United States District Court, D. Oregon
Jeffrey S. Love John D. Vandenburg Mark W. Wilson KLARQUIST
L. Close Kathleen S. Rose Patrick B. McAndrew Ronald L.
Flack, Jr. WRIGHT CLOSE & BARGER, LLP Attorneys for
Renée E. Rothauge MARKOWITZ HERBOLD PC Michael J.
Summersgill Jordan L. Hirsch WILMER CUTLER PICKERING HALE and
DORR LLP Todd C. Zubler WILMER CUTLER PICKERING HALE and DORR
LLP Attorneys for Defendant
A. HERNANDEZ UNITED STATES DISTRICT JUDGE
Fereydun Tabaian and Ahmad Ashrafzadeh are the inventors and
owners of United States Patent No. 7, 027, 944 Patent
("the '944 Patent") which is titled
'"Programmable Calibration Circuit and Power Supply
Current Sensing and Droop Loss Compensation," and which
issued on April 11, 2006. Compl. ¶¶ 1, 7, 8, ECF 1.
The '944 Patent discloses a circuit for using calibration
for precise voltage regulation. Id. ¶ 2.
"The invention described in the patent provides circuits
and methods for addressing voltage regulator current sensing
variations, voltage droop, manufacturing variations,
temperature dependencies, and mismatched phase outputs in a
multiphase power regulator." Id. "The
invention advantageously provides circuits and methods to
properly power a computer processor or integrated circuit
chip according to the unique power specifications of the
processor or chip." Id.
their Complaint, Plaintiffs allege that Defendant developed
its Fully Integrated Voltage Regulator (FIVR) technology with
"full knowledge" of the '944 Patent invention,
using the invention as one of FIVR's key components.
Id. ¶ 4. Plaintiffs allege that the FIVR
components of several processors made by Defendant infringe
the '944 Patent. Id. ¶¶ 4, 5.
24, 2018, Defendant moved to disqualify Plaintiffs'
expert Mike Walters. After completion of the motion briefing,
I held a telephone oral argument on the motion on August 15,
2018. At the conclusion of that hearing, I granted the
motion. See ECF 75 (Minutes of Aug. 15, 2018 motion
hearing). This Opinion explains my reasoning.
to Jorge Rodriguez, a senior engineer employed by Defendant,
Defendant manufactures microprocessors which are
semiconductor integrated circuits for use in computers.
Rodriguez Decl. ¶ 5, ECF 61. A microprocessor requires
one or more voltage regulators in order to "convert the
voltage from its power supply (such as an electrical outlet
or battery) to a voltage that is useable by the
microprocessor and that provides the electrical power
required by the microprocessor in an efficient manner."
Id. Starting in the late 1990s, Defendant developed
the Intel Mobile Voltage Positioning (IMVP) technology which
was "designed to create voltage regulators that reduce
the amount of consumed power while providing greater
processor performance." Id. ¶ 6. For
nearly twenty years, Defendant has worked with third-party
semiconductor suppliers to develop voltage regulators that
work with Defendant's microprocessors. Id.
Defendant's current voltage regulator technology, the
FIVR that is at issue in the patent infringement claim, is,
according to Rodriguez, an "outgrowth" of
Defendant's prior IMVP work. Id. ¶ 19.
Before 2013, Defendant's microprocessors typically
required multiple IMVP voltage regulators, with each
providing a specific voltage to a different part of the
microprocessor such as its core or graphics unit.
Id. But, starting in 2013, the FIVR technology
"integrated the functionality of multiple IMVP
regulators onto the microprocessor die, which Defendant
manufactures." Id. Defendant's
microprocessors with FIVR require only one external IMVP
voltage regulator because the others have been integrated
onto the die. Id. Therefore, according to Rodriguez,
Defendant's FIVR technology performs many functions that
voltage regulators previously provided by third-party
suppliers performed, and FIVR "displaces these
suppliers' products to a significant degree."
