PAGE 1 – OPINION AND ORDER 

IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF OREGON 

MEMORY INTEGRITY, LLC, 

 Plaintiff, 

 v. 

INTEL CORPORATION, 

 Defendant. 

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

OPINION AND ORDER 

John Mansfield, MANSFIELDLAW, 121 SW Morrison Avenue, Suite 400, Portland, OR 97204; 

Jonathan Baker, Michael Saunders, and Gurtej Singh, FARNEY DANIELS, PC, 411 Borel Avenue, 

Suite 350, San Mateo, CA 94402. Of Attorneys for Plaintiff. 

Renée E. Rothauge, MARKOWITZ HERBOLD, PC, 1211 SW Fifth Avenue, Suite 3000, Portland, 

OR 97204; Michael J. Summersgill, Jordan L. Hirsch, and Sarah Beigbeder Petty, WILMERHALE,

LLP, 60 State Street, Boston, MA 02109. Of Attorneys for Defendant. 

Michael H. Simon, District Judge.

In 2005, two sophisticated companies—Intel Corporation (“Intel”) and Sanmina-SCI 

Corporation (“Sanmina”)—entered into an agreement in which Intel agreed to disclose to 

Sanmina highly confidential information that Sanmina requested as part of its attempt to develop 

potentially lucrative technology that would be compatible with Intel products. In return for this 

information, Sanmina agreed never to sue Intel for patent infringement based on any of Intel’s 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 1 of 35
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products that included any of the disclosed technologies. During Sanmina’s development efforts, 

the U.S. Patent and Trademark Office granted to Sanmina several patents, but Sanmina failed to 

create any marketable products. Ultimately, Sanmina ended its research using Intel’s disclosed 

information and sold its patents to Memory Integrity, LLC (“Memory Integrity”). In this lawsuit, 

Memory Integrity seeks to hold Intel liable for patent infringement, which Intel argues is 

prohibited by the covenant not to sue that Memory Integrity expressly assumed when it 

purchased Sanmina’s patents. 

Memory Integrity asserts infringement claims against Intel under five patents: U.S. Patent 

Nos. 7,103,636 (the “’636 patent”), 7,107,409 (the “’409 patent”), 7,296,121 (the “’121 patent”), 

8,572, 206 (the “’206 patent”), and 8,898,254 (the “’254 patent”). These patents are all directed 

toward maintaining cache coherence in multiprocessor computer systems.1

 Based on the 

covenant not to sue that Intel negotiated with Memory Integrity’s predecessor in interest, 

Sanmina, Intel asks the Court to grant summary judgment in favor of Intel on: (1) all Memory 

Integrity’s infringement claims; (2) Intel’s counterclaim for declaratory judgment; and (3) Intel’s 

seventh affirmative defense. For the reasons discussed below, the Court grants Intel’s motion. 

 1

 Cache coherence problems arise in multiprocessor computer systems in which the 

processors share a main memory. The main memory stores data needed or generated by the 

system, but each individual processor also uses its own smaller, faster “cache” memory to store 

copies of data upon which the processor regularly operates. When the data is stored in the 

processor’s cache, the processor may change the data. The data is then saved back to the main 

memory after operations conclude. In the interim, changes to data in an individual cache may 

cause the master copy in the main memory to become “stale” or out-of-date, and multiple 

processors may be using different versions of the same data, leading to cache incoherence. 

Methods of maintaining cache coherence, such as those described by the patents-in-suit, ensure 

that processors have access to the most up-to-date copies of data and that the system does not 

generate inconsistent versions of data. See Memory Integrity, LLC v. Intel Corp., 

2016 WL 1122718, at *4 (D. Or. Mar. 22, 2016); Comput. Cache Coherency Corp. v. Via Techs., 

Inc., 2008 WL 4369770, at *2 (N.D. Cal. Sept. 23, 2008). 

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STANDARDS 

A party is entitled to summary judgment if the “movant shows that there is no genuine 

dispute as to any material fact and the movant is entitled to judgment as a matter of law.” 

Fed. R. Civ. P. 56(a). The moving party has the burden of establishing the absence of a genuine 

dispute of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving party 

will bear the burden of proof at trial, “the movant must affirmatively demonstrate that no 

reasonable trier of fact could find other than for the moving party.” Soremekun v. Thrifty Payless, 

Inc., 509 F.3d 978, 984 (9th Cir. 2007). In patent litigation, contractual defenses to patent 

infringement—such as a covenant not to sue or an implied license—are affirmative defenses that 

the defendant must prove. See Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 1461 (Fed. Cir. 1990), 

overruled on other grounds by A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020 

(Fed. Cir. 1992) (“And where the moving party has the burden of proof on a claim or defense 

raised in a summary judgment motion, it must show that the undisputed facts establish every 

element of the claim or defense.”); Met-Coil Sys. Corp. v. Korners Unlimited, Inc., 803 F.2d 684, 

687 (Fed. Cir. 1986) (“As the alleged infringer, [the defendant] has the burden of showing the 

establishment of an implied license.”). 

The court must view the evidence in the light most favorable to the non-movant and draw 

all reasonable inferences in the non-movant’s favor. Clicks Billiards Inc. v. Sixshooters Inc., 251 

F.3d 1252, 1257 (9th Cir. 2001). Although “[c]redibility determinations, the weighing of the 

evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of 

a judge . . . ruling on a motion for summary judgment,” the “mere existence of a scintilla of 

evidence in support of the plaintiff’s position [is] insufficient . . . .” Anderson v. Liberty Lobby, 

Inc., 477 U.S. 242, 252, 255 (1986). “Where the record taken as a whole could not lead a rational 

trier of fact to find for the non-moving party, there is no genuine issue for trial.” Matsushita Elec. 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 3 of 35
PAGE 4 – OPINION AND ORDER 

Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citation and quotation marks 

omitted). 

BACKGROUND2

A. Sanmina’s “Project Isis” and the Covenant Not to Sue 

In the mid-2000s, Sanmina and one it its subsidiaries, Newisys, Inc. (“Newisys”) tried to 

develop a “node controller” chip capable of connecting multiple Intel processors together in a 

multiprocessor computer system.3 Sanmina called this development effort “Project Isis.” In order 

to make the chip compatible with Intel processors, Sanmina needed detailed confidential 

information about how Intel’s processors worked. This confidential information included 

specifics about how Intel’s processors maintain cache coherence in a multiprocessor system. 

Intel agreed to provide Sanmina with the requested confidential information on the express 

condition that Sanmina sign a covenant not to sue Intel based on Intel’s use of any of the 

disclosed technology. 

Before finalizing the covenant not to sue and delivering its secret documents, Intel 

negotiated several confidentiality agreements with Sanmina. On July 30, 2003, and August 23, 

2003, Intel and Sanmina entered into two Corporate Non-Disclosure Agreements (“CNDAs”), 

which require Sanmina and its successors to maintain the confidentiality of Intel’s confidential, 

proprietary, and trade secret information. Additionally, Intel and Samina entered into a 

Restricted Use Non-Disclosure Agreement (the “RUNDA”) on August 23, 2005. The RUNDA 

 2

 Because the parties assert that this case involves highly sensitive trade secrets, the Court 

limits its discussion of facts to the information included in the parties’ redacted, publicly-filed 

briefs. In order to avoid disclosing potentially confidential information, the Court refers to Intel’s 

cache coherence technologies only in broad terms. 

3

 For ease of reference, the Court generally refers to Sanmina and Newisys collectively as 

“Sanmina.” 

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requires Sanmina and its successors to keep a record of all individuals who were given access to 

Intel’s confidential information. According to the RUNDA, Intel’s confidential information 

would: 

remain confidential until it becomes: (a) rightfully in the public 

domain other than by breach of a duty to Intel; or (b) rightfully 

received from a third party without any limitation on disclosure; or 

(c) rightfully known to Recipient without any limitation on 

disclosure prior to its receipt from Intel; or (d) independently 

developed by Recipient’s employees who have not had access to 

the Confidential Information, or guidance from those who have 

had access; or (e) generally made available to third parties by Intel 

without restriction on disclosure.4

Also on August 23, 2005, Intel and Sanmina entered into an agreement (the “IntelSanmina Agreement” or “ISA”) containing the covenant not to sue. The ISA primarily concerns 

Intel’s disclosure of “Common System Interface” or “CSI” technology.5 The ISA provides that 

Sanmina and its successors “shall not Assert6 any CSI Patent Claim against Intel” based on 

Intel’s “manufacture, use, import, offer for sale or sale of any of [Intel’s microprocessors and 

chipsets].”7

 The ISA defines “CSI Patent Rights” as any rights that Sanmina or its successors 

 4

 Dkt. 171-4 ¶ 6. The CNDAs contain similar descriptions of when Sanmina’s obligation 

of confidentiality would terminate. See Dkt. 171-2 ¶ 4; Dkt. 171-3 ¶ 4. 

