MICRON TECHNOLOGY, INC., Plaintiff, v. RAMBUS INC., Defendant. RAMBUS INC., Counterclaim Plaintiff, v. MICRON TECHNOLOGY, INC., MICRON ELECTRONICS, INC., and MICRON SEMICONDUCTOR PRODUCTS, INC., Counterclaim Defendants.
Civ. No. 00-792-SLR
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
January 2, 2013
Case 1:00-cv-00792-SLR Document 1151 PageID #: 11887
ROBINSON, District Judge
Frederick L. Cottrell, III, Esquire, and Anne Shea Gaza, Esquire of Richards, Layton & Finger, PA, Wilmington, Delaware. Counsel for Plaintiff/Counterclaim Defendants. Of Counsel: William C. Price, Esquire, and Robert J. Becher, Esquire of Quinn Emanuel Urquhart Oliver & Hedges, LLP, and Jared Bobrow, Esquire of Weil Gotshal & Manges LLP. Mary B. Graham, Esquire, and Rodger D. Smith II, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Defendant/Counterclaim Plaintiff. Of Counsel: Gregory P. Stone, Esquire, of Munger, Tolles & Olson LLP, and Charles W. Douglas, Esquire, Thomas K. Cauley, Jr., Esquire, Brian A. McAleenan, Esquire, Rollin A. Ransom, Esquire, and Michelle B. Goodman, Esquire of Sidley Austin LLP.
Dated: January 2, 2013
Wilmington, Delaware
I. INTRODUCTION
The instant action arises from a patent 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 twelve Rambus patents: U.S. Patent Nos. 5,915,105; 5,953,263; 5,954,804; 5,995,443; 6,032,214; 6,032,215; 6,034,918; 6,038,195; 6,324,120; 6,378,020; 6,426,916; and 6,452,863 (collectively, “the patents-in-suit“). The court trifurcated the case (D.I. 739) and held a bench trial in November 2007 on the issues of Rambus’ alleged spoliation of evidence and unclean hands and the appropriate sanction, if any, arising from those allegations.
Following post-trial briefing, the court issued an opinion dated January 9, 2009 holding that Rambus had engaged in unlawful spoliation of discoverable documents and that the patents-in-suit were unenforceable against Micron as a result. Micron Tech., Inc. v. Rambus Inc. (Micron I), 255 F.R.D. 135, 150-51 (D. Del. 2009). Rambus subsequently appealed, and the Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded the case. Presently before the court is the сonsideration of the case on remand. The parties have briefed the remanded issues, and the court held oral argument on January 26, 2012. For the reasons that follow, the court finds that Rambus’ spoliation was done in bad faith and caused prejudice to Micron. Furthermore, the appropriate sanction is to declare the patents-in-suit unenforceable against Micron.
A. The Parties and the Underlying Technology
Rambus, which has described itself as a company employing semiconductor, system architecture, and system packaging technologies, was founded in March 1990 by Professors Mike Farmwald and Mark Horowitz. (MTX 48 at 0003; RAMTX 212 at 0004) In April of that year, Farmwald and Horowitz filed a patent application on behalf of Rambus, relating to inventions for improving the speed with which computer memory can function. Micron II, 645 F.3d at 1316. All of the patents-in-suit are continuation or divisional applications based on that application and cover various aspects of dynamic random access memory (“DRAM“). (D.I. 1061 at 1134:6-17; 1357:15-1358:21) Rambus’ plan was to license its proprietary DRAM technology, called Rambus DRAM (“RDRAM“) to DRAM manufacturers and, ultimately, to achieve industry-wide adoption of RDRAM. (D.I. 1061 at 1226:6-17, 1247:4-1248:4, 1123:3-24:23, 1124:12-23; D.I. 1062 at 1656:3-9)
Micron manufactures DRAM computer chips, including two common types of DRAM: synchronous DRAM (“SDRAM“) and double data rate SDRAM (“DDR SDRAM“) (collectively, “SDRAM products“). (D.I. 1022) Micron asserts that its SDRAM products do not infringe the patents-in-suit. (Id.) Rambus, however, believes its inventions are broad enough to encompass SDRAM. Micron II, 645 F.3d at 1315.
In 1991, Micron and Rambus, along with “all the major people in the electronics business,” began meeting through the Joint Electronic Design Engineering Council (“JEDEC“), to discuss and adopt industry-wide standards for computer memory chips. (D.I. 1058 at 160:16-161:4; MTX 203 at 2) The standards adopted by JEDEC are meant to be open standards, meaning that, unless the holder of an intellectual property right has disclosed during the standards setting process that it has that right and agrees to license the technology for free, or at least on reasonable, nondiscriminatory terms, the holder waives its right. (D.I. 1058 at 161:12-165:8; MTX 203 at 2; MTX 808-0018)
One of the standards that JEDEC representatives sought to adopt was for what became SDRAM. (D.I. 1058 at 171:15-18) As early as 1992, Rambus learned of SDRAM and viewed it as a competing product. (MTX 48; MTX 56; D.I. 1062 at 1655:5-21) Rambus also became concerned that DRAM manufacturers were using Rambus’ RDRAM technology to develop their own competing DRAM technology. (D.I. 1060 at 798:12-22, 686:2-13; D.I. 1061 at 1133:5-19, 1135:7-13, 1082:2-1083:9) 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 Rambus’ patent claims to cover SDRAM and other potentially competing memory types. (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) Rambus attended its last JEDEC meeting in December 1995 and formally resigned in June 1996. (D.I. 1060 at 791:7-15; D.I. 1071 at 223:1-10; MTX 214)
C. Rambus’ Business Strategy
Thereafter, Rambus pursued a two-prong business strategy: (1) it licensed chip makers to manufacture chips that complied with Rambus’ RDRAM standards; and (2) it prepared to demand license fees and to potentially bring infringement suits against those manufacturers who insisted on adopting the competing SDRAM standard. (MTX 279 at ¶ 18(C); see also D.I. 1060 at 751:3-13) 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. (MTX 253; MTX 183; MTX 235)
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 significant to Rambus because, at that time, Intel‘s microprocessors and chipsets represented nearly half of the total DRAM market. (D.I. 1061 at 1127:14-17, 1128:13-18) Rambus also 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, called Direct RDRAM, with these manufacturers. (Id. at 1129:13-1130:6, 1148:3-8; RAMTX 67)
2. Rambus Hires Joel Karp
