STC.UNM v. Intel Corporation

Filing 227

DECLARATION re 226 Response in Opposition to Motion of Brian L. Ferrall by Intel Corporation (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Atkinson, Clifford)

Exhibit 2

Kevin Bieg
11/17/2011

STC.UNM vs.
Intel Corporation
Page
UNITED STATES DISTRICT COURT
FOR THE
DISTRICT OF NEW MEXICO

No. 10-CV-01077
STC.UNM
Plaintiff,
VS.

COPY

INTEL CORPORATION
Defendant,

Videotaped Deposition of KEVIN BIEG
November 17, 2011
9:08 a.m.
201 Third Street N.W., Suite 1850
Albuquerque, New Mexico
PURSUANT TO THE APPLICABLE RULES OF CIVIL
PROCEDURE this deposition was:
TAKEN BY: BRIAN L. FERRALL
Attorney for Intel

Reported by:

Marcia J. Schick, CM
Hughes Southwest Court Reporters
110 2nd Street S. W. Suite 505
Albuquerque, New Mexico 87102

HUGHES SOUTHWEST COURT REPORTERS
110 Second Street, SW, Suite 505

505-843-8211
Albuquerque, New Mexico 87102

STC.UNM vs.
Intel Corporation

Kevin Bieg
11/17/2011
Page 2
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APPEARANCES:
For the Plaintiff:
STADHEIM & GREAR
Attorneys at Law
Wrigley Building Tower
400 North Michigan Avenue
Suite 2200
Chicago, Illinois 60611-4102
BY: Mr. Keith A. Vogt
(312-755-4400)

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Exhibit No. 91 Letter
Sept. 3, 1993 to
Quintana/Ojanen
SNL141 - 142

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Exhibit No. 92 Letter
42
Sept. 21, 1993 to
Ojanen/Quintana
STC 0076907
Exhibit No. 93 Letter
43
Dec. 1, 1993 to
Quintana/Chafm
SNL170

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For the Defendant:
KEKER & VAN NEST
Attorneys at Law
710 Sansome Street
San Francisco, California 94111
BY: Mr. Brian L. Ferrall
(415 - 391 - 5400)
and
ATKINSON, THAL & BAKER
Attorneys at Law
201 Third Street N.W. Suite 1850
Albuquerque, New Mexico 87102
BY: Justin Rodriguez
(505-764-8111)

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is
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Exhibit No. 94 Letter
45
Dec. 16, 1993
to Olsen/Quintana
SNL171
Exhibit No. 95 Memorandum
Oct. 1, 1996 to
Gottlieb/McMillan
SNL235 -236

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Exhibit No. 96 Letter
48
Jan. 6, 1994 to
Quintana/Cone
SNL194
Exhibit No. 97 Letter
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Aug. 4, 1997 to
Quintana/Sobelman
SNL237 - 241

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Page 4

Videographer: Margo Moir

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Exhibit No. 98 Notice of
Recordation
SNL7-10

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Exhibit No. 99 Email
July 29, 2005 to
Baird/Kemp
SNL374-376
Exhibit No. 100 Email to
Adams/Kemp
SNL379-380

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INDEX

EXAMINATION OF KEVIN BIEG
BY MR. FERRALL
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BY MR. VOGT
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INDEX TO EXHIBITS

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Exhibit No. 83 MOU/Intellectual 22
Property
SNL337-349
Exhibit No. 84 Funds-in
Agreement
SB 00101592-602

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Exhibit No. 86 Purchase Order 34
and Correspondence
SB00101466-470

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Exhibit No. 85 Request for
30
Cert. of Correction
65558D00000280-281

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Exhibit No. 101 Commercialization
Agreement
SNL242-245
Exhibit No. 102 Email
66
April 24, 2009 to
Baird/Howard
SNL385

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Page 5

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Exhibit No. 106 License
Admin. Schedule
SNL253-254

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Exhibit No. 87 Face Sheet and 35
Amended Statement
of Work
SB 00101603-608
Exhibit No. 88 PALS Data Base 36
Information
SNL72-74
Exhibit No. 89 Notice of
39
Invention
Disclosure SNL137
Exhibit No. 90 Notice of
40
Invention
Disclosure SNL138

Exhibit No. 103 Email
66
April 24, 2009 to
Golden/Baird
SNL391-392
Exhibit No. 104 Memo to
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Morgan/Baird
SNL248
Exhibit No. 105 Email
69
to Allen et al.
/Kemp June 22, 2009
SNL395-397

