The Board of Trustees of the University of Illinois v. Micron Technology Inc
Filing
115
ORDER granting 109 Motion to Compel Deposition. See written Order. Entered by Magistrate Judge Jonathan E. Hawley on 8/3/2016. (Hawley, Jonathan)
E-FILED
Wednesday, 03 August, 2016 06:17:09 PM
Clerk, U.S. District Court, ILCD
IN THE
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF ILLINOIS
URBANA DIVISION
BOARD OF TRUSTEES OF THE
UNIVERSITY OF ILLINOIS,
Plaintiff,
Case No. 2:11-cv-02288-SLD-JEH
v.
MICRON TECHNOLOGY, INC.,
Defendant.
Order
Before the Court is Plaintiff, Board of Trustees of the University of Illinois’s
(“University”), Motion to Compel Deposition Testimony [#109] (“Pltf. Mot.”),
and the Defendant, Micron Technology, Inc.’s (“Micron”) response (“Def. Resp.”)
thereto [#110]. This Court held a hearing on the motion on August 2, 2016. For
the reasons stated, infra, the University’s motion is GRANTED.
I1
The University owned three patents that “pertain generally to the use of
deuterium in the fabrication of semiconductor devices.” Am. Compl. ¶ 3, ECF
No. 37. Micron and the University entered into a contract in 2004 (the Work
Agreement), the terms of which called for Micron to supply the University with
silicon wafers that the University would treat with its “deuterium anneal”
processes (which processes were the subject of the patents-in-suit) and then
return to Micron so Micron could study them. See Am. Compl. Ex. D (“work
agreement”) ¶¶ 1, 2, ECF No. 37-4 at 2.
The bulk of the background facts in this section are taken directly from U.S. District Judge Sara L.
Darrow’s Order denying Micron’s motion to dismiss [#92].
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The University’s amended complaint alleges that Micron infringed each of
the patents-in-suit and also breached the Work Agreement when Micron
manufactured and sold flash devices that “incorporate deuterium with a
designed process step.” See Am. Compl. ¶¶ 13, 25, 29, 33, 38. The Court stayed
this case while Micron sought inter partes review of the patents before the Patent
Trial and Appeal Board (“PTAB”). See 35 U.S.C. § 311. The PTAB found that all
three patents were obvious based on prior art, and therefore held them invalid.
See 35 U.S.C. § 103 (codifying nonobviousness requirement). The Federal Circuit
summarily affirmed the PTAB’s decision, effectively knocking out the
University’s patent infringement claims. Accordingly, all that remains in the case
is an Illinois state law claim asserted in Count IV for breach of contract. Am.
Compl. ¶¶ 36-39.
The breach of contract claim is premised upon the 2004 Work Agreement
executed by the parties. The contract allowed Micron to “test, inspect, use,
disassemble, and analyze the treated Wafers. . . for evaluation purposes only,”
and could be read to have required Micron to get a license from the University if
it sought to make money off the University’s “intellectual property.” Am. Compl.
Ex. D ¶¶ 2(a) and 2(c).
Paragraph 2(c) of the Work Agreement provides,
“University represents that it has a proprietary interest in its intellectual property
underlying the Deuterium Annealing Process.” Id. at 2(c). It is this sentence
which is central to the dispute now before the Court.
II
On June 8, 2016, the University served a notice of deposition, requesting to
depose Micron on a number of topics pursuant to Federal Rule of Civil
Procedure 30(b)(6). Among the topics are several seeking information about
Micron’s alleged use of deuterium in the manufacture of flash memory devices,
as well as other technical and financial information about “Micron’s flash
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memory devices annealed in a deuterium atmosphere.” See Def. Resp. p. 4, ECF
No. 110. Micron agreed to provide a corporate representative to testify regarding
most of the University’s deposition topics, but objected to Topics Nos. 7-10 and
12-14. See generally, Pltf. Mot., Ex. A. In its response to the Motion to Compel,
Micron withdrew the objection to Topic 13 “in an effort to reduce the number of
disputes for the Court to resolve,” thereby leaving only Topics Nos. 7-10, 12, and
14 at issue. Def. Resp. p. 1, n. 1.
Specifically, the disputed topics seek to question Micron’s witness on the
following topics:
Topic No. 7: Micron’s decision to anneal flash memory devices in a
deuterium atmosphere.
Topic No. 8: Micron’s processes for the annealing of flash memory
devices in a deuterium atmosphere, including all process recipes
therefor.
