Hyundai Electronics, et al v. Rambus, Inc.

Filing 4115

ORDER TAXING COSTS PURSUANT TO FEDERAL RULE OF APPELLATE PROCEDURE 39(e); LIFTING HYNIX'S OBLIGATION TO MAINTAIN SUPERSEDEAS BOND; AND DECLINING TO LIFT HYNIX'S OBLIGATION TO MAINTAIN ESCROW ACCOUNT. Signed by Judge Ronald M. Whyte on 1/11/2012. (rmwlc1, COURT STAFF) (Filed on 1/11/2012)

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*E-Filed on 1/11/2012*

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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HYNIX SEMICONDUCTOR INC., et al.,
Plaintiffs,

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v.

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RAMBUS INC.,

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Defendant.

Case No. C-00-20905-RMW
ORDER TAXING COSTS
PURSUANT TO FEDERAL RULE OF
APPELLATE PROCEDURE 39(e);
LIFTING HYNIX’S OBLIGATION TO
MAINTAIN SUPERSEDEAS BOND;
AND DECLINING TO LIFT HYNIX’S
OBLIGATION TO MAINTAIN
ESCROW ACCOUNT

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Presently before the court are a Bill of Costs, Supplemental Bill of Costs, and Second

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Supplemental Bill of Costs filed by Hynix Semiconductor Inc., Hynix Semiconductor America

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Inc., Hynix Semiconductor U.K. Ltd., and Hynix Semiconductor Deutschland GmbH

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(collectively “Hynix”) pursuant to Federal Rule of Appellate Procedure 39(e). In light of the

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magnitude of the costs sought by Hynix and the complexity of the issues involved, and pursuant

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to the stipulation of the parties, the court directed that the cost bills be presented to it in the first

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instance rather than to the clerk. Having considered the briefing of the parties and the arguments

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of counsel presented at the hearing on December 16, 2011, the court orders as follows:

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Case No. C-00-20905-RMW
ORDER TAXING COSTS PURSUANT TO FEDERAL RULE OF APPELLATE PROCEDURE 39(e) ETC.
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I. BACKGROUND
The facts of this case are well-known to the parties and need not be repeated in full here.

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In brief, Hynix (then Hyundai Electronics Industries Co., Ltd.) sued Rambus Inc. (“Rambus”) for

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declaratory judgment of noninfringement, invalidity, and unenforceability with respect to several

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patents owned by Rambus, and for monopolization, fraud, and unfair competition. Rambus

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counterclaimed for patent infringement. Hynix asserted various affirmative defenses to

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Rambus’s infringement claims, including an unclean hands defense based upon Rambus’s

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alleged spoliation of evidence. The case was tried in three phases: first, Hynix’s unclean hands

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defense was tried to the court; second, Rambus’s infringement claims were tried to a jury; and

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third, Hynix’s claims and defenses of monopolization, attempted monopolization, fraud,

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estoppel, waiver, declaratory judgment of unenforceability, and unfair competition were tried in

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part to a jury and in part to the court. Rambus prevailed in all three phases. On March 10, 2009,

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the court entered final judgment for Rambus in the amount of $396,881,244 plus post-judgment

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interest. The judgment also required Hynix to pay specified royalties to Rambus on an ongoing

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basis. Hynix appealed.

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The court stayed execution of the judgment conditioned upon Hynix’s posting of a

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supersedeas bond in the amount of $250 million and providing alternate security sufficient to

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cover the remainder of the judgment. Order of May 14, 2009 (filed under seal) at 4. The court

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permitted Hynix to pay the royalties into an escrow account rather than to Rambus directly. Id.

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Subsequently, the court reconsidered its decision to permit Hynix to provide alternate security,

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and it ordered Hynix to post a supersedeas bond in the full amount of the judgment. Order of

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Sept. 17, 2010. Hynix posted an increased bond in the form of a rider to the original bond, and

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lodged it with the court on October 18, 2010.

