DEFENDANT INTEL CORPORATION’S MOTION TO COMPEL AND 

MEMORANDUM IN SUPPORT THEREOF

Renée E. Rothauge, OSB #903712 

ReneeRothauge@markowitzherbold.com 

MARKOWITZ HERBOLD PC 

Suite 3000, Pacwest Center 

1211 SW Fifth Avenue 

Portland, OR 97204-3730 

Telephone: (503) 295-3085 

Fax: (503) 323-9105 

Michael J. Summersgill (pro hac vice) 

Jordan L. Hirsch (pro hac vice) 

Sean K. Thompson (pro hac vice) 

WILMERHALE LLP 

60 State Street 

Boston, MA 02109 

(617) 526-6000 

Grant K. Rowan (pro hac vice) 

WILMERHALE LLP 

1875 Pennsylvania Avenue, NW 

Washington, DC 20006 

(202) 663-6000 

Arthur W. Coviello (pro hac vice) 

WILMERHALE LLP 

950 Page Mill Road 

Palo Alto, CA 94304 

(650) 663-6000 

Attorneys for Defendant Intel Corporation 

IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF OREGON 

PORTLAND DIVISION 

MEMORY INTEGRITY, LLC, 

Plaintiff,

 v. 

INTEL CORPORATION, 

Defendant.

 Case No.: 3:15-cv-00262-SI 

Defendant Intel Corporation’s 

MOTION TO COMPEL AND 

MEMORANDUM IN SUPPORT THEREOF 

Pursuant to Fed. R. Civ. P. 37(a) and 

LR 37-1 

REQUEST FOR ORAL ARGUMENT 

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MEMORANDUM IN SUPPORT THEREOF 

TABLE OF CONTENTS 

Pages 

LR 7-1 COMPLIANCE 

MOTION 

MEMORANDUM IN SUPPORT OF MOTION TO COMPEL .....................................................1

I. INTRODUCTION ..................................................................................................................1

II. BACKGROUND ....................................................................................................................2

A. MI Asserts That Intel Microprocessors Infringe 110 Claims Of Five Patents. ................2

B. Intel Produced Substantial Discovery Regarding Its Products. ........................................3

III. MI SHOULD BE COMPELLED TO PROVIDE CORPORATE TESTIMONY. .................3

A. MI Refuses To Provide Corporate Testimony On Multiple Topics. ................................3

B. The Noticed Rule 30(b)(6)Topics Are Relevant. ..............................................................4

C. MI Has No Basis To Refuse To Produce A Witness On The Noticed Topics. ................5

IV. MI SHOULD BE COMPELLED TO PRODUCE RELEVANT DISCOVERY ...................7

A. MI Failed To Provide Discovery For Its Purchase And Attempted Licensing Of The 

Asserted Patents. ...............................................................................................................7

B. MI Has No Basis For Refusing To Produce The Requested Discovery. ..........................8

V. MI SHOULD BE HELD TO ITS INFRINGEMENT CONTENTIONS OR 

COMPELLED TO PROVIDE COMPLETE INFRINGEMENT CONTENTIONS. .............9

VI. CONCLUSION .....................................................................................................................10

 LR 7-2(b)(2) COMPLIANCE 

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TABLE OF AUTHORITIES 

FEDERAL CASES

AMP, Inc. v. Molex, Inc., 

1985 WL 2284 (N.D. Ill. Aug. 9, 1985) ....................................................................................5 

Bryant v. Mattel, Inc., 

2007 WL 5430885 (C.D. Cal. July 2, 2007) ..............................................................................5 

Diagnostics Sys. Corp. v. Symantec Corp., 

2008 WL 9396387 (C.D. Cal. Aug. 12, 2008) .........................................................................10 

Ecrix Corp. v. Exabyte Corp., 

95 F. Supp. 2d 1155 (D. Colo. 2000) .....................................................................................4, 6 

Fresenius Med. Care Holding, Inc. v. Baster Int’l, Inc., 

224 F.R.D. 644 (N.D. Cal. 2004) ...............................................................................................9 