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Exhibit No. 107 Letter
Dec. 3, 2009 to
Allen/Kuuttila
SNL250
Exhibit No. 108 Letter
May 4, 20(0 to
Allen/Kuuttila
SNL257

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Exhibit No. 109 Letter
May 4, 2010 to
Allen/Kuuttila
SNL258
Exhibit No. 110 Letter
Mar. 7, 2011 to
Allen/Kuuttila
SNL261-263

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72

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2 (Pages 2 to 5)
HUGHES SOUTHWEST COURT REPORTERS
110 Second Street, SW, Suite 505

505-843-8211
Albuquerque, New Mexico 87102

Kevin Bieg
11/17/2011

STC.UNM vs.
Intel Corporation
Page 22

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(Exhibit No. 83 - MOU/Intellectual Property SNL337-349.)
Q So, we have marked as Exhibit 83 a document that
appears to be an MOU on intellectual property that has
control numbers SNL337 to 349. And do you recognize this,
Mr. Bieg?
A Yes, I drafted it.
Q Okay. So, this is the MOU that we have been
referring to a little bit already today?
A Right.
Q You had responsibility for drafting it?
A Yes, based upon an earlier version of it.
Q What do you mean by that? Was there earlier -A There was an earlier version which I think
actually may be referenced in here somewhere. But there was
an earlier version than this, which probably was -- probably
predated this one by five years.
Q Do you know if that version was produced?
A I don't think so, no.
Q Do you know if you still have it?
A I am sure I can find a copy of it, yeah.
Q I think we would like that produced if you can.
A Okay.
(Request for Documentation.)
MR. STELZNER: Do me a favor, since I am fading
fast. Just send me an email and if you don't mind copy
,

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counsel as well.
MR. FERRALL: Yeah.
Q Do you recall any major changes between this one
and the MOU in the prior version?
A I don't think there were substantial changes. I
think there were some but not substantial.
Q While we have this out, let me just ask you one
thing here. This refers to a contract number
DE-AC04-94AL8500.
A Right.
Q One thing I am struggling with is understanding
these different contracts and who they are with. Can you
explain what that contract is?
A This is a prime contract between Department of
Energy and Sandia Corporation for the operation of Sandia
National Laboratories. 94 indicates that it was executed
about in 1994, which is the time that Lockheed Martin took
over operation of Sandia.
Q And those contracts run, you said, 10 years or
something.
A Something like that. It is up for renewal, I
don't know, it is up for renewal at the end of this next
calendar year.
Q And, do you know -- well, strike that. Prior to
this contract, the 8500 contract, there was some predecessor

contract between Department of Energy and Lockheed Martin;
right?
A Yeah. The predecessor contract was with AT&T who
operated Sandia National Labs since the end of World War II.
Q All right.
MR. VOGT: You mind if I ask a question?
MR. FERRALL: Go ahead.
.
MR. VOGT: Do you know that contract number of the
predecessor contract?
THE WITNESS: I can find it. I wrote it down
yesterday because it came up in Bruce'. Oh, yes. That is
it. That is the prior prime contract.
MR. STELZNER: Read it into the record.
THE WITNESS: DE-AC04-76DP00789.
(Discussion off the record.)
Q (By Mr. Ferrall) Was the prior contract
produced to us in the case, do you know?
A No.
Q Do you believe you still have it?
A I am sure we can find it.
MR. FERRALL: I will put that on the list.
(Request for Documentation.)
Q (By Mr. Ferrall) So, can you explain to me
generally how intellectual property that is
developed by Sandia employees is owned by Sandia
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and/or the Department of Energy?
A Yeah. The first order, the Department of Energy
owns anything that is created at Sandia National Lab
according to the Atomic Energy Act I think it is referred
to in'here. I think it is 42 USC 5908 and it is an
automatic vesting statute. So, then in addition to that, we
have what Bruce talked about yesterday is the Proprietary
Information and Innovation Agreement which employees signec
after Lockheed Martin took over. You indicated yesterday
the date he signed his was like October, 1993. That was
about the time that Lockheed Martin took over.
So, since that time, all new employees have signed
that PIA, we call it, which assigns their rights to Sandia
and then, in addition, when a particular patent, for
example, patent application is filed, we have them file an
assignment as well, which assigns whatever rights they have
remaining to Sandia. The prime purpose of that, really, is
to have a document we can record at the PTO.
Q So, going back to the first part of your answer,
which is you said the Department of Energy gets an automatic
vesting. Where does that leave Sandia, then?
A Yeah. So the part that I left out is we have a
process called a waiver process and the waiver you can see
on the DOE website. Basically, when we want to take title
to an invention, we do it under this waiver process. We

7 (Pages 22 to 25)
HUGHES SOUTHWEST COURT REPORTERS
110 Second Street, SW, Suite 505

505-843-8211
Albuquerque, New Mexico 87102

STC.UNM vs.
Intel Corporation

Kevin Bieg
11/17/2011
Page 2 6

Page 28

go through DOE and then to us.

