Exhibit A 
Permanent Bureau July 2017 

LETTER OF REQUEST

COMMISSION ROGATOIRE

Hague Convention of 18 March 1970 on the

Taking of Evidence Abroad in Civil or Commercial Matters

Convention de La Haye du 18 mars 1970 sur

l’obtention des preuves à l’étranger en matière civile ou commerciale

1. Sender

Expéditeur

2. Central Authority of the

Requested State

Autorité centrale de l’État requis

3. Person to whom the executed

request is to be returned

Personne à qui les pièces constatant

l’exécution de la demande doivent être

renvoyées

4. Specification of the date by which the requesting authority requires receipt of the

response to the Letter of Request

Indiquer la date limite à laquelle l’autorité requérante désire recevoir la réponse à la commission

rogatoire

Date

Date limite

Reason for urgency*

Raison de l’urgence

In conformity with Article 3 of the Convention, the undersigned applicant has the honour to submit 

the following request:

En conformité de l’article 3 de la Convention, le requérant soussigné a l’honneur de présenter la demande 

suivante :

5. a Requesting authority

(Art. 3(a))

Autorité requérante 

(art. 3(a))

b To the Competent Authority of 

(Art. 3(a))

À l’Autorité compétente de 

(art. 3(a))

c Names of the case and any 

identifying number

Nom de l’affaire et numéro 

d’identification de l’affaire

6. Names and addresses of the parties and their representatives (including representatives in

the Requested State*) (Art. 3(b))

Identité et adresse des parties et de leurs représentants (y compris représentants dans l’État requis) (art. 3(b))

a Plaintiff

Demandeur

Representatives

Représentants

b Defendant

Défendeur
Permanent Bureau July 2017 

Representatives

Représentants

c Other parties

Autres parties

Representatives

Représentants

7. a Nature of the proceedings

(divorce, paternity, breach of 

contract, product liability, etc.) 

(Art. 3(c))

Nature et objet de l’instance (divorce, 

filiation, rupture de contrat, 

responsabilité du fait des produits, 

etc.) (art. 3(c))

b Summary of complaint

Exposé sommaire de la demande

c Summary of defence and 

counterclaim* 

Exposé sommaire de la défense ou 

demande reconventionnelle

d Other necessary information or 

documents*

Autres renseignements ou documents 

Utiles

8. a Evidence to be obtained or

other judicial act to be 

performed (Art. 3(d))

Actes d’instruction ou autres actes 

judiciaires à accomplir (art. 3(d))

b Purpose of the evidence or 

judicial act sought

But des actes à accomplir

9. Identity and address of any

person to be examined

(Art. 3(e))*

Identité et adresse des personnes à

entendre (art. 3(e))

10. Questions to be put to the

persons to be examined or

statement of the subject matter

about which they are to be

examined (Art. 3(f))*

Questions à poser ou faits sur

lesquels les personnes susvisées

doivent être entendues (art. 3(f))

11. Documents or other property to

be inspected (Art. 3(g))*

Documents ou objets à examiner (art.

3(g))
Permanent Bureau July 2017 

12. Any requirement that the

evidence be given on oath or

affirmation and any special

form to be used (Art. 3(h))*

Demande de recevoir la déposition

sous serment ou avec affirmation et,

le cas échéant, indication de la

formule à utiliser (art. 3(h))

13. Special methods or procedure

to be followed (e.g., oral or in

writing, verbatim transcript or

summary, cross-examination,

etc.) (Arts 3(i) and 9)*

Formes spéciales demandées

(déposition orale ou écrite, procèsverbal sommaire ou intégral, “crossexamination”, etc.) (art. 3(i) et 9)

14. Request for notification of the

time and place for the

execution of the Request and

identity and address of any

person to be notified (Art. 7)*

Demande de notification de la date et

du lieu de l’exécution de la requête, de

l’identité et de l’adresse de la ou des

personnes à informer (art. 7)

15. Request for attendance or

participation of judicial

personnel of the requesting

authority at the execution of the

Letter of Request (Art. 8)*

Demande d’assistance ou de

participation des magistrats de

l’autorité requérante à l’exécution de

la commission rogatoire (art. 8)

16. Specification of privilege or

duty to refuse to give evidence

under the law of the Requesting

State (Art. 11(b))*

Spécification des dispenses ou

interdictions de déposer prévues par

la loi de l’État requérant (art. 11(b))

17. The fees and costs incurred

which are reimbursable under

the second paragraph of Article

14 or under Article 26 of the

Convention will be borne by:*

Les taxes et frais donnant lieu à

remboursement en vertu de l’article

14, alinéa 2 et de l’article 26 seront

réglés par :

Date of request

Date de la requête

Signature and seal of the requesting 

authority

Signature et sceau de l’autorité requérante

*Omit if not applicable / Ne remplir qu’en cas de nécessité
IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

UNIFICATION TECHNOLOGIES LLC,

Plaintiff, Civ. A. No. 6:20-CV-500

vs.

MICRON TECHNOLOGY, INC., et al.,

Defendants

ATTACHMENT A 

Unification Technologies LLC (“UTL”) is represented in this civil action by: 

Edward R. Nelson III 

Robert A. Delafield II 

Nelson Bumgardner Conroy PC 

3131 West 7th St., Suite 300 

Fort Worth, Texas 76107 USA 

Email: ed@nelbum.com, bobby@nelbum.com 

Jonathan H. Rastegar 

Nelson Bumgardner Conroy PC 

 2727 N. Harwood St., Suite 250 

Dallas, Texas 75201 USA 

Email: jon@nelbum.com 

Timothy E. Grochocinski 

Nelson Bumgardner Conroy PC 

 15020 S. Ravinia Ave., Suite 29 

Orland Park, Illinois 60462 USA 

Email : tim@nelbum.com 

UTL is also represented in connection with these letters rogatory by: 

Theodore J. Folkman 

Folkman LLC 

53 State St., Suite 500 
2

Boston, Massachusetts 02109 USA 

Email: ted@folkman.law

Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas 

LLC (together, “Micron”) are represented in this civil action by: 

Thomas M. Melsheimer 

Natalie Arbaugh 

Qi Peter Tong 

Winston & Strawn LLP 

2121 N. Pearl St., Suite 900 

Dallas, Texas 75201 USA 

Email: tmelsheimer@winston.com, narbaugh@winston.com, ptong@winston.com 

Katherine Vidal 

Michael R. Rueckheim 

Winston & Strawn LLP 

275 Middlefield Rd., Suite 205 

Menlo Park, CA 94025 USA 

Email: kvidal@winston.com, mrueckheim@winston.com 

Vivek V. Krishnan 

Winston & Strawn LLP 

35 W. Wacker Dr. 

Chicago, Illinois 60601 USA 

Email: vkrishnan@winston.com 
IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

UNIFICATION TECHNOLOGIES LLC,

Plaintiff, Civ. A. No. 6:20-CV-500

vs.

MICRON TECHNOLOGY, INC., et al.,

Defendants

ATTACHMENT B 

 UTL, the plaintiff in the action, is the owner of U.S. Patent Nos. 8,762,658 (“the ’658 

Patent”), 8,533,406 (“the ’406 Patent”), and 9,632,727 (“the ’727 Patent,” collectively “the 

Patents”). The Patents, in general terms, relate to managing data on solid-state devices such as 

Flash memory drives in order to make certain storage functions more efficient. 

 UTL claims that Micron infringed its Patents in violation of Title 35, Section 271(a) of the 

United States Code by making, using, selling, offering for sale, or importing into the United States 

products that are covered by claims of the Patents. UTL claims that Micron’s products, for example 

the Micron 5200 Series SSD, infringe the ’658 Patent because they contain a non-volatile storage 

medium such as flash memory, a flash translation layer, and circuitry and associated software that 

stores data in response to receiving certain commands such as the TRIM command, such that data 

is stored in response to the command indicating that certain data is erased. UTL claims that 

Micron’s products, for example the Micron Series 5200 Series SSD, infringe the ’406 Patent 

because they utilize flash memory, a flash translation layer that maps one or more logical block 

addresses to physical address for certain data and contains circuitry that is configured to receive a 
2

TRIM command that indicates and records that data stored in the 3d TLC NAND flash memory at 

the location specified by the logical block addresses indicated in a TRIM command has been 

deleted and can be erased. UTL also claims that Micron’s products, for example the Micron 5200 

Series SATA SSDs, infringe the ’727 Patent because they include solid-state storage memory such 

as NAND flash memory along with a controller, a flash translation layer, and circuitry and 

associated software that assigns logical addresses to physical addresses used to store data on the 

solid-state storage memory and also removes those assignments in response to commands such as 

TRIM from the operating system. Micron denies these allegations and asserts several affirmative 

defenses. Micron has also brought several counterclaims including non-infringement, invalidity, 

waiver, unenforceability, and anti-trust counterclaims. 
IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

UNIFICATION TECHNOLOGIES LLC,

Plaintiff, Civ. A. No. 6:20-CV-500

vs.

MICRON TECHNOLOGY, INC., et al.,

Defendants

ATTACHMENT C 

DOCUMENTS TO BE OBTAINED 

(1) All source code used by the controllers that Memblaze Technology Co., Ltd. provided to 

Micron for use in the following solid state drives (“SSDs”): Micron 7300, Micron 9200, and 

Micron 9300 Series. 

TESTIMONY TO BE OBTAINED 

This Court also requests that the appropriate judicial authorities of China order Memblaze, 

through an authorized representative with personal knowledge of the source code, to answer the 

following questions under oath, in order to authenticate the source code: 

a. Is the source code that Memblaze has produced a true and correct copy of the 

source code that it understands is used in the controllers incorporated in the 

following series of Micron SSD devices: Micron 7300, Micron 9200, and 

Micron 9300 Series? 
IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

UNIFICATION TECHNOLOGIES LLC,

Plaintiff, Civ. A. No. 6:20-CV-500

vs.

MICRON TECHNOLOGY, INC., et al.,

Defendants

ATTACHMENT D 

 This Court has entered a Protective Order in this case, which provides protections for 

parties or non-parties that produce confidential and proprietary information or trade secrets in the 

course of this litigation. A copy of the protective order is attached. The Protective Order provides 

specific protections for parties or non-parties producing source code. The protections are described 

in detail beginning at paragraph 13 of the Protective Order. 

Due to difficulties of international travel during the COVID-19 pandemic, this Court 

requests that Memblaze be ordered to produce the source code for inspection at a place, within or 

outside of the People’s Republic of China, to be agreed by Memblaze Technology Co., Ltd. and 

counsel for the parties, or failing an agreement, to be determined by the appropriate judicial 

authorities of China, in accordance with the procedures outlined in the Protective Order on a date 

to be agreed by Memblaze Technology Co., Ltd and counsel for the parties within one month of 

issuance of an order for production by the appropriate judicial authority of China. 
ORIGINAL COMPLAINT Page 1 of 16

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

Unification Technologies LLC,

Plaintiff,

v.

Micron Technology, Inc.; Micron 

Semiconductor Products, Inc.; and 

Micron Technology Texas LLC,

Defendants.

§

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§

§

§

§

§

§

§

Civil Action No. 6:20-cv-500

Jury Trial Demanded

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff Unification Technologies LLC files this Original Complaint for patent 

infringement against Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron 

Technology Texas LLC, alleging as follows:

NATURE OF THE SUIT

1. This is a claim for patent infringement arising under the patent laws of the United 

States, Title 35 of the United States Code.

THE PARTIES

2. Plaintiff Unification Technologies LLC (“UTL”) is a Texas Limited Liability 

Company with its principal place of business at 6136 Frisco Square Boulevard, Suite 400, Frisco, 

Texas 75034.

3. Defendant Micron Technology, Inc. (“Micron Technology”) is a Delaware 

corporation with a principal place of business at 8000 South Federal Way, Boise, Idaho 83716.

Micron Technology also has a place of business at 101 West Louis Henna Boulevard, Suite 210, 

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 1 of 16
ORIGINAL COMPLAINT Page 2 of 16

Austin, Texas 78728. Micron Technology is registered with the Texas Secretary of State to do 

business in Texas.

4. Defendant Micron Semiconductor Products, Inc. (“Micron Semiconductor”) is 

an Idaho corporation with a principal place of business at 8000 South Federal Way, Boise, Idaho 

83716. Micron Semiconductor also has a place of business at 101 West Louis Henna Boulevard, 

Suite 210, Austin, Texas 78728. Micron Semiconductor is registered with the Texas Secretary of 

State to do business in Texas. Micron Semiconductor can be served through its registered agent, 

The Corporation Service Company, 211 E. 7th Street, Suite 620, Austin, TX 78701-3218.

5. Defendant Micron Technology Texas, LLC (“Micron Texas”, collectively 

“Micron”) is an Idaho Limited Liability Company with a principal place of business at 8000 South 

Federal Way, Boise, Idaho 83716. Micron Texas also has places of business at 101 West Louis 

Henna Boulevard, Suite 210, Austin, Texas 78728 and 805 Central Expressway South #100, Allen, 

Texas 75013. Micron Semiconductor can be served through its registered agent, The Corporation 

Service Company, 211 E. 7th Street, Suite 620, Austin, TX 78701-3218.

6. Micron is one of the largest memory chip makers in the world. It makes dynamic 

random-access memory (“DRAM”), NAND Flash, and NOR Flash memory, and other Solid-State

Drive (“SSD”) and controller products. Micron’s products are offered under the Micron brand as 

well as private labels. Micron makes its own products in semiconductor fabrication plants in the 

United States and other countries throughout the world. Micron sells its products to customers, 

including customers in this District, in the computer, networking and storage, consumer 

electronics, solid-state drives, and mobile telecommunications markets.

7. Micron maintains offices in Austin and Allen, Texas. Within the United States, 

Micron also has offices in Folsom, Irvine, Longmont, Milpitas, San Diego, and San Jose, 

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 2 of 16
ORIGINAL COMPLAINT Page 3 of 16

California; Boise and Meridian, Idaho; Minneapolis, Minnesota; Lehi, Utah; Manassas, Virginia; 

and Seattle, Washington.1 Outside the United States, Micron also has offices in China, India, 

Japan, Korea, Malaysia, Singapore, Taiwan, Belgium, Germany, Israel, Italy, and the United 

Kingdom.2

8. Micron operates semiconductor fabrication plants in Boise, Idaho; Lehi, Utah; and 

Manassas, Virginia, and fabricates and manufactures SSD products in at least Lehi, Utah and 

Manassas, Virginia.

3 Outside the United States, Micron operates semiconductor fabrication plants 

in at least China, Japan, Singapore, and Taiwan. 4

9. Micron operates and owns the micron.com website, and markets, offers, distributes, 

and provides technical support for its SSD products throughout the United States including in this 

District.

10. Micron develops, designs, manufactures, distributes, markets, offers to sell, and/or 

sells infringing products and services within the United States, including in this District, and 

otherwise purposefully directs infringing activities to this District in connection with its Austin, 

Texas office; its micron.com website; and its other places of business in Texas and the rest of the 

United States.

JURISDICTION AND VENUE

11. This action arises under the patent laws of the United States, 35 U.S.C. § 101, et 

seq. This Court’s jurisdiction over this action is proper under the above statutes, including 35 

 1 Ex. 1, https://www.micron.com/about/locations (last visited June 3, 2020). 2 Id. 3 Ex. 2, https://en.wikipedia.org/wiki/List_of_semiconductor_fabrication_plants (last visited June 

3, 2020). 4 Id.

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 3 of 16
ORIGINAL COMPLAINT Page 4 of 16

U.S.C. § 271, et seq., 28 U.S.C. § 1331 (federal question jurisdiction), and § 1338 (jurisdiction 

over patent actions).

12. This Court has personal jurisdiction over Defendants in accordance with due 

process and/or the Texas Long Arm Statute because, in part, Defendants “recruit[] Texas residents, 

directly or through an intermediary located in this state, for employment inside or outside this 

state.” TEX. CIV. PRAC. & REM. CODE § 17.042(3). 

13. This Court has personal jurisdiction over Micron because Micron has engaged, and 

continues to engage in continuous, systematic, and substantial activities within this State, including 

the substantial marketing and sales of products within this State and this District. Furthermore, 

upon information and belief, this Court has personal jurisdiction over Micron because Micron has 

committed acts giving rise to UTL’s claims for patent infringement within and directed to this 

District.

14. For example, Micron is subject to personal jurisdiction in this Court because, inter 

alia, it has regular and established places of business in this District, including offices located at 

101 West Louis Henna Boulevard, Suite 210, Austin, Texas 78728.

5 The Travis County Central 

Appraisal District (CAD) website 6 indicates that both Micron Technology and Micron 

Semiconductor own the property at 101 West Louis Henna Boulevard, Suite 210, Austin, Texas 

78664 and that it is appraised at more than $2 million.7

 5 Ex 3, https://www.micron.com/about/locations?country=USA&city=Austin (last visited June 3, 

2020).

6 Ex 4, http://propaccess.traviscad.org/clientdb/?cid=1 (last visited June 3, 2020).

7 Ex 5, http://propaccess.traviscad.org/clientdb/Property.aspx?prop_id=874673 (last visited June 

3, 2020) (property record for Micron Technology); Ex 6, 

http://propaccess.traviscad.org/clientdb/Property.aspx?prop_id=926072 (last visited June 3, 

2020) (property record for Micron Semiconductor).

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 4 of 16
ORIGINAL COMPLAINT Page 5 of 16

15. Micron’s Austin offices are regular and established places of business at least 

because these locations include many members of Micron’s important teams, including storage 

system architects, SPME system architects, storage system engineers, storage solutions engineers, 

and software engineers. Micron posts job openings for its Allen office8, and as of June 3, 2020, 

Micron was posting two job openings for its Allen office and Austin office that were available or 

recently filled.9 These and additional job postings can be found on Monster.com and various other 

websites. 10

16. Based on publicly available information, since 2016, Micron Technology has been 

the employer of approximately twenty recipients of H-1B visas who work and reside in the Austin, 

Texas area. 11 Micron Semiconductor has been the employer of at least two recipients of H-1B 

visas who work and reside in the Austin, Texas area. 12 Additionally, Micron Technology has been 

the employer of approximately sixteen recipients of H-1B visas who work and reside in the Allen, 

Texas area.13

17. Micron, directly and through its agents, regularly conducts, solicits, and transacts 

business in this District and elsewhere in Texas, including through its micron.com website. For 

 8 Ex 7, https://jobs.micron.com/search/?createNewAlert=false&q=&locationsearch=Texas (last 

visited June 3, 2020).

