How the hell… do I countersue Rambus?

In the interests of history, we thought we would bring to our readers the entire document Hitachi presented in its bid to countersue Rambus.

Last week, as reported here, Hitachi settled with Rambus but we have had many enquiries as to which DDR and SDRAM patents are involved.

Those details are within this court deposition, as is a whole heap of info about JEDEC which readers will find fascinating.

What a shame this case never came to court, for reasons which presumably we will never discover...

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
RAMBUS INC., Plaintiff, v. HITACHI, LTD. and HITACHI SEMICONDUCTOR (AMERICA) INC., Defendants.

Civil Action No. 00-029
Judge Gregory M. Sleet
Demand for Jury Trial

HITACHI, LTD. and HITACHI SEMICONDUCTOR (AMERICA) INC., Counter-Plaintiffs, v. RAMBUS INC., Counter-Defendant.

HITACHI, LTD.’S ANSWER TO COMPLAINT FOR PATENT INFRINGEMENT
Pursuant to Rule 12(a) of the Federal Rules of Civil Procedure, defendant Hitachi, Ltd. (“Hitachi”), by its attorneys, for its Answer to the Complaint for Patent Infringement (“the Complaint”) filed by plaintiff Rambus Inc. (“Rambus”), states as follows:
1. This is an action for patent infringement. This court has jurisdiction under 28 U.S.C. §§ 1331 and 1338(a) and pursuant to the patent laws of the United States of America, 35 U.S.C. § 101, et. seq.

ANSWER:
Hitachi admits that the Complaint contains allegations which purport to state claims for patent infringement. The second sentence of Paragraph 1 contains legal conclusions to which no answer is required. Except as expressly admitted herein, the allegations contained in Paragraph 1 are denied.

2. Venue properly lies within the District of Delaware pursuant to the provisions of 28 U.S.C. §§ 1391(b), (c) and (d) and 28 U.S.C. § 1400(b).

ANSWER:
Paragraph 2 states legal conclusions to which no answer is required. Further answering, Hitachi states that venue is more appropriate and convenient in the Northern District of California.
3. Rambus is a corporation incorporated and existing under the laws of the State of Delaware.

ANSWER:
For its answer to Paragraph 3, Hitachi states that on information and belief, Rambus was incorporated under the laws of the State of California in or about March 1990 and was subsequently reincorporated under the laws of the State of Delaware in March 1997. Except as expressly admitted herein, the allegations contained in Paragraph 3 are denied.

4. RAMBUS is informed and believes that defendant HITACHI, LTD. (“HITACHI”) is a Japanese corporation with its principal place of business in Tokyo, Japan. RAMBUS is informed and believes that HITACHI transacts business, including the sale and offering for sale of its products, in the District of Delaware and has sufficient contacts with this judicial district to subject HITACHI to personal jurisdiction.

ANSWER:
Hitachi admits that it is a Japanese corporation with its principal place of business in Tokyo, Japan. For its answer to the second sentence of Paragraph 4, Hitachi admits that it exports products to the United States, but denies that it transacts business, sells products, or offers to sell products in the District of Delaware. The remainder of Paragraph 4 contains legal conclusions to which no answer is required. Except as expressly admitted herein, the allegations contained in Paragraph 4 are denied.

5. RAMBUS is informed and believes that defendant HITACHI SEMICONDUCTOR (AMERICA), INC. (“HSA”) is a corporation incorporated and existing under the laws of the State of Delaware and is, therefore, a resident of the State of Delaware for purposes of personal jurisdiction. RAMBUS is informed and believes that HSA transacts business, including the sale and offering for sale of its products, in the District of Delaware and has sufficient contacts with this judicial district to subject HSA to personal jurisdiction.

ANSWER:
Hitachi admits that HSA is a corporation incorporated under the laws of the State of Delaware and that HSA has its principal place of business in San Jose, California. Hitachi denies that HSA transacts business, sells products, or offers to sell products in the District of Delaware, and states that the remainder of Paragraph 5 contains legal conclusions to which no answer is required. Except as expressly admitted herein, the allegations contained in Paragraph 5 are denied.
6. Defendants HITACHI and HSA will be collectively referred to hereinafter as “Defendants” or singularly referred to as “Defendant.”

ANSWER:
Hitachi admits that the Complaint purports to refer to Hitachi and HSA as “defendant” or “defendants.”

7. RAMBUS is informed and believes that, at all material times herein mentioned, each Defendant was acting as the agent of the other Defendant, except as otherwise noted, and was at all relevant times acting within the course and scope of such agency.

ANSWER:
Paragraph 7 states legal conclusions to which no answer is required. To the extent that Paragraph 7 might be construed to assert factual allegations, Hitachi denies those allegations.

8. RAMBUS designs and develops high-performance, high-speed, integrated circuit technology.

ANSWER:
Hitachi admits the allegations contained in Paragraph 8.

9. RAMBUS is informed and believes that Defendants import into the United States and/or make, use, sell, and offer for sale Double Data Rate Synchronous Dynamic Random Access Memory (“DDR SDRAM”) devices and modules (including but not limited to all speeds and package types of Hitachi memory devices HM5425401, HM5425801, HM5425161, and all speeds, buffered/registered and unbuffered types of Hitachi memory modules HB54A5129 and HB54A2569, hereinafter collectively referred to as the “Hitachi DDR SDRAM Memory Products”), Single Data Rate SDRAM (“SDR SDRAM”) devices and modules (including but not limited to all speeds and package types of Hitachi memory devices HM5264405, HM5264805, HM5264165, HM5225645, HM525325, HM5212805, HM5212165, HM5225405, HM5225805, HM5225165, HM5251405, HM5251805, HM5251165, and all speeds, buffered/registered and unbuffered types of Hitachi memory modules HB52F88, HB52F89, HB52F168, HB52F169, HB52RF329, HB52F649, HB52RF1289, HB52E169, HB52E168, HB52RD168, HB52R329, HB52RF329, HB52RD328, HB52E649, HB52F649, HB52R1289, HB52R2569), and Synchronous Graphics Random Access Memory (“SGRAM”) devices and modules (including but not limited to all speeds and Synchronous Graphics Random Access Memory (“SGRAM”) devices and modules (including but not limited to all speeds and package types of Hitachi memory device HM5216326, and all speeds, buffered/registered and unbuffered types of Hitachi memory modules containing Hitachi memory device HM5216326).

The DDR SDRAM devices and modules referred to in this paragraph, the SDR SDRAM devices and modules referred to in this paragraph, and the SGRAM devices and modules referred to in this Paragraph will be referred to hereinafter as the “Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products.”

ANSWER:
Hitachi admits that it exports to the United States, and that HSA imports into the United States, certain semiconductor memory products, including the SDR SDRAM and SGRAM devices and modules identified in Paragraph 9. Hitachi admits that it manufactures the SDR SDRAM and SGRAM devices and modules it exports to the United States. Hitachi denies that HSA manufactures any of the products identified in Paragraph 9. Hitachi admits that HSA sells and offers to sell the foregoing SDR SDRAM and SGRAM devices and modules to customers in the United States. As to the DDR SDRAM devices and modules identified in Paragraph 9, Hitachi admits that it has manufactured and exported to the United States samples of DDR SDRAM devices HM5425401 and HM5425801, and samples of DDR SDRAM module HB54A5129. Hitachi admits that HSA has imported the foregoing sample DDR SDRAM devices and modules into the United States, and that HSA has provided some of the samples to potential customers in the United States. Hitachi admits that the Complaint purports to refer to the devices and modules identified in Paragraph 9 as “the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products.” Except as expressly admitted herein, the allegations contained in Paragraph 9 are denied.

10. RAMBUS is informed and believes that Defendants import into the United States and/or make, use, sell, and/or offer for sale Hitachi SH series microprocessor products (including but not limited to all speeds and package type of Hitachi SH-2, SH-3, SH-4 and SH-5 series microprocessor products, including but not limited to SH7604, SH7612, SH7615, SH7708, SH7708S, SH7708R, SH7709, SH7709A, SH7718, SH7718R, SH7729, SH7750, SH7750V, SH7751 and SH8000).

ANSWER:
Hitachi admits that it exports to the United States, and that HSA imports into the United States, certain SH series microprocessor products, including those products specifically identified in Paragraph 10, except for SH7612, SH7718, SH7718R and SH8000. Hitachi denies that HSA manufactures SH series microprocessors or any of the products identified Paragraph 10. Hitachi admits that it manufactures SH series microprocessors. As to the SH series microprocessor products that HSA imports into the United States, Hitachi admits that HSA sells and offers to sell those products to customers in the United States. Except as expressly admitted herein, the allegations contained in Paragraph 10 are denied.

11. RAMBUS is informed and believes that Defendants import into the United States and/or make, use, sell, and/or offer for sale Hitachi chip set products which interface with Hitachi DDR SDRAM, SDR SDRAM and SGRAM devices and modules. The Hitachi chip set products and Hitachi SH series microprocessor products referred to above will be collectively referred to hereinafter as the “Hitachi Chip Set and Microprocessor Products.”

ANSWER:
The term “Hitachi chip set products” is too vague to allow Hitachi to answer the first sentence of Paragraph 11. Hitachi admits that the second sentence of Paragraph 11 purports to refer to “Hitachi chip set products” and “Hitachi SH series microprocessor products” referenced “above” as the “Hitachi Chip Set and Microprocessor Products.” Except as expressly admitted herein, the allegations contained in Paragraph 11 are denied.

12. On June 22, 1999, United States Letters Patent No. 5,915,105 (“the ‘105 Patent”) was duly and legally issued to RAMBUS and is entitled “Integrated Circuit I/O Using a High Performance Bus Interface.”

