STC.UNM v. Intel Corporation
Clerk's Minutes for proceedings held before District Judge Robert C. Brack: Motion Hearing held on 4/10/2012 re 178 MOTION for Summary Judgment of Unenforceability and Memorandum in Support filed by Intel Corporation. (Court Reporter Vanessa Alyce) (Attachments: # 1 Exhibit, # 2 Exhibit) (jjs)
UNITED STATES DISTRICT COURT
DISTRICT OF NEW MEXICO
Before the Honorable Robert C. Brack
10 CV 1077 RB
DATE: April 10, 2012
Time in court: 2 hours 37 minutes
TITLE: STC UNM vs Intel Corporation
COURT REPORTER: Vanessa Alyce
( ) Albuquerque ( X) Las Cruces ( ) Santa Fe ( ) Roswell
( ) Bench warrant ordered
ATTORNEYS PRESENT FOR PLAINTIFF(S):
ATTORNEYS PRESENT FOR DEFENDANT(S):
Rolf Stadheim, Keith Vogt, Joseph Grear,
Raul Carrillo, Jr.
Clifford Atkinson, Chad Campbell, Brian Ferrall,
Ben Hur, Robert Van Nest
TYPE OF PROCEEDING:
Oral Argument on Motion for Summary Judgement and Tutorial
9:00 a.m. Court in session
Court - appearances by counsel. Forty five minutes aside to argue summary judgement then break.
Begin tutorial thereafter. By way of preparing have read motions and replies.
Mr. Robert Van Nest - primarily hear to answer Court’s answers. Prepared short presentation. Motion
rest on basis proposition. UNM has never complied with requirements. Disclaimer rules apply, both
agree on facts of chronically. Disagreement is legal proposition. Terminal disclaimer rules. (Slide 3)
October 1, 1998: PTO’s double patenting rejection. In order to get patent with terminal disclaimer commonly owned. Terminal Disclaimer filed by UNM in 1999. UNM disclosed they are the owner of record
of 100 percent interest in the application. Common ownership rules - same company must own 100
percent of both patents. Common ownership require 100percent of common ownership. Unenforceability.
‘321 Patent to UNM in 1996. Assigned interest of invention and any and all patents thereon. Mr. Draper
was never employed by UNM, corrected by reassignment from UNM to Sandia Labs, interest. In 1996 1
‘321 had two owners, UNM and Sandia National Labs. Years later STC is claiming that reassignment
provided to Sandia Labs rights in ‘998. Mr. Draper never had any rights in the 998. STC admits that
Sandia’s Bruce Draper is not an inventor of in the ‘998 patent. ‘321 is jointly owned by UNM and Sandia
Labs. ‘998 had two inventors and they both assigned interest to UNM. STC representation that it is the
sole owner of the ‘998 patent. Several cases filed and representation to other agencies. Representation
by STC to patent office. Request for certificate of correction, assignee of record of entire interest.
Power of Attorney in February 2011. ‘321 ownership - STC and Sandia National Lab. ‘998 - UNM, 2000
and then STC in 2007. Common ownership - time line. No common ownership exists. Dispute STC recognizes something is wrong. In 2011 STC. UNM assigned rights in ‘998 to Sandia Corporation.
Mr. Draper concedes tat he was never an inventor on ‘998. STC admits that Bruce Draper is not an
inventor in ‘998 patent. Ownership flows from inventorship. Mr. Draper had no ownership rights to
convey. As of November 2011, common ownership did not exist.
Court - How does continuation aspect relate to ownership rule.
Mr. Van Ness - does not come into play because Mr. Draper was not an inventor in the ‘998. Mr. Draper
could give away rights in the ‘321. Continuation in part is different than a continuation. ‘998 is not a
continuation of ‘321, just a continuation in part. ‘998 added new matter in which Mr. Draper did not have
a role in. December 2011 - STC created another assignment, 21 and 998 to Sandia Corporation.
Original assignment in October 1996, Assignment to Sandia National Labs. No Common ownership after
December 2011. Sandia National Labs and Sandia Corp are distinct entities. Federal law recognizes the
existence of Sandia National labs. Do not believe Sandia is an agency but owned by Dept of Energy.
Federally contracted agency. Sandia labs owns the actual property, buildings etc. Sandia is not a private
corporation, they are a separate entity. Since National labs holds many patents and property, they are a
Chiwewe case, Judge Parker oversaw case.
Mr. Rolf Stadheim - housekeeping matters. Intel reply brief, did not comply with local rules. From original
brief to reply brief Intel changed argument. Find today, after saying that Sandia is a federal agency, now
saying a GOCA. Three period of times reference to motion. December 1, 2011. December 30, 2008 and
time of 998 patent issue. Three contentions were 1. Sandia legal entity. 2. Judicial estoppel. 3. Draper
had to been inventor to have a transfer of ownership. Sandia National labs is not a legal entity. Here on
motion for summary judgement. Testimony of Mr. Vegue from deposition. Sandia is a facility owned by
Dept of Energy, contractor by Sandia Corp. Sandia Corp manages Sandia Labs. Sandia National labs,
government owned/contractor. US government owns property, land/buildings. Sandia corp runs the
whole things, Sandia corp does business as Sandia labs.