9 Id. 10 Ex. 8, 

https://www.monster.com/jobs/search/?cn=micron&where=texas&intcid=skr_navigation_nhpso

_searchCompany (last visited June 3, 2020).

11 Ex. 9, 

https://h1bdata.info/index.php?em=Micron+Technology&job=&city=Austin&year=All+Years

(last visited June 3, 2020).

12 Ex. 10, 

https://h1bdata.info/index.php?em=Micron+Semiconductor&job=&city=Austin&year=All+Year

s (last visited June 3, 2020).

13 Ex. 11. 

https://h1bdata.info/index.php?em=Micron+Technology&job=&city=Allen&year=All+Years

(last visited June 3, 2020).

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 5 of 16
ORIGINAL COMPLAINT Page 6 of 16

example, Micron employs sales and marketing employees that regularly sell, offer to sell, or 

otherwise distribute SSD products in this District and elsewhere in Texas.

18. In particular, Micron has committed and continues to commit acts of infringement 

in violation of 35 U.S.C. § 271, and has made, used, marketed, distributed, offered for sale, and 

sold infringing products in Texas, including in this District, and engaged in infringing conduct 

within and directed at or from this District. The infringing SSD products have been and continue 

to be distributed to and used in this District. Micron’s acts cause injury to UTL, including injury 

suffered within this District. 

19. Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400(b) because a 

substantial part of the events or omissions giving rise to the claims occurred in this District, and 

because Micron has committed acts of infringement in this District and has a regular and 

established place of business in this District.

20. Specifically, Micron Technology, Micron Semiconductor, and Micron Texas have 

regular and established places of business located at 101 West Louis Henna, Boulevard, Suite 210, 

Austin, Texas 78728. Furthermore, Micron Technology, Micron Semiconductor, and Micron 

Texas are all registered to do business in Texas.

21. Micron Semiconductor and Micron Texas are wholly owned subsidiaries of Micron 

Technology. Micron Technology does not separately report revenue from Micron Semiconductor 

or Micron Texas in its filings to the Securities and Exchange Commission (SEC), but rather reports 

combined revenue from its various products and subsidiaries.

22. On information and belief, Micron Technology owns and operates Micron 

Semiconductor and Micron Texas, including the cooperative development, improvement, and 

support of Micron’s products and services.

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 6 of 16
ORIGINAL COMPLAINT Page 7 of 16

THE PATENTS-IN-SUIT

23. This cause of action asserts infringement of United States Patent Nos. 8,762,658 

(“the ’658 Patent”); 8,533,406 (“the ’406 Patent”); and 9,632,727 (“the ’727 Patent”) (collectively, 

the “Patents-in-Suit”).

24. The inventions disclosed in the Patents-in-Suit are a valuable contribution to the 

SSD product industry. In fact, several major SSD market competitors have already taken licenses

to the Patents-in-Suit, including Intel Corp., Google, LLC, Samsung Electronics America, Inc., 

SK Hynix, Inc., Western Digital, Inc., Toshiba America, Inc. and e.Digital Corp.

25. The ’658 Patent, entitled “Systems and Methods For Persistent Deallocation,” duly 

and legally issued on June 24, 2014, from U.S. Patent Application No. 13/566,471, filed on August 

3, 2012, naming David Flynn, Jonathan Thatcher, and Michael Zappe as the inventors. A true and 

correct copy of the ’658 Patent is attached hereto as Exhibit 12 and is incorporated by reference.

26. The ’658 Patent is a continuation of U.S. Patent No. 8,261,005.

27. The ’658 Patent claims patent-eligible subject matter under 35 U.S.C. § 101.

28. Plaintiff UTL is the owner and assignee of all rights, title, and interest in and under 

the ’658 Patent.

29. Assignments of the ’658 Patent reflective of its chain-of-title are recorded at the 

USPTO at Reel 028800, Frame 0340; Reel 028802 Frame 0131; Reel 033389 Frame 0511; Reel 

033419 Frame 0748; Reel 033410 Frame 0158; Reel 038362 Frame 0604; Reel 038362 Frame 

0575; Reel 038748 Frame 0880; Reel 047702 Frame 0413; Reel 048918 Frame 0035; Reel 052095 

Frame 0903; and Reel 052096 Frame 0225.

30. UTL has standing to sue for infringement of the ’658 Patent.

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 7 of 16
ORIGINAL COMPLAINT Page 8 of 16

31. The ’406 Patent, entitled “Apparatus, System, and Method For Identifying Data 

That Is No Longer In Use,” duly and legally issued on September 10, 2013, from U.S. Patent 

Application No. 13/607,486, filed on September 7, 2012, naming David Flynn, Jonathan Thatcher, 

and Michael Zappe as the inventors. A true and correct copy of the ’406 Patent is attached hereto 

as Exhibit 13 and is incorporated by reference.

32. The ’406 Patent is a continuation of the ’658 Patent.

33. The ’406 Patent claims patent-eligible subject matter under 35 U.S.C. § 101.

34. Plaintiff UTL is the owner and assignee of all rights, title, and interest in and under 

the ’406 Patent.

35. Assignments of the ’406 Patent reflective of its chain-of-title are recorded at the 

USPTO at Reel 029015, Frame 0181; Reel 029033 Frame 0133; Reel 033389 Frame 0511; Reel 

033419 Frame 0748; Reel 033410 Frame 0158; Reel 038362 Frame 0604; Reel 038362 Frame 

0575; Reel 038748 Frame 0880; Reel 047702 Frame 0413; Reel 048918 Frame 0035; Reel 052095 

Frame 0903; and Reel 052096 Frame 0225.

36. UTL has standing to sue for infringement of the ’406 Patent.

37. The ’727 Patent, entitled “Systems and Methods For Identifying Storage Resources 

That Are Not In Use,” duly and legally issued on April 25, 2017, from U.S. Patent Application 

No. 14/309,751, filed on June 19, 2014, naming David Flynn, Jonathan Thatcher, and Michael 

Zappe as the inventors. A true and correct copy of the ’727 Patent is attached hereto as Exhibit 14

and is incorporated by reference.

38. The ’727 Patent is a continuation of the ’658 Patent.

39. The ’727 Patent claims patent-eligible subject matter under 35 U.S.C. § 101.

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 8 of 16
ORIGINAL COMPLAINT Page 9 of 16

40. Plaintiff UTL is the owner and assignee of all rights, title, and interest in and under 

the ’727 Patent.

41. Assignments of the ’727 Patent reflective of its chain-of-title are recorded at the 

USPTO at Reel 033389 Frame 0511; Reel 033419 Frame 0748; Reel 033410 Frame 0158; Reel 

038362 Frame 0604; Reel 038362 Frame 0575; Reel 038748 Frame 0880; Reel 047702 Frame 

0413; Reel 048918 Frame 0035; Reel 052095 Frame 0903; and Reel 052096 Frame 0225.

42. UTL has standing to sue for infringement of the ’727 Patent.

43. Micron has not obtained a license to any of the Patents-in-Suit.

44. Micron does not have UTL’s permission to make, use, sell, offer to sell, or import 

products that are covered by one or more claims of any of the Patents-in-Suit.

45. Micron requires a license to the Patents-in-Suit and otherwise needs to cease its

ongoing infringement of UTL’s patent rights. 

GENERAL ALLEGATIONS

46. Upon information and belief, Micron makes, uses, sells, offers to sell, and/or 

imports into the United States many types of SSD devices as claimed in each of the Patents-inSuit. For example, Defendants make, use, sell, offer to sell, and/or import into the United States 

the Micron 5200 Series SATA NAND Flash SSD.

47. Micron has infringed and continues to infringe (literally and/or under the doctrine 

of equivalents), directly, indirectly, and/or through subsidiaries, agents, representatives, or 

intermediaries, one or more claims of each of the Patents-in-Suit by making, using, importing, 

testing, supplying, causing to be supplied, selling, and/or offering for sale in the United States

Micron’s SSD products.

48. Micron has knowledge of the Patents-in-Suit at least as of the filing of this lawsuit.

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 9 of 16
ORIGINAL COMPLAINT Page 10 of 16

49. Further discovery may reveal earlier knowledge of one or more of the Patents-inSuit, which would provide additional evidence of Micron’s specific intent and/or willful blindness 

with respect to infringement.

50. UTL has been and continues to be damaged because of Micron’s infringing 

conduct. Micron is therefore liable to UTL in an amount that adequately compensates UTL for 

Micron’s infringement, which, by law, cannot be less than a reasonable royalty, together with 

interest and costs as fixed by this Court under 35 U.S.C. § 284.

51. Micron markets and sells other products that are not covered by the claims of the 

Patents-in-Suit but that are sold with or in conjunction with Micron’s SSD products. Accordingly, 

UTL is entitled to collect damages from Micron for convoyed sales of certain non-patented items.

52. Defendants failed to obtain permission from UTL to make, use, sell, offer to sell, 

or import products incorporating the inventions claimed in the Patents-in-Suit.

53. Attached to this Complaint are Exhibits 15-17, which are sample claim charts and 

are incorporated by reference herein. 

54. For each count of infringement listed below, UTL incorporates and re-states the 

allegations contained in the preceding paragraphs above including these General Allegations as if 

fully set forth in each count of infringement.

COUNT I – INFRINGEMENT OF THE ’658 PATENT

55. UTL incorporates herein the allegations made in paragraphs 1–54.

56. Micron has been and is now directly infringing the ’658 Patent in violation of 35 

U.S.C. § 271(a) by making, using, selling, offering for sale, and/or importing into the United States 

products that are covered by at least Claim 1 of the ’658 Patent.

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 10 of 16
ORIGINAL COMPLAINT Page 11 of 16

57. Micron makes, has made, uses, sells, offers to sell, and/or imports Micron SSD 

products that contain a non-volatile storage medium such as Flash memory, a flash translation 

layer as well as circuitry and associated software that stores data in response to receiving certain 

commands such as the TRIM command such that data is stored in response to said command 

indicating that certain data is erased. These products infringe at least Claim 1 of the ’658 Patent.

58. For example, Micron makes, has made, uses, sells, offers to sell, and/or imports the 

Micron 5200 Series SSD. The Micron 5200 Series SSD contains NAND Flash memory, a flash 

translation layer, and circuitry and associated software that stores data in response to receiving a 

TRIM command such that data is stored in response to said command indicating that certain data 

is erased. The Micron 5200 Series SSD infringes at least Claim 1 of the ’658 Patent.

59. An exemplary claim chart comparing Micron’s infringing Micron 5200 Series 

SSDs to Claim 1 of the ’658 Patent is attached as Exhibit 15 and incorporated herein by reference. 

This is only a non-limiting example. Many of Micron’s other SSD products that utilize the same 

or similar Flash memory, flash translation table, and circuitry and associated software that store 

data in response to receiving a command such as the TRIM command such that data is stored in 

response to said command indicating that certain data is erased, also infringe at least claim 1 of 

the ’658 Patent. 

60. Micron has actual knowledge of the ’658 Patent at least since the filing of this 

lawsuit.

61. As a result of Micron’s infringement of the ’658 Patent, UTL has suffered and is 

owed monetary damages that are adequate to compensate it for the infringement under 35 U.S.C. 

§ 284, but in no event less than a reasonable royalty.

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 11 of 16
ORIGINAL COMPLAINT Page 12 of 16

COUNT II – INFRINGEMENT OF THE ’406 PATENT

62. UTL incorporates herein the allegations made in paragraphs 1–61.

63. Micron has been and is now directly infringing the ’406 Patent in violation of 35 

U.S.C. § 271(a) by making, using, selling, offering for sale, and/or importing into the United States 

products that are covered by at least Claim 15 of the ’406 Patent. 

64. Micron makes, has made, uses, sells, offers to sell, and/or imports Micron SSD 

products that include a request receiver module configured to receive information that data has 

been deleted, and a marking module to record that data can then be erased. These products infringe 

at least Claim 15 of the ’406 Patent.

65. Many of Micron’s SSD products – that utilize Flash memory, a flash translation 

layer that maps one or more logical block addresses (“LBAs”) to physical addresses for certain 

data, and contains circuitry that is configured to receive a TRIM command that indicates and 

records that data stored in the 3D TLC NAND Flash memory at the locations specified by the 

LBAs indicated in a TRIM command has been deleted and can be erased – infringe at least Claim 

15 of the ’406 Patent. 

66. For example, Micron makes, has made, uses, sells, offers to sell, and/or imports the 

Micron 5200 Series SSD. The Micron 5200 Series SSD is an apparatus utilizes NAND Flash 

memory, a flash translation layer that maps one or more LBAs to physical addresses for certain 

data, and contains circuitry that is configured to receive a TRIM command. The Micron 5200 

Series SSD then indicates and records that data stored in the NAND Flash memory at the locations 

specified by the LBAs indicated in a TRIM command has been deleted and can be erased. The 

Micron 5200 Series SSD infringes at least Claim 15 of the ’406 Patent. 

67. An exemplary claim chart comparing Micron’s infringing Micron 5200 Series 

SSDs to Claim 15 of the ’406 Patent is attached as Exhibit 16 and incorporated herein by reference. 

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 12 of 16
ORIGINAL COMPLAINT Page 13 of 16

This is only a non-limiting example. Many of Micron’s other SSD products that utilize the same 

or similar Flash memory, flash translation layer, and circuitry configured to receive a TRIM 

command also infringe at least Claim 15 of the ’406 Patent. 

68. Micron has actual knowledge of the ’406 Patent at least since the filing of this 

lawsuit.

69. As a result of Micron’s infringement of the ’406 Patent, UTL has suffered and is 

owed monetary damages that are adequate to compensate it for the infringement under 35 U.S.C. 

§ 284, but in no event less than a reasonable royalty.

COUNT III – INFRINGEMENT OF THE ’727 PATENT

70. UTL incorporates herein the allegations made in paragraphs 1–69.

71. Micron has been and is now directly infringing the ’727 Patent in violation of 35 

U.S.C. § 271(a) by making, using, selling, offering for sale, and/or importing into the United States 

products that are covered by at least Claim 1 of the ’727 Patent. 

72. Micron makes, has made, uses, sells, offers to sell, and/or imports SSD products 

that include solid-state storage memory such as NAND Flash memory along with a controller, a 

flash translation layer, and circuitry and associated software that assigns logical addresses to 

physical addresses used to store data on the solid-state storage memory and also removes those 

assignments in response to commands such as TRIM from the operating system. These products 

infringe at least Claim 1 of the ’727 Patent.

73. For example, Micron makes, has made, uses, sells, offers to sell, and/or imports the 

Micron 5200 Series SATA SSDs. These SSDs include solid-state storage memory such as NAND 

Flash memory along with a controller, a flash translation layer, and circuitry and associated 

software that assigns logical addresses to physical addresses used to store data on the solid-state 

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 13 of 16
ORIGINAL COMPLAINT Page 14 of 16

storage memory and also removes those assignments in response to commands such as TRIM from 

the operating system. These Micron SSD products infringe at least Claim 1 of the ’727 Patent. 

74. An exemplary claim chart comparing Micron’sinfringing Micron 5200 Series SSD 

to Claim 1 of the ’727 Patent is attached as Exhibit 17 and incorporated herein by reference. This 

is only a non-limiting example. Many of Micron’s other SSD products that incorporate Flash 

memory with a controller, a flash translation layer, and circuitry and associated software that 

assigns logical addresses to physical addresses used to store data and also removes those 

assignments in response to certain commands such as the TRIM command also infringe at least 

Claim 1 of the ’727 Patent. 

75. Micron has actual knowledge of the ’727 Patent at least since the filing of this 

lawsuit.

76. As a result of Micron’s infringement of the ’727 Patent, UTL has suffered and is 

owed monetary damages that are adequate to compensate it for the infringement under 35 U.S.C. 

§ 284, but in no event less than a reasonable royalty.

DEMAND FOR A JURY TRIAL

77. Pursuant to Rule 38 of the Federal Rules of Civil Procedure, UTL demands a trial 

by jury on all issues triable of right by a jury.

PRAYER FOR RELIEF

78. UTL respectfully requests that this Court enter judgment in its favor and grant the 

following relief:

(i) Judgment that Micron has directly and/or indirectly infringed one or more 

claims of each of the Patents-in-Suit;

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 14 of 16
ORIGINAL COMPLAINT Page 15 of 16

(ii) Judgment and Order that Micron must to pay UTL past and future damages 

under 35 U.S.C. § 284, including supplemental damages arising from any 

continuing post-verdict infringement for the time between trial and entry of 

the final judgment, together with an accounting, as needed, as provided 

under 35 U.S.C. § 284;

(iii) Judgment and Order that Micron must pay UTL reasonable ongoing 

royalties on a go-forward basis after final judgment;

(iv) Judgment and Order that Micron must pay UTL pre-judgment and postjudgment interest on the damages award; 

(v) Judgment and Order that Micron must pay UTL’s costs; and 

(vi) Such other and further relief as the Court may deem just and proper.

Dated: June 5, 2020 Respectfully submitted,

/s/ Edward Nelson III

BARRY J. BUMGARDNER (PRO HAC TO 

FOLLOW)

STATE BAR NO. 00793424

EDWARD NELSON III

STATE BAR NO. 00797142

MATTHEW JUREN (PRO HAC TO FOLLOW)

STATE BAR NO. 24065530

ROBERT A. DELAFIELD II

STATE BAR NO. 24065137

NELSON BUMGARDNER ALBRITTON PC

3131 West 7th Street, Suite 300

Fort Worth, Texas 76107

817.377.9111 (telephone)

903.758.7397 (facsimile)

barry@nbafirm.com

ed@nbafirm.com

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 15 of 16
ORIGINAL COMPLAINT Page 16 of 16

matthew@nbafirm.com

bobby@nbafirm.com

COUNSEL FOR PLAINTIFF

UNIFICATION TECHNOLOGIES LLC

Case 6:20-cv-00500 Document 1 Filed 06/05/20 Page 16 of 16
1 

UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

UNIFICATION TECHNOLOGIES LLC, 

Plaintiff, 

v. 