ANSWER:
Hitachi admits that the ‘105 Patent was issued to Rambus on June 22, 1999, and is entitled “Integrated Circuit I/O Using a High Performance Bus Interface.” Paragraph 12’s allegation that the ‘105 Patent was “duly and legally” issued to Rambus is a legal conclusion to which no answer is required, and to the extent that this allegation might be construed to assert factual allegations, it is denied. Except as expressly admitted herein, the allegations contained in Paragraph 12 are denied.

13. On September 14, 1999, United States Letters Patent No. 5,953,263 (“the ‘263 Patent”) was duly and legally issued to RAMBUS and is entitled “Synchronous Memory Device Having A Programmable Register And Method Of Controlling Same.”

ANSWER:
Hitachi admits that the ‘263 Patent was issued to Rambus on September 14, 1999, and is entitled “Synchronous Memory Device Having A Programmable Register And Method Of Controlling Same.” Paragraph 13’s allegation that the ‘263 Patent was “duly and legally” issued to Rambus is a legal conclusion to which no answer is required, and to the extent that this allegation might be construed to assert factual allegations, Hitachi denies those allegations. Except as expressly admitted herein, the allegations contained in Paragraph 13 are denied.

14. On September 21, 1999, United States Letters Patent No. 5,954,804 (“the ‘804 Patent”) was duly and legally issued to RAMBUS and is entitled “Synchronous Memory Device Having An Internal Register.”

ANSWER:
Hitachi admits that the ‘804 Patent was issued to Rambus on September 21, 1999, and is entitled “Synchronous Memory Device Having An Internal Register.” Paragraph 14’s allegation that the ‘804 Patent was “duly and legally” issued to Rambus is a legal conclusion to which no answer is required, and to the extent that this allegation might be construed to assert factual allegations, it is denied. Except as expressly admitted herein, the allegations contained in Paragraph 14 are denied.

15. On November 30, 1999, United States Letters Patent No. 5,995,443 (“the ‘443 Patent”) was duly and legally issued to RAMBUS and is entitled “Synchronous Memory Device.”

ANSWER:
Hitachi admits that the ‘443 Patent was issued to Rambus on November 30, 1999, and is entitled “Synchronous Memory Device.” Paragraph 15’s allegation that the ‘443 Patent was “duly and legally” issued to Rambus is a legal conclusion to which no answer is required, and to the extent that this allegation might be construed to assert factual allegations, it is denied. Except as expressly admitted herein, the allegations contained in Paragraph 15 are denied.

16. The ‘105 Patent, the ‘263 Patent, the ‘804 Patent and the ‘443 Patent (filed concurrently herewith) will be collectively referred to hereinafter as the “Patents-in-Suit.”

ANSWER:
Hitachi admits that the Complaint purports to refer to the ‘105, ‘263, ‘804 and ‘443 Patents as the “Patents-in-Suit.”

17. RAMBUS is the assignee and exclusive owner of all right, title and interest in and to the Patents-in-Suit, and has the right to bring this suit for damages and injunctive relief.

ANSWER:
Hitachi admits that the Patents-in-Suit identify Rambus as the “assignee” of the patents. Hitachi lacks sufficient information to form a belief as to the truth or falsity of Paragraph 17’s allegation that Rambus is the “exclusive owner of all right, title and interest in and to the Patents-in-Suit.” The remainder of Paragraph 17 states a legal conclusion to which no answer is required. Except as expressly admitted herein, the allegations contained in Paragraph 17 are denied.

18. RAMBUS incorporates by reference the allegations in paragraphs 1 through 17 above.

ANSWER:
For Hitachi’s answer to Paragraph 18, Hitachi incorporates by reference its answers to Paragraphs 1 through 17 as if set forth fully herein.

19. RAMBUS is informed and believes that Defendants, without authority, have directly infringed and continue to directly infringe, under 35 U.S.C. § 271(a), the ‘105 Patent by importing into the United States and/or by making, using, selling, and/or offering for sale in the United States the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products and/or products containing the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products.

ANSWER:
Hitachi denies the allegations contained in Paragraph 19.

20. RAMBUS is informed and believes that each Defendant, without authority, has actively induced and continues to actively induce infringement, under 35 U.S.C. § 271(b), by causing others (including but not limited to the other Defendant) to directly infringe the ‘105 Patent.

ANSWER:
Hitachi denies the allegations contained in Paragraph 20.

21. RAMBUS is informed and believes that each Defendant, without authority, has actively induced and continues to actively induce others (including but not limited to the other Defendant), under 35 U.S.C. § 271(b), to directly infringe the ‘105 Patent by instructing others (including but not limited to the other Defendant) how to use the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products and/or the Hitachi Chip Set and Microprocessor Products.

ANSWER:
Hitachi denies the allegations contained in Paragraph 21.

22. RAMBUS is informed and believes that each Defendant, without authority, has contributorily infringed, and continues to contributorily infringe, under 35 U.S.C. § 271(c), by causing others (including but not limited to the other Defendant) to directly infringe the ‘105 Patent.

ANSWER:
Hitachi denies the allegations contained in Paragraph 22.

23. At least HITACHI has actual notice of the ‘105 Patent under 35 U.S.C. § 287. The filing of this Complaint also constitutes notice to Defendants under 35 U.S.C. § 287. Despite such notice, Defendants have and continue to willfully infringe the ‘105 Patent.

ANSWER:
Hitachi admits that Rambus sent Hitachi a letter dated October 22, 1999, and Hitachi refers to that letter for its complete and accurate contents. Paragraph 23’s allegations as to whether Hitachi received “notice” under 35 U.S.C. § 287 state legal conclusions to which no answer is required. Hitachi denies the allegations contained in the third sentence of Paragraph 23. Except as expressly admitted herein, the allegations contained in Paragraph 23 are denied.

24. RAMBUS has been irreparably harmed by these acts of willful infringement and will continue to be harmed, unless Defendants’ further acts of infringement are restrained by order of this court. RAMBUS has no adequate remedy at law.

ANSWER:
Paragraph 24 states legal conclusions to which no answer is required. To the extent that Paragraph 24 might be construed to assert factual allegations, Hitachi denies those allegations.

25. As result of Defendants’ infringement of the ‘105 Patent, RAMBUS has suffered and will continue to suffer damages in an amount to be proven at trial.

ANSWER:
Hitachi denies the allegations contained in Paragraph 25.

26. This case is an “exceptional” case within the meaning of 35 U.S.C. § 285.

ANSWER:
Paragraph 26 states a legal conclusion to which no answer is required. To the extent that Paragraph 26 might be construed to assert factual allegations, Hitachi denies those allegations.

27. RAMBUS incorporates by reference the allegations in paragraphs 1 through 17 above.

ANSWER:
For Hitachi’s answer to Paragraph 27, Hitachi incorporates by reference its answers to Paragraphs 1 through 17 as if set forth fully herein.

28. RAMBUS is informed and believes that Defendants, without authority, have infringed and continue to directly infringe, under 35 U.S.C. § 271(a), the ‘263 Patent by importing into the United States and/or by making, using, selling, and/or offering for sale in the United States the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products and/or products containing the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products.

ANSWER:
Hitachi denies the allegations contained in Paragraph 28.

29. RAMBUS is informed and believes that each Defendant, without authority, has actively induced and continues to actively induce infringement, under 35 U.S.C. § 271(b), by causing others (including but not limited to the other Defendant) to directly infringe the ‘263 Patent.

ANSWER:
Hitachi denies the allegations contained in Paragraph 29.

30. RAMBUS is informed and believes that each Defendant, without authority, has induced and continues to induce others (including but not limited to the other Defendant), under 35 U.S.C. § 271(b), to infringe the ‘263 Patent by instructing others (including but not limited to the other Defendant) how to use the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products and/or the Hitachi Chip Set and Microprocessor Products, and how to implement and/or perform the methods claimed in the ‘263 Patent using the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products and/or the Hitachi Chip Set and Microprocessor Products.

ANSWER:
Hitachi denies the allegations contained in Paragraph 30.

31. RAMBUS is informed and believes that each Defendant, without authority, has contributorily infringed and continues to contributorily infringe, under 35 U.S.C. § 271(c), by causing others (including but not limited to the other Defendant) to directly infringe the ‘263 Patent.

ANSWER:
Hitachi denies the allegations contained in Paragraph 31.

32. At least HITACHI has actual notice of the ‘263 Patent under 35 U.S.C. § 287. The filing of this Complaint also constitutes notice to Defendants under 35 U.S.C. 287. Despite such notice, Defendants have and continue to willfully infringe the ‘263 Patent.

ANSWER:
Hitachi admits that Rambus sent Hitachi a letter dated October 22, 1999, and Hitachi refers to that letter for its complete and accurate contents. Paragraph 32’s allegations as to whether Hitachi received “notice” under 35 U.S.C. § 287 state legal conclusions to which no answer is required. Hitachi denies the allegations contained in the third sentence of Paragraph 32. Except as expressly admitted herein, the allegations contained in Paragraph 32 are denied.

33. RAMBUS has been irreparably harmed by those acts of willful infringement and will continue to be harmed unless Defendants’ further acts of infringement are restrained by order of this court. RAMBUS has no adequate remedy at law.

ANSWER:
Paragraph 33 states legal conclusions to which no answer is required. To the extent that Paragraph 33 might be construed to assert factual allegations, Hitachi denies those allegations.

34. As result of Defendants’ infringement of the ‘263 Patent, RAMBUS has suffered and will continue to suffer damages in an amount to be proven at trial.

ANSWER:
Hitachi denies the allegations contained in Paragraph 34.

35. This case is an “exceptional” case within the meaning of 35 U.S.C. § 285.

ANSWER:
Paragraph 35 states a legal conclusion to which no answer is required. To the extent that Paragraph 35 might be construed to assert factual allegations, Hitachi denies those allegations.

36. RAMBUS incorporates by reference the allegations in paragraphs 1 through 17 above.

ANSWER:
For Hitachi’s answer to Paragraph 36, Hitachi incorporates by reference its answers to Paragraphs 1 through 17 as if set forth fully herein.

