United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MICRON TECHNOLOGY, INC., 

Plaintiff/Counterclaim Defendant-Appellee, 

AND

MICRON ELECTRONICS, INC. 

AND MICRON SEMICONDUCTOR PRODUCTS, INC., 

Counterclaim Defendants-Appellees, 

v. 

RAMBUS INC., 

Defendant/Counterclaimant-Appellant. 

__________________________ 

2009-1263 

__________________________ 

Appeal from the United States District Court for the 

District of Delaware in case no. 00-CV-792, Judge Sue L. 

Robinson. 

__________________________ 

Decided: May 13, 2011 

__________________________ 

MATTHEW D. POWERS, Weil, Gotshal & Manges LLP, 

of Redwood Shores, California, argued for plaintiff/counterclaim defendant-appellees and counterclaim 

defendants appellees. With him on the brief were JARED 

BOBROW, JESSICA L. DAVIS, SVEN RAZ; and LISA R. ESKOW, 

of Austin, Texas. 

 
MICRON TECHNOLOGY v. RAMBUS 2

CARTER G. PHILLIPS, Sidley Austin LLP, of Washington, DC, argued for defendant/counterclaimant-appellant. 

With him on the brief were ROLLIN A. RANSOM, ERIC A.

SHUMSKY, ERIC M. SOLOVY, RACHEL H. TOWNSEND, RYAN 

C. MORRIS. Of counsel was PETER S. CHOI. Of counsel on 

the brief were RICHARD G. TARANTO, Farr & Taranto, of 

Washington, DC; and GREGORY P. STONE, PAUL J.

WATFORD, and FRED A. ROWLEY, JR., Munger, Tolles & 

Olson LLP, of Los Angeles, California; and MICHAEL J.

SCHAENGOLD, Patton Boggs LLP, of Washington, DC. 

__________________________ 

Before NEWMAN, LOURIE, BRYSON, GAJARSA and LINN, 

Circuit Judges. 

 Opinion for the court filed by Circuit Judge LINN, with 

whom NEWMAN, LOURIE, and BRYSON, Circuit Judges, 

join. 

Concurring-in-part, dissenting-in-part opinion filed by 

Circuit Judge GAJARSA. 

LINN, Circuit Judge. 

Rambus Inc. (“Rambus”) appeals the decision of the 

United States District Court for the District of Delaware 

holding that the twelve Rambus patents asserted against 

Micron Technology, Inc., Micron Electronics, Inc., and 

Micron Semiconductor Products, Inc. (collectively, “Micron”) are unenforceable due to Rambus’s spoliation of 

documents. Micron Tech., Inc. v. Rambus Inc., 255 F.R.D. 

135 (D.Del. 2009) (“Decision”). Rambus also appeals the 

district court’s order piercing Rambus’s attorney-client 

privilege on the basis of the crime-fraud exception, Micron 

Tech, Inc. v. Rambus Inc., No. 00-792 (D. Del. Feb. 10, 

2006) (“Privilege”), and denial of Rambus’s motion to 

transfer to the Northern District of California, Micron 
3 MICRON TECHNOLOGY v. RAMBUS

Tech, Inc. v. Rambus Inc., No. 00-792 (D. Del. June 14, 

2007) (“Transfer”). For the reasons discussed below, this 

court affirms-in-part, vacates-in-part, and remands. 

I. BACKGROUND

This case and the companion case of Hynix Semiconductor Inc. v. Rambus Inc., Nos. 2009-1299, -1347 (Fed. 

Cir. May 13, 2011) (“Hynix II”) (decided contemporaneously herewith), concern a group of U.S. patents issued to 

Rambus covering various aspects of dynamic random 

access memory (“DRAM”). Although semiconductor 

memory chips have been used in computers for decades, 

advances in other aspects of computer technology by the 

early 1990s created a bottleneck in the ability of computers to process growing amounts of data through the 

memory. At least two related methods were discovered of 

building memory chips (and the interfaces between memory chips and computer processors) in a way that eliminated or minimized this bottleneck. The founders of 

Rambus, Mike Farmwald and Mark Horowitz, developed 

one of these methods, which Rambus later commercialized 

as Rambus DRAM, or RDRAM. The original Rambus 

applications claim the inventions included in RDRAM. 

Rambus believed that Farmwald’s and Horowitz’s invention was broad enough to encompass synchronous dynamic random access memory, or SDRAM, the other type 

of new memory technology. 

Farmwald and Horowitz did not initially file patent 

applications with claims explicitly directed at SDRAM. 

However, after Rambus’s tenure and resignation as a 

member of the standard setting Joint Electron Devices 

Engineering Council (“JEDEC”), Rambus amended its 

claims to cover the SDRAM technology adopted as the 

standard by JEDEC. See generally Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081 (Fed. Cir. 2003) (“In-
MICRON TECHNOLOGY v. RAMBUS 4

fineon”) (discussing Rambus’s participation in JEDEC). 

The patents at issue here and their enforceability against 

SDRAM products have been the subject of numerous suits 

in district courts, the Federal Trade Commission, the 

International Trade Commission, and this court. However, this court has never finally and definitively resolved 

the question of whether Rambus engaged in spoliation in 

connection with this litigation. 

The present appeal began when Micron filed a declaratory judgment action against Rambus, asserting that 

Micron’s production of SDRAM products do not infringe 

Rambus’s patents and that Rambus’s patents are invalid, 

unenforceable, and violate antitrust laws. The district 

court separated the case into three proceedings: (1) unenforceability due to spoliation, (2) invalidity, and (3) infringement. The court held a bench trial on the spoliation 

issue, and concluded that the patents in suit were unenforceable against Micron because Rambus had engaged in 

spoliation by intentionally destroying relevant, discoverable documents in derogation of a duty to preserve them. 

The district court thus did not reach the validity or infringement issues. On appeal, Rambus argues that the 

trial court clearly erred in determining that Rambus 

spoliated documents, acted in bad faith, and prejudiced 

Micron. Rambus also argues that the district court 

abused its discretion by dismissing the case as a sanction 

for the spoliation. Rambus also puts forth two procedural 

arguments: (1) that the district court erred by requiring 

the production of documents allegedly subject to attorneyclient privilege; and (2) that the district court erred by 

denying Rambus’s motion to transfer the litigation to the 

Northern District of California. 

The record is lengthy but uncomplicated. In 1990, 

Farmwald and Horowitz filed their first patent application directed to improving the speed with which computer 
5 MICRON TECHNOLOGY v. RAMBUS

memory can function. Rambus was founded the same 

year to commercialize this invention. Rambus developed 

its proprietary RDRAM technology, and licensed chip 

makers to manufacture memory chips incorporating this 

technology. Around this time, JEDEC was working to 

develop industry standard specifications for memory chips 

and the interfaces between memory chips and computer 

processor chips, eventually adopting its first SDRAM 

standard in 1993. In approximately 1992, Rambus 

learned of SDRAM and came to believe that the Farmwald and Horowitz invention encompassed SDRAM. 

Rambus continued prosecuting multiple patent applications in the Farmwald/Horowitz family, intending to 

obtain issued patent claims that covered SDRAM. Rambus thereafter pursued a two-prong business strategy: it 

licensed chip makers to manufacture chips that complied 

with Rambus’s proprietary RDRAM standards, and 

prepared to demand license fees and to potentially bring 

infringement suits against those manufacturers who 

insisted on adopting the competing SDRAM standard 

instead. 

The first prong of Rambus’s strategy went smoothly 

for some time. In 1996, Intel licensed the RDRAM technology and adopted it as the memory interface technology 

for its next generation microprocessors. Rambus negotiated licenses with eleven DRAM manufacturers to produce RDRAM-compliant chips for Intel’s use. By the fall 

of 1999, though, these manufacturers had failed to deliver 

the promised manufacturing capacity, and Intel was 

therefore beginning to rethink its adoption of RDRAM. 

Rambus contends that only after RDRAM failed to become a market leader in late 1999 did it to put into action 

the second prong of its business strategy, to seek licensing 

revenue (and litigation damages) from those manufacturers adopting SDRAM. 
MICRON TECHNOLOGY v. RAMBUS 6

Micron disagrees, arguing that Rambus was planning 

litigation against SDRAM manufacturers at the same 

time it was seeking to license RDRAM manufacturers. 

In 1997, Rambus hired Joel Karp as its vice-president 

in charge of intellectual property, and on January 7, 1998, 

Karp was directed by Rambus’s CEO Tate to develop a 

strategy for licensing and litigation. Karp then met with 

several transactional attorneys at Cooley Godward. 

Because they were not litigation specialists, they referred 

Karp to Dan Johnson, a litigation partner at Cooley 

Godward. Karp met Johnson on February 12, 1998. At 

the meeting with Johnson, Karp discussed licensing 

accused infringers, mentioning royalty rates that were so 

high that Johnson said “you’re not going to have a licensing program, you’re going to have a lawsuit on your 

hands.” Karp said Rambus needed to get “battle-ready,” 

by which he meant that Rambus needed to be ready for 

litigation. Johnson also advised putting into place a 

document-retention policy. In March 1998, Karp presented his proposal for a licensing and litigation strategy 

to the Rambus board of directors. He proposed a 5% 

royalty on SDRAM, a rate within the range that had 

prompted Johnson to say that litigation would inevitably 

follow. In the course of presenting the litigation strategy, 

Karp recommended implementing a document-retention 

policy. 

