Memory Integrity LLC v. Intel Corporation
Filing
216
Opinion and Order - Intel's Motion for Summary Judgment (Dkt. 170 ) is GRANTED. Signed on 4/12/2016 by Judge Michael H. Simon. (mja)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
MEMORY INTEGRITY, LLC,
Plaintiff,
Case No. 3:15-cv-00262-SI
OPINION AND ORDER
v.
INTEL CORPORATION,
Defendant.
John Mansfield, MANSFIELDLAW, 121 SW Morrison Avenue, Suite 400, Portland, OR 97204;
Jonathan Baker, Michael Saunders, and Gurtej Singh, FARNEY DANIELS, PC, 411 Borel Avenue,
Suite 350, San Mateo, CA 94402. Of Attorneys for Plaintiff.
Renée E. Rothauge, MARKOWITZ HERBOLD, PC, 1211 SW Fifth Avenue, Suite 3000, Portland,
OR 97204; Michael J. Summersgill, Jordan L. Hirsch, and Sarah Beigbeder Petty, WILMERHALE,
LLP, 60 State Street, Boston, MA 02109. Of Attorneys for Defendant.
Michael H. Simon, District Judge.
In 2005, two sophisticated companies—Intel Corporation (“Intel”) and Sanmina-SCI
Corporation (“Sanmina”)—entered into an agreement in which Intel agreed to disclose to
Sanmina highly confidential information that Sanmina requested as part of its attempt to develop
potentially lucrative technology that would be compatible with Intel products. In return for this
information, Sanmina agreed never to sue Intel for patent infringement based on any of Intel’s
PAGE 1 – OPINION AND ORDER
products that included any of the disclosed technologies. During Sanmina’s development efforts,
the U.S. Patent and Trademark Office granted to Sanmina several patents, but Sanmina failed to
create any marketable products. Ultimately, Sanmina ended its research using Intel’s disclosed
information and sold its patents to Memory Integrity, LLC (“Memory Integrity”). In this lawsuit,
Memory Integrity seeks to hold Intel liable for patent infringement, which Intel argues is
prohibited by the covenant not to sue that Memory Integrity expressly assumed when it
purchased Sanmina’s patents.
Memory Integrity asserts infringement claims against Intel under five patents: U.S. Patent
Nos. 7,103,636 (the “’636 patent”), 7,107,409 (the “’409 patent”), 7,296,121 (the “’121 patent”),
8,572, 206 (the “’206 patent”), and 8,898,254 (the “’254 patent”). These patents are all directed
toward maintaining cache coherence in multiprocessor computer systems.1 Based on the
covenant not to sue that Intel negotiated with Memory Integrity’s predecessor in interest,
Sanmina, Intel asks the Court to grant summary judgment in favor of Intel on: (1) all Memory
Integrity’s infringement claims; (2) Intel’s counterclaim for declaratory judgment; and (3) Intel’s
seventh affirmative defense. For the reasons discussed below, the Court grants Intel’s motion.
1
Cache coherence problems arise in multiprocessor computer systems in which the
processors share a main memory. The main memory stores data needed or generated by the
system, but each individual processor also uses its own smaller, faster “cache” memory to store
copies of data upon which the processor regularly operates. When the data is stored in the
processor’s cache, the processor may change the data. The data is then saved back to the main
memory after operations conclude. In the interim, changes to data in an individual cache may
cause the master copy in the main memory to become “stale” or out-of-date, and multiple
processors may be using different versions of the same data, leading to cache incoherence.
Methods of maintaining cache coherence, such as those described by the patents-in-suit, ensure
that processors have access to the most up-to-date copies of data and that the system does not
generate inconsistent versions of data. See Memory Integrity, LLC v. Intel Corp.,
2016 WL 1122718, at *4 (D. Or. Mar. 22, 2016); Comput. Cache Coherency Corp. v. Via Techs.,
Inc., 2008 WL 4369770, at *2 (N.D. Cal. Sept. 23, 2008).
PAGE 2 – OPINION AND ORDER
STANDARDS
A party is entitled to summary judgment if the “movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
Fed. R. Civ. P. 56(a). The moving party has the burden of establishing the absence of a genuine
dispute of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving party
will bear the burden of proof at trial, “the movant must affirmatively demonstrate that no
reasonable trier of fact could find other than for the moving party.” Soremekun v. Thrifty Payless,
Inc., 509 F.3d 978, 984 (9th Cir. 2007). In patent litigation, contractual defenses to patent
infringement—such as a covenant not to sue or an implied license—are affirmative defenses that
the defendant must prove. See Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 1461 (Fed. Cir. 1990),
overruled on other grounds by A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020
(Fed. Cir. 1992) (“And where the moving party has the burden of proof on a claim or defense
raised in a summary judgment motion, it must show that the undisputed facts establish every
element of the claim or defense.”); Met-Coil Sys. Corp. v. Korners Unlimited, Inc., 803 F.2d 684,
687 (Fed. Cir. 1986) (“As the alleged infringer, [the defendant] has the burden of showing the
establishment of an implied license.”).
The court must view the evidence in the light most favorable to the non-movant and draw
all reasonable inferences in the non-movant’s favor. Clicks Billiards Inc. v. Sixshooters Inc., 251
F.3d 1252, 1257 (9th Cir. 2001). Although “[c]redibility determinations, the weighing of the
evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of
a judge . . . ruling on a motion for summary judgment,” the “mere existence of a scintilla of
evidence in support of the plaintiff’s position [is] insufficient . . . .” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 252, 255 (1986). “Where the record taken as a whole could not lead a rational
trier of fact to find for the non-moving party, there is no genuine issue for trial.” Matsushita Elec.
PAGE 3 – OPINION AND ORDER
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citation and quotation marks
omitted).
BACKGROUND2
A. Sanmina’s “Project Isis” and the Covenant Not to Sue
In the mid-2000s, Sanmina and one it its subsidiaries, Newisys, Inc. (“Newisys”) tried to
develop a “node controller” chip capable of connecting multiple Intel processors together in a
multiprocessor computer system.3 Sanmina called this development effort “Project Isis.” In order
to make the chip compatible with Intel processors, Sanmina needed detailed confidential
information about how Intel’s processors worked. This confidential information included
specifics about how Intel’s processors maintain cache coherence in a multiprocessor system.
Intel agreed to provide Sanmina with the requested confidential information on the express
condition that Sanmina sign a covenant not to sue Intel based on Intel’s use of any of the
disclosed technology.
Before finalizing the covenant not to sue and delivering its secret documents, Intel
negotiated several confidentiality agreements with Sanmina. On July 30, 2003, and August 23,
2003, Intel and Sanmina entered into two Corporate Non-Disclosure Agreements (“CNDAs”),
which require Sanmina and its successors to maintain the confidentiality of Intel’s confidential,
proprietary, and trade secret information. Additionally, Intel and Samina entered into a
Restricted Use Non-Disclosure Agreement (the “RUNDA”) on August 23, 2005. The RUNDA
2
Because the parties assert that this case involves highly sensitive trade secrets, the Court
limits its discussion of facts to the information included in the parties’ redacted, publicly-filed
briefs. In order to avoid disclosing potentially confidential information, the Court refers to Intel’s
cache coherence technologies only in broad terms.
3
For ease of reference, the Court generally refers to Sanmina and Newisys collectively as
“Sanmina.”
PAGE 4 – OPINION AND ORDER
requires Sanmina and its successors to keep a record of all individuals who were given access to
Intel’s confidential information. According to the RUNDA, Intel’s confidential information
would:
remain confidential until it becomes: (a) rightfully in the public
domain other than by breach of a duty to Intel; or (b) rightfully
received from a third party without any limitation on disclosure; or
(c) rightfully known to Recipient without any limitation on
disclosure prior to its receipt from Intel; or (d) independently
developed by Recipient’s employees who have not had access to
the Confidential Information, or guidance from those who have
had access; or (e) generally made available to third parties by Intel
without restriction on disclosure.4
Also on August 23, 2005, Intel and Sanmina entered into an agreement (the “IntelSanmina Agreement” or “ISA”) containing the covenant not to sue. The ISA primarily concerns
Intel’s disclosure of “Common System Interface” or “CSI” technology.5 The ISA provides that
Sanmina and its successors “shall not Assert6 any CSI Patent Claim against Intel” based on
Intel’s “manufacture, use, import, offer for sale or sale of any of [Intel’s microprocessors and
chipsets].”7 The ISA defines “CSI Patent Rights” as any rights that Sanmina or its successors
4
Dkt. 171-4 ¶ 6. The CNDAs contain similar descriptions of when Sanmina’s obligation
of confidentiality would terminate. See Dkt. 171-2 ¶ 4; Dkt. 171-3 ¶ 4.