MICRON TECHNOLOGY, INC.; 

MICRON SEMICONDUCTOR 

PRODUCTS, INC.; MICRON 

TECHNOLOGY TEXAS, LLC, 

Defendants. 

Civil Action No. 6:20-CV-500-ADA 

DEFENDANTS’ FIRST AMENDED ANSWER, AFFIRMATIVE DEFENSES, 

AND COUNTERCLAIMS TO PLAINTIFF’S COMPLAINT 

Defendants Micron Technology, Inc.; Micron Semiconductor Products, Inc.; and Micron 

Technology Texas, LLC (“Micron” or “Defendants”) submit this First Amended Answer, 

Affirmative Defenses, and Counterclaims in response to Plaintiff Unification Technologies LLC’s 

(“UTL” or “Plaintiff”) Complaint. 

The numbered paragraphs below correspond to the numbered paragraphs in the Complaint 

and constitute Defendants’ responsive admissions, denials, and allegations thereto. Except as 

Defendants otherwise admit expressly below, Defendants deny each and every allegation 

contained in the Complaint, including, without limitation, the headings, subheadings, footnotes, 

diagrams, and tables contained in the Complaint. 

Defendants reserve the right to amend or supplement their First Amended Answer and 

Affirmative Defenses. 

NATURE OF THE SUIT 

1. Micron admits that the Complaint purports to be a civil action for infringement 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 1 of 40
2 

under the patent laws of the United States, but denies any liability related to the Complaint. Except 

as expressly admitted, Micron denies the remaining allegations in paragraph 1. 

THE PARTIES 

2. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 2 of the Complaint and therefore denies the same. 

3. Micron Technology, Inc. (“MTI”) admits that it is a Delaware corporation with a 

principal place of business at 8000 South Federal Way, Boise, Idaho 83716. Except as expressly 

admitted, Micron denies the remaining allegations in paragraph 3. 

4. Micron Semiconductor Products, Inc. (“MSP”) admits that it is an Idaho 

corporation with a principal place of business at 8000 South Federal Way, Boise, Idaho 83716. 

MSP admits that it leases a property located at 101 West Louis Henna Boulevard, Suite 210, Austin, 

Texas 78728. MSP admits that it is registered to do business in Texas. MSP admits that it can be 

served with certain process through its registered agent for service of process, Corporation Service 

Company, 211 E. 7th Street, Suite 620, Austin, Texas 78701-3218. Except as expressly admitted, 

Micron denies the remaining allegations in paragraph 4. 

5. Micron Technology Texas, LLC (“Micron Texas”) admits that it is an Idaho limited 

liability company with a place of business at 8000 South Federal Way, Boise, Idaho 83716. Micron 

Texas admits that it has a place of business at 805 Central Expressway South, Suite 100, Allen, 

Texas 75013. Micron Texas admits that it can be served with certain process through its registered 

agent for service of process, Corporation Service Company, 211 E. 7th Street, Suite 620, Austin, 

Texas 78701-3218. Except as expressly admitted, Micron denies the remaining allegations in 

paragraph 5 of the Complaint. 

6. Micron denies the allegations of paragraph 6. 

7. Micron denies the allegations of paragraph 7. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 2 of 40
3 

8. Micron denies the allegations of paragraph 8. 

9. Micron denies the allegations of paragraph 9. 

10. Micron denies the allegations of paragraph 10. 

JURISDICTION 

11. Paragraph 11 contains conclusions of law and not averments of fact to which the 

rules require an answer, but insofar as the rules require an answer, Micron admits that the 

Complaint purports to assert an action under the patent laws of the United States, 35 U.S.C. § 271 

et seq., and that this Court has subject matter jurisdiction over actions for patent infringement 

under 28 U.S.C. §§ 1331 and 1338(a). 

12. Based solely on the allegations in the Complaint, and assuming (without admitting) 

them to be true, Micron does not contest personal jurisdiction in this district in this case. Except 

as expressly admitted, Micron denies the remaining allegations in paragraph 12. 

13. Micron denies the allegations of paragraph 13. 

14. Micron denies the allegations of paragraph 14. 

15. Micron denies the allegations of paragraph 15. 

16. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 16 of the Complaint and therefore denies the same. 

17. Micron denies the allegations of paragraph 17. 

18. Micron denies the allegations of paragraph 18. 

19. Micron denies the allegations of paragraph 19. 

20. Micron denies the allegations of paragraph 20. 

21. Micron admits that MSP and Micron Texas are wholly owned subsidiaries of MTI. 

Micron admits that MTI currently does not separately report revenue from MSP or Micron Texas 

in its public filings submitted to the Securities and Exchange Commission. Except as expressly 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 3 of 40
4 

admitted, Micron denies the remaining allegations in paragraph 21. 

22. Micron denies the allegations of paragraph 22. 

FACTUAL BACKGROUND 

23. Paragraph 23 contains conclusions of law and not averments of fact to which the 

rules require an answer, but insofar as the rules require an answer, Micron admits that the 

Complaint purports to assert an action of infringement of United States Patent Nos. 8,762,658 

(“the ’658 Patent”); 8,533,406 (“the ’406 Patent”); and 9,632,727 (“the ’727 Patent”) (collectively, 

the “Patents-in-Suit”). 

24. Micron denies that the subject matter recited in the claims of the Patents-in-Suit are 

a valuable contribution to the SSD product industry. Micron lacks sufficient knowledge or 

information to form a belief as to the truth of the remaining allegations in paragraph 24 of the 

Complaint and therefore denies the same. 

25. Micron admits that, according to the face of the document, the ’658 Patent is 

entitled “Systems and Methods For Persistent Deallocation” and was issued on June 24, 2014, 

from U.S. Patent Application No. 13/566,471, filed on August 3, 2012, naming David Flynn, 

Jonathan Thatcher, and Michael Zappe as the inventors. Micron admits that Exhibit 12 attached 

to the Complaint purports to be a copy of the ʼ658 Patent. Except as expressly admitted, Micron 

denies the remaining allegations in paragraph 25.

26. Micron admits that, according to the face of the document, the ’658 Patent is a 

continuation of U.S. Patent No. 8,261,005. Micron lacks sufficient knowledge or information to 

form a belief as to the truth of the remaining allegations in paragraph 26 of the Complaint and 

therefore denies the same. 

27. Micron denies the allegations in paragraph 27. 

28. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 4 of 40
5 

the allegations in paragraph 28 of the Complaint and therefore denies the same. 

29. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 29 of the Complaint and therefore denies the same. 

30. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 30 of the Complaint and therefore denies the same. 

31. Micron admits that, according to the face of the document, the ’406 Patent is 

entitled “Apparatus, System, and Method For Identifying Data That Is No Longer In Use” and was 

issued on September 10, 2013, from U.S. Patent Application No. 13/607,486, filed on September 

7, 2012, naming David Flynn, Jonathan Thatcher, and Michael Zappe as the inventors. Micron 

admits that Exhibit 13 attached to the Complaint purports to be a copy of the ʼ406 Patent. Except 

as expressly admitted, Micron denies the remaining allegations in paragraph 31. 

32. Micron admits that, according to the face of the document, the ’406 Patent is a 

continuation of the ’658 Patent. Micron lacks sufficient knowledge or information to form a belief 

as to the truth of the remaining allegations in paragraph 32 of the Complaint and therefore denies 

the same. 

33. Micron denies the allegations of paragraph 33. 

34. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 34 of the Complaint and therefore denies the same. 

35. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 35 of the Complaint and therefore denies the same. 

36. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 36 of the Complaint and therefore denies the same. 

37. Micron admits that, according to the face of the document, the ’727 Patent is 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 5 of 40
6 

entitled “Systems and Methods For Identifying Storage Resources That Are Not In Use” and was 

issued on April 25, 2017, from U.S. Patent Application No. 14/309,751, filed on June 19, 2014, 

naming David Flynn, Jonathan Thatcher, and Michael Zappe as the inventors. Micron admits that 

Exhibit 14 attached to the Complaint purports to be a copy of the ʼ727 Patent. Except as expressly 

admitted, Micron denies the remaining allegations in paragraph 37. 

38. Micron admits that, according to the face of the document, the ’727 Patent is a 

continuation of the ’658 Patent. Micron lacks sufficient knowledge or information to form a belief 

as to the truth of the remaining allegations in paragraph 38 of the Complaint and therefore denies 

the same. 

39. Micron denies the allegations of paragraph 39. 

40. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 40 of the Complaint and therefore denies the same. 

41. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 41 of the Complaint and therefore denies the same. 

42. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 42 of the Complaint and therefore denies the same. 

43. Micron lacks sufficient knowledge or information to form a belief as to the truth of 

the allegations in paragraph 43 of the Complaint and therefore denies the same. 

44. Micron denies that it makes, uses, sells, offers to sell, or imports products that are 

covered by one or more valid and enforceable claims of any of the Patents-in-Suit. Micron lacks 

sufficient knowledge or information to form a belief as to the truth of the allegations in paragraph 

44 of the Complaint and therefore denies the same. 

45. Micron denies the allegations of paragraph 45. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 6 of 40
7 

GENERAL ALLEGATIONS 

46. Micron denies the allegations in paragraph 46. 

47. Micron denies the allegations in paragraph 47. 

48. Micron admits that the Patents-in-Suit were identified in the Complaint when the 

above-captioned litigation was filed. Micron denies the remaining allegations in paragraph 48. 

49. Micron denies the allegations in paragraph 49. 

50. Micron denies the allegations in paragraph 50. 

51. Micron denies the allegations in paragraph 51. 

52. Micron denies that it makes, uses, sells, offers to sell, or imports products that are 

covered by one or more valid and enforceable claims of any of the Patents-in-Suit. Micron denies 

the allegations in paragraph 52. 

53. Micron admits that Exhibits 15-17 attached to the Complaint purport to be sample 

claim charts. 

54. For each alleged count of infringement listed below, Micron incorporates and restates by reference its responses to the allegations contained in the preceding paragraphs above 

including the responses to the General Allegations of the Complaint as if fully set forth in each 

alleged count of infringement. 

COUNT I: ALLEGED INFRINGEMENT OF THE ’658 PATENT 

55. Micron repeats and incorporates by reference its responses to the allegations of 

paragraphs 1-54 of the Complaint as if fully set forth herein. 

56. Micron denies the allegations in paragraph 56. 

57. Micron denies the allegations in paragraph 57. 

58. Micron denies the allegations in paragraph 58. 

59. Micron denies the allegations in paragraph 59. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 7 of 40
8 

60. Micron admits that the ’658 Patent was identified in the Complaint when the abovecaptioned litigation was filed. Micron denies the remaining allegations in paragraph 60. 

61. Micron denies the allegations in paragraph 61. 

COUNT II: ALLEGED INFRINGEMENT OF THE ’406 PATENT 

62. Micron repeats and incorporates by reference its responses to the allegations of 

paragraphs 1-61 of the Complaint as if fully set forth herein. 

63. Micron denies the allegations in paragraph 63. 

64. Micron denies the allegations in paragraph 64. 

65. Micron denies the allegations in paragraph 65. 

66. Micron denies the allegations in paragraph 66. 

67. Micron denies the allegations in paragraph 67. 

68. Micron admits that the ’406 Patent was identified in the Complaint when the abovecaptioned litigation was filed. Micron denies the remaining allegations in paragraph 68. 

69. Micron denies the allegations in paragraph 69. 

COUNT III: ALLEGED INFRINGEMENT OF THE ’727 PATENT 

70. Micron repeats and incorporates by reference its responses to the allegations of 

paragraphs 1-69 of the Complaint as if fully set forth herein. 

71. Micron denies the allegations in paragraph 71. 

72. Micron denies the allegations in paragraph 72. 

73. Micron denies the allegations in paragraph 73. 

74. Micron denies the allegations in paragraph 74. 

75. Micron admits that the ’727 Patent was identified in the Complaint when the abovecaptioned litigation was filed. Micron denies the remaining allegations in paragraph 75. 

76. Micron denies the allegations in paragraph 76. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 8 of 40
9 

DEMAND FOR A JURY TRIAL 

77. Micron admits that the Complaint purports to demand a trial by jury on all issues 

so triable. 

PRAYER FOR RELIEF 

78. Micron denies that UTL is entitled to any relief in this action, as requested in 

paragraphs (i)-(vi) of UTL’s Prayer for Relief or otherwise. 

MICRON’S AFFIRMATIVE DEFENSES 

Subject to its responses above, and upon information and belief, Micron alleges and asserts 

these defenses in response to the allegations in the Complaint, undertaking the burden of proof 

only as to those defenses deemed affirmative defenses by law, regardless of how such defenses are 

denominated. In addition to the affirmative defenses described below, subject to the responses 

above, Micron reserves all rights to allege additional defenses pursuant to any scheduling order, 

that become known through the course of discovery, or otherwise. 

FIRST AFFIRMATIVE DEFENSE – FAILURE TO STATE A CLAIM 

1. UTL has failed to plead its claims with sufficient specificity or factual support to 

place Micron on notice of the claims UTL is asserting against it, such that UTL has failed to state 

a claim upon which relief can be granted. 

SECOND AFFIRMATIVE DEFENSE – NON-INFRINGEMENT 

2. Micron has not infringed and does not infringe (i) directly, either literally or under 

the doctrine of equivalents, (ii) indirectly by contributing to infringement by others, either literally 

or under the doctrine of equivalents, and/or (iii) indirectly by inducing others to infringe, either 

literally or under the doctrine of equivalents, any valid and enforceable claim of the Patents-inSuit, willfully or otherwise. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 9 of 40
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THIRD AFFIRMATIVE DEFENSE – INVALIDITY 

3. One or more claims of the Patents-in-Suit are invalid for failure to meet the 

conditions of patentability and/or otherwise comply with the requirements of 35 U.S.C. §§ 101 et 

seq., including, but not limited to, 35 U.S.C. §§ 101, 102, 103, and/or 112. 

FOURTH AFFIRMATIVE DEFENSE – PROSECUTION HISTORY ESTOPPEL 

4. One or more claims are limited by the text of the Patents-in-Suit and prosecution 

histories of the Patents-in-Suit and related patents such that UTL is estopped, or otherwise 

precluded, from asserting that the claim is infringed by Micron, literally or by equivalents. 

FIFTH AFFIRMATIVE DEFENSE – WAIVER AND ESTOPPEL 

5. UTL’s claims for relief, in whole or in part, are barred by the doctrines of waiver 

and/or estoppel. UTL’s predecessor-in-interest engaged in standards-setting misconduct, 

including, without limitation, breach of a Patent Policy requiring disclosure of patents. 

6. UTL’s predecessor Fusion Multisystems, Inc., DBA Fusion-io and/or Fusion-io, 

Inc. (collectively, “Fusion-io”) is recorded as the first assignee of the Patents-in-Suit. On 

information and belief, the named inventors worked for Fusion-io. 

7. During the prosecution of the Patents-in-Suit and/or the applications from which 

the Patents-in-Suit purport to claim priority, Fusion-io participated as a member in Technical 

Committee T10 of the American National Standards Institute (“ANSI”). E.g., Ex. A; Ex. B. 

8. T10 is a Technical Committee of the InterNational Committee on Information 

Technology Standards (“INCITS”). INCITS is accredited by, and operates under rules that are 

approved by, the ANSI. T10 is responsible for the SCSI standard.1

 

9. On information and belief, to join T10, Fusion-io agreed to abide by T10’s patent 

1

 INCITS Technical Committee T10, Introduction to T10, https://www.t10.org/intro.htm (last updated Jul. 21, 2016). 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 10 of 40
11 

policy and ANSI’s patent policies. As a T10 and ANSI member, Fusion-io had an obligation and/or 

a duty to comply with ANSI patent policies, including the T10 Patent Policy, available at 

https://www.t10.org/patpol.htm. On information and belief, the T10 Patent Policy has stated, since 

July 30, 2007: 

10. As pled in more detail below, Fusion-io knew it held patents or applications 

covering technology described in a standard that was under development or had been approved 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 11 of 40
12 

and, thus, under this Policy was required to disclose those patents or applications. 

11. During the prosecution of parent application 11/952,113 (Patent No. 8,261,005) 

from which the Patents-in-Suit claim priority, Fusion-io filed an Information Disclosure Statement 

on May 29, 2012, listing, as reference C48, Data Set Management Commands Proposal for ATA8-

ACS2, third revision, published October 5, 2007. Ex. C at 10. 

Id. Frank Shu submitted this proposal promoting the adoption of the TRIM command into the 

ATA standard. 

12. On or about July 22, 2014, Fusion-io assigned rights to Intellectual Property 

Holdings 2 LLC, a Delaware limited liability company, as recorded in the USPTO Assignment 

Database at reel 033389, frames 0511-0538. Ex. D at 1, 5. 

13. In the assignment, Fusion-io assigned the ’658 Patent, the ’406 Patent, application 

14/309,751 (which would later issue as the ’727 Patent), and other patents and applications to 

Intellectual Property Holdings 2 LLC. Ex. D. 

14. On frame 0524 of the assignment, Fusion-io noted its belief that the ’658 Patent 

related to “PTRIM,” believed to refer to “Persistent TRIM,” and that the ’406 Patent related to 

“TRIM.” Id. at 14. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 12 of 40
13 

15. On frame 0524 of the assignment, Fusion-io also noted its belief that application 

14/309,751, which ultimately issued as the ’727 Patent, related to “TRIM.” Id.

16. At the time of these acknowledgments by Fusion-io, the TRIM command qualified 

as a “technology described in a standard that is under development” in T10 per the T10 Patent 

Policy. T10 named its version of the TRIM command “UNMAP.” E.g., Ex. E at 1 (“The UNMAP 

command can be directly translated to the ATA DATA SET MANAGEMENT command with the 

TRIM bit set to one.”) 