5

 According to Eric Morton, the lead Sanmina architect for Project Isis, “CSI was the bus 

interface and protocol that Intel was designing in 2005/2006 for their future processors.” 

Dkt. 170-1 at 32. The ISA defines “CSI” as “an electro-mechanical point-to-point information 

path capable of carrying cache-coherence, I/O transactions, system related transactions, 

configuration management transactions, interrupts and/or other related transactions between an 

Intel microprocessor and [other components].” Dkt. 171-1 § 1.8. “CSI” was also referred to as 

“QuickPath Interconnect” or “QPI” after Intel publicly announced the processors. See Dkt. 170-1 

at 36-37; Dkt. 181-7. 

6

 The ISA defines “Assert” as “bring an action of any nature before any legal, judicial, 

arbitration, administrative, executive or other type of body or tribunal that has or claims to have 

authority to adjudicate such action in whole or in part.” Dkt. 171-1 § 1.1. 

7

 Dkt. 171-1 §§ 1.11, 2.1. 

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own or control “at any time during the Capture Period”8

 that “but for this Agreement, would be 

infringed by one or more of Intel’s Products due in whole or in part to those products’ inclusion 

or implementation of any portion of the CSI Enabling Information.”9 “CSI Enabling 

Information” is defined as “all information provided by Intel to [Sanmina] that is (a) necessary or 

useful in implementing CSI-enabled, CSI-compliant, or CSI-related technologies; and (but not 

‘or’) (b) restricted by a duty of confidentiality, however arising and including that provided 

under the RUNDA.”10 The ISA also specifies that Delaware law governs the agreement’s 

interpretation.11 

On March 3, 2006, Sanmina and Intel entered into a Restricted Secret Non-Disclosure 

Agreement (the “RS-NDA”) regarding Sanmina’s duty to maintain the confidentiality of Intel’s 

“Restricted Secret,” or “RS,” documents disclosed to Sanmina. Like the RUNDA, the RS-NDA 

provides: 

The obligations imposed by this RS-NDA shall not apply with 

respect to Restricted Secret information that is: (a) rightfully in the 

public domain other than by a breach of a duty to Intel; 

(b) rightfully received by [Sanmina] from a third party without any 

obligation of confidentiality; (c) rightfully known to [Sanmina] 

without any limitation on use or disclosure prior to its receipt from 

Intel; (d) independently developed by employees of [Sanmina]; or 

(e) generally made available to third parties by Intel without 

restriction on disclosure.12

 8

 The “Capture Period” is “any time on or prior to the tenth anniversary of the Effective 

Date” of the ISA—i.e., from August 23, 2005, to August 23, 2015. Dkt. 171-1 § 1.2. 

9

 Dkt. 171-1 § 1.10. 

10 Dkt. 171-1 § 1.9. 

11 Dkt. 171-1 § 5.1. 

12 Dkt. 171-5 at 15. 

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After Sanmina signed the ISA and the several confidentiality agreements, Intel provided 

confidential information to Sanmina specifically describing Intel’s implementation of cache 

coherence mechanisms used in Intel’s processors. Sanmina’s Project Isis team then held training 

sessions concerning Intel’s processor architecture and cache coherence protocol. Sanmina also 

held biweekly telephone calls with Intel’s engineers and received confidential RS documents 

from Intel. Intel and Sanmina each handled the RS documents with extreme care. Lead Sanmina 

architect Eric Morton testified that Intel provided personalized hard copies of the RS documents 

to the Project Isis team but did not give any Sanmina employees electronic copies of the 

documents; if the Sanmina employees wanted to view the documents electronically, they had to 

access the documents directly from Intel’s servers. Further, Sanmina tracked precisely who had 

access to Intel’s confidential documents and even housed the Project Isis team in a separate and 

secure wing at the Sanmina facilities. 

Among the RS documents provided by Intel to Sanmina were: (1) “RS – Common 

System Interface Specification, Enterprise MP Systems” (the “CSI Specification”);13 (2) “RS – 

Thurley Platform Common System Interface (CSI) Training” (the “Thurley Document”);14 and 

(3) “RS – OEM Technical Training Beckton (BMP)” (the “Beckton Document”).15 These RS 

documents disclosed specific details about Intel’s implementation of its cache coherence 

protocol. 

 13 Dkt. 170-16 (Revision 0.90); Dkt. 170-17 (Revision 0.8, Part A); Dkt. 170-18 

(Revision 0.8, Part B). 

14 Dkt. 170-15. 

15 Dkt. 170-14. 

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B. The Patents-in-Suit 

Despite Intel’s disclosure of its confidential information to Sanmina, Project Isis failed to 

yield marketable products. Sanmina ended the project in 2007. Based upon Sanmina and 

Newisys’s work on solutions to the cache coherence problem, however, the U.S. Patent and 

Trademark Office issued five patents to Sanmina, its subsidiaries, or its successor in interest. 

Newisys filed applications for the ’636, ’409, and ’121 patents on May 28, 2002, March 22, 

2002, and October 15, 2004, respectively. The U.S. Patent and Trademark Office issued the 

’636, ’409, and ’121 patents on September 5, 2006, September 12, 2006, and November 13, 

2007, respectively. Newisys assigned these three patents to Sanmina on September 28, 2008. On 

December 15, 2011, Sanmina filed an application for the ’206 patent, but on June 4, 2013, before 

the ’206 patent issued, Sanmina sold all its cache coherence patents to Memory Integrity. On 

September 9, 2013, Memory Integrity filed an application for the ’254 patent, which is a 

continuation of the ’206 patent. The U.S. Patent and Trademark Office issued the ’206 and 

’254 patents to Memory Integrity on October 29, 2013, and November 25, 2014, respectively. 

The five asserted patents share common inventors and have overlapping specifications. 

The patents all describe methods of maintaining cache coherence in the same type of 

multiprocessor system: a system of multiple processor clusters interconnected in a “point-topoint architecture.”16 The ’636 and ’409 patents detail a method known as “speculative probing.” 

A processor’s request for data in the multiprocessor system goes through a “serialization point,” 

defined in the patents as “[a]ny mechanism for ordering data access requests.”17 Before a request 

 16 Dkt. 170-3 at 27 (’636 patent at 20:55-63); Dkt. 170-4 at 25 (’409 patent at 18:5-14); 

Dkt. 170-5 at 43 (’121 patent at 31:23-27); Dkt. 170-6 at 24 (’206 patent at 20:57-59); Dkt. 170-

7 at 23 (’254 patent at 18:37-39). Docket numbers are used only in the first citation to the 

patents-in-suit. 

17 ’636 patent at 5:43-44; ’409 patent at 4:65-66. 

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arrives at a serialization point, the system’s cache coherence controller sends out “probes” to 

determine whether any cache memory locations have modified copies of the requested data.18

According to the patents, sending speculative probes before a request reaches the serialization 

point increases the efficiency of the system. 

Speculative probing helps ensure cache coherence, but may also generate excessive probe 

traffic if all remote or all local caches are probed regardless of whether they contain the 

requested data. The ’636 patent is directed at speculative probing of “remote” processor clusters, 

i.e., those that do not contain the processors requesting the data.19 The ’409 patent is directed at 

speculative probing of “local” processor clusters, i.e., those that contain the processors 

requesting the data.20 

The ’121 patent describes a technique for further reducing probe traffic. The patent 

purports to reduce probe traffic by using a probe filtering unit (“PFU”). In the system claimed by 

the patent, the cache coherence controller receives a request for data and then sends a probe to 

the PFU. The PFU contains “probe filtering information,” which allows the PFU to determine if 

the requested data is located in cache memory within the system.21 If no cache memory contains 

the requested data, the PFU does not send any probes. If the PFU determines that a processor’s 

cache may contain a copy of requested data, the PFU sends a probe to that cache alone. 

The related ’206 and ’254 patents each describe a technique for purportedly increasing 

the speed of memory transactions. The patents describe a multiprocessor system that has both 

 18 ’636 patent at 6:16-18; ’409 patent at 5:38-40. 

19 ’636 patent at 3:3-7. 