5
According to Eric Morton, the lead Sanmina architect for Project Isis, “CSI was the bus
interface and protocol that Intel was designing in 2005/2006 for their future processors.”
Dkt. 170-1 at 32. The ISA defines “CSI” as “an electro-mechanical point-to-point information
path capable of carrying cache-coherence, I/O transactions, system related transactions,
configuration management transactions, interrupts and/or other related transactions between an
Intel microprocessor and [other components].” Dkt. 171-1 § 1.8. “CSI” was also referred to as
“QuickPath Interconnect” or “QPI” after Intel publicly announced the processors. See Dkt. 170-1
at 36-37; Dkt. 181-7.
6
The ISA defines “Assert” as “bring an action of any nature before any legal, judicial,
arbitration, administrative, executive or other type of body or tribunal that has or claims to have
authority to adjudicate such action in whole or in part.” Dkt. 171-1 § 1.1.
7
Dkt. 171-1 §§ 1.11, 2.1.
PAGE 5 – OPINION AND ORDER
own or control “at any time during the Capture Period”8 that “but for this Agreement, would be
infringed by one or more of Intel’s Products due in whole or in part to those products’ inclusion
or implementation of any portion of the CSI Enabling Information.”9 “CSI Enabling
Information” is defined as “all information provided by Intel to [Sanmina] that is (a) necessary or
useful in implementing CSI-enabled, CSI-compliant, or CSI-related technologies; and (but not
‘or’) (b) restricted by a duty of confidentiality, however arising and including that provided
under the RUNDA.”10 The ISA also specifies that Delaware law governs the agreement’s
interpretation.11
On March 3, 2006, Sanmina and Intel entered into a Restricted Secret Non-Disclosure
Agreement (the “RS-NDA”) regarding Sanmina’s duty to maintain the confidentiality of Intel’s
“Restricted Secret,” or “RS,” documents disclosed to Sanmina. Like the RUNDA, the RS-NDA
provides:
The obligations imposed by this RS-NDA shall not apply with
respect to Restricted Secret information that is: (a) rightfully in the
public domain other than by a breach of a duty to Intel;
(b) rightfully received by [Sanmina] from a third party without any
obligation of confidentiality; (c) rightfully known to [Sanmina]
without any limitation on use or disclosure prior to its receipt from
Intel; (d) independently developed by employees of [Sanmina]; or
(e) generally made available to third parties by Intel without
restriction on disclosure.12
8
The “Capture Period” is “any time on or prior to the tenth anniversary of the Effective
Date” of the ISA—i.e., from August 23, 2005, to August 23, 2015. Dkt. 171-1 § 1.2.
9
Dkt. 171-1 § 1.10.
10
Dkt. 171-1 § 1.9.
11
Dkt. 171-1 § 5.1.
12
Dkt. 171-5 at 15.
PAGE 6 – OPINION AND ORDER
After Sanmina signed the ISA and the several confidentiality agreements, Intel provided
confidential information to Sanmina specifically describing Intel’s implementation of cache
coherence mechanisms used in Intel’s processors. Sanmina’s Project Isis team then held training
sessions concerning Intel’s processor architecture and cache coherence protocol. Sanmina also
held biweekly telephone calls with Intel’s engineers and received confidential RS documents
from Intel. Intel and Sanmina each handled the RS documents with extreme care. Lead Sanmina
architect Eric Morton testified that Intel provided personalized hard copies of the RS documents
to the Project Isis team but did not give any Sanmina employees electronic copies of the
documents; if the Sanmina employees wanted to view the documents electronically, they had to
access the documents directly from Intel’s servers. Further, Sanmina tracked precisely who had
access to Intel’s confidential documents and even housed the Project Isis team in a separate and
secure wing at the Sanmina facilities.
Among the RS documents provided by Intel to Sanmina were: (1) “RS – Common
System Interface Specification, Enterprise MP Systems” (the “CSI Specification”);13 (2) “RS –
Thurley Platform Common System Interface (CSI) Training” (the “Thurley Document”);14 and
(3) “RS – OEM Technical Training Beckton (BMP)” (the “Beckton Document”).15 These RS
documents disclosed specific details about Intel’s implementation of its cache coherence
protocol.
13
Dkt. 170-16 (Revision 0.90); Dkt. 170-17 (Revision 0.8, Part A); Dkt. 170-18
(Revision 0.8, Part B).
14
Dkt. 170-15.
15
Dkt. 170-14.
PAGE 7 – OPINION AND ORDER
B. The Patents-in-Suit
Despite Intel’s disclosure of its confidential information to Sanmina, Project Isis failed to
yield marketable products. Sanmina ended the project in 2007. Based upon Sanmina and
Newisys’s work on solutions to the cache coherence problem, however, the U.S. Patent and
Trademark Office issued five patents to Sanmina, its subsidiaries, or its successor in interest.
Newisys filed applications for the ’636, ’409, and ’121 patents on May 28, 2002, March 22,
2002, and October 15, 2004, respectively. The U.S. Patent and Trademark Office issued the
’636, ’409, and ’121 patents on September 5, 2006, September 12, 2006, and November 13,
2007, respectively. Newisys assigned these three patents to Sanmina on September 28, 2008. On
December 15, 2011, Sanmina filed an application for the ’206 patent, but on June 4, 2013, before
the ’206 patent issued, Sanmina sold all its cache coherence patents to Memory Integrity. On
September 9, 2013, Memory Integrity filed an application for the ’254 patent, which is a
continuation of the ’206 patent. The U.S. Patent and Trademark Office issued the ’206 and
’254 patents to Memory Integrity on October 29, 2013, and November 25, 2014, respectively.
The five asserted patents share common inventors and have overlapping specifications.
The patents all describe methods of maintaining cache coherence in the same type of
multiprocessor system: a system of multiple processor clusters interconnected in a “point-topoint architecture.”16 The ’636 and ’409 patents detail a method known as “speculative probing.”
A processor’s request for data in the multiprocessor system goes through a “serialization point,”
defined in the patents as “[a]ny mechanism for ordering data access requests.”17 Before a request
16
Dkt. 170-3 at 27 (’636 patent at 20:55-63); Dkt. 170-4 at 25 (’409 patent at 18:5-14);
Dkt. 170-5 at 43 (’121 patent at 31:23-27); Dkt. 170-6 at 24 (’206 patent at 20:57-59); Dkt. 1707 at 23 (’254 patent at 18:37-39). Docket numbers are used only in the first citation to the
patents-in-suit.
17
’636 patent at 5:43-44; ’409 patent at 4:65-66.
PAGE 8 – OPINION AND ORDER
arrives at a serialization point, the system’s cache coherence controller sends out “probes” to
determine whether any cache memory locations have modified copies of the requested data.18
According to the patents, sending speculative probes before a request reaches the serialization
point increases the efficiency of the system.
Speculative probing helps ensure cache coherence, but may also generate excessive probe
traffic if all remote or all local caches are probed regardless of whether they contain the
requested data. The ’636 patent is directed at speculative probing of “remote” processor clusters,
i.e., those that do not contain the processors requesting the data.19 The ’409 patent is directed at
speculative probing of “local” processor clusters, i.e., those that contain the processors
requesting the data.20
The ’121 patent describes a technique for further reducing probe traffic. The patent
purports to reduce probe traffic by using a probe filtering unit (“PFU”). In the system claimed by
the patent, the cache coherence controller receives a request for data and then sends a probe to
the PFU. The PFU contains “probe filtering information,” which allows the PFU to determine if
the requested data is located in cache memory within the system.21 If no cache memory contains
the requested data, the PFU does not send any probes. If the PFU determines that a processor’s
cache may contain a copy of requested data, the PFU sends a probe to that cache alone.
The related ’206 and ’254 patents each describe a technique for purportedly increasing
the speed of memory transactions. The patents describe a multiprocessor system that has both
18
’636 patent at 6:16-18; ’409 patent at 5:38-40.