37. RAMBUS is informed and believes that Defendants, without authority, have directly infringed and continue to directly infringe, under 35 U.S.C. § 271(a), the ‘804 Patent by importing into the United States and/or by making, using, selling, and/or offering for sale in the United States the Hitachi DDR SDRAM Memory Products and/or products containing the Hitachi DDR SDRAM Memory Products.

ANSWER:
Hitachi denies the allegations contained in Paragraph 37.

38. RAMBUS is informed and believes that each Defendant, without authority, has actively induced and continues to actively induce infringement, under 35 U.S.C. § 271(b), by causing others (including but not limited to the other Defendant) to directly infringe the ‘804 Patent.

ANSWER:
Hitachi denies the allegations contained in Paragraph 38.

39. RAMBUS is informed and believes that each Defendant, without authority, has actively induced and continues to actively induce others (including but not limited to the other Defendant), under 35 U.S.C. § 271(b), to directly infringe the ‘804 Patent by instructing others (Including but not limited to the other Defendant) how to use the Hitachi DDR SDRAM Memory Products and/or the Hitachi Chip Set and Microprocessor Products.

ANSWER:
Hitachi denies the allegations contained in Paragraph 39.

40. RAMBUS is informed and believes that each Defendant, without authority, has contributorily infringed and continues to contributorily infringe, under 35 U.S.C. § 271(c), by causing others (including but not limited to the other Defendant) to directly infringe the ‘804 Patent.

ANSWER:
Hitachi denies the allegations contained in Paragraph 40.

41. At least HITACHI has actual notice of the ‘804 Patent under 35 U.S.C. § 287. The filing of this Complaint also constitutes notice to Defendants under 35 U.S.C. § 287. Despite such notice, Defendants have and continue to willfully infringe the ‘804 Patent.

ANSWER:
Hitachi admits that Rambus sent Hitachi a letter dated October 22, 1999, and Hitachi refers to that letter for its complete and accurate contents. Paragraph 41’s allegations as to whether Hitachi received “notice” under 35 U.S.C. § 287 state legal conclusions to which no answer is required. Hitachi denies the allegations contained in the third sentence of Paragraph 41. Except as expressly admitted herein, the allegations contained in Paragraph 41 are denied.

42. RAMBUS has been irreparably harmed by these acts of willful
infringement and will continue to be harmed unless Defendants’ further acts of infringement are restrained by order of this court. RAMBUS has no adequate remedy at law.

ANSWER:
Paragraph 42 states a legal conclusion to which no answer is required. To the extent that Paragraph 42 might be construed to assert factual allegations, Hitachi denies those allegations.

43. As a result of Defendant’s infringement of the ‘804 Patent, RAMBUS has suffered and will continue to suffer damages in an amount to be proven at trial.

ANSWER:
Hitachi denies the allegations contained in Paragraph 43.

44. This case is an “exceptional” case within the meaning of 35 U.S.C. § 285.

ANSWER:
Paragraph 44 states a legal conclusion to which no answer is required. To the extent that Paragraph 44 might be construed to assert factual allegations, Hitachi denies those allegations.

45. RAMBUS incorporates by reference the allegations in Paragraphs 1 through 17 above.

ANSWER:
For Hitachi’s answer to Paragraph 45, Hitachi incorporates by reference its answers to Paragraphs 1 through 17 as if set forth fully herein.

46. RAMBUS is informed and believes that Defendants, without authority, have directly infringed and continue to directly infringe, under 35 U.S.C. § 271(a), the ‘443 Patent by importing into the United States and/or by making, using, selling, and/or offering for sale in the United States the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products and/or products containing the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products.

ANSWER:
Hitachi denies the allegations contained in Paragraph 46.

47. RAMBUS is informed and believes that each Defendant, without authority, has actively induced and continues to actively induce infringement, under 35 U.S.C. § 271(b), by causing others (including but not limited to the other Defendant) to directly infringe the ‘443 Patent.

ANSWER:
Hitachi denies the allegations contained in Paragraph 47.

48. RAMBUS is informed and believes that each Defendant, without authority, has actively induced and continues to actively induce others (including but not limited to the other Defendant), under 35 U.S.C. § 271(b) to directly infringe the ‘443 Patent by instructing others (including but not limited to the other Defendant) how to use the Hitachi DDR SDRAM, SDR SDRAM and SGRAM Memory Products and/or the Hitachi Chip Set and Microprocessor Products.

ANSWER:
Hitachi denies the allegations contained in Paragraph 48.

49. RAMBUS is informed and believes that each Defendant, without authority, has contributorily infringed and continues to contributorily infringe, under 35 U.S.C. § 271(c), by causing others (including but not limited to the other Defendant) to directly infringe the ‘443 Patent.

ANSWER:
Hitachi denies the allegations contained in Paragraph 49.

50. At least HITACHI has actual notice of the ‘443 Patent under 35 U.S.C. § 287. The filing of this Complaint also constitutes notice to Defendants under 35 U.S.C. § 287. Despite such notice, Defendants have and continue to willfully infringe the ‘443 Patent.

ANSWER:
Hitachi admits that Rambus sent Hitachi a letter dated November 18, 1999, and Hitachi refers to that letter for its complete and accurate contents. Paragraph 50’s allegations as to whether Hitachi received “notice” under 35 U.S.C. § 287 state legal conclusions to which no answer is required. Hitachi denies the allegations contained in the third sentence of Paragraph 50. Except as expressly admitted herein, the allegations contained in Paragraph 50 are denied.

51. RAMBUS has been irreparably harmed by these acts of willful infringement and will continue to be harmed unless Defendants’ further acts of infringement are restrained by order of this court. RAMBUS has no adequate remedy at law.

ANSWER:
Paragraph 51 states a legal conclusion to which no answer is required. To the extent that Paragraph 51 might be construed to assert factual allegations, Hitachi denies those allegations.

52. As result of Defendants’ infringement of the ‘443 Patent, RAMBUS has suffered and will continue to suffer damages in an amount to be proven at trial.

ANSWER:
Hitachi denies the allegations contained in Paragraph 52.

53. This case is an “exceptional” case within the meaning of 35 U.S.C. § 285.

ANSWER:
Paragraph 53 states a legal conclusion to which no answer is required. To the extent that Paragraph 53 might be construed to assert factual allegations, Hitachi denies those allegations.

FIRST AFFIRMATIVE DEFENSE
By reason of Rambus’ misconduct relating to standard-setting activities and organizations, including but not limited to JEDEC, if one or more of the Patents-in-Suit cover the JEDEC standard, Rambus is obligated to license the Patents-in-Suit without charge or under reasonable terms and conditions that are demonstrably free of unfair discrimination, such that the defendants may make, use, sell, or offer to sell products which implement the JEDEC or other standards.

SECOND AFFIRMATIVE DEFENSE
The Patents-in-Suit are unenforceable due to misuse and/or inequitable conduct and/or violation of the antitrust laws, including the Sherman Act, due to the actions and concealment of Rambus in connection with standard-setting activities and participation in standards-setting organizations, including but not limited to JEDEC; Rambus’ participation in the creation of industry sanctioned and/or de facto standards for Synchronous DRAMs; and Rambus’ illegal attempts to eliminate or capture any JEDEC-approved standards for Synchronous DRAM technology which might compete with proprietary Rambus Synchronous DRAM technology. Attempts by Rambus to enforce the Patents-in-Suit constitute misuse, monopolization, an attempt to monopolize, and/or an unlawful restraint of trade.

THIRD AFFIRMATIVE DEFENSE
The Patents-in-Suit are unenforceable due to misuse and/or inequitable conduct and/or violation of the antitrust laws, including the Sherman Act, due to the actions of Rambus in licensing the Patents-in-Suit pursuant to Technology Agreements which obligate third parties including Hitachi to manufacture Rambus products under Rambus-dictated specifications and which discriminate against non-Rambus products and alternative technologies, thereby excluding potential competitors from the market and/or raising the costs of entry into the market by competitors. These actions have an anti-competitive effect and improperly attempt to extend the limited rights existing under the Patents-in-Suit, so as to constitute misuse, monopolization, an attempt to monopolize, and/or an unlawful restraint of trade.

FOURTH AFFIRMATIVE DEFENSE
The Patents-in-Suit are unenforceable by operation of the doctrine of equitable estoppel, on grounds including but not limited to Rambus’ failure to disclose adequately its intellectual property interests to JEDEC and Rambus’ amending its pending patent claims, if products with Synchronous DRAM technology conforming to the JEDEC-approved industry standards infringe upon Rambus’ patents.

FIFTH AFFIRMATIVE DEFENSE
The Patents-in-Suit are invalid and/or unenforceable for failure to comply with the patent statute including, but not limited to, 35 U.S.C. §§ 102, 103, 112, 113, 120 and 121.

SIXTH AFFIRMATIVE DEFENSE
By reason of proceedings in the United States Patent and Trademark Office during the prosecutions of the family of applications leading to the Patents-in-Suit, the claims of those patents were limited by prosecution history estoppel, as well as by the prior art, so that Rambus is now estopped from maintaining that the Patents-in-Suit are of such scope as to cover or embrace any of the accused products or processes.

SEVENTH AFFIRMATIVE DEFENSE By reason of Rambus’ conduct, including its participation in standards-setting activities and organizations including but not limited to JEDEC, Rambus has granted the defendants an implied royalty-free license under the Patents-in-Suit to make, use, sell, or offer to sell products containing the alleged inventions.

EIGHTH AFFIRMATIVE DEFENSE
The Patents-in-Suit are unenforceable in law and equity by operation of the doctrine of waiver.

NINTH AFFIRMATIVE DEFENSE
The Patents-in-Suit are unenforceable in law and equity due to the unclean hands of Rambus.

