Tabaian et al v. Intel Corporation

Filing 88

OPINION: Regarding disqualification of Plaintiff's expert Mike Walters. Signed on 9/22/2018 by Judge Marco A. Hernandez. (jp)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
FEREYDUN TABAIAN and AHMAD
ASHRAFZADEH,

No. 3:18-cv-00326-HZ

Plaintiffs,
v.
INTEL CORPORATION,
Defendant.
Jeffrey S. Love
John D. Vandenburg
Mark W. Wilson
KLARQUIST SPARKMAN, LLP
One World Trade Center
121 S.W. Salmon Street, Suite 1600
Portland, Oregon 97204
Howard L. Close
Kathleen S. Rose
Patrick B. McAndrew
Ronald L. Flack, Jr.
WRIGHT CLOSE & BARGER, LLP
One Riverway, Suite 2200
Houston, Texas 77056
Attorneys for Plaintiffs
1 - OPINION

OPINION

Renée E. Rothauge
MARKOWITZ HERBOLD PC
1211 S.W. Fifth Avenue, Suite 3000
Portland, Oregon 97203-3730
Michael J. Summersgill
Jordan L. Hirsch
WILMER CUTLER PICKERING HALE and DORR LLP
60 State Street
Boston, Massachusetts 02109
Todd C. Zubler
WILMER CUTLER PICKERING HALE and DORR LLP
1875 Pennsylvania Avenue, N.W.
Washington, D.C. 20006
Attorneys for Defendant
HERNANDEZ, District Judge:
Plaintiffs Fereydun Tabaian and Ahmad Ashrafzadeh are the inventors and owners of
United States Patent No. 7,027,944 Patent ("the '944 Patent") which is titled '"Programmable
Calibration Circuit and Power Supply Current Sensing and Droop Loss Compensation," and
which issued on April 11, 2006. Compl. ¶¶ 1, 7, 8, ECF 1. The '944 Patent discloses a circuit for
using calibration for precise voltage regulation. Id. ¶ 2. "The invention described in the patent
provides circuits and methods for addressing voltage regulator current sensing variations, voltage
droop, manufacturing variations, temperature dependencies, and mismatched phase outputs in a
multiphase power regulator." Id. "The invention advantageously provides circuits and methods
to properly power a computer processor or integrated circuit chip according to the unique power
specifications of the processor or chip." Id.
In their Complaint, Plaintiffs allege that Defendant developed its Fully Integrated Voltage
Regulator (FIVR) technology with "full knowledge" of the '944 Patent invention, using the
2 - OPINION

invention as one of FIVR's key components. Id. ¶ 4. Plaintiffs allege that the FIVR components
of several processors made by Defendant infringe the '944 Patent. Id. ¶¶ 4, 5.
On July 24, 2018, Defendant moved to disqualify Plaintiffs' expert Mike Walters. After
completion of the motion briefing, I held a telephone oral argument on the motion on August 15,
2018. At the conclusion of that hearing, I granted the motion. See ECF 75 (Minutes of Aug. 15,
2018 motion hearing). This Opinion explains my reasoning.
According to Jorge Rodriguez, a senior engineer employed by Defendant, Defendant
manufactures microprocessors which are semiconductor integrated circuits for use in computers.
Rodriguez Decl. ¶ 5, ECF 61. A microprocessor requires one or more voltage regulators in order
to "convert the voltage from its power supply (such as an electrical outlet or battery) to a voltage
that is useable by the microprocessor and that provides the electrical power required by the
microprocessor in an efficient manner." Id. Starting in the late 1990s, Defendant developed the
Intel Mobile Voltage Positioning (IMVP) technology which was "designed to create voltage
regulators that reduce the amount of consumed power while providing greater processor
performance." Id. ¶ 6. For nearly twenty years, Defendant has worked with third-party
semiconductor suppliers to develop voltage regulators that work with Defendant's
microprocessors. Id. Defendant's current voltage regulator technology, the FIVR that is at issue
in the patent infringement claim, is, according to Rodriguez, an "outgrowth" of Defendant's prior
IMVP work. Id. ¶ 19. Before 2013, Defendant's microprocessors typically required multiple
IMVP voltage regulators, with each providing a specific voltage to a different part of the
microprocessor such as its core or graphics unit. Id. But, starting in 2013, the FIVR technology
"integrated the functionality of multiple IMVP regulators onto the microprocessor die, which
3 - OPINION

