245 F. Supp. 3d 1036
C.D. Ill.2017Background
- University owns three patents (assigned from inventors Lyding and Hess) for a deuterium anneal process; it contracted with Micron in 2004 to treat wafers under a work agreement.
- University sued Micron (2011) for patent infringement and breach of the work agreement after concluding Micron commercialized the process.
- Micron successfully challenged the patents before the PTAB; patents were invalidated and affirmed on appeal, leaving the breach-of-contract claim.
- Six years into litigation Micron moved to dismiss for lack of subject-matter jurisdiction, arguing an unjoined co-inventor (Dr. Kizilyalli) meant the University lacked patent standing.
- The Court addressed multiple ancillary motions: sealing, reconsideration/interlocutory appeal (re application of Studiengesellschaft), renewed injunctive relief, supplementation with new evidence, and the University’s default-judgment request.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Subject-matter jurisdiction / standing (co-inventor) | University: it was the assigned patentee and had standing to sue; no §256 motion had been filed to change inventorship. | Micron: alleged omitted co-inventor (Kizilyalli) required joinder at filing; absence defeats jurisdiction. | Court denied dismissal: presumption that named inventors are correct; without a §256 correction the court evaluates standing based on original patent face. |
| Seal / public access to memorandum | University: no position needed—the Court should balance public interest against confidentiality. | Micron: memorandum relies on confidential exhibits and seeks sealing. | Denied overall sealing motion; Court did not rely on the sealed inventorship materials and ordered Micron to file a redacted memorandum. |
| Reconsideration / interlocutory appeal re: Studiengesellschaft application | University: work agreement functioned like a limited license obligating Micron to seek a license before commercial use. | Micron: work agreement is not a royalty license; Studiengesellschaft should not apply; seeks reconsideration or §1292(b) certification. | Denied reconsideration and certification: Court applied Studiengesellschaft analogously; factual dispute over contract meaning makes interlocutory appeal inappropriate. |
| Renewed injunctive relief re: Micron letter threatening fee motion | University: letter is an extra-judicial intimidation warranting injunction. | Micron: letter is protected speech indicating intent to seek fees under §285. | Denied: motion lacked legal memorandum and facts; court saw no basis to enjoin such correspondence. |
| Motion to supplement with new evidence | University: irrelevant prior positions and drafts. | Micron: sought to show inconsistency in University positions. | Denied: evidence irrelevant to reconsideration of legal ruling. |
| Motion for default judgment | University: Micron’s amended answer untimely—default warranted. | Micron: has actively defended case for years; no prejudice to University. | Denied: Seventh Circuit favors decisions on merits; no extreme circumstances shown. |
Key Cases Cited
- Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283 (Fed. Cir. 2016) (district court need not consider inventorship for standing absent a §256 correction)
- Studiengesellschaft Kohle, m.b.H. v. Shell Oil Co., 112 F.3d 1561 (Fed. Cir. 1997) (licensee may owe royalties up to date it notifies licensor it challenges patent validity)
- Baxter Int’l, Inc. v. Abbott Labs., 297 F.3d 544 (7th Cir. 2002) (documents that inform judicial decisions are presumptively public)
- STC.UNM v. Intel Corp., 754 F.3d 940 (Fed. Cir. 2014) (prudential rule requiring joinder of all patent co-owners)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (U.S. 1992) (constitutional standing requirements)