In re MSTG, Inc., 

675 F.3d 1337 (Fed. Cir. 2012)..................................................................................................7 

IRIS Corp. v. United States, 

84 Fed. Cl. 489 (Fed. Cl. 2008) .................................................................................................7 

Oracle Am., Inc. v. Google, Inc., 

2012 WL 877125 (N.D. Cal. Mar. 15, 2012) .............................................................................9 

O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 

467 F.3d 1355 (Fed. Cir. 2006)................................................................................................10 

Phoenix Soln’s, Inc. v. Wells Fargo Bank, 

254 F.R.D. 568 (N.D. Cal. 2008) ...............................................................................................7 

Smith v. General Mills, Inc., 

2006 WL 7276959 (S.D. Ohio Apr. 13, 2006) ..........................................................................5 

Thought, Inc. v. Oracle Corp., 

2014 WL 3940294 (N.D. Cal. Aug. 11, 2014) ..........................................................................9 

United States v. Taylor, 

166 F.R.D. 356 (M.D.N.C. 1996) ..............................................................................................6 

RULES

Federal Rule of Civil Procedure 30 .....................................................................................1, 3, 5, 6 

Federal Rule of Evidence 408 ......................................................................................................7, 9 

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DEFENDANT INTEL CORPORATION’S MOTION TO COMPEL AND 

MEMORANDUM IN SUPPORT THEREOF

LR 7-1 COMPLIANCE 

Pursuant to LR 7-1, the parties made a good faith effort by telephone conference to 

resolve these disputes and have been unable to do so.

MOTION

Pursuant to Federal Rule of Civil Procedure 37 and LR 37-1, Defendant Intel Corporation 

(“Intel”) respectfully moves for an order (1) compelling Plaintiff Memory Integrity, LLC (“MI”) 

to immediately produce a corporate witness on Intel’s Rule 30(b)(6) Topics 8, 9, 11, 12, 14, 16, 

18, 19-26, 28, 29, 32 (Ex.1 1 [Rule 30(b)(6) Notice]); (2) compelling MI to supplement its 

document production and interrogatory responses—specifically, Interrogatory No. 8 (Ex. 2 

[Interrogatories]) and Request for Production (“RFP”) Nos. 16, 45-46 (Ex. 3 [RFPs])—regarding 

MI’s purchase and attempted licensing of the asserted patents; and (3) preclude MI from relying 

on any alleged evidence or infringement theory that it has not provided in its infringement 

contentions or require MI to immediately provide infringement contentions for three generations 

of accused Intel microprocessors (code named Westmere, Ivy Bridge, and Broadwell) for which 

it has refused to provide specific contentions. 

 

1

 “Ex.” refers to the exhibits attached to the Declaration of Arthur W. Coviello in Support of 

Defendant Intel Corporation’s Motion to Compel. 

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MEMORANDUM IN SUPPORT OF MOTION TO COMPEL 

I. INTRODUCTION 

MI alleges that Intel’s microprocessors infringe 110 claims of five asserted patents. Yet 

in the nine months since discovery began, MI has refused to provide discovery on many of the 

most basic topics. MI—whose only employee is a patent lawyer and whose only business is 

asserting patents—attempts to justify this refusal by asserting that the relevant information 

regarding its claims is in the hands of its lawyers and experts. MI’s refusal is improper. 

First, only one week before the scheduled Rule 30(b)(6) deposition of MI’s corporate 

representative, and over six weeks after Intel served its deposition notice, MI served its 

objections and informed Intel that it was refusing to designate a witness to testify regarding 18 of 

the 33 noticed topics. MI refused to produce a witness regarding: (i) MI’s knowledge of the 

subject matter, conception, and reduction to practice of the asserted patents; (ii) the basis for 

MI’s infringement allegations; (iii) the prior art to the asserted patents; (iv) MI’s efforts to 

license the asserted patents; and (v) the basis for MI’s damages claims. These issues are central 

to this case and are routinely the subject of discovery. 