Defendant manufactures." Id. Defendant's microprocessors with FIVR require only one external
IMVP voltage regulator because the others have been integrated onto the die. Id. Therefore,
according to Rodriguez, Defendant's FIVR technology performs many functions that voltage
regulators previously provided by third-party suppliers performed, and FIVR "displaces these
suppliers' products to a significant degree." Id.
From 1999 to 2009, Walters worked for two third-party supplier companies, Intersil
Corporation and International Rectifier Corporation, to "develop power specifications" and
define voltage regulators for use with Defendant's microprocessors. Jaikumar July 24, 2018
Decl., Ex. 4, ECF 62-4 (Walters's resume showing work at Intersil from 1999-2003 as a "Power
System Architect" which included work with "industry leaders" including Defendant to develop
power specifications; showing work at International Rectifier Corp from 2003-09 as a "Portable
Applications Manager"); id., Ex. 5, ECF 62-5 (July 6, 2018 email from Plaintiffs' counsel to
Defendant's counsel explaining that Walters's role at both Intersil and International Rectifier "was
to define integrated circuits (voltage regulation control) that their customers used to power
server, desktop, and laptop computers using Intel processors"; noting that Walters worked with
engineers in Defendant's vendor enabling groups from 1999 through 2009 and his principal
contacts there were Jon Day for desktop/server products and Jorge Rodriguez for laptop
products). Both corporations had non-disclosure agreements (NDAs) with Defendant, protecting
as confidential information provided by Defendant to those companies. Jaikumar July 24, 2018
Decl., Exs. 1, 2, 3, ECF 62-1, 62-2, 62-3.
According to Rodriguez, over the last twenty years, Defendant has released multiple
IMVP specifications, classified as "Intel Restricted Secret" documents which can be viewed by
4 - OPINION

non-Intel parties only under the protection of an NDA. Rodriguez Decl. ¶ 7. Rodriguez states
that the IMVP specifications released in those documents identify, in detail, information about
Intel microprocessors and the technical requirements for voltage regulators that can work with
Intel microprocessors. Id. As Rodriguez describes, Defendant provides these specifications to
suppliers under NDAs and then works with the suppliers to develop voltage regulators that the
suppliers will manufacture. Id. ¶ 8.
Rodriguez states that Defendant provided Walters with many confidential IMVP-related
documents during the years he worked in a confidential relationship with Defendant. Id. ¶ 10.
All of the documents were provided under an NDA and pursuant to a specific "Confidential
Information Transmittal Record for Restricted Secret Information" (CITR) that Walters was
asked to sign. Id. Rodriguez states that during his years of work with Defendant, Walters
received significant quantities of confidential information about Intel voltage regulator
technology. Id. ¶ 11. According to Rodriguez, as a power supply architect at Intersil, Walters
needed access to Defendant's IMVP specifications which are Intel Restricted Secret material, and
Walters received copies of such documents. Id. These documents described Defendant's
confidential designs for many aspects of voltage regulators, including how voltage was regulated,
how current was regulated, the role of a reference voltage, and the use of temperature. Id.
Attached to Rodriguez's Declaration are copies of email correspondence from Rodriguez to
Walters in which Rodriguez personally sent Defendant's confidential information to Walters. Id.
¶ 12 & Exs. 1, 2, 3, 4, 5; see also id. ¶¶ 13-18 (describing date and content of communications
and documents).
Based on Walters's prior employment by the two third-party supplier companies, his work
5 - OPINION

on voltage regulators for use in Defendant's microprocessors, and the undisputed receipt by
Walters of confidential documents subject to an NDA, Defendant argues that Walters should be
disqualified from acting as a consultant or expert for Plaintiffs in this litigation. In response,
Plaintiffs do not dispute Walters's prior employment but they contend that the work he performed
and the information he had access to is not directly related to the technology at issue in this case.
Moreover, Plaintiffs argue that Walters will review these documents in discovery anyway,
creating little potential for him to rely on documents he viewed outside of litigation to form his
opinions. The parties also dispute who will be most harmed if Walters is excluded.
Relevant cases indicate that disqualification motions are analyzed under a three-part test:
(1) was there a confidential relationship between the party and the expert; (2) is the information
disclosed by the party to the expert relevant to the current litigation; and (3) what is the relative
prejudice to the parties and the impact of disqualification on the integrity of the legal process.
See Oracle Corp. v. DrugLogic, Inc., No. C-11-00910-JCS, 2012 WL 2244305, at *5-6 (N.D.
Cal. June 15, 2012); Broadcom Corp. v. Emulex Corp., No. SACV 09-01058-JVS (ANx), 2010
WL 11465478, at *1 (C.D. Cal. Apr. 5, 2010).
I. Confidential Relationship
Walters was subject to formal NDA agreements that both of his employers had with
Defendant during the 1999-2009 period. Defendant also sent CITR forms identifying specific
confidential information Defendant made available to Walters which Walters signed and returned
to Defendant. Plaintiffs admit that through his work with Intersil and International Rectifier,
Walters was privy to Intel technical specifications under various NDAs entered into by his
former employers and he was provided with Intel voltage regulator specifications and IMVP
6 - OPINION