In August or September 1998, Rambus hired outside 

counsel to perform licensing and patent prosecution work 

as well as to begin preparing for litigation against 

SDRAM manufacturers. In October 1998, Karp advised 

Rambus executives that he was planning to assert Rambus’s patents against SDRAM manufacturers in the first 

quarter of 2000, explaining that there were good business 

reasons for the delay in bringing suit, particularly Rambus’s interest in getting licensing revenues from RDRAM 
7 MICRON TECHNOLOGY v. RAMBUS

manufacturers, who would be the same parties it would 

seek to license for the production of SDRAM. In November 1998, Rambus executives held an offsite strategy 

meeting. The meeting notes show that Rambus planned 

to eventually assert its patents against SDRAM, even if 

the RDRAM adoption strategy succeeded. In approximately December 1998, Karp drafted a memo describing a 

possible “nuclear winter” scenario under which Intel 

moved away from RDRAM. The memo outlined plans for 

suing Intel and SDRAM manufacturers, saying that “by 

the time we do this, the proper litigants will be obvious.” 

The memo also noted that infringement claim charts for 

Micron devices had already been completed by December 

1998. On April 15, 1999, Karp met with Rambus’s outside 

counsel at Fenwick & West to “discuss [Rambus’s] patent 

portfolio and potential litigation.” 

Thereafter, in 1998, Rambus also began implementing 

the portion of Karp’s litigation strategy that required the 

institution of a document-retention policy. In the second 

quarter of 1998, Rambus established “Top Level Goals” 

for “IP Litigation Activity.” These goals included 

“[p]ropos[ing] [a] policy for document retention.” In the 

third quarter of 1998, Rambus established “Key Goals” for 

“IP Litigation Activity.” These goals included 

“[i]mplement[ing] [a] document retention action plan.” 

On July 22, 1998, Karp presented the finished document 

retention policy to Rambus employees. The slides used 

for this presentation were titled “BEFORE LITIGATION: 

A Document Retention/Destruction Policy.” The policy 

explicitly stated that destruction of relevant and discoverable evidence did not need to stop until the commencement of litigation. Despite the policy’s stated goal of 

destroying all documents once they were old enough, Karp 

instructed employees to look for helpful documents to 
MICRON TECHNOLOGY v. RAMBUS 8

keep, including documents that would “help establish 

conception and prove that [Rambus had] IP.” 

The document destruction policy extended to the destruction of backups of Rambus’s internal email. On 

March 16, 1998, an internal Rambus email discussed the 

“growing worry” that email backup tapes were “discoverable information,” and discussions began regarding how 

long to keep these backup tapes. On May 14, 1998, Rambus implemented a new policy of keeping email backup 

tapes for only 3 months. Karp said that keeping tapes for 

any longer period of time was shot down by “Rambus’[s] 

litigation counsel.” Consistent with this policy, in July 

1998, Rambus magnetically erased all but 1 of the 1,269 

tapes storing its email backups from the previous several 

years. The one exempted was a document that helped 

Rambus establish a priority date, and, as discussed below, 

Rambus went through great lengths to restore that document from the backup tapes. 

In addition to destroying the email backup tapes, 

Rambus began destroying paper documents in accordance 

with its newly-adopted document-retention policy. On 

September 3-4, 1998, Rambus held its first “shred day” to 

implement the policy. In April 1999, Karp instructed 

Lester Vincent, Rambus’s outside patent prosecution 

counsel at Blakeley Sokoloff, to implement the Rambus 

document-retention policy with respect to Rambus documents in Vincent’s possession. Vincent complied, discarding material from his patent prosecution files. Vincent 

continued discarding material through at least July 1999. 

He discarded draft patent applications, draft patent 

claims, draft patent amendments, attorney notes, and 

correspondence with Rambus. 

In June 1999, the first patent in suit issued. On June 

24, 1999, Karp was instructed by the Rambus CEO to 
9 MICRON TECHNOLOGY v. RAMBUS

“hammer out . . . our strategy for the battle with the first 

target that we will launch in October [1999].” In June 27, 

1999, Rambus established its “IP 3Q ’99 Goals,” including 

goals for “Licensing/Litigation Readiness.” These goals 

included “[p]repar[ing] litigation strategy against 1 of the 

3 manufacturers,” being “[r]eady for litigation with 30 

days notice,” and “[o]rganiz[ing] [the] 1999 shredding 

party at Rambus.” Planning for litigation continued 

when, on July 8, 1999, Fenwick & West prepared a timeline for the proposed patent infringement suits showing 

that Rambus planned to file a patent infringement complaint on October 1, 1999. 

On August 26, 1999, Rambus held the “shredding 

party” it had planned as part of its third-quarter intellectual property litigation readiness goals. Rambus destroyed between 9,000 and 18,000 pounds of documents in 

300 boxes. 

Litigation did not ultimately start as planned on October 1, 1999. Still, conditions eventually deteriorated to 

the point that Rambus felt it could no longer delay the 

litigation it had started planning in early 1998. As noted 

above, in the fall of 1999, several RDRAM manufacturers 

failed to deliver on their promised production of RDRAM 

chips, causing Intel to rethink its commitment to 

RDRAM. On September 24, 1999, Karp spoke to Rambus 

executives, telling them that the industry did not respect 

Rambus’s intellectual property and that Rambus would 

“have to ultimately pursue remedies in court.” Karp 

asked the board to approve his licensing and litigation 

strategy, and the board did so. In October 1999, Rambus 

approached Hitachi, seeking license payments for Hitachi’s manufacture of SDRAM. In November 1999, 

negotiations with Hitachi broke down. Rambus instituted 

a litigation hold in December 1999, and Rambus sued 

Hitachi on January 18, 2000. The suit against Hitachi 
MICRON TECHNOLOGY v. RAMBUS 10

was settled on June 22, 2000. In the meantime, Rambus 

negotiated SDRAM licenses with Toshiba, Oki, and NEC. 

Rambus continued to litigate against the members of the 

chip-making industry by bringing suit against Infineon on 

August 8, 2000. Infineon, 155 F. Supp. 2d at 671. Before 

that litigation began, Rambus’s in-house counsel reminded Rambus executives on July 17, 2000, to continue 

destroying drafts and other materials related to license 

negotiations. 

On August 18, 2000, Rambus approached Micron 

about the possibility of Micron taking a license for its 

SDRAM production. Micron filed a declaratory judgment 

action against Rambus in the District of Delaware on 

August 28, 2000, asserting invalidity, non-infringement, 

and unenforceability. The following day, Hynix Semiconductor filed a similar declaratory judgment suit against 

Rambus in the Northern District of California. Hynix 

Semiconductor, Inc. v. Rambus, Inc., 591 F. Supp. 2d 1038 

(N.D. Cal. 2006) (“Hynix I”). The issue of whether Rambus had destroyed relevant documents after it had a duty 

to begin preserving documents was litigated in both suits. 

The Northern District of California reached the issue 

first. Following a bench trial, that court ruled in January 

2006 that “Rambus did not actively contemplate litigation 

or believe litigation against any particular DRAM manufacturer to be necessary or wise before its negotiation with 

Hitachi failed, namely in [November] 1999.” Id. at 1064. 

The Northern District of California ruled that this made 

Rambus’s adoption of its document-retention policy in 

mid-1998 a permissible business decision, and the destruction of documents pursuant to that policy did not 

constitute spoliation. Id. The appeal of that decision is 

the subject of the companion Hynix case decided herewith. 

Hynix II, Nos. 2009-1299, -1347. 
11 MICRON TECHNOLOGY v. RAMBUS

Meanwhile, in the Micron litigation in the District of 

Delaware, Micron sought access to communications 

between Rambus and its attorneys relating to the adoption of Rambus’s document-retention policy. Courts in 

Hynix and Infineon had previously required production of 

these documents, and in February 2006, the District of 

Delaware agreed after finding that the adoption of the 

policy on the advice of counsel raised the likelihood that 

Delaware and California criminal statutes prohibiting 

destruction of evidence had been violated. The court held 

that the attorney-client privilege could be breached under 

the crime-fraud exception because Rambus and its counsel had possibly committed a crime. Following this decision and the favorable ruling of the Northern District of 

California on the spoliation issue, Rambus sought on 

February 14, 2006, to have the Micron case transferred to 

the Northern District of California. The District of Delaware denied the motion to transfer. 

In November 2007, the District of Delaware held a 

bench trial on the unclean-hands issue asserted by Micron. Stopping short of reaching the unclean-hands claim, 

the district court found that Rambus had engaged in 

spoliation; the court accordingly entered judgment in 

Micron’s favor as a spoliation sanction. The court found 

that litigation was reasonably foreseeable to Rambus “no 

later than December 1998, when Karp had articulated a 

time frame and a motive for implementation of the Rambus litigation strategy.” The district court thus ruled that 

documents destroyed after December 1998 were intentionally destroyed in bad faith. The district court concluded that the only reasonable sanction for the 

intentional destruction of documents was to hold Rambus’s patents in suit unenforceable against Micron. Rambus timely appealed. 
MICRON TECHNOLOGY v. RAMBUS 12

II. DISCUSSION

A. Spoliation 

As the Supreme Court has noted, “[d]ocument retention policies, which are created in part to keep certain 

information from getting into the hands of others, including the Government, are common in business. It is, of 

course, not wrongful for a manager to instruct his employees to comply with a valid document retention policy 

under ordinary circumstances.” Arthur Andersen LLP v. 