1999 to 2009, Walters worked for two third-party supplier
companies, Intersil Corporation and International Rectifier
Corporation, to "develop power specifications" and
define voltage regulators for use with Defendant's
microprocessors. Jaikumar July 24, 2018 Decl., Ex. 4, ECF
62-4 (Walters's resume showing work at Intersil from
1999-2003 as a "Power System Architect" which
included work with "industry leaders" including
Defendant to develop power specifications; showing work at
International Rectifier Corp from 2003-09 as a "Portable
Applications Manager"); id., Ex. 5, ECF 62-5
(July 6, 2018 email from Plaintiffs' counsel to
Defendant's counsel explaining that Walters's role at
both Intersil and International Rectifier "was to define
integrated circuits (voltage regulation control) that their
customers used to power server, desktop, and laptop computers
using Intel processors"; noting that Walters worked with
engineers in Defendant's vendor enabling groups from 1999
through 2009 and his principal contacts there were Jon Day
for desktop/server products and Jorge Rodriguez for laptop
products). Both corporations had non-disclosure agreements
(NDAs) with Defendant, protecting as confidential information
provided by Defendant to those companies. Jaikumar July 24,
2018 Decl., Exs. 1, 2, 3, ECF 62-1, 62-2, 62-3.
to Rodriguez, over the last twenty years, Defendant has
released multiple IMVP specifications, classified as
"Intel Restricted Secret" documents which can be
viewed by non-Intel parties only under the protection of an
NDA. Rodriguez Decl. ¶ 7. Rodriguez states that the IMVP
specifications released in those documents identify, in
detail, information about Intel microprocessors and the
technical requirements for voltage regulators that can work
with Intel microprocessors. Id. As Rodriguez
describes, Defendant provides these specifications to
suppliers under NDAs and then works with the suppliers to
develop voltage regulators that the suppliers will
manufacture. Id. ¶ 8.
states that Defendant provided Walters with many confidential
IMVP-related documents during the years he worked in a
confidential relationship with Defendant. Id. ¶
10. All of the documents were provided under an NDA and
pursuant to a specific "Confidential Information
Transmittal Record for Restricted Secret Information"
(CITR) that Walters was asked to sign. Id. Rodriguez
states that during his years of work with Defendant, Walters
received significant quantities of confidential information
about Intel voltage regulator technology. Id. ¶
11. According to Rodriguez, as a power supply architect at
Intersil, Walters needed access to Defendant's IMVP
specifications which are Intel Restricted Secret material,
and Walters received copies of such documents. Id.
These documents described Defendant's confidential
designs for many aspects of voltage regulators, including how
voltage was regulated, how current was regulated, the role of
a reference voltage, and the use of temperature. Id.
Attached to Rodriguez's Declaration are copies of email
correspondence from Rodriguez to Walters in which Rodriguez
personally sent Defendant's confidential information to
Walters. Id. ¶ 12 & Exs. 1, 2, 3, 4, 5;
see also Id. ¶¶ 13-18 (describing date and
content of communications and documents).
on Walters's prior employment by the two third-party
supplier companies, his work on voltage regulators for use in
Defendant's microprocessors, and the undisputed receipt
by Walters of confidential documents subject to an NDA,
Defendant argues that Walters should be disqualified from
acting as a consultant or expert for Plaintiffs in this
litigation. In response, Plaintiffs do not dispute
Walters's prior employment but they contend that the work
he performed and the information he had access to is not
directly related to the technology at issue in this case.
Moreover, Plaintiffs argue that Walters will review these
documents in discovery anyway, creating little potential for
him to rely on documents he viewed outside of litigation to
form his opinions. The parties also dispute who will be most
harmed if Walters is excluded.
cases indicate that disqualification motions are analyzed
under a three-part test: (1) was there a confidential
relationship between the party and the expert; (2) is the
information disclosed by the party to the expert relevant to
the current litigation; and (3) what is the relative
prejudice to the parties and the impact of disqualification
on the integrity of the legal process. See Oracle Corp.
v. DrugLogic, Inc., No. C-11-00910-JCS, 2012 WL 2244305,
at *5-6 (N.D. ...