Hynix Semiconductor Inc. v. Rambus Inc.

United States Court of Appeals
for the Federal Circuit
__________________________

HYNIX SEMICONDUCTOR INC., HYNIX
SEMICONDUCTOR AMERICA INC., HYNIX
SEMICONDUCTOR U.K. LTD.; AND HYNIX
SEMICONDUCTOR DEUTSCHLAND GMBH,
Plaintiffs-Appellants,
v.
RAMBUS INC.,
Defendant-Cross Appellant.
__________________________

2009-1299, -1347
__________________________

Appeal from the United States District Court for the
Northern District of California in Case No. 00-CV-20905,
Senior Judge Ronald M. Whyte.
__________________________

Decided: May 13, 2011
__________________________

SRI SRINIVASAN, O’Melveny & Myers LLP, of Wash-
ington, DC, argued for plaintiffs-appellants. With him on
the brief were WALTER DELLINGER, MARK S. DAVIES,
MEAGHAN E.M. VERGOW, KATHRYN E. TARBERT, MICAH
W.J. SMITH, LOREN L. ALIKHAN; and KENNETH L. NISSLY
and SUSAN ROEDER, of Menlo Park, California. Of counsel
on the brief were THEODORE G. BROWN, III and JULIE J.
HYNIX SEMICONDUCTOR v. RAMBUS 2

HAN, Townsend and Townsend and Crew LLP, of Palo
Alto, California.

RICHARD G. TARANTO, Farr & Taranto, of Washington,
DC, argued for defendant-cross appellant. Of counsel on
the brief were MICHAEL J. SCHAENGOLD, Patton Boggs
LLP, of Washington, DC; and GREGORY P. STONE, FRED
A. ROWLEY, JR., and JEFFREY Y. WU, Munger, Tolles &
Olson LLP, of Los Angeles, California; and CARTER G.
PHILLIPS, ROLLIN A. RANSOM, ERIC A. SHUMSKY, Sidley
Austin LLP, of Washington, DC. Of counsel were RYAN C.
MORRIS, ERIC M. SOLOVY and RACHEL H. TOWNSEND, of
Sidley Austin LLP, of Washington, DC; and MARK REMY
YOHALEM, Munger, Tolles & Olson LLP, of Los Angeles,
Calfornia.

ROBERT E. FREITAS, Orrick, Herrington & Sutcliffe
LLP, of Menlo Park, California, for amicus curiae Nanya
Technology Corporation, et al. With him on the brief were
JASON S. ANGELL and CRAIG R. KAUFMAN.
__________________________

Before NEWMAN, LOURIE, BRYSON, GAJARSA and LINN,
Circuit Judges.

Opinion for the court filed by Circuit Judge LINN, with
whom LOURIE and BRYSON, Circuit Judges, join.

Concurring-in-part, dissenting-in-part opinion filed by
Circuit Judge GAJARSA, with whom NEWMAN, Circuit
Judge, joins.
LINN, Circuit Judge.
This patent infringement action concerns Synchro-
nous Dynamic Random Access Memory (“SDRAM”) and
Double Data Rate SDRAM memory (“DDR SDRAM”), in
3 HYNIX SEMICONDUCTOR v. RAMBUS

standard use in many computers beginning in the 1990s.
The district court entered a final judgment of infringe-
ment and non-invalidity of claim 33 of Rambus Inc.’s
(“Rambus”) U.S. Patent No. 6,324,120 (“’120 patent”);
claims 32 and 36 of U.S. Patent No. 6,378,020 (“’020
patent”); claims 9, 28, and 40 of U.S. Patent No. 6,426,916
(“’916 patent”); claim 16 of U.S. Patent No. 6,452,863
(“’863 patent”); claim 34 of U.S. Patent No. 5,915,105
(“’105 patent”); and claims 24 and 33 of U.S. Patent No.
6,034,918 (“’918 patent”); entered judgment in the amount
of $349,035,842; required Hynix to pay prejudgment
interest; and set a royalty rate for infringing products.
Hynix Semiconductor, Inc. v. Rambus Inc., No. 00-CV-
20905 (N.D. Cal. Mar. 10, 2009) (“Judgment”). Hynix
Semiconductor Inc., Hynix Semiconductor America Inc.,
Hynix Semiconductor U.K. LTD, and Hynix Semiconduc-
tor Deutschland (collectively, “Hynix”) appeal the district
court’s: (1) denial of Hynix’s motion to dismiss due to
unenforceability arising from Rambus’s alleged spoliation
of documents, Hynix Semiconductor Inc. v. Rambus Inc.,
591 F. Supp. 2d 1038 (N.D. Cal. 2006) (Whyte, J.) (“Spo-
liation”); (2) claim construction, Hynix Semiconductor Inc.
v. Rambus Inc., No. 00-CV-20905 (N.D. Cal. Nov. 15,
2004) (“Claim Construction”); (3) denial of Hynix’s motion
for judgment as a matter of law or for a new trial on the
basis of written description, Hynix Semiconductor Inc. v.
Rambus Inc., No. 00-CV-20905 (N.D. Cal. Jan. 27, 2009)
(“Written Description”); (4) denial of Hynix’s motion for a
new trial on obviousness, Hynix Semiconductor Inc. v.
Rambus Inc., No. 00-CV-20905 (N.D. Cal. Jan. 16, 2009)
(“Obviousness”); and (5) rejection of Hynix’s equitable
arguments of unenforceability due to implied waiver and
equitable estoppel. Hynix Semiconductor Inc. v. Rambus
Inc., No. 00-CV-20905 (N.D. Cal. Mar. 3, 2009) (“Estop-
pel”).
HYNIX SEMICONDUCTOR v. RAMBUS 4

Rambus cross-appeals the district court’s grant of
summary judgment of non-infringement of claims of 15,
18, 25, and 26 of Rambus’s U.S. Patent No. 6,032,214
(“’214 patent”); claims 36 and 40 of the ’105 patent; claims
1 and 4 of Rambus’s U.S. Patent No. 6,035,365 (“’365
patent”); and claim 14 of its U.S. Patent No. 6,101,152
(“’152 patent”). Hynix Semiconductor Inc. v. Rambus Inc.,
No. 00-CV-20905 (N.D. Cal. Jan. 5, 2005) (“Cross-
Appeal”).
This court has jurisdiction over the appeal and the
cross-appeal pursuant to 28 U.S.C. § 1295(a)(1).
This case is a companion case to Micron Technology,
Inc. v. Rambus Inc., No. 2009-1263, slip op. (Fed. Cir. May
13, 2011) (“Micron II”) (decided contemporaneously here-
with). That case is an appeal from the United States
District Court for the District of Delaware, in which
Judge Robinson held that Rambus had spoliated docu-
ments in dereliction of a duty to preserve, and held Ram-
bus’s patents unenforceable as a sanction. See Micron
Tech., Inc. v. Rambus Inc., 255 F.R.D. 135, 150-51 (D. Del.
2009) (“Micron I”).
Because this court concludes that the district court
applied too narrow a standard of foreseeability in deter-
mining that litigation was not reasonably foreseeable
until late 1999, this court (1) vacates the district court’s
final judgment and its findings of fact and conclusions of
law regarding spoliation and remands for the district
court to determine when Rambus’s duty to preserve
documents began under the framework set forth in Mi-
cron II, and the appropriate sanction, if any. This court
(2) affirms the district court’s decision on waiver and
equitable estoppel, (3) its claim construction order, (4) its
order denying Hynix’s motion for JMOL or for a new trial
on the basis of written description, and (5) its order deny-
5 HYNIX SEMICONDUCTOR v. RAMBUS