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On May 13, 2011, the Court of Appeals for the Federal Circuit vacated the judgment and

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the underlying findings of fact and conclusions of law regarding spoliation, and remanded for

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further proceedings on the spoliation issue. Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d

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1336, 1355 (Fed. Cir. 2011). This court’s rulings otherwise were affirmed. Id. The appellate

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court, without elaboration, ordered that “[c]osts are awarded to Hynix.” Id. The mandate issued
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on August 9, 2011,1 reflecting an award of appellate printing costs in the amount of $12,055.76;

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Rambus has paid those costs. Hynix seeks additional appellate costs in excess of $16 million,

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the bulk of which are costs incurred in obtaining and maintaining the supersedeas bond required

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by the court as a condition of staying execution of the judgment.

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II. DISCUSSION
A.

Legal Standards
“When costs are awarded on appeal, a portion of the costs is taxed in the circuit court and

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a portion is taxed in the district court.” Record Club of America, Inc. v. United Artists Records,

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Inc., 731 F. Supp. 602, 603 (S.D.N.Y. 1990). Taxation of costs in the district court is governed

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by the following provisions of Federal Rule of Appellate Procedure 39:

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Rule 39. Costs

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(a) Against Whom Assessed. The following rules apply unless the law provides
or the court orders otherwise:

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(1) if an appeal is dismissed, costs are taxed against the appellant,
unless the parties agree otherwise;

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(2) if a judgment is affirmed, costs are taxed against the appellant;

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(3) if a judgment is reversed, costs are taxed against the appellee;

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(4) if a judgment is affirmed in part, reversed in part, modified, or
vacated, costs are taxed only as the court orders.
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(e) Costs on Appeal Taxable in the District Court. The following costs on
appeal are taxable in the district court for the benefit of the party entitled to costs
under this rule:

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(1) the preparation and transmission of the record;

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(2) the reporter’s transcript, if needed to determine the appeal;

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(3) premiums paid for a supersedeas bond or other bond to
preserve rights pending appeal; and

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(4) the fee for filing the notice of appeal.
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Fed. R. App. P. 39(a), (e).

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The mandate was filed in this court on August 15, 2011.
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“Federal Rule of Appellate Procedure 39(a) is a ‘to whom’ provision. It establishes

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which party is entitled to recover the costs of appeal.” Muniauction, Inc. v. Thomson Corp., No.

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01-1003, 2009 WL 437883, at * (W.D. Pa. Feb. 21, 2009); see also L-3 Commun. Corp. v. OSI

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Systems, Inc., 607 F.3d 24, 28 (2d Cir. 2010) (“Subsection (a) of Rule 39, entitled ‘Against

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Whom Assessed,’ provides basic default rules that determine which party bears certain costs of

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appeal ‘unless the law provides or the court orders otherwise.’”) (quoting Fed. R. App. P. 39(a)).

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“Subsections (a)(1) through (3) distribute the costs of appeal in situations in which it is generally

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apparent which party should bear the costs, such as when the appeal is dismissed, affirmed, or

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reversed.” L-3 Commun., 607 F.3d at 28. “Subsection (a)(4), however, acknowledges that there

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are some circumstances in which the disposition on appeal will not lend itself to a ready

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determination of which party, if any, should bear costs on appeal.” Id. In such circumstances,

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“costs are taxed only as the court orders.” Fed. R. App. P. 39(a)(4).

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There is a split of authority as to whether in the context of subsection (a)(4) “the court”

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refers to the appellate court or the district court. The Ninth Circuit has not addressed this precise

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issue.2 The Second Circuit recently construed the relevant language as follows: “We read

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subsection (a)(4) as requiring the appellate court to make a determination about which party, if

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any, should bear costs before costs may be taxed.” L-3 Commun., 607 F.3d at 29. The Eighth

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Circuit likewise has concluded that in a subsection (a)(4) case appellate costs may be taxed only

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after the appellate court enters an order stating that a particular party is entitled to costs on

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appeal. Reeder-Simco GMC, Inc. v. Volvo GM Heavy Truck Corp., 497 F.3d 805, 808 (8th Cir.