17. On information and belief, Fusion-io knew about both UNMAP and TRIM, and 

promoted the UNMAP equivalent of the TRIM command for adoption by T10. 

18. On information and belief, Fusion-io knew about the T10 Patent Policy, which is 

regularly presented at general T10 meetings. 

19. On January 13, 2012, Fusion-io partially complied with the T10 Patent Policy but 

failed to provide full disclosure as required. Fusion-io provided a Patent Declaration that related 

only to “Atomic Writes.” Ex. B. But this January 13, 2012 Patent Declaration said nothing about 

Fusion-io’s patent family that Fusion-io knew was related to “TRIM” or “PTRIM,” and the Patent 

Declaration made no mention of the pending application where Fusion-io cited Data Set 

Management Commands Proposal for ATA8-ACS2. Id. On information and belief, Fusion-io 

provided no other patent declaration to T10. 

20. By failing to notify T10 about the patents and applications that it knew to be related 

to TRIM and UNMAP, Fusion-io failed to fulfill its duty of notification, and/or intentionally 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 13 of 40
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withheld this information and committed fraud. Fusion-io intended to mislead T10, other ANSI 

committees, including T13, and the general public by withholding a disclosure regarding the 

pending Patents-in-Suit in violation of the T10 Patent Policy. 

21. Due to Fusion-io’s actions, T10 and T13 incorporated the UNMAP and TRIM 

commands into their respective SCSI/ATA standards. Also, NVM Express later incorporated its 

DEALLOCATE command into the NVMe Standard modeled on the UNMAP and TRIM 

commands. T10, T13, NVM Express, and the general public (including Micron) using these 

SCSI/ATA/NVMe standards reasonably relied on Fusion-io’s absence of TRIM-related Patent 

Declarations in deciding to incorporate and/or use the UNMAP, TRIM, and DEALLOCATE 

commands or make products using these commands in compliance with the industry standards. 

22. Fusion-io’s actions unfairly prejudices T10, T13, NVM Express, and the general 

public who develop products that relate to these standards. These standard-setting organizations 

adopted the UNMAP, TRIM, or DEALLOCATE commands through a long and complicated 

standard-setting process. Fusion-io unfairly prejudiced T10, T13, NVM Express, and 

SCSI/SATA/NVMe product developers by waiting until after widespread adoption of the standards 

to reveal its ownership of the Patents-in-Suit and assert infringement because changing the accused 

commands in the standards and/or modifying products relating to these standards became difficult 

and/or impractical to coordinate after widespread adoption. 

23. Had Fusion-io complied with the T10 Patent Policy and disclosed that it owned 

patents related to “TRIM” or “PTRIM,” then T10, T13, and NVM Express would not have adopted 

the UNMAP, TRIM, or DEALLOCATE commands in their current forms, at least not without a 

license waiver. 

24. Because Fusion-io deceived the standard setting organizations and the general 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 14 of 40
15 

public with respect to these standards, Fusion-io and its successors-in-interest are estopped from, 

and/or have waived the right of, asserting that the patents cover the standardized UNMAP, TRIM, 

and DEALLOCATE commands and from asserting infringement against products that comply with 

the T10, T13, and NVM Express standards, including the SCSI, ATA, and NVMe standards. By 

concealing its contention that it held patents and applications covering the TRIM or UNMAP 

command, Fusion-io and its assignees waived the right to assert that their patents and applications 

cover the UNMAP command and its equivalents TRIM and DEALLOCATE and waived the right 

to assert their patents against products that comply with the SCSI, ATA, and NVMe standards. 

SIXTH AFFIRMATIVE DEFENSE – LICENSE AND COVENANT NOT TO SUE 

25. UTL’s claims for relief, in whole or in part, are precluded to the extent that any of 

the claims of the Patents-in-Suit are subject to a license and covenant not to sue, express and/or 

implied. 

26. Micron repeats and incorporates by reference paragraphs 5-24 of Micron’s 

Affirmative Defenses as if fully set forth herein. 

27. Fusion-io’s actions with respect to the T10 standard, combined with Fusion-io’s 

promotion of the UNMAP command to T10, creates an implied license without compensation and 

a covenant not to sue for the Patents-in-Suit. 

28. Alternatively, Fusion-io’s actions create an implied license on fair, reasonable, and 

nondiscriminatory terms in accordance with the T10 Patent Policy, and any damages are limited 

to these terms. 

SEVENTH AFFIRMATIVE DEFENSE – STATUTE OF LIMITATIONS 

29. UTL’s recovery for any infringement of the Patents-in-Suit that it might establish 

is limited to any established infringement occurring no more than six years before the filing of this 

lawsuit, pursuant to 35 U.S.C. § 286. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 15 of 40
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EIGHTH AFFIRMATIVE DEFENSE – LACK OF MARKING 

30. UTL’s recovery for alleged infringement of the Patents-in-Suit, if any, is limited to 

alleged infringement committed after UTL provided actual or constructive notice of infringement 

under 35 U.S.C. § 287. 

NINTH AFFIRMATIVE DEFENSE – NO WILLFUL INFRINGEMENT 

31. UTL fails to state a claim for relief against Micron for enhanced or increased 

damages for willful infringement. 

TENTH AFFIRMATIVE DEFENSE – NO EXCEPTIONAL CASE 

32. UTL fails to state a claim for relief against Micron for an exceptional case under 35 

U.S.C. § 285. 

ELEVENTH AFFIRMATIVE DEFENSE – NO COSTS 

33. UTL is barred by 35 U.S.C. § 288 from recovering any costs associated with this 

lawsuit. 

TWELFTH AFFIRMATIVE DEFENSE – LACK OF STANDING 

34. To the extent that UTL was not the sole and total owner of all substantial rights in 

any of the Patents-in-Suit as of the filing date of the Complaint, UTL lacks standing to bring one 

or more claims in this lawsuit. 

35. Micron repeats and incorporates by reference paragraphs 5-28 of Micron’s 

Affirmative Defenses as if fully set forth herein. 

36. Fusion-io’s actions do not give UTL all substantial rights in the Patents-in-Suit, so 

UTL lacks standing. 

THIRTEENTH AFFIRMATIVE DEFENSE – EXHAUSTION 

37. UTL’s claims are barred, in whole or in part, by the doctrine of patent exhaustion. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 16 of 40
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FOURTEENTH AFFIRMATIVE DEFENSE – ABSENCE OF DAMAGES 

38. UTL has not suffered and will not suffer any injury or damages as a result of 

Micron’s alleged conduct. 

FIFTEENTH AFFIRMATIVE DEFENSE – LACHES AND UNCLEAN HANDS, 

39. UTL is barred, in whole or in part, under principles of equity, including laches, 

prosecution laches, and/or unclean hands. UTL is also barred by issue preclusion from reasserting 

or altering its, or its predecessor-in-interest’s, positions on factual and legal issues that were 

previously adjudicated. 

40. Micron repeats and incorporates by reference paragraphs 5-28 of Micron’s 

Affirmative Defenses as if fully set forth herein. 

41. By failing to notify T10 about Fusion-io’s patents and applications that Fusion-io 

believed to be related to TRIM, Fusion-io, combined with Fusion-io’s promotion of the UNMAP 

command to T10, Fusion-io and its successors-in-interest lack the clean hands required for 

asserting that the patents cover the TRIM and UNMAP commands, as well as the equivalent 

DEALLOCATE command. 

42. Micron repeats and incorporates by reference paragraphs 44-84 of Micron’s 

Affirmative Defenses below as if fully set forth herein. UTL further lacks clean hands because of 

inequitable conduct in the procurement in of the Patents-in-Suit. 

SIXTEENTH AFFIRMATIVE DEFENSE – 28 U.S.C. § 1498 

43. UTL’s recovery for alleged infringement of the Patents-in-Suit, if any, is limited 

pursuant to 28 U.S.C. § 1498 to the extent that any alleged infringement, in whole or part, is 

attributable to the United States government. 

SEVENTEENTH AFFIRMATIVE DEFENSE – INEQUITABLE CONDUCT 

44. Micron repeats and incorporates by reference paragraphs 5-28 of Micron’s 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 17 of 40
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Affirmative Defenses as if fully set forth herein. 

45. On information and belief, when Fusion-io filed the applications for the Patents-inSuit, Fusion-io’s business related to solid-state devices using flash memory. 

46. The cover pages of the Patents-in-Suit name David Flynn as an inventor. David 

Flynn was a co-founder, chief technology officer,2 CEO, and/or chairman of the board3 of Fusionio. 

47. The cover pages of the Patents-in-Suit name Michael Zappe as an inventor. 

Michael Zappe served as a chief software architect for Fusion-io. Michael Zappe’s LinkedIn 

profile4 describes his role: 

48. On information and belief, David Flynn and Michael Zappe knew about the relevant 

standard-setting organizations T10 and T13 as a matter of regular business given their respective 

2

 Fusion-io, Fusion-io announces ioDrive, placing the power of a SAN in the palm of your hand (Sept. 25, 2007), 

https://web.archive.org/web/20100509034736/http://www.fusionio.com/load/mediadocsPress/fbdzz/Pressrelease_SANinhand.pdf. 3

 David Flynn, LinkedIn, https://www.linkedin.com/in/david-flynn-57736b1. 

4

 Michael Zappe, LinkedIn, https://www.linkedin.com/in/zapman. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 18 of 40
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roles and given Fusion-io’s general line of business. 

49. Microsoft employee Frank Shu submitted proposals to T13 for the adoption of the 

TRIM command as part of the ATA standard. 

50. Frank Shu’s submission to T13 includes: document T13/e0715r0, titled 

“Notification of Deleted Data Proposal for ATA8-ACS2,” revision 0, dated April 21, 2007; 

document T13/07154r1, titled “Data Set Management Commands Proposal for ATA8-ACS2,” 

revision 1, dated July 26, 2007; document T13/07154r2, titled “Data Set Management Commands 

Proposal for ATA8-ACS2,” revision 2, dated September 5, 2007; document T13/e07154r3, titled 

“Data Set Management Commands Proposal for ATA8-ACS2,” revision 3, dated October 5, 2007; 

document T13/e07154r4, titled “Data Set Management Commands Proposal for ATA8-ACS2,” 

revision 4, dated November 1, 2007; document T13/e071564r5, titled “Data Set Management 

Commands Proposal for ATA8-ACS2,” revision 5, dated November 5, 2007; and document 

T13/e07154r6, titled “Data Set Management Commands Proposal for ATA8-ACS2,” revision 6, 

dated December 12, 2007 (collectively, “Frank Shu’s Trim Proposals”). Frank Shu’s Trim 

Proposals are available on the T13 website, www.t13.org, under “Documents.” 

51. Plaintiff’s infringement contentions allege, in part, that Frank Shu’s TRIM 

command infringes claims in each of the Patents-in-Suit. 

52. Fusion-io participated in T10. E.g., Ex. A (sending, by ABatwara at fusionio.com, 

an email to T10 members); Ex. B (submitting, by Fusion-io, a Patent Declaration). Frank Shu’s 

Trim Proposals were known to T10, and T10 considered the adoption of the UNMAP command 

as the equivalent of TRIM. Ex. E. On information and belief, Fusion-io representatives promoted 

the adoption of the UNMAP command by T10. On information and belief, these Fusion-io 

activities in T10 occurred at the direction of and were known to David Flynn and/or Michael Zappe 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 19 of 40
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in the ordinary course of Fusion-io’s business, given David Flynn’s and Michael Zappe’s 

respective roles. 

53. On information and belief, David Flynn and/or Michael Zappe knew about Frank 

Shu’s Trim Proposals during the pendency of each of the Patents-in-Suit. 

54. The covers of the Patents-in-Suit purport to claim priority back to U.S. provisional 

application 60/873,111, filed on December 6, 2006 (“December 6, 2006 Provisional”); U.S. 

provisional application 60/974,470, filed on September 22, 2007 (“September 22, 2007 

Provisional”); and U.S. patent application 11/952,113, filed on December 6, 2007 (“December 6, 

2007 Application”), which eventually issued as U.S. Patent No. 8,261,005. 

55. UTL contends that the TRIM command infringes claims of the Patents-in-Suit, but 

the claims of the Patents-in-Suit lack priority to at least the December 6, 2006 Provisional and the 

September 22, 2007 Provisional. Thus, the TRIM command accused of infringement is instead 

invalidating prior art because Frank Shu publicly proposed the TRIM command not later than April 

2007. 

56. During the prosecution of the December 6, 2007 Application, the applicant filed an 

Information Disclosure Statement on May 29, 2012, listing, as reference C48, revision 3 of Frank 

Shu’s Trim Proposals, dated October 5, 2007: 

Ex. C at 10. 

57. On information and belief, David Flynn and Michael Zappe cited this reference 

because they knew of TRIM’s relevance to the pending applications. 

58. The listed October 5, 2007 date comes after the filing date of the September 22, 

2007 Provisional. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 20 of 40
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59. On information and belief, David Flynn and/or Michael Zappe also had possession 

of, but withheld, at least revision 2 of Frank Shu’s Trim Proposals. On information and belief, 

David Flynn and/or Michael Zappe printed at least revision 2 of Frank Shu’s Trim Proposals on 

April 5, 2010. On information and belief, David Flynn and/or Michael Zappe withheld revision 2 

of Frank Shu’s Trim Proposals because revision 2’s date of September 5, 2007, precedes the filing 

date of the September 22, 2007 Provisional. 

60. On September 25, 2013, after the allowance of the ’406 Patent, Fusion-io filed an 

information disclosure statement (“the ’658 IDS”) listing only one instance of Frank Shu’s Trim 

Proposals, dated December 12, 2007. Ex. F at 26. This December 12, 2007 date matches the date 

of the sixth and last revision of Frank Shu’s Trim Proposals. The ’658 IDS notes that the submitted 

reference was “printed April 5, 2010,” well before the allowance of any Patent-in-Suit. 

61. But despite dating the reference as December 12, 2007, on the IDS, Fusion-io did 

not submit revision 6 of Frank Shu’s Trim Proposals, dated December 12, 2007, to the Patent 

Office for consideration. Fusion-io instead possessed and submitted revision 2 of Frank Shu’s 

Trim Proposals, dated September 5, 2007, with the ’658 IDS. 

62. Exhibit F at pages 28-35 is a true and correct copy of revision 2 of Frank Shu’s 

Trim Proposals as retrieved from the USPTO file history of the ’658 Patent. This copy is dated 

September 5, 2007—not December 12, 2007, as listed in the IDS. Id. at 28. 

63. David Flynn and/or Michael Zappe possessed one or more earlier revisions of Frank 

Shu’s Trim Proposals, such as revision 2, but never correctly listed them in any IDS to the Patent 

Office. On information and belief, David Flynn and/or Michael Zappe did so because revision 2 

of Frank Shu’s Trim Proposals has a date of September 5, 2007, which precedes the date of the 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 21 of 40
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September 22, 2007 Provisional. 

64. Based on the citation to the T13 website in the ’658 IDS, David Flynn and/or 

Michael Zappe is believed to have possessed and withheld the other revisions of Frank Shu’s Trim 

Proposals which are accessible on the T13 website. On information and belief, David Flynn and/or 

Michael Zappe withheld revisions 0 and 1 of Frank Shu’s Trim Proposals because these also had 

priority dates that also precede the filing date of the September 22, 2007 Provisional. 

65. On information and belief, David Flynn and/or Michael Zappe intentionally misdated the D19 entry in the ’658 IDS as “December 12, 2007,” rather than “September 5, 2007,” in 

order to prevent the Patent Examiner from using Frank Shu’s Trim Proposals to reject the pending 

claims, which the Examiner believed to have priority to the September 22, 2007 Provisional or to 

the December 6, 2007 Application. The incorrect date cannot be explained by mistake, such as the 

accidental strike of an adjacent number on a keyboard; it must have been intentional. From this 

intentionally incorrect date, combined with the selective disclosure of only revision 3 of Frank 

Shu’s Trim Proposals, dated October 5, 2007, during the prosecution of the December 6, 2007 

Application, the only possible inference is an intent to deceive the Patent Examiner to avoid 

examining the Patents-in-Suit against earlier revisions of Frank Shu’s Trim Proposals that predate 

the September 22, 2007 Provisional. 

66. The incorrect December 12, 2007 date led the Examiner to believe that the 

submitted reference published after each of the December 6, 2006 Provisional, September 22, 2007 

Provisional, and December 6, 2007 Application to which the ’658 and ’727 Patents claim priority, 

and thus led the Examiner to believe there was no need to look at the later-dated reference that 

would not qualify as prior art. The incorrect date successfully deceived the Examiner. 

67. On or about July 22, 2014, Fusion-io executed an assignment to Intellectual 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 22 of 40
23 

Property Holdings 2 LLC, a Delaware limited liability company, as recorded in the USPTO 

Assignment Database, reel 033389, frame 0511-0538. Ex. D at 1, 5. 

68. In the assignment, Fusion-io assigned the ’658 Patent, the ’406 Patent, application 

14/309,751 (which would later issue as the ’727 Patent), and other patents and applications to 

Intellectual Property Holdings 2 LLC. Ex. D. 

69. On frame 0524, Fusion-io noted its belief that the ’658 Patent related to “PTRIM,” 

believed to refer to “Persistent TRIM,” and that the ’406 Patent related to “TRIM.” Id. at 14. 

70. On frame 0524, Fusion-io also noted its belief that application 14/309,751, which 

ultimately issued as the ’727 Patent, related to “TRIM.” Id. at 14. 

71. On information and belief, David Flynn and Michael Zappe knew of the relevance 

of Frank Shu’s Trim Proposals to the Patents-in-Suit through at least July 22, 2014, as evidenced 

by the recorded assignment. 

72. On information and belief, David Flynn and/or Michael Zappe possessed and 

intentionally withheld the early revisions 0 and 1 of Frank Shu’s Trim Proposals to the U.S. Patent 

Office during the prosecution of each of the Patents-in-Suit. But for the withholding of the early 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 23 of 40
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revisions 0 and 1 of Frank Shu’s Trim Proposals, which predate the September 22, 2007 

Provisional and December 6, 2007 Application, none of the claims of the Patents-in-Suit would 

have issued. 