specifications that would inform third-party vendors how their products needed to perform to
function properly with Intel products. Pls.' Resp. 4, ECF 63 (also stating that his work with these
specifications amounted to less than ten-percent of his work for those companies).
Plaintiffs suggest that because Walters was not employed by Defendant and never directly
worked as a consultant to Defendant, he was not in a confidential relationship with Defendant.
Id. at 1, 8-9. Plaintiffs cite to three cases in support of this position, each of which involved an
expert working directly with the objecting party or that party's predecessor-in-interest. Id. at 8-9
(citing Auto-Kaps, LLC v. Clorox Co., No. 15 Civ. 1737 (BMC), 2016 WL 1122037, at *3
(E.D.N.Y. Mar. 22, 2016) (plaintiff's expert had consulted directly with the defendant on relevant
technology); Oracle, 2012 WL 2244305, at *6 (defendant's expert had consulting relationship
with plaintiff's predecessor-in-interest regarding technology at issue); Broadcom, 2010 WL
11465478, at *2 (defendant's expert was named inventor of patent at issue, was vice-president of
engineering for plaintiff's predecessor-in-interest)).
While it is true that these cases did not involve an expert who was employed by a thirdparty supplier instead of one employed directly by the objecting party or that party's predecessorin-interest, it is also true that none of these cases affirmatively address the situation here. Thus,
none of the cases actually discuss Plaintiffs' implicit contention that a confidential relationship
exists only when the challenged expert has worked directly for the objecting party or its
predecessor-in-interest. I do not find support for such a narrow view in the cases. As the
Broadcom court explained, the "primary reason courts look for a confidential relationship is to
determine whether it was reasonable to divulge confidential information to the party to be
disqualified." Broadcom, 2010 WL 11465478, at *2. Thus, that court explained, the focus is on
7 - OPINION

the reasonableness of the confidential disclosure at the time it was made. Id. It is "irrelevant that
the subsequent successor-in-interest never directly employed the party." Id. Similarly, in a 2013
Kansas case, the district court observed that in considering the existence of a confidential
relationship, the court must determine whether the relationship was one in which "it would be
reasonably expected that any communication between [the objecting party and the expert] would
be maintained in confidence by the expert." Sarl v. Sprint Nextel Corp., No. 09-2269-CM/DJW,
2013 WL 501783, at *4 (D. Kan. Feb. 8, 2013). In that case, the court held that a confidential
relationship existed between the plaintiff and the defendant's expert who was not a former
employee of the plaintiff's and was neither a former expert nor consultant for the plaintiff but
who had received confidential information from the plaintiff while employed by a company
previously "affiliated" with the plaintiff. Id. at *5.
Here, it was reasonable for Defendant to disclose confidential information to Walters's
employers during the course of Defendant's relationship with those companies. Given the
reasonableness of the confidential disclosures at the time and that Walters was bound by the
confidentiality restrictions pertaining to those disclosures as an employee of those third-party
suppliers, it is irrelevant that Walters was never employed directly by Defendant or had a
consulting relationship directly with Defendant. Defendant has established that a confidential
relationship existed between it and Walters.
II. Relevant to the Litigation
Plaintiffs argue that Defendant fails to establish that the information Walters received is
relevant to this litigation because (1) the information obtained by Walters was remote in time; (2)
the information will be produced in discovery; and (3) the technical information described by
8 - OPINION

Rodriguez as having been provided to Walters is not related to the '944 Patent and the claims of
infringement. I do not separately discuss the first argument. The fact that Walters received
confidential information ten to twenty years ago is not enough by itself to conclude that the
information is irrelevant to the litigation in the face of Defendant's assertion that the FIVR
technology at issue in this case grew out of the technology that was the subject of confidential
information received by Walters. The proper focus is on the second and third arguments.
A. Production in Discovery
Plaintiffs note that Defendant does not contend that the confidential information it
previously produced to Walters is unobtainable through discovery. As a result, they argue that
Defendant cannot prevail on this motion. In support, they cite to cases which state that
confidential communications regarding technical information as opposed to privileged
information such as that protected by attorney work product or attorney-client privilege, will not
support a disqualification motion. I find the cases distinguishable or not persuasive.
In Hewlett-Packard Co. v. EMC Corp., 330 F. Supp. 2d 1087 (N.D. Cal. 2004), the court
considered the defendant's motion to disqualify the plaintiff's expert who had previously been
retained by the defendant in another case in a different district court but which involved the same
patent. Id. at 1089-92. The only confidential information at issue was what the defendant's
lawyer had discussed with the expert during the pendency of that other case including viability of
the patent and questions of invalidity. The expert had not been previously employed by the
defendant or consulted for the defendant in regard to substantive technical information. Thus,
the Hewlett-Packard court had no reason to discuss whether an expert who received confidential
technical information outside of the litigation context had received confidential information of
9 - OPINION