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2007). At least one district court has held that “[i]n the context of this Rule, ‘the court’

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referenced is clearly the Court of Appeals.” Clark v. Capital Credit & Collection Services, Inc.,

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561 F. Supp. 2d 1213, 1223 (D. Ore. 2008). However, the Seventh Circuit has held that

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subsection (a)(4) “affords district courts broad discretion to allocate costs.” Republic Tobacco

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Co. v. North Atlantic Trading Co., Inc., 481 F.3d 442, 449 (7th Cir. 2007). In Republic Tobacco,

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The Federal Circuit “ordinarily reviews procedural matters not unique to patent issues
under the law of the particular regional circuit court where appeals from the district court
normally would lie.” Dana Corp. v. IPC Limited Partnership, No. 90-1443, 1991 WL 5890, at
*2 n.2 (Fed. Cir. Jan. 25, 1991).
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the court held that although subsection (a)(4) clearly governed, and the appellate court had

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ordered that each party bear its own costs on appeal, the district court nonetheless retained

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discretion to tax appellate costs pursuant to subsection (e). Id. The court also concluded that “a

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district court has discretion not to award a party costs under Federal Rule of Appellate Procedure

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39(e), despite an order by the appellate court awarding costs to that same party.” Id. at 448.

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This approach has been adopted by some district courts. See, e.g., Smart Marketing Group, Inc.

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v. Publications Intern., Ltd., No. 04–cv–0146, 2011 WL 1897214, at *1 (N.D. Ill. May 17, 2011)

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(Rule 39(a)(4) “gives district courts broad discretion in granting or denying these costs to a

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successful appellant”).

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This court need not resolve whether “the court” referenced in Rule 39(a)(4) is the Court

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of Appeals or the district court. If the former, the Federal Circuit clearly granted appellate costs

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to Hynix. If the latter, this court concludes that Hynix is a prevailing party entitled to costs.

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Accordingly, under the above authorities, this court must determine whether Hynix has incurred

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costs that are taxable under subsection (e) and, if so, what those costs are.3

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B.

Whether Review of Costs Bills Would be Premature

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Before undertaking this determination, the court addresses Rambus’s contention that it

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would be premature to award Hynix costs at this time because “Rambus may yet emerge as the

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judgment winner on remand.” Rambus’s Opp. to Hynix’s Bill of Costs, at 12. Hynix asserts that

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Rambus has waived this argument by stipulating to a schedule for briefing and hearing the costs

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issues. The court concludes that Rambus’s stipulation with respect to a briefing schedule did not

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constitute a waiver of any substantive argument. However, Rambus’s argument assumes that

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Rambus cites Golden Door Jewelry Creations v. Lloyds Underwriters Non-Marine
Ass’n, 117 F.3d 1328 (11th Cir. 1997), for the proposition that where Rule 39(a)(4) applies a
district court lacks discretion to tax costs under Rule 39(e) unless those costs are explicitly
authorized in the appellate court’s mandate. Golden Door, 117 F.3d at 1340. This approach has
been criticized by a number of courts, including the Second Circuit in L-3 Commun., 607 F.3d at
29-30. Moreover, the Golden Door decision was based in large part upon the language of the
appellate court’s mandate in that case, which provided for “costs on appeal to be taxed by the
Clerk of this court.” Golden Door, 117 F.3d at 1340 (emphasis added). The mandate in the
present case does not contain such limiting language. Accordingly, this court declines to apply
Golden Door here.
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Hynix’s entitlement to appellate costs would be extinguished in the event that Rambus were to

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prevail on the merits following remand. This does not appear to be the case. To the contrary, an

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order taxing appellate costs is effective immediately, and is not dependent upon the ultimate

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outcome of the case on remand. See Ninilchick Traditional Council v. United States, 227 F.3d

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1186, 1196 (9th Cir. 2000) (following reversal of the district court’s order, appellant was entitled

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to costs on appeal under Fed. R. App. P. 39(e)(4), and such entitlement was not dependent upon

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the outcome of subsequent proceedings); Mason v. Texaco, Inc., 131 F.R.D. 697, 698 (D. Kansas

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1990) (same). In Mason, the defendant successfully appealed the first trial in the case, and was

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awarded costs on appeal. The plaintiff prevailed on retrial, and sought to vacate the award of

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appellate costs to the defendant. The district court denied the motion, noting that: “Irrespective

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of the disposition of this case upon retrial, defendant was the prevailing party on appeal from the

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first trial. Thus, the assessment of costs for defendant’s expenses on appeal may not be

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extinguished by the fact that plaintiff has prevailed in subsequent proceedings.”4 Mason, 131

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F.R.D. at 698.