In October 1997, Rambus hired Joel Karp as Vice President of Intellectual Property to work on a licensing program for non-Rambus technologies, including SDRAM and DDR SDRAM, that Rambus CEO Geoff Tate thought infringed Rambus’ patents. (D.I. 1058 at 154:1-4, 171:19-175:1, 291:23-292:1) Karp was responsible for “assessing [the Rambus] patent portfolio, determining when chips infringe [the Rambus]
3. Karp Meets with Cooley Godward Attorneys
In developing a strategy for Rambus, Karp called Diane Savage, an attorney 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 arranged a meeting for him with Dan Johnson, a litigation partner at Cooley Godward. (Id. at 599:1-7) Johnson‘s practice consisted primarily of patent litigation, trade secret litigation, and licensing litigation. (D.I. 1062 at 1479:3-11) Other Cooley Godward attorneys on the team that advised Rambus included John Girvin, who had primary responsibility for assisting Rambus; Peter Leal, who specialized in licensing matters; and William Winters. (RAMTX 83; D.I. 1062 at 1483:12-18, 1485:21-1486:12)
Although Cooley Godward identified its consultation with Rambus as concerning “licensing activity” (RAMTX 83), Leal‘s notes from a January 13, 1998 meeting indicate that Rambus wanted the following: “litigation strategy by [the] March board meeting,” “[n]o negotiations [without] full strategy and prep[aration],” “[g]o in quickly [and] proceed to either a license or litigation,” “[t]ry win-win first; do not prejudice [good faith] for litigation,” “[l]ook[] for royalty rate that tells them it costs to infringe,” and “[g]o to first
On February 12, 1998, Karp met with Johnson, Leal, and Girvin. (MTX 290; see also MTX 304 at 0001; D.I. 1058 at 196:24-197:6, 199:23-200:16) Karp discussed both licensing and litigation strategies with the attorneys, but discussion of litigation strategy predominated. (MTX 290; MTX 506) Specific to litigation, Karp and the attorneys conferred about preparing trial graphics and claims; retaining experts; and building a case against potential litigation targets, including Micron,2 Fujitsu, Samsung, and Hyundai. (MTX 290; MTX 506; D.I. 1058 at 198:24-199:16) They also discussed that Rambus would “[n]eed to litigate against someone to establish [a] royalty rate and have [a] court declare [the Rambus] patent[s] valid” and that a planned royalty rate of five percent would “probably push [Rambus] into litigation quickly.” (MTX 290)
In this regard, Karp and the attorneys discussed gathering critical documents and implementing a document retention policy. (Id.; MTX 506; D.I. 1058 at 198:24-199:16) In his meeting notes, Karp characterized the implementation of a document retention
Shortly thereafter, Johnson prepared a memorandum outlining Rambus’ proposed licensing and litigation strategies. (MTX 293 at 0001; MTX 304 at 0002) The memorandum discussed Rambus’ competitors, features of the licensing program, a hierarchy of potential licensees and, in the event that licensing efforts failed, a tiered litigation strategy contemplating litigation in fora that “proceed at an accelerated schedule,” making early preparation advantageous for Rambus. (MTX 293; see also D.I. 1059 at 444:17-445:9; D.I. 1062 at 1501:20-1503:7)
4. Karp presents the licensing and litigation strategies, which included a document retention policy, to the Rambus Board
On March 2, 1998, Karp presented the licensing and litigation strategies to the Rambus Board. (MTX 295; D.I. 1058 at 214:2-19; D.I. 1061 at 1269:14-1270:11) Karp proposed seeking an up-front payment and a five percent running royalty from licensees of non-compatible products, with incentives and penalties tied to licensees’ production rates, and outlined the mechanics of the licensing negotiation.4 (MTX 295 at 0001-
D. The Path to Litigation
1. Rambus learns about Intel exploring non-RDRAM options
On April 14, 1998, Tate and a colleague met with an Intel executive to discuss the two companies’ future relationship. (MTX 307) Tate summarized Intel‘s message at this meeting thus: “[I]ntel says they are basically going to compete with us on next generation [of DRAM].” (Id. at 1) Tate‘s notes indicate that Intel was considering the licensing offer. (D.I. 1060 at 717:14-718:3) A memorandum that Karp wrote in late 1998 or early 1999 discussed using royalty rates in the “5-10% range, in cases where [Rambus] is not interested in settling.” (MTX 763 at 0004)
2. Rambus continues in “stealth mode” to strengthen its patent portfolio and continue reverse engineering efforts
In August or September 1998, Rambus retained attorney Neil Steinberg as outside counsel. (D.I. 1060 at 835:4-7) Steinberg‘s work for Rambus included patent prosecution, licensing, and litigation preparation.8 (Id. at 835:4-836:15; 837:16-24; MTX 375 at 0001)
Later in October 1998, Karp made a revised strategy presentation to Rambus executives. (D.I. 1058 at 294:1-4; MTX 375) At that time, Rambus was helping its manufacturing partners to work toward mass production of Direct RDRAM. (D.I. 1061 at 1102:6-11) With mass production hopefully imminent and, with it, the establishment of a “dominant [DRAM] standard,” Karp advised against commencing litigation in 1999, even though he believed Rambus could have sued multiple alleged infringers in Quarters 1 and 2 of 1999. (MTX 375 at 0004) Karp advised “DO NOT ROCK THE DIRECT BOAT,” pointed out that there was no “rush” to sue infringers, and recommended that Rambus not assert its patents against its Direct RDRAM manufacturing partners until their investment in the technology had reached “the point of no return,” which he believed would probably not occur until Quarter 1 of 2000. (Id. at 0004; D.I. 1058 at 294:22-295:2, 296:22-298:2, 299:10-20) Accordingly, Karp advised that Rambus should continue in “stealth mode” during 1999 to strengthen its patent portfolio - which Karp labeled as the “top priority” - and proceed with reverse engineering efforts. (MTX 375 at 0005; D.I. 1058 at 298:11-300:1)
3. Rambus’ strategy in light of deteriorating relations with Intel
In September 1999, Karp and Steinberg made a presentation to Rambus management entitled “IS THERE LIFE AT RAMBUS AFTER INTEL?” (MTX 801; D.I. 1058 at 326:7-22) The presentation slides stated that, with Rambus’ relationship with Intel waning, Rambus “must increase the industry‘s perception of [its] value through aggressive assertion of [its] IP rights . . . [i]f Rambus is to have a future.” (Id. at 0001-0003) The slides went on to state that, for Rambus intellectual property to earn respect, Rambus would need to substantiate its patent claims by either a lucrative licensing deal with an “industry powerhouse” or “winning in court.” (Id. at 0004) The slides stated further that the “[b]est route to IP credibility was through victory over a major DRAM