the type capable of supporting disqualification. Accordingly, the nature of the dispute before the
court necessarily informed the legal precepts it cited regarding "confidential information." It was
in that context that the court stated that "[c]onfidential information essentially is information of
either particular significance or that which can be readily identified as either attorney work
product or within the scope of attorney-client privilege." Id. at 1094 (internal quotation marks
and brackets omitted) (further noting that such information could include discussion of the party's
litigation strategy, the types of experts the party expected to retain, opinions of the strengths and
weaknesses of each side, etc.). In the end, the court held that the defendant failed to establish that
the plaintiff's expert had received confidential information from the defendant's prior counsel
because the record showed that the expert's retention by that counsel consisted of a few short
telephone conferences, a single one-hour telephone conference, and limited discussion without
specifics of litigation strategy. Id. at 1097. The facts of Hewlett-Packard are distinguishable and
as a result, the legal standards cited and discussed are inapplicable here.
Other cases cited by Plaintiffs are unpersuasive. In Nikkal Industries, Ltd. v. Salton, Inc.,
the entirety of the court's discussion of the disqualification motion was grounded in the concept
of "privilege." 689 F. Supp. 187 (S.D. N.Y. 1988). There, the court initially cited to Federal
Rule of Civil Procedure 26's provision that discovery may be obtained regarding "'any matter, not
privileged, which is relevant to the subject matter involved in the pending action[.]'" Id. at 191
(quoting Fed. R. Civ. P. 26(b)) (emphasis in Nikkal). The court then discussed that the party
claiming a privilege has the burden of establishing its existence and its non-waiver. Id. The
court stated that it would look to "Supreme Court admonitions on the issue of privilege" for
guidance. Id. (noting, e.g., that courts do not look upon testimonial privileges with favor).
10 - OPINION

Finally, the court concluded that the meeting between the defendant's expert and an attorney for
the plaintiff was nothing more than an "employment style interview," which included providing
technical information. Because, in the court's opinion, "[c]ommunication based upon technical
information as opposed to legal advice is not considered privileged[,]" the court concluded that
the plaintiff had failed to show that the communication was privileged. Id. at 191-92. The
Nikkal case did not discuss "confidential information" as opposed to "privilege." As a result, the
case suggests that when an expert has received information recognized in the discovery context
as privileged, disqualification may be warranted if the expert and the provider of the information
had a confidential relationship. Because the court focused on the concept of "privileged"
information in the sense that a party may withhold the production of such information in
discovery, the court took an unnecessarily narrow view of the various contexts in which
confidential, non-privileged, information may be considered.
In contrast, other cases, as explained in Sarl, some of which Defendant cites here, "have
disqualified experts who have received confidential technical information wholly unrelated to
issues of privileges." Sarl, 2013 WL 501783, at *6. Sarl discussed the two conflicting lines of
cases: (1) those allowing disqualification of experts "who gained technical confidential
information concerning the patent or technology at issue in the litigation[,]" and (2) those that
limit disqualification to situations where the expert has received "privileged confidential
communications or documents pertaining to litigation, which may reflect information subject to
the work-product doctrine or attorney client privilege." Id. at *6-7. The Sarl court agreed with
the latter line of cases, noting the distinction "between confidential information that relates to
purely technical or business information that is discoverable in litigation, and information that
11 - OPINION