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Rambus relies heavily upon Berthelsen v. Kane, 907 F.2d 617 (6th Cir. 1990), in which

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the appellate court vacated entry of default and default judgment against the defendant, and

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remanded the case to the district court for a trial on the merits. The plaintiff subsequently asked

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the appellate court to clarify whether the defendant’s costs in obtaining a supersedeas bond on

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appeal were taxable against the plaintiff. The appellate court noted that because the judgment

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had been vacated, costs on appeal were “allowed only as ordered by the court.” Id. at 622. The

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appellate court declined to order the plaintiff to pay such costs, noting that if the plaintiff

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prevailed on the merits, “the appeal merely would have resulted in a further delay of the

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judgment to which the plaintiff was rightfully entitled.” Id. at 623. The appellate court stated

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California courts follow the same rule, holding that following appeal “the award of
costs is immediately enforceable.” Krikorian Premiere Theatres, LLC v. Westminster Central,
LLC, 193 Cal. App. 4th 1075, 1083 (2011) (citing 9 Witkin, Cal. Procedure (5th ed. 2008)
Appeal, § 978, p. 1026)). An award of appellate costs “cannot be affected by any further
proceedings in the trial court.” Id.; see also First Nat. Bank of San Pedro v. Stansbury, 214 Cal.
190, 192 (1931) (“There is no interdependence between the judgment for costs of the former
appeal and any judgment which may subsequently be entered in the main case.”).
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that the district court could take up the taxability of the premium paid on the supersedeas bond

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following a determination of on the merits of the case. Id.

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The present case is distinguishable from Berthelsen. Whereas in Berthelsen the appellate

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court expressed its reluctance to award costs on appeal to the defendant under the particular

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circumstances of that case, here the Federal Circuit expressly granted costs on appeal to Hynix.

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Moreover, Berthelsen does not address the point discussed above, that a party’s entitlement to

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costs on appeal is not dependent upon the ultimate outcome of the case on remand. Accordingly,

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this court will not delay consideration of Hynix’s costs bills pending further proceedings.5 Cf.

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Record Club of America, 731 F. Supp. at 603 (“Since the Second Circuit Court concluded its

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opinion vacating this Court’s prior judgment with the words costs to defendant . . . RCOA

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cannot argue persuasively that taxing of costs by the district court under Fed. R. App. P. 39(e) is

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premature.”) (internal quotation marks omitted).

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C.

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Whether this Court May or Should Deny Hynix’s Costs Bills in their Entirety
As noted above, this court must determine whether Hynix has incurred costs that are

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taxable under subsection (e) and, if so, what those costs are. Rambus asks the court to conclude

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that any award of costs to Hynix would be inappropriate under the facts of this case. Rambus

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relies primarily upon cases addressing the standards for awarding costs in the trial court under

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Federal Rule of Civil Procedure 54(d). See, e.g., Champion Produce, Inc. v. Ruby Robinson Co.,

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342 F.3d 1016 (9th Cir. 2003); Association of Mexican-American Educators (“AMAE”) v. State

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Hynix’s right to costs on appeal would be affected were the United States Supreme
Court to reverse the Federal Circuit’s order. See Furman v. Cirrito, 782 F.2d 353, 355 (2d Cir.
1986) (“when the Supreme Court reverses a circuit court order, which included an award of costs
to the then successful appellee . . . [t]he award of costs by the circuit court must be vacated and
costs awarded to the now successful appellant for appeals on both the circuit and Supreme Court
levels, as well as for costs incurred in the district court.”). However, Rambus did not file a
petition for writ of certiorari. During oral argument, Rambus’s counsel suggested that while
Hynix’s writ petition is pending, or in the event that it is granted, the Supreme Court might
remand the unclean hands issue sua sponte. Trans. of 12/16/2011, 28:23-19. Counsel
acknowledged that such action on the part of the Supreme Court was “highly unlikely,” but
argued that because it was “not impossible,” this court should delay awarding appellate costs and
should maintain the status quo with respect to maintenance of the appellate bond and escrow
account. Id. The court is not persuaded that the “highly unlikely” possibility suggested by
Rambus warrants a delay in awarding Hynix appellate costs to which it is entitled.
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of California, 231 F.3d 572 (9th Cir. 2000). In Champion, the district court declined to award