20 ’409 patent at 2:67-3:5. 

21 ’121 patent at 2:67-3:1. 

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“local memory” and “remote memory.”22 Local memory is stored in the same cluster as a given 

processor, and remote memory is all memory located outside a given processor’s cluster. 

“Protocol engines” process requests for local and remote memory.23 The patents describe a way 

to improve the efficiency of memory transaction processing by dividing the processing workload 

among multiple protocol engines, according to whether the targeted memory is local or remote. 

This is analogous to using one-way streets to improve traffic flow and reduce congestion. 

C. Memory Integrity’s Infringement Contentions Against Intel 

When Memory Integrity purchased the five patents-in-suit from Sanmina, Memory 

Integrity agreed to be bound by the covenant not to sue contained in the ISA. Memory Integrity 

expressly agreed “to be bound by, and to honor, all Existing Agreements” specified by Sanmina, 

including the covenant not to sue Intel.24 Notwithstanding its agreement to be bound by the 

covenant not to sue, Memory Integrity sued Intel in the U.S. District Court for the District of 

Delaware on November 1, 2013. On February 13, 2015, the District Court in Delaware granted 

Intel’s motion to transfer the case to the District of Oregon. 

In its responses to Intel’s requests for admission, Memory Integrity acknowledges that 

some of its infringement claims rest, at least in part, on cache coherence functionalities that Intel 

asserts it disclosed to Sanmina. In Response No. 2, “Memory Integrity admits that at least one 

Accused Product infringes the ’636 patent in part because of its Source Snooping functionality as 

described in Memory Integrity’s infringement contentions.”25 In Response No. 11, “Memory 

 22 ’206 patent at 7:32-38; ’254 patent at 7:35-40. 

23 ’206 patent at 1:48-67; ’254 patent at 1:51-2:4. 

24 Dkt. 170-9 § 7.2; Dkt. 170-10 at 3-4. 

25 Dkt. 172-13 at 7. 

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Integrity admits that it contends that [an Accused Product] applies a hash algorithm to addresses 

to select particular Cache Boxes as described in Memory Integrity’s infringement contentions.”26

And in Response No. 27, “Memory Integrity admits that it contends that [an Accused Product] 

infringes the ’206 and ’254 patents in part because of the manner in which the Cache Boxes 

process transactions from the Cores as described in Memory Integrity’s infringement 

contentions.”27

DISCUSSION 

In response to Intel’s motion for summary judgment, Memory Integrity asserts that the 

ISA’s covenant not to sue does not bar Memory Integrity’s infringement claims against Intel. 

Memory Integrity makes several alternative arguments for this conclusion. Memory Integrity 

argues that the ISA is unenforceable due to its failure to include an essential term and also due to 

vagueness. Memory Integrity further argues that the ISA does not apply to the information 

purportedly disclosed by Intel to Sanmina because Intel has not shown that this information is 

“CSI Enabling Information.” According to Memory Integrity, Intel has failed to establish that the 

information is CSI Enabling Information for two alternative reasons: (1) Intel has failed to 

present sufficient evidence to establish that the information was useful to Sanmina in 

implementing CSI-related technologies; and (2) the information was not “confidential” either at 

the time of disclosure or at the time Memory Integrity filed its lawsuit. Finally, Memory Integrity 

argues that Intel has failed to establish that Memory Integrity’s infringement contentions are 

based on the information that Intel disclosed to Sanmina.28 

 26 Dkt. 172-13 at 11. 

27 Dkt. 172-13 at 18. 

28 Memory Integrity concedes that Sanmina or its affiliates and successors owned or 

controlled the alleged CSI Patent Rights during the Capture Period. 

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A. Whether the ISA Is Enforceable 

1. General Principles of Contract Interpretation Under Delaware Law 

In the ISA, the parties agree that Delaware law applies. Under Delaware law, “[t]he 

proper construction of any contract, including an insurance contract, is purely a question of law.” 

Rhone-Poulenc Basic Chemicals Co. v. Am. Motorists Ins. Co., 616 A.2d 1192, 1195 

(Del. 1992). When a court interprets a contract, “the threshold inquiry when presented with a 

contract dispute on a motion for summary judgment is whether the contract is ambiguous. 

Ambiguity does not exist simply because the parties disagree about what the contract means.” 

United Rentals, Inc. v. RAM Holdings, Inc., 937 A.2d 810, 830 (Del. Ch. 2007) (footnotes 

omitted). Additionally, “[a] term is not ambiguous simply because it is not defined.” Sassano v. 

CIBC World Markets Corp., 948 A.2d 453, 468 n.86 (Del. Ch. 2008). Ambiguity exists “only 

when the provisions in controversy are reasonably or fairly susceptible of different 

interpretations or may have two or more different meanings.” Rhone-Poulenc, 616 A.2d at 1196. 

A provision is not reasonably susceptible to different interpretations when one party’s 

interpretation “produces an absurd result or one that no reasonable person would have accepted 

when entering the contract.” Osborn ex rel. Osborn v. Kemp, 991 A.2d 1153, 1160 (Del. 2010). 

When interpreting a contractual provision, courts “will give priority to the parties’ 

intentions as reflected in the four corners of the agreement.” GMG Capital Invs., LLC v. 

Athenian Venture Partners I, L.P., 36 A.3d 776, 779 (Del. 2012). If a court finds that a provision 

is ambiguous, however, “the interpreting court must look beyond the language of the contract to 

ascertain the parties’ intentions.” Eagle Indus., Inc. v. DeVilbiss Health Care, Inc., 702 A.2d 

1228, 1232 (Del. 1997); Cont’l Warranty, Inc. v. Warner, 108 F. Supp. 3d 256, 260 (D. 

Del. 2015) (“Delaware law requires ‘uncertainty in the meaning and application of contract 

language’ before courts may consider extrinsic evidence.” (quoting Eagle Indus., 702 A.2d at 

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1232)). The court may accomplish this task “by the summary judgment procedure in certain 

cases where the moving party’s record is not prima facie rebutted so as to create issues of 

material fact.” Eagle Indus., 702 A.2d at 1232-33. 

Delaware follows the “objective” theory of contracts—meaning that “a contract’s 

construction should be that which would be understood by an objective, reasonable third party.” 

HIFN, Inc. v. Intel Corp., 2007 WL 1309376, at *9 (Del. Ch. May 2, 2007). To form a contract, 

the parties must manifest “mutual assent to the exchange and consideration,” and “[o]vert 

manifestations of assent rather than subjective intent control contract formation.” Ramone v. 

Lang, 2006 WL 905347, at *10 (Del. Ch. Apr. 3, 2006). There is no mutual assent “when both 

parties unknowingly attach materially different meanings to a contract term.” Cont’l Warranty, 

108 F. Supp. 3d 250, 254 (D. Del. 2015). There must be “a complete meeting of the minds on all 

material terms” in order for a contract to be enforceable. Ramone, 2006 WL 905347, at *10; see 

also Intellisource Grp., Inc. v. Williams, 1999 WL 615114, at *4 (D. Del. Aug. 11, 1999) 

(“[T]here can be no contract when an essential term is missing.”). A contract’s material terms 

also must be sufficiently definite to be enforceable: “The material terms of a contract will be 

deemed fatally vague or indefinite if they fail to provide a reasonable standard for determining 

whether a breach has occurred and the appropriate remedy.” Indep. Cellular Tel., Inc. v. Barker, 

1997 WL 153816, at *4 (Del. Ch. Mar. 21, 1997). 

2. Whether the ISA Failed to Include a Material or Essential Term 

Memory Integrity argues that because the parties left the phrase “CSI Patent Claim” 

undefined in the ISA, the parties failed to include an essential term in their contract. This failure, 

argues Memory Integrity, renders the ISA unenforceable. To determine if the definition of “CSI 

Patent Claim” was a material or essential term, the Court must consider whether there is any 

evidence that either party “regard[ed] the agreement as incomplete and intend[ed] that no 

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obligation shall exist until other terms [were] assented to or until the whole ha[d] been reduced to 

another written form.” Intellisource, 1999 WL 615114, at *5 (quoting Restatement (Second) of 

Contracts § 27 cmt. b (1981)). The Court must also consider whether “a reasonable person 

would conclude that the [missing term] would be an essential term in the purported contract at 

bar.” Id. The Delaware Court of Chancery has further explained that the test for whether the 

parties agreed on all material or essential terms is: 

whether a reasonable negotiator in the position of one asserting the 

existence of a contract would have concluded, in that setting, that 

the agreement reached constituted agreement on all of the terms 

that the parties themselves regarded as essential and thus that the 

agreement concluded the negotiations. . . . 

