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Board of Trustees of University of Illinois v. Micron Technology Inc.

United States District Court, C.D. Illinois, Urbana Division

August 3, 2016

BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS, Plaintiff,
v.
MICRON TECHNOLOGY, INC., Defendant.

          ORDER

          JONATHAN E. HAWLEY U.S. MAGISTRATE JUDGE

         Before the Court is Plaintiff, Board of Trustees of the University of Illinois’s (“University”), Motion to Compel Deposition Testimony [#109] (“Pltf. Mot.”), and the Defendant, Micron Technology, Inc.’s (“Micron”) response (“Def. Resp.”) thereto [#110]. This Court held a hearing on the motion on August 2, 2016. For the reasons stated, infra, the University’s motion is GRANTED.

         I[1]

         The University owned three patents that “pertain generally to the use of deuterium in the fabrication of semiconductor devices.” Am. Compl. ¶ 3, ECF No. 37. Micron and the University entered into a contract in 2004 (the Work Agreement), the terms of which called for Micron to supply the University with silicon wafers that the University would treat with its “deuterium anneal” processes (which processes were the subject of the patents-in-suit) and then return to Micron so Micron could study them. See Am. Compl. Ex. D (“work agreement”) ¶¶ 1, 2, ECF No. 37-4 at 2.

         The University’s amended complaint alleges that Micron infringed each of the patents-in-suit and also breached the Work Agreement when Micron manufactured and sold flash devices that “incorporate deuterium with a designed process step.” See Am. Compl. ¶¶ 13, 25, 29, 33, 38. The Court stayed this case while Micron sought inter partes review of the patents before the Patent Trial and Appeal Board (“PTAB”). See 35 U.S.C. § 311. The PTAB found that all three patents were obvious based on prior art, and therefore held them invalid. See 35 U.S.C. § 103 (codifying nonobviousness requirement). The Federal Circuit summarily affirmed the PTAB’s decision, effectively knocking out the University’s patent infringement claims. Accordingly, all that remains in the case is an Illinois state law claim asserted in Count IV for breach of contract. Am. Compl. ¶¶ 36-39.

         The breach of contract claim is premised upon the 2004 Work Agreement executed by the parties. The contract allowed Micron to “test, inspect, use, disassemble, and analyze the treated Wafers. . . for evaluation purposes only, ” and could be read to have required Micron to get a license from the University if it sought to make money off the University’s “intellectual property.” Am. Compl. Ex. D ¶¶ 2(a) and 2(c). Paragraph 2(c) of the Work Agreement provides, “University represents that it has a proprietary interest in its intellectual property underlying the Deuterium Annealing Process.” Id. at 2(c). It is this sentence which is central to the dispute now before the Court.

         II

         On June 8, 2016, the University served a notice of deposition, requesting to depose Micron on a number of topics pursuant to Federal Rule of Civil Procedure 30(b)(6). Among the topics are several seeking information about Micron’s alleged use of deuterium in the manufacture of flash memory devices, as well as other technical and financial information about “Micron’s flash memory devices annealed in a deuterium atmosphere.” See Def. Resp. p. 4, ECF No. 110. Micron agreed to provide a corporate representative to testify regarding most of the University’s deposition topics, but objected to Topics Nos. 7-10 and 12-14. See generally, Pltf. Mot., Ex. A. In its response to the Motion to Compel, Micron withdrew the objection to Topic 13 “in an effort to reduce the number of disputes for the Court to resolve, ” thereby leaving only Topics Nos. 7-10, 12, and 14 at issue. Def. Resp. p. 1, n. 1.

         Specifically, the disputed topics seek to question Micron’s witness on the following topics:

Topic No. 7: Micron’s decision to anneal flash memory devices in a deuterium atmosphere.
Topic No. 8: Micron’s processes for the annealing of flash memory devices in a deuterium atmosphere, including all process recipes therefor.
Topic No. 9: The n-channel field effect transistors contained in Micron’s flash memory devices annealed in a deuterium atmosphere.
Topic No. 10: The structure of Micron’s flash memory devices annealed in a deuterium atmosphere, including the n-channel field effect transistors, drains, sources and gate insulating and semiconductive layers thereof.
Topic No. 12: The revenues derived by Micron from the sales of flash memory devices annealed in ...

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