Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page1 of 11
`
`E-filed: 8/2/06
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`HYNIX SEMICONDUCTOR INC., HYNIX
`SEMICONDUCTOR AMERICA INC.,
`HYNIX SEMICONDUCTOR U.K. LTD., and
`HYNIX SEMICONDUCTOR
`DEUTSCHLAND GmbH,
`Plaintiffs,
`
`No. CV-00-20905 RMW
`ORDER DENYING RAMBUS'S MOTION TO
`WITHDRAW JURY DEMAND WITH
`RESPECT TO PHASE III OF TRIAL
`[Re Docket No. 2175]
`
`v.
`RAMBUS INC.,
`Defendant.
`
`Defendant Rambus Inc. ("Rambus") moves to withdraw its jury demand for the third phase
`of trial pursuant to Fed. R. Civ. P. 39(a)(2). Plaintiffs Hynix Semiconductor Inc., Hynix
`Semiconductor America Inc., Hynix Semiconductor U.K. Ltd., and Hynix Semiconductor
`Deutschland GmbH (collectively "Hynix") oppose the motion. The court has reviewed the papers
`and considered the arguments of counsel. For the reasons set forth below, the court DENIES
`defendant's motion pursuant to Fed. R. Civ. P. 39(a)(2) to withdraw its jury demand.
`I. BACKGROUND
`Hynix did not file a jury demand with its original Complaint, its Amended Complaint, or its
`Second Amended Complaint. When Rambus filed its answers and counterclaims (and amended
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`For the Northern District of California
`
`United States District Court
`United States District Court
`
`

`
`Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page2 of 11
`
`pleadings) it included a demand for jury trial, stating "Rambus hereby demands trial by jury
`pursuant to Federal Rule of Civil Procedure 38(b)." In its Second Amended Complaint ("SAC"),
`Hynix seeks declaratory judgment of non-infringement, invalidity, and unenforceability and
`damages for alleged breach of contract and fraud, including, inter alia, litigation expenses.
`Rambus's counterclaims alleged patent infringement and sought enforcement of its patents against
`Hynix. The court divided the issues to be tried into three phases. The trials for the first two phases,
`concerning spoliation of evidence and Rambus's patent infringement claims, have been completed,
`with the patent infringement claims tried before a jury. The remaining phase, as narrowed by the
`court's recent summary adjudications, involves Hynix's allegations of (1) monopolization and
`attempted monopolization in violation of § 2 of the Sherman Act, (2) unfair competition in violation
`of Cal. Bus. & Prof. Code § 17200 et seq., and (3) actual fraud.
`Hynix's initial Fed. R. Civ. P. 26(a) disclosures set forth damages, including decreased sales
`attributable to Rambus's license agreement provisions and the publicity of Rambus's claims, Hynix's
`investments made in reliance on an open standard due to Rambus's purported breach of a duty to
`disclose, expenses incurred litigating Rambus's right to assert patents that have been improperly
`acquired, and other damages. Steven M. Perry Decl. Supp. Mot. Withdraw Jury Demand ("Perry
`Decl."), Ex. A at 9. On September 24, 2001 Hynix filed its Objections and Revised Preliminary
`Answers to Interrogatories which stated, inter alia, "Hynix hereby supplements its prior responses to
`state that Hynix will not claim damages for lost profits, but does intend to seek damages based on
`the legal expense confronting Rambus patent claims in the United States and abroad." Perry Decl.,
`Ex. B at 3. A November 24, 2004 letter to Rambus further stated, "Hynix disclaimed any damage
`except legal expenses and attorneys' fees in a supplemental interrogatory response." Perry Decl., Ex.
`C at 4. On January 20, 2006 (approximately two weeks prior to the cut-off of discovery), Hynix
`submitted "substantially redacted" bills in support of its alleged litigation costs and expenses. In a
`February 2, 2006 letter to Hynix, Rambus objected to the submission, claiming that it had been
`prejudiced by the delay and failure to identify witnesses.