United States, 544 U.S. 696, 704 (2005) (internal citation 

and quotation marks omitted). Thus, “a party can only be 

sanctioned for destroying evidence if it had a duty to 

preserve it.” Zubulake v. UBS Warburg LLC, 220 F.R.D. 

212, 216 (S.D.N.Y. 2003). The duty to preserve evidence 

begins when litigation is “pending or reasonably foreseeable.” Silvestri v. General Motors Corp., 271 F.3d 583, 

590 (4th Cir. 2001). See also West v. Goodyear Tire & 

Rubber Co., 167 F.3d 776, 779 (2d Cir. 1999) (applying the 

same standard). Thus, “[s]poliation refers to the destruction or material alteration of evidence or to the failure to 

preserve property for another’s use as evidence in pending 

or reasonably foreseeable litigation.” Silvestri, 271 F.3d 

at 590. This is an objective standard, asking not whether 

the party in fact reasonably foresaw litigation, but 

whether a reasonable party in the same factual circumstances would have reasonably foreseen litigation. 

When litigation is “reasonably foreseeable” is a flexible fact-specific standard that allows a district court to 

exercise the discretion necessary to confront the myriad 

factual situations inherent in the spoliation inquiry. 

Fujitsu Ltd. v. Fed. Express Corp., 247 F.3d 423, 436 (2d 

Cir. 2001). This standard does not trigger the duty to 

preserve documents from the mere existence of a potential 

claim or the distant possibility of litigation. See, e.g., 
13 MICRON TECHNOLOGY v. RAMBUS

Trask-Morton v. Motel 6 Operating L.P., 534 F.3d 672, 

681-82 (7th Cir. 2008). However, it is not so inflexible as 

to require that litigation be “imminent, or probable without significant contingencies,” as Rambus suggests. Reply 

Br. of Rambus at 4. Rambus’s proposed gloss on the 

“reasonably foreseeable” standard comes from an overly 

generous reading of several cases. See Burlington N. & 

Santa Fe Ry. Co. v. Grant, 505 F.3d 1013, 1032 (10th Cir. 

2007) (noting that “[a] spoliation sanction is proper where 

(1) a party has a duty to preserve evidence because it 

knew, or should have known, that litigation was imminent, and (2) the adverse party was prejudiced by the 

destruction of the evidence” (emphasis added); TraskMorton, 534 F.3d at 681 (citing Burlington for the proposition that “courts have found a spoliation sanction to be 

proper only where a party has a duty to preserve evidence 

because it knew, or should known, that litigation was 

imminent,” but holding that “Motel 6 had no reason to 

suspect litigation until—at the earliest—Morton’s attorney sent Motel 6 a demand letter” after the alleged spoliation (emphases added)). Burlington merely noted that 

imminent litigation was sufficient, not that it was necessary for spoliation, and on the easy facts of Trask-Morton, 

it was decided that the alleged spoliator did not even 

“suspect” litigation. This court declines to sully the 

flexible reasonably foreseeable standard with the restrictive gloss proposed by Rambus in light of the weight of 

contrary authority and the unnecessary generosity that 

such a gloss would extend to alleged spoliators. See

Silvestri, 271 F.3d at 591; West, 167 F.3d at 779 (“Spoliation is the destruction or significant alteration of evidence, or the failure to preserve property for another’s use 

as evidence in pending or reasonably foreseeable litigation.”); Kronisch v. United States, 150 F.3d 112, 126 (2d 

Cir. 1998) (“This obligation to preserve evidence arises 

when the party has notice that the evidence is relevant to 
MICRON TECHNOLOGY v. RAMBUS 14

litigation . . . as for example when a party should have 

known that the evidence may be relevant to future litigation.”); MOSAID Techs. Inc. v. Samsung Elecs. Co., 348 F. 

Supp. 2d 332, 336 (D.N.J. 2004) (noting that a litigant “is 

under a duty to preserve what it knows, or reasonably 

should know, will likely be requested in reasonably foreseeable litigation”); Scott v. IBM Corp., 196 F.R.D. 233, 

249 (D.N.J. 2000) (same). See also United States v. Rockwell Int’l, 897 F.2d 1255, 1266 (3rd Cir. 1990) (holding 

that for attorney work product to be shielded by the work 

product privilege, “[l]itigation need not be imminent . . . 

as long as the primary motivating purpose behind the 

creation of the document was to aid in possible future 

litigation.” (internal citations omitted)). Moreover, it 

would make little sense to enjoin document destruction 

only when the party clears all the hurdles on the litigation track, but endorse it when the party begins the race 

under the reasonable expectation of clearing those same 

hurdles. Thus, the proper standard for determining when 

the duty to preserve documents attaches is the flexible 

one of reasonably foreseeable litigation, without any 

additional gloss. 

After carefully reviewing the record, the district court 

determined that “litigation was reasonably foreseeable no 

later than December 1998, when Karp had articulated a 

time frame and a motive for implementation of the Rambus litigation strategy.” Decision, 255 F.R.D. at 150. In 

coming to this conclusion, the district court applied the 

correct standard, noting that “[a] duty to preserve evidence arises when . . . . litigation is pending or imminent, 

or when there is a reasonable belief that litigation is 

foreseeable.” Id. at 148. 

This court reviews the district court’s factual findings, 

such as the date at which litigation was reasonably foreseeable, for clear error. Citizens Fed. Bank v. United 
15 MICRON TECHNOLOGY v. RAMBUS

States, 474 F.3d 1314, 1321 (Fed. Cir. 2007); Port Auth. of 

N.Y. & N.J. v. Arcadian Corp., 189 F.3d 305, 315 (3d Cir. 

1999); Brewer v. Quaker State Oil Ref. Corp., 72 F.3d 326, 

334 (3d Cir. 1995). Rambus argues that when litigation 

was reasonably foreseeable is a “mixed question of law 

and fact reviewed de novo.” However, the cases it cites do 

not support such a standard in this context. For example, 

Traveler’s Indemnity v. Ewing, Cole, Erdman & Eubank, 

711 F.2d 14 (3d Cir. 1983), addressed the “issue of 

whether the level of care exercised by the defendant 

measured up to the standard expected of reasonably 

prudent architects” as a mixed question of law and fact. 

Id. at 17. However, that question is more about whether 

a duty is breached than when the duty commenced. 

Similarly inapposite, Pell v. E.I. DuPont de Nemours, 539 

F.3d 292 (3d Cir. 2008), concluded that “the District 

Court’s determination that 1972 is the appropriate adjusted service date is a mixed conclusion of law and fact,” 

and that this question is broken down into its “components and [the appeals court applies] the appropriate 

standard of review to each component.” Id. at 305. Pell

does not specify whether the date at which the duty arises 

is a law component or a fact component, and thus does not 

persuade this court to review the issue de novo. In a 

variety of contexts, foreseeability of an event is a traditional issue of fact, and is reviewed with deference to the 

district court. Cates v. Dillard Dep’t Stores, Inc., 624 F.3d 

695, 697 (5th Cir. 2010) (noting that whether a risk of 

harm was reasonably foreseeable is a question of fact); 

Citizens Fed. Bank v. United States, 474 F.3d 1314, 1321 

(Fed. Cir. 2007) (noting that “[f]oreseeability is a question 

of fact reviewed for clear error” in the damages context); 

United States v. Cover, 199 F.3d 1270, 1274 (11th Cir. 

2000) (reasonable foreseeability of a co-conspirators 

actions is a question of fact). This court likewise applies a 

clear error standard of review. 
MICRON TECHNOLOGY v. RAMBUS 16

The district court found that Rambus destroyed relevant, discoverable documents beginning in July 1998, 

with the first major shred day occurring in September 

1998. The court found that the destruction continued at 

least through November 1999, with another major shred 

day occurring in August 1999. In addition, the district 

court found that Rambus ordered its outside patent 

prosecution counsel to purge his files relating to the 

prosecution of the prospective patents in suit in April 

1999. There is ample evidence to support all these findings, and they are not seriously disputed even by Rambus. 

The exact date at which litigation was reasonably foreseeable is not critical to this decision; the real question is 

binary: was litigation reasonably foreseeable before the 

second shred day or after? Therefore, the question this 

court must answer is whether the district court clearly 

erred when it determined that, at some time before the 

second shred day in August of 1999, litigation was reasonably foreseeable. This court cannot conclude that the 

district court clearly erred for at least the following five 

reasons. 

First, it is certainly true that most document retention policies are adopted with benign business purposes, 

reflecting the fact that “litigation is an ever-present 

possibility in American life.” Nat’l Union Fire Ins. v. 

Murray Sheet Metal Co., 967 F.2d 980, 984 (4th Cir. 