Pharmathene, Inc. v. SIGA Techs., Inc., 2010 WL 4813553, at *8 (Del. Ch. Nov. 23, 2010) 

(quoting Loppert v. WindsorTech, Inc., 865 A.2d 1282, 128 (Del. Ch. 2004), aff’d, 867 A.2d 903 

(Del. 2005)) (emphasis in original) (alteration omitted). 

The ISA states: 

Company [Sanmina] agrees that Company shall not Assert any CSI 

Patent Claim against Intel, its subsidiaries or affiliates, or their 

customers (direct or indirect), distributors (direct or indirect), 

agents (direct or indirect) and contractors (direct or indirect) for the 

manufacture, use, import, offer for sale or sale of any of Intel’s 

Products . . . .29 

The ISA uses the term “CSI Patent Claim” only one other time. The ISA’s “License Option” 

provision explains that if the covenant not to sue is terminated, Intel will have the option to 

receive a going-forward license to Sanmina’s “CSI Patent Rights” and a corresponding release of 

“all damages and claims, worldwide, for all liability for asserted or unasserted CSI Patent Claims 

against Intel.”30

 29 Dkt. 171-1 § 2.1. 

30 Dkt. 171-1 § 3.1. 

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Memory Integrity is correct that the ISA does not specifically define “CSI Patent Claim.” 

“CSI Patent Claim” is a short phrase that consists of the word “CSI” followed by two other 

capitalized words, “Patent” and “Claim.” The ISA defines “CSI,” “CSI Enabling Information,” 

and “CSI Patent Rights.”31 The ISA also defines “Assert.”32 In addition, the term “claim” has a 

common and ordinary meaning. See Borish v. Britamco Underwriters, Inc., 869 F. Supp. 316, 

319 (E.D. Pa. 1994) (“Courts give undefined contract terms their common meaning. The terms 

‘claim’ and ‘notice’ are standard terms . . . .” (citation omitted)). In common usage, “claim” 

means “any right to payment or to an equitable remedy, even if contingent or provisional . . . . A 

demand for money, property, or a legal remedy to which one asserts a right; esp., the part of a 

complaint in a civil action specifying what relief the plaintiff asks for.” Black’s Law Dictionary

301 (10th ed. 2014).33 

The parties would have understood the common meaning of the term “claim” at the time 

of contracting. Notwithstanding the fact that the word “claim” is capitalized in “CSI Patent 

Claim,” there is no evidence that the parties regarded the ISA as incomplete or otherwise 

intended that no obligations exist until a further agreement was reached. To the contrary, Intel’s 

extensive disclosures of Restricted Secret documents and the extensive steps taken by Sanmina 

to maintain the confidentiality of those documents indicate that both parties understood that they 

had reached an agreement concerning the information that Intel conveyed. In light of these 

undisputed facts, the Court finds that there is no genuine dispute regarding whether a reasonable 

negotiator, in the parties’ position when they negotiated the ISA, would have concluded that the 

 31 Dkt. 171-1 §§ 1.8-1.10. 

32 Dkt. 171-1 § 1.1. 

33 The identical definition appears in Black’s Law Dictionary 264 (8th ed. 2004), which is 

the year immediately before the parties used the word “claim” in the ISA. 

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ISA constituted an agreement to all terms that the parties themselves regarded as essential and 

that the agreement concluded the negotiations. Thus, the ISA’s failure to define the term “CSI 

Patent Claim” does not render the agreement unenforceable. 

3. Whether the ISA Is Fatally Vague or Ambiguous 

Memory Integrity also argues that the term “CSI Patent Claim” is susceptible to several 

different interpretations and that this ambiguity makes the ISA unenforceable. According to 

Memory Integrity, “CSI Patent Claim” could, for example, refer to a claim of a patent. Intel 

responds that “CSI Patent Claim” is susceptible to only one reasonable interpretation in the 

context of the ISA, and it means “the assertion of a legal claim based on a CSI Patent Right.”34

The Court looks first to the intrinsic evidence, the ISA itself, to determine whether “CSI 

Patent Claim” is ambiguous. As discussed above, the ISA defines “CSI,” which means “an 

electro-mechanical point-to-point information path capable of carrying cache-coherence, I/O 

transactions, system related transactions, configuration management transactions, interrupts 

and/or other related transactions between an Intel microprocessor and [other components].”35 

The ISA also defines “CSI Patent Rights” as: 

Company’s Patent Rights that: (a) now or at any time during the 

Capture Period are owned or controlled by Company; and (b) but 

for this Agreement, would be infringed by one or more of Intel’s 

Products due in whole or in part to those products’ inclusion or 

implementation of any portion of the CSI Enabling Information.36

 34 Dkt. 198 at 22. 

35 Dkt. 171-1 § 1.8. 

36 Dkt. 171-1 § 1.10. 

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Additionally, the License Option in the ISA couples the terms “CSI Patent Rights” and “CSI 

Patent Claim,” discussing a going-forward license of CSI Patent Rights that correspond to a past 

release of liability for CSI Patent Claims. 

Memory Integrity points to unrelated agreements that Intel negotiated with unrelated 

parties as evidence that “CSI Patent Claim” could mean a “claim of a patent.”37 The context in 

which “CSI Patent Claims” appears in the ISA, however, precludes such a definition. The 

License Option discusses a release of liability for “CSI Patent Claims,” establishing that the term 

refers only to a legal claim that could, absent the covenant not to sue, result in liability for Intel. 

Memory Integrity does not argue that the context of the ISA suggests any other alternative 

interpretation of the term as used in this particular agreement. In the context of the ISA, Memory 

Integrity’s proposed alternative meaning is nonsensical.38 

A lack of an express definition alone does not render a contract term ambiguous. 

Sassano, 948 A.2d at 468 n.86. Looking to the definition of “CSI,” “CSI Patent Right,” the 

common meaning of “claim,” and the discussion in the License Option, the Court finds that “CSI 

Patent Claim” is unambiguous and susceptible only to one interpretation: a legal claim based on 

 37 Dkt. 179 at 38. 

38 In the context of a motion to compel discovery, the District Court for the District of 

Columbia similarly addressed the relevance of contracts between one party and non-parties to the 

case. In denying the motion, the court emphasized, “These contracts were made between 

different contracting officers and different private contractors, at different times for different 

purposes.” United States v. Kellogg Brown & Root Servs., Inc., 284 F.R.D. 22, 38 (D.D.C. 2012). 

The court further noted that the contract at issue “[was] not a form agreement” but rather “a 

massive, unique undertaking. [The defendant] has not explained how the contracts are 

sufficiently similar to make [the plaintiff’s] interpretation of one binding on the other.” Id.

Likewise, in this case, Memory Integrity’s submits contracts made by different contracting 

officers at different times for different purposes than the ISA without explaining how the 

contracts are sufficiently similar to make Intel’s interpretation of one binding on the other. 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 17 of 35
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CSI Patent Rights. Therefore, the Court finds that the ISA is not unenforceable due to 

vagueness.39 

B. Whether the Disclosed Information Is CSI Enabling Information Under the ISA 

The ISA defines “CSI Enabling Information” as “all information provided by Intel to 

[Sanmina] that is (a) necessary or useful in implementing CSI-enabled, CSI-compliant, or CSIrelated technologies; and (but not ‘or’) (b) restricted by a duty of confidentiality, however arising 

and including that provided under the RUNDA.”40 Accordingly, to qualify as CSI Enabling 

Information, the information disclosed by Intel must have been both useful to Sanmina and 

confidential. Memory Integrity argues that any purportedly disclosed information fails both 

prongs of this test. 

1. Intel’s Disclosure to Sanmina 

As a threshold matter, Memory Integrity argues that Intel has failed to identify in its 

motion documents that disclosed some of the information Intel purports to have conveyed to 

Sanmina. Intel asserts that it disclosed implementation details of six different cache coherence 

technologies to Sanmina: (1) source snooping; (2) home snooping; (3) functionality for receiving 

a cache access request and sending a probe; (4) use of a particular hashing algorithm; (5) a 

caching agent (also known as a Cache Box) that processes transactions; and (6) snoop filtering. 

In its motion, Intel identifies three Restricted Secret documents that disclosed the way in which 

Intel implements these technologies: (1) the CSI Specification; (2) the Thurley Document; and 

(3) the Beckton Document. 