`On July 7, 2006 this court granted Rambus's motion, summarily adjudicating that Rambus's
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`2
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`

`
`Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page3 of 11
`
`instigation and prosecution of its infringement claims are protected petitioning activity under the
`Noerr-Pennington doctrine and, as to state claims, are absolutely privileged under California Civil
`Code section 47(b). The court expressly stated, however, that the order did not resolve evidentiary
`issues that concern whether the filing of the lawsuits and communications associated therewith are
`admissible as evidence supporting an overall scheme to monopolize. July 7, 2006 Order at 2.
`II. ANALYSIS
`As an initial matter, the court addresses two issues raised by the parties. First, Rambus
`argues that Hynix's evidence of its litigation costs would be inadmissible because Hynix failed to
`make adequate Fed. R. Civ. P. 26(a) disclosures in support of damages. Rambus argues primarily
`that the disclosure consisted of boxes of bills provided just two weeks prior to discovery cut-off (and
`an unidentified witness for authentication purposes only) and that the bills were heavily redacted so
`that Rambus could not calculate the purported damages. It is undisputed that Hynix stated in various
`discovery disclosures and responses made in December 2000 and again in September 2001 and April
`2003 that it intended to claim litigation costs and expenses as damages, including the ones upon
`which Rambus relies to show that Hynix disclaimed all damages but litigation costs and expenses.
`Hynix's contends that it did not produce the bills until January 20, 2006 to avoid revealing its
`litigation strategy and because fees and expenses continued to be incurred as the case progressed.
`Hynix has offered to allow Rambus to do any follow-up discovery it needs on the amount of fees
`and expenses incurred. Until the present motion, Rambus did not raise with the court any of its
`complaints regarding the disclosure of Hynix litigation expenses, seek additional time to depose
`relevant witnesses, or object that it had not been able to calculate damages from Hynix's disclosures.
`It now seeks, in conjunction with its motion to withdraw its jury demand, for exclusion pursuant to
`Rule 37. "A district court has discretion to issue discovery sanctions under Rule 37(c)(1)." FED. R.
`CIV. P. 37(c)(1); see also Yeti by Molly Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1107 (9th
`Cir. 2001) (noting that a showing of harmlessness or substantial justification could overcome Rule
`37(c)(1) sanction request). It is unclear what efforts the parties made to resolve the alleged
`inadequacies of Hynix's disclosures prior to the present motion. Although "exclusion is an
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`3
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`

`
`Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page4 of 11
`
`appropriate remedy for failing to fulfill the required disclosure requirements of Rule 26(a)," Yeti by
`Molly, 259 F.3d at 1106, the court does not find it to be appropriate here. Any further discovery on
`the subject of the amount of litigation expenses should, however, be at Rambus's convenience and
`any deposition and copying costs (not attorney's fees) at Hynix's expense.
`Second, Hynix contends that Rambus may not unilaterally seek to withdraw its jury demand,
`upon which Hynix relied, because Fed. R. Civ. P. 38(d) provides: "A demand for trial by jury made
`as herein provided may not be withdrawn without the consent of the parties." "Under Rule 39(a),
`issues demanded for jury trial are to be so tried unless the parties stipulate for court trial or the court
`finds that a right of jury trial on some or all of the issues does not exist." United States v. Missouri
`River Breaks Hunt Club, 641 F.2d 689, 693 (9th Cir. 1981); see FED. R. CIV. P. 39(a)(2). Rambus
`contends that Hynix does not have a valid claim for damages because the only damages Hynix
`currently seeks are costs and expenses incurred in litigating claims against Rambus and such costs
`and expenses are not recoverable because Rambus's patent enforcement suits are protected under the
`Noerr-Pennington doctrine.1 Thus, Rambus argues: (1) Hynix does not have a valid claim for
`damages, (2) assuming Hynix's claims for damages are invalid, the only relief sought is equitable,
`and (3) where only equitable relief is sought, there is no right to a jury trial. The court turns first to
`whether Hynix asserts a valid damages claim.
`Noerr-Pennington Doctrine
`A.
`The court's July 7, 2006 order granted Rambus's motion for summary adjudication that
`Rambus's assertion of patent infringement claims does not, by itself, constitute unlawful conduct.