Second, MI refused to produce any documents or substantively respond to interrogatories 

regarding multiple relevant topics, including MI’s negotiations to purchase the asserted patents 

from the prior owner (Sanmina Corporation) and MI’s subsequent attempts to license the patents. 

Third, MI refused to provide infringement contentions for half of the accused products in 

this case (i.e., Intel’s Westmere, Ivy Bridge, and Broadwell microprocessors). 

Accordingly, Intel requests that the Court: order MI to immediately produce a corporate 

witness on all noticed Rule 30(b)(6) deposition topics; order MI to supplement its document 

production and interrogatory responses to address the noted deficiencies; and preclude MI from 

presenting any infringement theories that are not included in its current contentions or require it 

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to immediately provide contentions on the remaining accused microprocessors. 

II. BACKGROUND 

A. MI Asserts That Intel Microprocessors Infringe 110 Claims Of Five Patents. 

Intel designs, manufactures, and sells microprocessors (i.e., the brains of computers). 

Intel invented the microprocessor in 1971 and, through a massive commitment to research and 

development, has consistently developed the fastest, most powerful, and most efficient 

microprocessors since. The accused microprocessors are the product of that effort. 

According to MI, its business is “licensing rights to its intellectual property.” (See Dkt. 

17-1 [Decl. of Jennifer Towle] at ¶ 3.) MI bought the asserted patents from Sanmina 

Corporation (“Sanmina”) in June 2013. (See Ex. 4 [Purchase Agreement] at 16.)1

 MI does not 

purport to practice the patents—it sells no products.2 Instead, in November 2013, only five 

months after buying the patents, and with no warning, MI filed this case against Intel (and at 

least 20 cases against other defendants (Dkt. 90-4)). 

MI accuses Intel microprocessors sold between 2008 and the present of infringing 110 

claims of the five asserted patents. (See Ex.5 [Infringement Contentions] at 2.) The asserted 

patents are directed to particular features related to “cache coherency”—i.e., the process of 

ensuring that data stored in multiple cache memories remains consistent in a multiple 

microprocessor system. (See, e.g., Ex. 6 [’409 patent] at 1:22-26 (“[T]he present invention 

provides techniques for improving data access efficiency while maintaining cache coherency in a 

multiple processor system having a multiple cluster architecture.”).) 

 

1

 The asserted patents are U.S. Patent Nos. 7,107,409 (“’409 patent”), 7,103,636 (“’636 patent”), 

7,296,121 (“’121 patent”), 8,572,206 (“’206 patent”), and 8,898,254 (“’254 patent”). 

2

 MI is what courts call a “non-practicing entity.” 

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B. Intel Produced Substantial Discovery Regarding Its Products. 

Fact discovery in this case began in September 2014. (Dkt. 20.) Since then, Intel has 

provided substantial discovery to MI. Intel produced over 900,000 pages of technical documents 

describing the accused products; it made source code for the accused products available for 

review; and it provided detailed responses to MI’s interrogatories that, among other things, 

specifically identified documents describing the accused features of the accused products and 

Intel’s marketing materials. (See Coviello Decl. ¶ 2.) MI, in contrast, and as set forth below, has 

refused to provide even the most basic discovery in response to Intel’s discovery requests. 

III. MI SHOULD BE COMPELLED TO PROVIDE CORPORATE TESTIMONY.

A. MI Refuses To Provide Corporate Testimony On Multiple Topics. 

Intel served its Rule 30(b)(6) Notice on April 27, 2015. (Ex. 1.) After multiple requests 

from Intel, MI agreed to meet and confer regarding the deposition on May 15, 2015. During the 

meet and confer, MI’s counsel agreed to produce a witness on June 17, 2015 in Georgetown, 

Texas, but stated that MI had not yet decided whether it would designate a witness on all of the 

noticed topics. Intel requested that MI “let us know immediately if there are any topics in Intel’s 

April 27, 2015 Rule 30(b)(6) Deposition Notice to Memory Integrity on which you are refusing 

to designate a witness so that we can raise the issue with the Court.” (Ex. 7 [5/15 Email].) MI 

did not respond. Intel asked again on June 5 (Ex. 8 [6/5 Email]), but again MI did not respond. 