 39 Because the Court finds that the parties did not understand an expressly agreed-upon 

definition of “CSI Patent Claim” to be an essential term and that the ISA is not fatally vague, the 

Court does not reach Intel’s argument that Memory Integrity agreed that the ISA was enforceable 

by purchasing the patents and agreeing “to be bound by, and to honor” the covenant not to sue. 

40 Dkt. 171-1 § 1.9. 

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Other than the caching agent technology, the technological implementations that Intel 

purports to have disclosed to Sanmina or its subsidiary are undisputedly described in the three 

identified Restricted Secret documents. Section 8.5.1.1 of the CSI Specification describes Intel’s 

source snooping protocol. Section 8.1.1 of the CSI Specification describes source snooping, 

home snooping, and snoop filtering. In his deposition, Mr. Morton also explains that a figure 

depicted in the Thurley Document illustrates the functionality for receiving cache access requests 

and sending probes. Further, the Beckton Document describes a hashing algorithm. 

As for the technology related to a caching agent that processes transactions, Mr. Morton 

identifies the Beckton Document as the source of this information for Sanmina. He verifies that 

based on the Beckton Document, he understood that Intel’s caching agent processes specific 

transactions. The questions posed to Mr. Morton are phrased slightly differently than Intel’s 

description of caching agents in its brief, but nonetheless, the Beckton Document and 

Mr. Morton’s testimony establish that Intel disclosed to Sanmina information regarding Intel’s 

implementation of caching agents that can process specific transactions. 

Memory Integrity argues that Mr. Morton’s testimony is conclusory and that his 

understanding of the technologies may not embrace the technological descriptions set forth by 

Intel in its brief. Memory Integrity, however, offers no evidence that calls into question 

Mr. Morton’s testimony, which the text of the Restricted Secret documents corroborates.41 See 

 41 Memory Integrity’s expert witness, Dr. Matthew Farrens, asserts that Intel did not 

disclose a specific implementation regarding receiving requests and sending probes. See Dkt. 180 

¶ 20. But Dr. Farrens does not dispute that Intel disclosed its use of a functionality for receiving 

requests and sending probes or that Intel disclosed the Thurley Document. See id. ¶¶ 21-22. He 

asserts only that this more general information was publicly known. Dr. Farrens also mistakenly 

claims that Mr. Morton does not mention probes in the context of the Thurley Document. See

Dkt. 170-1 at 59-63. Additionally, Dr. Farrens asserts that Intel’s disclosure of a caching agent 

technology “would not have been earlier than August 16, 2016.” Id. ¶ 34. It appears from the 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 19 of 35
PAGE 20 – OPINION AND ORDER 

Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133, 151 (2000) (“[T]he court should 

give credence to the evidence favoring the nonmovant as well as that ‘evidence supporting the 

moving party that is uncontradicted and unimpeached, at least to the extent that that evidence 

comes from disinterested witnesses.’” (quoting 9A Charles Alan Wright & Arthur R. Miller, 

Federal Practice and Procedure § 2529, at 300 (2d ed. 1995));42 Edward J. Brunet et al., 

Summary Judgment – Federal Law and Practice § 8.11, at 345 (2014) (“If the expert’s testimony 

will be unopposed at trial, nothing is accomplished by allowing the case to be tried when a party 

is unable to obtain an affidavit to rebut an expert’s testimony.”). Therefore, there is no genuine 

issue of material fact concerning whether Intel disclosed its implementation of the six cache 

coherence technologies it describes. 

2. Usefulness to Sanmina 

Memory Integrity argues that even if Intel disclosed how it implements the six 

technologies in question, Intel has failed to show that the information is CSI Enabling 

Information. According to Memory Integrity, Intel has not offered evidence of how or why the 

information proved useful for implementing CSI-related technologies. Intel responds that 

Memory Integrity’s argument conflicts with the testimony of Mr. Morton, who both led the 

Project Isis team at Sanmina and served as one of the named inventors for the ’121 patent 

(concerning a probe filtering unit). According to Intel, Memory Integrity had the opportunity 

fully to examine Mr. Morton at his deposition on how or why Intel’s disclosures were useful and 

 

context of this statement, however, that Dr. Farrens meant “earlier than August 16, 2006,” which 

Memory Integrity confirmed at oral argument on April 8, 2016. 

42 Although Reeves involved a motion for judgment as a matter of law and was not a 

summary judgment decision, the Supreme Court stressed that “the standard for granting 

summary judgment ‘mirrors’ the standard for judgment as a matter of law, such that ‘the inquiry 

under each is the same.’” 530 U.S. at 150 (quoting Anderson v. Liberty Lobby, Inc., 

477 U.S. 242, 250-251 (1986)). 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 20 of 35
PAGE 21 – OPINION AND ORDER 

cannot now persuasively argue that his explanations are simply conclusory or otherwise 

insufficient. 

With its motion, Intel offers extensive testimony from Mr. Morton concerning the 

usefulness of the information Intel disclosed to Sanmina. Memory Integrity does not dispute that 

Mr. Morton has personal knowledge of whether Intel’s disclosures proved useful to Sanmina in 

developing CSI-related technologies. According to Mr. Morton, as the lead architect for Project 

Isis, he was responsible for understanding CSI (or “QPI”) and Intel’s architecture and designing 

and verifying a protocol that Sanmina’s node controller chip would use to maintain cache 

coherence while also maintaining the requirements of Intel’s architecture. He explains how and 

why Intel’s source snooping technology proved useful to Sanmina, stating that the only way to 

understand Intel’s source snooping protocol was through Intel’s disclosures to Sanmina. 

Although Mr. Morton does not provide the specifics of how and why the other five technological 

implementations disclosed by Intel were useful to Sanmina, he does definitively state that those 

disclosures were indeed useful as well. 

Additionally, the text of the ISA supports Mr. Morton’s testimony. The ISA included 

certain milestones that Intel had to meet. Among other things, the ISA required Intel to deliver 

the CSI Specification within 60 days of the agreement’s effective date. This requirement 

corroborates Mr. Morton’s testimony that Sanmina considered the information in the CSI 

Specification about source snooping, home snooping, and snoop filtering useful. 

When evidence is “one-sided” on a factual matter, a court may decide the issue as a 

matter of law on summary judgment. Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 

1182, 1190 (Fed. Cir. 1993). A party’s “completely insupportable, specious, or conflicting 

explanations or excuses will not suffice to raise a genuine issue of fact.” Id. (emphasis in 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 21 of 35
PAGE 22 – OPINION AND ORDER 

original). Here, Memory Integrity has presented no evidence that contradicts either Mr. Morton’s 

testimony on this issue or the ISA’s implicit indication that Sanmina considered the information 

in Intel’s CSI Specification essential to Project Isis. 

Memory Integrity’s criticisms of Mr. Morton’s testimony, particularly in light of Memory 

Integrity’s failure to present the Court with any contrary evidence (including any other portions 

of Mr. Morton’s testimony), does not create a genuine issue of material fact. See, e.g., Processed 

Plastics Co. v. United States, 473 F.3d 1164, 1170 (Fed. Cir. 2006) (“[T]he nonmovant ‘must 

point to an evidentiary conflict created on the record at least by a counter statement of fact or 

facts set forth in detail.’” (quoting Barmag Barmer Maschinenfabrik AG. v. Murata Machinery, 

Ltd., 731 F.2d 831, 836 (Fed. Cir. 1984)); Am. States Ins. Co. v. Sacramento Plating, Inc., 861 F. 

Supp. 964, 969 n.5 (E.D. Cal. 1994), aff’d, 99 F.3d 1145 (9th Cir. 1996) (overruling a nonmoving party’s objection to an expert’s deposition when the party “had the opportunity to crossexamine [the expert] on both his qualifications and the methods used to reach his opinion, but 

chose not to provide the court with any portions of the deposition which would call [the same] 

into question”); Pac. Gas & Elec. Co. v. Howard P. Foley Co., 1993 WL 299219, at *7 (N.D. 

Cal. July 27, 1993) (“[I]t is unfair for Defendants to claim that [an expert’s] declaration . . . is 

unsupported by his deposition testimony when Defendants failed to fully develop his background 

themselves.”). Accordingly, the Court finds that Intel has established that the information it 

disclosed proved useful to Sanmina in developing CSI-related technologies. 