`See Prof'l Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 56 (1993) ("the
`Sherman Act does not prohibit persons from associating together in an attempt . . . to take particular
`action with respect to a law that would produce a restraint or a monopoly"). Moreover, the court
`found that the "sham litigation" exception to the Noerr-Pennington doctrine did not apply because
`"the lawsuits were neither baseless nor in bad faith." July 7, 2006 Order at 3. Thus, the court
`
`Hynix is not entitled to a jury on its Cal. Bus. & Prof. Code § 17200 or its equitable
`1
`affirmative defenses (estoppel and laches).
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`4
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`

`
`Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page5 of 11
`
`concluded that Rambus was entitled to adjudication that its use of litigation, or threats of litigation,
`to enforce its patents is protected petitioning activity within Noerr-Pennington.
`Here, alleges Hynix, it "is not complaining that Rambus enforced its patents; Hynix is
`complaining that Hynix would not have conformed to technology in Rambus's patents but for a
`fraudulent course of conduct designed to secure an unlawful monopoly . . . . But for that conduct,
`Hynix would never have incurred fees to its patent attorneys." Hynix Opp. 3:18. Hynix contends
`that Rambus's enforcement of its patents is but one part of an overall course of conduct to secure a
`monopoly on a basis other than "superior product, business acumen, or historic accident." See
`United States v. Grinnell Corp., 384 U.S. 563, 571 (1966). In other words, Hynix asserts that it has
`been subjected to patent infringement claims only because of Rambus's purported fraudulent
`conduct. Hynix relies primarily upon three cases for support: Rex Chainbelt, Inc. v. Harco Prods.,
`Inc., 512 F.2d 993, 1004 (9th Cir. 1975); Kobe, Inc. v. Dempsey Pump Co., 198 F.2d 416, 425 (10th
`Cir. 1952); and Clapper v. Original Tractor Cab Co., 270 F.2d 616, 623 (7th Cir. 1959). Rambus
`argues that these cases were decided more than thirty years ago and have no merit today because the
`appellate courts have interpreted Professional Real Estate Investors as holding that the only means
`of overcoming Noerr-Pennington immunity are to prove either (1) sham litigation or (2) that the
`patents were obtained through deliberate fraud within the meaning of Walker Process Equip., Inc. v.
`Food Mach. & Chem. Corp., 382 U.S. 172 (1965). However, the cases cited by Hynix have not
`been expressly overruled and, as discussed below, Rambus reads Professional Real Estate Investors
`too broadly.
`"Whether conduct in procuring or enforcing a patent is sufficient to strip a patentee of its
`immunity from the antitrust laws is to be decided as a question of Federal Circuit law."
`Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 1068 (Fed. Cir. 1998). In Q-Pharma,
`Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1304-05 (Fed. Cir. 2004), the Federal Circuit held that
`one exception to Noerr-Pennington immunity is proof that the asserted patent "was obtained through
`knowing and willful fraud within the meaning of Walker Process":
`[T]he patent owner may be subject to antitrust liability for the anticompetitive effects
`of that suit if the accused infringer proves either of two conditions. First, the accused
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`5
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`

`
`Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page6 of 11
`
`infringer may show that the asserted patent was obtained through knowing and
`willful fraud. Alternatively, the accused infringer may show that the infringement
`suit was a mere sham to cover what is actually nothing more than an attempt to
`interfere directly with the business relationships of a competitor.
`Id. (citing In re Indep. Serv. Orgs. Antitrust Litig., 203 F.3d 1322, 1326 (Fed. Cir. 2000);
`Nobelpharma, 141 F.3d 1059, 1068 (Fed. Cir. 1998)). The cases addressing Walker Process fraud
`address whether or not it has been alleged that fraud had been perpetrated upon the Patent Office in
`the procuring of a patent. In C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1368 (Fed. Cir.
`1998), and again in In re Indep. Serv. Orgs., 203 F.3d at 1326, the Federal Circuit concluded that the
`Walker Process analysis was not implicated because there was no allegation that the patent had been
`obtained through knowing and willful fraud upon the Patent Office. See also Andrx Pharm. v. Elan
`Corp. PLC, 421 F.3d 1227, 1234 (11th Cir. 2005) (same).
`The present issue involves more than the single inquiry into conduct involving the
`procurement or enforcement of a patent.2 Hynix claims that the patent or patent power was obtained
`through fraudulent conduct, though that purported fraudulent conduct was not necessarily
`perpetrated upon the Patent Office or limited to the procurement and act of enforcing the patents.