ing Hynix’s motion for a new trial on the basis of obvious-
ness. This court also (6) affirms the district court’s order
granting Hynix’s motion for summary judgment of non-
infringement under Hynix’s proposed claim construction
challenged in Rambus’s cross-appeal.
I. BACKGROUND
A. Rambus
Rambus was founded in 1990 to commercialize inven-
tions related to features of computer dynamic random
access memory (“DRAM”). All of the patents in suit claim
priority to Rambus’s 07/510,898 application (“’898 appli-
cation”), filed on April 18, 1990. The first filed and issued
of the patents in suit, the ’105 patent, was filed on No-
vember 26, 1997, and issued on June 22, 1999. Rambus
prosecuted the patents in suit continuously throughout
the 1990s and until 2002.
Rambus’s primary business is licensing its intellectual
property to DRAM manufacturers. Initially, Rambus
focused its efforts on the “Direct RDRAM ramp,” which
comprised granting narrow licenses to RAM manufactur-
ers to produce only a particular type of DRAM known as
Rambus DRAM (“RDRAM”) and later Direct RDRAM, and
restricting the use of Rambus’s intellectual property for
the production of other types of RAM (what Rambus
terms “non-compatible” uses). Rambus achieved a meas-
ure of success through this practice, licensing RDRAM
production by Samsung, Hynix (then Hyundai), Hitachi,
Micron, and several of the largest RAM manufacturers to
meet the demand created by Intel’s use of RDRAM in its
Pentium 4 chipset. During the licensing period, however,
several of the manufacturers also produced non-
compatible DRAM, including SDRAM and DDR SDRAM,
which are at issue in this case. As discussed in further
HYNIX SEMICONDUCTOR v. RAMBUS 6

detail in Micron II, Intel eventually began to move away
from RDRAM, in favor of SDRAM and DDR SDRAM.
B. Joint Electron Devices Engineering Council
Beginning in February 1992, Rambus became a mem-
ber of the Joint Electron Devices Engineering Council
(“JEDEC”), an open standard setting organization that
developed (and continues to develop) standards for semi-
conductor products, including computer memory inter-
faces, to facilitate the interchangeability of products
produced by different manufacturers. Members of a
JEDEC committee meet several times a year to hear
presentations by other members on proposed features to
be included in the standard. The members then vote for
which features to include.
Rambus was represented at JEDEC by Richard Crisp.
After Crisp heard presentations on features to be included
in the standard at JEDEC, he would discuss the inven-
tions with the attorneys prosecuting Rambus’s patents,
signaling them to direct Rambus’s prosecution efforts to
cover those features. JEDEC Trial Tr. vol. 5 day 5, 990,
993. See also Reply Br. of Rambus, Inc., Rambus Inc. v.
Infineon Techs. AG, 318 F.3d 1081, 1085 (Fed. Cir. 2003)
(“Infineon”), at 62 (“Rambus changed its pending patent
claims based on discussions at public JEDEC meetings.”).
Under JEDEC policies, the members agreed to par-
ticipate “in good faith under policies and procedures
which will assure fairness and unrestricted participation.”
Joel Karp, Rambus’s Vice President for Intellectual Prop-
erty, made no secret of the fact that he did not attend
JEDEC in good faith, if “good faith means that you are
attending JEDEC with the goal of creating an open stan-
dard for JEDEC SDRAM.” Several JEDEC rules gov-
erned the behavior of members, including Manual 21-I,
discussed below. Estoppel at *15. As of 1993, JEDEC
7 HYNIX SEMICONDUCTOR v. RAMBUS

policy “required members to disclose patents and patent
applications ‘related to’ the standardization work of the
committees.” Infineon, 318 F.3d at 1085. Crisp disclosed
one patent, U.S. Patent No. 5,243,703 (“’703 patent”) to
JEDEC in September 1993. Id. This patent has a sub-
stantially similar specification to the patents in suit,
differing only in the claims.
During Rambus’s membership, JEDEC adopted
SDRAM as a standard. The SDRAM standard incorpo-
rated features such as programmable CAS latency, pro-
grammable burst length, externally supplied reference
voltage, and two-bank design. Id. In December 1995,
Rambus attended its last meeting as a member of JEDEC,
and formally resigned in June 1996. Meanwhile, by
December 1996, JEDEC was busy working on the succes-
sor to SDRAM, DDR SDRAM. Id. DDR SDRAM incorpo-
rated source-synchronous clocking, low-voltage swing
signaling, dual clock edging, and on-chip delay locked
loop. Id. After Rambus’s formal resignation, Crisp con-
tinued to receive reports from sources termed “deep
throat” and “secret squirrel” regarding the progress of the
JEDEC RAM committee through at least December 1997.
C. Document Retention Policy
As both parties agree, the facts underlying Rambus’s
alleged spoliation are substantially identical in the two
cases. Br. of Rambus at 21, Micron II, (noting that the
facts in Hynix and Micron are “virtually the same”); Br. of
Hynix at 21, Hynix Semiconductor Inc. v. Rambus Inc.,
Nos. 2009-1299, -1347 (Fed. Cir. decided May 13, 2011).
See also Spoliation at 1 (“[T]he district court in Delaware
HYNIX SEMICONDUCTOR v. RAMBUS 8

held a bench trial with respect to an essentially identical
claim by Micron that Rambus spoliated evidence.”). 1
Rambus took its first steps towards enforcing its IP
against non-compatible DRAM in October 1997, when it
hired Joel Karp as its Vice President for Intellectual
Property. Karp’s role was “to prepare and then to negoti-
ate to license our patents for infringing [DRAMs].” Spo-
liation at 6. Rambus recognized that hiring Karp would
make partners and competitors suspicious about its
intellectual property plans, but it hoped “to downplay the
whole infringement/IP issue until there is actual in-
fringement,” by having their “spin control ready” to tell its
partners and competitors that Karp was being hired to
assist with “contract negotiations.”
Shortly thereafter, in January 1998, Geoff Tate, Ram-
bus’s CEO, instructed Karp to prepare a licensing and
litigation strategy for presentation to the Board at its
March 1998 meeting. Karp enlisted Dan Leal, a Cooley
Godward litigation attorney, to prepare a “litigation
strategy by [the] March [1998] board meeting.” Cooley’s
notes of a follow-up February 12, 1998 meeting between
Karp, Leal, Dan Johnson (another Cooley litigator), and
yet another Cooley attorney state that Rambus will
“[n]eed to litigate against someone to establish [a] royalty
rate and have [a] court declare [the] patent valid,” and
noted that the royalty rates proposed by Karp would
“probably push us into litigation quickly.” Finally, the

1 In Micron II, Rambus argued that the differ-
ences in the records are “makeweight,” “cumulative,” and
“insignificant,” and not sufficient to compel a different
outcome on spoliation in response to Micron’s arguments
to the contrary. Reply Br. of Rambus at 2-3, Micron II..
Thus, to the extent the records are in fact different,
Rambus has waived any argument that the different
records justify different outcomes.
9 HYNIX SEMICONDUCTOR v. RAMBUS

notes reference a proposal to create a document retention
policy in order to “[m]ake ourselves battle ready,” and the
need to “clean out all attorney notes so that [the PTO
prosecution] file is same as official file.”
At the March 1998 presentation to the Board, Karp
proposed a litigation strategy prioritizing his choices of
defendants and forums, and set a timeframe wherein
Rambus would “commence legal action” in 4-6 months
after procuring the potentially infringing parts. He also
proposed a five percent royalty rate for non-compatible
RAM, a rate his later memo said was for situations where
Rambus was “not interested in settling.” Finally, he set
as “near term actions” the creation of a document reten-
tion policy and “discovery database.”
In April 1998, CEO Tate met with Intel, a meeting he
summarized as follows: “[I]ntel says they are basically
going to compete with us on [the] next generation [of
DRAM].” He understood that such a shift in the “mid-
term” from RDRAM to SDRAM could “force [Rambus] to
play [its] IP card with the [DRAM] companies earlier.”
(emphasis added). Karp announced the document reten-
tion policy in May 1998, noting that he would prefer not
to discuss the policy in writing. In July 1998, Tate e-
mailed Karp that Hyundai would be “a great company to
start [Karp’s] plan with in q1/99 potentially.” The district
court determined that the said “plan” was a licensing
agreement with Hyundai. Also in July 1998, Karp made
presentations on the document retention policy to engi-
neers, where he told them to “LOOK FOR THINGS TO
KEEP,” including documents that could potentially help
establish a conception date.
In September 1998, Rambus held its first “Shred
Day,” destroying 400 boxes of documents pursuant to
Karp’s document retention policy.
HYNIX SEMICONDUCTOR v. RAMBUS 10