TENTH AFFIRMATIVE DEFENSE
The Patents-in-Suit are not infringed.
WHEREFORE, Hitachi prays that this Court enter judgment:

54. Dismissing the Complaint for Patent Infringement;
55. Granting Hitachi its costs and attorneys’ fees pursuant to 35 U.S.C. § 285; and
56. Granting Hitachi such other and further relief as is just and appropriate.

COUNTERCLAIM
Pursuant to Rule 13 of the Federal Rules of Civil Procedure, defendants and counterclaim plaintiffs Hitachi Semiconductor (America) Inc. and Hitachi, Ltd. (together, “Hitachi”), by their attorneys, counterclaim as follows against plaintiff and counterclaim defendant Rambus Inc. (“Rambus”).

Nature of Action
57. This counterclaim seeks damages and injunctive relief as redress for, and relief from, Rambus’ anticompetitive, exclusionary and unfair conduct in the semiconductor computer chip industry.
58. Rambus has engaged in anticompetitive, exclusionary and unfair conduct directed at its competitors, which is intended to monopolize and unfairly restrain trade, and to engage in unfair competition in the relevant markets for: (a) synchronous DRAM interface technology; (b) memory chips that implement that technology, called Synchronous DRAM (“SDRAM”) chips; and (c) logic chips that include memory control technology to work with SDRAM chips (“Logic Chips”), such as memory control circuitry in chip sets, processors, or in ASIC chips.
59. Rambus’ anticompetitive conduct stems from its intentional and improper violation of the rules of the Joint Electronic Devices Engineering Council (“JEDEC”) Solid State Technology Association, the semiconductor engineering standardization body of the Electronic Industries Alliance (“EIA”), a non-profit standard-setting organization open to the industry and designed to foster competition in the several markets for computer chips, and from its anticompetitive and unfair licensing practices.
60. In the 1990s, JEDEC coordinated the development of technology standards for high-speed memory known as Synchronous DRAM or SDRAM, so that memory from different suppliers would be compatible with each other and with the modules and systems that use such memory. Rambus was a JEDEC member at that time and attended meetings called for that purpose. But instead of participating in the JEDEC standard-setting process in good faith, Rambus subverted the process, attempting to use it as a vehicle to control illegally the relevant markets.
61. JEDEC’s rules, designed to prohibit the kind of activity by Rambus at issue in this case, required Rambus to disclose to that organization and its members the existence and nature of certain of Rambus’ patent rights and pending patent applications. Instead of disclosing that information, as required, Rambus improperly revised its pending applications and subsequent applications that were based on the then-pending applications, to cover what it learned from its participation in JEDEC and the disclosures of other JEDEC members and participants.
62. Without knowledge of Rambus’ pending applications, which were maintained in secret, JEDEC determined an industry standard for synchronous DRAM interface technology. Rambus now asserts that certain of its patents, including patents arising from applications that were revised to reflect what Rambus learned from the other JEDEC members and participants, cover the JEDEC SDRAM interface technology standards. If Rambus’ assertions are correct, this would mean that products that follow the previously open JEDEC standard would infringe Rambus’ patents.
63. Rambus’ misconduct became apparent only recently, after Rambus obtained certain patents and asserted them against Hitachi products that are compatible with the open JEDEC standards for SDRAM.
64. Rambus has further engaged in anticompetitive and unfair conduct by illegally seeking to extend the scope of its patent portfolio through unfair license agreements and illegal tying arrangements.
65. This counterclaim also seeks a judgment declaring unenforceable all United States patents and patent applications owned by Rambus that are related to an April 18, 1990 initial application, Serial No. 07/510,898 (collectively, the “Related Family”), which includes, but is not limited to, United States Patent Nos. 5,915,105 (“the ‘105 Patent”), 5,953,263 (“the ‘263 Patent”), 5,954,804 (“the ‘804 Patent”), 5,994,443 (“the ‘443 Patent”) 6,032,214 (“the ‘214 Patent”), and 6,032,215 (“the ‘215 Patent”) (collectively, “the Patents in Suit”). This counterclaim further seeks a judgment declaring the claims of the Patents in Suit invalid and not infringed.

66. This counterclaim additionally seeks a judgment declaring unenforceable all United States patents and patent applications owned by Rambus that are related to any patent applications filed by Rambus while Rambus was a participant at JEDEC meetings or that include changes derived from knowledge Rambus obtained from JEDEC members and participants (collectively, the “Additional Patent Rights”).

Jurisdiction and Venue
67. Hitachi brings this counterclaim to redress Rambus’ violations of Sections 1 and 2 of the Sherman Act, 15 U.S.C. §§ 1, 2 (1994), Rambus’ violations of state antitrust laws (the Cartwright Act, California Business and Professions Code § 16700 et seq.) and Rambus’ violations of state unfair competition laws (California Business and Professions Code § 17200 et seq.), and to obtain a declaration that the Patents in Suit are unenforceable, invalid, and not infringed.
68. There is an actual case or controversy between the parties.
69. This Court has jurisdiction over this counterclaim pursuant to 15 U.S.C. §§ 4, 15, and 26, pursuant to 28 U.S.C. §§ 1337 and 1338, and pursuant to 28 U.S.C. §§ 2201 and 2202. This Court has supplemental jurisdiction over Hitachi’s California state law claims pursuant to 28 U.S.C. § 1367.

70. Venue lies in this Court under 15 U.S.C. § 22 and under 28 U.S.C. § 1391. As described in Hitachi’s motion to transfer venue pursuant to 28 U.S.C. § 1404, however, venue more appropriately lies in the United States District Court for the Northern District of California.

The Parties
71. Counterclaim plaintiff Hitachi Semiconductor (America) Inc. (“HSA”) is a corporation organized and existing under the laws of Delaware. HSA’s principal place of business is San Jose, California, which is located in the Northern District of California.
72. Counterclaim plaintiff Hitachi, Ltd. is a Japanese corporation organized and existing under the laws of Japan. Hitachi, Ltd.’s principal place of business is Tokyo, Japan.
73. Counterclaim defendant Rambus was originally incorporated under the laws of the State of California. Rambus was reincorporated, and currently exists, under the laws of the State of Delaware. Rambus’ principal place of business is Mountain View, California, which is located in the Northern District of California.

Facts Giving Rise to the Counterclaims
The Semiconductor Computer Chip Industry
74. A variety of firms participate in the semiconductor computer chip industry. They include:
(a) firms that develop and design technology for use in or with computer chips;
(b) firms that manufacture component computer parts, including memory chips, logic chips, and the circuits necessary to interface between those components; and (c) firms, sometimes called “systems companies,” including original equipment manufacturers (“OEMs”), that assemble component parts into products that are sold to end users. Some firms perform more than one of those functions.
75. At issue in this lawsuit is the technology necessary to develop “interfaces” between synchronous memory chips employing a type of “Dynamic Random Access Memory,” or “DRAM,” and Logic Chips.
76. DRAM “interfaces” allow Logic Chips to communicate with semiconductor memory chips, and thus retrieve information from and store information into the memory chips.
77. The SDRAM interfaces at issue here incorporate features that allow the SDRAM to operate at higher speeds than predecessor types of DRAM. SDRAMs incorporate a system of clocks that key the memory operations to a series of electronic pulses generated by the clocks. Controlled by clock pulses, the memory stores and retrieves data in a carefully timed or “synchronous” fashion, which allows the processor to send and receive data in rapid-fire sequences, such as “bursts.” This technology contrasts with slower-speed “asynchronous” DRAM, which was not timed with these clock pulses.
78. There are several different types of SDRAM, including single data rate SDRAM, or “SDR SDRAM,” and double data rate SDRAM, referred to as “DDR” or “DDR SDRAM.” Hitachi manufactures SDR SDRAMs for the market and has developed and shipped sample DDR SDRAMs. Other SDRAM manufacturers include Samsung, Toshiba, NEC, Infineon, Micron, Hyundai, Fujitsu, Oki, Vanguard International, Mitsubishi Electronics America, and Winbond Electronics Corporation. Several of those SDRAM manufacturers have substantial operations in the Northern District of California.
79. “RDRAM” is also a type of SDRAM. RDRAM was designed by Rambus and is produced by Rambus licensees in accordance with the Rambus “architecture.” RDRAMs are generally more expensive than other types of SDRAMs.
80. In order to use the SDRAM chips in products, Logic Chips and SDRAM chips must be “compatible.” That is, the SDRAM chips and Logic Chips must be designed to a common architecture so that they can function together.
81. Rambus has licensed its technology both to SDRAM manufacturers, including Hitachi, Ltd., Samsung, NEC, and others, and to manufacturers of Logic Chips, including Intel. Hitachi and other Rambus licensees have paid to Rambus millions of dollars to license the technology. Rambus’ licenses and technical collaboration agreements impose substantial and unwanted obligations on licensees. Rambus’ licenses do not simply permit the use of Rambus patents. Rather, the license agreements require, as a condition of licensing one of Rambus’ patents, that the licensees license numerous other Rambus patents. The license agreements also require the licensees to use the patents to manufacture synchronous memory and Logic Chips only to Rambus’ requirements, including requiring the licensees to use Rambus-controlled tests and know-how to manufacture their products to Rambus’ specifications.
82. SDRAM manufacturers sell SDRAMs to systems companies, including OEMs such as Compaq, Dell, and Nintendo. The OEMs purchase computer components, such as SDRAM and Logic Chips, and then assemble those components into computers and other products.
83. To manufacture any type of SDRAM memory chips or Logic Chips for OEMs or other systems companies, a manufacturer must have access to technology that permits the Logic Chips and SDRAM memory chips to communicate or “interface” with one another in a compatible manner at high speeds.
84. The need for compatible communications between Logic Chips and SDRAMs has led to competition to develop the interface “architecture” technology necessary for those communications to occur, creating a synchronous DRAM interface technology market. Technology in that market is often “sold” through license agreements. The competitors in that market have included Rambus and members of standard-setting organizations, such as JEDEC, including Hitachi, through HSA. That market is a relevant product market in this case. The relevant geographic market for this product market is the United States.
85. There are at least two additional relevant product markets at issue in this case:
a. the market for the memory chips that implement synchronous DRAM interface technology, which consists of SDRAMs and functionally interchangeable substitutes; and
b. the market for the Logic Chips that perform the memory control function that are compatible with SDRAMs using the synchronous DRAM interface technology.
86. The relevant geographic market for both of those product markets is the United States. Rambus competes in both of these product markets through its promotion of RDRAM sales and through the extraction of supracompetitive royalties from its licensees based upon their sales in these markets.