Accordingly Intel booked travel, a hotel, and a court reporter for the deposition. 

Then, on June 9, 2015 at 9:02 pm EDT—over six weeks after Intel served its deposition 

notice and only a week before the deposition—MI served objections in which it refused to make 

a witness available on 18 of the 33 noticed topics. (Ex. 9 [6/9 Letter].) MI refused to designate a 

witness on the subject matter, conception, and reduction to practice of the asserted patents (i.e., 

Topic 8), the basis for MI’s infringement allegations (i.e., Topics 11, 12, 14), the prior art to the 

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asserted patents (i.e., Topics 9, 16, 18), MI’s efforts to license the asserted patents (i.e., Topics 

29, 32), and the factual bases for MI’s damages claims against Intel (i.e., Topics 19-26, 28). (See

Ex. 1 [Rule 30(b)(6) Notice]; Ex. 9 [6/9 Letter].)3 

B. The Noticed Rule 30(b)(6)Topics Are Relevant. 

The 18 topics for which MI refused to designate a witness are indisputably relevant: 

 Topic 8 is directed to any evidence in MI’s possession about “the subject matter, 

conception, [and] reduction to practice” of its patents. (Ex. 1 [Notice] at 7.) 

 Topics 11, 12, and 14 are directed to any evidence in MI’s possession providing “factual 

bases supporting ... MI’s allegations that Intel infringes the Asserted Patents.” (Id. at 7-8.) 

 Topics 9, 16, and 18 are directed to any evidence in MI’s possession regarding the “Prior 

Art to the Asserted Patents,” including: (i) any relevant prior art in MI’s possession, 

(ii) any alleged “novelty or ... benefit of the Asserted Patents over the Prior Art,” and 

(iii) any evidence that the patents were ever licensed, praised, or used in products. (Id.) 

 Topics 29 and 32 are directed to any evidence in MI’s possession about its “efforts to 

license the Asserted Patents.” (Id. at 9-10.) 

 Topics 19-26 and 28 are directed to any evidence in MI’s possession regarding MI’s 

damages claims against Intel, including: (i) any alleged “harm” to MI, (ii) any alleged 

“value of the alleged inventions,” and (iii) any “license agreements that MI believes are 

comparable ... to a license covering the Asserted Patents.” (Id. at 8-9.) 

These topics—relating to the origin and subject matter of the patents, the facts underlying 

MI’s allegations that the patents are infringed, the prior art, and the facts underlying any alleged 

damages—are central to MI’s allegations and are routinely the subject of discovery in patent 

cases. See, e.g., Ecrix Corp. v. Exabyte Corp., 95 F. Supp. 2d 1155, 1158-59 (D. Colo. 2000) 

(compelling 30(b)(6) testimony because the “information sought by Ecrix relates to facts which 

Exabyte has in its possession which led it to make its threats of patent infringement... Such 

 

3

 MI also informed Intel that, should Intel take the deposition of MI on June 17, 2015 on the 15 

approved topics, MI would not make its corporate witness available again. (Ex. 9 [6/9 Letter] at 

1.) Intel could not proceed on June 17 in light of this threatened penalty. (MI later stated that it 

would make its corporate witness available for a second time if so ordered by the Court—but, of 

course, it would be required to do so if ordered. (Ex. 16 [6/12 Email].)) 

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information is relevant and discoverable...”). Indeed, MI does not contest their relevance here. 

C. MI Has No Basis To Refuse To Produce A Witness On The Noticed Topics. 

MI’s arguments for refusing to provide a witness on 18 of Intel’s 33 noticed deposition 

topics are without merit. 