19
’636 patent at 3:3-7.
20
’409 patent at 2:67-3:5.
21
’121 patent at 2:67-3:1.
PAGE 9 – OPINION AND ORDER
“local memory” and “remote memory.”22 Local memory is stored in the same cluster as a given
processor, and remote memory is all memory located outside a given processor’s cluster.
“Protocol engines” process requests for local and remote memory.23 The patents describe a way
to improve the efficiency of memory transaction processing by dividing the processing workload
among multiple protocol engines, according to whether the targeted memory is local or remote.
This is analogous to using one-way streets to improve traffic flow and reduce congestion.
C. Memory Integrity’s Infringement Contentions Against Intel
When Memory Integrity purchased the five patents-in-suit from Sanmina, Memory
Integrity agreed to be bound by the covenant not to sue contained in the ISA. Memory Integrity
expressly agreed “to be bound by, and to honor, all Existing Agreements” specified by Sanmina,
including the covenant not to sue Intel.24 Notwithstanding its agreement to be bound by the
covenant not to sue, Memory Integrity sued Intel in the U.S. District Court for the District of
Delaware on November 1, 2013. On February 13, 2015, the District Court in Delaware granted
Intel’s motion to transfer the case to the District of Oregon.
In its responses to Intel’s requests for admission, Memory Integrity acknowledges that
some of its infringement claims rest, at least in part, on cache coherence functionalities that Intel
asserts it disclosed to Sanmina. In Response No. 2, “Memory Integrity admits that at least one
Accused Product infringes the ’636 patent in part because of its Source Snooping functionality as
described in Memory Integrity’s infringement contentions.”25 In Response No. 11, “Memory
22
’206 patent at 7:32-38; ’254 patent at 7:35-40.
23
’206 patent at 1:48-67; ’254 patent at 1:51-2:4.
24
Dkt. 170-9 § 7.2; Dkt. 170-10 at 3-4.
25
Dkt. 172-13 at 7.
PAGE 10 – OPINION AND ORDER
Integrity admits that it contends that [an Accused Product] applies a hash algorithm to addresses
to select particular Cache Boxes as described in Memory Integrity’s infringement contentions.”26
And in Response No. 27, “Memory Integrity admits that it contends that [an Accused Product]
infringes the ’206 and ’254 patents in part because of the manner in which the Cache Boxes
process transactions from the Cores as described in Memory Integrity’s infringement
contentions.”27
DISCUSSION
In response to Intel’s motion for summary judgment, Memory Integrity asserts that the
ISA’s covenant not to sue does not bar Memory Integrity’s infringement claims against Intel.
Memory Integrity makes several alternative arguments for this conclusion. Memory Integrity
argues that the ISA is unenforceable due to its failure to include an essential term and also due to
vagueness. Memory Integrity further argues that the ISA does not apply to the information
purportedly disclosed by Intel to Sanmina because Intel has not shown that this information is
“CSI Enabling Information.” According to Memory Integrity, Intel has failed to establish that the
information is CSI Enabling Information for two alternative reasons: (1) Intel has failed to
present sufficient evidence to establish that the information was useful to Sanmina in
implementing CSI-related technologies; and (2) the information was not “confidential” either at
the time of disclosure or at the time Memory Integrity filed its lawsuit. Finally, Memory Integrity
argues that Intel has failed to establish that Memory Integrity’s infringement contentions are
based on the information that Intel disclosed to Sanmina.28
26
Dkt. 172-13 at 11.
27
Dkt. 172-13 at 18.
28
Memory Integrity concedes that Sanmina or its affiliates and successors owned or
controlled the alleged CSI Patent Rights during the Capture Period.
PAGE 11 – OPINION AND ORDER
A. Whether the ISA Is Enforceable
1. General Principles of Contract Interpretation Under Delaware Law
In the ISA, the parties agree that Delaware law applies. Under Delaware law, “[t]he
proper construction of any contract, including an insurance contract, is purely a question of law.”
Rhone-Poulenc Basic Chemicals Co. v. Am. Motorists Ins. Co., 616 A.2d 1192, 1195
(Del. 1992). When a court interprets a contract, “the threshold inquiry when presented with a
contract dispute on a motion for summary judgment is whether the contract is ambiguous.
Ambiguity does not exist simply because the parties disagree about what the contract means.”
United Rentals, Inc. v. RAM Holdings, Inc., 937 A.2d 810, 830 (Del. Ch. 2007) (footnotes
omitted). Additionally, “[a] term is not ambiguous simply because it is not defined.” Sassano v.
CIBC World Markets Corp., 948 A.2d 453, 468 n.86 (Del. Ch. 2008). Ambiguity exists “only
when the provisions in controversy are reasonably or fairly susceptible of different
interpretations or may have two or more different meanings.” Rhone-Poulenc, 616 A.2d at 1196.
A provision is not reasonably susceptible to different interpretations when one party’s
interpretation “produces an absurd result or one that no reasonable person would have accepted
when entering the contract.” Osborn ex rel. Osborn v. Kemp, 991 A.2d 1153, 1160 (Del. 2010).
When interpreting a contractual provision, courts “will give priority to the parties’
intentions as reflected in the four corners of the agreement.” GMG Capital Invs., LLC v.
Athenian Venture Partners I, L.P., 36 A.3d 776, 779 (Del. 2012). If a court finds that a provision
is ambiguous, however, “the interpreting court must look beyond the language of the contract to
ascertain the parties’ intentions.” Eagle Indus., Inc. v. DeVilbiss Health Care, Inc., 702 A.2d
1228, 1232 (Del. 1997); Cont’l Warranty, Inc. v. Warner, 108 F. Supp. 3d 256, 260 (D.
Del. 2015) (“Delaware law requires ‘uncertainty in the meaning and application of contract
language’ before courts may consider extrinsic evidence.” (quoting Eagle Indus., 702 A.2d at
PAGE 12 – OPINION AND ORDER
1232)). The court may accomplish this task “by the summary judgment procedure in certain
cases where the moving party’s record is not prima facie rebutted so as to create issues of
material fact.” Eagle Indus., 702 A.2d at 1232-33.
Delaware follows the “objective” theory of contracts—meaning that “a contract’s
construction should be that which would be understood by an objective, reasonable third party.”
HIFN, Inc. v. Intel Corp., 2007 WL 1309376, at *9 (Del. Ch. May 2, 2007). To form a contract,
the parties must manifest “mutual assent to the exchange and consideration,” and “[o]vert
manifestations of assent rather than subjective intent control contract formation.” Ramone v.
Lang, 2006 WL 905347, at *10 (Del. Ch. Apr. 3, 2006). There is no mutual assent “when both
parties unknowingly attach materially different meanings to a contract term.” Cont’l Warranty,
108 F. Supp. 3d 250, 254 (D. Del. 2015). There must be “a complete meeting of the minds on all
material terms” in order for a contract to be enforceable. Ramone, 2006 WL 905347, at *10; see
also Intellisource Grp., Inc. v. Williams, 1999 WL 615114, at *4 (D. Del. Aug. 11, 1999)
(“[T]here can be no contract when an essential term is missing.”). A contract’s material terms
also must be sufficiently definite to be enforceable: “The material terms of a contract will be
deemed fatally vague or indefinite if they fail to provide a reasonable standard for determining
whether a breach has occurred and the appropriate remedy.” Indep. Cellular Tel., Inc. v. Barker,
1997 WL 153816, at *4 (Del. Ch. Mar. 21, 1997).
2. Whether the ISA Failed to Include a Material or Essential Term
Memory Integrity argues that because the parties left the phrase “CSI Patent Claim”
undefined in the ISA, the parties failed to include an essential term in their contract. This failure,
argues Memory Integrity, renders the ISA unenforceable. To determine if the definition of “CSI
Patent Claim” was a material or essential term, the Court must consider whether there is any
evidence that either party “regard[ed] the agreement as incomplete and intend[ed] that no
PAGE 13 – OPINION AND ORDER
obligation shall exist until other terms [were] assented to or until the whole ha[d] been reduced to
another written form.” Intellisource, 1999 WL 615114, at *5 (quoting Restatement (Second) of
Contracts § 27 cmt. b (1981)). The Court must also consider whether “a reasonable person
would conclude that the [missing term] would be an essential term in the purported contract at
bar.” Id. The Delaware Court of Chancery has further explained that the test for whether the
parties agreed on all material or essential terms is:
whether a reasonable negotiator in the position of one asserting the
existence of a contract would have concluded, in that setting, that
the agreement reached constituted agreement on all of the terms
that the parties themselves regarded as essential and thus that the
agreement concluded the negotiations. . . .