73. On information and belief, David Flynn and/or Michael Zappe possessed and 

withheld revisions 0, 1, 2, 4, 5, and 6 of Frank Shu’s Trim Proposals from the U.S. Patent Office 

before the notice of allowance issued for the ’406 Patent. On information and belief, David Flynn 

and/or Michael Zappe possessed at least revisions 2 and 6 of Frank Shu’s Trim Proposals as 

“printed on April 5, 2010,” and likely possessed and withheld all other versions. David Flynn 

and/or Michael Zappe did not disclose revisions 0, 1, 2, 4, 5, and 6 of Frank Shu’s Trim Proposals 

to the Patent Office before allowance of the ’406 Patent. But-for the withholding of Frank Shu’s 

Trim Proposals, the Examiner would not have allowed the ’406 Patent. 

74. On information and belief, David Flynn and/or Michael Zappe intentionally misdated revision 2 of Frank Shu’s Trim Proposals in the IDS to have the later December 12, 2007 

date of revision 6 of Frank Shu’s Trim Proposals. But-for their deceiving the Examiner with the 

incorrect date, the Examiner would not have allowed the ’658 Patent or the ’727 Patent. 

75. On information and belief, David Flynn and/or Michael Zappe possessed and 

withheld other revisions of Frank Shu’s Trim Proposals during the pendency of the ’658 Patent 

and ’727 Patent. But-for the withholding of these other revisions, the Examiner would not have 

allowed the ’658 Patent and ’727 Patent. 

76. On information and belief, David Flynn and/or Michael Zappe acted with the 

specific intent to deceive the Patent Office. On information and belief, David Flynn and Michael 

Zappe knew that “TRIM” related to the Patents-in-Suit at least from May 29, 2012, through July 

22, 2014, evidenced by their citation of revision 2 of Frank Shu’s Trim Proposals during the 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 24 of 40
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prosecution of the December 6, 2007 Application and evidenced by the notes “TRIM” or “PTRIM” 

in the assignment records. Ex. C at 10; Ex. D at 14. On information and belief, Fusion-io’s 

participation in T10 occurred at the direction or knowledge of David Flynn and/or Michael Zappe 

as a matter of regular business in the solid-state device industry. On information and belief, 

Fusion-io encouraged T10 to adopt the UNMAP command at the knowledge or direction of David 

Flynn and/or Michael Zappe. 

77. On information and belief, David Flynn held equity in Fusion-io, as is customary 

for co-founders of companies. 

78. On information and belief, Michael Zappe also held equity in Fusion-io, a common 

form of compensation for employees of tech startups like Fusion-io. 

79. On or about July 22, 2014, Fusion-io executed an assignment to Intellectual 

Property Holdings 2 LLC, a Delaware limited liability company, as recorded in the USPTO 

Assignment Database at reel 033389, frames 0511-0538 for valuable consideration. Ex. D at 1, 5. 

80. Because of their equity, David Flynn and Michael Zappe stood to benefit directly 

from the value and assignment of Fusion-io’s intellectual property. 

81. On information and belief, David Flynn and/or Michael Zappe intended to deceive 

the Patent Office in order to obtain patents that they believed covered the TRIM and the equivalent 

UNMAP commands. At the same time, David Flynn and/or Michael Zappe failed to inform T10 

about their beliefs that their patent applications covered the TRIM or UNMAP commands, despite 

the T10 Patent Policy, available at https://www.t10.org/patpol.htm, requiring disclosure. Thus, by 

promoting standard adoption, David Flynn and/or Michael Zappe schemed to create a large base 

of users for the purpose of extorting patent license fees using inequitably and fraudulently procured 

patents and/or to inflate the value of their patents for doing so when assigning the patents to 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 25 of 40
26 

Intellectual Property Holdings 2 LLC. 

82. Each of the Patents-in-Suit is unenforceable because of inequitable conduct. 

RESERVATION OF ADDITIONAL AFFIRMATIVE DEFENSES 

Micron reserves all affirmative defenses under Rule 8(c) of the Federal Rules of Civil 

Procedure, the Patent Laws of the United States, and any other defenses at law or in equity that 

may exist now or that may be available in the future based on discovery and further factual 

investigation in this action. 

COUNTERCLAIMS 

Micron, by and through its undersigned counsel, incorporates its answers and affirmative 

defenses as set forth above, and alleges counterclaims against Plaintiff/Counter-Defendant UTL 

for invalidity, non-infringement, unenforceability, and Walker Process fraud of the Patents-in-Suit 

as follows: 

BACKGROUND 

1. According to the allegations set forth in its Complaint, UTL claims to be the 

assignee and owner of the Patents-in-Suit. Dkt. 1 ¶¶ 28, 34, 40. 

2. UTL has accused Micron of infringing the Patents-in-Suit. Micron denies that any 

of its products infringe any valid and enforceable claim in the Patents-in-Suit. 

3. An actual case and controversy exists between Micron and UTL concerning the 

alleged infringement of one or more claims of the Patents-in-Suit, and that controversy is ripe for 

adjudication. 

PARTIES 

4. Counterclaimant-Plaintiff MTI is a Delaware corporation with its principal place of 

business at 8000 S. Federal Way, Boise, Idaho 83716. 

5. Counterclaimant-Plaintiff Micron Texas is an Idaho limited liability company with 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 26 of 40
27 

its principal office at 8000 S. Federal Way, Boise, Idaho 83716. 

6. Counterclaimant-Plaintiff MSP is an Idaho corporation with its principal office at 

8000 S. Federal Way, Boise, Idaho 83716. 

7. Counterclaimant-Defendant UTL alleges it is a Texas limited liability company 

with its principal place of business at 6136 Frisco Square Boulevard, Suite 400, Frisco, Texas 

75034. See Dkt. 1 ¶ 2. 

JURISDICTION AND VENUE 

8. This is an action for declaratory judgment under 28 U.S.C. §§ 2201 and 2202. This 

Court has subject matter jurisdiction over these Counterclaims under §§ 1331 and 1338(a). These 

Counterclaims arise under the patent laws of the United States. 

9. This Court has personal jurisdiction over UTL, at least because by initiating this 

lawsuit, UTL has submitted to this District’s jurisdiction. 

10. Venue for these Counterclaims is proper under this District under 28 U.S.C. §§ 1391 

and 1400. 

COUNTERCLAIM 1 

(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’658 PATENT) 

11. Micron incorporates by reference the admissions, denials, and allegations set forth 

in the preceding paragraphs of this First Amended Answer as if fully set forth herein. 

12. An actual controversy exists between Micron and UTL as to whether Micron 

infringes the ’658 Patent, as UTL contends, or does not do so, as Micron contends. 

13. Micron has been damaged by UTL’s filing of a lawsuit against Micron based on a 

patent that Micron does not infringe. 

14. By this Counterclaim, Micron seeks a declaration that it has not infringed and does 

not infringe any valid and enforceable claim of the ’658 Patent either directly or indirectly, literally 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 27 of 40
28 

or under the doctrine of equivalents, or willfully, and is entitled to a declaration. 

15. A judicial declaration is necessary and appropriate at this time such that Micron 

may ascertain its rights and duties with respect to the ’658 Patent and with respect to any past, 

present, or future manufacture, use, importation, distribution, sale, or offer for sale of its products. 

16. This is an exceptional case entitling Micron to an award of its attorneys’ fees 

incurred in connection with this action pursuant to 35 U.S.C. § 285. 

COUNTERCLAIM 2 

(DECLARATORY JUDGMENT OF INVALIDITY OF THE ’658 PATENT) 

17. Micron incorporates by reference the admissions, denials, and allegations set forth 

in the preceding paragraphs of this First Amended Answer as if fully set forth herein. 

18. An actual controversy exists between Micron and UTL as to whether the ’658 

Patent is valid, as UTL contends, or is invalid for failure to comply with the requirements of 

patentability of the Patent Laws of the United States, Title 35 of the United States Code, including, 

but not limited to, 35 U.S.C. §§ 101, 102, 103, 111, 112, 115, 116, 119, 132, 251, 256, and/or 282, 

as Micron contends. 

19. For example, U.S. Patent No. 7,409,489 (“Sinclair”), attached hereto as Exhibit A, 

was filed on October 25, 2005, and issued on August 5, 2008, and is therefore prior art under at 

least § 102(e). 

20. Sinclair anticipates and/or renders obvious one or more claims of the ’658 Patent. 

21. By this Counterclaim, Micron seeks a declaration that the claims of the ’658 Patent 

are invalid. A judicial declaration is necessary and appropriate at this time such that Micron may 

ascertain its rights and duties with respect to the ’658 Patent and with respect to any past, present, 

or future manufacture, use, importation, distribution, sale, or offer for sale of its products. 

22. This is an exceptional case entitling Micron to an award of its attorneys’ fees 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 28 of 40
29 

incurred in connection with this action pursuant to 35 U.S.C. § 285. 

COUNTERCLAIM 3 

(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’406 PATENT) 

23. Micron incorporates by reference the admissions, denials, and allegations set forth 

in the preceding paragraphs of this First Amended Answer as if fully set forth herein. 

24. An actual controversy exists between Micron and UTL as to whether Micron 

infringes the ’406 Patent, as UTL contends, or does not do so, as Micron contends. 

25. Micron has been damaged by UTL’s filing of a lawsuit against Micron based on a 

patent that Micron does not infringe. 

26. By this Counterclaim, Micron seeks a declaration that it has not infringed and does 

not infringe any valid and enforceable claim of the ’406 Patent either directly or indirectly, literally 

or under the doctrine of equivalents, or willfully, and is entitled to a declaration. 

27. A judicial declaration is necessary and appropriate at this time such that Micron 

may ascertain its rights and duties with respect to the ’406 Patent and with respect to any past, 

present, or future manufacture, use, importation, distribution, sale, or offer for sale of its products. 

28. This is an exceptional case entitling Micron to an award of its attorneys’ fees 

incurred in connection with this action pursuant to 35 U.S.C. § 285. 

COUNTERCLAIM 4 

(DECLARATORY JUDGMENT OF INVALIDITY OF THE ’406 PATENT) 

29. Micron incorporates by reference the admissions, denials, and allegations set forth 

in the preceding paragraphs of this First Amended Answer as if fully set forth herein. 

30. An actual controversy exists between Micron and UTL as to whether the ’406 

Patent is valid, as UTL contends, or is invalid for failure to comply with the requirements of 

patentability of the Patent Laws of the United States, Title 35 of the United States Code, including, 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 29 of 40
30 

but not limited to, 35 U.S.C. §§ 101, 102, 103, 111, 112, 115, 116, 119, 132, 251, 256, and/or 282, 

as Micron contends. 

31. For example, Sinclair, attached hereto as Exhibit A, was filed on October 25, 2005, 

and issued on August 5, 2008, and is therefore prior art under at least § 102(e). 

32. Sinclair anticipates and/or renders obvious one or more claims of the ’406 Patent. 

33. By this Counterclaim, Micron seeks a declaration that the claims of the ’406 Patent 

are invalid. A judicial declaration is necessary and appropriate at this time such that Micron may 

ascertain its rights and duties with respect to the ’406 Patent and with respect to any past, present, 

or future manufacture, use, importation, distribution, sale, or offer for sale of its products. 

34. This is an exceptional case entitling Micron to an award of its attorneys’ fees 

incurred in connection with this action pursuant to 35 U.S.C. § 285. 

COUNTERCLAIM 5 

(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’727 PATENT) 

35. Micron incorporates by reference the admissions, denials, and allegations set forth 

in the preceding paragraphs of this First Amended Answer as if fully set forth herein. 

36. An actual controversy exists between Micron and UTL as to whether Micron 

infringes the ’727 Patent, as UTL contends, or does not do so, as Micron contends. 

37. Micron has been damaged by UTL’s filing of a lawsuit against Micron based on a 

patent that Micron does not infringe. 

38. By this Counterclaim, Micron seeks a declaration that it has not infringed and does 

not infringe any valid and enforceable claim of the ’727 Patent either directly or indirectly, literally 

or under the doctrine of equivalents, or willfully, and is entitled to a declaration. 

39. A judicial declaration is necessary and appropriate at this time such that Micron 

may ascertain its rights and duties with respect to the ’727 Patent and with respect to any past, 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 30 of 40
31 

present, or future manufacture, use, importation, distribution, sale, or offer for sale of its products. 

40. This is an exceptional case entitling Micron to an award of its attorneys’ fees 

incurred in connection with this action pursuant to 35 U.S.C. § 285. 

COUNTERCLAIM 6 

(DECLARATORY JUDGMENT OF INVALIDITY OF THE ’727 PATENT) 

41. Micron incorporates by reference the admissions, denials, and allegations set forth 

in the preceding paragraphs of this First Amended Answer as if fully set forth herein. 

42. An actual controversy exists between Micron and UTL as to whether the ’727 

Patent is valid, as UTL contends, or is invalid for failure to comply with the requirements of 

patentability of the Patent Laws of the United States, Title 35 of the United States Code, including, 

but not limited to, 35 U.S.C. §§ 101, 102, 103, 111, 112, 115, 116, 119, 132, 251, 256, and/or 282, 

as Micron contends. 

43. For example, Sinclair, attached hereto as Exhibit A, was filed on October 25, 2005, 

and issued on August 5, 2008, and is therefore prior art under at least § 102(e). 

44. Sinclair anticipates and/or renders obvious one or more claims of the ’727 Patent. 

45. By this Counterclaim, Micron seeks a declaration that the claims of the ’727 Patent 

are invalid. A judicial declaration is necessary and appropriate at this time such that Micron may 

ascertain its rights and duties with respect to the ’727 Patent and with respect to any past, present, 

or future manufacture, use, importation, distribution, sale, or offer for sale of its products. 

46. This is an exceptional case entitling Micron to an award of its attorneys’ fees 

incurred in connection with this action pursuant to 35 U.S.C. § 285. 

COUNTERCLAIM 7 

(DECLARATORY JUDGMENT OF UNENFORCEABILITY) 

47. Micron incorporates by reference the admissions, denials, and allegations set forth 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 31 of 40
32 

in the preceding paragraphs of this First Amended Answer as if fully set forth herein. 

48. An actual controversy exists between Micron and UTL as to whether the Patentsin-Suit are enforceable. 

49. By this Counterclaim, Micron seeks a declaration that the Patents-in-Suit are 

unenforceable for inequitable conduct, unclean hands, and/or estoppel. A judicial declaration is 

necessary and appropriate at this time such that Micron may ascertain its rights and duties with 

respect to the Patents-in-Suit and with respect to any past, present, or future manufacture, use, 

importation, distribution, sale, or offer for sale of its products. 

50. This is an exceptional case entitling Micron to an award of its attorneys’ fees 

incurred in connection with this action pursuant to 35 U.S.C. § 285. 

COUNTERCLAIM 8 

(DECLARATORY JUDGMENT OF LICENSED USE OR WAIVER) 

51. Micron incorporates by reference the admissions, denials, and allegations set forth 

in the preceding paragraphs of this First Amended Answer as if fully set forth herein. 

52. By this Counterclaim, Micron seeks a declaration that Fusion-io’s actions gave rise 

to a license to use the Patents-in-Suit and/or waived infringement claims against ANSI, ANSI 

members, and users of ANSI standards. A judicial declaration is necessary and appropriate at this 

time such that Micron may ascertain its rights and duties with respect to the Patents-in-Suit and 

with respect to any past, present, or future manufacture, use, importation, distribution, sale, or offer 

for sale of its products. 

53. This is an exceptional case entitling Micron to an award of its attorneys’ fees 

incurred in connection with this action pursuant to 35 U.S.C. § 285. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 32 of 40
33 

COUNTERCLAIM 9 

(WALKER PROCESS FRAUD IN VIOLATION OF SECTION 2 OF THE SHERMAN 

ACT, 15 U.S.C. § 2) 

54. Micron incorporates by reference the admissions, denials, and allegations set forth 

in the preceding paragraphs of this First Amended Answer as if fully set forth herein. 

55. The Patents-in-Suit were fraudulently procured by the inequitable conduct and 

unclean hands of David Flynn and/or Michael Zappe based on the facts stated in affirmative 

defenses above. 

56. UTL knows that the Patents-in-Suit were fraudulently procured by the inequitable 

conduct and unclean hands of David Flynn and/or Michael Zappe at least of the filing date of this 

First Amended Answer. 

57. UTL would likely have known that the Patents-in-Suit were fraudulently procured 

by the inequitable conduct and unclean hands of David Flynn and/or Michael Zappe when UTL 

conducted customary due diligence before acquiring the Patents-in-Suit. 

58. UTL knows that the Patents-in-Suit are invalid for the reasons identified in 

Micron’s invalidity contentions. UTL knows that the PTAB has instituted IPR against each of the 

Patents-in-Suit and that the PTAB held that Micron has a “reasonable likelihood of success” in 

prevailing against at least one claim of each challenged Patent-in-Suit. UTL knows that Micron’s 

products cannot infringe the asserted claims of the Patents-in-Suit because UTL’s infringement 

allegations are conflicting and contradictory, and Micron has informed UTL of this several times. 

UTL knows that Micron’s products cannot infringe the asserted claims of the Patents-in-Suit 

because UTL lost on constructions of multiple claim terms that UTL relies on for its infringement 

theories. UTL knows that the accused TRIM command predates the priority of the asserted patents, 

so the accused command is instead invalidating prior art under UTL’s own theories, as explained 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 33 of 40
34 

in Micron’s IPR petitions. 

59. UTL continues to assert the Patents-in-Suit in bad faith. 

60. If any of the Patents-in-Suit do cover (not conceded) the TRIM, DEALLOCATE, 

or UNMAP commands, then the relevant antitrust market consists of a technology market for 

intellectual property that is licensed to allow standards-compliant (SATA, SCSI, or NVMe) flash 

memory storage devices to use a delete-type command in the United States (“the Technology 

Market”). Flash memory storage devices are often referred to as “SSD’s,” short for “solid-state 

storage devices.” Fusion-io’s unclean hands in breaching the T10 Patent Policy prevented the 

standards setting organizations from considering alternative technologies during the standardsetting time period and made alternative technology licenses to unsuitable as alternatives after the 

standards finalized. 

