United States District Court, C.D. Illinois, Urbana Division
JONATHAN E. HAWLEY U.S. MAGISTRATE JUDGE
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.
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.
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.
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.
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.
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
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 ...