1992). In addition, there is the innocent purpose of simply limiting the volume of a party’s files and retaining 

only that which is of continuing value. One might call it 

the “good housekeeping” purpose. Thus, where a party 

has a long-standing policy of destruction of documents on 

a regular schedule, with that policy motivated by general 

business needs, which may include a general concern for 

the possibility of litigation, destruction that occurs in line 

with the policy is relatively unlikely to be seen as spolia-
17 MICRON TECHNOLOGY v. RAMBUS

tion. Here, however, it was not clear error for the district 

court to conclude that the raison d’être for Rambus’s 

document retention policy was to further Rambus’s litigation strategy by frustrating the fact-finding efforts of 

parties adverse to Rambus. This is a natural reading of 

getting “[b]attle ready.” The preparation of the document 

retention policy was one of Rambus’s “IP Litigation Activity” goals in the second and third quarters of 1998. When 

the finished document retention policy was presented to 

Rambus employees, the presentation slides used were 

titled “BEFORE LITIGATION: A Document Retention/Destruction Policy.” The policy explicitly stated that 

destruction of relevant and discoverable evidence did not 

need to stop until the actual commencement of litigation. 

Despite the policy’s stated goal of destroying all documents once they were old enough, employees were instructed to look for helpful documents to keep, including 

documents that would “help establish conception and 

prove that [Rambus had] IP,” and they did keep these 

documents. Moreover, on March 16, 1998, an internal 

Rambus e-mail noted a “growing worry” that email 

backup tapes were “discoverable information,” and discussions began regarding how long to keep these backup 

tapes. On May 14, 1998, Rambus implemented a new 

policy of keeping email backup tapes for only 3 months. 

Karp said that keeping tapes for any longer period of time 

was shot down by “Rambus’[s] litigation counsel.” Karp 

also noted that if anyone had questions about the document retention policy, they could contact him, but that he 

“would prefer to discuss [the] issue face to face,” and that 

if they did send e-mails, to “keep them brief, and keep the 

distribution narrow.” Shortly after the email backup 

destruction policy was instituted, all of Rambus’s old 

backup tapes were destroyed. Taken together, the implementation of a document retention policy as an important component of a litigation strategy makes it more 
MICRON TECHNOLOGY v. RAMBUS 18

likely that litigation was reasonably foreseeable Cf.

United States v. Adlman, 134 F.3d 1194, 1203 (2d Cir. 

1998) (adopting a test for work product immunity where a 

document is prepared in anticipation of litigation where 

the document “can fairly be said to have been prepared or 

obtained because of the prospect of litigation”) (emphasis 

added) (citing 8 Charles Alan Wright, Arthur R. Miller, 

and Richard L. Marcus, Federal Practice and Procedure § 

2024, at 343 (1994)). 

Second, Rambus was on notice of potentially infringing activities by particular manufacturers. Once the 

patent issued, the gun was loaded; when the targets were 

acquired, it was cocked; all that was left was to pull the 

trigger by filing a complaint. While it may not be enough 

to have a target in sight that the patentee believes may 

infringe, the knowledge of likely infringing activity by 

particular parties makes litigation more objectively likely 

to occur because the patentee is then more likely to bring 

suit. Here, numerous internal documents manifest Rambus’s plan “to play [its] IP card with the DRAM companies” against SDRAM products, either through a patent 

infringement or a breach of contract suit. See Decision, 

255 F.R.D. at 138-48 (noting that even in the early 1990s, 

Rambus was already “concerned that DRAM manufacturers were using Rambus’[s] technology to develop their own 

competing DRAMs,” and detailing Rambus’s campaign to 

capitalize on non-compliant products’ infringement); id. at 

144 (“The [Nuclear Winter Memorandum] indicated 

specifically that Rambus already had claim charts showing that Micron infringed one of the Rambus patents.”). 

See also Br. of Rambus’s at 34 (“Rambus therefore feared 

that demanding licenses on non-compatible products (let 

alone initiating litigation) would risk undermining its 

relationships with the very DRAM manufacturers its 

business strategy depended upon.”). In addition, the bulk 
19 MICRON TECHNOLOGY v. RAMBUS

of the discussions between CEO Tate, Karp, and Rambus’s attorneys related to SDRAM and Rambus’s licensing 

(as Rambus argues) or litigation (as Micron argues) plans. 

Either way, Rambus was on notice of activities it believed 

were infringing. Cf. Schmid v. Milwaukee Elec. Tool 

Corp., 13 F.3d 76, 81 (3d Cir. 1994) (overturning a district 

court spoliation sanction in part because the plaintiff’s 

expert’s destruction of evidence occurred when “no suit 

had been filed and Schmid did not know whether he had a 

basis for instituting suit.”). Indeed, Rambus was more 

than on notice because, by its own admission, it actively 

broadened its claims to cover JEDEC standard-compliant 

products, and, according to the testimony of CEO Tate, it 

knew that those products would infringe its claims. 

Third, Rambus took several steps in furtherance of 

litigation prior to its second shredding party on August 

26, 1999. Karp had already concluded that Rambus would 

“need to litigate against someone to establish [a] royalty 

rate and have [the] court declare [the Rambus] patent[s] 

valid,” had prioritized defendants and forums, had created claim charts and determined an expected timeline 

for litigation that it would “launch in October [1999],” 

and had as its goal to “be ready for litigation with 30 days 

notice” “against 1 of the 3 manufacturers” by the third 

quarter of 1999. On June 24, 1999, Karp was instructed 

by CEO Tate to “hammer out . . . our strategy for the 

battle with the first target that we will launch in October 

[1999].” The first steps toward this litigation were spelled 

out on June 27, 1999, when Rambus established “IP 3Q 

’99 Goals,” including goals for “Licensing/Litigation 

Readiness.” These goals included “[p]repar[ing] litigation 

strategy against 1 of the 3 manufacturers,” being “[r]eady 

for litigation with 30 days notice,” and “[o]rganiz[ing] 

[the] 1999 shredding party at Rambus.” Planning for 

litigation continued when, on July 8, 1999, Rambus’s 
MICRON TECHNOLOGY v. RAMBUS 20

outside litigation counsel, Fenwick & West, prepared a 

timeline for the proposed patent infringement suits showing that Rambus planned to file complaints on October 1, 

1999. Indeed, the second shredding party was itself part 

of Rambus’s third-quarter intellectual property litigation 

readiness goals. 

Rambus strongly argues that the steps it did not yet 

take in furtherance of litigation, i.e. the contingencies, 

compel a finding that litigation was not reasonably foreseeable. Rambus cites the contingencies accepted by 

Judge Whyte in the companion Hynix case as precluding 

Rambus from reasonably foreseeing litigation: 

(1) the direct RDRAM ramp had to be sufficiently developed so as not to jeopardize 

RDRAM production; (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 noncompatible products had to be reverse engineered and claim charts made showing 

coverage of the actual products; (5) Rambus’s board had to approve commencement 

of negotiations with a DRAM manufacturer; and (6) the targeted DRAM manufacturer had to reject Rambus’s licensing 

terms. 

Hynix, 591 F. Supp. 2d at 1062. It is of course true that 

had these contingencies been cleared, litigation would 

have been more foreseeable. However, it was not clear 

error to conclude that overcoming the contingencies was 

reasonably foreseeable. For example, Rambus makes 

much of the inadvisability of jeopardizing its relationship 

with the manufacturers through litigation over SDRAM, 
21 MICRON TECHNOLOGY v. RAMBUS

because those same manufacturers were producing 

RDRAM, which Rambus hoped would become the market 

leader. However, as was made clear in the Nuclear 

Winter Memorandum, if RDRAM did not become a market leader, Rambus would go after the manufacturers of 

SDRAM and if RDRAM did become a market leader, and 

the RDRAM ramp “reache[d] a point of no return,” then 

Rambus could come out from “stealth mode,” and could 

then “ROCK THE DIRECT BOAT” because the manufacturers would be locked in to the RDRAM standard. Hence 

the use of definitive language of future intention, such as 

asking “WHAT’S THE RUSH [to assert patents against 

RDRAM partners]?” and noting that it should “not asserts 

patents against Direct [RDRAM] partners until ramp 

reaches a point of no return (TBD).” (emphasis added). 

Similarly, obtaining product samples would certainly be a 

reasonably foreseeable event, particularly because Rambus had explicitly broadened its claim coverage in prosecution to cover standard-compliant products, which, by 

the terms of the standard, all the manufacturers would 

meet. It was also reasonably foreseeable that the manufacturers would reject Rambus’s licensing terms, because 

Karp proposed a five percent royalty rate to the board in 

March 1998 that attorney Johnson had called “ridiculous,” 

and that the Cooley attorneys informed him would result 

in a lawsuit. In December 1998 or January 1999, Karp 

opined that in situations where Rambus was “not interested in settling,” they should propose a royalty rate 

between five and ten percent, and noted that “we should 

not be too concerned with settlement at this point and 

should push for very high rates.” It is thus not clear error 

to conclude that Rambus reasonably foresaw that the 

manufacturers would reject its licensing offer. The same 

is true for the other listed contingencies. Thus, Rambus’s 

preparations for litigation prior to the critical date, including choosing and prioritizing manufacturers to sue, 
MICRON TECHNOLOGY v. RAMBUS 22

selecting forums in which to bring suit within a planned 

time-frame, creating claim charts, and including litigation 

as an essential component of its business model, support 

the district court’s decision that Rambus reasonably 

foresaw litigation before the second shredding party on 

August 26, 1999. 