61. UTL has willfully and intentionally monopolized and/or attempted to monopolize 

the Technology Market. 

62. According to UTL, “several major SSD market competitors have already taken 

licenses to the Patents-in-Suit, including Intel Corp., Google, LLC, Samsung Electronics America, 

Inc., SK Hynix, Inc., Western Digital, Inc., Toshiba America, Inc. and e.Digital Corp.” Dkt. No. 1 

¶ 24. 

63. UTL accused the SSDs of Dell, Inc.; Dell Technologies Inc.; and HP Inc. of 

infringing the Patents-in-Suit. UTL has also made Dell, Inc.; Dell Technologies Inc.; and HP Inc. 

settle infringement claims based on the Patents-in-Suit. 

64. UTL has confidential license agreements for the Patents-in-Suit affecting other 

entities. Intel Corp.; Google, LLC; Samsung Electronics America, Inc.; SK Hynix, Inc.; Western 

Digital, Inc.; Toshiba America, Inc.; e.Digital Corp.; Dell, Inc.; Dell Technologies Inc.; HP Inc., 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 34 of 40
35 

and the unnamed entities will be referred to as the “Market Licensees.” 

65. UTL’s history of making the Market Licensees license the Patents-in-Suit shows 

that UTL has monopoly power in the Technology Market or is attempting to monopolize the 

Technology Market. 

66. UTL has caused anticompetitive harm to Micron and other Market Licensees. 

67. UTL has caused the other Market Licensees, and is attempting to cause Micron, to 

license the Patents-in-Suit at anticompetitive rates well above rates that would have been set in the 

presence of fair competition. UTL has caused the other Market Licensees, and is attempting to 

cause Micron, to license the Patents-in-Suit at anticompetitive rates exceeding the free or 

reasonable royalty that would have been set had the Patents-in-Suit been timely disclosed in 

compliance with the T10 Patent Policy. 

68. Had the Patents-in-Suit been timely disclosed in accordance with the T10 Patent 

Policy, then the SATA, SCSI, and NVMe standards would not have adopted the standards in their 

current form, at least not without a free license and/or reasonable and nondiscriminatory license to 

the Patents-in-Suit. At best, the standards would have obtained a free license or would have 

adopted a competing, noninfringing technology during the standard setting process. If any 

technology in Micron’s invalidity contentions if found not to anticipate the claims, such technology 

would be a competing, noninfringing alternative. At worst, the license value for the Patents-inSuit would have been set based on the reasonable and non-discriminatory rate reflective of value 

of the technology, if any. But due to Fusion-io’s breach of the T10 Patent Policy, UTL has forced 

the Market Licensees to license the Patents-in-Suit at anticompetitive royalty rates reflective of 

potential lawsuit damages attributable to widespread adoption of standardized products rather than 

reflecting the competitive value of the technology. Fusion-io and its successors-in-interest waited 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 35 of 40
36 

for a standard to adopt technology and waited for standardized products to become widespread 

before revealing the Patents-in-Suit, in violation of the T10 Patent Policy, in order to seek royalty 

rates at anticompetitive values. 

69. Fusion.io’s fraudulent procurement of the Patents-in-Suit, its breach of the T10 

Patent Policy, and UTL’s perpetuation of that fraud and bad faith assertions of the Patents-in-Suit 

have eliminated free and fair competition for licenses to competitive technology that would 

otherwise be standardized. 

70. UTL also forced the Market Licensees and is now attempting to force Micron to 

license the Patents-in-Suit at anticompetitive royalty rates due to the difficulty of changing a 

standard after widespread adoption of the standard. So again, UTL has forced the Market 

Licensees to license the Patents-in-Suit at anticompetitive royalty rates reflective of potential 

lawsuit damages attributable to widespread adoption of standardized products rather than a fair, 

discounted rate that accounts for the possibility of switching to a competing technology in a prestandardized setting. 

71. The anticompetitive royalty rate caused or will cause Micron and the Market 

Licensees to be injured by paying supracompetitive royalties and raising their product prices. Had 

the violation of the T10 Patent Policy never occurred, then the SATA, SCSI, and NVMe standards 

would have adopted a different technology, obtained a free license to the technology, or at least 

obtained a reasonable and non-discriminatory license to the patented technology. Any royalty or 

damages beyond these alternatives are anticompetitive. The violation of the T10 Patent Policy 

prevented the standard-setting organizations from considering and/or using different, competing 

technologies. 

72. As another direct result of UTL’s anticompetitive conduct, Micron will incur 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 36 of 40
37 

substantial legal fees in defending UTL’s bad faith assertion of IP rights. Downstream purchasers 

of Micron’s SSDs will be injured by paying monopolistic prices that include monopolistic royalties 

to UTL. 

73. As a result of having to pay attorneys’ fees and unnecessary costs that would have 

been avoided absent UTL’s objectively and subjectively bad faith assertions of IP rights, 

competition among Micron and other competitors in the Technology Market is restrained. Absent 

UTL’s bad faith assertions of IP rights, Micron and other competitors could instead invest the fees 

and costs in the improvement of their products and services in competition with one another. 

74. Micron sells its SATA and NVMe SSDs in interstate commerce. The SATA, SCSI, 

and NVMe standards are used across interstate commerce. UTL is seeking to license its Patentsin-Suit across interstate commerce. 

75. As a direct and proximate result of UTL’s anticompetitive conduct as alleged 

herein, Micron has been damaged in an amount to be proven at trial, trebled pursuant to 15 U.S.C. 

§ 15(a). 

76. As further direct and proximate result of UTL’s anticompetitive conduct, Micron is 

entitled to recover its attorneys’ fees and costs herein, pursuant to 15 U.S.C. § 15(a). 

JURY DEMAND 

77. Pursuant to Federal Rule of Civil Procedure 38(b), Micron demands a trial by jury 

on all issues so triable. 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 37 of 40
38 

MICRON’S PRAYER FOR RELIEF 

WHEREFORE, Micron prays for judgment as follows: 

A. For dismissal of UTL’s Complaint with prejudice, and that UTL shall take nothing 

against Micron; 

B. For a judgment and declaration that Micron does not infringe each and every claim 

in the Patents-in-Suit; 

C. For a judgment and declaration that the Patents-in-Suit, and each and every claim 

thereof, are invalid, unenforceable, waived, or licensed, or in the alternative, limited 

to a reasonable and nondiscriminatory rate; 

D. For a judgment, pursuant to 35 U.S.C. § 285, that UTL’s conduct renders this case 

exceptional and that the Court award Micron its attorneys’ fees and costs; 

E. For a judgment that UTL violated Section 2 of the Sherman Antitrust Act, 15 U.S.C. 

§ 2, and for an order awarding to Micron all damages resulting from UTL’s antitrust 

violation, including Micron’s attorneys’ fees, expert fees, and costs; 

F. For an award to Micron of trebled damages and attorneys’ fees under 15 U.S.C. § 

15(a) for UTL’s antitrust violation; 

G. The Court award Micron’s costs of suit; and 

H. For such other and further relief as the Court deems just and proper. 

Dated: August 13, 2021 Respectfully submitted, 

 By: /s/ Michael R. Rueckheim 

 Thomas M. Melsheimer 

State Bar No. 13922550 

TMelsheimer@winston.com 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 38 of 40
39 

Natalie Arbaugh 

State Bar No. 24033378 

NArbaugh@winston.com 

Qi (Peter) Tong 

State Bar No. 24119042 

PTong@winston.com 

WINSTON & STRAWN LLP 

2121 N. Pearl Street, Suite 900 

Dallas, TX 75201 

Telephone: (214) 453-6500 

Facsimile: (214) 453-6400 

Katherine Vidal 

Pro Hac Vice 

State Bar No. 194971 

KVidal@winston.com 

Michael R. Rueckheim 

State Bar No. 24081129 

MRueckheim@winston.com 

WINSTON & STRAWN LLP 

275 Middlefield Road, Suite 205 

Menlo Park, CA 94025 

Telephone: (650) 858-6500 

Facsimile: (650) 858-6559 

Vivek V. Krishnan 

Pro Hac Vice 

VKrishnan@winston.com 

WINSTON & STRAWN LLP 

35 W. Wacker Drive 

Chicago, IL 60601 

Telephone: (312) 558-5600 

Facsimile: (312) 558-5700 

ATTORNEYS FOR DEFENDANTS 

MICRON TECHNOLOGY, INC.; 

MICRON SEMICONDUCTOR 

PRODUCTS, INC.; MICRON 

TECHNOLOGY TEXAS, LLC 

 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 39 of 40
40 

CERTIFICATE OF SERVICE 

 I hereby certify that on August 13, 2021, the foregoing document was electronically filed 

with the Clerk of Court using the Court’s CM/ECF system which will send notification of such 

filing to all counsel of record, including counsel of record for Plaintiff Unification Technologies 

LLC. 

/s/ Michael R. Rueckheim 

Michael R. Rueckheim 

Case 6:20-cv-00500-ADA Document 80 Filed 08/13/21 Page 40 of 40
1 

UNIFICATION TECHNOLOGIES LLC,

Plaintiff,

v.

MICRON TECHNOLOGY, INC.,

MICRON SEMICONDUCTOR

PRODUCTS, INC.,

MICRON TECHNOLOGY TEXAS, LLC, 

Defendants.

)

)

)

)

)

)

)

)

)

)

)

Case No. 6:20-CV-500-ADA

[PROPOSED] AGREED PROTECTIVE ORDER

Pursuant to Rule 26(c) of the Federal Rules of Civil Procedure, Unification Technologies 

LLC (“Plaintiff” or “UTL”), and Micron Technology, Inc., Micron Semiconductor Products, Inc., 

and Micron Technology Texas, LLC (“Defendants” or “Micron”) (collectively, “the Parties”) have 

stipulated and agreed to the terms and entry of, and the Court hereby orders the Parties to abide by, 

this Protective Order.

This Protective Order is issued to facilitate document disclosure and production under the 

Local Rules of this Court and the Federal Rules of Civil Procedure. Information subject to this 

Protective Order may be used only for the purposes of a lawsuit governed by this Protective Order. 

Unless modified pursuant to the terms contained in this Protective Order, this Protective Order shall 

remain in effect through the conclusion of each lawsuit governed by this Protective Order.

In support of this order, the Court finds that:

1) Documents and information containing confidential, proprietary business

information, and/or trade secrets (“Confidential Information”) that bear significantly on the Parties’ 

claims or defenses are likely to be disclosed or produced during the course of discovery in each 

lawsuit governed by this Protective Order;

UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 1 of 27
2 

IT IS, THEREFORE, ORDERED THAT:

Definitions

A. “Party”: any party to the above-captioned action (“Action”), including all of its

officers, directors, employees, and outside counsel (and their support staffs). 

B. “Plaintiff’: Unification Technologies LLC, including all of its officers, directors,

employees, and outside counsel (and their support staffs). 

C. “Defendants”: Micron Technology, Inc., Micron Semiconductor Products, Inc., and

Micron Technology Texas, LLC, including all of their officers, directors, employees, and outside 

counsel (and their support staffs). 

D. “Material”: all information, documents, items and things produced, served, made

available, or otherwise provided in this Action (whether paper, electronic, tangible or otherwise) by 

the Parties or by Non-Parties.

E. “Producing Party”: a Party or Non-Party that produces Material in this Action.

F. “Receiving Party”: a Party that receives Material from a Producing Party in this

Action.

G. “Designating Party”: a Party or Non-Party that designates Material as

“CONFIDENTIAL,” “CONFIDENTIAL OUTSIDE COUNSEL’S EYES ONLY” or 

“RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” in this Action.

2) Counsel for the Party receiving Confidential Information may presently be without

sufficient information to accept the representation(s) made by the Party or Non-Party producing 

Confidential Information as to the confidential, proprietary, and/or trade secret nature of 

such Confidential Information; and 

3) To protect the respective interests of the Parties and Non-Parties and to facilitate 

the progress of disclosure and discovery in each lawsuit governed by this Protective Order, the 

Court will issue this Protective Order. 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 2 of 27
3 

H. “Non-Party”: any natural person, partnership, corporation, association, or other legal

entity not named as a Party to this action. 

I. “Data Breach” means any accidental, unlawful, or unauthorized 

destruction, alteration, disclosure, loss, theft, copying, use, modification, disposal, 

compromise, or access to Protected Material or any act or omission that compromises or undermines 

the physical, technical, or organizational safeguards put in place by Receiving Party in processing or 

possessing a Producing Party’s Protected Material. 

J. “Circuit Schematic Files”: a computer file or document containing a graphical

representation of an integrated circuit that shows the connections between the various components 

of the circuit. Circuit Schematic Files include complete hierarchical printouts (e.g., in PDF format) of 

schematic and logical netlist views that are used for abstract level simulation, but not for device 

fabrication. Circuit Schematic Files do not include Physical Design Files. 

K. “Physical Design Files”: a computer file or document that shows the 

physical arrangement of the components of the integrated circuit, also called the circuit 

layout. Physical Design Files are typically the final output product of integrated circuit design that is 

used by a foundry to fabricate an integrated circuit. Physical Design Files may include, for 

example, GDS (Graphic Database System), GDSII stream format, DEF (Design Exchange 

Format), and LEF (Library Exchange Format) files, but do not include Circuit Schematic Files. 

L. “HDL Source Code”: a computer file or files that contain electronic hardware

descriptions in a hardware description language, such as Verilog or VHDL. HDL Source Code 

refers only to native electronic files that are in a human readable format suitable for input to an 

assembler, compiler, interpreter, synthesis tool, or other translator. 

M. “Source Code”: a compilation of computer instructions and data definitions 

expressed in a human-readable form suitable for input to an assembler, compiler, interpreter, or other 

translator, including HDL Source Code. 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 3 of 27
4 

N. “Source Code Material”: all software, firmware, Source Code, HDL Source Code,

Circuit Schematic Files, or Physical Design Files. 

O. “CONFIDENTIAL” Material: Material the Designating Party believes in good faith

is not generally known to others, and that the Designating Party (i) would not normally reveal to third 

parties except in confidence or has undertaken with others to maintain in confidence, (ii) believes in 

good faith is protected by a right to privacy under federal or state law or any other applicable privilege or 

right related to confidentiality or privacy, or (iii) believes in good faith to constitute or to contain 

confidential and/or proprietary information not otherwise known or available to the public. 

CONFIDENTIAL Material shall include all Material referring or relating to the foregoing, including 

but not limited to copies, summaries, and abstracts of the foregoing. Any Party may use the 

“CONFIDENTIAL” designation only if, in the good faith belief of such Party and its counsel, the 

unrestricted disclosure of such information and/or Materials could be potentially harmful to 

the business or operations of the party. 

P. “CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” Material: Material the

Designating Party believes in good faith is not generally known to others and has significant 

competitive value such that unrestricted disclosure to others would create a substantial risk of serious 

injury, and which the Designating Party (i) would not normally reveal to third parties except in 

confidence or has undertaken with others to maintain in confidence, (ii) believes in good faith 

is protected by a right to privacy under federal or state law or any other applicable privilege or right 

related to confidentiality or privacy, or (iii) believes in good faith constitutes proprietary financial, 

research, development, technical, or commercially sensitive competitive information that 

the Producing Party maintains as highly confidential in its business or the disclosure of which is 

likely to cause harm to the competitive position of the Producing Party. CONFIDENTIAL - 

OUTSIDE COUNSEL’S EYES ONLY Material shall include all Material referring or relating to the 

foregoing, including but not limited to copies, summaries, and abstracts of the foregoing. 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 4 of 27
5 

Q. “RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY”

Material: Material constituting Source Code Material as produced pursuant to Paragraph 13 

below or as incorporated into, for example, documents, answers to interrogatories, technical expert 

reports, or deposition testimony. RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES 

ONLY Material shall include all Material referring or relating to the foregoing, including but not 

limited to copies, summaries, and abstracts of the foregoing. References to the Bates number of a 

previously printed page of RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY 

Material are not RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY Material. 

R. “Involved In The Prosecution Of Patents Or Patent Applications”: participation in any way 

on behalf of a patent owner/patent applicant or other person or entity having ownership, license, or other 

financial interest in the patent or in the patent or reissue application, in (i) reexamination 

proceedings before the United States Patent and Trademark Office or any foreign agency responsible 

for examining or issuing patents (which, for clarity, does not include review proceedings before 

the Patent Trial and Appeal Board), or (ii) drafting, reviewing, approving, or prosecuting any 

portion (e.g., any claim, any figure, or any specification language) of a patent application (including, but 

not limited to, provisional, non-provisional, original, continuation, continuation-in-part, divisional, 

reissue, and/or continued prosecution applications) or any portion of any amendment, 

response, reply, or other paper submitted to the United States Patent and Trademark Office or any 

foreign agency responsible for examining or issuing patents (which, for clarity, does not include 

review proceedings before the Patent Trial and Appeal Board). 

S. “Protected Matters”: Confidential Information, including but not limited to

documents, deposition testimony, discovery responses, summaries of Confidential Information or 

briefs discussing or containing Confidential Information, as well as copies thereof, disclosed or 

produced by any Producing Party in a lawsuit governed by this Protective Order. No Material 

shall be deemed Protected Matters if: 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 5 of 27
6 

(1) it is in the public domain at the time of disclosure;

(2) it becomes part of the public domain;

(3) the Receiving Party can show it was in the Receiving Party’s rightful and

lawful possession at the time of disclosure;

(4) the Receiving Party lawfully received it from a Non-Party without restriction

as to disclosure, provided such Non-Party has the right to make the disclosure to the Receiving Party;

or

(5) the Receiving Party can show it was independently developed by the

Receiving Party after the time of disclosure by personnel who did not have access to the Producing 

Party’s Protected Matters.