3. Confidentiality 

Memory Integrity also argues that the disclosed information does not qualify as CSI 

Enabling Information because at the time Intel disclosed the information, it was widely known in 

the industry and therefore not confidential. Alternatively, Memory Integrity argues that the 

disclosures do not qualify as CSI Enabling Information because the information later became 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 22 of 35
PAGE 23 – OPINION AND ORDER 

widely known and thus no longer confidential before Memory Integrity filed this lawsuit. In 

support of these arguments, Memory Integrity cites to presentations, articles, textbooks, Intel’s 

patents and patent applications, and the declaration of Memory Integrity’s expert, Dr. Farrens. 

Intel first responds that the testimony provided both by Intel’s representative, Pamela Hays, and 

also by Mr. Morton establish that the disclosed information was highly confidential and subject 

to a strict duty of confidentiality at the time it was disclosed to Sanmina. Intel next argues that 

regardless of whether the disclosed information later may have become publicly known, which 

Intel disputes, the covenant not to sue applies so long as the information was confidential at the 

time of disclosure to Sanmina. Intel further argues that even if the covenant not to sue does not 

apply to information that later becomes known in the industry, Intel’s evidence shows that the 

specific implementations that Intel disclosed to Sanmina have remained confidential to the 

present day. 

a. Confidentiality at the Time Intel Disclosed the Information to Sanmina 

Ms. Hays is Intel’s corporate designee in this case, and she was involved in negotiating 

the ISA with Sanmina. In her declaration, she states that the Restricted Secret documents 

disclosed to Sanmina required a strict duty of confidentiality because they reveal some of Intel’s 

most sensitive technical information. These documents describe how Intel’s microprocessors, 

which are Intel’s core products, function. The first page of the documents includes a “Restricted 

Secret” label, and the documents’ titles show the letters “RS,” signifying that they contain 

particularly sensitive information. According to Ms. Hays, the implementation detail in these 

documents represents the “crown jewels” of Intel’s trade secrets.43 

 43 Dkt. 191-1 at 17. 

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Similarly, in his deposition, Mr. Morton repeatedly states that he regarded the 

information that Intel disclosed to Sanmina as confidential. He testifies that Sanmina kept the 

information that it received from Intel confidential and that he does not know of anyone from 

Sanmina who violated a duty of confidentiality with respect to the materials received from Intel. 

Additionally, Mr. Morton describes how Sanmina personalized Intel’s documents for each team 

member so that the documents could be better controlled and tracked. According to Mr. Morton, 

Sanmina also physically isolated the Project Isis team in a separate and secured wing at the 

Sanmina facilities. 

These undisputed circumstances surrounding Intel’s disclosures further confirm that the 

information given to Sanmina was confidential at the time of disclosure and was understood and 

treated by the parties as such. In order to develop a node controller that would work with Intel 

processors, Sanmina undertook years of negotiations with Intel to gain access to secret 

information about Intel’s cache coherence protocol. Sanmina signed four separate confidentiality 

agreements, in addition to a covenant not to sue, in exchange for access to this information. If the 

information were public knowledge at the time or otherwise already known to Sanmina, Sanmina 

would have had no need to go through such a burdensome process to learn how Intel’s 

processors maintain cache coherence. Nor would Sanmina have needed to go to such lengths—

including keeping track of who accessed Intel’s documents and physically isolating the Project 

Isis team from other Sanmina employees—to honor its confidentiality duties to Intel. 

Memory Integrity presents an array of citations to documents that purportedly disclosed 

Intel’s cache coherence technologies to the public before Intel disclosed the information to 

Sanmina. Memory Integrity’s citations, however, only demonstrate that the general concepts at 

issue were known in the industry and show nothing about the specific proprietary 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 24 of 35
PAGE 25 – OPINION AND ORDER 

implementations that Intel disclosed. An apt analogy is the difference between a restaurant’s 

menu and its trade secret recipes. For example, a menu may list bucatini al savor di noci as a 

pasta course, and may even list its key ingredients. When the dish arrives at the table, a customer 

may taste walnuts, honey, ginger, black pepper, and lemon, in an olive oil base. This is all 

publicly available information. But the specific recipe needed to make this dish well would not 

necessarily be public knowledge. So, too, here; the general concepts of source snooping and 

other cache coherence technologies were known in the industry, but the specifics of how Intel 

implemented those technologies were not. 

b. Confidentiality after the Disclosures Were Made 

Memory Integrity also offers citations to documents that purportedly disclosed Intel’s 

cache coherence technologies to the public after the disclosures to Sanmina were made but 

before Memory Integrity filed this lawsuit. According to Memory Integrity, the two CNDAs, the 

RUNDA, and the RS-NDA all specify that the duty of confidentiality under the agreements no 

longer applies if, among other things, the disclosed information becomes rightfully in the public 

domain or Intel generally makes the information available to third parties without restrictions on 

disclosure. 

Intel responds first that the ISA does not require that disclosed information remain

confidential after disclosure in order for the covenant not to sue to continue to apply. The Court 

again applies Delaware contract law to determine if the terms of the ISA are ambiguous. 

According to the ISA, CSI Enabling Information includes “all information provided by Intel to 

Company that is . . . restricted by a duty of confidentiality, however arising . . . .”44 Memory 

Integrity argues that use of the present tense “is” means that the covenant not to sue applies only 

 44 Dkt. 171-1 § 1.9 (emphasis added). 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 25 of 35
PAGE 26 – OPINION AND ORDER 

if the disclosed information remains confidential at the time of the proposed assertion of a patent 

infringement claim or the invocation of the covenant not to sue as a defense. Intel responds that 

“is” refers to the circumstances that existed at the time Intel agreed to disclose the information to 

Sanmina, and therefore, the covenant not to sue applies so long as the disclosed information was 

restricted by a duty of confidentiality at the time of disclosure. 

As required by Delaware law and discussed above, the Court begins its analysis with 

intrinsic evidence, the contract itself, to determine if the ISA is ambiguous. The ISA uses the 

present tense verb “is” to describe the confidentiality requirements for CSI Enabling 

Information. Although the Court is unaware of any Delaware court addressing what “is” means 

in a contract, the Delaware Court of Chancery has found that using the present tense of a verb 

can be evidence that a contract refers to the state of affairs at the time of contracting rather than 

at some future event. See Winshall v. Viacom Int’l Inc., 2012 WL 6200271, at *6 (Del. Ch. 

Dec. 12, 2012). In addition, New York courts have addressed the precise issue of the temporal 

scope of “is.” For example, in Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 361 F. Supp. 2d 210, 

215 (S.D.N.Y. 2005), the court found that a contract’s use of the word “is” established that the 

agreement did not transfer rights to patents acquired after the agreement’s execution. The Fifth 

Circuit, however, notes, “[T]he present tense of a verb may sometimes refer to the past and to the 

future as well as to the present. . . . [T]he present tense may be used when the time is actually 

indefinite.” In re Stratford of Tex., Inc., 635 F.2d 365, 369 (5th Cir. Jan. 1981). 

Moreover, even the cases finding that, in the context of a specific document, the use of 

the present tense is not forward-looking suggest that the context containing the present-tense 

verb should guide the interpretation. In Winshall, the Delaware court noted both that the contract 

used the present tense of verbs and that the contract referred to “current use.” 2012 WL 6200271, 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 26 of 35
PAGE 27 – OPINION AND ORDER 

at *6. In Aspex Eyewear, the court explained that the contract’s lack of “any language that could 

in any way be construed as granting, or indicating an intention to grant, any future acquired 

rights” confirmed that “is” did not include future time. 361 F. Supp. 2d at 215. The Cambridge 

Grammar of the English Language similarly emphasizes that “temporal expressions” 

accompanying present-tense verbs indicate whether the present tense includes “future time 

situations.” Rodney Huddleston & Geoffrey Pullum, The Cambridge Grammar of the English 

Language 131-32 (2002). For example, the sentence “She is president until next May” expressly 

includes a future time reference. Id. at 131 (emphasis in original). 

Here, the ISA contains no relevant future time references. Similar to the facts in Aspex 

Eyewear, the ISA contains no language indicating that future occurrences affect whether 

disclosed information remains CSI Enabling Information. Additionally, the ISA states that the 

CSI Information “is . . . restricted by a duty of confidentiality, however arising . . . .”45 This 

statement indicates that confidentiality should be broadly construed when determining whether 

information qualifies as CSI Enabling Information. The statement also indicates that information 

is CSI Enabling Information no matter when or how a duty of confidentiality arises. Thus, if 

disclosed information is confidential, it is “restricted by a duty of confidentiality” sufficient to 

satisfy the definition of “CSI Enabling Information,” even if it later is no longer confidential. 