relates to confidential communications concerning legal strategies or other litigation-related
issues that is privileged and not otherwise subject to discovery." Id. at *7; see also id. at *6
(noting the plaintiff's argument that a "party's confidential business or technical information is
subject to discovery in the ordinary course of litigation" and that it "makes no difference, as a
practical matter, whether the expert became aware of that information via discovery taken in the
litigation or some other independent route" and distinguishing the "unfair advantage" that could
be obtained if the expert were exposed to a party's litigation strategies, analysis of strengths or
weaknesses of the case, or other "similar privileged or litigation-related confidential
information").
What Nikkal, Sarl, and the cases Sarl followed fail to appreciate, however, is that an
expert who has received confidential technical information is likely to be unable to segregate
information obtained in the context of the confidential relationship, and opinions based on that
information, from information produced in discovery. For example, the Auto-Kaps court
recognized the "danger [] that no one may know how the information [the expert] learned from
Clorox may affect his opinion and [that the expert] may inadvertently use confidential
information." Auto-Kaps, 2016 WL 1122037, at *4 (internal quotation marks omitted) (granting
motion to disqualify expert who had provided consulting services for defendant involving the
technology at issue in the litigation); see also Pellerin v. Honeywell Int'l Inc., No. 11cv1278BEN (CAB), 2012 WL 112539, at *3 (S.D. Cal. Jan. 12, 2012) (disqualifying expert because it
was unrealistic to believe that former employee could parse knowledge of confidential
information and rely only on information provided in litigation); Eastman Kodak Co. v.
Agfa-Gevaert N.V., No. 02-CV-6564, 2003 WL 23101783, at *5 (W.D.N.Y. Dec. 4, 2003)
12 - OPINION

(excluding expert who had "access to, knowledge of and training in many of the 'building blocks'
that produced Kodak's 'T–Grain patent'" and explaining that "[t]o expect [the expert] to
somehow suppress that knowledge by not revealing confidential information encompassed by his
employment agreement with Kodak when he has been retained by Agfa to evaluate the validity of
patents pertaining to the specific technology he spent over a decade studying for Kodak is
unworkable if not quixotic.").
In the instant case, Defendant asserts that in addition to documents, Walters had
conversations and participated in meetings with Defendant's engineers when confidential design
information was discussed. See Rodriguez Decl. ¶¶ 15, 16 (describing presentations for
meetings); ¶ 17 (describing minutes of a meeting attended by Walters). This undermines the
principles upon which Sarl and similar cases relied because Walters received confidential
information that he will not receive in the regular course of discovery in this case. But, as AutoKaps recognized, even if all the confidential information Walters received from Defendant is
discoverable, it is still impossible to know how the information he received in the context of his
confidential relationship has informed his opinions on IMVP technology. I am persuaded by the
cases recognizing that disqualification of an expert may be based on the expert's receipt of
technical information and not just "privileged" communications such as attorney-client or
attorney work product. Thus, the fact that the information may be obtained in discovery is not a
basis for denying the motion.
B. Relationship of Confidential Information to Litigation
As indicated above, Rodriguez states that Defendant's current FIVR voltage regulator
technology is an "outgrowth" of Defendant's prior IMVP work. Rodriguez Decl. ¶ 19. He
13 - OPINION

explains, as described above, that before 2013, Defendant's microprocessors required multiple
IMVP voltage regulators but since that time, the FIVR technology integrated the functionality of
the multiple IMVP voltage regulators onto the microprocessor die, manufactured by Defendant.
Id. As a result, FIVR microprocessors require only one external IMVP voltage regular because
the functions previously performed by the multiple IMVP regulators have been integrated onto
the die. Id.
Plaintiffs object to these assertions by Rodriguez, arguing that Rodriguez's claim that
FIVR is derived from the IMVP technology lacks support and that Rodriguez fails to state the
nature of his involvement in the development of FIVR. Pls.' Resp. 12 (further arguing there is no
foundation for the assertions in Paragraph 19 of Rodriguez's Declaration). I reject this argument.
Rodriguez has worked for Defendant for twenty-three years. Rodriguez Decl. ¶ 1. He is
currently a Senior Engineer who works in the Datacenter Power Solutions group and is
responsible for engineering power solutions for server computers. Id. ¶ 3. Previously, he was a
Senior Engineer responsible for Defendant's Mobile Power Delivery Platform and Hardware
Development. Id. ¶ 4. In that position, he "worked on voltage regulators for client computers
(e.g., PCs), and specifically, for mobile computers (laptop PCs)." Id. His declaration is sworn
under penalty of perjury. Rodriguez Decl. at p. 6 (declaring under penalty of perjury under the
laws of the United States that the foregoing assertions in the Declaration are true). Rodriguez's
work experience for more than twenty years as a Senior Engineer with power supply groups
provides a sufficient foundation for his assertions regarding the development of Defendant's
power supply technology.
The Complaint clearly implicates Defendant's FIVR voltage regulators as a basis for the
14 - OPINION