After this meeting, on September 29, 1999, Tate sent an email indicating that consensus had been achieved on, inter alia, the “need to sue a [DRAM] company to set an example . . . .” (MTX 464 at 0001-0002) On October 14, 1999, Karp made another presentation to the Board. (MTX 468; D.I. 1059 at 359:9-19) This presentation set out a detailed analysis of why Hitachi was the most desirable litigation target. (MTX 468; D.I. 1059 at 360:13-361:22) On October 22, 1999, Karp sent a letter to Hitachi asserting three of its patents that are also at issue in the instant case. (MTX 473 at 0001)
E. Implementation of Rambus’ Document Retention Policy
1. Degaussing of back-up tapes
On March 16, 1998, just prior to Rambus’ meeting with Intel to discuss the companies’ future relationship, Karp conveyed to Roberts “growing worries [that] email back-ups [might contain] discoverable information.” (D.I. 1061 at 1076:19-1078:23; MTX 299) Roberts then sent an email to Joseph Lau, manager of the computer systems, instructing him to add a Quarter 2 goal about a back-up policy and to implement that policy in Quarter 2 or 3. (MTX 299) The back-up tapes stored information dating back to Rambus’ inception.9 (D.I. 1061 at 1154:16-23; D.I. 1071 at 271:21-272:2, 275:23-276:22) Roberts instructed that the back-up policy should address how often files were backed up, how long they were kept, and where they were
On May 14, 1998, after meeting with representatives of Rambus’ operating divisions and consulting with Johnson, whom Karp identified as litigation counsel for Rambus, Karp sent an email to Rambus employees announcing that, effective immediately, full system back-up tapes would be saved for only three months and that data to be saved beyond three months would need to be archived separately. (MTX 314; D.I. 1058 at 249:12-250:4) Karp also announced, by email, the imminent implementation of a company-wide document retention policy. (MTX 314) In the email, Karp invited employees with questions, comments, or suggestions regarding the document retention policy to not “hesitate to come by to talk about it.” (Id.) However, he added that he preferred to discuss the issue face to face and that any emails on the subject should be brief and narrowly distributed. (Id.)
All but one of Rambus’ 1270 back-up tapes were degaussed, or demagnetized, in July 1998. (MTX 326) Prior to degaussing the back-up tapes, a Rambus engineer showed Karp a document on his computer that would help establish a conception date for a Rambus invention. (D.I. 1058 at 263:23-264:4) The act of retrieving and displaying the document on the engineer‘s computer, however, automatically altered the date of the document. (Id. at 264:5-10) To preserve the document with its true date, Karp and/or other Rambus employees searсhed through tapes to find the back-up of the document. (Id. at 264:11-17) When the document was found, it was printed out, and
2. Rambus’ company-wide document retention policy
On July 22, 1998, Karp emailed the company-wide document retention policy, which he had alluded to earlier, to Rambus employees. (MTX 337; D.I. 1058 at 266:6-11) Most of the policy‘s substance “came directly from the Savage memo in a cut and paste fashion.” (D.I. 1059 at 416:6-15) It was “very unexceptional,” that is, it was consistent with industry practice and was content neutral. (D.I. 1059 at 551:4-9; see also id. at 510:6-511:21)
Around that time, Karp and Johnson also made presentations about document retention to Rambus employees. (D.I. 1058 at 271:3-23) Johnson‘s slides from those presentations characterized the policy as a “Document Retention/Destruction Policy” and focused on the policy vis-a-vis litigation. (Id. at 272:7-275:10; MTX 333 at 0002) Rambus employees testified that one of the reasons cited for the document retention policy was preparation for litigation. (D.I. 1061 at 1181:19-1182:8; D.I. 1062 at 1451:2-10; D.I. 1071 at 101:6-102:6) At the bottom of several slides, contrary to Johnson‘s advice (D.I. 1062 at 1539:8-1540:16), Karp wrote “LOOK FOR THINGS TO KEEP.” (MTX 343; D.I. 1058 at 267:17-23) In particular, Karp instructed Rambus engineers to look for things to keep that would help establish conception and prove that Rambus had intellectual property. (D.I. 1058 at 267:5-16) Along those lines, Karp also explained to the engineers that one category of documents they should not keep - that is, one of the things the document retention policy was targeted to expunge - was documents questioning the patentability of Rambus inventions. (D.I. 1061 at 1303:21-1304:14)
3. The first “shred day”
On September 3, 1998, Rambus employees participated in an event dubbed “shred day,” during which they destroyed documents pursuant to the company‘s new document retention policy.10 (D.I. 1058 at 283:14-284:13; D.I. 1059 at 526:15-20; MTX 368) David Rhoades, vice president of the company Rambus hired to shred the documents, estimated that 400 banker‘s boxes-worth of documents were destroyed. (D.I. 1062 at 1469:2-13; MTX 398 at 0027-0028)
Rambus employees did not keep records of what was destroyed during this, or any subsequent, shred day. (D.I. 1058:285:9-24; D.I. 1060 at 813:23-814:1; D.I. 1061 at 1314:24-1315:11; D.I. 1071 at 119:19-23, 253:2-22) The trial record, however, shows that they destroyed documents relating to, inter alia, contract and licensing negotiations, patent prosecution, JEDEC meetings, Board meetings, and finances. (D.I. 1059 at 390:3-22; D.I. 1060 at 801:5-15, 802:9-14, 802:24-804:14, 817:3-10, 822:12-17; D.I. 1061 at 1076:16-1077:1, 1140:19-22, 1141:3-1142:8, 1159:6-10, 1170:17-1171:11, 1307:23-1308:1, 1315:12-18, 1350:4-15; D.I. 1071 at 94:12-95:2, 99:4-14, 107:12-24, 108:1-8, 112:13-20, 116:6-8, 117:1-7, 134:24-135:22, 138:15-23, 139:6-17, 140:17-
4. Subsequent destruction of documents by Rambus
Rambus’ subsequent intentional destruction of documents occurred after its duty to preserve documents arose and, thus, constituted spoliation. Micron I, 255 F.R.D. at 150; Micron II, 645 F.3d at 1321-26.