In October 1998, Karp advised Rambus executives to
delay litigation, saying that there was no “rush” to sue
“until” the Direct RDRAM ramp reached the point of no
return, likely in the first quarter of 2000. Karp advised
Rambus to stay in “stealth mode,” and not to “ROCK THE
DIRECT BOAT.” Moreover, he noted that the direct
infringement case against Mosel and Nanya, two RAM
manufacturers, “could be ready to go in Q1 ’99.” In No-
vember 1998, Karp sent Rambus executives the “Nuclear
Winter Memorandum,” which detailed a course of action
in the “very unlikely” event that Intel cancelled RDRAM
in its next generation chipset in favor of SDRAM. That
memorandum identified litigation targets, time frames,
and causes of action for infringement. It noted that
Rambus had already made claim charts detailing in-
fringement by Micron’s non-compatible RAM products.
The first patent in suit, the ’105 patent, issued in
June 1999. Within two days, CEO Tate instructed Karp
to identify and justify his choice for the first licensing or
litigation target, and to set out what Rambus’s “strategy
[would be] for the battle with the first target that we will
launch in [O]ctober [1999].” Karp’s goals for the third
quarter of 1999 thereafter included: “prepare litigation
strategy against 1 of the 3 manufacturers,” and “be ready
for litigation with 30 days notice.” In July 1999, Attorney
Johnson prepared duration and timing charts for litiga-
tion in the Northern District of California and the East-
ern District of Virginia, with October 1, 1999 as the
prospective filing date.
Thereafter, on August 26, 1999, Rambus held its sec-
ond “Shred Day,” destroying 300 additional boxes pursu-
ant to its document retention policy. Through all the
Shred Days, Rambus kept no record of what was de-
stroyed, but admitted that some destroyed documents
related to contract and licensing negotiations, patent
11 HYNIX SEMICONDUCTOR v. RAMBUS

prosecution, JEDEC participation, Board meetings, and
Rambus finances.
On September 24, 1999, Karp made a presentation to
the Rambus board entitled, “IS THERE LIFE AT
RAMBUS AFTER INTEL?” The district court determined
that this presentation, postdating the two shred days,
“reflects the turning point in Rambus’s litigation inten-
tions” when Rambus “appear[ed] to be ready to seriously
consider actually filing suit against someone.” Spoliation,
591 F. Supp. 2d at 1063, 1064. During that presentation,
Karp told the board that Rambus “must increase the
industry’s perception of [its] value through aggressive
assertion of IP rights . . . . [i]f Rambus is to have a fu-
ture.” He noted that certain “[c]ompanies like Micron will
fight us tooth and nail and will never settle,” and touted
the desirability of litigation, noting that the “[b]est route
to IP credibility is through victory over a major DRAM
manufacturer.” Within a week, CEO Tate sent an e-mail
recognizing the consensus that Rambus “need[ed] to sue a
[DRAM] company to set an example.”
On October 22, 1999, Karp sent Hitachi a letter refer-
encing its patents, and sued Hitachi on January 18, 2000.
D. Micron
In 2000, Micron Technology, Inc. filed a declaratory
judgment action against Rambus in the District of Dela-
ware (Robinson, J.). There, the district court determined
that Rambus had spoliated documents in contravention of
a duty to preserve because litigation was reasonably
foreseeable prior to Rambus’s second shred day, and held
the patents unenforceable. See Micron I, 255 F.R.D. at
151. This court has now affirmed the district court’s
determination of spoliation. Micron II, slip. op. at *24.
HYNIX SEMICONDUCTOR v. RAMBUS 12

II. DISCUSSION
A. Spoliation
“[S]poliation refers to the destruction or material al-
teration of evidence or to the failure to preserve property
for another’s use as evidence in pending or reasonably
foreseeable litigation.” Id. at *12 (citing Silvestri v. Gen.
Motors Corp., 271 F.3d 583, 590 (4th Cir. 2001)). Most
relevant in this case is the point when the duty to pre-
serve evidence begins. This determination is informed by
a number of policy considerations, including “the need to
preserve the integrity of the judicial process in order to
retain confidence that the process works to uncover the
truth,” Silvestri, 271 F.3d at 590, and must balance the
reality that “litigation is an ever-present possibility in
American life,” Nat’l Union Fire Ins. Co. of Pittsburgh, PA
v. Murray Sheet Metal Co., 967 F.2d 980, 984 (4th Cir.
1992), with the legitimate business interest of eliminating
unnecessary documents and data.
Both parties agree that in balancing the competing in-
terests relevant to the preservation and destruction of
documents and data, the reasonable foreseeability stan-
dard described in Silvestri is the proper standard. The
parties disagree, however, about what that standard
means. Hynix argues that reasonable foreseeability
incorporates no requirement of imminence of litigation,
while Rambus argues that “to be reasonably foreseeable,
litigation must be ‘imminent,’ at least in the sense that it
is probable and free of significant contingencies.” Br. of
Rambus at 65.
The district court here determined that litigation did
not become reasonably foreseeable until late 1999, before
which “the path to litigation was neither clear nor imme-
diate” and was subject to “several contingencies [that] had
to occur before Rambus would engage in litigation.”
13 HYNIX SEMICONDUCTOR v. RAMBUS

Spoliation, 591 F. Supp. 2d at 1062. These contingencies
included: locking-in of the manufacturers to the RDRAM
standard, issuance of Rambus’s patents covering non-
compatible devices, availability and reverse-engineering
of the accused’s product samples to create claim charts,
approval for litigation from Rambus’s board to commence
licensing negotiations with the manufacturers, and the
manufacturer’s rejection of Rambus’s licensing terms. Id.
According to the district court, the “turning point in
Rambus’s litigation intentions” was Karp’s IP Strategy
Update of September 24, 1999, which “clearly states that
Rambus’s intellectual property in its patents must be
substantiated either by settlement with ‘an industry
powerhouse’ or ‘winning court,’ and acknowledges that
some manufacturers will never settle.” Id. at 1063.
Because the second shred day preceded the IP Strategy
Update, the district court determined that Rambus’s
destruction of documents was “a permissible business
decision.” Id. at 1064.
This court reviews the district court’s spoliation deci-
sion under the law of the regional circuit as follows: de
novo for the legal standard, clear error for the underlying
facts, and abuse of discretion for the propriety of the
remedy. See Qualcomm Inc. v. Broadcom Corp., 548 F.3d
1004, 1019 (Fed. Cir. 2008).
In Micron II, this court held that that standard does
not carry a gloss requiring that litigation be “imminent, or
probable without significant contingencies.” Micron II,
slip. op. at *12-14. The district court here applied just
such a standard. This is evident for three reasons.
First, the district court’s discussion of the contingen-
cies did not consider the likelihood that those contingen-
cies would be resolved. Instead, the district court
determined that litigation was not reasonably foreseeable
HYNIX SEMICONDUCTOR v. RAMBUS 14

merely because some contingencies were present, which
made litigation “neither clear nor immediate.” Id. at
1062. Notwithstanding the conclusion of no reasonable
foreseeability, the record shows that the district court
implicitly recognized that the resolution of each contin-
gency was reasonably foreseeable:
• “One of the basic assumptions [of the Febru-
ary 23, 1998 Cooley presentation] was that
Rambus would not initiate action until a
competing product enters the market.” Id. at
1047 (emphasis added).
• “Rambus initially planned to begin its licens-
ing strategy only at the time the DRAM
manufacturers were locked in to RDRAM
production. By October 1998, the projected
time frame for this was early 2000.” (citing
Karp’s statement that “[w]e should not assert
patents against Direct partners until ramp
reaches a point of no return”). Id. at 1048
(emphases added).
• “[S]everal contingencies had to occur before
Rambus would engage in litigation.” Id. at
1062 (emphases added).
• “Once customer samples were available in the
market, Rambus planned to engage in reverse
engineering to produce claim charts for us in
its license negotiations.” Id. at 1063 (empha-
ses added).
• “Rambus did not actually intend to initiate li-
censing negotiations for non-compatible users
until certain contingencies occurred, which
did not happen until 1999.” Id. (emphasis
added).
Though the district court understood that these contin-
gencies were reasonably foreseeable, it nevertheless
15 HYNIX SEMICONDUCTOR v. RAMBUS