Fourth, Rambus is the plaintiff-patentee, and its decision whether to litigate or not was the determining factor 

in whether or not litigation would in fact ensue. In other 

words, whether litigation was reasonably foreseeable was 

largely dependent on whether Rambus chose to litigate. 

It is thus more reasonable for a party in Rambus’s position as a patentee to foresee litigation that does in fact 

commence, than it is for a party in the manufacturers’ 

position as the accused.1

Fifth, as discussed above, the relationship between 

Rambus and the manufacturers involving RDRAM did not 

make litigation significantly less likely, it only delayed 

the initiation of litigation until the manufacturers were 

either too invested in RDRAM for the SDRAM litigation 

to negatively impact Rambus’s sales, or until Rambus had 

no choice but to sue because RDRAM was rejected. In 

general, when parties have a business relationship that is 

mutually beneficial and that ultimately turns sour, sparking litigation, the litigation will generally be less foreseeable than would litigation resulting from a relationship 

that is not mutually beneficial or is naturally adversarial. 

Thus, for example, document destruction occurring during 

the course of a long-standing and untroubled licensing 

relationship relating to the patents and the accused 

 1 A similar reasoning may apply to accused infringers where there is declaratory judgment jurisdiction 

under MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 

127 (2007), because the accused infringer is then in the 

same position to control litigation as the patentee. 
23 MICRON TECHNOLOGY v. RAMBUS

products that ultimately become the subject of litigation is 

relatively unlikely to constitute spoliation, while destruction of evidence following repeated failures of a licensee to 

properly mark products or remit royalties, is more likely 

to constitute spoliation. Because the relationship regarding RDRAM did nothing to make litigation significantly 

less likely, and because Rambus and the manufacturers 

did not have a longstanding and mutually beneficial 

relationship regarding SDRAM, Rambus cannot use its 

delay tactics regarding RDRAM to undermine the other 

considerations herein discussed. 

Rambus argues that the district court clearly erred in 

setting December 1998 as the date at which litigation was 

reasonably foreseeable, because the only happening on 

that date was the issuance of the Nuclear Winter Memorandum, which addressed Rambus’s potential response to 

the “very unlikely” scenario that Intel would drop its 

support for RDRAM. Rambus argues that a document 

addressing such a contingency cannot form the basis for 

reasonably foreseeable litigation. The district court found 

that litigation was reasonably foreseeable “no later than 

December 1998, when Karp had articulated a time frame 

and a motive for implementation of the Rambus litigation 

strategy.” Decision, 255 F.R.D. at 150. The important 

inquiry is not whether a particular document made litigation reasonably foreseeable, but whether the totality of 

the circumstances as of the date of document destruction 

made litigation reasonably foreseeable. As discussed 

above, there was no clear error in the district court’s 

holding that they did. 

This court thus affirms the district court’s determination that Rambus destroyed documents during its second 

shred day in contravention of a duty to preserve them 

and, thus, engaged in spoliation. 
MICRON TECHNOLOGY v. RAMBUS 24

B. The District Court’s Choice of Sanction 

District courts have the “inherent power to control 

litigation,” West, 167 F.3d at 779, by imposing sanctions 

appropriate to rectify improper conduct by litigants. 

Schmid, 13 F.3d at 78. Such sanctions may include 

dismissal. Leon v. IDX Sys. Corp., 464 F.3d 951, 958 (9th 

Cir. 2006). The particular sanction imposed is within the 

sound discretion of the district court in exercising its 

inherent authority and in assuring the fairness of the 

proceedings before it. See Silvestri, 271 F.3d at 590 (quoting Chambers v. NASCO, Inc., 501 U.S. 32, 45-46 (1991)) 

(“The right to impose sanctions for spoliation arises from 

a court’s inherent power to control the judicial process 

and litigation, but the power is limited to that necessary 

to redress conduct ‘which abuses the judicial process.’”). 

As such, the district court’s choice of sanction is reviewed 

for an abuse of discretion. Mindek v. Rigatti, 964 F.2d 

1369, 1373-74 (3d Cir. 1992). 

Rambus challenges the district court’s imposition of 

the dispositive sanction of dismissal, arguing that Micron 

failed to prove bad faith or prejudice, and that the district 

court was limited to applying some lesser sanction than 

dismissal. This court addresses Rambus’s arguments in 

turn. 

i. Bad Faith 

To make a determination of bad faith, the district 

court must find that the spoliating party “intended to 

impair the ability of the potential defendant to defend 

itself.” Schmid, 13 F.3d at 80. See also Faas v. Sears, 

Roebuck & Co., 532 F.3d 633, 644 (7th Cir. 2008) (“A 

document is destroyed in bad faith if it is destroyed ‘for 

the purpose of hiding adverse information.’”) (citation 

omitted); In re Hechinger Inv. Co. of Del., Inc., 489 F.3d 

568, 579 (3d Cir. 2007) (noting that bad faith requires a 
25 MICRON TECHNOLOGY v. RAMBUS

showing that the litigant “intentionally destroyed documents that it knew would be important or useful to [its 

opponent] in defending against [the] action”); Anderson v. 

Cryovac, Inc., 862 F.2d 910, 925 (1st Cir. 1988) (finding 

bad faith “where concealment was knowing and purposeful,” or where a party “intentionally shred[s] documents in 

order to stymie the opposition”); Gumbs v. Int’l Harvester, 

Inc., 718 F.2d 88, 96 (3d Cir. 1983) (noting that an adverse inference from destruction of documents is permitted only when the destruction was “intentional, and 

indicates fraud and a desire to suppress the truth”) (citation omitted). The fundamental element of bad faith 

spoliation is advantage-seeking behavior by the party 

with superior access to information necessary for the 

proper administration of justice. 

Here, the district court’s analysis of bad faith follows 

its conclusion on spoliation and does not fully explain the 

factual underpinnings of its bad faith determination: 

55. The court concludes that litigation 

was reasonably foreseeable no later than 

December 1998, when Karp had articulated a time frame and a motive for implementation of the Rambus litigation 

strategy. Moreover, because the document 

retention policy was discussed and 

adopted within the context of Rambus’ 

litigation strategy, the court finds that 

Rambus knew, or should have known, that 

a general implementation of the policy 

was inappropriate because the documents 

destroyed would become material at some 

point in the future. Therefore, a duty to 

preserve potentially relevant evidence 

arose in December 1998 and any documents purged from that time forward are 
MICRON TECHNOLOGY v. RAMBUS 26

deemed to have been intentionally destroyed, i.e. destroyed in bad faith. 

Decision, 255 F.R.D. at 150. A determination of bad faith 

is normally a prerequisite to the imposition of dispositive 

sanctions for spoliation under the district court’s inherent 

power, and must be made with caution. In determining 

that a spoliator acted in bad faith, a district court must do 

more than state the conclusion of spoliation and note that 

the document destruction was intentional. See Mathis v. 

John Morden Buick, Inc., 136 F.3d 1153, 1155 (7th Cir. 

1998) (“That the documents were destroyed intentionally

no one can doubt, but ‘bad faith’ means destruction for the 

purpose of hiding adverse information.”) (emphasis 

added). From the district court’s sparse analysis, this 

court is unable to determine whether the district court 

applied the applicable exacting standard in making its 

factual determination that Rambus acted in bad faith. 

The district court’s opinion alludes to several key 

items, including: (1) facts tending to show that Rambus’s 

document retention policy was adopted within the auspices of a firm litigation plan rather than merely carried 

out despite the reasonable foreseeability of such litigation, 

e.g., Decision ¶¶ 17, 53, 55 and n.29; (2) facts tending to 

show the selective execution of the document retention 

policy, e.g., Decision ¶ 13 and n. 23, 27; (3) facts tending to 

show Rambus’s acknowledgement of the impropriety of 

the document retention policy, e.g., Decision ¶¶ 6, 38 and 

n.24, 47; and (4) Rambus’s litigation misconduct, Decision

¶¶ 37-39. While these items may lead to a determination 

of bad faith, the district court did not make clear the basis 

on which it reached that conclusion. 

“It is not our task to make factual findings,” Golden 

Hour Data Sys., Inc. v. emsCharts, Inc., 614 F.3d 1367, 

1380 (Fed. Cir. 2010), and we will leave it to the district 
27 MICRON TECHNOLOGY v. RAMBUS

court’s sound discretion on remand to analyze these, and 

any other, relevant facts as they apply to the determination of bad faith, see Thomas v. Capital Sec. Servs., Inc., 

836 F.2d 866, 873 (5th Cir. 1988) (en banc) (“[T]he district 

court will have a better grasp of what is acceptable triallevel practice among litigating members of the bar than 

will appellate judges.”). 

We note that the district court applied a “knew or 

should have known” standard in its bad faith determination. On remand, the district court should limit its bad 

faith analysis to the proper inquiry: whether Rambus 

“intended to impair the ability of the potential defendant 

to defend itself,” Schmid, 13 F.3d at 80, without regard to 

whether Rambus “should have known” of the propriety of 

its document destruction. 