Confidential Information

1. Except as otherwise indicated below, Protected Matters may be designated by a

Producing Party or Designating Party as “CONFIDENTIAL,” “CONFIDENTIAL - OUTSIDE 

COUNSEL’S EYES ONLY,” or “RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S 

EYES ONLY” as described below.

2. Protected Matters and any information contained therein shall not be used or shown,

disseminated, copied, or in any way communicated to anyone for any purpose whatsoever, except as 

provided in this Protective Order.

3. Protected Matters designated as “CONFIDENTIAL” and any information contained

therein may be disclosed (and copies may be made to facilitate this disclosure) only to the following 

persons (“Qualified Persons”):

(a) Outside counsel of record in a lawsuit governed by this Protective Order for

the Party receiving Protected Matters;

(b) Any four (4) in-house counsel of a Receiving Party who have responsibility

for maintaining, defending, or evaluating this litigation. No CONFIDENTIAL Material shall be 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 6 of 27
7 

(d) The Court and Court personnel;

(e) The Mediator;

(f) Actual or potential independent experts or consultants (including translators)

who have been approved in accordance with Paragraph 14, including signing a document agreeing 

to be bound by the terms of this protective order (at Exhibit A hereto) and whose identity, as well as 

all present and prior relationships or affiliations, is provided to the Producing Party whose Protected 

Matters are to be disclosed for purposes in accordance with Paragraph 14; 

(g) Personnel of graphics, litigation support (including stenographic reporters,

videographers, and/or their staff), and trial/jury consulting firms, including any mock jurors, engaged 

by a Party or its attorneys in connection with a lawsuit governed by this Protective Order who have 

signed or whose representative has signed Exhibit A hereto prior to any disclosure of Protected 

Matters; and

(h) the author, addressee, or recipient of a document containing the information

in a deposition or at trial; and to the extent the author, addressee or recipient is a former employee of 

the Producing Party, only if he or she signs the Confidentiality Undertaking.

4. Protected Matters designated as “CONFIDENTIAL - OUTSIDE COUNSEL’S EYES

ONLY” shall be restricted in circulation to Qualified Persons described in paragraphs 3(a), 3(c), 3(d), 

3(e), 3(f), 3(g), and 3(h) above, and two (2) in-house counsel of a Receiving Party who have 

disclosed to such in-house counsel until the individual has signed the Confidentiality 

Undertaking attached hereto as Exhibit A, thereby declaring that he or she has read and understands this 

Protective Order and agrees to be bound by its provisions. Such written agreement shall be retained 

by counsel for the Receiving Party; 

(c) Administrative staff, e.g., paralegals and secretaries, working for counsel

defined in Paragraphs 3(a) and 3(b) (excluding experts and investigators) assigned to and 

necessary to assist counsel in the preparation and trial of this action; 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 7 of 27
8 

responsibility for maintaining, defending, or evaluating this litigation if the in-house counsel signs 

the Confidentiality Undertaking and provides it to opposing counsel. 

5. Protected Matters designated as “RESTRICTED CONFIDENTIAL - OUTSIDE

COUNSEL’S EYES ONLY” shall be restricted in circulation to Qualified Persons described in 

paragraphs 3(a), 3(c) (excluding employees of 3(b)), 3(d), 3(e), 3(f), 3(g) (excluding mock 

jurors), and 3(h). 

6. To the extent that Protected Matters or information contained therein is used in

depositions, at hearings, or at trial, such documents or information shall remain subject to the 

provisions of this Protective Order, along with the transcript pages of the depositiontestimony and/or 

trial testimony referring to the Protected Matters or information contained therein. 

7. This Protective Order shall apply to the Parties and any Non-Party from whom

discovery may be sought and who desires the protection of this Protective Order. Thus, any Non-Party 

requested or required to produce or disclose information in this proceeding, through subpoena or 

otherwise, may designate such information pursuant to the terms of this Protective Order. 

8. In the event a Receiving Party wishes to use any “CONFIDENTIAL” or

“CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” Material in any affidavits, briefs, 

memoranda of law, or other papers filed or introduced in Court in a lawsuit governed by this 

Protective Order, such information used therein shall be filed under seal with the Court. 

“RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” Material must also be 

filed under seal in compliance with Paragraph 13(i). 

9. Nothing in this Protective Order shall preclude any Receiving Party to a lawsuit

governed by this Protective Order or their attorneys from (1) showing a document prepared prior to the 

filing of this action and designated as “CONFIDENTIAL,” “CONFIDENTIAL - OUTSIDE 

COUNSEL’S EYES ONLY,” or “RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S 

EYES ONLY” to an individual in a deposition or at trial who appears as an author, addressee or 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 8 of 27
9 

recipient of a copy of the document on the document’s face, and to the extent the author, addressee 

or recipient is a former employee of the Producing Party, only if he or she signs the 

Confidentiality Undertaking, or (2) disclosing or using, in any manner or for any purpose, any 

information or documents from the Party’s own files which the Party itself has designated as 

“CONFIDENTIAL,” “CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY,” or 

“RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” to an individual 

employed by the Party. 

10. The Receiving Party of any Protected Material shall have and maintain appropriate

physical, organizational, and technical processes, security standards, guidelines, controls, and 

procedures to protect against a Data Breach (“Appropriate Safeguards”), and shall ensure that its 

professional vendors, experts and any other person or entity that receives Protected Material pursuant 

to this Stipulated Protective Order implements and maintains Appropriate Safeguards. 

Depositions

11. Confidential Information disclosed at (a) the deposition of a Party or one of its present

or former officers, directors, employees, agents or independent experts retained by counsel for the 

purpose of a lawsuit governed by this Protective Order, or (b) the deposition of a Non-Party, may be 

designated by any Producing Party (including the Non-Party disclosing any such Confidential 

information) as “CONFIDENTIAL,” “CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY,” or 

“RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” Material by 

indicating on the record at the deposition that the testimony is “CONFIDENTIAL,” 

“CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY,” or “RESTRICTED 

CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” Material and is subject to the provisions of 

this Protective Order. Any Producing Party (including the Non-Party having disclosed such 

Confidential Information) may also designate information disclosed at such deposition as 

“CONFIDENTIAL,” “CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY,” or 

“RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” Material by notifying 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 9 of 27
10

all of the Parties in writing at the time of deposition or before twenty-one (21) days after receipt 

of the transcript. Each Receiving Party shall attach a copy of such written notice or notices to the 

face of the transcript and each copy thereof in his possession, custody, or control. Unless 

previously designated in accordance with this Protective Order, all deposition transcripts shall 

be treated as “CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” for a period of twentyone (21) days after the receipt of the transcript. 

12. At any time after the delivery of Protected Matters, counsel for the Receiving Party or 

Parties receiving the Protected Matters may challenge the designation of all or any portion thereof, 

including the level of the confidentiality designation, by providing written notice thereof to 

counsel for the Producing Party disclosing or producing the Protected Matters. If the Parties do 

not resolve the dispute within fourteen (14) days of the Producing Party receiving written notice of the 

challenge, the Receiving Party or Parties receiving the Protected Matters wishing to contest the 

designation may file a motion with the Court with regard to any Protected Matters in dispute. Upon the 

filing of such a motion by the Receiving Party or Parties, the Producing Party or Parties producing the 

Protected Matters shall have the burden of establishing that the disputed Protected Matters 

are entitled to confidential treatment at the designated level. All Protected Matters are entitled 

to confidential treatment pursuant to the terms of this Protective Order until and unless the Parties 

formally agree in writing to the contrary or a contrary determination is made by the Court as to 

whether all or a portion of the Protected Matters are entitled to confidential treatment at the 

designated level. 

“Restricted Confidential – Outside Counsel’s Eyes Only” Material

13. Protected Matters designated as “RESTRICTED CONFIDENTIAL - OUTSIDE

COUNSEL’S EYES ONLY” shall be subject to additional protections given the particularly sensitive 

nature of the information, unless otherwise advised by the Producing Party: 

(a) All RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES

ONLY Material shall be made available by the Producing Party to the Receiving Party’s outside 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 10 of 27
11

counsel and/or experts who have been approved according to Paragraph 14 either in searchable PDF 

format or in native format in a secure room on a secured computer without Internet access or network 

access to other computers and with all input/output ports (such as USB) blocked, as necessary and 

appropriate to prevent and protect against any unauthorized copying, transmission, removal or other 

transfer of any RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY Material 

outside or away from the computer on which the RESTRICTED CONFIDENTIAL - 

OUTSIDE COUNSEL’S EYES ONLY Material is provided for inspection (the “Secure 

Computer”). The Secure Computer will be located at one of the three following locations: (i) the 

offices of outside counsel for the Producing Party in this Action (e.g., Winston & Strawn in 

Dallas, Texas); (ii) the offices of Micron Technology, Inc., Micron Semiconductor Products, Inc., 

and Micron Technology Texas, LLC within the Western District of Texas; or (iii) at any other 

location mutually agreed upon by counsel for the Receiving Party and the Producing Party. 

The parties agree to meet and confer if the Secure Computer was not manufactured 

within the past five (5) years and thereby slows down the inspection process. The Producing Party 

shall provide the Receiving Party with information explaining how to start, log on to, and operate 

the Secure Computer in order to access the produced RESTRICTED CONFIDENTIAL - 

OUTSIDE COUNSEL’S EYES ONLY Material on the Secure Computer. After the Secure 

Computer has been prepared and provided to the Receiving Party, the Producing Party shall thereafter 

provide access to the Secure Computer during regular business hours on reasonable notice provided in 

writing by the Receiving Party (which shall be no less than at least five (5) business days’ notice) 

and may be accessed by the Receiving Party using this process throughout the case up to and 

including trial. This written notice from the Receiving Party shall identify in writing to the 

Producing Party the persons who will be conducting the inspection or will be present during the 

inspection. The Producing Party shall install software tools that are customary for viewing and 

searching the Material on the Secure Computer. The Producing Party shall provide a list of the tools 

that it intends to install on the Secure 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 11 of 27
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Computer twelve (12) business days before the Secure Computer is made available for inspection. 

The Receiving Party’s outside counsel and/or experts who have been approved according to 

Paragraph 14 may request that commercially available software tools reasonably necessary to assist 

in reviewing and searching the electronic information be installed on the Secure Computer. The 

Receiving Party must provide the Producing Party with the software tool(s) and evidence sufficient 

to establish the existence of a license that authorizes such installation at least five (5) business days 

in advance of the date upon which the Receiving Party wishes to have the additional software tools 

available for use on the Secure Computer. For emphasis, it should be noted that the tools for 

reviewing RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY Material may 

not be used to circumvent the protections of this Protective Order in any way. Moreover, the 

Receiving Party shall not at any time use any compilers, interpreters or simulators in connection with 

the Producing Party’s RESTRICTED CONFIDENTIAL-OUTSIDE COUNSEL’S EYES ONLY 

Material, and in no event shall the Receiving Party cause tools to be installed on the Secure Computer 

that have the effect of altering, modifying, deleting, copying, or otherwise permitting the 

reproduction or removal of such RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES 

ONLY Material. In addition, the Receiving Party shall not be permitted to bring electronic devices, 

including but not limited to hard drives, cellular phones, PDAs, cameras, and voice recorders, into 

the location of the Secure Computer with the following exception. Except as provided here and in 

Paragraph 13(i), no electronic copies of RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S 

EYES ONLY Material shall be made.

(b) The Receiving Party’s outside counsel and/or experts approved according to

Paragraph 13 shall be entitled to take notes (electronic or nonelectronic) relating to the Source Code

Material but may not copy the Source Code Material into such notes. To the extent the Receiving 

Party desires to take notes electronically, the Producing Party shall allow the Receiving Party to take 

notes on the Secure Computer or provide a note-taking computer (e.g., a computer, which is distinct 

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from the Secure Computer, that is not linked to any network, including a local area network (“LAN”), 

an intranet, or the Internet, and has image making functionality of any type disabled, including but 

not limited to camera or video functionality) (“Note-Taking Computer”) with a current, widely used 

word processing program for the Receiving Party’s use in taking such notes. The Note-Taking 

Computer shall be used for the sole purpose of note-taking and shall be retained by the Producing 

Party. The Note-Taking Computer shall have disk encryption and be password protected. Other than 

the Note-Taking Computer, use or possession of any input/output device (e.g., USB memory stick, 

mobile phone or tablet, camera or any camera-enabled device, CD, floppy disk, portable hard drive, 

laptop, or any device that can access the Internet or any other network or external system, etc.) is 

prohibited while accessing the Secure Computer. 

(c) Upon request, such notes shall be printed and promptly given to the Receiving

Party to retain, and the computer cleared of such notes. Any such printed notes shall be designated as 

and treated as RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY 

material. Any printed notes shall also be treated as paper copies of RESTRICTED CONFIDENTIAL -

OUTSIDE COUNSEL’S EYES ONLY material, except that printed notes will not count toward the 

Receiving Party’s page limits in Paragraph 13(d) below. Rather, printed notes shall be limited to a 

total of one hundred (100) pages. In the event this limit is inadequate for the Receiving Party, the Parties 

agree to negotiate in good faith to establish a reasonable extension on that limit. The Note-Taking 

Computer shall have no features which would hinder the complete clearing of the Receiving Party’s 

notes after such notes have been printed. Any such notes shall not include copies or 

reproductions of portions of the Source Code Material, however, the notes may contain filenames, 

directory names, module names, or procedure names. No copies of all or any portion of the Source 

Code Material may leave the room in which the Source Code Material is inspected except as 

otherwise provided herein. Further, no written or electronic record of the Source Code Material is 

permitted except as otherwise provided herein. The Producing Party will not retain a copy of any 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 13 of 27
14

printed notes. The log of such notes need not be produced to any other party absent Court Order 

(e.g., potentially in connection with a Protective Order violation motion). During any review of 

Material on the Secure Computer, the Producing Party may visually monitor the activities of 

the Receiving Party’s representatives from outside the room where the Secure Computer is located, 

but the Producing Party shall not make any recording, including any audio, video or digital recording, of 

the activities of the Receiving Party’s representatives. However, in the event that any Material is 

reviewed on a Secure Computer at Micron Technology, Inc., Micron Semiconductor Products, Inc., 

and Micron Technology Texas, LLC using a software review tool licensed to Micron, a Micron 

employee shall operate such software review tool in cooperation with the Receiving Party to 

facilitate the review. 

The Receiving Party shall also be entitled to take depositions of the Producing Party’s 

experts and other witnesses with access to the Source Code Material on the Secure Computer 

during the deposition upon request prior to the deposition. To the extent there is any 

objection by the Producing Party to hold a deposition where the Secure Computer is located, 

the Parties shall meet and confer to determine another location mutually agreed upon by counsel for 

the Receiving Party and the Producing Party to hold the deposition where the witness can access 

Source Code Material. 

(d) Under no circumstances are printouts or copies of RESTRICTED

CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY Material to be made except by the 

Producing Party. At the request of the Receiving Party, the Producing Party shall provide 

paper copies (“Original Printouts”) of portions of the Source Code Materials on the Secure 

Computer that are requested by the Receiving Party and are reasonably necessary to facilitate the 

Receiving Party’s preparation of court filings, expert reports, and trial exhibits. The Parties 

acknowledge and agree that the purpose of the protection herein would be frustrated by printing 

large portions of code for review and analysis elsewhere. The total number of pages of “Original 

Printouts” shall not exceed 250 pages. If the Receiving Party has already received a total of 250 pages 

and believes that additional pages are 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 14 of 27
15

reasonably required for its case preparation, the Parties will follow the meet and confer 

requirements outlined below. Original Printouts that exceed 25 continuous pages shall be presumed 

excessive unless the Receiving Party provides a reasonable justification that such printed 

portions are necessary. The Producing Party shall Bates number, copy, and label 

“RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” material on any 

Original Printouts. If the Producing Party objects that the portions requested to be printed are 

excessive and/or not reasonably necessary to any case preparation activity, the Producing Party shall 

make such objection known to the Receiving Party within five (5) business days. If, after meeting 

and conferring, the Producing Party and the Receiving Party cannot resolve the objection, the 

Receiving Party or the Producing Party shall be entitled to seek a Court resolution of whether the 

print request is reasonably necessary to any case preparation activity as provided herein. The day after 

the completion of the meet and confer process, the Parties shall contact the Court’s clerk to 

schedule a conference. The Producing Party must use its power to object reasonably and may not, for 

example, make an objection simply to introduce delay or attempt to discover privileged 

information. In the absence of any objection, or upon resolution of any such dispute by the Court, the 

Producing Party shall provide via overnight mail one copy set of such Original Printouts to the Receiving 

Party within five (5) business days. The Original Printouts shall constitute part of the 

RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY Material produced by the 

Producing Party in thisaction. 

(e) Unless otherwise agreed in advance by the Parties in writing, the Receiving

Party’s outside counsel and/or experts who have been approved according to Paragraph 13 shall 

remove all notes, documents, and all other materials from the room that may contain work product 

and/or attorney-client privileged information at the end of each day. Materials inadvertently left in the 

review room do not operate as a waiver of the attorney work product doctrine or any other 

applicable privilege and shall be returned to the owner promptly. The Producing Party shall not be 

responsible for any items left in the review room. 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 15 of 27
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(h) The Receiving Party’s outside counsel of record and any person receiving a

copy of any RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY Material 

shall maintain and store any paper copies of the Material at their offices in a manner that prevents 

(f) Other than as provided herein, the Receiving Party will not copy, remove, or

otherwise transfer any RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY 

Material from the Secure Computer including, without limitation, copying, removing, or transferring 

the Material onto any other computers or peripheral equipment. The Receiving Party will 

not electronically transmit any RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL’S 

EYES ONLY Material in any way from the Producing Party’s facilities or the offices of its 

outside counsel of record. This provision does not prevent the Parties from including 

RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY Material in filings with 

the Court made under seal. Unless otherwise agreed by the Producing and Receiving Parties, service 

copies of such filings must be served via secure FTP or FedEx. 