Additionally, the covenant not to sue states that it “survive[s] termination or expiration of 

this Agreement” unless Intel fails to meet one of the listed milestones or the parties mutually 

agree to terminate the covenant.46 Tellingly, the agreement does not state the covenant not to sue 

can otherwise become inapplicable based on disclosed and previously-confidential information 

 45 Dkt. 171-1 § 1.9 (emphasis added). 

46 Dkt. 171-1 § 2.1. 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 27 of 35
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later becoming publicly known. The Court therefore finds that the ISA is unambiguous and that 

CSI Enabling Information includes information that was confidential at the time of disclosure to 

Sanmina, regardless of whether it later may lose its confidential status. 

Further, even if the ISA were ambiguous concerning the temporal scope of the duty of 

confidentiality and its relationship to the covenant not to sue, the undisputed extrinsic evidence 

presented by the parties would yield the same result. See In re Mobilactive Media, LLC, 2013 

WL 297950, at *15 (Del. Ch. Jan. 25, 2013) (“After examining the relevant extrinsic evidence, ‘a 

court may conclude that, given the extrinsic evidence, only one meaning is objectively 

reasonable in the circumstances of [the] negotiation.’” (quoting U.S. W., Inc. v. Time Warner 

Inc., 1996 WL 307445, at *10 (Del. Ch. June 6, 1996) (alteration in original)); Zimmerman v. 

Crothall, 62 A.3d 676, 690-91 (Del. Ch. 2013) (“When construing an ambiguous contract, such 

as the one at issue here, the court will consider all relevant objective evidence, including: overt 

statements and acts of the parties, the business context, prior dealings between the parties, and 

business customs and usage in the industry.” (footnotes omitted)). 

Intel and Sanmina negotiated four other agreements that constitute relevant extrinsic 

evidence. The CNDAs discuss when confidential information will cease to be confidential for 

purposes of Sanmina’s liability for disclosure. The CNDAs say nothing, however, regarding 

termination of the covenant not to sue or what constitutes CSI Enabling Information. Similarly, 

the RUNDA and RS-NDA discuss confidentiality in the context of Sanmina’s rights to use and 

obligations to protect the disclosed information. The RUNDA and RS-NDA give no indication 

that they affect the covenant not to sue or what is CSI Enabling Information. 

Further, Intel negotiated similar covenants not to sue with other companies. None of the 

agreements allow the other company to sue Intel based on disclosed information if the 

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PAGE 29 – OPINION AND ORDER 

previously-confidential information later becomes publicly known. Almost all of the agreements 

contain precisely the same text that CSI Enabling Information “is” restricted by a duty of 

confidentiality. It is not reasonable to conclude that Intel could have meant for all these 

agreements to subject it to patent infringement liability if others in the industry later 

independently learn the specifics of Intel’s cache coherence protocol. The additional agreements 

that Intel negotiated with Sanmina and other companies and the lack of any contrary evidence 

presented by Memory Integrity establish that there is no genuine issue of material fact regarding 

whether the parties intended CSI Enabling Information to exclude information that later may 

become generally known in the industry. 

 Additionally, even if the ISA remained ambiguous after considering extrinsic evidence, 

principles of Delaware contract law would require the court to construe the provisions at issue in 

Intel’s favor. A Delaware court has explained: 

“Where the language of an agreement is contradictory, obscure, or 

ambiguous, or where its meaning is doubtful, so that the contract is 

fairly susceptible of two constructions, one of which makes it fair, 

customary, and such as prudent men would naturally execute, 

while the other makes it inequitable, unusual, or such as reasonable 

men would not be likely to enter into, the interpretation which 

makes it a rational and probable agreement must be preferred to 

that which makes it an unusual, unfair, or improbable contract.” 

Holland v. Nat’l Auto. Fibres, 22 Del. Ch. 99, 106-07 (1937) (quoting A. Leschen & Sons Rope 

Co. v. Mayflower Gold Mining & Reduction Co., 173 F. 855, 857 (8th Cir. 1909)) (cited with 

approval in Matrix Grp. Ltd., Inc. v. Rawlings Sporting Goods Co., 477 F.3d 583, 591 

(8th Cir. 2007) and Katell v. Morgan Stanley Grp., Inc., 1993 WL 205033, at *4-5 (Del. Ch. 

June 8, 1993)). 

The only reasonable interpretation of the covenant not to sue contained in the ISA is that 

the parties intended it to protect Intel from allegations of patent infringement based on Intel’s use 

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PAGE 30 – OPINION AND ORDER 

of the disclosed information in its products. In exchange, Sanmina received highly confidential 

information that gave Sanmina the opportunity to develop its own potentially profitable products. 

Memory Integrity’s interpretation of the ISA would massively decrease the protection for which 

Intel bargained. For example, Memory Integrity’s interpretation would allow for patent 

infringement suits against Intel if through no fault of Intel’s—such as the independent 

development of cache coherence technologies by another company—the industry learned the 

specifics of the cache coherence protocol used by Intel. Under Delaware law, the Court must 

prefer the construction that avoids an inequitable, unusual result. The principles of construction 

under Delaware contract law confirm that CSI information that was confidential at the time of 

disclosure qualifies as CSI Enabling Information subject to the ISA’s covenant not to sue. 

Finally, even if the Court were to accept Memory Integrity’s interpretation, the 

undisputed extrinsic evidence establishes that the specifics of Intel’s cache coherence 

technologies remain confidential to this day. Although Dr. Farrens points to public documents 

that purportedly disclose the information Intel gave to Sanmina, none of the documents explain 

precisely how Intel implements its specific cache coherence protocol in Intel processors. As 

discussed above, the documents cited by Dr. Farrens disclose the menu, whereas the information 

Intel gave to Sanmina discloses the secret recipe. Ms. Hays confirms that the implementation 

details given to Sanmina remain highly confidential. Memory Integrity has not offered any 

testimony or other evidence that conflicts with Ms. Hays’s statements that Intel’s specific 

implementations of cache coherence functionalities are still unknown to the industry. See Reeves, 

530 U.S. at 151. Thus, under any interpretation of the ISA, Memory Integrity has failed to raise a 

genuine issue of material fact regarding whether the information disclosed to Sanmina 

constitutes CSI Enabling Information triggering the covenant not to sue. 

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C. Whether Memory Integrity’s Infringement Contentions Are Based, at Least in Part, on 

the Disclosed Information 

Memory Integrity argues that there is insufficient evidence that, “but for” the ISA, Intel’s 

Accused Products would infringe the patents-in-suit “due in whole or in part to those products’ 

inclusion or implementation of any portion of the CSI Enabling Information.”47 Intel responds 

that Memory Integrity’s argument conflicts with Memory Integrity’s own binding discovery 

admissions and infringement contentions. 

As with other written instruments such as contracts, patents are interpreted and construed 

as a matter of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed. 

Cir. 1995), aff’d, 517 U.S. 370 (1996) (“It follows, therefore, from the general rule applicable to 

written instruments that a patent is uniquely suited for having its meaning and scope determined 

entirely by a court as a matter of law.”). As the Supreme Court has explained: 

With regard to the second part of this objection, that which claims 

for the jury the construction of the patent, we remark that the 

patent itself must be taken as evidence of its meaning; that, like 

other written instruments, it must be interpreted as a whole, its 

various provisions be taken as far as practicable in connection with 

each other, and the legal deductions drawn therefrom must be 

conformable with the scope and purpose of the entire document. 

This construction and these deductions we hold to be within the 

exclusive province of the court. 

Brown v. Huger, 62 U.S. 305, 318 (1858) (cited with approval in Markman, 517 U.S. at 383 n.8). 

Accordingly, in patent cases, summary judgment is appropriate when the only real dispute 

between the parties concerns the proper meaning of a patent claim. See Transmatic, Inc. v. 

Gulton Indus., Inc., 53 F.3d 1270, 1278 (Fed. Cir. 1995). In contrast, whether an accused product 

performs the function recited by a patent claim is usually a question for the trier-of-fact. See DSC 

Commc’ns Corp. v. Pulse Commc'ns, Inc., 170 F.3d 1354, 1368 (Fed. Cir. 1999). 

 47 Dkt. 171-1 § 1.10. 

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PAGE 32 – OPINION AND ORDER 

Here, Memory Integrity’s own binding discovery admissions acknowledge that its 

infringement contentions are based in part on three of the implementations that Intel disclosed to 

Sanmina. In Response Nos. 2, 11, and 27, Memory Integrity admits that it bases its contentions 

in part on the Accused Products’ use of source snooping, hashing algorithm functionality, and 

Cache Box or caching agent functionality. Under the Federal Rules of Civil Procedure, matters 

admitted in response to requests for admission are deemed “conclusively established unless the 

court, on motion, permits the admission to be withdrawn or amended.” Fed. R. Civ. P. 36(b). 