determined that the litigation itself was not. This reflects
a mistaken view of the importance of these contingencies
in determining the foreseeability of litigation. Contingen-
cies whose resolutions are reasonably foreseeable do not
foreclose a conclusion that litigation is reasonably fore-
seeable. See Micron II, slip. op. at *20-22. It would be
inequitable to allow a party to destroy documents it
expects will be relevant in an expected future litigation,
solely because contingencies exist, where the party de-
stroying documents fully expects those contingencies to be
resolved. Cf. United States v. Kitsap Physicians Serv.,
314 F.3d 995, 1001 (9th Cir. 2002) (“Defendants engage in
spoliation of documents as a matter of law only if they
had some notice that the documents were potentially
relevant to the litigation before they were destroyed.”
(internal citations omitted)).
Second, in addition to the contingencies, the district
court found evidence of non-foreseeability of litigation
because: (1) Rambus had not received Board approval for
licensing negotiations or litigation against DRAM manu-
facturers as of August 1999, and (2) “Rambus had not
budgeted for litigation” by June 1999. Hynix, 591 F.
Supp. 2d at 1063. While these facts may show that litiga-
tion was not imminent, they do not demonstrate that it
was not reasonably foreseeable. Indeed, there is no
evidence in the record that these facts changed as of
January 2000, when Rambus in fact sued Hitachi.
Finally, the district court here was the only court to
determine that the duty to preserve documents did not
begin until after Rambus’s second shred day, which
suggests the application of a too-strict standard of fore-
seeability. See Micron I, 255 F.R.D. 135 (D. Del. 2009);
Rambus Inc. v. Infineon Tech. AG, 155 F. Supp. 2d 668,
682 (E.D. Va. 2001), vacated-in-part, reversed-in-part,
affirmed-in-part, and remanded by 318 F.3d 1081 (Fed.
HYNIX SEMICONDUCTOR v. RAMBUS 16

Cir. 2003); Samsung Elecs. Co. v. Rambus Inc., 439 F.
Supp. 2d 524 (E.D. Va. 2006), vacated as moot and re-
manded by 523 F.3d 1374 (Fed. Cir. 2008).
The narrow standard applied by the district court in
this case vitiates the reasonable foreseeability test, and
gives free reign to destroy documents to the party with
the most control over, and potentially the most to gain
from, their destruction. This fails to protect opposing
parties’ and the courts’ interests in uncovering potentially
damaging documents, and undermines the level eviden-
tiary playing field created by discovery that lies at the
heart of our adversarial system. See Vodusek v. Bayliner
Marine Corp., 71 F.3d 148, 156 (4th Cir. 1995).
Applying the correct standard of reasonable foresee-
ability, without the immediacy gloss, these considerations
compel a finding that litigation was reasonably foresee-
able prior to Rambus’s Second Shred Day. Moreover, as
noted above, Rambus has agreed that whatever differ-
ences the facts present, the two cases should not be de-
cided differently.
This court thus concludes that the district court erred
in applying too narrow a standard of reasonable foresee-
ability as requiring that litigation be immediate or cer-
tain, which was legal error. This court vacates the
district court Findings of Fact and Conclusions of Law in
connection with the rejection of Hynix’s motion to dismiss
on the basis of spoliation, and remand for further proceed-
ings consistent with this opinion and the framework of
reasonable foreseeability set forth in our companion
Micron case. 2

2 This court does not decide whether Micron II
decision should be given any preclusive effect, the cor-
rectness of Judge Whyte’s determinations on prejudice
and good faith, or the propriety of any particular sanction
17 HYNIX SEMICONDUCTOR v. RAMBUS

B. Piercing of the Attorney-Client Privilege
During discovery, the district court pierced Rambus’s
attorney-client privilege on the basis of the crime-fraud
exception, relying on California Penal Code § 135, which
prohibits destruction of documents “about to be produced
in evidence.” On appeal, Rambus argues that if this court
vacates the district court’s spoliation decision, it should
also vacate the piercing of the attorney-client privilege
because Rambus’s conduct was not within the scope of
California Penal Code § 135, because the delay between
Rambus’s destruction of documents and its filing suit
undermined the “temporal closeness” necessary for a
violation of § 135, based on People v. Prysock, 180 Cal.
Rptr. 15, 31 (Ct. App. 1982). This court rejects Rambus’s
argument.
As discussed in Micron II, this case is distinguishable
from Prysock, because there “the defendant controlled the
timing of the destruction of relevant evidence, while law
enforcement, acting independently, controlled the timing
of the initiation of the investigation that would trigger the
application of § 135,” whereas here, “Rambus controlled
the timing of both events.” Micron II, slip. op. at *33.
Under a reasonable reading of § 135, Rambus’s destruc-
tion of documents in preparation of its suit against the
DRAM manufacturers could reasonably constitute a
crime, and this court finds no error in the district court’s
determination that the crime-fraud exception to the
attorney-client privilege applies. See id. at *33-34.
C. Other Defenses
Although this court remands to the district court to
address the spoliation issue, in the event the district court

on this record. Those questions all remain for considera-
tion by the district court on remand.
HYNIX SEMICONDUCTOR v. RAMBUS 18

determines that Rambus did not spoliate documents,
and/or that Rambus’s patents are not unenforceable, this
court considers the waiver and estoppel, claim construc-
tion, written description, and obviousness issues raised by
Hynix.
i. Waiver and Estoppel
A member of an open standard setting organization
may be equitably estopped or may have impliedly waived
its right to assert infringement claims against standard-
compliant products. Qualcomm, 548 F.3d at 1022-24
(noting that either waiver or equitable estoppel may
properly be asserted in this context). See also A.C. Au-
kerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020,
1028 (Fed. Cir. 1992) (en banc) (“Aukerman”) (holding
that equitable estoppel is a cognizable defense against
patent infringement).
To support a finding of implied waiver in the standard
setting organization context, the accused must show by
clear and convincing evidence that “[the patentee’s]
conduct was so inconsistent with an intent to enforce its
rights as to induce a reasonable belief that such right has
been relinquished.” See Qualcomm, 548 F.3d at 1020
(citing with approval district court’s advisory jury instruc-
tion). Such conduct can be shown where (1) the patentee
had a duty of disclosure to the standard setting organiza-
tion, and (2) the patentee breached that duty. See id. at
1011-12.
To support a finding of equitable estoppel, the accused
must show that “[t]he patentee, through misleading
conduct, led the alleged infringer to reasonably infer that
the patentee does not intend to enforce its patent against
the alleged infringer.” Aukerman, 960 F.2d at 1028.
“‘Conduct’ may include specific statements, action, inac-
19 HYNIX SEMICONDUCTOR v. RAMBUS