Pharmathene, Inc. v. SIGA Techs., Inc., 2010 WL 4813553, at *8 (Del. Ch. Nov. 23, 2010)
(quoting Loppert v. WindsorTech, Inc., 865 A.2d 1282, 128 (Del. Ch. 2004), aff’d, 867 A.2d 903
(Del. 2005)) (emphasis in original) (alteration omitted).
The ISA states:
Company [Sanmina] agrees that Company shall not Assert any CSI
Patent Claim against Intel, its subsidiaries or affiliates, or their
customers (direct or indirect), distributors (direct or indirect),
agents (direct or indirect) and contractors (direct or indirect) for the
manufacture, use, import, offer for sale or sale of any of Intel’s
Products . . . .29
The ISA uses the term “CSI Patent Claim” only one other time. The ISA’s “License Option”
provision explains that if the covenant not to sue is terminated, Intel will have the option to
receive a going-forward license to Sanmina’s “CSI Patent Rights” and a corresponding release of
“all damages and claims, worldwide, for all liability for asserted or unasserted CSI Patent Claims
against Intel.”30
29
Dkt. 171-1 § 2.1.
30
Dkt. 171-1 § 3.1.
PAGE 14 – OPINION AND ORDER
Memory Integrity is correct that the ISA does not specifically define “CSI Patent Claim.”
“CSI Patent Claim” is a short phrase that consists of the word “CSI” followed by two other
capitalized words, “Patent” and “Claim.” The ISA defines “CSI,” “CSI Enabling Information,”
and “CSI Patent Rights.”31 The ISA also defines “Assert.”32 In addition, the term “claim” has a
common and ordinary meaning. See Borish v. Britamco Underwriters, Inc., 869 F. Supp. 316,
319 (E.D. Pa. 1994) (“Courts give undefined contract terms their common meaning. The terms
‘claim’ and ‘notice’ are standard terms . . . .” (citation omitted)). In common usage, “claim”
means “any right to payment or to an equitable remedy, even if contingent or provisional . . . . A
demand for money, property, or a legal remedy to which one asserts a right; esp., the part of a
complaint in a civil action specifying what relief the plaintiff asks for.” Black’s Law Dictionary
301 (10th ed. 2014).33
The parties would have understood the common meaning of the term “claim” at the time
of contracting. Notwithstanding the fact that the word “claim” is capitalized in “CSI Patent
Claim,” there is no evidence that the parties regarded the ISA as incomplete or otherwise
intended that no obligations exist until a further agreement was reached. To the contrary, Intel’s
extensive disclosures of Restricted Secret documents and the extensive steps taken by Sanmina
to maintain the confidentiality of those documents indicate that both parties understood that they
had reached an agreement concerning the information that Intel conveyed. In light of these
undisputed facts, the Court finds that there is no genuine dispute regarding whether a reasonable
negotiator, in the parties’ position when they negotiated the ISA, would have concluded that the
31
Dkt. 171-1 §§ 1.8-1.10.
32
Dkt. 171-1 § 1.1.
33
The identical definition appears in Black’s Law Dictionary 264 (8th ed. 2004), which is
the year immediately before the parties used the word “claim” in the ISA.
PAGE 15 – OPINION AND ORDER
ISA constituted an agreement to all terms that the parties themselves regarded as essential and
that the agreement concluded the negotiations. Thus, the ISA’s failure to define the term “CSI
Patent Claim” does not render the agreement unenforceable.
3. Whether the ISA Is Fatally Vague or Ambiguous
Memory Integrity also argues that the term “CSI Patent Claim” is susceptible to several
different interpretations and that this ambiguity makes the ISA unenforceable. According to
Memory Integrity, “CSI Patent Claim” could, for example, refer to a claim of a patent. Intel
responds that “CSI Patent Claim” is susceptible to only one reasonable interpretation in the
context of the ISA, and it means “the assertion of a legal claim based on a CSI Patent Right.”34
The Court looks first to the intrinsic evidence, the ISA itself, to determine whether “CSI
Patent Claim” is ambiguous. As discussed above, the ISA defines “CSI,” which means “an
electro-mechanical point-to-point information path capable of carrying cache-coherence, I/O
transactions, system related transactions, configuration management transactions, interrupts
and/or other related transactions between an Intel microprocessor and [other components].”35
The ISA also defines “CSI Patent Rights” as:
Company’s Patent Rights that: (a) now or at any time during the
Capture Period are owned or controlled by Company; and (b) but
for this Agreement, would be infringed by one or more of Intel’s
Products due in whole or in part to those products’ inclusion or
implementation of any portion of the CSI Enabling Information.36
34
Dkt. 198 at 22.
35
Dkt. 171-1 § 1.8.
36
Dkt. 171-1 § 1.10.
PAGE 16 – OPINION AND ORDER
Additionally, the License Option in the ISA couples the terms “CSI Patent Rights” and “CSI
Patent Claim,” discussing a going-forward license of CSI Patent Rights that correspond to a past
release of liability for CSI Patent Claims.
Memory Integrity points to unrelated agreements that Intel negotiated with unrelated
parties as evidence that “CSI Patent Claim” could mean a “claim of a patent.”37 The context in
which “CSI Patent Claims” appears in the ISA, however, precludes such a definition. The
License Option discusses a release of liability for “CSI Patent Claims,” establishing that the term
refers only to a legal claim that could, absent the covenant not to sue, result in liability for Intel.
Memory Integrity does not argue that the context of the ISA suggests any other alternative
interpretation of the term as used in this particular agreement. In the context of the ISA, Memory
Integrity’s proposed alternative meaning is nonsensical.38
A lack of an express definition alone does not render a contract term ambiguous.
Sassano, 948 A.2d at 468 n.86. Looking to the definition of “CSI,” “CSI Patent Right,” the
common meaning of “claim,” and the discussion in the License Option, the Court finds that “CSI
Patent Claim” is unambiguous and susceptible only to one interpretation: a legal claim based on
37
Dkt. 179 at 38.
38
In the context of a motion to compel discovery, the District Court for the District of
Columbia similarly addressed the relevance of contracts between one party and non-parties to the
case. In denying the motion, the court emphasized, “These contracts were made between
different contracting officers and different private contractors, at different times for different
purposes.” United States v. Kellogg Brown & Root Servs., Inc., 284 F.R.D. 22, 38 (D.D.C. 2012).
The court further noted that the contract at issue “[was] not a form agreement” but rather “a
massive, unique undertaking. [The defendant] has not explained how the contracts are
sufficiently similar to make [the plaintiff’s] interpretation of one binding on the other.” Id.
Likewise, in this case, Memory Integrity’s submits contracts made by different contracting
officers at different times for different purposes than the ISA without explaining how the
contracts are sufficiently similar to make Intel’s interpretation of one binding on the other.
PAGE 17 – OPINION AND ORDER
CSI Patent Rights. Therefore, the Court finds that the ISA is not unenforceable due to
vagueness.39
B. Whether the Disclosed Information Is CSI Enabling Information Under the ISA
The ISA defines “CSI Enabling Information” as “all information provided by Intel to
[Sanmina] that is (a) necessary or useful in implementing CSI-enabled, CSI-compliant, or CSIrelated technologies; and (but not ‘or’) (b) restricted by a duty of confidentiality, however arising
and including that provided under the RUNDA.”40 Accordingly, to qualify as CSI Enabling
Information, the information disclosed by Intel must have been both useful to Sanmina and
confidential. Memory Integrity argues that any purportedly disclosed information fails both
prongs of this test.
1. Intel’s Disclosure to Sanmina
As a threshold matter, Memory Integrity argues that Intel has failed to identify in its
motion documents that disclosed some of the information Intel purports to have conveyed to
Sanmina. Intel asserts that it disclosed implementation details of six different cache coherence
technologies to Sanmina: (1) source snooping; (2) home snooping; (3) functionality for receiving
a cache access request and sending a probe; (4) use of a particular hashing algorithm; (5) a
caching agent (also known as a Cache Box) that processes transactions; and (6) snoop filtering.