Memory Integrity has not made any such motion to withdraw or amend its admissions. 

Therefore, Memory Integrity’s admissions conclusively establish that its infringement 

contentions are based, at least in part, on the Accused Products’ use of source snooping,48

hashing algorithm functionality, and Cache Box or caching agent functionality.49

Memory Integrity’s infringement contentions also establish that Memory Integrity’s 

infringement claims arise from functionalities disclosed to Sanmina. Memory Integrity’s 

March 16 and December 15, 2015 infringement contentions accuse Intel of infringing based, in 

 48 Memory Integrity initially accused Intel’s products of infringing the ’636 patent based 

in part on the Accused Products’ use of source snooping. See Ex. D-2 to Memory Integrity’s 

March 16, 2015 Infringement Contentions for the ’636 patent, Dkt. 172-1 at 6-7. Memory 

Integrity, however, later dropped this infringement contention. See Memory Integrity’s 

December 15, 2015 Infringement Contentions, Cover Pleading, Dkt. 172-12 at 3. 

49 Memory Integrity argues that it admitted only that its infringement contentions are 

based on general, non-confidential concepts embraced by Intel’s disclosures to Sanmina. 

Memory Integrity cannot dispute, however, that infringement contentions necessarily rest on 

specific implementations of technology rather than broad, well-known technological concepts. 

When a plaintiff accuses specific products of infringing, “the evidence uncovered by the patent 

holder’s investigation must be sufficient to permit a reasonable inference that all the accused 

products infringe.” Antonious v. Spalding & Evenflo Cos., Inc., 275 F.3d 1066, 1075 (Fed. 

Cir. 2002). 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 32 of 35
PAGE 33 – OPINION AND ORDER 

part, on the Accused Products’ use of home snooping,50 functionality involving receiving a cache 

access request and sending a probe,51 a hashing algorithm for determining where to direct 

memory transactions for processing,52 Cache Boxes or cache agents that process transactions in a 

particular way,53 and snoop filtering.54 The descriptions of home snooping and snoop filtering in 

Memory Integrity’s infringement contentions tracks the descriptions of Intel’s home snooping 

and snoop filtering implementations in the CSI Specification.55 Memory Integrity’s infringement 

contentions also describe a functionality for receiving a cache access request and sending a probe 

that closely resembles the Thurley Document’s explanation of this functionality.56 Similarly, 

Memory Integrity’s infringement contentions describe a proprietary hashing algorithm and 

caching agent functionality like the implementations that Intel disclosed to Sanmina in the 

 50 Ex. D-3 to Memory Integrity’s March 16, 2015 Infringement Contentions for the ’636 

patent, Dkt. 172-2 at 7; Ex. D-3 to Memory Integrity’s December 15, 2015 Infringement 

Contentions for the ’636 patent, Dkt. 172-7 at 7-8. 

51 Ex. B-2 to Memory Integrity’s March 16, 2015 Infringement Contentions for the ’409 

patent, Dkt. 172-3 at 2; Ex. B-2 to Memory Integrity’s December 15, 2015 Infringement 

Contentions for the ’409 patent, Dkt. 172-8 at 2. 

52 Ex. C-2 to Memory Integrity’s March 16, 2015 Infringement Contentions for the ’206 

patent, Dkt. 172-4 at 9; Ex. E-2 to Memory Integrity’s March 16, 2015 Infringement Contentions 

for the ’254 patent, Dkt. 172-5 at 2; Ex. C-2 to Memory Integrity’s December 15, 2015 

Infringement Contentions for the ’206 patent, Dkt. 172-9 at 9-10; Ex. E-2 to Memory Integrity’s 

December 15, 2015 Infringement Contentions for the ’254 patent, Dkt. 172-10 at 2-4, 8, 14, 16. 

53 Ex. C-2 to Memory Integrity’s March 16, 2015 Infringement Contentions for the ’206 

patent, Dkt. 172-4 at 2; Ex. C-2 to Memory Integrity’s December 15, 2015 Infringement 

Contentions for the ’206 patent, Dkt. 172-9 at 2. 

54 Ex. A-1 to Memory Integrity’s March 16, 2015 Infringement Contentions for the ’121 

patent, Dkt. 172-6 at 2; Exhibit A-1 to Memory Integrity’s December 15, 2015 Infringement 

Contentions for the ’121 patent, Dkt. 172-11 at 2. 

55 See Dkt. 170-16 at 21. 

56 See Dkt. 170-15 at 3. 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 33 of 35
PAGE 34 – OPINION AND ORDER 

Beckton Document.57 Mr. Morton confirms that the CSI Specification, Thurley Document, and 

Beckton Document gave Sanmina information about functionalities that are nearly identical to 

the accused instrumentalities. 

Memory Integrity does not offer any contrary evidence. Rather, Memory Integrity argues 

that Intel has failed to show that Memory Integrity’s infringement contentions rely on “the same” 

technologies allegedly disclosed to Sanmina (or Newisys).58 For the reasons discussed above, 

however, the undisputed evidence establishes that Intel disclosed its specific implementations of 

cache coherence functionality to Sanmina and that Memory Integrity’s infringement contentions 

rest, at least in part, on those disclosed functionalities. 

Finally, Memory Integrity argues that Intel has failed to show that the Accused Products 

infringe only because they include technologies disclosed to Sanmina.59 This is not, however, a 

requirement of the ISA. Again, the Court looks to the intrinsic evidence to determine whether the 

ISA is ambiguous. The agreement states that a CSI Patent Right is a patent right that “but for this 

Agreement, would be infringed by one or more of Intel’s products due in whole or in part to 

those products’ inclusion or implementation” of cache coherence technologies disclosed to 

Sanmina.60 The ISA is unambiguous. Even if Intel’s Accused Products might infringe the 

patents-in-suit in the absence of the cache coherence functionalities disclosed to Sanmina, the 

 57 See Dkt. 170-14 at 3. 

58 Memory Integrity’s Redacted Response Brief, Dkt. 199 at 14 n.3, 17. 

59 Memory Integrity’s Redacted Response Brief, Dkt. 199 at 17 (“. . . Intel has not 

presented evidence excluding that the products would still infringe without the implementation or 

inclusion of the technologies allegedly disclosed to Newisys.”) (emphasis in original). 

60 Dkt. 171-1 § 1.10 (emphasis added). 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 34 of 35
PAGE 35 – OPINION AND ORDER 

Accused Products still would infringe in part because the products include the disclosed 

functionalities. This is enough to trigger the covenant not to sue based on CSI Patent Rights. 

The ISA’s covenant not to sue prohibits Memory Integrity from asserting any CSI Patent 

Claim, which is a legal claim based on CSI Patent Rights. CSI Patent Rights are any rights that 

would be infringed due to an Intel product’s inclusion of CSI Enabling Information. Under the 

ISA, CSI Enabling Information is any information that is, among other things, useful in 

implementing CSI-related technologies and restricted by a duty of confidentiality. The 

undisputed evidence establishes that Intel disclosed CSI Enabling Information to Sanmina at 

Sanmina’s request because the disclosed information would be useful to Sanmina in 

implementing CSI-related technologies and this information was restricted by a duty of 

confidentiality at the time of disclosure. Moreover, although the covenant not to sue, as 

contained in the ISA, does not require that CSI Enabling Information remain confidential after 

disclosure to Sanmina, the CSI Enabling Information actually disclosed by Intel to Sanmina has 

remained confidential, as of the time that Intel filed its motion. As shown by Memory Integrity’s 

admissions and infringement contentions, Memory Integrity’s claims of patent infringement are 

based, at least in part, on this CSI Enabling Information. Accordingly, the ISA’s covenant not to 

sue bars Memory Integrity’s patent infringement claims. No reasonable trier of fact could find 

otherwise, and summary judgment is appropriate. 

CONCLUSION 

Intel’s Motion for Summary Judgment (Dkt. 170) is GRANTED. 

IT IS SO ORDERED. 

DATED this 12th day of April, 2016. 

 /s/ Michael H. Simon 

Michael H. Simon 

 United States District Judge 

Case 3:15-cv-00262-SI Document 216 Filed 04/12/16 Page 35 of 35