infringement allegations. E.g., Compl. ¶¶ 39-49 (allegations regarding infringement of Claim 1
of the '944 Patent based on the use of voltage identification codes (VIDs) in the FIVR voltage
regulators). And, based on Rodriguez's statements, FIVR is derived from the prior IMVP
technology and voltage regulators. Defendant argues that the confidential information Walters
received about IMVP is relevant to this litigation in three ways: (1) he received confidential
information concerning the same type of Intel voltage regulation functionalities that Plaintiffs
now accuse Defendant of infringing; (2) information Walters received is relevant to show
Defendant's independent development of its voltage regulator technology which rebuts Plaintiffs'
assertion that Defendant took some of its voltage regulation functionality from Plaintiffs; and (3)
the IMVP information received by Walters is relevant prior art to the '944 Patent and thus is
relevant to the invalidity of the '944 Patent.
Plaintiffs contend that Walters received only technical specifications regarding the IMVP
voltage regulators which, according to Plaintiffs, is distinct from technology or design
information. Pls.' Resp. 11 (stating that Walters received "specifications that products of outside
vendors would need to meet in order to function alongside Intel products in computers produced
by other companies more than a decade ago" and arguing that Defendant "wrongly uses
'technology' as an umbrella term[] to capture technical information that has no bearing on this
suit"). Walters asserts that he did not receive design information for voltage regulators or
information on how to implement a voltage regulator. Walters Decl. ¶ 6, ECF 63-2; see also id.
(stating that Defendant's IMVP specifications did not describe Defendant's confidential design of
voltage regulators, but instead, contained only the voltage regular specifications); id. ¶ 8
(information received was specifications that the products of outside inventors needed to meet so
15 - OPINION

their products would function alongside Defendant's products in a computer); id. (information
labeled as Defendant's technology did not disclose microprocessor design or inner workings but
conveyed the desired response of the regulator to the given command).
The dispute centers on whether information received by Walters during his ten-year
confidential relationship with Defendant relates to the FIVR technology at issue in this litigation,
and specifically, whether he received confidential information regarding voltage regulators
including how voltage was to be regulated, how current was to be regulated, use of temperature,
and specifications and technical requirements supporting the voltage regulators' ability to work
with Defendant's microprocessors. Through Rodriguez's Declaration, Defendant points to
several examples of information received by Walters which Defendant contends support its
position. Plaintiffs rely on Walters's Declaration to contend that the information is not relevant
to the technology at issue in this case.
First, Rodriguez cites to an August 15, 2003 email sent to Walters and others regarding
an updated pre-release version of the specification for the IMVP-IV, which Rodriguez explains is
the fourth iteration of Defendant's IMVP technology. Rodriguez Decl. ¶ 13. Rodriguez asserts
that the IMVP-IV specification contains detailed design guidelines and electrical and timing
requirements for voltage regulators required to work with Defendant's microprocessors. Id. The
email and its seventy-nine page attachment is Exhibit 1 to Rodriguez's Declaration. The
introductory page of the document confirms that the document defined the "DC-DC Voltage
Regulator electrical requirements" for certain mobile processors used in certain platforms and
that the document contained "collateral" defining the Power Status Indicator signal. Rodriguez
Decl., Ex. 1 at 10 (89900DOC00051124). Later, the electrical and timing requirements are
16 - OPINION

spelled out. Id. at 39-42 (89900DOC00051153-56). This section describes the minimum step
voltage, the receipt of VID codes, requirements for deep sleep voltage settings, and suggested
designs for the "Deeper Sleep" voltage function. Id. Other pages address the use of adaptive or
active voltage positioning. Id. at 48 (89900DOC0051162) (suggesting adaptive voltage
positioning to minimize the quantity of certain "bulk-decoupling capacitators"); 50
(89900DOC00051164) (same).
Walters states that while Exhibit 1 to Rodriguez's Declaration contains some design
information to show where voltage regulators interact with a microprocessor, it is rudimentary
information as opposed to details that would allow a person to create a copy of an Intel
microprocessor. Walters Decl. ¶ 12a. Neither he nor Plaintiffs cite to a particular page within
the eighty-page exhibit to support his assertion. As to the statements in this document regarding
adaptive voltage positioning, Walters states that this phrase is an Intel synonym for voltage
droop, which is the loss in output voltage from a device as it drives a current or load. Id.
Voltage droop, according to Walters, has been practiced "well before" the IMVP specifications
were shared with him. Id. He asserts that this information is "stale" because it has been in the
public domain for some time. Id.
Next, Rodriguez describes a July 2, 2002 email to Walters with an attached file which
was an Intel Restricted Sheet presentation prepared by Rodriguez and a colleague addressing
"IMVP-5 Prescott & NewNWD Power Delivery Overview" and which illustrated IMVP-5 power
enabling challenges and specifically referred to using a "Thermal Monitor" to adjust the
operation of the voltage regular based on temperature. Rodriguez Decl. ¶ 16 (citing Ex. 3 to
Rodriguez Decl. at 4 (8900DOC00051309) (noting that the purpose of the outline was to
17 - OPINION