Rambus’ Intent to Control the Industry
87. Rambus was founded in March 1990 by Michael Farmwald and Mark Horowitz. On information and belief, Rambus was incorporated for the purpose of commercializing a high-speed interface technology for SDRAMs to communicate with other computer components.
88. Rambus designs, develops, licenses, and markets synchronous DRAM interface technology, including the interface technology used with SDRAMs, such as RDRAM memory chips.
89. Rambus profits through licencing its patents and other non-patented technology to synchronous memory and Logic Chip manufacturers.
90. Rambus has publicly indicated that it intends to control the interface technology standard for high-speed synchronous memory, and thus control the SDRAM and Logic Chip markets.

Rambus’ Patents and Applications
91. On April 18, 1990, Rambus filed in the United States Patent and Trademark Office, or “PTO,” an application, Serial No. 07/510,898 for a patent (the “Initial Application”).
92. Near the time Rambus filed its Initial Application, the semiconductor industry began to develop a standard interface technology for SDRAM chips. OEMs assembling products containing memory chips required that their component manufacturers produce compatible parts. That way, a processor, chip set or ASIC chip that includes memory control functions from one firm can be used with memory chips produced by other firms. With the development of a “standard” technology to be adopted throughout the industry, computer chips developed by different firms are capable of communicating in a compatible manner, or “interfacing” with one another, making the industry more efficient. The industry’s intent was to develop an “open” standard technology, that is, a technology that would be available to all industry members either without charge or under reasonable terms and conditions that are demonstrably free of any unfair discrimination. Under no circumstances was any member to refuse to license or seek an injunction against technology necessary to implement an open standard.

93. A “continuation” is a later application for a patent, usually filed by the same inventor or inventors and containing the same disclosures. If the continuation is filed during the pendency of a “parent” application and makes reference to the parent application, and does not add new matter, then the continuation can be entitled to the benefit of the parent’s filing date.
94. A “divisional” is a later patent application for a separate invention carved out of a prior application. Like a continuation application, a divisional application, if filed during the pendency of a parent application and not adding new matter, can be entitled to the benefit of the filing date of the prior application out of which it was divided.
95. Rambus eventually abandoned the Initial Application. Before doing so, however, it filed at least one continuation and various divisional applications in 1992, and then filed numerous additional continuation and divisional applications in subsequent years, including in the years 1994, 1995, 1996, 1997, 1998, and 1999. Those continuations and divisionals, which led to and include the Patents in Suit, each assert the benefit of the filing date of the Initial Application.

96. In 1999, four of the Patents in Suit issued. The ‘105 patent issued on June 22, 1999; the ‘263 patent issued on September 14, 1999; the ‘804 patent issued on September 21, 1999; and the ‘443 patent issued on November 30, 1999. On February 29, 2000, the ‘214 and the ‘215 patents issued. Each of those Patents is part of the Related Family. For each of the Patents in Suit, Rambus claims the benefit of the Initial Application filed April 18, 1990. Rambus also claims, for the Patents in Suit, the benefit of numerous continuation and divisional applications that were co-pending during the period Rambus participated in and was a member of JEDEC.

JEDEC
97. The Electronic Industries Association (the “EIA”) is a more than 70-year-old organization devoted to the development and promulgation of new technologies and products for the United States and worldwide. The EIA sponsors JEDEC, the leading standard-setting organization in the semiconductor computer industry.
98. JEDEC sets industry standards through its members’ participation in numerous committees, organized by subject matter. In the 1990s, certain of JEDEC’s committees, including the JC-42.3 Committee on RAM Memories, were devoted to the development of standards, including interface standards, for semiconductor memory chips. At all relevant times, HSA was, and is, a member of JEDEC. At all relevant times, HSA regularly communicated with its corporate parent, Hitachi, Ltd., regarding the activities of the JEDEC committees. Representatives of Hitachi, Ltd. also attended the JEDEC meetings. Representatives of many other member and nonmember companies did also.

99. In 1991, JEDEC members began considering the development of standards for SDRAM technology. Rambus began attending JEDEC committee meetings no later than December 1991 and formally joined as a committee member at least as early as 1992.

JEDEC’s Disclosure Rules
100. Before Rambus had attended its first JEDEC committee meeting, JEDEC members had established and had been following a policy governing the disclosure of patents and patent applications of those firms and individuals participating in its meetings: all participants in the meetings were obligated to inform those present of any knowledge they had of any patents or pending patents that might relate to the work the JEDEC members were undertaking. Participants were thus required to disclose any patents or patent applications that could bear upon a standard that JEDEC members had under development. Upon disclosure, holders of patents or applications were to make their patents available without charge or under reasonable terms and conditions that were demonstrably free of any unfair discrimination.
101. The purpose of JEDEC’s policy governing the disclosure of patents and applications was to prevent any single firm from secretly capturing the industry standard and to prevent an unscrupulous member from manipulating the standards-setting process to its personal advantage, so it could extract unreasonable and discriminatory royalties from those who manufacture their products to be compatible with the standard.
102. An example of the disclosure policy’s importance occurred in the early 1990s. In the early 1990s, two JEDEC members, Wang Laboratories, Inc. (“Wang”) and Mitsubishi Electric America, Inc. (“MELA”), became involved in a patent dispute relating, in part, to Wang’s failure to disclose certain patent applications in accordance with the JEDEC disclosure policy. Wang first sued MELA alleging patent infringement. MELA countersued Wang, asserting that Wang’s failure to disclose the patent applications rendered the resulting patents that issued unenforceable through equitable estoppel, and that, by failing to disclose the patent applications and by trying to enforce the resulting patents, Wang violated the antitrust laws. Wang Lab., Inc. v. Mitsubishi Elec. Amer. Inc., No. CV 92-4698 JGD (C.D. Cal. 1993).
103. Wang moved for summary judgment on MELA’s equitable estoppel defense. The district court denied the motion, holding that MELA had created a genuine issue of fact in support of the equitable estoppel defense. MELA eventually prevailed at a trial that did not address MELA’s antitrust claims. The case was resolved before those claims were fully litigated.
104. In the wake of the Wang litigation, JEDEC formally amended its rules to expressly state what had always been its policy, that is, that JEDEC participants were required to disclose any patents and patent applications potentially bearing on JEDEC’s standards-setting discussions. By October 1993, JEDEC had amended the JEDEC Manual of Organization and Procedure to include a provision stating: The Chairperson of any JEDEC committee, subcommittee, or working group must call to the attention of all those present the requirements contained in EIA Legal Guides, and call attention to the obligation of all participants to inform the meeting of any knowledge they may have of patents, or pending patents, that might be involved in the work they are undertaking. (JEDEC Manual of Organization and Procedure JEP 21-I (Revision of 21-H) October 1993.)
105. Consistent with its disclosure policy, JEDEC called for “viewgraphs” to be posted at committee meetings. The recommended viewgraph stated: Standards that call for use of a patented item or process may not be considered by a JEDEC committee unless all of the relevant technical information covered by the patent or pending patent is known to the committee, subcommittee, or working group. In addition, the committee Chairperson must have received written notice from the patent holder or applicant that one of the following conditions prevails:
A license shall be made available without charge to applicants desiring to utilize the patent for the purpose of implementing the standard(s), or
A license shall be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair discrimination.
In either case, the terms and conditions of the license must be submitted to the EIA General Counsel for review. An appropriate footnote shall be included in the standard identifying the patented item and describing the conditions under which the patent holder will grant a license. (EIA/JEDEC Patent Policy Summary, JEDEC Manual No. 21-I at 23.) Viewgraphs of that nature were posted at JEDEC meetings.
106. JEDEC’s rules thus imposed a “duty to speak” on meeting participants holding relevant patents or pursuing potentially relevant patent applications. The duty to speak was particularly significant for pending patent applications because pending patent applications are not publicly available. JEDEC members and participants had to rely on the good faith of their fellow JEDEC members and participants to comply with this duty to speak if JEDEC members were to develop truly open standards, as was their charter.
107. JEDEC’s duty-to-speak policy and disclosure rules implementing that policy remained in effect while Rambus continued as a member of JEDEC. Rambus was aware of that duty. For example, in late 1993, Rambus disclosed to JEDEC members and participants Rambus’ U.S. Patent 5,243,703 (“the ‘703 Patent”). Rambus disclosed the ‘703 patent even though the detailed, narrow claims of that patent were not directly pertinent to the potential SDRAM standard then being discussed. Rambus has not asserted the ‘703 patent against Hitachi’s products. Nevertheless, Rambus’ disclosure of the ‘703 patent demonstrates that Rambus was aware of JEDEC’s requirement that JEDEC members and meeting participants disclose all potentially relevant patents and patent applications.
108. Throughout the time periods relevant to this case, Rambus knew or should have known of JEDEC’s pre-1993 patent policies, the Wang litigation, and the 1993 formalization of JEDEC’s patent disclosure rules.

Rambus’ Participation in JEDEC
109. In 1991, JEDEC members began discussing various technological features for inclusion in an industry standard for SDRAM technology, including an interface technology standard. In developing that standard, JEDEC members and participants discussed, in open meetings, interface technology features such as external and internal clocking, mode registers, latency, and storable burst. Rambus was present at, and participated in, those meetings. Rambus now asserts that those features are covered by the Patents in Suit.