Topic No. 9: The n-channel field effect transistors contained in
Micron’s flash memory devices annealed in a deuterium
atmosphere.
Topic No. 10: The structure of Micron’s flash memory devices
annealed in a deuterium atmosphere, including the n-channel field
effect transistors, drains, sources and gate insulating and
semiconductive layers thereof.
Topic No. 12: The revenues derived by Micron from the sales of
flash memory devices annealed in a deuterium atmosphere.
Topic No. 14: Any discussion within Micron of the need to conclude
a commercial license with the University as a result of Micron’s
commercialization of flash memory devices annealed in a deuterium
atmosphere.
Pltf. Mot., Ex. A, pp. 12-23.
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Micron objected to each of these topics with a number of boilerplate
objections, as well as one related to the specific facts of this case. Specifically, to
each of the disputed topics, Micron made the following objection:
Micron further objects to this Topic to the extent it seeks information
that is clearly outside the scope of the asserted claims of U.S. Patent
Nos. 5,872,387, 6,888,204, and 6,444,533—the only intellectual
property rights (albeit invalid and unenforceable) owned by the
University that the University has identified to date as being
relevant to its breach of contract claim, and therefore, this litigation.
In particular, with regard to the annealing of flash memory devices
using deuterium, Micron interprets the scope of this Topic to be at
least limited to annealing after the contacts on the device are formed,
as that is the only annealing that is even arguably relevant to any of
the University’s claims in this litigation. See, e.g., Dkt. No. 83, Ex.
83-3, Final Written Decision of the Patent Trial and Appeal Board, at
6 (construing the broadest reasonable interpretation of the patent
claim term “subsequent to completion of fabrication of said device”
to be limited to annealing “after the contacts on the device are
formed”).
Pltf. Mot., Ex. A, pp. 12-23. According to Micron, “because the claims of the
University’s patents are limited to post-metal annealing, any information about
the possible use of deuterium in the manufacture of Micron’s products other
than for post-metal annealing would be irrelevant to the University’s patents.”
Def. Resp., pp. 5-6. The University, however, argues that Micron seeks to rewrite
the scope of the disputed topics as being limited to the University’s patents—a
proposition which the University asserts has already been rejected by the Court.
III
The federal discovery rules are to be construed broadly and liberally.
Herbert v. Lando, 441 U.S. 153, 177 (1979); Jefferys v. LRP Publications, Inc., 184
F.R.D. 262, 263 (E.D. Pa. 1999). Parties are generally allowed to obtain discovery
regarding any nonprivileged matter relevant to the claim or defense of any party,
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subject to factors set forth in FRCP 26(b)(1). District courts have broad discretion
in matters relating to discovery. See Brown–Bey v. United States, 720 F.2d 467,
470–71 (7th Cir. 1983). For discovery purposes, relevancy is construed broadly to
encompass “any matter that bears on, or that reasonably could lead to other
matter[s] that could bear on, any issue that is or may be in the case.” Chavez v.
DaimlerChrysler Corp., 206 FRD 615, 619 (SD Ind 2002), quoting Oppenheimer Fund,
Inc. v. Sanders, 437 U.S. 340, 351 (1978)).
The party opposing discovery has the burden of proving that the
requested discovery should be disallowed. Carrigan v. K2M Inc., 2011 WL
1790423, *4 (C.D.Ill.), citing Etienne v. Wolverine Tube, Inc., 185 F.R.D. 653, 656 (D.
Kan. 1999); Golden Valley Microwave Foods, Inc. v. Weaver Popcorn Co., 132 F.R.D.
204, 207 (N.D. Ind. 1990). The objecting party must do more than simply recite
boilerplate objections such as overbroad, burdensome, oppressive or irrelevant.
See, for example, Telco Group Inc v. Ameritrade Inc., 2006 WL 560635 (D. Neb.);
Roesberg v. Johns–Manville Corp., 85 F.R.D. 292, 297 (D. Pa. 1980). If the basis for an
objection is lack of relevance, “the party resisting the discovery has the burden to
establish the lack of relevance by demonstrating that the requested discovery is
of such marginal relevance that the potential harm occasioned by discovery
would outweigh the ordinary presumption in favor of broad disclosure.” Chavez,
206 F.R.D. at 619; Sheehan v. Kruger, 2012 WL 6049007 (ND Ind). See also Methodist
Health Services Corp. v. OSF Healthcare Sys., 13-1054, 2014 WL 1612838, at *1–2
(C.D. Ill.).