a. Destruction of Rambus’ patent files
In April 1999, Karp instructed outside prosecution counsel Lester Vincent of the Blakely, Sokoloff, Taylor & Zafman firm to begin “clear[ing] out” all the Rambus files for patents that had issued.11 (MTX 420 at 0004; see also MTX 412 at 0001-0012; MTX 427; MTX 601; MTX 934; D.I. 1058 at 304:8-11; D.I. 1061 at 1320:23-1321:8, 1322:6-13, 1328:22-1329:4) Vincent cleared out over 60 patent files between April and July of 1999. (D.I. 1061 at 1322:14-22; 1338:11-1339:16, 1341:21-1343:6; MTX 601) The purged documents included hard copies and electronic copies of draft amendments,
b. The second “shred day”
On or about June 27, 1999, Karp, with outside counsel‘s input, prepared goals for Quarter 3 of 1999. (D.I. 1058 at 305:15-306:24, 308:22-309:18; see also MTX 434, MTX 436, MTX 438) Karp‘s goals included “[i]nitiating reverse engineering of infringing devices as required for litigation prep;” “[m]onitor[ing] industry for potential infringing activity — all semiconductors;” “[d]evelop[ing] complete licensing strategy;” “[p]resent[ing] licensing strategy to exec and gain approval;” “[p]repar[ing] licensing positions against 3 manufacturers;” “[p]repar[ing] litigation strategy against 1 of the 3 manufacturers;” and being “[r]eady for litigation with 30 days notice.”13 (MTX 438 at 0001) The goals were in keeping with Tate‘s instruction to Karp in a June 24, 1999 email to think about a “target and bottom line terms for licensing [Rambus‘] IP for infringing DRAMs;” the identity of
In the first two drafts of the Quarter 3 goals, Karp identified organizing a “1999 shredding party at Rambus” under the “Licensing/Litigation Readiness” heading. (MTX 434 at 0001, MTX 436 at 0002) In the final draft, after consulting with Steinberg, Karp amended the goals to eliminate reference to a shredding party as part of licensing/litigation readiness and instead added a goal of organizing “a document retention compliance event” under the “Database Maintenance” heading. (MTX 438 at 0002; D.I. 1059 at 468:18-469:19, 472:12-18)
On August 26, 1999, Rambus had another shred day (“the second shred day“). (D.I. 1062 at 1470:13-23; MTX 398 at 0034-0035; MTX 450) The shredding company‘s invoices reflect that around 300 boxes of documents were destroyed on the second shred day. (MTX 398 at 0034-0035; see also D.I. 1062 at 1470:24-1471:12)
In December 1999, Rambus instituted a litigation hold. (D.I. 1059 at 539:24-541:4, 551:15-552:10; D.I. 1060 at 857:11-24, 1002:11-1003:4; D.I. 1061 at 1312:2-13) Steinberg testified that, рursuant to the litigation hold, Rambus collected and maintained documents that reasonably would be sought in discovery but that would have otherwise been destroyed under its document retention policy. (D.I. 1060 at 861:2-862:7)
c. Continued execution of Rambus’ document retention policy
On January 18, 2000, Rambus sued Hitachi. (MTX 493; D.I. 1058 at 298:3-10) On June 22, 2000 Rambus and Hitachi settled and, as part of the settlement, entered into a licensing agreement for non-compatible DRAM products. (MTX 533; D.I. 1059 at
On July 17, 2000, Steinberg sent an email to Rambus executives reminding them to comply with the document retention policy vis-a-vis contracts. (MTX 541) At Rambus’ request, on December 28, 2000, a shredding contractor disposed of as many as 480 boxes of Rambus materials in connection with an office move. (MTX 577; D.I. 1472:8-10, 1472:23-1473:2, 1474:11-16) On January 12, 2001, while Rambus was in litigation with Micron, Hynix, and Infineon, Steinberg sent another email to Rambus executives in which he stated his desire to implement a new document retention policy “similar to the previous policy — however, this time the IP group will attempt to execute the policy more effectively.” (MTX 581)
F. The Instant Litigation
On August 24, 2000, Tate emailed Micron CEO Steve Appleton threatening patent litigation. (RAMTX 8) Micron Technology, Inc. filed the instant case on August 28, 2000 seeking, in part, declaratory judgment of non-infringement, invalidity, and unenforceability of the patents-in-suit. (D.I. 1) It amended its complaint on February 1, 2001 to add an additional monopolization claim. (D.I. 76) On February 15, 2001, Rambus filed its answer and counterclaimed that Micron infringes the patents-in-suit. (D.I. 90) The court partially stayed the case pending the Federal Circuit‘s ruling in Rambus’ action against Infineon Technologies AG. (D.I. 528) The court lifted the stay on January 13, 2006 (D.I. 705) and entered a scheduling order dated March 16, 2006, dividing the case into three substantive issues: unclean hands, infringement, and conduct underlying Micron‘s remaining claims for affirmative relief and defenses. (D.I.