"Illustrate IMVP5 power enabling challenges w.r.t. CRB and Customer use"); 8
(89900DOC00051313) (discussing the "VR_TT# Thermal Monitor" as a "NEW IMVP Design
Feature[] in IMVP5"); 14 (89900DOC00051319) (noting that one of the "Next Steps" would be
to "[l]everage [Intel's] thermal monitoring expertise")). Walters states that the thermal
monitoring references in Exhibit 3 to Rodriguez's Declaration have no apparent relation to the
FIVR technology at issue in this litigation. Walters Decl. ¶ 12c. He notes that the documents
show that Defendant acknowledges thermal limitations on its microprocessors, especially in
laptops, and explain an operation to prevent overheating in the computer, meaning a protective
function responsive to a particular temperature limit. Id.
In another example, Rodriguez describes an April 25, 2003 email to Walters containing
minutes of meetings of an Enabling Committee for IMVP5, and also attaching a document
entitled IMVP6 Tradeoffs which shows data for a later version of IMVP called IMVP6 and the
implications of implementing IMVP6 either with or without thermal relief. Rodriguez Decl. ¶ 17
(citing Ex. 4 to Rodriguez Decl.); see also Rodriguez Decl., Ex. 4 at 2 (8900DOC00051366)
(showing Walters as a presenter at the meeting); 22-25 (8900DOC00051386-89) (showing
IMVP6 "options" or tradeoffs). In regard to Exhibit 4 to the Rodriguez Declaration, Walters
states that this exhibit does not affect any infringement analysis in the litigation and discloses
only a discussion regarding a protective function to prevent overheating. Walters Decl. ¶ 12c.
Rodriguez also describes a November 19, 2002 email sent by a colleague to Walters as
well as to Rodriguez and others at Intel and Intersil with a subject line "Now the down side:
IMVP-5 Update from Intel." Rodriguez Decl. ¶ 18 (citing Rodriguez Decl., Ex. 5). This email
discusses "several issues" that Defendant found with an Intersil voltage regulator, including one
18 - OPINION

related to a "voltage droop or undershoot below the specification." Rodriguez Decl., Ex. 5
(89900DOC00051234-35). Walters states that Exhibit 5 addresses issues discovered in an
Intersil prototype regulator which was rushed through design and assembly before Intersil could
validate the design. Walters Decl. ¶ 12d. The issues were resolved in subsequent regulators. Id.
According to Walters, this information has no bearing on the infringement analysis in this
litigation. Id.
Despite Walters's assertions that these documents do not affect the infringement analysis
or are unrelated to FIVR technology, Defendants point to specific allegations in the Complaint
which cite to voltage regulator features at issue in the litigation which were disclosed in the
confidential information received by Walters. E.g., Compl. ¶ 43 ("A FIVR produces an output
load voltage specified by the VID reference code"); ¶ 47 ("The droop function, also known as
load line or active voltage positioning, is used in a voltage regulator to automatically lower the
output voltage based on the output current"); ¶ 57 ("[T]he temperature data is used by the
calibration control circuit that is a part of each of the Infringing Products to adjust sense outputs
and droop outputs").
The record supports a conclusion that the confidential information concerning
Defendant's IMVP technology and provided to Walters from 1999 to 2009 is reasonably related
to the FIVR technology at issue in the infringement claim. Both parties agree that the
confidential information included specifications for how Defendant's third-party suppliers were
to produce voltage regulators using IMVP technology that would be compatible with Defendant's
microprocessors. While Plaintiffs choose to characterize the information as "technical" or
"specifications," suggesting these were just manufacturing instructions or parameters, Defendant
19 - OPINION

chooses to characterize the information as "design" related and information which revealed
technology decisions. I do not view these terms in such black or white concepts. Instead,
information regarding how a third-party supplier is to produce a voltage regulator that will work
with Defendant's microprocessor inherently concerns the design and functionality of the voltage
regulator as well as the microprocessor. It is reasonable to conclude that the provision of
specifications and technical information is capable of transmitting technological design concepts
and information. Additionally, the record shows a long-term relationship between Walters and
Defendant concerning voltage regulators. It also shows that during that relationship, IMVP went
through progressive iterations. Given the length of the relationship which allowed Walters to
review confidential information regarding progressive versions of the IMVP technology, it is
reasonable to find that the technical information and specifications imparted IMVP design
information.
In fact, in describing Exhibit 5 to the Rodriguez Declaration which concerned issues
related to an Intersil prototype voltage regulator, Walters states that the prototype was "rushed
through design and assembly to Intel before Intersil was able to validate the design." Walters
Decl. ¶ 12d. With this, Walters indicates that Intersil was in fact involved in the design of
voltage regulators for Defendant. The processing of designing voltage regulators for Defendant's
microprocessors requires knowledge of the relevant voltage regulator technology and how it
relates to Defendant's microprocessor. It is reasonable to assume that Walters acquired
knowledge of Defendant's microprocessor design along with the relevant voltage regulator
technology. In another example, Exhibit 1 to the Rodriguez Declaration includes, among other
things, suggested designs for the "Deeper Sleep" voltage function. Rodriguez Decl., Ex. 1 at 42.
20 - OPINION