110. Beginning in 1991, and continuing through a series of meetings over a several-year period, JEDEC members developed and approved SDRAM technology standards, including an SDRAM interface standard.

Rambus’ Failure to Disclose
111. From 1991 to the filing of this lawsuit, Rambus never affirmatively disclosed to JEDEC or its members and participants that Rambus purported to have enforceable patent rights or patent applications which potentially could cover the JEDEC SDRAM interface standard.
112. From 1991 to 1995, and thereafter, Rambus was silent about its patent applications leading to the Patents in Suit, despite its duty to disclose to JEDEC members the nature and existence of those applications.
113. Rambus was silent even though it knew or should have known of the Wang litigation, of JEDEC’s rules, and despite knowing that JEDEC, its members, and those attending JEDEC meetings were relying on Rambus to affirmatively disclose its patents and applications consistent with JEDEC’s policy and rules.
114. Indeed, Rambus’ 1993 disclosure of the ‘703 Patent suggested to JEDEC members and participants that Rambus was disclosing all of its patents and pending patents that could be pertinent, and was not misleading JEDEC members and participants about Rambus’ intention to assert other potential patent rights against products made to the JEDEC standards which were being developed, including the SDRAM interface technology.
115. By at least 1995, Rambus knew or should have known that, because of its silence when it had a duty to speak at the JEDEC meetings, if patents issued from its then-pending patent applications, Rambus would not be in a position to assert those patents against products implementing the proposed JEDEC standards. Thus, on September 11, 1995, Rambus stated to JEDEC members and participants: At this time, Rambus elects to not make a specific comment on our intellectual property position relative to the Synclink proposal. Our presence or silence at committee meetings does not constitute an endorsement of any proposal under the committee’s consideration nor does it make any statement regarding potential infringement of Rambus intellectual property.
116. Rambus’ September 11, 1995 statement did not comply with JEDEC’s rules requiring affirmative disclosure of patent applications.
117. In November 1995, the Federal Trade Commission (the “FTC”) and Dell Computer Corporation (“Dell”) published in the Federal Register a proposed settlement, in the form of a proposed Consent Decree, of an antitrust investigation by the FTC of Dell under Section 5 of the FTC Act. The FTC had investigated Dell’s failure to disclose a patent to a standard-setting organization akin to JEDEC. See File No. 931-0097, 60 Fed. Reg. 57870 (Nov. 22, 1995). The proposed Consent Decree sought to prevent Dell from enforcing the patent that Dell had failed to disclose.
118. On May 20, 1996, the FTC formally issued an antitrust complaint against Dell, and at the same time published the final consent decree and order resolving the matter. The consent decree and order prohibited Dell from enforcing the patent it improperly failed to disclose. In re Dell Computer Corp., 121 F.T.C. 616, FTC LEXIS 291 (May 20, 1996).
119. One month after the announcement of the Dell consent decree, Rambus announced it was leaving JEDEC. Rambus made the announcement in a June 17, 1996 letter, stating:
Recently at JEDEC meetings the subject of Rambus patents has been raised. Rambus plans to continue to license its proprietary technology on terms that are consistent with the business plan of Rambus, and those terms may not be consistent with the terms set by standards bodies, including JEDEC.
The letter listed certain issued Rambus patents, but failed to disclose any information about pending applications in the Related Family or the Additional Patent Rights, other than a statement that “Rambus has also applied for a number of additional patents in order to protect Rambus technology.”

Rambus’ Abuse of the Information It Learned from JEDEC Meetings
120. Rambus’ failure to disclose its pending patent applications was only the iceberg’s tip of its misconduct in connection with the JEDEC standards-setting process. During JEDEC committee meetings, while Rambus remained silent about its patent applications, and its plan to file additional applications to attempt to cover the proposed standards, other JEDEC members and participants participated in good faith, and shared their technical information so that open industry standards could be developed.

121. Rambus took advantage of the information it learned from the participants at the JEDEC committee meetings, and from the proposed standards then under discussion. Rambus used that information to revise secretly its then-pending but undisclosed patent applications and/or to prepare related additional applications to cover the very technology and potential standards being discussed by other JEDEC participants.

122. By participating in the JEDEC standards development process without disclosing its pending patent applications covering synchronous DRAM interface technology, and by revising its applications and later filing related applications to attempt to make its later-issued patents cover products manufactured to be compatible with the JEDEC standard, Rambus intentionally misled JEDEC members into promulgating standards which, according to Rambus’ allegations against Hitachi, is not the open standard the JEDEC members intended and believed it to be.

123. Rambus’ subversion of JEDEC’s rules misled JEDEC members and the rest of the industry into believing that products compatible with the open JEDEC standard for SDRAMs would not be subject to any undisclosed claim of proprietary rights or assertions of patent infringement by Rambus.

124. Hitachi and other firms in the industry spent millions of dollars in product development, testing, and marketing of SDRAM chips and other products compatible with what was thought to be open technology – technology that was to be free of patent suits seeking to enjoin that technology. Now Rambus claims, and seeks to enforce, patents that allegedly cover that open standard.

125. HSA, other JEDEC members, Hitachi, Ltd., and other manufacturers relied on Rambus’ silence at JEDEC meetings and thus, continued to participate in the development of the JEDEC open standards, instead of exploring alternative standards.

Rambus’ Market Power

126. Rambus’ misconduct at JEDEC meetings, and its subsequent exploitation of the information it learned at those meetings, has given it monopoly power, or a dangerous probability of obtaining market power, in the relevant markets if products compatible with the JEDEC standard are subject to Rambus’ proprietary control. If Rambus’ patent claims otherwise have merit, Rambus will control the interface technology market for high-speed synchronous DRAM memory, as Rambus already controls the only significant architecture which competes with the “open” JEDEC interface standard.

127. If Rambus succeeds in asserting the Patents in Suit against products designed to be compatible with the open JEDEC standard, Rambus also will control the relevant markets for synchronous DRAM memory and Logic Chips, which cannot be made without reasonable access to a reliable synchronous DRAM interface technology. Indeed, if Rambus is to be believed, it has the market power to stop completely the production of all SDRAMs and Logic Chips except its RDRAMs and compatible Logic Chips.

128. Rambus thus has the market power, or a dangerous probability of obtaining the market power, to profitably raise its price and reduce output in each of the relevant markets: the market for synchronous DRAM interface technology; the market for SDRAMs; and the market for Logic Chips.

129. Reflecting its asserted power in the SDRAM and Logic Chip markets, Rambus has negotiated “technology license agreements” with chip manufacturers, including SDRAM manufacturers, such as Hitachi, Ltd. and Samsung, and chip set manufacturers, such as Intel, which set forth terms upon which the manufacturers may produce products using Rambus’ patented and non-patented technology. Through these “technology license agreements” and other arrangements, Rambus has attempted to extend its purported monopoly on synchronous DRAM interface technology to the markets for SDRAM and Logic Chips.

Rambus’ Improper Use of Lawsuits and the Press

130. Rambus filed a first lawsuit against Hitachi on January 18, 2000, one day after a public announcement that an alliance of industry participants had been formed to develop an alternative competitive synchronous DRAM interface technology. Rambus filed a second lawsuit against Hitachi on February 29, 2000, the same day two more recent Rambus patents issued, the ‘214 and ‘215 patents. The parties have stipulated to the consolidation of the two cases.

131. Rambus has used its lawsuits as a means of publicizing its assertion that products compatible with the JEDEC standards infringe Rambus’ patents, making Rambus technology the dominant, if not sole, standard in the industry. Rambus not only announced on its website the fact that it has sued Hitachi in this case, but it also published there a complete copy of Rambus’ first Complaint. Rambus publicly has stated that its intention in filing this action is to stop the importation, sale, manufacture, and use of Hitachi SDRAM products.

132. On March 23, 2000, Rambus issued a press release announcing that it was requesting the United States International Trade Commission (the “ITC”) to conduct an investigation of the products of Hitachi, Ltd., and one of Hitachi’s customers, Sega Enterprises, Ltd., pursuant to section 337 of the Tariff Act of 1930. Rambus apparently contends that Hitachi, Ltd. and Sega have unlawfully imported into the United States, and sold in the United States after importation, products covered by United States Patents Nos. 6,034,918 and 6,038,195, which Rambus reportedly owns.

133. In suing Hitachi the day after a competitive alliance was announced, in making public comments, in filing successive lawsuits, and in seeking to induce the ITC to initiate a proceeding against the products of Hitachi and its customers, Rambus has sent a signal to Rambus’ competitors and customers that if Rambus has its way, there will be no competition in the technology market for synchronous DRAM interface technology or in the markets for SDRAM memory and Logic Chips.

134. Rambus’ anticompetitive acts constitute a course of conduct designed to hurt competition in the SDRAM technology market, in the SDRAM market, and in the Logic Chip market, subjecting Rambus to antitrust liability under Section 2 of the Sherman Act, 15 U.S.C. § 2.

The Damaging Success of Rambus’ Illegal Campaign

135. Rambus’ misconduct, the climate of fear created by the lawsuits, and by Rambus’ public statements about the lawsuits and possible ITC proceedings, is costing Hitachi sales revenues and the confidence of customers, which will restrict future sales. Hitachi’s customers who purchase SDRAMs have inquired about the Rambus lawsuits, asking if Hitachi will be able to deliver its products and questioning whether they could face liability from Rambus if they use the Hitachi products that now stand accused of patent infringement. Rambus’ efforts to have the products of Hitachi’s customers excluded from the United States is certain to increase that anxiety.

136. This lawsuit comes at a key time in the standard-setting competition between Rambus proprietary RDRAM architecture and the architecture promoted by competitive SDRAM technologies. Rambus has publicly stated that development of alternative technologies by licensees or prospective licensees is a major threat to Rambus’ business. Rambus’ anticompetitive actions are attempting to suppress industry acceptance of anything but Rambus proprietary technology, amid concerns that the alternatives might not be available in the face of potential patent infringement problems. The uncertainty created by Rambus over alternatives to its own technology poses the potential for raising the cost and reducing the likelihood of implementing competing designs.