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costs to the prevailing plaintiff on several grounds, including the fact that the plaintiff had

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recovered substantially less in damages than it had sought, and that two affirmative defenses had

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been successful. Champion, 342 F.3d at 1023. The appellate court held that “these reasons can

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support a discretionary decision to deny costs to a prevailing party in a contract action.” Id. In

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AMAE, the district court declined to award costs to the prevailing defendants on the grounds that

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the case involved issues of substantial public importance, there was a great economic disparity

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between the plaintiffs and the defendants, the issues in the case were close and difficult, and the

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plaintiffs’ case had some merit. AMAE, 231 F.3d at 592. The appellate court held that the

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district court did not abuse its discretion in declining to award costs. Id. at 593. It is unclear

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whether these standards are applicable to a district court’s award of costs on appeal under Rule

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39(e). Even if they are, the cited cases are so factually different from the present case as to offer

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very little guidance. For example, the AMAE action, which was brought by minority educators

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against the State of California, involved “issues of the gravest public importance,” and the action

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affected “tens of thousands of Californians and the state’s public school system as a whole.” Id.

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The only apparent commonalities between the cases cited by Rambus and the present case is that

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they involve difficult, close questions, and both sides have prevailed on some aspects of the case.

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These facts do not persuade this court to exercise its discretion (assuming it has such discretion)

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to deny Hynix any appellate costs.

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D.

Itemized Costs

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The fee for filing the notice of appeal is taxable. Fed. R. App. P. 39(e)(4). Hynix claims

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Fees of the Clerk

$455 in filing fees. Rambus does not dispute these costs.

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2.

Transcript Costs

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The fee for reporter’s transcripts is taxable, if the transcripts are needed to determine the

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appeal. Fed. R. App. P. 39(e)(2). Hynix initially claimed $68,867.97 in costs for transcripts

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needed to determine the appeal. Following meet and confer between the parties, Hynix realized

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that it had entered that figure on its costs bill in error; Hynix has reduced its claim for transcript
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costs to $30,611.55. This figure is supported by Hynix’s documentation, and Rambus does not

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contend otherwise. However, Rambus points out that only $6,177.60 of the claimed fees relate

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to transcripts from the unclean hands phase of the case. Because the remaining transcript costs

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relate to arguments upon which Hynix did not prevail on appeal, Rambus contends that Hynix

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should not be permitted to recover them. The court finds this argument persuasive. Cf. Shum v.

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Intel Corp., 629 F.3d 1360 (Fed. Cir. 2010) (discussing factors that may be considered in

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determining who the prevailing party is for purposes of awarding costs under Federal Rule of

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Civil Procedure 54 in a mixed judgment case). Accordingly, the court will tax transcript costs in

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the amount of $6,177.60.

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3.

Supersedeas Premiums and Other Security Costs

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The district court may tax “premiums paid for a supersedeas bond or other bond to

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preserve rights pending appeal.” Fed. R. App. P. 39(e)(3). Hynix claims in excess of $8 million

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in premiums paid for the supersedeas bond it acquired, and in excess of $8.3 million in other

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security expenses related to acquiring the bond.6 With respect to the other security costs, Hynix

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asserts that given the global economic climate when it attempted to obtain the original bond in

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2009, Hynix was required to provide standby letters of credit (or the equivalent) in an amount

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equal to the original bond. Hynix also was required to provide standby letters of credit (or the

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equivalent) for the full amount of the increased bond. Rambus contends that these other security

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expenses are not recoverable under Rule 39(e)(3), and that even the premium expenses

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themselves are excessive.

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The circuits are split as to whether security costs, as opposed to bond premiums, may be

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recovered under Rule 39(e)(3). A number of courts have held that such costs may be recovered.