`"[B]eyond the limited monopoly which is granted, the arrangements by which the patent is utilized
`are subject to the general law." U.S. v. Singer Mfg. Co., 374 U.S. 174, 196 (1963). The issue before
`this court is whether Rambus's alleged course of conduct falls within the prohibitions of antitrust
`laws. See Clipper Express v. Rocky Mountain Motor Tariff Bureau, Inc., 690 F.2d 1240 (9th Cir.
`1982) (noting that legitimate petitioning activity that is part of an entire conspiracy may be subject
`to antitrust laws because it is the conspiracy that is subject to the antitrust laws). The law of the
`regional circuit in which the district court sits applies in actions involving federal antitrust law. In
`
`The cited Federal Circuit cases do not address Hynix's argument that the present action
`2
`is distinct because the litigation is only one integral part of a larger, external plan to threaten
`competition. Rather, the Federal Circuit cases cited involve the narrower issue of conduct in obtaining
`a patent from the Patent Office and enforcing it through petitioning activities. As the July 7, 2006 Order
`noted, Rambus's filing of lawsuit, alone, constitutes protected petitioning activity. Here, Hynix alleges
`that the patent and enforcement thereof were part of an overall course of conduct that was
`anticompetitive regardless of whether the patents themselves are lawfully enforceable. In other words,
`Rambus's ability to enforce the patent specifically against Hynix's devices is a product of fraudulent
`conduct. As noted above, Ninth Circuit law applies in actions involving federal antitrust law.
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`6
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`

`
`Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page7 of 11
`
`re Indep. Serv. Orgs., 203 F.3d at 1325. Accordingly, Ninth Circuit (and other appellate cases) are
`instructive on the present issue.
`As noted in the July 7, 2006 Order, dicta in Clipper, 690 F.2d 1240, supports Hynix's
`argument. July 7, 2006 Order at 3. In Clipper, the Ninth Circuit stated: "If Clipper can prove that
`the defendants engaged in activities which violated the antitrust laws, those violations do not
`become immune simply because the defendants used legal means—protests before the ICC—as a
`means to enforce the violations." Clipper, 690 F.2d at 1265.
`The Tenth Circuit decision in Kobe explained:
`We have no doubt that [if] there was nothing more than the bringing of the
`infringement action, resulting damages could not be recovered, but that is not the
`case. The facts as hereinbefore detailed are sufficient to support a finding that
`although Kobe believed some of its patents were infringed, the real purpose of the
`infringement action and the incidental activities of Kobe's representatives was to
`further the existing monopoly and to eliminate Dempsey as a competitor. The
`infringement action and the related activities, of course, in themselves were not
`unlawful, and standing alone would not be sufficient to sustain a claim for damages
`which they may have caused, but when considered with the entire monopolistic
`scheme which preceded them we think, as the trial court did, that they may be
`considered as having been done to give effect to the unlawful scheme.
`198 F.2d 416, 425 (10th Cir. 1952); see Cal. Motor Transport Co. v. Trucking Unlimited, 404 U.S.
`508, 514 (1972) ("It is well settled that First Amendment rights are not immunized from regulation
`when they are used as an integral part of conduct which violates a valid statute."); Rex Chainbelt,
`512 F.2d at 1004; Handgards, Inc. v. Ethicon, 601 F.2d 986, 996 (9th Cir. 1979); but see Abbott
`Labs. v. Teva Pharms. USA, Inc., 2006 WL 1460077, *16 (D. Del. 2006).
`In Rex Chainbelt, 512 F.2d at 1005, the Ninth Circuit held that where it is shown that an
`infringement suit has been brought as "an integral part of an agreement or plan to violate the
`antitrust laws and that the defendant sustained resulting damages, treble damages for antitrust
`violation should be recoverable, whether or not there was a colorable claim of infringement." The
`court explained that its holding seeks to balance the policies of the antitrust laws with the policy "not
`to imperil free access to the courts for determination and protection of patent rights":
`It is said that to allow recovery of damages resulting from the infringement action
`would be a denial of free access to the courts. We fully recognize that free and
`unrestricted access to the courts should not be denied or imperiled in any manner.