137. Rambus’ abuse of the JEDEC standard-setting process also serves to discourage participation in industry standards-setting procedures that otherwise would foster competition which would lower the cost of entering the SDRAM and Logic Chip markets by allowing manufacturers to engage in active competition in the products and product lines compatible with those standards. If Rambus’ lawsuits are successful, Rambus will have succeeded in converting the JEDEC standards-setting process from a pro-competitive process to one that will serve anticompetitive ends.

138. If Rambus’ patent rights cover JEDEC’s SDRAM interface standards, Rambus’ subversion of the industry standards-setting process will significantly increase the costs of competitors in the SDRAM and Logic Chip markets and will allow Rambus to charge supracompetitive and discriminatory prices for its synchronous DRAM interface technology. Rambus’ conduct, if successful, will result in higher prices for manufacturers of SDRAMs, for manufacturers of Logic Chips, for OEMs, and for end users of the many products that include SDRAMs and Logic Chips. Rambus’ conduct, if successful, will eliminate SDR SDRAMs and DDR DRAMs as the less expensive alternatives that they are now, and artificially render the now more expensive RDRAMs as the least cost alternative.

139. Manufacturers and users of SDRAMs and Logic Chips have been and will be injured if they must pay the monopoly profit royalty that Rambus is seeking to exact for access to a technology standard that should be an open standard, available for no royalty or at a far lower “reasonable” and “non-discriminatory” royalty rate in a competitive market.

140. The foregoing injuries described above are injuries of the type the antitrust laws were designed to prevent. As a result of Rambus’ conduct, consumers of computers are faced with higher prices.

141. Hitachi, Ltd. and HSA were, and are, firms targeted by Rambus with Rambus’ exclusionary conduct; that is, both Hitachi, Ltd. and HSA were, and are firms against which Rambus has directed its conduct. Hitachi, Ltd.’s and HSA’s injuries arise directly out of the markets Rambus seeks to harm.

COUNT I

MONOPOLIZATION AND ATTEMPTED MONOPOLIZATION

(15 U.S.C. § 2)

142. Paragraphs 1 through 85 are incorporated herein by reference as if fully set forth herein.

143. This Count of the counterclaim seeks damages and injunctive relief against counterdefendant Rambus, by reason of Rambus’ monopolization and attempted monopolization of the relevant markets in violation of Section 2 of the Sherman Act, 15 U.S.C. § 2.

144. There exist relevant markets in the United States consisting of the market for synchronous DRAM interface technology; the market for SDRAM chips; and the market for Logic Chips. Hitachi, through HSA and its membership in JEDEC, competes against Rambus in the technology market, and Rambus, through its promotion of RDRAMS and compatible Logic chips and through its licensee, competes against Hitachi in the SDRAM and Logic Chip markets.

145. Rambus has achieved monopoly power in the relevant markets. In the alternative, Rambus possesses a dangerous probability of successfully monopolizing the relevant markets.

146. With the specific intent to acquire or the intent to maintain monopoly power in and over the relevant markets, Rambus committed various exclusionary, predatory, or anticompetitive acts described in this counterclaim, including:

a. Rambus has subverted the process by which JEDEC members promulgated and adopted industry-wide standards, as described above.

b. Rambus has subverted the process by which JEDEC members formulated and adopted industry-wide standards such that if Rambus’ patent claims are successful, it will have established its interface technology as the industry-wide standard. By its silence in the face of a duty to speak, Rambus created the deliberate impression among JEDEC members, and among semiconductor chip, processor and chip set manufacturers, computer manufacturers, and other OEM manufacturers, that the JEDEC standard was “open technology,” i.e., that there would not be any as-of-then-undisclosed claims by Rambus of proprietary rights in products manufactured to that standard.

c. Rambus has then improperly revised its patent applications to attempt to cover the JEDEC standard.

d. Rambus has demanded excessive royalties from Hitachi, and on information and belief, other manufacturers, sellers, and end-users of SDRAMs and Logic Chips, and Rambus has threatened and sought to exclude from the SDRAM and Logic Chip business anyone who refuses to pay Rambus’ excessive and discriminatory royalties. Only after Hitachi and many other industry participants accepted the JEDEC interface technology standard as open, investing great resources in products manufactured to be compatible with that standard, did Rambus begin asserting rights in the Patents in Suit and demanding excessive royalties. The royalties Rambus has demanded and obtained are much greater than Rambus would be able to demand or obtain if (i) JEDEC members had not adopted as the industry standard a standard which Rambus asserts the Rambus patents cover or (ii) if suppliers and end-users had been informed by Rambus at the outset of the existence of Rambus’ patent applications and plan for future patent applications based thereon and that Rambus would subsequently seek substantial royalties for patents issuing therefrom.

e. Rambus has instituted these actions against Hitachi to try to coerce Hitachi, and others, under threat of exclusion from the marketplace, to sign unfair and improper license agreements covering the Patents in Suit.

f. Rambus has illegally and unreasonably exercised control over the patents by licensing these patents on unilaterally determined, artificial, arbitrary, and discriminatory terms and conditions. Among these terms and conditions was the refusal to license at all other than to manufacture RDRAM-compatible products and by attempting to impose a significantly higher royalty on licensees who do not agree to manufacture RDRAM-compatible products.

g. Rambus has, through its patent portfolio, engaged in a pattern of, and has established procedures to foster, delay, and offer licenses only on unreasonable terms, including unfairly seeking to extract greater royalties on products that use less Rambus intellectual property; for example, Rambus has extracted higher royalties on Logic Chips than on memory chips even though its patents do not extend to the Logic Chips or, if they do, by charging a double royalty for a single use of Rambus’ alleged invention.

h. Rambus has discriminated against and refused to allow Hitachi to utilize Rambus’ patents on reasonable terms free of any unfair discriminations.

i. By offering to license its technology only on unreasonable terms, Rambus has effectively refused to license the technology.

j. Rambus has illegally tied the license of its one or more Patents in Suit (“tying products”) to its licensees’ use of other Rambus patented and unpatented technologies (“tied products”); Rambus also has illegally tied the license of its synchronous DRAM interface technology (a “tying product”) to its licensees’ manufacture of Rambus-compatible products (“tied products”). Those arrangements constitute illegal tying arrangements, full line forcing, package licensing, and patent misuse.

k. Rambus has overtly and intentionally interfered, directly and indirectly, with HSA’s and Hitachi, Ltd.’s relationships with their customers. Rambus’ interference includes the filing of the claims in these lawsuits, the publishing of the complaint, and the announcing in the press that Rambus is attempting to persuade the ITC to initiate proceedings against products of Hitachi and one of its customers, all in a scheme to threaten all industry members who make, use, or sell products compatible with the JEDEC standards believed to be open and available.

l. Rambus has entered into restrictive license agreements by which it seeks to control the relevant markets for SDRAM and Logic Chips, and otherwise illegally extended and misused its patent rights.

m. Through the foregoing actions, individually and collectively, Rambus’ has intentionally raised its rivals’ costs.

n. Through the foregoing actions, individually and collectively, Rambus has raised barriers to entry in the relevant markets.

o. The foregoing conduct was directed at market participants, including Rambus’ competitors, for the purpose of permitting Rambus to exclude competition and maintain price in the relevant markets.

147. The above-described acts constitute monopolization and attempted monopolization of the relevant markets, in violation of Section 2 of the Sherman Act, 15 U.S.C. § 2.

148. Rambus’ actions have had the purpose and/or effect of restraining competition in the relevant markets, inter alia, artificially inflating the value of the Patents in Suit, increasing Rambus’ power to exclude competition, improperly extending Rambus’ patent grants, and artificially increasing the cost of SDRAMs that compete with RDRAMs so that RDRAMs, which are now the highest cost alternative, can compete in the market. Rambus’ actions have enabled and will enable Rambus to earn more than that to which Rambus is entitled even assuming that its patents are valid and infringed, which Hitachi disputes.

149. The activities of each of HSA, Hitachi, Ltd., and Rambus have, and have had, a substantial effect on interstate commerce. Rambus’ conduct described in this Counterclaim and this Count also has had a substantial effect on interstate commerce and it will continue to have such an effect.

150. By reason of Rambus’ unlawful monopolization and/or attempted monopolization, Hitachi has been injured in their business and property in an amount that has yet to be determined but will be established at trial.

151. Unless Rambus is enjoined by a court of law, Rambus’ unlawful conduct will continue and Hitachi will continue to sustain injury and damages.

COUNT II

ILLEGAL TYING ARRANGEMENTS

(15 U.S.C. § 1) 152. Paragraphs 1 through 95 are incorporated herein by reference as if fully set forth herein.

153. Rambus’ exclusionary practices constitute illegal tying arrangements, full line forcing arrangements, and package licensing arrangements.

154. The Patents in Suit and the Additional Patent Rights are separate and distinct products for which each has a separate and independent demand.

155. Through its exclusionary practices described above, including its license agreements, Rambus sells, or packages, licenses for one or more of the Patents in Suit (“tying products”) so that licensees are forced to license other patented and unpatented technology (“tied products”). Rambus conditions licenses of the Patents in Suit on their use in devices that employ the Rambus bus architecture as dictated by Rambus even though portions of the Rambus bus architecture are not patented and even though the Rambus bus architecture is not necessary to the use of Rambus’ Patents in Suit. By requiring its licensees to use the Patents in Suit only with devices that employ the Rambus bus architecture, Rambus is attempting to extend its patents to non-patented technology, which is a patent misuse. This constitutes illegal tying, full line forcing, package licensing, and patent misuse.

156. Rambus’ synchronous DRAM interface technology and the SDRAMs and Logic Chips implementing that technology are separate and distinct products for which each has a separate and independent demand.