tion, or silence where there was an obligation to speak.”
Id.
The two elements of implied waiver must also be
shown to prove equitable estoppel, because without a
disclosure duty, Hynix could not “reasonably infer” that
Rambus did not intend to enforce its patents against it,
and without a breach of that duty, Rambus’s non-
disclosure could not be “misleading conduct.” This opin-
ion thus discusses the applicability of both doctrines
together.
The district court relied on a jury determination that
“JEDEC members did not share a clearly defined expecta-
tion that members would disclose relevant knowledge
they had about patent applications or the intent to file
patent applications on technology being considered for
adoption as a JEDEC standard,” Estoppel at *50, and that
prior to Rambus’s withdrawal from JEDEC, none of its
pending patent applications covered a JEDEC standard,
id. at *51 (“The patent[s]-at-issue in this case had not
even been applied for during Rambus’s membership in
JEDEC.”).
In Infineon, this court held that participation in
JEDEC imposed a duty to disclose pending applications
and issued patents “with claims that a competitor or other
JEDEC member reasonably would construe to cover the
standardized technology.” 318 F.3d at 1100. This court
noted that “this does not require a formal infringement
analysis,” id., but applies “when a reasonable competitor
would not expect to practice the standard without a
license under the undisclosed claims,” id. at 1101. The
determination that there was a duty—and the categoriza-
tion of its scope as extending to all pending or issued
claims that were reasonably necessary to practice the
standard—is dispositive in this case and should never
HYNIX SEMICONDUCTOR v. RAMBUS 20

have been submitted to the jury. However, because this
court determines that Infineon’s holding that Rambus did
not breach the duty of disclosure applies here as well, see
infra, submitting the issue to the jury was harmless error.
While Rambus was still a member of JEDEC, it dis-
closed to JEDEC its ’703 patent, a member of the ’898
patent family with the same written description as the
patents in suit. In Infineon, this court determined that
the result of this disclosure was that the fraud claim
against Rambus was “claim-specific and standard-
specific,” requiring that the claims pending during Ram-
bus’s membership in JEDEC were the only ones that
could support a fraud ruling. Id. at 1102. “Because the
patents-in-suit were filed after Rambus left JEDEC in
1996,” id., and “substantial evidence does not support the
finding that these [pending] applications had claims that
read on the SDRAM standard,” id. at 1103, “Rambus’s
claimed technology did not fall within the JEDEC disclo-
sure duty,” id. at 1104.
Hynix argues that our determination in Infineon that
Rambus did not violate this duty is not binding in this
case, primarily because all of the patents in suit claim
priority to the ’898 application through the patents pend-
ing during Rambus’s JEDEC participation. Hynix con-
tends that “a patentee may not insist on the filing date of
the original application for prior art purposes, while
asking for the patents to be viewed as filed several years
later for purposes of its equitable disclosure obligations.”
Br. of Hynix at 39 (citing Qualcomm, 548 F.3d at 1019
(rejecting patentee’s “ex post argument that the asserted
patents do not meet the ‘reasonably might be necessary’
standard” where the patentee makes an “ex ante argu-
ment[] regarding infringement”)). Hynix argues that the
pending applications, Serial Nos. 222,646 (“’646 applica-
tion”), 847,961 (“’961 application”), 469,490 (“’490 applica-
21 HYNIX SEMICONDUCTOR v. RAMBUS

tion”), and 448,657 (“’657 application”), “contained claims
to the five technologies at issue here,” id. at 40, and so
this case is distinguishable from Infineon.
Were this court writing on a clean slate, it would be
tempted to agree that equity demands that Rambus’s
participation in JEDEC equitably estopped or waived its
claims against standard-compliant products, notwith-
standing its delay in amending its claims until after its
exit from JEDEC. However, this court is not writing on a
clean slate. Infineon involved a virtually identical factual
situation. Just as Hynix attempts to do here, “Infineon
relie[d] on other applications [(i.e., not the patents in-
suit)] Rambus had pending before its 1996 withdrawal
from JEDEC.” Id. at 1102. This court unequivocally held
that the claims pending or issued during Rambus’s
JEDEC tenure were not necessary to practice the stan-
dard because “substantial evidence does not support the
finding that these applications had claims that read on
the SDRAM standard.” Id. at 1103 (emphasis added).
The phrase “these applications” did not refer to the pat-
ents-at-issue, but to Rambus’s pending and issued patents
during its tenure in the standard setting organization.
Thus, there is no inconsistency in alleging that the claims
pending during Rambus’s participation in JEDEC were
not reasonably necessary to practice the standards, but
that the claims prosecuted after Rambus’s exit from
JEDEC were.
Hynix does not argue that the ’646, ’961, ’490, or ’657
applications are more reasonably necessary to practice
the SDRAM standard than the pending applications in
Infineon. Hynix does not proffer any persuasive reason
why our holding that Rambus did not breach its disclo-
sure duty in Infineon does not control, or why the stan-
dard for breach is different in the waiver/estoppel context
than in the fraud context. This court thus affirms the
HYNIX SEMICONDUCTOR v. RAMBUS 22

district court’s conclusion that Rambus did not waive its
right to litigate, and is not equitably estopped from liti-
gating infringement by standard-compliant DRAM.
ii. Claim Construction
In Infineon, this court reversed the district court’s
construction of “bus” in several related patents and some
of the same patents at issue as limited to a multiplexed
bus because: (1) “[t]he claims do not specify that the bus
multiplexes address, data, and control information;” (2)
the phrase “bus” has a “well-recognized meaning” in the
electrical arts that is not so limited; (3) the prosecution
history shows that “[a]lthough some of Rambus’s claimed
inventions require a multiplexing bus, multiplexing is not
a requirement in all of Rambus’s claims;” and (4) some
claims further define “bus” as one that multiplexes, which
implies that the patentee did not redefine “bus” to mean a
“multiplexing bus.” 318 F.3d at 1094-95. Hynix argues
that this court has rejected the methodology used in
Infineon by implication through our en banc decision in
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
This court disagrees.
Although Phillips ruled against the elevation of dic-
tionaries above the specification, id. at 1321, this court
nevertheless allowed the use of dictionaries “to assist in
understanding the commonly understood meaning of
words,” id. at 1322, which is precisely the use that was
made of the dictionary in Infineon, see 318 F.3d at 1094
(“The term ‘bus’ is very common in the electrical arts and
has a well-recognized meaning in such arts, namely, a set
of signal lines (e.g., copper traces on a circuit board) to
which a number of devices are connected, and over which
information is transferred between devices.”) (citing The
New IEEE Standard Dictionary of Electrical and Elec-
tronic Terms 141 (5th ed.1993)). This court in Infineon
23 HYNIX SEMICONDUCTOR v. RAMBUS

determined that the specification could questionably be
read to “limit the meaning of ‘bus’” in two places, but that
the phrase should not be so limited because the prosecu-
tion history revealed that multiplexing was “only one of
many inventions disclosed in the ’898 application.” 318
F.3d at 1094-95. Additionally, this court looked to the
U.S. Patent and Trademark Office’s (“PTO”) restriction
requirements, which showed “that some of the inventions
described in the ’898 application did not require the
multiplexing bus.” Id. at 1095. Finally, this court specifi-
cally recognized that inventors may define terms in the
specification “implicitly,” and, like in Phillips, cited Bell
Atlantic Network Services Inc. v. Covad Communications
Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) for the
proposition that “[a] claim term may be clearly redefined
without an explicit statement of redefinition.” Infineon,
318 F.3d at 1088.
Phillips counsels looking to the prosecution history to
“show what a person of skill in the art would have under-
stood disputed claim language to mean.” 415 F.3d at 1314.
In Infineon, this court looked to the claim limitations of
the ancestor patents, which included a claim limitation
for “a bus wherein said bus includes a plurality of bus
lines for carrying substantially all address, data and
control information needed by said semiconductor device
for communication with substantially every other semi-
conductor device connected to said bus [i.e., a multiplexed
bus]”, a limitation that would be redundant if “bus” al-
ready meant “multiplexed bus.” 318 F.3d at 1096. See
also Phillips, 415 F.3d at 1314 (“To take a simple exam-
ple, the claim in this case refers to ‘steel baffles,’ which
strongly implies that the term ‘baffles’ does not inherently
mean objects made of steel.”).
Finally, as Rambus points out, this court has favora-
bly cited the claim construction analysis in Infineon since
HYNIX SEMICONDUCTOR v. RAMBUS 24