`At the same time we must not permit the courts to be a vehicle for maintaining and
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`7
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`

`
`Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page8 of 11
`
`carrying out an unlawful monopoly which has for its purpose the elimination and
`prevention of competition.
`Id. (quoting Kobe, 198 F.2d at 424). Under such circumstances, attorney's fees incurred in
`defending patent infringement actions may be awarded as part of antitrust treble damages. Id.
`(noting that in such cases there is "the consistent thread of the patent infringement suit being used
`with ulterior motives as a predatory means—an aggressive weapon to attain some other
`anticompetitive end, as opposed to its being used as a defensive shield with which to protect the
`patent interests").3
`Although Walker Process applies to fraud perpetrated upon the Patent Office, the Court's
`reasoning is consistent with the concept that improper patent monopolies obtained by fraud could be
`subject to antitrust liability. In Walker Process, the Court held that "enforcement of a patent
`procured by fraud on the Patent Office may be violative of § 2 of the Sherman Act provided the
`other elements necessary to a § 2 case are present." 382 U.S. at 175. In a concurring opinion,
`Justice Harlan wrote separately further explaining the court's rationale for finding that patents
`procured by deliberate fraud are subject to antitrust liabilities:
`To hold, as we do, that private suits may be instituted under § 4 of the Clayton Act
`to recover damages for Sherman Act monopolization knowingly practiced under the
`guise of a patent procured by deliberate fraud, cannot well be thought to impinge
`upon the policy of the patent laws to encourage inventions and their disclosure.
`Hence, as to this class of improper patent monopolies, antitrust remedies should be
`allowed room for full play.
`Id. at 179-80; see also Cal. Motor Transport Co., 404 U.S. at 512-13 (noting in dicta "[u]se of a
`patent obtained by fraud to exclude a competitor from the market may involve a violation of the
`antitrust laws"). In Handsgards, 601 F.2d at 994-95, the Ninth Circuit explained that apart from
`alleged fraud within the meaning of Walker Process and alleged baseless suits (sham litigation)
`within the meaning of Otter Tail Power Co. v. United States, 410 U.S. 366 (1973), "antitrust liability
`
`The present suit was initiated by Hynix when it filed an action for declaratory judgment
`3
`of non-infringement, not by Rambus. Because Hynix must prove that Rambus engaged in fraudulent
`conduct in obtaining its patents and its ability to enforce its patents upon JEDEC-compliant DRAM
`manufacturers in order to prove it has a right to attorney's fees, a finding that such fees are not per se
`barred does not seem to infringe upon Rambus's Noerr-Pennington immunity. See, e.g., Dell Computer
`Corp., 121 F.T.C. 616, 624.
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`8
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`

`
`Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page9 of 11
`
`based on patent enforcement conduct" may be imposed based on allegations of the "overall scheme
`to monopolize independent of the mere commencement of an infringement suit."
`Finally, Rambus's position that Prof'l Real Estate Investors, Inc. in effect overruled Rex
`Chainbelt, Inc., Kobe, Inc., and Clapper requires extending the application of Prof'l Real Estate
`Investors, Inc. beyond its holding. In Prof'l Real Estate Investors, Inc. the court held that Noerr-
`Pennington immunity protected major motion picture studios from a counterclaim that their suit for
`copyright infringement was "a mere sham to cover . . . an attempt to interfere directly with the
`business relationships of a competitor." 508 U.S. at 51 (internal quotations omitted). The Court held
`that there was an objective basis for the copyright claim and the refusal to grant copyright licenses
`was not separate and distinct from the prosecution of the infringement suit. Id. at 54 n.2. The Court,
`however, was not dealing with a situation where the institution of the suit was part of an overall
`scheme to monopolize. The fact that the institution of the infringement action is lawful and
`immunized does not necessarily immunize a fraudulent scheme. In Prof'l Real Estate Investors, Inc
`the Court noted "we do not consider whether Columbia could have made a valid claim of immunity
`for anticompetitive conduct independent of petitioning activity." Id.
`B.