Litigations are fought and won with information. If 

the district court finds facts to conclude that Rambus’s 

goal in implementing its document retention policy was to 

obtain an advantage in litigation through the control of 

information and evidence, it would be justified in making 

a finding of bad faith. If, on the other hand, the district 

court determines that Rambus implemented its document 

retention policy for legitimate business reasons such as 

general house-keeping, a finding of bad faith would be 

unwarranted. Without a finding either way, however, 

“the opinion explaining the decision lacks adequate fact 

findings, [and] meaningful review is not possible.” Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 811 (1986). 

This court therefore remands for the district court to 

further assess the factual record in reaching a determination on bad faith. 

ii. Prejudice 

Prejudice to the opposing party requires a showing 

that the spoliation “materially affect[s] the substantial 
MICRON TECHNOLOGY v. RAMBUS 28

rights of the adverse party and is prejudicial to the presentation of his case.” Wilson v. Volkswagen of Am., Inc., 

561 F.2d 494, 504 (4th Cir. 1977) (internal quotation 

marks omitted). In satisfying that burden, a party must 

only “come forward with plausible, concrete suggestions as 

to what [the destroyed] evidence might have been.” 

Schmid, 13 F.3d at 80 (emphases added). See also Leon, 

464 F.3d at 960 (“[B]ecause any number of the 2,200 files 

could have been relevant to IDX’s claims or defenses, 

although it is impossible to identify which files and how 

they might have been used. . . . the district court did not 

clearly err in its finding of prejudice.”). If it is shown that 

the spoliator acted in bad faith, the spoliator bears the 

“heavy burden” to show a lack of prejudice to the opposing 

party because “[a] party who is guilty of . . . intentionally 

shredding documents . . . should not easily be able to 

excuse the misconduct by claiming that the vanished 

documents were of minimal import.” Anderson v. Cryovac, Inc., 862 F.2d 910, 925 (1st Cir. 1988). See also

Coates v. Johnson & Johnson, 756 F.2d 524, 551 (7th Cir. 

1985) (“The prevailing rule is that bad faith destruction of 

a document relevant to proof of an issue at trial gives rise 

to a strong inference that production of the document 

would have been unfavorable to the party responsible for 

its destruction.”). 

It is undisputed that Rambus destroyed between 

9,000 and 18,000 pounds of documents in 300 boxes. The 

district court concluded that the destroyed documents 

were relevant to at least the following defenses, which 

would have been “illuminated by evidence of a non-public 

nature, e.g. by internal Rambus documents”: “unenforceability due to patent misuse and violation of the antitrust 

and unfair competition laws (based in part on Rambus’s 

conduct at JEDEC), as well as inequitable conduct.” 

Decision, 255 F.R.D. at 150-51. Documents relating to 
29 MICRON TECHNOLOGY v. RAMBUS

Rambus’s conduct at JEDEC, together with documents 

reflecting Rambus’s instructions to its patent prosecution 

counsel concerning its conduct at JEDEC, could have 

helped resolve Micron’s claims relating to patent misuse, 

antitrust violations, and unfair competition. Documents 

reflecting Rambus’s knowledge of relevant prior art 

references could have helped resolve Micron’s inequitable 

conduct claims. On the other hand, because it is not clear 

what documents were destroyed, it may be, as Rambus 

argues, that all the documents destroyed were either 

redundant or irrelevant to the trial. 

The proper resolution of this issue turns largely on 

whether Rambus has the burden to show lack of prejudice 

or Micron has the burden to show prejudice. As discussed 

above, this turns on whether the district court, on remand, concludes that Rambus was a bad faith spoliator. 

The question of prejudice is therefore also remanded. 

iii. Dispositive Sanction 

In addition to reassessing on remand its determination of bad faith and prejudice, the district court should 

also explain the reasons for the propriety of the sanction 

chosen (if any) based on the degree of bad faith and prejudice and the efficacy of other lesser sanctions. 

Dismissal is a “harsh sanction,” to be imposed only in 

particularly egregious situations where “a party has 

engaged deliberately in deceptive practices that undermine the integrity of judicial proceedings.” Leon, 464 F.3d 

at 958 (internal citations omitted). This court agrees that 

such sanctions should not be imposed unless there is clear 

and convincing evidence of both bad-faith spoliation and 

prejudice to the opposing party. Shepherd v. ABC, 62 

F.3d 1469, 1472, 1477 (D.C. Cir. 1995) (noting that dismissal requires proof by clear and convincing evidence); 

Gates Rubber Co. v. Bando Chem. Indus., Ltd., 167 F.R.D. 
MICRON TECHNOLOGY v. RAMBUS 30

90, 108 (D. Colo. 1996) (requiring clear and convincing 

evidence because “[t]o do otherwise would be to contravene the strong public policy which favors adjudication of 

cases on their merits”). Moreover, the presence of bad 

faith and prejudice, without more, do not justify the 

imposition of dispositive sanctions. In gauging the propriety of the sanction, the district court must take into 

account “(1) the degree of fault of the party who altered or 

destroyed the evidence; (2) the degree of prejudice suffered 

by the opposing party; and (3) whether there is a lesser 

sanction that will avoid substantial unfairness to the 

opposing party and, where the offending party is seriously 

at fault, will serve to deter such conduct by others in the 

future.” Schmid, 13 F.3d at 79 (emphases added). See 

also Leon, 464 F.3d at 958 (noting that the district court 

must consider “(1) the public’s interest in expeditious 

resolution of litigation; (2) the court’s need to manage its 

dockets; (3) the risk of prejudice to the party seeking 

sanctions; (4) the public policy favoring disposition of 

cases on their merits; and (5) the availability of less 

drastic sanction”). The sanction ultimately imposed must 

be commensurate with the analysis of these factors. 

The district court must “select the least onerous sanction corresponding to the willfulness of the destructive act 

and the prejudice suffered by the victim.” Schmid, 13 

F.3d at 79 (citing Jamie S. Gorelick, Steven Marzen and 

Lawrence Solum, Destruction of Evidence, § 3.16, p. 117 

(1989)). While the district court noted that “[s]anctions 

such as adverse jury instructions and preclusion of evidence are impractical, bordering on meaningless, under 

these circumstances and in the context of a typical jury 

trial,” and that “the simple imposition of fees and costs is 

wholly inadequate under the facts of this case,” Decision, 

255 F.R.D. at 151, it did not explain why only dismissal 

would “vindicate the trifold aims of: (1) deterring future 
31 MICRON TECHNOLOGY v. RAMBUS

spoliation of evidence; (2) protecting the defendants’ 

interests; and (3) remedying the prejudice defendants 

suffered as a result of [Rambus’s] actions.” See West, 167 

F.3d at 180. 

If the district court again concludes on remand that 

there was bad faith and prejudice, the record evidence 

may indeed justify a dispositive sanction, but the seriousness of such a sanction warrants an analysis of all of the 

factors discussed above. Cf. Roadway Express v. Piper, 

447 U.S. 752, 764 (1980) (noting that because “inherent 

powers are shielded from direct democratic controls,” they 

“must be exercised with restraint and discretion”). 

C. Piercing of the Attorney-Client Privilege 

The district court’s spoliation rulings depended in 

part on evidence from communications between Rambus 

and its attorneys; these communications were in the 

record only because they had been ordered produced by 

Rambus after the district court pierced the attorney-client 

privilege that otherwise would protect the communications from disclosure. Rambus appeals the privilegepiercing ruling, arguing that the district court erred by 

finding that Micron had made the required prima facie 

showing that Rambus had committed or intended to 

commit a fraud or crime and that the attorney-client 

communications in question were in furtherance of that 

crime or fraud. 

Rambus is correct that the crime-fraud exception to 

the attorney-client privilege requires such a prima facie 

showing. In re Grand Jury Subpoena, 223 F.3d 213, 217 

(3d Cir. 2000). But making a prima facie showing is “not 

a particularly heavy” burden, In re Grand Jury Investigation, 445 F.3d 266, 274-75 (3d Cir. 2006), and this court 

agrees with the district court that Micron did indeed carry 

that burden here. Specifically, there was enough evidence 
MICRON TECHNOLOGY v. RAMBUS 32

to find a likely violation of § 135 of the California Penal 

Code, which provides that 

[e]very person who, knowing that any book, paper, 

record, instrument in writing or other matter or 

thing is about to be produced in evidence upon 

any trial, inquiry, or investigation whatever, authorized by law, willfully destroys or conceals the 

same, with intent thereby to prevent it from being 

produced, is guilty of a misdemeanor. 

As discussed above, there is ample evidence that Rambus 

destroyed documents in its possession knowing that they 

would likely be forced to be produced in litigation and 

intending to prevent that production. There is also ample 

evidence that Rambus devised this strategy partly on the 

basis of the advice it received from its outside counsel. 

The only question therefore is whether the documents 

Rambus destroyed were “about to be produced in evidence,” or whether the delay of some months between 

Rambus’s destruction of the evidence and Rambus’s final 

decision to file suit against Hitachi eliminates any possibility that this element of the California statute could be 

satisfied. 