During the course of litigation, Rambus engaged in several instances of litigation misconduct. One of Rambus’ Rule 30(b)(6) witnesses testified that the document retention policy had not been presented to the Board (D.I. 1071 at 181:1-182:15), before changing that testimony to acknowledge that presentations regarding the document retention policy had been given to the Board at least twice. (Id. at 179:5-19) Likewise, Rambus’ Rule 30(b)(6) witnesses testified that Rambus conducted only one shred day (D.I. 1060 at 856:11-19; D.I. 1071 at 173:8-21, 178:16-18), before changing their testimony to acknowledge that Rambus had conducted three shred days. (D.I. 1071 at 170:3-173:24) Rambus employees, in several instances, did not inform outside counsel of the Rambus shred days. (D.I. 1060 at 961:5-23, 962:8-963:14; 969:20-970:21, 971:2-15; D.I. 1061 at 1292:4-1293:18, 1294:23-1295:4) Nor did they otherwise inform outside counsel of the scope of the document destruction. (D.I. 1060 at 926:11-928:19; D.I. 1061 at 1054:23-1056:6; D.I. 1071 at 196:1-20) The record at bar is replete with misrepresentations on the part of Rambus, as detailed in the court‘s previous opinion. Micron I, 255 F.R.D. at 149-50.
Following post-trial briefing, the court issued an opinion dated January 9, 2009, finding that Rambus had engаged in spoliation, that the spoliation was done in bad faith and prejudiced Micron, and that the appropriate sanction was to hold the patents-in-suit
III. ANALYSIS
A. Issues on Remand
On appeal, the Federal Circuit reviewed the court‘s factual findings under a clearly erroneous standard and affirmed the court‘s finding of spoliation.14 Micron II, 645 F.3d at 1321-26. However, under an abuse of discretion standard, it vacated the court‘s choice of sanction because the court “did not explain why only dismissal would ‘vindicate the trifold aims of: (1) deterring future spoliation of evidence; (2) protecting the defendants’ interest; and (3) remedying the prejudice defendants suffered as a result of [Rambus‘] actions.‘” Id. at 1326, 1329 (alteration in original) (quoting West v. Goodyear Tire & Rubber Co., 167 F.3d 776, 780 (2d Cir. 1999)). The Federal Court remanded so that this court could reconsider its bad faith and prejudice determinations related to Rambus’ spoliation, as well as the appropriate sanction, if any, for Rambus’ conduct. Id. at 1326-29. Although this court applied the correct law, the Federal Circuit instructed this court to more “fully explain” its reasoning. Id.
Accordingly, under the framework for determining the choice of sanction, the court will revisit whether Rambus acted in bad faith when it engaged in spoliation and the nature and extent of any prejudice suffered by Micron as a result of the spoliation.
B. Bad Faith
To make a determination of bad faith, the court must find that the spoliating party “intended to impair the ability of the potential defendant to defend itself.” Schmid v. Milwaukee Elec. Tool Corp., 13 F.3d 76, 80 (3d Cir. 1994). The “fundamental element of bad faith spoliation is advantage-seeking behavior by the party with superior access to information necessary for the proper administration of justice.” Id. at 1326-27. In effect, the court must find that Rambus implemented its document retention policy to disadvantage Micron or other potential defendants.
On the other hand, if the court determines that the document retention policy was employed for “legitimate business reasons such as general house-keeping,” then it would be inappropriate for the court to find bad faith. Id. Consistent with the Federal Circuit‘s opinion, four categories of facts in this case support a finding of bad faith: (1) facts tending to show that Rambus’ document retention policy was adopted as part of a firm litigation plan; (2) facts tending to show that the document retention policy was executed selectively; (3) facts tending to show that Rambus acknowledged the impropriety of the document retention policy; and (4) Rambus’ litigation misconduct. Id.
1. Rambus’ document retention policy was adopted as part of a firm litigation plan
Rambus contends that its document retention policy was a routine policy that was content neutral. (D.I. 1123 at 4) It avers that its policy was adopted with legal advice from Cooley Godward and points to the fact that “shred days” were common
First, Karp developed the document retention policy in the context of being instructed by Tate to develop a licensing and litigation strategy. Rambus’ goals for Quarters 2 and 3 in 1998 reflect Rambus’ understanding that implementing a document retention policy was part of its larger litigation strategy. (MTX 276; MTX 278) When Karp introduced the policy to the Rambus Board in March 1998, he stated that the policy was “necessary to prepare for the ‘upcoming battle‘” in the context of Rambus’ licensing and litigation strategies. Micron I, 255 F.R.D. at 140 n.20. Rambus employees also testified at trial that one of the reasons behind the document retention policy was to prepare for litigation. Id. at 142 n.29. The fact that Rambus wanted to destroy documents in an effort to prevent them from being discovered in the “upcoming battle” demonstrates that Rambus adopted the policy specifically for the purpose of gaining an advantage in litigation.
Second, although Karp did have the advice of outside counsel and an auditing company, he did not always follow their advice or inform them of his litigation objectives. Johnson testified that document retention policies werе not inconsistent with putting a licensing program in place (D.I. 1062 at 1495:13-1496:7), but Rambus’ policy was adopted to get Rambus “battle ready,” or to further Rambus’ “litigation strategy by frustrating the fact-finding efforts of parties adverse to Rambus.” Micron II, 645 F.3d at 1322. Karp‘s view of the document retention policy for getting Rambus “battle ready” was not known to outside counsel — “battle ready” was not a phrase that Johnson used.
Rambus argues that there is no evidence it destroyed documents to impair Micron‘s ability to defend itself. (D.I. 1124 at 3) However, as the Federal Circuit made clear, the requisite bad faith need not be directed toward any specific litigant but only toward a potential litigant.15 Micron II, 645 F.3d at 1320-25.