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See, e.g., Republic Tobacco, 481 F.3d at 450 (permitting recovery of costs incurred in obtaining

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security in lieu of a supersedeas bond); Bose, 806 F.2d at 305 (permitting recovery of both bond

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premium and cost of letter of credit); Dana Corp. v. IPC Limited Partnership, No. 90-1443,

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1991 WL 5890, at *2-3 (Fed. Cir. Jan. 25, 1991) (permitting recovery of same). While this court

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These figures represent bond premiums and other security expenses reflected in Hynix’s
initial Bill of Costs, Supplemental Bill of Costs, and Second Supplemental Bill of Costs.
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finds the rationales underlying these decisions appealing, it is bound to follow Ninth Circuit

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authority. See Dana Corp., 1991 WL, at *2 n.2. In Johnson v. Pacific Lighting Land Co., 878

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F.2d 297 (9th Cir. 1989), the Ninth Circuit framed the question before it as follows: “This case

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of first impression involves the question of whether the costs of a letter of credit used to secure a

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supersedeas bond are properly taxable as costs of the appeal.” Id. at 297. It is clear from the

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opinion that, like Hynix, the appellant in Johnson was required to obtain a letter of credit as

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security in order to obtain the supersedeas bond necessary to stay execution of the judgment. Id.

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The appellant was successful on appeal; the appellate court reversed the judgment, remanded the

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case for trial, and ordered that appellate costs be taxed. Id. Nonetheless, the Ninth Circuit held

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that the costs of the letter of credit were not taxable under Rule 39(e)(3). Id. at 298. In noting

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that the First Circuit had permitted taxation of such costs in Bose Corp. v. Consumers Union of

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U.S., Inc., 806 F.2d 304 (1st Cir. 1986), the Ninth Circuit commented that: “[w]here a letter of

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credit has been used and the total cost has been no greater than a supersedeas bond without

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collateral, the charge for the letter of credit has been treated as the equivalent of premiums paid

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for the cost of a supersedeas bond.” Johnson, 878 F.2d at 298. The court distinguished Bose by

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stating that in the case before it “the costs paid for the letter of credit were in addition to the

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costs of the premiums paid for the supersedeas bonds.” Id. The court concluded that there

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simply “was no authorization in Rule 39 for such costs,” and that “[i]t was an abuse of discretion

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to allow them.” Id. In accordance with the holding in Johnson, Hynix's security expenses other

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than the bond premiums are not taxable.

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However, the bond premiums themselves fall squarely within Rule 39 and, therefore, are

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recoverable. Rambus contends that Hynix paid excessive rates for the supersedeas bond. In

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support of this contention, Rambus submits the declaration of E. Allen Jacobs, who has a Ph.D.

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in economics. Jacobs discusses in great detail the declarations of Yoo Ho Roh submitted in

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support of Hynix’s costs bills, and opines about numerous shortcomings in the manner in which

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Hynix obtained and maintained the supersedeas bond. Hynix relies upon the Roh declarations

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and the exhibits attached thereto to prove that it struck the best deal it could given the economy

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in 2009, when it obtained the initial bond, and its relatively weak bargaining position. See, e.g.,
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Second Suppl. Decl. of Yoo Ho Roh ¶¶ 4-8. Hynix was able to get better terms on the increased

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bond. Id. ¶ 13. Although the evidence is conflicting, the court is not persuaded that Hynix could

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have obtained the supersedeas bond on more favorable terms. It appears that Hynix was highly

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motivated to obtain the bond on the best terms possible, but that it was presented with a number

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of hurdles that were costly to overcome. Based upon this record, the court declines to deny or

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reduce Hynix’s recovery of the premium costs.

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Finally, Rambus requests that the court reduce any award of bond premiums to reflect the

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fact that Hynix prevailed only partially on appeal. As discussed above, the court finds Rambus’s

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“proportional success” argument persuasive with respect to Hynix’s transcript costs; those costs

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were dictated by Hynix’s choices as to the scope of its appeal and the necessity of certain

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transcripts. However, Hynix had no choice but to post the full amount of the supersedeas bond

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required by the court. Rambus has not cited, and this court has not found, any cases holding that

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bond premiums subject to taxation under Rule 39(e) should be reduced to reflect the prevailing

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party’s proportional success on appeal. Hynix has presented substantial evidence that the

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premiums were necessary and reasonable under the circumstances. Accordingly, the court will

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tax costs in the amount of the total bond premiums paid by Hynix through discharge of the bond.

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E.

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Continued Bond and Escrow
In light of the fact that the judgment has been vacated, Hynix requests that the court lift

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its obligations to maintain a supersedeas bond and to continue paying royalties into escrow.

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Rambus insists that the status quo should be maintained.