Phillips. Br. of Rambus at 31 (citing Netcraft Corp. v.
eBay, Inc., 549 F.3d 1394, 1398 (Fed. Cir. 2008); Ortho-
McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358,
1362 (Fed. Cir. 2008); MBO Labs., Inc. v. Becton, Dickin-
son & Co., 747 F.3d 1323, 1330 (Fed. Cir. 2007)).
This court is thus bound by the claim construction of
this court in Infineon for the term “bus.” Hynix’s argu-
ments on the merits that this court should construe the
term “bus” as limited to a narrow multiplexed bus are
inapposite; this court is not writing on a clean slate. This
court thus affirms the district court’s claim construction of
“bus.”
iii. Written Description
At the district court, a jury determined that Rambus’s
patents were not invalid for lack of written description
under 35 U.S.C. § 112, paragraph 1. See Ariad Pharms.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). Hynix moved for Judgment as a Matter
of Law (“JMOL”) under Fed. R. Civ. P. 50(a) and 50(b),
and moved in the alternative for a new trial. The district
court denied both motions.
The test under the written description requirement is
“whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as
of the filing date.” Ariad, 598 F.3d at 1351. “The law
must be applied to each invention at the time it enters the
patent process.” Id. To overcome the presumption of
validity of patents, the accused must show that the claims
lack a written description by clear and convincing evi-
dence. ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d
1368, 1376 (Fed. Cir. 2009).
25 HYNIX SEMICONDUCTOR v. RAMBUS

The denial of JMOL is a procedural issue, which this
court reviews under regional circuit law. Wechsler v.
Macke Int’l Trade, Inc., 486 F.3d 1286, 1290 (Fed. Cir.
2007). The Ninth Circuit reviews a denial of JMOL de
novo. White v. Ford Motor Co., 312 F.3d 998, 1010 (9th
Cir. 2002). JMOL is appropriate where “the evidence,
construed in the light most favorable to the nonmoving
party, permits only one reasonable conclusion,” id., or in
other words, whether the jury’s determination of facts is
supported by “substantial evidence,” Ariad, 598 F.3d at
1355. A motion for a new trial can only be granted if “the
verdict is contrary to the clear weight of the evidence.”
United States v. 4.0 Acres of Land, 175 F.3d 1133, 1139
(9th Cir. 1999). The Ninth Circuit reviews the district
court’s denial of a motion for a new trial on the basis that
the verdict is not against the weight of the evidence for a
“clear abuse of discretion,” a standard that is “virtually
unassailable.” Kode v. Carlson, 596 F.3d 608, 612 (9th
Cir. 2010) (internal citations omitted).
On appeal, Hynix’s sole argument is that Rambus’s
amendments deleting the “narrow multiplexed bus”
limitation in its continuation applications was unsup-
ported by the written description of the ’898 application to
which they all claim priority. Hynix argues that: (1) the
“ultimate judgment” of written description is “a legal
determination,” citing KSR International Co. v. Teleflex
Inc., 550 U.S. 398, 427 (2007); (2) “disclosure of a species
does not suffice to claim the genus;” and (3) ICU Medical,
Inc. v. Alaris Medical System, Inc., 558 F.3d 1368 (Fed.
Cir. 2009) controls.
These arguments are unconvincing. First, whether a
claim is supported by an adequate written description is a
factual inquiry, and has been for some time. Ariad, 598
F.3d at 1355; Utter v. Hiraga, 845 F.2d 993, 998 (Fed. Cir.
1988). Hynix’s argument that the ultimate determination
HYNIX SEMICONDUCTOR v. RAMBUS 26

of written description is a legal issue (relying on the
Supreme Court’s determination in KSR, 550 U.S. at 427,
that obviousness is a legal issue) is unavailing; written
description and obviousness are distinct legal doctrines.
Compare 35 U.S.C. § 112, ¶ 1 (written description), with
35 U.S.C. § 103 (obviousness). As such, our review of the
district judge’s denial of a new trial and denial of judg-
ment as a matter of law on written description is severely
circumscribed as a factual issue already decided by a jury
and approved by the district court.
Second, there is no categorical rule that a species
cannot suffice to claim the genus. It is true that, in Ariad,
we continued a line of prior holdings that “a sufficient
description of a genus instead requires the disclosure of
either a representative number of species falling within
the scope of the genus or structural features common to
the members of the genus so that one of skill in the art
can ‘visualize or recognize’ the members of the genus.”
598 F.3d at 1350 (discussing Regents of the Univ. of Cal.
v. Eli Lilly & Co., 119 F.3d 1559, 1568-69 (Fed. Cir.
1997)). See also Bilstad v. Wakalopulos, 386 F.3d 1116,
1124 (Fed. Cir. 2004) (“[T]his court has continued to apply
the rule that disclosure of a species may be sufficient
written description support for a later claimed genus
including that species.”). There is no special rule for
supporting a genus by the disclosure of a species; so long
as disclosure of the species is sufficient to convey to one
skilled in the art that the inventor possessed the subject
matter of the genus, the genus will be supported by an
adequate written description. See Ariad, 598 F.3d at
1351. Whether the genus is supported vel non depends
upon the state of the art and the nature and breadth of
the genus. Here, the supposed genus consists of only two
species, a multiplexed and a non-multiplexed bus, and
Hynix has failed to make any argument that persons of
27 HYNIX SEMICONDUCTOR v. RAMBUS

ordinary skill would not have understood that Rambus
possessed a non-multiplexed bus. That is, Hynix has not
argued that the disclosure of the multiplexed bus was not
representative of the genus of buses that encompasses
both the narrow multiplexed bus and the non-multiplexed
bus.
There was substantial evidence that the invention
would not be undermined by the use of a non-multiplexed
bus, including testimony from Rambus’s expert that a
person of ordinary skill would “understand[] that buses
come in all shapes and sizes. You can multiplex some
lines, you cannot multiplex others . . . . [I]t can be differ-
ent kinds of buses and you still benefit from the features
described in the patent.” Additionally, one of the inven-
tors testified that the narrow multiplexed bus was not
meant to be “something that all these different features . .
. [disclosed in the patents] needed to be used with.” This
testimony serves to aptly distinguish the cases cited by
Hynix. See ICU Med., 558 F.3d at 1372, 1374-75, 1378
(detailing solution to problems in the prior art of medical
valves used in the transmission of fluids by “com-
press[ing] a seal on the valve to create a fluid pathway,”
noting that the spike was used to “pierc[e] a seal inside
the valve” to effectuate the invention, and noting that no
other method was disclosed to effectuate the fluid path-
way because “the specification describes only medical
valves with spikes”); LizardTech, Inc. Earth Res. Map-
ping, Inc., 424 F.3d 1336 (Fed. Cir. 2004) (“[a]fter reading
the patent, a person of skill in the art would not under-
stand how to make a seamless DWT generically and
would not understand LizardTech to have invented a
method for making a seamless DWT, except by ‘maintain-
ing updat[ed] sums of DWT coefficients,” where “main-
taining update[ed] sums of DWT coefficients” was the
limitation omitted in the claims). Though it would cer-
HYNIX SEMICONDUCTOR v. RAMBUS 28

tainly be reasonable to conclude that Rambus’s claims do
not meet the written description requirement on the basis
of ICU Med., that argument was presented to the jury and
rejected by it. Hynix has not presented any cogent argu-
ment that the jury verdict was unsupported by substan-
tial evidence, or that it was against the clear weight of the
evidence. As such, this court rejects Hynix’s arguments,
and affirms the district court’s denial of Hynix’s motions
for JMOL and new trial.
iv. Obviousness
The district court submitted the question of obvious-
ness of claims 24 and 33 of the ’918 patent; claim 33 of the
’120 patent; claims 9, 28, and 40 of the ’916; and claim 16
of the ’863 patent to the jury. After the jury returned a
verdict that the claims were nonobvious, Hynix moved
only for a new trial, which the district court denied.
Hynix appealed, not challenging the denial of a motion for
new trial, but rather the district court’s “ultimate legal
judgment of nonobviousness as ‘an error of law.’” Br. of
Hynix at 68 n.27.
Through the combination of its failure to move for
JMOL to overturn the jury’s finding of non-obviousness
and its failure on appeal to contest the denial of a motion
for new trial, Hynix has waived the right to contest the
sufficiency of the evidence or the weight of the evidence,
and this court implies from the jury verdict all facts in
favor of Rambus. See Duro-Last, Inc. v. Custom Seal, Inc.,
321 F.3d 1098, 1108 (Fed. Cir. 2003) (noting that the
failure to file a post-verdict JMOL waives the right to
contest the jury findings for sufficiency of the evidence,
and presuming “that the jury resolved all underlying
factual disputes in [favor of the prevailing party]”). Hynix
“may [only] challenge the judgment on the ground that
the judge committed an error of law” in coming to his
29 HYNIX SEMICONDUCTOR v. RAMBUS