1 request DOE to waive title to Sandia and most times they do
that unless there is some like national security sensitivity
3
or some such thing.
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Q So, if I understand, DOE waives title so Sandia
takes the title that would otherwise be vested in the DOE?
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A Correct.
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Q And are you aware that that is what happened with
8 respect to the 321 patent?
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A That did happen, yes.
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(Exhibit No. 84 - Funds-in Agreement SB 00101592-602.)
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Q So, Exhibit 84 is a multi-page document that has
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control numbers SB101592 to 602. And, as you can tell,
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maybe from the stamp, this was produced by Dr. Brueck but it
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appears to be documents that would have been exchanged
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between UNM and the Department of Energy, at least. I am
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wondering if you're familiar with documents such as this,
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Exhibit 84?
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A Yes, I am. I believe we produced part of this
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document ourselves, actually.
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Q Maybe I just missed your production of it. Can
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you explain what this is.
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A Let's see. To my knowledge, this is a funds-in
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agreement or work-for-others agreement, where basically the
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University of New Mexico in this case was sending us funds
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to do some prescribed work, which is defined, I think, in

Q So, for example, the first page indicates an
amount of $134,167. And that is an amount that is going to
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be paid to DOE?
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A It will be -- let's see -- eventually it will get
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Q And how it gets there, you're not exactly sure?
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A Not exactly sure.
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Q Now, attached to the Purchase Order and let's call
10 it the face page, I guess, are some appendices. Are you
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A Somewhat. I am somewhat familiar with the terms
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of work-for-others agreements. I haven't actually studied
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this particular one.
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Q Do you know who prepares these appendices? Is it
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DOE or Sandia?
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A I believe these are standard appendices with our
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work-for-others agreements. They are agreed upon with the
19 Department of Energy and usually if somebody wants to make a
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change to it, DOE has to approve of that change. We have a
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group in Sandia that works these work-for-others agreements
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both with what we call nonfederal entities, which the
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University would be, or other federal entities, like the
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Department of Defense.
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Q Now, this contract number that is listed on Page

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2

1 the Statement of Work that is probably attached to this.
Q So, this refers to another contract number on the
top of the second page, DE-FI04-93AL83300. Right?
A Correct.
Q Is there something about that contract number that
indicates what type of contract it is; do you know? Can you
7 tell from the contract number?
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A Let's see. I am not in the contract organization.
About the only thing that I would infer from that, I think,
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1 0 93 indicates the year. AL probably means it went through
1 1 the DOE Albuquerque operation office. That would be my
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guess.

Q I was wondering whether the FI refers to funds-in?
A I would guess it does but I don't know for sure.
Q So, these type of agreements, which I think you
referred to earlier today as a work-for-others agreement
also; the same type of agreement?
A Correct.
Q Those are between a third party and DOE?
A Let's see. So, I think the funding comes through
DOE and DOE has to approve all these. But so we're -- let's
see -- the contract is actually, I guess, with Sandia
Corporation. I mean, we're contracted to do some work but
because we're a go-co or something like that, I am not sure
exactly how the funds gets into Sandia. I think it has to

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2, are you aware as to whether that contract number
reflects -- strike that. Let me rephrase that.
Are you aware whether the 321 patent was
conceived, if you will, pursuant to work under this Contract
No. 83300?
A Yes. I don't think I can answer that directly. I
can tell you -- I mean, all I have is what is on the record.
So -Q From your review of the Sandia's records, what do
you know?
A Relying upon Bruce Draper's TA, I would say, no.
Q Did you review any other record for that?
MR. STELZNER: For that answer?
MR. FERRALL: That question.
A I have looked at the documents that have been
produced. I am aware, and as I say, those are primarily out
of our patent files.
MR. FERRALL: Let me -MR. STELZNER: I thought that was what you were
looking for.
MR. FERRALL: I wasn't, but I'll ask him a
question about that.
Q So, your counsel has helped me by finding Exhibit
72, the Technical Advance that Mr. Draper spoke about and
what is it about that document that suggests to you that the

8 (Pages 26 to 29)
HUGHES SOUTHWEST COURT REPORTERS
110 Second Street, SW, Suite 505

505-843-8211
Albuquerque, New Mexico 87102