Mr. Vogt - if you go off of patent website, they use the filing form. Filing form is prepared by Chief patent
lawyer from Sandia lab. They attached underlying assignment which is Sandia lab. Sandia Corps uses
Court - does Sandia National labs employ people.
Mr. Stadbeim- does not. They receive check from Sandia Corp. Terms of legal question before the court.
Is there an genuine issue, Sandia lab an entity. Based on what Is before today, testimony from lawyer
from Sandia Corp, not a legal entity. Facility, trademark, d.b.a. that Sandia Corp uses. Cases presented.
None of cases state that Sandia National labs is a legal entity. Sandia National labs are used in three
different ways. Statutes used. Purposes of today, genuine issues of material fact. Other issue, whether it
is a requirement that Mr. Draper be an inventor for assignment be valid. Back in early 90's, four engineers
worked together. Three for UNM and 1 for Sandia. Research document prepared. That document was
later was later copies into a patent application. All four individuals signed a singe document assigning that
work to the university. Referred to singular, the invention. Two entities had common ownership, UNM
and Sandia. In assignment from NM to Sandia. Patent office granted that 998 would be a continuation of
321 patent. Common ownership. There were many mistakes over time.
Court- did Mr. Draper have creative input in ‘998.
Mr. Stadheim - when assignment where made from Mr. Draper and other inventors it was for the whole
ball of wax. It is true in all cases there has to be an inventor and assignment. In a case like this there is
no law have to split case up and trace it as to who did what. In assignment from Unm to Sandia national
labs, they assigned everything. Believe assignment was made before disclosure, common ownership
Mr. Van Nest - Reply. Judicial estoppel. STC has represented to courts, agencies etc that they were the
sole and exclusive owner of ‘998. They should be bound by repeated statements made, exclusive owner.
STC has changed position and Court’s have relied on position. Prejudice on Intel. Change of
representation by STC/UNM. Mr. Draper was not an inventor. Only basis upon any claim that Sandia lab
has an ownership in ‘998, assignment from Draper. Other inventors are irrelevant, they assigned to Unm.
Mr. Draper was not an inventor in ‘998. Continuation in part is different than a Continuation. Cases cited.
Patents ‘321 and ‘998 are different. Present - Sandia National labs is a facility that owns property.
1996, UNM corrects mistake by assigning Drapers’s interest to Sandia National labs. Sandia is a separate
facility, not a corporation. Standing can be corrected going forward.
court - questions mr. Steidam. Sandia Corp d.b.a. as Sandia national labs. Sandia Corp has not been
consistent itself in use of d.b.a. Two cases from this district. Mattic vs Sandia Corp, 05cv0453. Sandia
Corp denied D.B.A. Longoria v Sandia 10cv0794, Sandia Corp stated d.b.a.
Stiendhim - response.
10:42 a.m. Aspect of hearing under submission Break before tutorial, begin at 11:00 am
11:00 a.m. Court in session.
Court - tutorial presentation by parties.
Stc will have Dr. Mack submit Lithograph tutorial (technology of the ‘998 patent)
Lithography. Chip - each chip is made up of million os transistors that are wired
together to make up a circuit. Patterns are built up in many layers to create the result. Many types of chip
patterns. Patterns printed with lithography to make transistors are as small as 25nm today (3k times
smaller that human hair). Animation of “what is lithography”
Steps for lithography. Progress in
chipmaking. Each year, chips become more powerful and less expensive. EUV Lithography (Extreme
Ultraviolet) Double patterning, another to making things smalls. Combine two separate patterns to make
one final pattern that could not have created in a single lithography step. Single vs Double patterning.
Nonlinear (low contrast) and linear (high contrast) film. Summary of tutorial.
11:55 a.m. Court in recess, lunch break
1:16 p.m. Court in session
Mr. Stadheim - request deposition of
Mr. Not inclined to agree for deposition.
Court- will not make ruling today on oral motion. If counsel would like to proceed by written motion,
counsel to respond etc.
1:20 p.m. Mr. Brian Ferrall - tutorial.
Mr. Hur - continued on tutorial. Semiconductor technology. Size of semiconductor features has
shrunk exponentially over time. Two basic components in making chips. Circuit Design and process
technology. Steps in process technology. Advances of semiconductor technology. How semiconductors
are made. History of Photolithography. Basic of photolithography.
Mr. Brian Ferrall - continuation of tutorial. Limits of photolithography. Spatial Frequencies. Methods used
to overcome Photolithographic limits. 1. Advances in projection and optics technology. 2. Advances in
lithograph processing and patterning. Photo resist. Spacer or Edge-defined techniques. Double
patterning techniques for printing finer or denser features. ‘998 patent.
Court - counsel to give the court copy of tutorial presentations within 10 days. Court encourages counsel
continue efforts on discussions. Decision on summary judgement within 30 days.
2:17 p.m. Court adjourned.
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