In its motion, Intel identifies three Restricted Secret documents that disclosed the way in which
Intel implements these technologies: (1) the CSI Specification; (2) the Thurley Document; and
(3) the Beckton Document.
39
Because the Court finds that the parties did not understand an expressly agreed-upon
definition of “CSI Patent Claim” to be an essential term and that the ISA is not fatally vague, the
Court does not reach Intel’s argument that Memory Integrity agreed that the ISA was enforceable
by purchasing the patents and agreeing “to be bound by, and to honor” the covenant not to sue.
40
Dkt. 171-1 § 1.9.
PAGE 18 – OPINION AND ORDER
Other than the caching agent technology, the technological implementations that Intel
purports to have disclosed to Sanmina or its subsidiary are undisputedly described in the three
identified Restricted Secret documents. Section 8.5.1.1 of the CSI Specification describes Intel’s
source snooping protocol. Section 8.1.1 of the CSI Specification describes source snooping,
home snooping, and snoop filtering. In his deposition, Mr. Morton also explains that a figure
depicted in the Thurley Document illustrates the functionality for receiving cache access requests
and sending probes. Further, the Beckton Document describes a hashing algorithm.
As for the technology related to a caching agent that processes transactions, Mr. Morton
identifies the Beckton Document as the source of this information for Sanmina. He verifies that
based on the Beckton Document, he understood that Intel’s caching agent processes specific
transactions. The questions posed to Mr. Morton are phrased slightly differently than Intel’s
description of caching agents in its brief, but nonetheless, the Beckton Document and
Mr. Morton’s testimony establish that Intel disclosed to Sanmina information regarding Intel’s
implementation of caching agents that can process specific transactions.
Memory Integrity argues that Mr. Morton’s testimony is conclusory and that his
understanding of the technologies may not embrace the technological descriptions set forth by
Intel in its brief. Memory Integrity, however, offers no evidence that calls into question
Mr. Morton’s testimony, which the text of the Restricted Secret documents corroborates.41 See
41
Memory Integrity’s expert witness, Dr. Matthew Farrens, asserts that Intel did not
disclose a specific implementation regarding receiving requests and sending probes. See Dkt. 180
¶ 20. But Dr. Farrens does not dispute that Intel disclosed its use of a functionality for receiving
requests and sending probes or that Intel disclosed the Thurley Document. See id. ¶¶ 21-22. He
asserts only that this more general information was publicly known. Dr. Farrens also mistakenly
claims that Mr. Morton does not mention probes in the context of the Thurley Document. See
Dkt. 170-1 at 59-63. Additionally, Dr. Farrens asserts that Intel’s disclosure of a caching agent
technology “would not have been earlier than August 16, 2016.” Id. ¶ 34. It appears from the
PAGE 19 – OPINION AND ORDER
Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133, 151 (2000) (“[T]he court should
give credence to the evidence favoring the nonmovant as well as that ‘evidence supporting the
moving party that is uncontradicted and unimpeached, at least to the extent that that evidence
comes from disinterested witnesses.’” (quoting 9A Charles Alan Wright & Arthur R. Miller,
Federal Practice and Procedure § 2529, at 300 (2d ed. 1995));42 Edward J. Brunet et al.,
Summary Judgment – Federal Law and Practice § 8.11, at 345 (2014) (“If the expert’s testimony
will be unopposed at trial, nothing is accomplished by allowing the case to be tried when a party
is unable to obtain an affidavit to rebut an expert’s testimony.”). Therefore, there is no genuine
issue of material fact concerning whether Intel disclosed its implementation of the six cache
coherence technologies it describes.
2. Usefulness to Sanmina
Memory Integrity argues that even if Intel disclosed how it implements the six
technologies in question, Intel has failed to show that the information is CSI Enabling
Information. According to Memory Integrity, Intel has not offered evidence of how or why the
information proved useful for implementing CSI-related technologies. Intel responds that
Memory Integrity’s argument conflicts with the testimony of Mr. Morton, who both led the
Project Isis team at Sanmina and served as one of the named inventors for the ’121 patent
(concerning a probe filtering unit). According to Intel, Memory Integrity had the opportunity
fully to examine Mr. Morton at his deposition on how or why Intel’s disclosures were useful and
context of this statement, however, that Dr. Farrens meant “earlier than August 16, 2006,” which
Memory Integrity confirmed at oral argument on April 8, 2016.
42
Although Reeves involved a motion for judgment as a matter of law and was not a
summary judgment decision, the Supreme Court stressed that “the standard for granting
summary judgment ‘mirrors’ the standard for judgment as a matter of law, such that ‘the inquiry
under each is the same.’” 530 U.S. at 150 (quoting Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 250-251 (1986)).
PAGE 20 – OPINION AND ORDER
cannot now persuasively argue that his explanations are simply conclusory or otherwise
insufficient.
With its motion, Intel offers extensive testimony from Mr. Morton concerning the
usefulness of the information Intel disclosed to Sanmina. Memory Integrity does not dispute that
Mr. Morton has personal knowledge of whether Intel’s disclosures proved useful to Sanmina in
developing CSI-related technologies. According to Mr. Morton, as the lead architect for Project
Isis, he was responsible for understanding CSI (or “QPI”) and Intel’s architecture and designing
and verifying a protocol that Sanmina’s node controller chip would use to maintain cache
coherence while also maintaining the requirements of Intel’s architecture. He explains how and
why Intel’s source snooping technology proved useful to Sanmina, stating that the only way to
understand Intel’s source snooping protocol was through Intel’s disclosures to Sanmina.
Although Mr. Morton does not provide the specifics of how and why the other five technological
implementations disclosed by Intel were useful to Sanmina, he does definitively state that those
disclosures were indeed useful as well.
Additionally, the text of the ISA supports Mr. Morton’s testimony. The ISA included
certain milestones that Intel had to meet. Among other things, the ISA required Intel to deliver
the CSI Specification within 60 days of the agreement’s effective date. This requirement
corroborates Mr. Morton’s testimony that Sanmina considered the information in the CSI
Specification about source snooping, home snooping, and snoop filtering useful.
When evidence is “one-sided” on a factual matter, a court may decide the issue as a
matter of law on summary judgment. Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d
1182, 1190 (Fed. Cir. 1993). A party’s “completely insupportable, specious, or conflicting
explanations or excuses will not suffice to raise a genuine issue of fact.” Id. (emphasis in
PAGE 21 – OPINION AND ORDER
original). Here, Memory Integrity has presented no evidence that contradicts either Mr. Morton’s
testimony on this issue or the ISA’s implicit indication that Sanmina considered the information
in Intel’s CSI Specification essential to Project Isis.
Memory Integrity’s criticisms of Mr. Morton’s testimony, particularly in light of Memory
Integrity’s failure to present the Court with any contrary evidence (including any other portions
of Mr. Morton’s testimony), does not create a genuine issue of material fact. See, e.g., Processed
Plastics Co. v. United States, 473 F.3d 1164, 1170 (Fed. Cir. 2006) (“[T]he nonmovant ‘must
point to an evidentiary conflict created on the record at least by a counter statement of fact or
facts set forth in detail.’” (quoting Barmag Barmer Maschinenfabrik AG. v. Murata Machinery,
Ltd., 731 F.2d 831, 836 (Fed. Cir. 1984)); Am. States Ins. Co. v. Sacramento Plating, Inc., 861 F.
Supp. 964, 969 n.5 (E.D. Cal. 1994), aff’d, 99 F.3d 1145 (9th Cir. 1996) (overruling a nonmoving party’s objection to an expert’s deposition when the party “had the opportunity to crossexamine [the expert] on both his qualifications and the methods used to reach his opinion, but
chose not to provide the court with any portions of the deposition which would call [the same]
into question”); Pac. Gas & Elec. Co. v. Howard P. Foley Co., 1993 WL 299219, at *7 (N.D.
Cal. July 27, 1993) (“[I]t is unfair for Defendants to claim that [an expert’s] declaration . . . is
unsupported by his deposition testimony when Defendants failed to fully develop his background
themselves.”). Accordingly, the Court finds that Intel has established that the information it
disclosed proved useful to Sanmina in developing CSI-related technologies.