Rambus argues that the “about to be produced in evidence” element of § 135 has been interpreted to “connote[] 

an immediacy or temporal closeness” between the destruction of the evidence and the time when it was to be 

produced and that such “temporal closeness” is missing 

here. People v. Prysock, 127 Cal. App. 3d 972, 1000-01 

(Cal. App. 5th Dist. 1982). However, Prysock is distinguishable. There, the criminal defendant committed 

murder and, shortly thereafter, burned the clothes he 

wore while committing the crime. Id. at 981. Because no 

“law enforcement investigation . . . had started” at the 

time the defendant destroyed his clothes, and because 
33 MICRON TECHNOLOGY v. RAMBUS

“law enforcement was [not] . . . looking for the” clothes at 

the time they were destroyed, the California court found 

no violation of § 135. Id. at 1001. In Prysock, then, 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. 

Here, by contrast, Rambus controlled the timing of both 

events. It would make no sense to allow Rambus to 

escape liability, criminal or otherwise, by intentionally 

destroying evidence and then waiting for an arbitrary 

period of time before choosing to file suit. Moreover, it is 

not clear that California courts would interpret the statute in such a way as to make the initiation of the “investigation” the time when Rambus filed its complaint. 

Instead, the statute could just as reasonably be interpreted such that it would be violated by the intentional 

destruction of evidence at any time after Rambus began 

preparing to file this suit. Interpreted this way, Rambus’s 

preparations to file this suit in early 1998 began the civil 

equivalent of the criminal law-enforcement investigation 

in Prysock, and Rambus’s destruction of documents in late 

1998 and 1999 violated § 135 if, as noted above, Rambus 

intentionally destroyed those documents with the intention of keeping them from being produced in the ensuing 

litigation. This is clearly a different situation from that 

encountered in Prysock, and this court sees no error in the 

district court’s distinguishing that case. Because the 

district court properly found that Micron made a prima 

facie showing that (1) Rambus willfully destroyed documents it knew would have to be produced in the litigation 

it intended to initiate against Hitachi, (2) Rambus destroyed those documents in order to keep them from being 

produced, and (3) Rambus began destroying those documents based on communications from its litigation counsel advising it to begin destroying discoverable 
MICRON TECHNOLOGY v. RAMBUS 34

information, this court agrees with the district court’s use 

of the crime-fraud exception to pierce the attorney-client 

privilege 

D. Denial of Transfer 

The final issue on appeal concerns the district court’s 

denial of Rambus’s motion to transfer this case to the 

Northern District of California. As discussed above, 

Rambus filed its first suit against SDRAM manufacturers 

in January 2000. Micron filed the present declaratory 

judgment action against Rambus in August 2000. The 

following day, Hynix filed suit against Rambus in the 

Northern District of California. The present case was 

stayed at Rambus’s request on June 28, 2002, with the 

stay apparently lifted in late 2004. Meanwhile, proceedings continued in the Hynix matter in the Northern 

District of California. In that case, in January 2006, the 

U.S. District Court for the Northern District of California 

decided that there had been no spoliation by Rambus. 

Following that favorable ruling, Rambus moved to transfer the present case to the Northern District of California 

on February 14, 2006. The Delaware district court denied 

the motion to transfer on March 29, 2006. At the time of 

Rambus’s motion to transfer, the present case had been 

pending for five and a half years, and there was a trial 

schedule already in place. 

In an oral ruling from the bench, the district court referred to Rambus’s motion to transfer “as clear and obvious a case of forum shopping as has probably ever existed 

in the federal judiciary,” thanks to the motion’s coming 

hard on the heels of the favorable spoliation ruling in the 

Northern District of California. The district court 

weighed several factors, including the forum-shopping 

allegation (weighing against transfer), the plaintiff’s 

choice of forum (weighing against transfer), the conven-
35 MICRON TECHNOLOGY v. RAMBUS

ience of the witnesses (not weighing in favor of either 

transferring or not transferring), and the fact that trial 

was scheduled and imminent (weighing against transfer). 

Based on these factors, the district court denied the 

transfer motion. 

This court reviews this issue under the law of the 

relevant regional circuit. The Third Circuit reviews 

denials of motions to transfer for abuse of discretion. 

Jumara v. State Farm Ins., 55 F.3d 873, 878 (3d Cir. 

1995). Rambus argues that the district court abused its 

discretion here because there were other cases regarding 

the same patents pending in the Northern District of 

California, and avoiding having the same issues litigated 

in multiple forums is the “paramount consideration” when 

deciding whether to transfer a case. But, as Micron 

points out, treating consolidation of related cases as 

“paramount” generally involves transferring all the cases 

to the same forum where the earliest-filed action is pending. Here, the earliest-filed case is the present one, 

pending in Delaware; the cases in the Northern District of 

California were all filed later. Thus, the “paramount 

consideration” might help in an argument to transfer the 

Hynix case to the District of Delaware, but it does nothing 

to support Rambus’s argument in favor of transferring 

this case to the Northern District of California. 

Moreover, every other factor either is neutral or supports the district court’s decision not to transfer the case: 

(1) Rambus waited over five years to ask for this case to 

be transferred, (2) the motion to transfer came just 

months before a scheduled trial, and (3) Rambus filed the 

transfer motion only a month after receiving a favorable 

ruling by the proposed transferee court, strongly suggesting forum shopping. This forum-shopping should be 

discouraged, arguing strongly in favor of denying the 

transfer motion. The district court also pointed out that 
MICRON TECHNOLOGY v. RAMBUS 36

the convenience of the witnesses did not favor either 

forum, because most of the witnesses were employees of 

or consultants to the parties and could therefore be encouraged to testify in either forum, even if they could not 

be compelled to testify in Delaware. This was correct, not 

least because Rambus had earlier tried to move a related 

case out of the Northern District of California, arguing 

that it was inconvenient for its witnesses to testify there. 

Given that both parties were incorporated in Delaware, 

they had both willingly submitted to suit there, which 

weighs in favor of keeping the litigation in Delaware. 

Finally, Rambus had previously filed other litigation 

regarding the same patents (against Hitachi) in the 

District of Delaware, suggesting that it had no difficulty 

litigating a patent infringement suit in that court. Given 

that all the relevant factors either favor denying the 

transfer motion or are neutral, this court holds that the 

district court did not abuse its discretion by refusing to 

transfer this case to the Northern District of California, 

and therefore affirms the district court’s denial of Rambus’s motion to transfer. 

III. CONCLUSION

For the reasons stated above, this court affirms the 

district court’s determination that Rambus spoliated 

documents, but vacates the district court’s dismissal 

sanction, and remands for further consideration consistent with this opinion. 

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

REMANDED 
37 MICRON TECHNOLOGY v. RAMBUS

COSTS

 Each party shall bear its own costs. 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MICRON TECHNOLOGY, INC., 

Plaintiff/Counterclaim Defendant-Appellee, 

AND

MICRON ELECTRONICS, INC. 

AND MICRON SEMICONDUCTOR PRODUCTS, INC., 

Counterclaim Defendants-Appellees, 

v. 

RAMBUS INC., 

Defendant/Counterclaimant-Appellant. 

__________________________ 

2009-1263 

__________________________ 

 Appeal from the United States District Court for the 

District of Delaware in case no. 00-CV-792, Judge Sue L. 

Robinson. 

__________________________ 

GAJARSA, Circuit Judge, concurring-in-part and dissenting-in-part. 

While I agree with the majority that there was spoliation of evidence by Rambus, I dissent from that part of the 

majority’s opinion that remands for a reexamination of 

the evidence for bad faith and vacates the district court’s 

sanction award. Even though the majority applauds with 

one hand the district court’s “inherent power to control 

litigation,” West v. Goodyear Tire & Rubber Co., 167 F.3d 
MICRON TECHNOLOGY v. RAMBUS 2

776, 779 (2d Cir. 1999), with the other hand it strangles 

this power by vacating the district court’s sanction award. 

Indeed, the majority does not review the district court’s 

sanction award for an abuse of discretion, instead it 

reviews the facts and weighs the evidence before it substitutes its judgment for that of the district court, deciding 

that based on the district court’s thorough factual analysis, it would not have granted the dispositive sanctions. 

Because we should not “disarm the [district] court of its 

important power to police its proceedings to ensure transparency and predictability and to discourage mischievous 

conduct by litigants,” I dissent.1 Transclean Corp. v. 

Bridgewood Servs., Inc., 290 F.3d 1364. 1374 (Fed. Cir. 

2002). 

The district court found that Rambus’ conduct “impugned” the very integrity of the judicial system. Micron 

Tech., Inc. v. Rambus Inc., 255 F.R.D. 135, 151 (D. Del. 

 1 Separately, the majority’s discussion of what constitutes reasonably foreseeable litigation in its spoliation 

analysis is troubling. See Majority Op. at 12-14. Because 

the Third Circuit has not spoken on the outer bounds of 

reasonably foreseeable litigation, this court may look to 

the law of other circuits to help inform the issue. Loctite 

Corp. v. Ultraseal Ltd., 781 F.2d 861, 875 (Fed. Cir. 1985), 

overruled on other grounds by Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059 (Fed. Cir. 1998). 