First, MI argues that several topics—i.e., the conception and reduction to practice of the 

patents, the prior art, and the bases for MI’s damages claims—are premature. (Ex. 9 [6/9 Letter] 

at 2, 4-5.) This is wrong. The case was filed over a year-and-a-half ago and fact discovery has 

been underway for nine months. There is no reason that Intel should be required to wait further 

to receive discovery on these topics. At a minimum, Intel is entitled to depose MI regarding its 

lack of knowledge on these issues. See AMP Inc. v. Molex Inc., 1985 WL 2284, at *1 (N.D. Ill. 

Aug. 9, 1985) (“If no agent can testify competently to the matters involved in a lawsuit filed by a 

corporation, the implication is that the corporation had no basis for filing that lawsuit.”). 

Second, MI argues that several topics—including the subject matter, conception, and 

reduction to practice of the patents, the prior art, the basis for MI’s infringement allegations, and 

the basis for MI’s damages claims—are solely the subject of expert testimony. (Ex. 9 [6/9 

Letter] at 2-5.) This is wrong. While MI may produce an expert on all of these topics, Intel is 

entitled to discover any facts in MI’s possession underlying its assertions regarding these topics. 

See Bryant v. Mattel, Inc., 2007 WL 5430885, at *3 (C.D. Cal. July 2, 2007) (just because certain 

subject matter “is generally the subject of expert testimony at trial ... does not render it an 

improper subject for a Rule 30(b)(6) [deposition]”); Smith v. Gen. Mills, Inc., 2006 WL 7276959, 

at *3 (S.D. Ohio Apr. 13, 2006) (“[N]umerous courts have ruled that a Rule 30(b)(6) notice of 

deposition that seeks the factual bases for another party’s claims or defenses is proper.”).4

 

 

4

 MI objects in particular to the topics directed to its infringement allegations as calling for 

expert testimony. (Ex. 9 [6/9 Letter] at 3.) MI either should be required to provide a witness 

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Third, MI argues that several topics—including the basis for MI’s infringement 

allegations, the prior art, and the basis for MI’s damages claims—are not appropriate topics for 

Rule 30(b)(6) testimony because they are allegedly based on Intel confidential information to 

which their designee has no access (e.g., confidential Intel technical documents regarding the 

accused functionality). (Ex. 9 [6/9 Letter] at 2-5.) This is wrong. As an initial matter, Intel is 

entitled to discover any facts in MI’s possession that MI contends support its contentions or that 

MI has no such facts. Indeed, MI was required to have a factual basis for its claims before filing 

this case. In any event, Section 7(b)(iii) of the Protective Order (Dkt. 92) permits MI to name a 

representative to review confidential information under the Protective Order. MI has only one 

employee—its corporate designee, Brent Farney. MI can name Mr. Farney as its representative 

and, thus, cannot hide behind confidentiality as an excuse for refusing to provide discovery. See

Ecrix, 95 F. Supp. 2d at 1159 (requiring 30(b)(6) testimony where a protective order allowed the 

defendant to file a motion to permit a representative to review confidential information). 

Fourth, MI argues that several topics—e.g., the basis for MI’s infringement allegations, 

the prior art, and MI’s efforts to license the patents—are not discoverable because they seek 

privileged information. (Ex. 9 [6/9 Letter] at 2-6.) While MI’s communications with its counsel 

may be privileged, Intel is entitled to discover non-privileged facts in MI’s possession—e.g., the 

factual basis for its infringement contentions, prior art, and its attempts to license the patents. 

See Ecrix, 95 F. Supp. 2d at 1158 (compelling 30(b)(6) testimony on “information in Exabyte’s 

 

regarding the factual basis for its infringement allegations or, at a minimum, to confirm: (i) that 

its March 16, 2015 Infringement Contentions are a complete statement of its infringement 

theories and; (ii) that the contentions disclose all of the facts in its possession that purport to 

support those infringement theories. See United States v. Taylor, 166 F.R.D. 356, 362 

(M.D.N.C. 1996) (“[I]f a party states it has no knowledge or position as to a set of alleged facts 

or area of inquiry at a Rule 30(b)(6) deposition, it cannot argue for a contrary position at trial 

without introducing evidence explaining the reasons for the change.”). 

