenneth L. Nissly Susan G. van Keulen Susan D. Roeder OMELVENY & MEYERS LLP 2765 Sand Hill Road Menlo Park, California 94025 Tel: (650) 473-2600/Fax: (650) 473-2601 Email: knissly@omm.com svankeulen@omm.com sroeder@omm.com Attorneys for Plaintiffs, HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR U.K. LTD., and HYNIX SEMICONDUCTOR DEUTSCHLAND GmbH
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