legal conclusion of obviousness. Southwest Software, Inc.
v. Harlequin Inc., 226 F.3d 1280, 1297 (Fed. Cir. 2000).
Hynix nevertheless mines the district court’s compre-
hensive and well-reasoned opinion denying Hynix’s mo-
tion for a new trial for supposed legal errors. Hynix
argues that the district court: (1) improperly considered
“economic disincentives”; (2) improperly considered that
“it is not easy to recognize when making such combina-
tions will yield benefits, as opposed to messy, expensive
complexity”; and (3) relied on the jury verdict of a lack of
a motivation to combine. None of these arguments have
merit.
First, in KSR, 550 U.S. at 419, the Supreme Court
noted that “market demand” is a legitimate consideration
in determining obviousness. Lowering cost is a ubiqui-
tous market demand, and the fact that a combination is
expected to increase cost has some bearing on the obvi-
ousness of that combination. Second, the district court’s
statement referring to the ease of recognizing the benefits
of a combination was to explain why the “incentive to
combine existing pieces of circuitry” was not controlling,
i.e., because it was unclear whether the combination
would be beneficial or detrimental. How well a combina-
tion is expected to work is certainly a legitimate consid-
eration in an obviousness inquiry. Finally, the rationale
for combining references is a question of fact, Duro-Last,
321 F.3d at 1109, and, as discussed above, Hynix has
waived its right to challenge the factual underpinnings of
the obviousness determination.
Because Hynix has failed to show any legal error in
the district court’s conclusion of nonobviousness, this
court affirms the jury verdict of no obviousness.
HYNIX SEMICONDUCTOR v. RAMBUS 30

D. Cross-Appeal
The district court granted summary judgment of non-
infringement of claims 15, 18, 25, and 26 of the ’214
patent; claims 36 and 40 of the ’105 patent; claims 1 and 4
of the ’365 patent; and claim 14 of the ’152 patent. Cross-
appeal at *5. The common link between these claims was
the presence of the “second external clock signal” limita-
tion, in addition to a “first external clock signal” limita-
tion. Rambus challenges both the claim construction of
the “second external clock signal” limitation and the grant
of summary judgment assuming the district court claim
construction was correct. This court reviews the district
court’s claim construction de novo. Hearing Components,
Inc. v. Shure Inc., 600 F.3d 1357, 1370 (Fed. Cir. 2010).
Both parties agree that “external clock” signal means
“a periodic signal from a source external to the device to
provide timing information.” Claim Construction at *29-
30. As the district court characterized it, the parties
“disagree over whether the terms ‘first’ and ‘second’ refer
to timing [as Hynix would have it], or whether they refer
to two separate signals without reference to time [as
Rambus prefers].” Id. at *30. The district court agreed
with Hynix, and construed the phrase “second external
clock” as “a periodic signal received by the memory device
from an external source to provide second timing informa-
tion that is different from the first timing information.”
Id. at *31. Rambus briefly argues that this improperly
imports a limitation from the specification into the claims.
However, Rambus does not frame the issue fairly; the
written description of the first and second external clocks
was simply attempting to explain how Rambus’s inven-
tion works, not merely to disclose a preferred embodi-
ment. See ’152 patent, col.18 l.59–col.19 l.27. The only
place where the clocks are referenced is in the discussion
of avoiding propagation delay (i.e., the error resulting
31 HYNIX SEMICONDUCTOR v. RAMBUS

from the different amounts of time it takes information to
travel to locations at different distances from the source).
As the district court recognized, Rambus’s expert in
Infineon testified that to correct for this delay, the two
signals must contain different information. Claim Con-
struction at *30. Thus, there was no importation of a
preferred embodiment into the claims, but a fair categori-
zation of the meaning of the claims. To the extent Ram-
bus relies on other arguments in its reply brief, those
arguments are waived as not presented in its opening
brief. This court therefore affirms the district court’s
claim construction of the “second external clock” limita-
tion.
Rambus next argues that even under the district
court’s claim construction, there was a genuine issue of
material fact as to infringement sufficient to overcome
summary judgment. Rambus asserts an issue of material
fact as to whether the clock signals in Hynix’s accused
device provide different timing information. Rambus
relies on its expert, Murphy, for the proposition that “[i]f
the two signals provided the same information, the second
signal would be superfluous, and it would make no sense
for Hynix to go to the effort and expense of including it.”
Br. of Rambus at 76-77. Hynix does not address this
point in its reply brief. However, it notes that Rambus
does not dispute the district court’s statement that “the
timing information provided by each of Hynix’s external
clocks is different along every point on the signals’ wave-
form except the crossing points.” Cross-Appeal at *4
(emphasis added). At the crossing point, the two signals
create a “tick,” which is a single piece of timing informa-
tion, and thus cannot meet the claim limitation of “second
external clock” which requires the provision of a “second
timing information different from the first timing infor-
mation.” This court agrees with Hynix that its accused
HYNIX SEMICONDUCTOR v. RAMBUS 32

devices do not meet the “second external clock” limitation,
and thus affirms the district court’s summary judgment of
non-infringement of claims 15, 18, 25, and 26 of the ’214
patent; claims 36 and 40 of the ’105 patent; claims 1 and 4
of the ’365 patent; and claim 14 of the ’152 patent.
III. CONCLUSION
The district court’s Findings of Fact and Conclusions
of Law regarding spoliation are vacated, as is the district
court’s Final Judgment, and the case is hereby remanded
for reconsideration of the spoliation issue under the
framework set forth in Micron II. The district court’s
decision on waiver and estoppel, its claim construction
order, its order denying Hynix’s motion for judgment as a
matter of law or for a new trial on the basis of written
description, and its order denying Hynix’s motion for a
new trial on the basis of obviousness, are affirmed. This
court also affirms the district court’s grant of Hynix’s
motion for summary judgment for the claims at issue in
Rambus’s cross-appeal.

AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED

COSTS
Costs are awarded to Hynix.
 United States Court of Appeals
for the Federal Circuit
__________________________

HYNIX SEMICONDUCTOR INC.,
HYNIX SEMICONDUCTOR AMERICA INC., HYNIX
SEMICONDUCTOR U.K. LTD.,
AND HYNIX SEMICONDUCTOR DEUTSCHLAND
GMBH,
Plaintiffs-Appellants,
v.
RAMBUS INC.,
Defendant-Cross Appellant.
__________________________

2009-1299, -1347
__________________________

Appeals from the United States District Court for the
Northern District of California in case No. 00-CV-20905,
Senior Judge Ronald M. Whyte.
__________________________