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possession on which Exabyte based and bases its assertions that Ecrix has infringed”); IRIS 

Corp. v. United States, 84 Fed. Cl. 489, 493-94 (Fed. Cl. 2008) (“It is appropriate for corporate 

representatives of the patent owner to be asked about IRIS’ knowledge of potential prior art...”); 

Phoenix Solutions, Inc. v. Wells Fargo Bank, N.A., 254 F.R.D. 568, 582 (N.D. Cal. 2008) 

(defendant entitled to seek discovery regarding the plaintiff’s attempts to license the patents). 

Finally, MI argues that Topic 29—which calls for testimony regarding “MI’s efforts to 

license the Asserted Patents”—is protected from discovery under Federal Rule of Evidence 408. 

(Ex. 9 [6/9 Letter] at 5-6.) This is also wrong. As an initial matter, the topic calls for licensing 

efforts generally, not just those made in the context of settlement negotiations. In any event, 

Rule 408 concerns the admissibility—not the discoverability—of settlement negotiations. The 

Federal Circuit has expressly held that such negotiations are discoverable because they are 

relevant to reasonable royalty damages calculations. See In re MSTG, Inc., 675 F.3d 1337, 1348 

(Fed. Cir. 2012) (“[W]e hold that settlement negotiations related to reasonable royalties and 

damage calculations are not protected by a settlement negotiation privilege.”). MI’s attempts to 

license the patents are directly relevant to the issues of damages (e.g., the value of the patents 

and the reasonable royalty) and liability (e.g., MI may have taken positions in such negotiations 

regarding the scope of the patents) and should therefore be subject to discovery. See id.; 

Phoenix, 254 F.R.D. at 582 (“[T]hird-party negotiations could help [defendant] ascertain the 

extent of its liability...”). 

IV. MI SHOULD BE COMPELLED TO PRODUCE RELEVANT DISCOVERY

A. MI Failed To Provide Discovery For Its Purchase And Attempted Licensing 

Of The Asserted Patents. 

Intel served its first set of interrogatories (Ex. 2) and its first set of requests for 

production (Ex. 3) on October 8, 2014. For more than seven months, MI has refused to provide 

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meaningful responses to many of Intel’s discovery requests. Intel sent letters regarding these 

deficiencies—on December 4, 2014 (Ex. 10), January 9, 2015 (Ex. 11), and April 22, 2015 (Ex. 

12)—and attempted to resolve the parties’ disputes during a meet-and-confer (Coviello Decl. 

¶ 3). But MI continues to refuse to provide discovery on relevant topics. 

MI refuses to provide substantive discovery regarding the negotiations relating to MI’s 

purchase of the asserted patents. (See Ex. 2 [Interrogatory 8]; Ex. 3 [RFP 46].) Instead, MI 

simply asserts that MI acquired the patents “pursuant to the June 4, 2013 assignment from 

Sanmina Corporation” after an eight-month due diligence period conducted by Farney Daniels 

and proffers the parties’ purchase agreements and amendments. (See Ex. 13 [2d Supp. Resp.] at 

26-27.) MI will not produce any details regarding the negotiations, such as assertions by MI or 

Sanmina regarding the scope or value of the patents, or any other proposed payment terms. 