And, during oral argument, Defendant's counsel pointed to another page of Exhibit 1 which
contains a section entitled "Voltage Regulator Design Guidelines." Id. at 64
(89900DOC00051178). Thus, evidence in the record indicates that in addition to what Walters
refers to as specifications and technical information, he did in fact receive IMVP design
information.
Defendant has met its burden of establishing that the information it disclosed to Walters
is relevant to the current litigation.
III. Relative Prejudice and Impact on the Integrity of the Legal Process
Plaintiffs assert that they will be substantially prejudiced by Walters's disqualification
because it is "not a slight undertaking to find an expert in the field of voltage regulation who is
willing to testify against Intel." Pls.' Resp. 13. Plaintiffs state that they spoke with many experts
who either worked for parties with relationships with Defendant or worked for universities which
received large grants from Intel. However, they provide no details regarding these contacts and
their assertion is unsupported by a declaration or an affidavit. They also assert that given the
August 13, 2018 deadline for infringement contentions, it is unworkable for them to find another
expert.
Defendants cite to other patent cases against it, including one involving FIVR technology,
in which experts without a relationship to Intel have testified. Def.'s Reply 9, ECF 69. They also
note that even without Walters, Plaintiffs have reviewed Defendant's technical documents,
including source code, and have taken a technically detailed, full-day deposition of Defendant's
lead FIVR designer. Defendant asserts it will be substantially prejudiced because without
disqualification, Plaintiffs will be able to rely on Walters's use of confidential information
21 - OPINION

Walters once promised to use only for Defendant's benefit, against Defendant. This will allow
Plaintiffs to obtain an unfair advantage because Walters may generate opinions based on
information he received confidentially, outside of discovery. Finally, Defendant notes that
because Walters is now an independent consultant, he could easily go to work for an Intel
competitor on voltage regulator technology issues after receiving Intel's latest design technology.
Plaintiffs state that Walters has no plans to be active in that area.
This case is at a relatively early stage, having been filed in February 2018. Discovery is
ongoing and claim construction opening briefs, at the time the disqualification motion was filed,
were not due to the Court until January 2019. At the end of the August 15, 2018 oral argument, I
extended the case deadlines, including Plaintiffs' deadline to disclose infringement contentions. I
gave Plaintiffs until November 15, 2018 to submit an amended disclosure of asserted claims and
infringement contentions. Given the extension of the deadlines, I find that Plaintiffs will suffer
relatively little prejudice by having to locate a new expert. See Broadcom, 2010 WL 11465478,
at *4 (finding that disqualification presented little prejudice to defendant because, among other
reasons, the case was at a relatively early stage and thus, the retention of another expert was
unlikely to disrupt the case schedule). Additionally, because Plaintiffs failed to support their
alleged inability to find another qualified expert with any specific detail, they have not
established sufficient prejudice to overcome the prejudice to Defendant by allowing Walters to
serve as Plaintiffs' expert after having received confidential information relevant to the
technology at issue from Defendant during a ten-year confidential relationship. See Auto-Kaps,
2016 WL 1122037, at *4 (court rejected prejudice argument where the party seeking approval of
expert "ha[d] not presented evidence" that there "are few experts on the topic").
22 - OPINION

Finally, as to the integrity of the legal process, courts look to the incentives that would be
created by the grant or denial of disqualification of an expert. CreAgri, Inc. v. Pinnaclife, Inc.,
No. 5:11-cv-06635-LHK, 2013 WL 6700395, at *10 (N.D. Cal. Dec. 18, 2013). Notable here is
that Walters's relationship with Defendant preexisted this litigation and "came to a natural end"
before the litigation commenced. See id. Thus, it is unlikely that "ill incentives," to either retain
"an expert solely for the purpose of preempting access to that expert by opposing counsel," or to
fail to "withdraw a previously designated expert while litigation is pending for fear that the
party's confidential information would become available to its adversary," will occur. Id.
(internal quotation marks omitted)
Defendant satisfies the three-part test for disqualification. Thus, I grant the motion to
disqualify Walters.

Dated this

day of

Marco A. Hernandez
United States District Judge

23 - OPINION

, 2018