Rambus v. Samsung (USDC ND CA 05 – San Jose)

Samsung filed Answer To Complaint For Patent Infringement And Jury Demand And Affirmative Defenses And Counterclaims on June 22, 2005 in U.S. District Court in the Northern District of California – San Jose Division (USDC ND CA – San Jose).

Samsung denies that it transacts substantial business in the district on an ongoing basis, but does not contest venue as being proper in USDC ND CA in San Jose, California. (No Judge Payne.)

Samsung denies that the patents that Rambus claims are being infringed were “duly and legally issued” and thus invalid and unenforceable.

Samsung denies that Rambus provided written notice on July 9, 2004, and July 29, 2004 of Samsung’s breach of the SDR/DDR License Agreement.

Samsung lists as affirmative defenses:
Failure to state a claim
Noninfringement
Patent invalidity
Prosecution laches
Unclean hands
Equitable estoppel
Patent misuse
Marking and limitations

Samsung Counterclaims

Count I - Breach of Section 3.8 of SDR/DDR License.
Rambus failed to notify Samsung of effective lower royalty rate paid by a third party – Infineon. Rambus failed to adjust Samsung’s royalty rate to match lower effective royalty rate of third party – Infineon.

Count II - Breach of Section 3.5 of SDR/DDR License.
Rambus failed to negotiate an extension or renewal of SDR/DDR License in good faith by withholding certain terms of the Rambus/Infineon License.

Count III - Breach of Duty of Good Faith and Fair Dealing of Sections 3.5. and 3.8 under U.S. and California law.

Count IV - Aiding and Abetting Breach of Fiduciary Duty
Rambus secretly engaged the services of attorney Neil Steinberg (1998) while Mr. Steinberg was employed by Samsung as an in-house attorney, aiding and betting Mr. Steinberg in breaching a fiduciary duty he owed to Samsung. (Samsung did not become aware until 2005 during the Rambus v. Infineon trial.)

Count V – Intentional Interference with Contract
Rambus knew of Mr. Steinberg’s written contract with Samsung was still in effect and that the contract included nondisclosure clauses and restrictions on additional employment. It is Samsung’s belief that “Mr. Steinberg actively helped Rambus plan patent prosecution strategies, patent enforcement strategies, document handling and retention strategies for use in litigation, and to take other measures to extract royalties from manufacturers of DRAMs, including Samsung.”(Samsung did not become aware until 2005 during the Rambus v. Infineon trial.)

Count VI – Violation of CA Bus. & Prof. Code Section 17,200
Rambus hired Mr. Steinberg will he was employed by Samsung and conducted “shred parties”.

Count VII – Declaratory Judgment of Noninfringement, Invalidity and Unenforceability


Samsung Prayer For Relief - Findings that:

Rambus breached Section 3.8 of license agreement and an award of all damages.

Rambus breached Section 3.5 of license agreement and an award of all damages.

Rambus aided and abetted the breach of fiduciary duty owed Samsung by attorney Neil Steinberg and an award of damages.

Rambus intentionally interfered with a contract (Steinberg) and an award of damages.

Rambus violated CA Business & Prof. Code Section 17,200 and an award of restitution.

10 separate Rambus patents are not infringed by Samsung and are invalid and unenforceable by
Rambus.

Award Samsung for Rambus’s unjust enrichment, all royalties collected by Rambus on patents and licenses that benefited in any way from Mr. Steinberg’s work for Rambus prior to termination of his employment by Samsung.

Hold the any Rambus patents or patent applications that pre-date the termination of Mr. Steinberg’s employment by Samsung may not be enforced against Samsung.

An injunction barring Rambus from enforcing its patents.

Attorneys’ fees and costs.

Hat tip to FinzToRite of the Pinehurst Thread for the link.