(g) The Receiving Party’s outside counsel of record may make no more than two (2)

additional paper copies of any portions of the Original Printouts of RESTRICTED

CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY Material received from a Producing 

Party pursuant to Paragraph 12(c), not including copies attached to court filings or used 

at depositions. The Receiving Party’s outside counsel of record shall maintain a complete log of 

Bates numbers of printed RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES 

ONLY Material that lists the individuals who have reviewed and/or received paper copies of such 

Material, including the Bates number(s) of the copy and when it was provided to that person, and 

produce that log within five (5) business days of a Producing Party’s written request. In addition, any 

outside experts or consultants of the Receiving Party with access to RESTRICTED 

CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY Material shall not make any use of the 

Material for any purpose other than this Action. 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 16 of 27
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duplication of or unauthorized access to the Material, including, without limitation, storing 

the Material in a locked room or cabinet at all times when it is not in use. 

(i) All paper copies of RESTRICTED CONFIDENTIAL - OUTSIDE

COUNSEL’S EYES ONLY Material shall be securely destroyed in a timely manner if they are no 

longer in use (e.g., at the conclusion of a deposition). Copies of any such Material that are marked as 

deposition exhibits shall not be provided to the Court Reporter or attached to deposition transcripts; 

rather, the deposition record will identify the exhibit by its production numbers. If the deposition 

exhibit has been marked up or altered in any way by the deponent, the Receiving Party shall store the 

exhibit in the same way paper copies of the RESTRICTED CONFIDENTIAL - OUTSIDE 

COUNSEL’S EYES ONLY Material are stored. 

Except as provided in this sub-paragraph, absent express written permission from the 

Producing Party, the Receiving Party may not create electronic images, or any other images, or make 

electronic copies, of the RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY 

Material from any paper copy of Material for use in any manner (including by way of example 

only, the Receiving Party may not scan the Material to a PDF or photograph the Material). Paper 

copies of the Original Printouts also may not be converted into an electronic document, and may not 

be scanned using optical character recognition (“OCR”) technology. However, a Receiving Party 

may make and use images of portions of the Material if reasonably necessary for court filings, 

expert reports, discovery responses, and other similar documents. In preparing such documents, a 

Receiving Party shall not transmit RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S 

EYES ONLY Material or any summaries of such documents that are in electronic form (e.g., PDF, 

TIFF, Word, Excel files) outside of the Receiving Party (e.g., in e-mail traveling on the 

Internet) unless the documents or summaries are encrypted using PGP© encryption with a pass 

phrase whose length is at least 10 characters. All such documents shall be clearly marked 

“RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY Material.” Unless 

agreed by the Producing Party, images

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 17 of 27
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(i) current curriculum vitae, including the full name of the individual and

the city and state of his or her primary residence;

(ii) business address and title;

(iii) nature of business or profession;

(iv) any previous or current relationship (personal or professional) with any

of the Parties or any prior assignees of any of the asserted patents that also 

manufacture or sell solid state drives; 

(v) a listing of other actions (including case name, case number, and

court/agency) in which the individual has testified (at trial, deposition or in a hearing) 

over the last four years;

(vi) the individual’s current employer;

(vii) all companies for which the individual has consulted or been employed

by, within the past four years, the years of such consulting or employment and brief 

or copies of the Material shall not be included in any correspondence (references to 

production numbers shall be used instead). 

Disclosure to Experts or Non-Party Consultants

14. An independent expert’s or consultant’s access to Protected Matters shall be 

subject to the terms in this paragraph, including the notice-and-objection provisions below, and 

the requirement that the expert or consultant execute the Confidentiality Undertaking attached 

hereto as Exhibit A. The Party that retained the expert or consultant shall retain the Confidentiality 

Undertaking and must provide a copy to every Producing Party whose Protected Matters the 

expert or consultant might access, prior to such access. 

(a) Before a Receiving Party may disclose, directly or indirectly, any Protected

Matters to an independent expert or consultant, the Receiving Party must give written notice to 

the Producing Party of the following information as it relates to the expert or consultant: 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 18 of 27
19

description of the work performed for any position that the individual directly worked 

on managing data in non-volatile memory; and

(viii) a copy of the expert’s or consultant’s signed Confidentiality

Undertaking (in the form attached hereto as Exhibit A). A separate Confidentiality 

Undertaking shall not be required for staff members working under the supervision of 

an individual signing a Confidentiality Undertaking in the form of Exhibit A. An 

individual signing a Confidentiality Undertaking in the form of Exhibit A, however, 

shall accept full responsibility for taking measures to ensure that staff members 

working under his or her supervision comply with terms of this Protective Order. 

(b) A Party that makes a written notice and provides the information specified in

the preceding paragraph may disclose the Protected Matters to the identified expert or consultant 

unless, within five business (5) days of the written notice, the Producing Party objects in writing.

(c) If an objection is made, the Producing and Receiving Parties shall meet and

confer to try to resolve the dispute by agreement. If no agreement is reached within five (5) business 

days, the Producing Party may move the Court for an order that access to Protected Matters be denied 

the designated individual, or other appropriate relief within five (5) additional business days. If the 

Producing Party moves the Court for relief, unless and until the Court determines otherwise, no 

disclosure of any such Protected Matters shall be made by the Receiving Party to any expert or 

consultant to whom an objection has been made. If the Producing Party does not move the Court for 

relief within five (5) business days, the Receiving Party may disclose the Protected Matters to the 

identified expert or consultant.

Inadvertent Failure to Designate

15. If, through inadvertence, a Producing Party in a lawsuit governed by this Protective

Order provides any information without marking the information as “CONFIDENTIAL,” 

“CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY,” or “RESTRICTED 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 19 of 27
20

Prosecution Bar

16. Any Material designated CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY

that is related to managing data in solid state drive technologies, other than non-technical 

information, such as financial or licensing information, or any material designated RESTRICTED 

CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY is subject to a PROSECUTION BAR. 

Absent written consent from the Producing Party, this PROSECUTION BAR means that any person 

employed or retained by the Receiving Party in this Action who has received and reviewed the 

Producing Party’s Material described above shall not be Involved In The Prosecution Of Patents Or 

Patent Applications relating to managing data in solid state drive technologies from the time the 

affected individual first reviewed such Material through and including two (2) years following the 

entry of a final, non-appealable judgment or order or the complete settlement of all claims and 

CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY,” the Producing Party may subsequently 

inform the Receiving Party of the specific designation of the disclosed information, and the 

Receiving Party shall treat the disclosed information as “CONFIDENTIAL,” “CONFIDENTIAL - 

OUTSIDE COUNSEL’S EYES ONLY,” or “RESTRICTED CONFIDENTIAL - OUTSIDE 

COUNSEL’S EYES ONLY” Material upon receipt of written notice from the Producing Party. To 

the extent the Receiving Party has already disclosed such information, the Receiving Party shall 

use its best efforts to promptly collect any copies of disclosed material that have been provided to 

individuals other than those authorized under this Protective Order, and if collected, shall destroy or 

return them to the Producing Party. Inadvertent or unintentional production of 

“CONFIDENTIAL,” “CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY,” 

or “RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” Material that 

is not so designated shall not be deemed a waiver in whole or in part of a claim for treatment 

as “CONFIDENTIAL,” “CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY,” 

or “RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY.” 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 20 of 27
21

dismissal with or without prejudice in this Action. In addition, a person subject to this 

PROSECUTION BAR can participate or assist in a reexamination or review (including inter partes or 

post-grant review) by the United States Patent and Trademark Office of a patent asserted by 

Plaintiff in this Action, provided that such participation or assistance shall not include 

suggesting, drafting, or amending patent claim language. 

17. To minimize the risk of inadvertent disclosure, any party defending a patent in a

reexamination or review that intends to seek claims amendments or new claims must erect an ethical 

wall between the attorney(s) who received “CONFIDENTIAL - OUTSIDE COUNSEL’S EYES 

ONLY” or “RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” Material 

and the attorney(s) who are involved in seeking to amend the claims or prepare new claims in the 

proceeding. This PROSECUTION BAR shall begin when access to designated “CONFIDENTIAL - 

OUTSIDE COUNSEL’S EYES ONLY” or “RESTRICTED CONFIDENTIAL - OUTSIDE 

COUNSEL’S EYES ONLY” Material is first received by the affected individual and shall end one (1)

year after final termination of this action.

Privilege/Work Product

18. The Parties agree to make a good-faith effort to provide a privilege log. The Parties

further agree that the following information need not be included on a privilege log: documents, 

communications and other information (1) regarding selection of counsel; (2) regarding 

activities undertaken in compliance with the duty to preserve information pursuant to Fed. R. 

Civ. P. 26(b)(3)(A) and (B); or (3) generated after the filing of the complaint in this lawsuit. 

19. If a Producing Party inadvertently produces a document or tangible item that it later

discovers or in good faith asserts to be privileged, protected by the work product doctrine, or subject to 

some other immunity from disclosure (“Privileged Material”) the production of that Privileged 

Material shall not be deemed to constitute a waiver of any applicable privileges, work product 

protection, or immunity from disclosure. In such circumstances, upon discovery of the inadvertent 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 21 of 27
22

disclosure, the Producing Party shall immediately notify the Receiving Party of the inadvertent 

production, and request either the return or confirmation of destruction of the Privileged 

Materials. Within five (5) business days of receiving such notification, the Receiving Party shall 

return or confirm destruction of all such materials, except for one copy to be used solely for the 

purpose of challenging the privilege of mistaken production. Such return or confirmation of 

destruction shall not preclude the Receiving Party from seeking to compel production of the materials 

within twenty-one (21) business days of receiving such notification or at such other time as the Parties 

agree to in writing, and shall not constitute an admission by the Receiving Party that the materials were, 

in fact, privileged or otherwise protected in any way. The Producing Party shall retain the Privileged 

Material for submission to the Court in the event the Receiving Party moves to compel. 

Summaries of inadvertently produced documents shall be destroyed by the Receiving Party within 

twenty-one (21) business days if a motion to compel is not brought or is denied. 

20. If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed

Protected Matters to any person or in any circumstance not authorized under this Protective 

Order, the Receiving Party must immediately (a) notify in writing the Producing Party of the 

unauthorized disclosures, (b) use its best efforts to retrieve all copies of the Protected Matters, (c) 

inform the person or persons to whom unauthorized disclosures were made of all the terms of this 

Protective Order, and (d) request such person or persons to execute the “Confidentiality 

Undertaking” that is attached hereto as Exhibit A. Unauthorized or inadvertent disclosure does not 

change the status of Protected Matters or waive the right to hold the disclosed document or 

information as Protected Matters. 

Third Party Requests

21. If any Receiving Party under the terms of this Protective Order receives a subpoena,

order, or other legal process commanding the production of such Protected Matters (a “Third 

Party Request”), such Receiving Party shall not produce any Protected Matters in response to the 

Third Party Request without the prior written consent of the Producing Party or an order of a 

court of 

Case 6:20-cv-00500-ADA Document 40 Filed 10/29/20 Page 22 of 27
23

competent jurisdiction, except as otherwise provided by this paragraph. A Receiving Party 

receiving a Third Party Request shall promptly notify the Producing Party of such Third Party 

Request, in writing (by e-mail or fax, if possible) immediately and in no event more than three (3) 

business days after receiving the Third Party Request. Such notification must include a copy of 

the subpoena or court order. The Receiving Party also must immediately inform in writing the Party 

who sent the Third Party Request that some or all the material covered by the Third Party Request 

is the subject of this Protective Order and include a copy of this Protective Order. The purpose of 

imposing these duties is to alert the interested parties to the existence of this Protective Order 

and to afford the Producing Party in this action an opportunity to protect its confidentiality 

interests in the court from which the Third Party Request issued. The Producing Party shall bear the 

burdens and the expenses of seeking protection of its confidential material in that court. Nothing in 

these provisions should be construed as requiring a Receiving Party in this Action to disobey a 

lawful directive from another court. 

22. Other proceedings: By entering this Protective Order and limiting the disclosure 

of information in any lawsuit governed by this Protective Order, the Court does not intend to preclude 

another court from finding that information may be relevant and subject to disclosure in another case. Any 

person or party subject to this Protective Order who becomes subject to a motion to disclose 

another party’s information designated as confidential pursuant to this Protective Order shall 

promptly notify that party of the motion so that the party may have an opportunity to appear and be 

heard on whether that information should be disclosed. 

A Non-Party’s Protected Material Sought to Be Produced in This Litigation

23. The terms of this Protective Order are applicable to information produced by a NonParty in this Action and designated as “CONFIDENTIAL,” “CONFIDENTIAL OUTSIDE 

COUNSEL’S EYES ONLY” or “RESTRICTED CONFIDENTIAL - OUTSIDE COUNSEL’S 

EYES ONLY”. Such information produced by Non-Parties in connection with this Action is 

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(i) promptly notify in writing the Non-Party that some or all of the NonParty’s Confidential Information is subject to a discovery request;

(ii) promptly provide the Non-Party with a copy of the Protective Order in

this Action, the relevant discovery request(s), and a reasonably specific description of 

the information requested; and

(iii) make the information requested available for inspection by the NonParty.

(b) If the Non-Party fails to object or seek a protective order from this Court

within the time period provided for in the agreement with the Non-Party not to produce the NonParty’s Confidential Information, or if no time period is provided, within 14 days of receiving the 

notice and accompanying information, the party receiving the discovery request may produce the 

Non-Party’s Confidential Information responsive to the discovery request. If the Non-Party timely 

seeks a protective order, the party receiving the discovery request shall not produce any information 

in its possession or control that is subject to the confidentiality agreement with the Non-Party before 

a determination by the Court. Absent a court order to the contrary, the Non-Party shall bear the burden 

and expense of seeking protection in this Court of its Material.

Discovery From Experts and Consultants

24. Discovery of materials from experts and consultants will be subject to the following

limitations:

(a) The following materials will be excluded from expert discovery or inquiry at

protected by the remedies and relief provided by this Protective Order. Nothing in these provisions 

should be construed as prohibiting a Non-Party from seeking additional protections. 

(a) In the event that a Party is required, by a valid discovery request, to produce a

Non-Party’s Confidential Information in its possession, and the Party is subject to an agreement with 

the Non-Party not to produce the Non-Party’s Confidential Information, then the Party shall: 

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27. Within sixty (60) days after final termination of this Action by dismissal, judgment,

or settlement, counsel for the Party or Parties to this Action receiving Protected Matters shall return 

or destroy the Protected Matters and all copies thereof, and will destroy all documents and things 

trial: (1) draft expert reports or declarations and outlines thereof; (2) documents or notes prepared 

by testifying experts or their assistants, except for those that form or provide a basis for the expert’s 

opinion; (3) communications between testifying experts, or their assistants, and outside counsel 

of record, except for those which form or provide a basis for the expert’s opinion; and (4) 

communications between testifying experts, or their assistants, and other experts or 

consultants (testifying or not), except for those which form or provide a basis for the expert’s 

opinions. 

(b) Notwithstanding the foregoing, (1) all documents provided or made known to

experts (including, without limitation, publications and documents produced in discovery), other than 

those generated for the purpose of litigation and/or for the purpose of communicating with the expert, 

that were considered by the expert in formulating his or her opinion (whether or not they support the 

opinions), (2) the amount of time an expert spent on the litigation, and (3) the compensation received 

by the expert for his work on the litigation are discoverable and may be the subject of questioning at 

deposition or trial.

25. No discovery relating to work performed for this litigation can be taken from any nontestifying consultant except to the extent that the consultant has provided information or opinions 

that form a basis for a testifying expert’s opinion.

Termination of Lawsuit

26. After termination of this Action, the provisions of this Protective Order shall continue

to be binding, except with respect to those documents and information that become a matter of public 

record. This Court retains and shall have continuing jurisdiction over the Parties and recipients of the 

Protected Matters for enforcement of the provisions of this Protective Order following termination 

of this Action.

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32. Nothing in this order will be construed to limit in any way any Party’s use of its own

containing information based on such Protected Matters, including all hard copy print of the 

Source Code Material, except that counsel for each Party may retain one hard copy and one 

electronic copy (excluding back-up copies maintained on storage systems in the regular course of 

business) of (i) its correspondence file of this case; (ii) its pleadings file, including all briefs, 

memoranda, affidavits, supporting materials, and all papers served on the Party; (iii) any briefs and 

appendices on appeal; (iv) all legal research memoranda, expert communications, work product or 

report, and other work product; (v) its file of deposition transcripts and accompanying exhibits; 

and (vi) its file of hearing and trial transcripts and accompanying exhibits. 

28. Nothing in the preceding paragraph requires destruction of data on outside counsel’s

back-up tapes for archival purposes. Protected Material should not be stored on back-up tapes beyond 

what is authorized in Paragraph 27. 

29. This Protective Order shall be binding upon the Parties and their attorneys, 

successors, executors, personal representatives, administrators, heirs, legal representatives, assigns, 

subsidiaries, divisions, employees, agents, independent contractors, or other persons or organizations 

over which they have control. The terms of this Protective Order shall survive the final termination 

of this action to the extent that any Protected Matters are not or do not become known to the public (or to 

the extent that any Protected Matters have become known to the public due to a violation of this 

Protective Order). This Court shall retain jurisdiction over this action for the purpose of enforcing this 

Protective Order. 

Miscellaneous

30. If any Party violates the terms of this Protective Order, the Party violating this 

Order shall be subject to sanctions, or any other remedies as appropriate, as ordered by the Court. 

31. Nothing in this Protective Order imposes an affirmative obligation on a Party to make

discovery of any particular document, data, or other information. 

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ORDERED this day of October __, 2020.

ALAN D ALBRIGHT 

UNITED STATES DISTRICT JUDGE

Protected Matters nor will it affect any Party’s subsequent waiver of its own prior designation with 

respect to its own Protected Matters. 

33. Nothing in this Protective Order shall bar or otherwise restrict any attorney 

herein from rendering advice to his client with respect to this Action and, in the course thereof, 

referring to or relying upon his examination of Protected Matters produced by another Party or a 

Non-Party; provided, however, that in rendering such advice and in otherwise communicating 

with his client, the attorney shall not make specific disclosure of any item of the Protected 

Matters that such person is prohibited from seeing. 

29th

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