While I believe the majority is correct that circuits generally do not require “imminent litigation” for it to be reasonably foreseeable, the majority uses its “flexible” 

standard to overturn the district court’s finding of no 

spoliation in Hynix Semiconductor, Inc. v. Rambus, Inc., 

No. 2009-1299, -1347, slip op. at 12-13 (Fed. Cir. May 13, 

2011), the companion to this case. I disapprove of this 

backdoor imposition of Federal Circuit law in place of that 

of the regional circuit and additionally dissent from the 

portion of the majority’s Hynix opinion that overturns the 

district court’s spoliation determination. 
3 MICRON TECHNOLOGY v. RAMBUS

2009) (“District Court Op.”). In so doing, Rambus also 

abused the privilege of owning a patent monopoly. “As 

recognized by the Constitution, [a patent] is a special 

privilege designed to serve the public purpose of promoting the ‘Progress of Science and useful Arts’” and “is an 

exception to the general rule against monopolies and to 

the right to access to a free and open market.” Precision 

Instrument Mfg. Co. v. Automotive Maint. Mach. Co., 324 

U.S. 806, 816 (1945). Thus, the public has a “paramount 

interest in seeing that patent monopolies spring from 

backgrounds free from fraud or other types of inequitable 

conduct . . . .” Id. Here, Rambus abused its privilege by 

intentionally—as found by the district court—destroying 

evidence in bad faith to protect its exclusive monopoly. 

Instead of recognizing this abuse by Rambus, the majority searches to find a needle in the haystack because, in 

its collective superior judgment, Rambus’ conduct does 

not require taking away that privilege. In fact, the majority fails to consider the “high hurdle” that Rambus must 

overcome in showing that the district court abused its 

discretion. Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 

F.3d 1193, 1218 (Fed. Cir. 2002). In so doing, the majority reweighs the evidence and decides that “several key 

items” on which the district court relied “may lead to a 

determination of bad faith,” but the basis on which the 

district court “reached that conclusion” was not “clear.” 

Majority Op. at 26-27. 

As an appellate court, we should not decide whether 

the facts before us “may” lead to a conclusion that we 

agree with, but whether by so concluding the district 

court abused its discretion. Indeed, “[t]he question, of 

course, is not whether . . . the Court of Appeals, would as 

an original matter have [resolved the case in the same 

way as the District Court]; it is whether the District Court 

abused its discretion in so doing.” Nat’l Hockey League v. 
MICRON TECHNOLOGY v. RAMBUS 4

Metro. Hockey Club, Inc., 427 U.S. 639, 642 (1977) (citations omitted) (rejecting appellate court’s reweighing of 

evidence and upholding district court’s imposition of 

terminating sanctions for discovery violations as this did 

not amount to an abuse of discretion). 

Here, the district court followed the appropriate Third 

Circuit standard and provided ample basis in fact for its 

decision to award dispositive sanctions. District Court 

Op. at 148-51. In the Third Circuit, a spoliating party 

acts in bad faith when it “intended to impair the ability of 

the potential defendant to defend itself.” Schmid v. 

Milwaukee Elec. Tool Corp., 13 F.3d 76, 80 (3d Cir. 1994). 

Under this standard, the district court did not abuse its 

discretion in finding that Rambus did, in fact, act in bad 

faith. 

First, Rambus used its document retention plan to 

disguise and hide its destruction of relevant documents. 

Rambus “instructed patent counsel to purge [its] patent 

files,” which would have at least been relevant to inequitable conduct. District Court Op. at 150. Further, Micron’s defenses of patent misuse and violations of unfair 

trade and antitrust laws could all be “illuminated by 

evidence of a non-public nature, e.g., by internal Rambus 

documents,” id. at 151, which almost certainly could have 

been included in the 300 boxes of documents destroyed in 

the second shred day in August 1999, id. at 145, or the 

480 boxes destroyed on December 28, 2000, id. at 147. 

The district court, however, did not make a blanket 

determination that Rambus’ document destruction impeded all of Micron’s defenses. In fact, the district court 

found Micron’s ability to assert anticipation and obviousness would not have been impaired by Rambus’ spoliation, 

as the prior art used to assert such defenses is publicly 

available. Id.
5 MICRON TECHNOLOGY v. RAMBUS

Second, Rambus’ document retention policy informed 

employees they should “LOOK FOR THINGS TO KEEP,” 

including documents that would help establish conception 

but “expunge” “documents questioning the patentability of 

Rambus inventions.” Id. at 142 n.26. This policy remained in effect even after December 1998, the date after 

which destruction of documents was deemed to be spoliation. Id. at 150. 

Third, Rambus’ own documents (or, more accurately, 

those that did not make it to the shredding bin) demonstrate that it was aware that its document retention 

policy resulted in destruction of documents relevant to 

litigation. Outside counsel Neil Steinberg e-mailed Rambus executives on July 12, 2000 explaining his desire for a 

new document retention policy that “is similar to the 

previous policy—however, this time the IP group will 

attempt to execute the policy more effectively.” Id. at 147 

n.57. In addition, Rambus’ numerous misrepresentations 

about its document retention policy during the litigation 

are evidence, as found by the district court, of a guilty 

conscience. Id. at 147-48, 151. 

In criticizing the district court’s sanctions award, the 

majority claims that the district court must explain the 

propriety of the sanction “based on the degree of bad faith 

and prejudice and the efficacy of other sanctions.” Majority Op. at 30. This misstates the analysis a district court 

must undertake to award sanctions for spoliation in the 

Third Circuit. Schmid requires that a district court 

determine: 

(1) the degree of fault of the party who altered or 

destroyed the evidence; (2) the degree of prejudice 

suffered by the opposing party; and (3) whether 

there is a lesser sanction that will avoid substantial unfairness to the opposing party and, where 
MICRON TECHNOLOGY v. RAMBUS 6

the offending party is seriously at fault, will serve 

to deter such conduct by others in the future. 

13 F.3d at 79 (citations omitted). With regard to the first 

factor, the district court must determine the “degree of 

fault” of the spoliating party, not the degree of bad faith. 

It is incongruous to establish a “degree” of bad faith—a 

party either did or did not act in bad faith. Indeed, 

Schmid recognized this by defining bad faith as whether 

the spoliator “intended to impair the ability of the potential defendant to defend itself . . . .” Id. at 80 (emphasis 

added). Requiring degrees of bad faith is the equivalent 

of finding whether or not a party is “just a little bit pregnant.” The majority’s desire for the district court to define 

how “bad is bad” is contrary to Third Circuit law, which 

this court must apply. 

The majority further states that the district court 

failed to satisfy the third Schmid factor by not explaining 

how holding Rambus’ patents unenforceable would deter 

future spoliation of evidence, protect Micron’s interests, 

and remedy the prejudice to Micron. Majority Op. at 31. 

Not only is this contrary to the record, but the majority is 

now creating requirements for the imposition of dispositive sanctions that do not exist in the controlling regional 

circuit law. As explained above, the district court did not 

abuse its discretion in finding that Rambus acted in bad 

faith or that the destruction of these documents prevented 

Micron from mounting an appropriate defense. Further, 

the district court specifically found that any sanction 

other than a dispositive one would be “impractical [and] 

border[] on meaningless” due to the egregiousness of 

Rambus’ conduct. District Court Op. at 151. Indeed, 

Rambus’ conduct “impugned” “the very integrity of the 

litigation process.” Id. Obviously, a dispositive sanction 

will serve to deter others from the egregious conduct seen 
7 MICRON TECHNOLOGY v. RAMBUS

here. There is no better way for the district court to have 

complied with the third Schmid factor. 

In vacating the sanctions award, the majority has 

called the firing squad to the ready, the squad cocking 

their guns and taking aim, but instead of shooting the 

appropriate and culpable party, the squad aimed at the 

district court’s proper determinations of fact. The majority selectively chooses those facts that support its desired 

outcome, while ignoring those that do not. Weighing 

evidence as a fact finder is not our function as an appellate court. If the evidence that was considered and 

weighed by the district court is objectively analyzed by 

this court under the abuse of discretion standard, it would 

lead all reasonable people to affirm. See Gen. Elec. Co. v. 

Joiner, 522 U.S. 136, 143 (1997) (holding that the appellate court erred in excluding expert testimony by “applying an overly ‘stringent’ review to that ruling[ and 

thereby] fail[ing] to give the trial court the deference that 

is the hallmark of abuse-of-discretion review”). On remand, the district court would not, in my judgment, need 

to review any additional evidence; it may only be required 

to parse the facts more specifically and again determine 

that the only appropriate sanction for Rambus’ egregious 

conduct is dismissal of this suit. Moreover, I agree with 

the district court that under these facts, such a sanction 

would be appropriate. 

In substituting its own views for those of the district 

court, the majority directly interferes with the sound 

discretion of the trial courts in managing their cases and 

prevents them from protecting the litigation process, 

which they are inherently bound to do. Cooter & Gell v. 

Hartmarx Corp., 496 U.S. 384, 404 (1990) (“Deference to 

the determination of courts on the front lines of litigation 

will enhance these court’s ability to control litigants 

before them.”). Because the majority ignores this essen-
MICRON TECHNOLOGY v. RAMBUS 8

tial and inherent power of the district court, I dissent 

from its vacateur of the sanction imposed by the district 

court.