Yangtze Memory Technologies Company, Ltd. v. Micron Technology, Inc.

Background

Micron Technology, Inc., which was also a counterclaimant, moved to compel discovery from Yangtze Memory Technologies Ltd. and Yangtze Memory Technologies, Inc., which the order collectively calls YMTC. The requests concerned two subjects: YMTC’s importation, sales, offers for sale, sampling, testing, qualification, and related activity involving accused products; and former Micron engineers who became named inventors of YMTC’s asserted patents. Micron said the inventor-related discovery supported its contention that it owned certain patents because a former Micron employee developed the inventions while working for Micron and assigned rights to Micron.

Activity-Related Requests

The court granted Micron’s motion in part as to Interrogatory 12. It treated testing, qualification, compliance checking, and use of products in the United States as evidence of importation and use because the products were manufactured in China. But it found the request for the identity of every related document or thing overbroad and replaced it with a request for documents and things sufficient to show the relevant activity.

The court granted the motion as to Interrogatory 13, while adding a limitation that the requested information had to be provided to the extent it could be pulled from fields in one or more databases. The court allowed discovery into worldwide sales because foreign conduct may contribute to patent damages when there is a sufficient causal relationship to domestic infringement. Micron did not have to prove its damages theory before obtaining discovery about its damages claims.

The court denied the motion as to Interrogatory 15. It found that efforts to obtain approval or product qualification were, at most, adjacent to relevant conduct such as importation, offers for sale, sales, and use in the United States. It also found the detailed narrative requested disproportionate to the needs of the case.

The court granted the motion as to Request for Production (RFP) 41, which sought information about where accused products were manufactured, fabricated, qualified, and tested. The court found those locations relevant to importation and potentially relevant to damages.

For RFP 42, the court ordered the parties to meet and confer further because they had not adequately discussed the request. The court denied the motion as to RFP 43 because Micron had not shown that efforts to obtain approval or qualification were relevant, and because producing all related documents would be disproportionate.

The court granted the motion in part as to RFP 44. It limited the request to documents sufficient to show YMTC’s efforts to test, evaluate, qualify, or validate accused products in the United States. The court otherwise found the request for all documents and things overbroad.

For RFP 45, the court struck the phrases “or other documents” and “YMTC’s Xtacking® technology.” It otherwise granted the motion, subject to further discussion about document custodians and non-custodial sources. The court found the remaining marketing materials potentially relevant to sales and offers for sale, including foreign conduct that might be relevant to damages.

The court granted the motion as to RFPs 48, 49, 50, and 53. These requests concerned transfers of accused products between YMTC entities, sales or offers for sale made on YMTC’s behalf, worldwide sales information, and the first prototypes, testing, release, and use of each accused product. The court found the information relevant to importation, sales, offers for sale, and damages.

The supplied opinion text begins discussing RFP 51 and states that the parties had not sufficiently met and conferred, but the text provided does not show the court’s ruling on that request.

Inventor-Related Requests

The court denied the motion as to Interrogatory 22. The request covered every YMTC employee who had previously been a Micron engineer, rather than limiting the inquiry to inventors of the two patents involved in Micron’s ownership counterclaims. The court also found that the request for documents about those employees’ work at Micron was not limited to the relevant patents. It concluded that the request was not properly tailored to relevant and proportional discovery concerning Micron’s counterclaims and related defenses.

The court granted the motion as to RFP 15, which sought documents concerning communications between named inventors and YMTC about the asserted patents, related patents or applications, accused products, or the lawsuit. Although the request was broad, the court found that the documents were likely held by identifiable custodians and could be located using search terms involving the named inventors.

The court denied the motion as to RFPs 73 through 78. It stated that the requests did not attempt to develop a trade-secret-misappropriation claim that had been pleaded.

Disposition

The order therefore granted, granted in part, denied, or otherwise addressed the specified discovery requests in separate rulings. It also ordered further meet-and-confer discussions concerning RFP 42 and aspects of RFP 45. The supplied text does not reveal the disposition of RFP 51.