2. Rambus’ document retention policy was executed selectively
Rambus’ contention that its document retention policy was neutral is also not persuasive, as several facts evince Rambus’ advantage-seeking conduct through its selective enforcement of the document retention policy. For example, at a presentation to employees, Karp instructed Rambus engineers to “look for things to keep” that would help establish that Rambus had intellectual property. (MTX 343; D.I. 1058 at 267:17-23) At the same time, he explained to the engineers that, under the policy, they should expunge documents questioning the patentability of Rambus inventions. (D.I. 1061 at 1303:21-1304:14) These instructions were contrary to outside counsel‘s advice, and Johnson testified that he would not advise a client to destroy documents if that client reasonably anticipates litigation. (D.I. 1062 at 1575:6-12)
Despite the guise of a purportedly unexceptional document retention policy, Rambus destroyed documents selectively. The record demonstrates that Rambus attempted to destroy evidence that would be unfavorable to its litigation position and to keep other, more favorable evidence. The court finds that Rambus’ document retention policy was not content neutral, and its selective implementation goes toward showing that Rambus tried to use the policy to seek an advantage in litigation.
3. Rambus acknowledged the impropriety of the document retention policy
In addition, when Karp later introduced the document retention рolicy to employees, he tried to keep it quiet. (MTX 314) He stated that he would answer questions from employees but preferred to do so face to face; if employees insisted on questioning him via email, the questions were to be “brief and narrowly distributed.” (MTX 314)
Finally, in the first two drafts of goals for Quarter 3 of 1999, created in June and July of 1999, Karp identified organizing a “1999 shredding party at Rambus” (which turned out to be the second shred party) as a goal under the heading “Licensing/Litigation Readiness.” (MTX 434 at 0001, MTX 436 at 0002) After consulting with Steinberg, Karp amended the goals in the final draft to eliminate this reference to the shredding party and instead replaced it with a goal of organizing “a document retention compliance event” under the heading “Database Maintenance.” (MTX 438 at 0002; D.I. 1059 at 468:18-469:19, 472:12-18) Such conduct by Rambus is
4. Rambus’ litigation misconduct
The court found several instances of litigation misconduct by Rambus, which also weigh toward a finding of bad faith. Rambus’ Rule 30(b)(6) witnesses gave false testimony on several subjects, including the presentation of the document retention to the Board and the number of shred days. Micron I, 255 F.R.D. at 147. Rambus employees also did not inform outside counsel of the shred days or the scope of document destruction. Additionally, Rambus’ JEDEC representative Crisp testified that “he was minimally involved with Rambus’ patent prosecution” (D.I. 1060 at 786:6-13, 792:12-793:21) despite several documents showing that he was actually significantly involved. (MTX 133; MTX 848, MTX 47; MTX 54; MTX 65; MTX 77; D.I. 1061 at 1351:5-1353:7) Documents rеvealed that Rambus CEO Tate‘s testimony was false as well when he claimed that he did not take any action to file additional patent claims or have pending claims modified after learning that Rambus’ patents might not cover competing DRAMs. (D.I. 1059 at 651:15-652:4, 656:22-657:4, 663:9-18; MTX 848; MTX 40; MTX 188; see also MTX 48 at 0017)
Rambus made a number of other misrepresentations regarding its intentions behind adopting a document retention policy. For example, despite testimony that Rambus did not contemplate litigation before adopting the document retention policy, notes from a meeting between Karp and Cooley Godward counsel show that litigation was discussed prior to implementation of the policy. (MTX 290) And contrary to Rambus’ position, several documents revealed that it considered the policy to be part of
Rambus’ many instances of litigation misconduct evince an understanding of the impropriety of its document retention policy. Other than to cover up its intentions for spoliating or to preserve its litigation advantage, Rambus would have little reason to hide the extent of its litigation preparation, the scope of its patent prosecution, and the instances of document destruction. In light of the full record, the court finds that Rambus’ litigation misconduct further evidences bad faith.
Contrary to Rambus’ assertions, bad faith and the duty to preserve are not coterminous. The Federal Circuit stated that it was “not clear error for the district court to conclude that the raison d‘etre for Rambus’ document retention policy was to further Rambus’ litigation strategy by frustrating the fact-finding efforts of parties adverse to Rambus.” Micron II, 645 F.3d at 1322. This bad faith underlies the entire policy and permeates any action taken pursuant to the policy. At some point, the bad faith upon which a policy is predicated may dissipate; however, that point has not been reached in the current case as it represents the exact sort of litigation that was meant to be frustrated by the document retention policy. Therefore, although Rambus’ duty to preserve did not arise until after it first adopted its document retention policy, there was nevertheless bad faith insofar as the document retention policy was executed with the intention to impede the fact-finding efforts of Micron or other potential defendants.
Together, the facts demonstrate that Rambus’ document retention policy was adopted as part of its litigation plan, that Rambus executed its policy selectively, that Rambus acknowledged the impropriety of its policy, and that Rambus engaged in
C. Prejudice17
The question of prejudice “turns largely” on whether a spoliating рarty destroyed evidence in bad faith. Micron II, 645 F.3d at 1328. Prejudice to the opposing party requires a showing that the spoliation “materially affect[s] the substantial rights of the adverse party and is prejudicial to the presentation of [its] case.” Wilson v. Volkswagen of Am., Inc., 561 F.2d 494, 504 (4th Cir. 1977). This showing only requires that a party “‘come forward with plausible, concrete suggestions as to what [the destroyed] evidence might have been.‘” Micron II, 645 F.3d at 1328 (quoting Schmid, 13 F.3d at 80). If the spoliation was not done in bad faith, then the burden lies with the non-spoliating party to show prejudice. On the other hand, if the spoliation was done in bad faith, the burden shifts to the spoliating party to show lack of prejudice. Id. A bad faith spoliator carries a “heavy burden” to show lack of prejudice because “[a] party who is guilty of . . .
Since bad faith has been found on Rambus’ part, the burden shifts to Rambus to show lack of prejudice. The court finds that Rambus has not met its heavy burden to demonstrate lack of prejudice and that Rambus’ spoliation materially affects Micron‘s substantial rights.
1. Anticipation, obviousness, and written description defenses
In Micron I, this court noted that the defenses of anticipation and obviousness do not seem likely to depend on internal Rambus documents because prior art references, by definition, must be publicly available. Micron I, 255 F.R.D. at 151 n.59. In addition, the written description requirement — which requires that a patent‘s written description enables one skilled in thе art to make and use the claimed invention — is an objective one. Id. These defenses, based solely on publicly available references or on objective criteria, could not have been prejudiced by Rambus’ spoliation.