3. Confidentiality
Memory Integrity also argues that the disclosed information does not qualify as CSI
Enabling Information because at the time Intel disclosed the information, it was widely known in
the industry and therefore not confidential. Alternatively, Memory Integrity argues that the
disclosures do not qualify as CSI Enabling Information because the information later became
PAGE 22 – OPINION AND ORDER
widely known and thus no longer confidential before Memory Integrity filed this lawsuit. In
support of these arguments, Memory Integrity cites to presentations, articles, textbooks, Intel’s
patents and patent applications, and the declaration of Memory Integrity’s expert, Dr. Farrens.
Intel first responds that the testimony provided both by Intel’s representative, Pamela Hays, and
also by Mr. Morton establish that the disclosed information was highly confidential and subject
to a strict duty of confidentiality at the time it was disclosed to Sanmina. Intel next argues that
regardless of whether the disclosed information later may have become publicly known, which
Intel disputes, the covenant not to sue applies so long as the information was confidential at the
time of disclosure to Sanmina. Intel further argues that even if the covenant not to sue does not
apply to information that later becomes known in the industry, Intel’s evidence shows that the
specific implementations that Intel disclosed to Sanmina have remained confidential to the
present day.
a. Confidentiality at the Time Intel Disclosed the Information to Sanmina
Ms. Hays is Intel’s corporate designee in this case, and she was involved in negotiating
the ISA with Sanmina. In her declaration, she states that the Restricted Secret documents
disclosed to Sanmina required a strict duty of confidentiality because they reveal some of Intel’s
most sensitive technical information. These documents describe how Intel’s microprocessors,
which are Intel’s core products, function. The first page of the documents includes a “Restricted
Secret” label, and the documents’ titles show the letters “RS,” signifying that they contain
particularly sensitive information. According to Ms. Hays, the implementation detail in these
documents represents the “crown jewels” of Intel’s trade secrets.43
43
Dkt. 191-1 at 17.
PAGE 23 – OPINION AND ORDER
Similarly, in his deposition, Mr. Morton repeatedly states that he regarded the
information that Intel disclosed to Sanmina as confidential. He testifies that Sanmina kept the
information that it received from Intel confidential and that he does not know of anyone from
Sanmina who violated a duty of confidentiality with respect to the materials received from Intel.
Additionally, Mr. Morton describes how Sanmina personalized Intel’s documents for each team
member so that the documents could be better controlled and tracked. According to Mr. Morton,
Sanmina also physically isolated the Project Isis team in a separate and secured wing at the
Sanmina facilities.
These undisputed circumstances surrounding Intel’s disclosures further confirm that the
information given to Sanmina was confidential at the time of disclosure and was understood and
treated by the parties as such. In order to develop a node controller that would work with Intel
processors, Sanmina undertook years of negotiations with Intel to gain access to secret
information about Intel’s cache coherence protocol. Sanmina signed four separate confidentiality
agreements, in addition to a covenant not to sue, in exchange for access to this information. If the
information were public knowledge at the time or otherwise already known to Sanmina, Sanmina
would have had no need to go through such a burdensome process to learn how Intel’s
processors maintain cache coherence. Nor would Sanmina have needed to go to such lengths—
including keeping track of who accessed Intel’s documents and physically isolating the Project
Isis team from other Sanmina employees—to honor its confidentiality duties to Intel.
Memory Integrity presents an array of citations to documents that purportedly disclosed
Intel’s cache coherence technologies to the public before Intel disclosed the information to
Sanmina. Memory Integrity’s citations, however, only demonstrate that the general concepts at
issue were known in the industry and show nothing about the specific proprietary
PAGE 24 – OPINION AND ORDER
implementations that Intel disclosed. An apt analogy is the difference between a restaurant’s
menu and its trade secret recipes. For example, a menu may list bucatini al savor di noci as a
pasta course, and may even list its key ingredients. When the dish arrives at the table, a customer
may taste walnuts, honey, ginger, black pepper, and lemon, in an olive oil base. This is all
publicly available information. But the specific recipe needed to make this dish well would not
necessarily be public knowledge. So, too, here; the general concepts of source snooping and
other cache coherence technologies were known in the industry, but the specifics of how Intel
implemented those technologies were not.
b. Confidentiality after the Disclosures Were Made
Memory Integrity also offers citations to documents that purportedly disclosed Intel’s
cache coherence technologies to the public after the disclosures to Sanmina were made but
before Memory Integrity filed this lawsuit. According to Memory Integrity, the two CNDAs, the
RUNDA, and the RS-NDA all specify that the duty of confidentiality under the agreements no
longer applies if, among other things, the disclosed information becomes rightfully in the public
domain or Intel generally makes the information available to third parties without restrictions on
disclosure.
Intel responds first that the ISA does not require that disclosed information remain
confidential after disclosure in order for the covenant not to sue to continue to apply. The Court
again applies Delaware contract law to determine if the terms of the ISA are ambiguous.
According to the ISA, CSI Enabling Information includes “all information provided by Intel to
Company that is . . . restricted by a duty of confidentiality, however arising . . . .”44 Memory
Integrity argues that use of the present tense “is” means that the covenant not to sue applies only
44
Dkt. 171-1 § 1.9 (emphasis added).
PAGE 25 – OPINION AND ORDER
if the disclosed information remains confidential at the time of the proposed assertion of a patent
infringement claim or the invocation of the covenant not to sue as a defense. Intel responds that
“is” refers to the circumstances that existed at the time Intel agreed to disclose the information to
Sanmina, and therefore, the covenant not to sue applies so long as the disclosed information was
restricted by a duty of confidentiality at the time of disclosure.
As required by Delaware law and discussed above, the Court begins its analysis with
intrinsic evidence, the contract itself, to determine if the ISA is ambiguous. The ISA uses the
present tense verb “is” to describe the confidentiality requirements for CSI Enabling
Information. Although the Court is unaware of any Delaware court addressing what “is” means
in a contract, the Delaware Court of Chancery has found that using the present tense of a verb
can be evidence that a contract refers to the state of affairs at the time of contracting rather than
at some future event. See Winshall v. Viacom Int’l Inc., 2012 WL 6200271, at *6 (Del. Ch.
Dec. 12, 2012). In addition, New York courts have addressed the precise issue of the temporal
scope of “is.” For example, in Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 361 F. Supp. 2d 210,
215 (S.D.N.Y. 2005), the court found that a contract’s use of the word “is” established that the
agreement did not transfer rights to patents acquired after the agreement’s execution. The Fifth
Circuit, however, notes, “[T]he present tense of a verb may sometimes refer to the past and to the
future as well as to the present. . . . [T]he present tense may be used when the time is actually
indefinite.” In re Stratford of Tex., Inc., 635 F.2d 365, 369 (5th Cir. Jan. 1981).
Moreover, even the cases finding that, in the context of a specific document, the use of
the present tense is not forward-looking suggest that the context containing the present-tense
verb should guide the interpretation. In Winshall, the Delaware court noted both that the contract
used the present tense of verbs and that the contract referred to “current use.” 2012 WL 6200271,
PAGE 26 – OPINION AND ORDER
at *6. In Aspex Eyewear, the court explained that the contract’s lack of “any language that could
in any way be construed as granting, or indicating an intention to grant, any future acquired
rights” confirmed that “is” did not include future time. 361 F. Supp. 2d at 215. The Cambridge
Grammar of the English Language similarly emphasizes that “temporal expressions”
accompanying present-tense verbs indicate whether the present tense includes “future time
situations.” Rodney Huddleston & Geoffrey Pullum, The Cambridge Grammar of the English
Language 131-32 (2002). For example, the sentence “She is president until next May” expressly
includes a future time reference. Id. at 131 (emphasis in original).
Here, the ISA contains no relevant future time references. Similar to the facts in Aspex
Eyewear, the ISA contains no language indicating that future occurrences affect whether
disclosed information remains CSI Enabling Information. Additionally, the ISA states that the
CSI Information “is . . . restricted by a duty of confidentiality, however arising . . . .”45 This
statement indicates that confidentiality should be broadly construed when determining whether
information qualifies as CSI Enabling Information. The statement also indicates that information
is CSI Enabling Information no matter when or how a duty of confidentiality arises. Thus, if
disclosed information is confidential, it is “restricted by a duty of confidentiality” sufficient to
satisfy the definition of “CSI Enabling Information,” even if it later is no longer confidential.