157. Through its exclusionary practices described above, including its license agreements, Rambus conditions the use of its synchronous DRAM interface technology (a “tying product”) on its licensees’ manufacture of Rambus-compatible SDRAM or Logic Chips (“tied products”). This constitutes illegal tying and patent misuse.

158. Rambus possesses market, or “forcing,” power in the tying product markets described in this Count.

159. Rambus has coerced licensees seeking the tying products to also accept the tied products, as described in this Count.

160. Rambus has used, and will continue to use, its power in the tying product markets to foreclose competition in the tied product markets.

161. Rambus has used, and will continue to use, the foregoing tying, full line forcing, and package licensing arrangements to raise rivals’ costs and to raise entry barriers in the relevant markets.

162. Rambus’ tying, full line forcing, or packaging arrangements affect a substantial amount of interstate commerce and involve a not insubstantial amount of interstate commerce in the tied product markets.

163. Rambus has no legitimate justification for the arrangements described in this Count that would outweigh the anticompetitive effects of the arrangements.

164. Rambus has economic interests, including the receipt of royalty payments, in each of the tied product markets.

165. Rambus’ restraints described in this Count constitute per se illegal tying or other “naked” restraints, which violate Section 1 of the Sherman Act. Alternatively, Rambus’ arrangements described in this Count are unreasonable restraints of trade under the rule of reason because they unreasonably restrain or threaten to restrain competition, and harm consumers, and because they discourage or threaten to discourage new entrants from participating in one or more of the relevant markets.

166. As a direct and proximate result of Rambus’ arrangements described in this Count, HSA and Hitachi, Ltd. have suffered injury to their businesses or property.

167. Unless Rambus is enjoined by a court of law, Rambus’ unlawful conduct will continue and Hitachi will continue to sustain injury and damages.

COUNT III

CARTWRIGHT ACT

(Cal. Bus. & Prof. Code §§ 16720, 16726)

168. Paragraphs 1 through 111 are incorporated by reference as if set forth fully herein.

169. Through the conduct described in Counts I and II, Rambus has violated the State of California’s Cartwright Act, Cal. Bus. & Prof. Code §§ 16720 and 16726.

170. Rambus’ licensing arrangements described in Counts I and II, including the tying, full line forcing, and package licensing arrangements described in those Counts, illegally formed trusts, as defined in Cal. Bus. & Prof. Code § 16720.

171. Rambus has sufficient economic power in each of the tying product markets described in Counts I and II and has substantially foreclosed competition in the relevant markets, including in California.

172. Rambus’ conduct, as described in this Count, constitutes a per se violation of the Cartwright Act. In the alternative, Rambus’ conduct constitutes an unreasonable restraint of trade under the rule of reason.

173. Rambus’ conduct, as described in this Count, proximately caused damage to Hitachi’s businesses and property in an amount to be determined at trial.

174. As a result of Rambus’ conduct, as described in this Count, Hitachi has suffered injury of the type the Cartwright Act was intended to prevent.

175. The effect of Rambus’ exclusionary conduct, as described in this Count, has been and will continue to substantially lessen competition or tend to create a monopoly in the relevant markets in the State of California. Rambus’ conduct involves HSA, a corporation having its principal place of business in California.

COUNT IV

UNFAIR COMPETITION

(Cal. Bus. & Prof. Code § 17200 et seq.)

176. Paragraphs 1 through 119 are incorporated by reference as if set forth fully herein.

177. The above-described conduct of Rambus constitutes unfair competition in violation of California Business and Professions Code § 17200 et seq. (and constitutes wrongful acts under the unfair competition and tort laws of numerous other states).

178. As a result of Rambus’ unfair competition, Hitachi, as well as the consuming public, has been damaged.

179. Hitachi and the public at large, including manufacturers and end-users of SDRAM and Logic Chip products and Logic Chips, will continue to sustain injury and damages from this unfair competition by Rambus unless Rambus is enjoined from continuing its unlawful conduct. Hitachi is entitled to recover reasonable attorneys’ fees and costs in connection with this Count, as well as all appropriate restitution and other equitable relief.

COUNT V

UNENFORCEABILITY AND MISUSE

(28 U.S.C. § 2201)

180. Paragraphs 1 through 123 are incorporated by reference as if set forth fully herein.

181. Rambus has misused the Patents in Suit, the patents in the Related Family, the patents in the Additional Patent Rights, and patents to be issued based thereon, making them unenforceable.

182. An actual controversy exists between the parties regarding whether any alleged manufacture, use, sale, or offers for sale by Hitachi of SDRAMs and Logic Chips in the United States infringes any enforceable and valid claim of any of the Rambus patents.

183. Counterclaim plaintiffs request a judicial determination of the respective rights of Hitachi and Rambus relating to Rambus’ claims that Hitachi’s manufacture, use, sale, or offers for sale of SDRAMs and Logic Chips in the United States allegedly infringed any of Rambus’ Patents in Suit. Hitachi specifically requests a declaration that the Patents in Suit, the patents in the Related Family, the patents in the Additional Patent Rights, and patents to be issued based thereon, are unenforceable.

184. Accordingly, HSA and Hitachi, Ltd. are entitled to a declaratory judgment that the Patents in Suit, the patents in the Related Family, the patents in the Additional Patent Rights, and patents to be issued based thereon, have been misused and are unenforceable.

COUNT VI

DECLARATORY JUDGMENT (28 U.S.C. § 2201)

185. Paragraphs 1 through 128 are incorporated by reference as if set forth fully herein.

186. The Patents in Suit are invalid and not infringed for reasons including the existence of relevant prior art, the failure to comply with 35 U.S.C. §§ 102, 103, 112, 113, 120, and 121, the operation of the doctrines of prosecution history estoppel, equitable estoppel and implied license, and because the accused products do not infringe any valid and enforceable patents.

187. An actual controversy exists between the parties regarding whether any manufacture, use, sale, or offers for sale by Hitachi of SDRAM and Logic Chips in the United States allegedly infringes any valid, enforceable claim of the Rambus patents.

188. Counterclaim plaintiffs request a judicial determination of the respective rights of Hitachi and Rambus relating to Rambus’ claims that Hitachi’s manufacture, use, sale, or offers for sale of SDRAMs and Logic Chips in the United States allegedly infringed any of Rambus’ Patents in Suit that are valid and enforceable. Hitachi specifically requests a declaration that it has not infringed, and does not infringe, any valid and enforceable claim of Rambus’ Patents in Suit.

189. Accordingly, HSA and Hitachi, Ltd. are entitled to a declaratory judgment that the Patents in Suit are invalid and not infringed, as well as unenforceable.

PRAYER FOR RELIEF

WHEREFORE, HSA and Hitachi, Ltd. pray that:

i. The Court adjudge and decree that Rambus has monopolized or attempted to monopolize the relevant markets in violation of Section 2 of the Sherman Act, 15 U.S.C. § 2.

ii. The Court adjudge and decree that Rambus entered into unreasonable tying, full line forcing, and package licensing arrangements, in violation of Section 1 of the Sherman Act, 15 U.S.C. § 1.

iii. The Court issue an injunction restraining Rambus and its officers, directors, employees, agents, representatives, successors, and all other persons acting on its behalf, from further violations of Sections 1 and 2 of the Sherman Act.

iv. The Court issue an injunction restraining Rambus and its officers, directors, employees, agents, representatives, successors, and all other persons acting on its behalf, from engaging in the specific exclusionary practices against HSA and Hitachi, Ltd. alleged in this counterclaim, and any other practices found to be exclusionary.

v. The Court decree such other affirmative injunctive relief and enter such other orders as may be necessary to dissipate the effects of the violations of law alleged in this counterclaim and to insure that competitive conditions are restored in the relevant markets.

vi. The Court enter judgment in favor of Hitachi, Ltd. and HSA in the amount of their actual damages sustained as a consequence of Rambus’ unlawful conduct, which should be trebled as provided by law, including 15 U.S.C.§ 15.

vii. The Court allow, and Rambus be required to pay, Hitachi’s full costs of this action, including reasonable attorneys’ fees.

viii. The Court adjudge and decree that Rambus has violated the Cartwright Act, that Hitachi be awarded its actual damages, trebled by law, that Rambus be enjoined from its unlawful conduct pursuant to California Code of Civil Procedure §§ 525 and 526, and that Hitachi recover its attorneys’ fees and costs pursuant to California Business and Professions Code § 16750.

ix. The Court adjudge and decree that Rambus has violated Section 17200 of the California Business and Professions Code, that Rambus be enjoined from any further such violations, and that Hitachi be restored to its property pursuant to California Business and Professions Code § 17203.

x. The Court render a declaratory judgment declaring all Rambus patents in the Related Family, including but not limited to the Patents in Suit, and the Additional Patent Rights, and patents issuing based thereon, to be unenforceable and misused.

xi. The Court render a declaratory judgment declaring the Patents in Suit invalid and not infringed for any or all of the reasons stated in Count VI of this counterclaim.

xii. The Court grant HSA and Hitachi, Ltd. such other, further and additional relief as the nature of the case may require and as may be deemed just and appropriate to this Court.

Dated: March 24, 2000 Respectfully submitted,

HITACHI, LTD.
By: ______________________________________
One of Its Attorneys
Jerold S. Solovy
Donald R. Harris
Ronald L. Wanke
Barbara S. Steiner
JENNER & BLOCK
One IBM Plaza
Chicago, IL 60611
312-222-9350

Alan H. MacPherson
SKJERVEN, MORRILL,
MACPHERSON, FRANKLIN
& FRIEL LLP
25 Metro Drive, Suite 700
San Jose, CA 95110
408-453-9200
Robert W. Whetzel

RICHARDS, LAYTON
& FINGER, P.A.
One Rodney Square
P.O. Box 551
Wilmington, DE 19899
302-658-6541