MI also refuses to provide substantive discovery regarding its attempts to license the 

asserted patents. (See Ex. 2 [Interrogatory 8]; Ex. 3 [RFPs 8, 16, 45].) Instead, MI states only 

that “MI has had settlement discussions with some but not all of the defendants” in the pending 

and dismissed lawsuits. (Ex. 14 [6/18 Letter].) Besides listing every case in which it asserted its 

patents (see Ex. 13 at 25-26]), MI refuses to provide any information about those discussions.5

B. MI Has No Basis For Refusing To Produce The Requested Discovery. 

First, MI should be compelled to provide documents and substantive interrogatory 

responses regarding its negotiations to purchase the patents from Sanmina. MI’s negotiations to 

 

5

 MI also has failed to produce discovery on many other plainly relevant topics—such as the 

conception and reduction to practice of the subject matter claimed in the asserted patents (Ex. 3 

[RFPs 24-28]). Indeed, seven months after Intel served these document requests and one month 

after Intel’s invalidity contentions were due, MI agreed to produce documents relating to the 

conception and reduction to practice of the asserted patents “shortly” but still has not done so. 

(Ex. 14 [6/18 Letter].) Intel, however, brings this motion on only a subset of the disputed issues 

in hopes that the Court’s decision will guide the parties with respect to any remaining disputes. 

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purchase the patents are relevant to, among other things, the value of the asserted patents. See, 

e.g., Oracle Am., Inc. v. Google Inc., 2012 WL 877125, at *3-4 (N.D. Cal. Mar. 15, 2012) 

(evidence regarding how patents-in-suit were valued by patentee was relevant to the alleged 

reasonable royalty rate). Moreover, negotiation documents exchanged with third-party Sanmina 

in arm’s-length business negotiations are neither privileged nor protected work product. See 

Fresenius Med. Care Holding, Inc. v. Baxter Int’l, Inc., 224 F.R.D. 644, 654 n.3 (N.D. Cal. 

2004) (finding no privilege protection for arm’s-length negotiations to purchase patents); 

Thought, Inc. v. Oracle Corp., 2014 WL 3940294, at *3 (N.D. Cal. Aug. 11, 2014) (granting 

motion to compel communications between non-practicing entities regarding their plans to assert 

patents because the communications were for business, not litigation, purposes). 

Second, MI should be compelled to produce documents and respond to Intel’s 

interrogatories regarding MI’s attempts to license the asserted patents. As discussed above, MI 

is incorrect that these topics are not discoverable under Rule 408. See supra Part III.C. 

V. MI SHOULD BE HELD TO ITS INFRINGEMENT CONTENTIONS OR

COMPELLED TO PROVIDE COMPLETE INFRINGEMENT CONTENTIONS.

MI accuses six generations of Intel microprocessors from 2008 through the present. 

(Ex. 5 [Infringement Contentions] at 4-6.) These generations have six Intel code names: 

Nehalem, Westmere, Sandy Bridge, Ivy Bridge, Haswell, and Broadwell. Each generation 

includes different microprocessors with different capabilities and characteristics. Despite MI’s 

broad accusations, it does not provide any contentions—i.e., charts showing how the products 

allegedly meet the asserted claims—for half of the accused microprocessor generations, namely: 

Westmere, Ivy Bridge, and Broadwell. Instead, MI asserts that each of these generations is the 

same as the prior generation—Nehalem, Sandy Bridge, and Haswell, respectively—and thus 

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infringes for the same reasons.6

 (Ex. 5 at 5-6; Ex. 15 [5/12 Letter] at 2.) Intel explained to MI 

that they are not identical to the prior generations and requested that MI provide contentions for 

those products. (Ex. 15 [4/22 Letter]; Coviello Decl. ¶ 3.) MI refuses. 

MI was required to provide its complete infringement contentions on March 16, 2015. 

(Dkt. 47.) MI should be held to those contentions—and its reliance on the prior generation 

processors to argue alleged infringement for the Westmere, Ivy Bridge, and Broadwell 

products—or should be required to immediately provide specific contentions for the additional 

products. See O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 

2006) (noting that infringement contentions are designed to “require parties to crystallize their 

theories of the case early in the litigation so as to prevent the ‘shifting sands’ approach” to the 

litigation). 