Additionally, the covenant not to sue states that it “survive[s] termination or expiration of
this Agreement” unless Intel fails to meet one of the listed milestones or the parties mutually
agree to terminate the covenant.46 Tellingly, the agreement does not state the covenant not to sue
can otherwise become inapplicable based on disclosed and previously-confidential information
45
Dkt. 171-1 § 1.9 (emphasis added).
46
Dkt. 171-1 § 2.1.
PAGE 27 – OPINION AND ORDER
later becoming publicly known. The Court therefore finds that the ISA is unambiguous and that
CSI Enabling Information includes information that was confidential at the time of disclosure to
Sanmina, regardless of whether it later may lose its confidential status.
Further, even if the ISA were ambiguous concerning the temporal scope of the duty of
confidentiality and its relationship to the covenant not to sue, the undisputed extrinsic evidence
presented by the parties would yield the same result. See In re Mobilactive Media, LLC, 2013
WL 297950, at *15 (Del. Ch. Jan. 25, 2013) (“After examining the relevant extrinsic evidence, ‘a
court may conclude that, given the extrinsic evidence, only one meaning is objectively
reasonable in the circumstances of [the] negotiation.’” (quoting U.S. W., Inc. v. Time Warner
Inc., 1996 WL 307445, at *10 (Del. Ch. June 6, 1996) (alteration in original)); Zimmerman v.
Crothall, 62 A.3d 676, 690-91 (Del. Ch. 2013) (“When construing an ambiguous contract, such
as the one at issue here, the court will consider all relevant objective evidence, including: overt
statements and acts of the parties, the business context, prior dealings between the parties, and
business customs and usage in the industry.” (footnotes omitted)).
Intel and Sanmina negotiated four other agreements that constitute relevant extrinsic
evidence. The CNDAs discuss when confidential information will cease to be confidential for
purposes of Sanmina’s liability for disclosure. The CNDAs say nothing, however, regarding
termination of the covenant not to sue or what constitutes CSI Enabling Information. Similarly,
the RUNDA and RS-NDA discuss confidentiality in the context of Sanmina’s rights to use and
obligations to protect the disclosed information. The RUNDA and RS-NDA give no indication
that they affect the covenant not to sue or what is CSI Enabling Information.
Further, Intel negotiated similar covenants not to sue with other companies. None of the
agreements allow the other company to sue Intel based on disclosed information if the
PAGE 28 – OPINION AND ORDER
previously-confidential information later becomes publicly known. Almost all of the agreements
contain precisely the same text that CSI Enabling Information “is” restricted by a duty of
confidentiality. It is not reasonable to conclude that Intel could have meant for all these
agreements to subject it to patent infringement liability if others in the industry later
independently learn the specifics of Intel’s cache coherence protocol. The additional agreements
that Intel negotiated with Sanmina and other companies and the lack of any contrary evidence
presented by Memory Integrity establish that there is no genuine issue of material fact regarding
whether the parties intended CSI Enabling Information to exclude information that later may
become generally known in the industry.
Additionally, even if the ISA remained ambiguous after considering extrinsic evidence,
principles of Delaware contract law would require the court to construe the provisions at issue in
Intel’s favor. A Delaware court has explained:
“Where the language of an agreement is contradictory, obscure, or
ambiguous, or where its meaning is doubtful, so that the contract is
fairly susceptible of two constructions, one of which makes it fair,
customary, and such as prudent men would naturally execute,
while the other makes it inequitable, unusual, or such as reasonable
men would not be likely to enter into, the interpretation which
makes it a rational and probable agreement must be preferred to
that which makes it an unusual, unfair, or improbable contract.”
Holland v. Nat’l Auto. Fibres, 22 Del. Ch. 99, 106-07 (1937) (quoting A. Leschen & Sons Rope
Co. v. Mayflower Gold Mining & Reduction Co., 173 F. 855, 857 (8th Cir. 1909)) (cited with
approval in Matrix Grp. Ltd., Inc. v. Rawlings Sporting Goods Co., 477 F.3d 583, 591
(8th Cir. 2007) and Katell v. Morgan Stanley Grp., Inc., 1993 WL 205033, at *4-5 (Del. Ch.
June 8, 1993)).
The only reasonable interpretation of the covenant not to sue contained in the ISA is that
the parties intended it to protect Intel from allegations of patent infringement based on Intel’s use
PAGE 29 – OPINION AND ORDER
of the disclosed information in its products. In exchange, Sanmina received highly confidential
information that gave Sanmina the opportunity to develop its own potentially profitable products.
Memory Integrity’s interpretation of the ISA would massively decrease the protection for which
Intel bargained. For example, Memory Integrity’s interpretation would allow for patent
infringement suits against Intel if through no fault of Intel’s—such as the independent
development of cache coherence technologies by another company—the industry learned the
specifics of the cache coherence protocol used by Intel. Under Delaware law, the Court must
prefer the construction that avoids an inequitable, unusual result. The principles of construction
under Delaware contract law confirm that CSI information that was confidential at the time of
disclosure qualifies as CSI Enabling Information subject to the ISA’s covenant not to sue.
Finally, even if the Court were to accept Memory Integrity’s interpretation, the
undisputed extrinsic evidence establishes that the specifics of Intel’s cache coherence
technologies remain confidential to this day. Although Dr. Farrens points to public documents
that purportedly disclose the information Intel gave to Sanmina, none of the documents explain
precisely how Intel implements its specific cache coherence protocol in Intel processors. As
discussed above, the documents cited by Dr. Farrens disclose the menu, whereas the information
Intel gave to Sanmina discloses the secret recipe. Ms. Hays confirms that the implementation
details given to Sanmina remain highly confidential. Memory Integrity has not offered any
testimony or other evidence that conflicts with Ms. Hays’s statements that Intel’s specific
implementations of cache coherence functionalities are still unknown to the industry. See Reeves,
530 U.S. at 151. Thus, under any interpretation of the ISA, Memory Integrity has failed to raise a
genuine issue of material fact regarding whether the information disclosed to Sanmina
constitutes CSI Enabling Information triggering the covenant not to sue.
PAGE 30 – OPINION AND ORDER
C. Whether Memory Integrity’s Infringement Contentions Are Based, at Least in Part, on
the Disclosed Information
Memory Integrity argues that there is insufficient evidence that, “but for” the ISA, Intel’s
Accused Products would infringe the patents-in-suit “due in whole or in part to those products’
inclusion or implementation of any portion of the CSI Enabling Information.”47 Intel responds
that Memory Integrity’s argument conflicts with Memory Integrity’s own binding discovery
admissions and infringement contentions.
As with other written instruments such as contracts, patents are interpreted and construed
as a matter of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed.
Cir. 1995), aff’d, 517 U.S. 370 (1996) (“It follows, therefore, from the general rule applicable to
written instruments that a patent is uniquely suited for having its meaning and scope determined
entirely by a court as a matter of law.”). As the Supreme Court has explained:
With regard to the second part of this objection, that which claims
for the jury the construction of the patent, we remark that the
patent itself must be taken as evidence of its meaning; that, like
other written instruments, it must be interpreted as a whole, its
various provisions be taken as far as practicable in connection with
each other, and the legal deductions drawn therefrom must be
conformable with the scope and purpose of the entire document.
This construction and these deductions we hold to be within the
exclusive province of the court.
Brown v. Huger, 62 U.S. 305, 318 (1858) (cited with approval in Markman, 517 U.S. at 383 n.8).
Accordingly, in patent cases, summary judgment is appropriate when the only real dispute
between the parties concerns the proper meaning of a patent claim. See Transmatic, Inc. v.
Gulton Indus., Inc., 53 F.3d 1270, 1278 (Fed. Cir. 1995). In contrast, whether an accused product
performs the function recited by a patent claim is usually a question for the trier-of-fact. See DSC
Commc’ns Corp. v. Pulse Commc'ns, Inc., 170 F.3d 1354, 1368 (Fed. Cir. 1999).
47
Dkt. 171-1 § 1.10.