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This court’s order of May 14, 2009, staying execution of the judgment, provided as
follows:
This stay shall remain in effect until thirty days following the later of (1) remand
to the district court following completion of all proceedings in the United States
Supreme Court, if a petition for writ of certiorari is granted; (2) denial of any
petition for writ of certiorari to the United States Supreme Court; (3) expiration of
the time to file a petition for writ of certiorari if no such petition is filed; or (4)
until such time as otherwise ordered by the court.

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Order of May 14, 2009, at 5. The parties stipulated with respect to Hynix’s obligation to pay

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royalties into the escrow account:
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If the Final Judgment is reversed or vacated so as to affect the basis for the
Ongoing Royalty award, the funds in the Escrow Account, including interest
and/or profits therein, shall not be released to any party pending further
proceedings before this Court, but shall be released in accordance with any
further order by the Court. No funds in the Escrow Account shall be released
sooner than (1) thirty days following the later of remand to the district court
following completion of all proceedings in the United States Supreme Court, if a
petition for writ or [sic] certiorari is granted; (2) denial of any petition for writ of
certiorari to the United States Supreme Court; (3) expiration of the time to file a
petition for writ of certiorari if no such petition is filed; or (4) until such time as is
otherwise ordered by this court.
Stipulation and Order of November 24, 2009, at 4:8-13.
Rambus did not seek review in the Supreme Court and the deadline for it to do so has
expired. Hynix timely filed a petition for writ of certiorari seeking review of the Federal

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Circuit’s decisions with respect to equitable estoppel and claim construction. Rambus obtained

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an extension of time until December 30, 2011 to file a response to that petition. Accordingly, the

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conditions for expiration of the bond and the escrow account have not yet been met as a

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technical matter. However, the aspect of the appellate decision that led the Federal Circuit to

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vacate the judgment – the determination that the court did not apply the proper legal standard to

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the unclean hands defense – is, for all practical purposes, final.7 Under these circumstances,

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there does not appear to be any justification for requiring Hynix to continue to maintain the

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bond. The purpose of the bond was to secure payment of a now-vacated judgment. In addition,

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the record indicates that Hynix is in a much better position financially than it was at the time the

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court required the bond. The evidence suggests that Hynix would be able to satisfy a future

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judgment against it were Rambus to prevail on remand. Hynix claims that maintenance of the

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bond is costing it in excess of $1.2 million per quarter. Accordingly, the court lifts Hynix’s

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obligation to maintain a supersedeas bond as it implicitly has the power to do under the order of

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May 14, 2009. Order of May 14, 2009 at 5:10.

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The escrow account presents a somewhat different situation. The record is not clear as to
the precise amount of the expense incurred in maintaining the account, but the court presumes

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As discussed in note 5, above, Rambus argues that it is “not impossible” that the
Supreme Court could remand the unclean hands issue sua sponte. This court declines to base its
determination as to the necessity of a continued bond upon this remote possibility.
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that it is relatively minor. Rambus yet may prevail on the merits, in which case the existence of

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the escrow account would simplify greatly the calculation and transfer of royalties due. Hynix

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stipulated to maintaining the escrow account pending the satisfaction of certain conditions,

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which have not yet occurred, and that "[i]f the Final Judgment is reversed or vacated so as to

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affect the basis for the ongoing award, the funds in the Escrow Account . . .shall not be released

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to any party pending further order by this Court, but shall be released in accordance with any

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further order by the Court." Stipulation and Order of November 24, 2009, at 4:8-13 (emphasis

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added). Accordingly, the court declines to lift Hynix’s obligation to pay the specified royalties

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into the escrow account at this time.

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III. ORDER

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Good cause therefor appearing, in is hereby ordered that:

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(1)

costs are taxed against Rambus and in favor of Hynix in the amount of $455 in
filing fees; $6,177.60 in transcript fees; and in the amount of total bond
premiums paid by Hynix through the date of discharge of the bond, which shall be
as soon as is practicable following this order. Hynix shall file a supplement to its
costs bills indicating the final amount of bond premiums;

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(2)

Hynix’s obligation to maintain a supersedeas bond is released; and

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(3)

Hynix’s obligation to make continuing royalty payments into the escrow account
is not lifted at this time.

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DATED: January 11, 2012

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RONALD M. WHYTE
United States District Judge

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