GAJARSA, Circuit Judge, concurring-in-part and dissent-
ing-in-part, with whom NEWMAN, Circuit Judge, joins.
I concur with the majority’s affirmance of the district
court’s findings and conclusions in parts B, C, and D. I
must, however, respectfully dissent from part A for the
same reasons noted in my dissent in Micron Technology,
Inc. v. Rambus, Inc., No. 2010-1263, slip op. at 38-45 (Fed.
Cir. May 13, 2011), the companion to this case. The
majority here applies a rule for spoliation premised upon
HYNIX SEMICONDUCTOR v. RAMBUS 2

a reasonably foreseeable litigation standard that it con-
toured and developed in Micron, slip op. at 12-14. Seizing
on the district court’s alleged grafting of an overly strict
“gloss” on the reasonably foreseeable litigation standard,
the majority claims that the district court erred as a
matter of law by applying the wrong standard for spolia-
tion. In so doing, the majority ignores the district court’s
well-articulated understanding of the relevant Ninth
Circuit law and its factual findings, which demonstrate
that the district court applied the very standard that the
majority now requires. The majority obtenebrates the
facts presented in the district court’s opinion to resolve
the conflict between the spoliation determinations in this
case and in Micron.
Being a procedural matter, regional circuit law is ap-
plicable. Because the Supreme Court and the Ninth
Circuit, like the Third Circuit, have not defined a stan-
dard for reasonably foreseeable litigation, this court may
seek guidance from other circuits on the issue. See Loctite
Corp. v. Ultraseal Ltd., 781 F.2d 861, 875 (Fed. Cir. 1985),
overruled on other grounds by Nobelpharma AB v. Im-
plant Innovations, Inc., 141 F.3d 1059 (Fed. Cir. 1998).
The majority applies the standard it crafted in Micron to
this case. The newly established standard is coined as a
“flexible one”—lacking an additional “gloss” that requires
litigation to be “imminent, or probable without significant
contingencies” to find spoliation. Micron, slip op. at 13
(citation omitted).
The majority created this standard in Micron with the
intention of reconciling the district court’s spoliation
determination in that case with the present one. The
desires of an appellate tribunal, however, should not drive
the outcome of decisions. Divergent district court opin-
ions do not necessarily mean that the trial courts applied
3 HYNIX SEMICONDUCTOR v. RAMBUS

different “glosses” on a particular standard. 1 Rather, this
court must review district court opinions with the appli-
cable standard of appellate review, which, in this case, is
clear error or an abuse of discretion. In refusing to do so,
the majority shirks its duties and performs its own factual
analysis. The majority castigates the district court here
for using a narrower “gloss” on the standard for spoliation
just as the majority in Micron castigates the district court
for holding the asserted patents unenforceable as a sanc-
tion for spoliation.
The majority begins with the correct premise that the
various regional circuits generally do not require that
litigation be imminent for it to be reasonably foreseeable.
See, e.g., Silvestri v. Gen. Motors Corp., 271 F.3d 583 (4th
Cir. 2001) (“Spoliation refers to the destruction or mate-
rial alteration of evidence or to the failure to preserve
property for another’s use as evidence in pending or
reasonably foreseeable litigation.” (emphasis added)). But
unlike the majority, I am of the judgment that the district
court here applied the appropriate flexible reasonably
foreseeable litigation standard. The district court ex-

1 In fact, there is no need to reconcile these diver-
gent district court opinions. As the district court ex-
plained,

The judicious application of issue preclusion rests on
an assumption that a prior decision was more or less
correct. Crawford v. Ranger Ins. Co., 653 F.2d 1248,
1252 (9th Cir. 1981). This assumption is not war-
ranted where inconsistent decisions have been
reached; it instead suggests that the outcomes may
have been based on equally reasonable resolutions of
doubt as to the probative strength of the evidence. Id.

Hynix Semiconductor, Inc. v. Rambus, Inc., No. 00-CV-
20905, slip op. at 6 (N.D. Cal. Feb. 3, 2009) (D.I. 3897)
(internal citation and quotation marks omitted).
HYNIX SEMICONDUCTOR v. RAMBUS 4

plained that “[s]poliation of evidence is the . . . failure to
properly preserve property for another’s use as evidence
in pending or reasonably foreseeable litigation.” Hynix
Semiconductor Inc. v. Rambus, Inc., 591 F. Supp. 2d 1038,
1061 (N.D. Cal. 2006) (“District Court Op.”) (emphasis
added) (citations and internal quotation marks omitted).
The district court also relies on Silvestri and Kronisch v.
United States, 150 F.3d 112 (2d Cir. 1999)—cases that the
majority in Micron, slip op. at 13-14, cites in support of its
flexible reasonably foreseeable litigation standard. More-
over, the district court here explicitly stated that “[a]
reading of the court’s Findings and Conclusions . . . shows
that the court specifically framed the issues to be resolved
using the ‘reasonably foreseeable’ standard.” See Hynix
Semiconductor, Inc. v. Rambus Inc., No. 00-CV-20905, slip
op. at 1-2 (N.D. Cal. Feb. 23, 2006) (D.I. 1732).
The factual findings on which the district court relies
also support the conclusion that it applied the reasonably
foreseeable litigation standard the majority imposes. As
the majority acknowledges, the district court specifically
found that the existence of six contingencies meant that
litigation was not reasonably foreseeable until late 1999.
District Court Op. at 1064. Those contingencies were:
(1) the direct RDRAM ramp had to be sufficiently
developed so as not to jeopardize RDRAM produc-
tion; (2) Rambus’s patents covering non-RDRAM
technology had to issue; (3) product samples from
potentially infringing DRAM manufacturers had
to be available in the market; (4) the non-
compatible products had to be reverse engineered
and claim charts made showing coverage of the
actual products; (5) Rambus’s board had to ap-
prove commencement of negotiations with a
DRAM manufacturer; and (6) the targeted DRAM
5 HYNIX SEMICONDUCTOR v. RAMBUS

manufacturer had to reject Rambus’s licensing
terms.
Id. at 1062.
With respect to these contingencies, the district court
determined that Rambus did not even “recommend[]
initiating licensing negotiations” in the October 1998
presentation or even contemplate such negotiations until
after early 1999, id. at 1062-63; that Rambus’ board had
not even budgeted for litigation as of June 1999, id. at
1063; and that Rambus did not have an “expectation of
involvement in litigation” greater than one of its competi-
tor companies, id. These findings were not clearly erro-
neous based on the record before the district court.
Indeed, the majority claims that the district court
“understood that these contingencies were reasonably
foreseeable [but] determined that the litigation was not,”
thus “reflect[ing] a mistaken view of the importance of
these contingencies in determining the foreseeability of
litigation.” Majority Op. at 15. In other words, the major-
ity reweighs the facts and decides that the district court’s
understanding of them was erroneous because it would
reach a different conclusion from the same facts. The
district court, as the fact finder, is the proper forum for
weighing and analyzing the facts. See Hensley v. Ecker-
hart, 461 U.S. 424, 437 (1983). Putting its thumb on the
scales by reweighing the evidence to reach a desired
result is not the proper function of an appellate court.
Moreover, in its well-drafted opinion, the district
court does not conclude at any time that the facts as
determined fail to meet a more stringent clear or immi-
nent threat of litigation standard. Instead, the majority
seizes upon the district court’s single use of the phrase
“neither clear nor immediate” and concludes that the
district court applied this standard. Majority Op. at 14-
HYNIX SEMICONDUCTOR v. RAMBUS 6

17. The use of that phrase by the district court, however,
is not to establish a standard but to distinguish the pre-
sent facts from those in Silvestri, which the district court
noted had “significant factual distinctions.” District Court
Op. at 1061-62. Namely, the plaintiff in Silvestri chose to
destroy the only relevant piece of evidence—the car that
was supposedly defective—after experts inspected the car
and advised him to preserve the car. 271 F.3d at 591-92.
In explaining that the present facts did not establish a
clear or immediate path to litigation, the district court
was simply differentiating these facts from those in
Silvestri that it believed to be significantly more egre-
gious. This does not indicate, as the majority claims, that
the district court applied an admittedly heightened stan-
dard to the facts before it.
Therefore, after a careful review of the record, the ma-
jority’s conclusion that the district court applied the
incorrect legal standard rings hollow. While pretending
to premise its conclusions on the improper application of a
legal standard, the majority improperly substitutes its
own fact findings for those of the district court. A court of
appeals cannot and should not make such a judgment.
Because the majority’s actions go beyond the purview of
the duties of an appellate court, I respectfully dissent.