PAGE 31 – OPINION AND ORDER
Here, Memory Integrity’s own binding discovery admissions acknowledge that its
infringement contentions are based in part on three of the implementations that Intel disclosed to
Sanmina. In Response Nos. 2, 11, and 27, Memory Integrity admits that it bases its contentions
in part on the Accused Products’ use of source snooping, hashing algorithm functionality, and
Cache Box or caching agent functionality. Under the Federal Rules of Civil Procedure, matters
admitted in response to requests for admission are deemed “conclusively established unless the
court, on motion, permits the admission to be withdrawn or amended.” Fed. R. Civ. P. 36(b).
Memory Integrity has not made any such motion to withdraw or amend its admissions.
Therefore, Memory Integrity’s admissions conclusively establish that its infringement
contentions are based, at least in part, on the Accused Products’ use of source snooping,48
hashing algorithm functionality, and Cache Box or caching agent functionality.49
Memory Integrity’s infringement contentions also establish that Memory Integrity’s
infringement claims arise from functionalities disclosed to Sanmina. Memory Integrity’s
March 16 and December 15, 2015 infringement contentions accuse Intel of infringing based, in
48
Memory Integrity initially accused Intel’s products of infringing the ’636 patent based
in part on the Accused Products’ use of source snooping. See Ex. D-2 to Memory Integrity’s
March 16, 2015 Infringement Contentions for the ’636 patent, Dkt. 172-1 at 6-7. Memory
Integrity, however, later dropped this infringement contention. See Memory Integrity’s
December 15, 2015 Infringement Contentions, Cover Pleading, Dkt. 172-12 at 3.
49
Memory Integrity argues that it admitted only that its infringement contentions are
based on general, non-confidential concepts embraced by Intel’s disclosures to Sanmina.
Memory Integrity cannot dispute, however, that infringement contentions necessarily rest on
specific implementations of technology rather than broad, well-known technological concepts.
When a plaintiff accuses specific products of infringing, “the evidence uncovered by the patent
holder’s investigation must be sufficient to permit a reasonable inference that all the accused
products infringe.” Antonious v. Spalding & Evenflo Cos., Inc., 275 F.3d 1066, 1075 (Fed.
Cir. 2002).
PAGE 32 – OPINION AND ORDER
part, on the Accused Products’ use of home snooping,50 functionality involving receiving a cache
access request and sending a probe,51 a hashing algorithm for determining where to direct
memory transactions for processing,52 Cache Boxes or cache agents that process transactions in a
particular way,53 and snoop filtering.54 The descriptions of home snooping and snoop filtering in
Memory Integrity’s infringement contentions tracks the descriptions of Intel’s home snooping
and snoop filtering implementations in the CSI Specification.55 Memory Integrity’s infringement
contentions also describe a functionality for receiving a cache access request and sending a probe
that closely resembles the Thurley Document’s explanation of this functionality.56 Similarly,
Memory Integrity’s infringement contentions describe a proprietary hashing algorithm and
caching agent functionality like the implementations that Intel disclosed to Sanmina in the
50
Ex. D-3 to Memory Integrity’s March 16, 2015 Infringement Contentions for the ’636
patent, Dkt. 172-2 at 7; Ex. D-3 to Memory Integrity’s December 15, 2015 Infringement
Contentions for the ’636 patent, Dkt. 172-7 at 7-8.
51
Ex. B-2 to Memory Integrity’s March 16, 2015 Infringement Contentions for the ’409
patent, Dkt. 172-3 at 2; Ex. B-2 to Memory Integrity’s December 15, 2015 Infringement
Contentions for the ’409 patent, Dkt. 172-8 at 2.
52
Ex. C-2 to Memory Integrity’s March 16, 2015 Infringement Contentions for the ’206
patent, Dkt. 172-4 at 9; Ex. E-2 to Memory Integrity’s March 16, 2015 Infringement Contentions
for the ’254 patent, Dkt. 172-5 at 2; Ex. C-2 to Memory Integrity’s December 15, 2015
Infringement Contentions for the ’206 patent, Dkt. 172-9 at 9-10; Ex. E-2 to Memory Integrity’s
December 15, 2015 Infringement Contentions for the ’254 patent, Dkt. 172-10 at 2-4, 8, 14, 16.
53
Ex. C-2 to Memory Integrity’s March 16, 2015 Infringement Contentions for the ’206
patent, Dkt. 172-4 at 2; Ex. C-2 to Memory Integrity’s December 15, 2015 Infringement
Contentions for the ’206 patent, Dkt. 172-9 at 2.
54
Ex. A-1 to Memory Integrity’s March 16, 2015 Infringement Contentions for the ’121
patent, Dkt. 172-6 at 2; Exhibit A-1 to Memory Integrity’s December 15, 2015 Infringement
Contentions for the ’121 patent, Dkt. 172-11 at 2.
55
See Dkt. 170-16 at 21.
56
See Dkt. 170-15 at 3.
PAGE 33 – OPINION AND ORDER
Beckton Document.57 Mr. Morton confirms that the CSI Specification, Thurley Document, and
Beckton Document gave Sanmina information about functionalities that are nearly identical to
the accused instrumentalities.
Memory Integrity does not offer any contrary evidence. Rather, Memory Integrity argues
that Intel has failed to show that Memory Integrity’s infringement contentions rely on “the same”
technologies allegedly disclosed to Sanmina (or Newisys).58 For the reasons discussed above,
however, the undisputed evidence establishes that Intel disclosed its specific implementations of
cache coherence functionality to Sanmina and that Memory Integrity’s infringement contentions
rest, at least in part, on those disclosed functionalities.
Finally, Memory Integrity argues that Intel has failed to show that the Accused Products
infringe only because they include technologies disclosed to Sanmina.59 This is not, however, a
requirement of the ISA. Again, the Court looks to the intrinsic evidence to determine whether the
ISA is ambiguous. The agreement states that a CSI Patent Right is a patent right that “but for this
Agreement, would be infringed by one or more of Intel’s products due in whole or in part to
those products’ inclusion or implementation” of cache coherence technologies disclosed to
Sanmina.60 The ISA is unambiguous. Even if Intel’s Accused Products might infringe the
patents-in-suit in the absence of the cache coherence functionalities disclosed to Sanmina, the
57
See Dkt. 170-14 at 3.
58
Memory Integrity’s Redacted Response Brief, Dkt. 199 at 14 n.3, 17.
59
Memory Integrity’s Redacted Response Brief, Dkt. 199 at 17 (“. . . Intel has not
presented evidence excluding that the products would still infringe without the implementation or
inclusion of the technologies allegedly disclosed to Newisys.”) (emphasis in original).
60
Dkt. 171-1 § 1.10 (emphasis added).
PAGE 34 – OPINION AND ORDER
Accused Products still would infringe in part because the products include the disclosed
functionalities. This is enough to trigger the covenant not to sue based on CSI Patent Rights.
The ISA’s covenant not to sue prohibits Memory Integrity from asserting any CSI Patent
Claim, which is a legal claim based on CSI Patent Rights. CSI Patent Rights are any rights that
would be infringed due to an Intel product’s inclusion of CSI Enabling Information. Under the
ISA, CSI Enabling Information is any information that is, among other things, useful in
implementing CSI-related technologies and restricted by a duty of confidentiality. The
undisputed evidence establishes that Intel disclosed CSI Enabling Information to Sanmina at
Sanmina’s request because the disclosed information would be useful to Sanmina in
implementing CSI-related technologies and this information was restricted by a duty of
confidentiality at the time of disclosure. Moreover, although the covenant not to sue, as
contained in the ISA, does not require that CSI Enabling Information remain confidential after
disclosure to Sanmina, the CSI Enabling Information actually disclosed by Intel to Sanmina has
remained confidential, as of the time that Intel filed its motion. As shown by Memory Integrity’s
admissions and infringement contentions, Memory Integrity’s claims of patent infringement are
based, at least in part, on this CSI Enabling Information. Accordingly, the ISA’s covenant not to
sue bars Memory Integrity’s patent infringement claims. No reasonable trier of fact could find
otherwise, and summary judgment is appropriate.
CONCLUSION
Intel’s Motion for Summary Judgment (Dkt. 170) is GRANTED.
IT IS SO ORDERED.
DATED this 12th day of April, 2016.
/s/ Michael H. Simon
Michael H. Simon
United States District Judge
PAGE 35 – OPINION AND ORDER
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