`Seventh Amendment Right to Trial
`Rambus argues that Hynix's phase three claims seek only equitable relief and therefore are
`considered claims not traditionally heard at common law. Rambus thus seeks for the remaining
`issues of the action to be tried without a jury. The Seventh Amendment provides in part: "in Suits at
`common law, where the value in controversy shall exceed $20.00, the right of trial by jury shall be
`preserved." U.S. Const. Amend. VII. This language "defines the kind of cases for which jury trial is
`preserved, namely suits at common law." Tull v. U.S., 481 U.S. 412, 426 (1987). The Federal Rules
`of Civil Procedure provides: "The right of trial by jury as declared by the Seventh Amendment to the
`Constitution or as given by a statute of the United States shall be preserved to the parties inviolate."
`FED. R. CIV. P. 38(a). Whether there is a right to trial by jury is a question of law. Cal. Scents v.
`Surco Prods., Inc., 406 F.3d 1102, 1105 (9th Cir. 2005); DePinto v. Provident Sec. Life Ins. Co., 323
`F.2d 826, 834 (9th Cir. 1963). It is well established that "[m]aintenance of the jury, as a fact-finding
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`9
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`

`
`Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page10 of 11
`
`body is of such importance and occupies so firm a place in our history and jurisprudence that any
`seeming curtailment of the right to a jury trial should be scrutinized with the utmost care." Beacon
`Theatres, Inc. v. Westover, 359 U.S. 500, 501 (1959). Rambus's position that a right to jury trial no
`longer exists on any of the remaining issues rests on its argument that the damages sought by Hynix
`cannot be recovered as a matter of law based on the applicability of the Noerr-Pennington doctrine
`to its patent enforcement suits.4 The court finds that Hynix has alleged a legally viable damage
`claim which is sufficient to sustain a finding that it has not forgone a right to a jury trial.
`III. ORDER
`For the foregoing reasons, the court DENIES defendant's motion pursuant to Fed. R. Civ. P.
`39(a)(2) to withdraw its jury demand.
`
`DATED: 8/2/2006
`
`
`RONALD M. WHYTE
`United States District Judge
`
`4
`
`There is no right to a jury trial under Cal. Bus. & Prof. Code § 17200.
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`10
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court
`
`

`
`Case5:00-cv-20905-RMW Document2268 Filed08/02/06 Page11 of 11
`
`THIS SHALL CERTIFY THAT A COPY OF THIS ORDER WAS PROVIDED TO:
`Counsel for plaintiff:
`Daniel J. Furniss
`Theodore G. Brown, III
`Jordan Trent Jones
`Townsend & Townsend & Crew LLP
`379 Lytton Ave
`Palo Alto, CA 94301
`Patrick Lynch
`Kenneth R. O'Rourke
`O'Melveny & Myers
`400 So Hope St Ste 1060
`Los Angeles, CA 90071-2899
`Kenneth L. Nissly
`Susan van Keulen
`Geoffrey H. Yost
`Thelen Reid & Priest LLP
`225 West Santa Clara Street, 12th Floor
`San Jose, CA 95113-1723
`Allen Ruby
`aruby@rubyschofield.com
`Counsel for defendant:
`Gregory Stone
`Kelly M. Klaus
`Catherine Augustson
`Munger Tolles & Olson
`355 So Grand Ave Ste 3500
`Los Angeles, CA 90071-1560
`Peter A. Detre
`Carolyn Hoecker Luedtke
`Munger Tolles & Olson
`560 Mission Street, 27th Floor
`San Francisco, CA 94105-2907
`Peter I Ostroff
`Rollin A. Ransom
`Michelle B. Goodman
`V. Bryan Medlock, Jr.
`Sidley Austin Brown & Wood
`555 West Fifth Street, Suite 4000
`Los Angeles, CA 90013-1010
`Jeannine Yoo Sano
`Pierre J. Hubert
`Dewey Ballantine
`1950 University Avenue, Suite 500
`East Palo Alto, CA 94303
`Dated: 8/2/06
`
` SPT
`Chambers of Judge Whyte
`
`ORDER DENYING RAMBUS'S MOTION TO WITHDRAW JURY DEMAND WITH RESPECT TO PHASE III OF
`TRIAL—C-00-20905 RMW
`SPT
`
`11
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`For the Northern District of California
`
`United States District Court