However, the court finds that Rambus’ spoliation did prejudice several other claims and defenses asserted by Micron. Rambus’ spoliation at least prejudiced Micron‘s (1) claims and defenses related to patent misuse and violation of antitrust and unfair competition laws, and (2) defense of inequitable conduct.
2. “JEDEC-based” claims and defenses
Micron has asserted several claims and defenses related to Rambus’ participation in JEDEC, including, inter alia, patent misuse, equitable estoppel, waiver,
However, Rambus’ argument does not encompass all of Micron‘s JEDEC-based claims and defenses. Several of Micron‘s claims do not, in fact, require proof that Rambus breached a duty of disclosure to JEDEC. These include claims and defenses based on patent misuse, antitrust violаtions, and unfair competition.19 In other words,
Micron demonstrated at trial that Rambus had destroyed hundreds of boxes of documents relating to at least contract and licensing negotiations, patent prosecution, JEDEC and Board meetings, and finances. Micron I, 255 F.R.D. at 142-43 n.33. These destroyed documents may have contained internal Rambus correspondence, presentations, meeting minutes, or notes pertaining to Rambus’ plans to gain market power or advantages by using information learned at JEDEC meetings. They may also have revealed any deceptive intent behind the representations Rambus made during JEDEC meetings or to JEDEC participants. In other words, as the Federal Circuit suggested, “[d]ocuments relating to Rambus’ conduct at JEDEC, together with documents reflecting Rambus’ instructions to its patent prosecution counsel concerning its conduct at JEDEC, could have helped resolve Micron‘s claims relating to patent misuse, antitrust violations, and unfair competition.” Micron II, 645 F.3d at 1328.
Rambus tries to neutralize the suggestion that such internal documents could have helped any of Micron‘s JEDEC-based claims by arguing, in a footnote, that all the
to coerce an unfair commercial advantage.” C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1372 (Fed. Cir. 1998); see also Princo Corp. v. Int‘l Trade Comm‘n, 616 F.3d 1318, 1328 (Fed. Cir. 2010) (“[T]he key inquiry under the patent misuse doctrine is whether . . . the patentee has impermissibly broadened the physical or temporal scope of the patent grant and has done so in a manner that has anticompetitive effects.“).
3. Inequitable conduct
Rambus’ spoliation also prejudiced Micron‘s defense of inequitable conduct. “Inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011) (en banc). In order to ultimately prevail on an inequitable conduct defense, Micron would have to prove that Rambus “misrepresented or omitted material information with the specific intent to deceive the [Patent and Trademark Office].” Therasense, 649 F.3d at 1287. Inequitable conduct requires findings of both materiality and intent. Star Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008). Whereas materiality and intent were once considered on a “sliding scale” so that a strong showing of materiality permitted a reduced showing of intent, and vice versa, Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362 (Fed. Cir. 1984), the Federal Circuit has since tightened the inequitable conduct framework. Under Therasense, intent and materiality are now separate, independent requirements. Therasense, 649 F.3d at 1287, 1290.
As an initial matter, Rambus argues that Micron‘s complaint fails to meet the new pleading standard for inequitable conduct under Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009).22 (D.I. 1124 at 16-17) However, Micron‘s second
The Federal Circuit suggested that “documents reflecting Rambus’ knowledge of relevant prior art references could have helped resolve Micron‘s inequitable conduct claims.” Micron II, 645 F.3d at 1328. Micron has come forward with plausible, concrete suggestions that such documents may have been found in the materials that Horowitz cleaned out of his office, in Rambus’ in-house patent prosecution files purged by Diepenbrock, and in the 300 boxes of materials destroyed on the second shred day. (D.I. 1061 at 1233:22-1235:3; D.I. 1062 at 1470:13-23; D.I. 1071 аt 102:24-103:4; MTX 398 at 0034-0035; MTX 450) Documents relating to a patentee‘s knowledge of prior art
facts supporting a reasonable inference that a specific individual knew of the misrepresentation and had the specific intent to deceive the PTO.” Sanders, 418 F. App‘x at 918.
To prevail on a claim of inequitable conduct, a defendant must first show that the patentee had specific intent to deceive the PTO. Therasense, 649 F.3d at 1290 (citing Star Scientific, 537 F.3d at 1366). “[T]he accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.” Id. Whether a patentee knew of any specific reference is not a fact that can be gleaned from public documents; rather, non-public documents will be instrumental in showing that the patentee purposely chose not to disclose a known reference to the PTO. Non-public documents, such as notes or internal communications with patent prosecution counsel, may also shed light on the reasoning behind a decision to withhold a reference. As such, proving the intent prong of inequitable conduct would undoubtedly be more difficult for Micron given Rambus’ bad faith spoliation.
Rambus’ spoliation also prejudiced Micron‘s ability to meet the second rеquirement for inequitable conduct, materiality. In Therasense, the Federal Circuit clarified that the relevant standard for the materiality of withheld references is “but-for materiality.” Id. at 1291. “When an applicant fails to disclose prior art, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” Id. Rambus claims that the but-for materiality standard is objective, so its internal documents could not prejudice the materiality prong. (D.I. 1124 at 19-24)
As Rambus’ spoliation precluded Micron from possibly obtaining evidence of affirmative acts of egregious conduct, such as perjury, the manufacture of false arguments, or deliberate fraud during prosecution, Rambus has not satisfied its heavy burden of showing that its destruction of internal documents would not prejudice Micron‘s defense оf inequitable conduct. Again, the fact that no record was made of what documents were destroyed can be of no avail to Rambus, the bad faith actor. As a result, the court finds clear and convincing evidence that Rambus’ spoliation may have prejudiced Micron‘s inequitable conduct claim.