VI. CONCLUSION 

Having accused multiple Intel products of infringing five patents, MI should not be 

permitted to now shield itself from Intel’s legitimate discovery by asserting that the relevant 

information regarding its claims is solely in the hands of its lawyers and paid experts. See

Diagnostics Sys. Corp. v. Symantec Corp., 2008 WL 9396387, at *6 (C.D. Cal. Aug. 12, 2008) 

(rejecting non-practicing entity’s attempt to shield itself from substantive discovery of 

documents and underlying facts “simply because [its employee] is a lawyer”), aff’d, 328 F. 

App’x 621 (Fed. Cir. 2008). Intel therefore requests that the Court grant its motion to compel. 

 

6

 MI points to an Intel webpage describing Intel’s manufacturing model—under which two 

succeeding Intel product generations generally have similar designs, but the latter generation will 

be much smaller. (Ex. 5 [MI Contentions] at 5-6.) But MI provides no support for its apparent 

assertion that these succeeding generations have an identical design. 

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DATED this 24th day of June 2015. 

MARKOWITZ HERBOLD PC 

By: /s/ Renée E. Rothauge 

 Renée E. Rothauge 

OSB #903712 

(503) 295-3085 

WILMERHALE LLP 

Michael J. Summersgill (pro hac vice) 

Jordan L. Hirsch (pro hac vice) 

Grant K. Rowan (pro hac vice) 

Sean K. Thompson (pro hac vice) 

Arthur W. Coviello (pro hac vice) 

Attorneys for Defendant Intel Corporation 

Case 3:15-cv-00262-SI Document 95 Filed 06/24/15 Page 15 of 17
PAGE 12 – DEFENDANT INTEL CORPORATION’S MOTION TO COMPEL AND 

MEMORANDUM IN SUPPORT THEREOF 

LR 7-2(b)(2) COMPLIANCE 

I certify that this brief complies with the applicable word-count limitation under LR 7-

2(b), 26-3(b), 54-1(c), or 54-3(e) because it is less than ten pages. 

DATED this 24th day of June, 2015. 

/s/ Renée E. Rothauge

Renée E. Rothauge (OSB #903712) 

Attorney for Intel Corporation 

Case 3:15-cv-00262-SI Document 95 Filed 06/24/15 Page 16 of 17
CERTIFICATE OF SERVICE 

ATTORNEY CERTIFICATE OF SERVICE 

 I hereby certify that on June 24, 2015, I have made service of the foregoing 

DEFENDANT INTEL CORPORATION’S MOTION TO COMPEL AND 

MEMORANDUM IN SUPPORT THEREOF on the party/ies listed below in the manner 

indicated: 

Richard C. Weinblatt 

Stamoulis & Weinblatt LLC 

Two Fox Point Centre 

6 Denny Road, Suite 307 

Wilmington, DE 19809 

Stamatios Stamoulis 

Stamoulis & Weinblatt LLC 

Two Fox Point Centre 

6 Denny Road, Suite 307 

Wilmington, DE 19809 

Paul Saindon 

Morris, Nichols, Arsht & Tunnell 

P.O. Box 1347 

Wilmington DE 19899-1347 

Jack B. Blumenfeld 

Morris, Nichols, Arsht & Tunnell 

P.O. Box 1347 

Wilmington DE 19899 

U.S. Mail

 Facsimile 

 Hand Delivery 

 Overnight Courier 

 Email 

 Electronically via USDC CM/ECF system 

 U.S. Mail 

 Facsimile 

 Hand Delivery 

 Overnight Courier 

 Email 

 Electronically via USDC CM/ECF system 

 U.S. Mail 

 Facsimile 

 Hand Delivery 

 Overnight Courier 

 Email 

 Electronically via USDC CM/ECF system 

 U.S. Mail 

 Facsimile 

 Hand Delivery 

 Overnight Courier 

 Email 

 Electronically via USDC CM/ECF system 

 DATED this 24th day of June, 2015. 

 /s/ Renée E. Rothauge 

 Renée E. Rothauge, OSB #903712 

 Attorney for Defendant Intel Corporation 

Case 3:15-cv-00262-SI Document 95 Filed 06/24/15 Page 17 of 17