As an initial matter, with the exception of the objection quoted, supra,
Micron’s other objections are all boilerplate, which the Court will not address.
See Telco Group Inc., 2006 WL 560635. Indeed, in its response, Micron itself
focuses only on the objection really at issue and, consequently, has waived the
other boilerplate objections for purposes of consideration by the Court. See Gray
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v. Steel Corp., 284 F.R.D. 393, 396 (N.D. Ind. Jun. 2012) (objections asserted in
responses to interrogatories waived where party did not explain its position in
response to a motion to compel). The heart of the discovery dispute here is
whether the intellectual property at the center of the breach of contract claim is
limited to that intellectual property subject to the now invalidated patents or,
instead, to something broader than that solely covered by the patents.
First, looking to the language of the Work Agreement itself, paragraph 2(c)
of that agreement defines the scope of the intellectual property at issue. That
paragraph states the intellectual property at issue as that which “underl[ies] the
Deuterium Annealing Process.” Am. Compl. Ex. D ¶2(c). The language of the
Work Agreement does not limit the intellectual property to that related to
annealing after contacts are formed, aka information only within the scope of the
asserted claims of U.S. Patent Nos. 5,872,387, 6,888,204, and 6,444,533.
Second, Judge Darrow’s order denying Micron’s motion to dismiss the
breach of contract claim makes clear that the intellectual property at issue is not
limited to that covered by the patents. Specifically, in denying Micron’s motion
to dismiss, Judge Darrow stated, “The work agreement seems to acknowledge,
intellectual property is a general term that includes more kinds of property
interests than only valid patents; at a minimum, copyright, trademark, and trade
secrets typically fall under that broad heading.” Docket No. 92, at p. 7. Moreover,
Judge Darrow states:
Federal patent law provides a floor of protection for a patentable
invention by giving the owner the right to exclude others from its
manufacture, use, and sale in the United States for a definite length
of time. 35 U.S.C. § 154. Private parties are free to augment that
regime as they see fit, as between themselves, provided their
agreement does not stymie the policies underlying the patent laws.
Id. at 7-8.
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Finally, she states:
The Federal Circuit’s analysis effectively controls this motion’s
resolution. The Studiengesellschaft Kohle case states in no uncertain
terms that a claim in an ultimately invalidated patent can still be
infringed in the sense that a licensee remains under a duty to pay
royalties up to the date it challenges the patents. In other words, in
the context of license enforcement, the Federal Circuit conceptually
decouples infringement from a patent’s validity, provided the
parties do not intend otherwise. Here, the work agreement called for
the University to hand over treated wafers to Micron. A reasonable
interpretation of the work agreement, however, conditioned that
transfer on Micron’s promise to seek a license from the University if
it ultimately sought to put the University’s processes to commercial
use. Nothing in the work agreement explicitly makes Micron’s
obligation contingent on the validity of the University’s patents.
Id. at 9.
Reading these passages together with paragraph 2(c) of the Work
Agreement, this Court can only conclude that the scope of the intellectual
property at issue here is not limited to that within the scope of the asserted
claims of U.S. Patent Nos. 5,872,387, 6,888,204, and 6,444,533. Rather, the scope of
the intellectual property is that as stated in the Work Agreement, i.e. intellectual
property “underlying the Deuterium Annealing Process.” Am. Compl. Ex. D¶
(c). That language does not limit the intellectual property governed by the Work
Agreement only to annealing after contacts are formed. Accordingly, Micron’s
objections seeking to limit discovery related to intellectual property underlying
the Deuterium Annealing Process only after contacts are formed is contrary to
the language of the Work Agreement and Judge Darrow’s order. 2
The Court acknowledges, as discussed at the hearing on the Motion to Compel, that Micron has filed a
Motion to Reconsider Judge Darrow’s denial of the motion to dismiss the breach of contract claim. See
Docket No. 97. Judge Darrow’s ruling on that motion could alter the outcome of this Order. However,
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IV
For the reasons stated, supra, the University’s Motion to Compel
Deposition Testimony [#109] is GRANTED.
It is so ordered.
Entered on August 3, 2016
s/Jonathan E. Hawley
U.S. MAGISTRATE JUDGE
unless and until Judge Darrow decides otherwise when ruling upon the motion to reconsider, Judge
Darrow’s order on the motion to dismiss and the reasoning contained therein is the law of this case.
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