D. Sanctions
1. Factors for determining the appropriate sanction for spoliation
To rectify Rambus’ spoliation, the court must determine what sanction is appropriate. Because the court has the inherent power to control litigation and assure the fairness of proceedings before it, “[t]he particular sanction imposed is within the
If the court finds clear and convincing evidence that the spoliation was done in bad faith and was prejudicial to the opposing party, then dismissal may be an appropriate sanction. Micron II, 645 F.3d at 1328-29 (citing Shepherd v. ABC, 62 F.3d 1469, 1472, 1477 (D.C. Cir. 1995); Gates Rubber Co. v. Bando Chem. Indus., Ltd., 167 F.R.D. 90, 108 (D. Colo. 1996)). However, the Federal Circuit has indicated that “the presence of bad faith and prejudice, without more, do not justify the imposition of dispositive sanctions.” Id. at 1329. The Third Circuit has established three factors that a district court, under its inherent power to impose sanctions, should consider in this regard: (1) the degree of fault of the spoliating party; (2) the degree of prejudice to the adverse party; and (3) whethеr there is a less severe punishment that would avoid substantial unfairness to the adverse party while still serving to deter similar spoliation by others in the future. Schmid, 13 F.3d at 79. The court‘s choice of sanction should
2. The Schmid factors
a. Degree of fault
The first Schmid factor is the degree of fault of the spoliating party. Rambus’ destruction of discoverable documents for the purpose of gaining an advantage in litigation reveals a high degree of fault. The court‘s determination that Rambus had spoliated in bad faith, alone, is enough to show that Rambus is at fault because it intended to impair the ability of potential defendants, like Micron, to defend themselves. Compounding the degree of fault is Rambus’ purposeful, thorough document destruction, which did not occur just once, but several times in 1999 and 2000. Even after Rambus was engaged in litigation against Micron, Hynix, and Infineon, its in-house counsel at the time, Steinberg, expressed a desire to implement a new document retention policy “more effectively.” In addition, as discussed above, Rambus recognized but, nevertheless, continued its wrongdoing during litigation. The degree of fault in Rambus’ spoliation cannot be overstated by the court.
b. Degree of prejudice
As discussed, several of Micron‘s affirmative defenses have been prejudiced by Rambus’ bad faith spoliation. While the precise degree of prejudice cannot be known because Rambus did not keep аny record of what was destroyed, Rambus should not easily be able to excuse its misconduct by claiming that the vanished documents were of minimal import. The wide range and sheer amount of materials destroyed, along with
In a vacuum, Rambus’ counterclaims of infringement would depend entirely on objective evidence supporting, for example, how the asserted claims should be construed or what features the alleged infringing products have. However, adjudication of the case, as a whole, on the merits requires that the infringement claims be viewed in light of all the claims. Here, the parties participated in standards-setting discussions together at JEDEC meetings; the success of Micron‘s affirmative defenses based on Rambus’ participation in JEDEC and patent prosecution and licensing strategies may estop Rambus from prevailing on its infringement claims. In addition, the success of Micron‘s affirmative defense of inequitable conduct would have rendered the patents-in-suit unenforceable against it. Because Rambus’ wrongdoing impaired many of Micron‘s most potent affirmative defenses, it has prejudiced Micron to the extent that adjudication of the case on the merits is not possible.
c. Consideration of lesser sanctions
The court must consider whether there are less onerous punishments available that would avoid substantial unfairness and still serve as an adequate deterrent. Among the options for the court‘s choice of sanctions are attorney fees and costs, other monetary sanctions, adverse jury instructions, evidentiary sanctions, dispositive sanctions, or a combination of those sanctions.
(1) Attorney fees or monetary sanction
(2) Adverse jury instructions
The deterrent effect of an adverse jury instruction is “limited in scope” because of the uncertainty as to whether a jury would draw an inference against the spoliator. See MOSAID Techs., Inc. v. Samsung Elecs. Co., Ltd., 348 F. Supp. 2d 332, 337-38 & n.10 (D.N.J. 2004). It provides a permissible inference but does not necessarily restore the prejudiced party to the same position in which it would otherwise have been. Id. at 338
As primarily a remedial sanction, adverse jury instructions are appropriately used in cases where a party‘s spoliation was not done in bad faith and where the degree of prejudice is low. See, e.g., Baliotis v. McNeil, 870 F. Supp. 1285 (M.D. Pa. 1994).27 Adverse jury instructions, however, do not adequately serve as punishment or deterrence in cases involving spoliation as extensive as Rambus‘. See Samsung, 348 F. Supp. 2d at 338 n.10 (noting that the rationales of punishment and deterrence “play a secondary role with respect to the spoliation inference” of a jury instruction). Where, as here, Rambus’ spoliation was not only extensive, but there is no record of exactly what documents were destroyed, Micron would be “helpless to rebut” anything that Rambus might use to try to overcome the adverse presumption. See id. at 337. Therefore, a sanction of adverse jury instructions would be ineffective as a remedy, punishment, or deterrent.
(3) Evidentiary sanction
An evidentiary sanction foreclosing Rambus from offering evidence on issues related to the subject matter of the destroyed documents would also be inappropriate for
The remedy for successful assertion of Micron‘s inequitable conduct defense is unenforceability. See Therasense, 649 F.3d at 1288 (“Unlike validity defenses, which are claim specific, inequitable conduct regarding any single claim renders the entire patent unenforceable.” (citation omitted)). The successful assertion of patent misuse may also result in unenfоrceability. See Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004, 1025 (Fed. Cir. 2008) (recognizing a limited unenforceability remedy in the patent misuse context). To bar Rambus from presenting any evidence to defend itself on affirmative defenses that would be dispositive of the entire case would effectively compel default judgment. An evidentiary sanction, in other words, would have the same substantive outcome as a dispositive sanction but with much less efficiency. See
(4) Dispositive sanction
Having considered the exceptional circumstances of this case and lesser sanctions available,30 the court finds that the only appropriate sanction is to hold the patents-in-suit unenforceable against Micron.31 Rambus’ destruction of evidence was of the worst type: intentional, widespread, advantage-seeking, and concealed.
The court has considered lesser sanctions and found them inappropriate for the unique circumstances of this case. The appropriate sanction is to hold the patents-in-suit unenforceable against Micron.
IV. CONCLUSION
For the foregoing reasons, the court finds that Rambus’ spoliation was done in bad faith, that the spoliation prejudiced Micron, and that the appropriate sanction is to