1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 YANGTZE MEMORY TECHNOLOGIES Case No. 23-cv-05792-RFL (TSH)

COMPANY, LTD.,

8 Plaintiff, DISCOVERY ORDER 9 v. Re: Dkt. No. 147 10 MICRON TECHNOLOGY, INC.,, et al., 11 Defendants. 12 13 Defendant and Counterclaimant Micron Technology, Inc. (“Micron”) moves to compel 14 Plaintiff and Counterclaim Defendant Yangtze Memory Technologies Ltd. and Counterclaim 15 Defendant Yangtze Memory Technologies, Inc. (together, “YMTC”) concerning Micron’s 16 interrogatories (“rogs”) 12-15 and 22 and its requests for production (“RFPs”) 15, 41-45, 48-51, 17 53, and 78. Micron says these discovery requests concern two categories of information: first, 18 YMTC’s importation, sales, offers for sale, sampling, testing, qualification, and related activity 19 (the “Activity-Related Requests”); and second, discovery relating to former Micron employees 20 who are named inventors of YMTC’s Asserted Patents (the “Inventor-Related Requests”), which 21 Micron says is relevant to its claim that it is the true owner of YMTC’s Asserted Patents because a 22 former Micron employee derived the inventions from others at Micron, worked on the inventions 23 at Micron, and executed an assignment agreement with Micron to assign all interest in those 24 inventions to Micron. The Court held a hearing on October 17, 2024, and now issues the 25 following order. 26 A. Activity-Related Requests 27 Rog 12: “Separately for each Accused YMTC Product identified in response to 1 checked, or used the Accused YMTC Product in the United States, including without limitation 2 the identity of the locations, including the address of the locations, of such testing, qualification, 3 checking, or use, the facts and circumstances surrounding such testing, qualification, checking, or 4 use, the identity of each person with knowledge of such testing or use, and the identity of each 5 document or thing that relates to any of the foregoing.” 6 The Court GRANTS the motion to compel as to rog 12 in part. Because the accused 7 products are manufactured in China, every instance in which YMTC tested, qualified, compliance 8 checked or used them in the United States is evidence of importation, as well as use in the U.S. 9 (treating testing, qualifying and compliance checking as forms of use). However, the last phrase 10 (“and the identity of each document or thing that relates to any of the foregoing”) is overbroad. 11 The Court revises that to “and the identity of documents and things sufficient to show the 12 foregoing.” 13 Rog 13: “Separately for each Accused YMTC Product identified in response to 14 Interrogatory No. 11, identify and describe all sales and offers for sale of the Accused YMTC 15 Products since January 1, 2016, including, on a monthly and per-country basis, the number of 16 units sold, the revenue for each sale, the cost of each sale, the profits for each sale, the identity and 17 location of the customer or purchaser for each sale, the identity and location of all distributors, 18 importers, and exporters for each sale, the location to which the products were shipped, the 19 location to which the products were billed, and the country from which the product was shipped.” 20 A big issue in dispute between the parties is whether Micron can take discovery into 21 YMTC’s worldwide sales of the accused products. The Court thinks the answer is yes. Under 22 Brumfield v. IBG LLC, 97 F.4th 854, 870-78 (Fed. Cir. 2024), foreign conduct can be part of 23 patent damages if there is a sufficient causal relationship to domestic infringement. YMTC 24 disputes that Micron will ever be able to make that showing. However, this is a discovery dispute, 25 and Micron does not have to prove the merit of its damages theory into order to take discovery 26 about its damages claims. Cf. 3Com Corp. v. D-Link Systems, Inc., 2007 WL 949596, *3 (N.D. 27 Cal. March 27, 2007) (“3Com is not required to prove its inducing infringement theory to be 1 At the hearing, Micron argued that the requested information could likely be pulled from a 2 database. YMTC disputed that was the case. As discussed at the hearing, the Court adds the 3 limitation “to the extent this information can be pulled from fields in one or more databases,” and 4 otherwise GRANTS the motion as to rog 13. 5 Rog 14: “Describe in detail the discussions and negotiations surrounding each offer for 6 sale, sale, or use in, or import into, the United States of each Accused YMTC Product identified in 7 response to Interrogatory No. 11, including the individual(s) at the customer or purchaser with 8 whom You discussed or negotiated, the identity of the YMTC employees, directors, or officers 9 that participated in the offer for sale, sale, use, or import, the identity of any agreements that 10 resulted from such discussions or negotiations, and the identity of any documents and things 11 relating to any of the foregoing.” 12 As discussed at the hearing, describing in detail the discussions and negotiations 13 surrounding relevant acts is burdensome and not proportional to the needs of the cases. Also, 14 naming each individual at each customer or purchaser is not proportional to the needs of the case. 15 Further, identifying each document that relates to these matters is disproportional. The Court 16 therefore GRANTS the motion in part as to rog 14, narrowed as follows: “Identify documents 17 sufficient to show each offer for sale, sale, or use in, or import into, the United States of each 18 Accused YMTC Product identified in response to Interrogatory No. 11, including the customer or 19 purchaser and their location, the identity of the YMTC employees, directors, or officers that 20 participated in the offer for sale, sale, use, or import, and the identity of any agreements relating to 21 the offer for sale, sale, use, or import.” 22 Rog 15: “Describe YMTCL’s and YMTI’s past and present efforts to obtain approval or 23 qualification of the Accused YMTC Products in the United States, including by identifying the 24 individual(s) at each customer or potential customer with whom You Communicated about such 25 approval or qualification, identifying the YMTCL and YMTI officers, directors, or employees 26 involved with such approvals or qualifications, and identifying all documents and things relating 27 to such approvals or qualifications.” 1 obtain approval or qualification are themselves relevant conduct. They are at most adjacent to 2 relevant conduct, which is importation, offer for sale, sale and use in the United States. Nor does 3 the Court see how this rog seeks information that is relevant to damages. Even if there is some 4 relevance to this information, this rog seeks a detailed narrative answer that is not proportional to 5 the needs of the case. 6 RFP 41: “Documents and things sufficient to identify the locations of manufacture, 7 fabrication, qualification, and testing for each and every Accused YMTC Product that You have 8 made, used, sold, licensed, offered for sale, or imported or made available in the United States or 9 abroad, including the names and addresses of the facilities for manufacturing, fabrication, 10 qualification, and testing.” 11 The Court GRANTS the motion as to RFP 41. Where the accused products are 12 manufactured and so on is relevant, for example, to showing that any present in the United States 13 are imports. As for where the accused products are manufactured and so on that are sold, licensed, 14 etc. “abroad,” as noted above, foreign conduct may be relevant to damages. 15 RFP 42: “All supply agreements, purchase agreements, sales agreements, joint venture 16 agreements, or partnership agreements between YMTC and any other companies, individuals, 17 governments or other persons or entities related to 3D NAND memory.” 18 As became clear at the hearing, the parties did not sufficiently meet and confer concerning 19 RFP 42. The Court ORDERS the parties to meet and confer further concerning this RFP. 20 RFP 43: “All documents and things related to YMTCL’s and YMTI’s past and present 21 efforts to obtain approval for or product qualification of the Accused YMTC Products in the 22 United States.” 23 The Court DENIES the motion as to RFP 43. As with rog 15, Micron has not shown that 24 past or present efforts to obtain approval or qualification are relevant. And even if there is some 25 relevance, producing all such documents is not proportional to the needs of the case. 26 RFP 44: “All documents and things related to YMTCL’s and YMTI’s past and present 27 efforts to test, evaluate, qualify, or validate Accused YMTC Products in the United States, 1 thereto.” 2 As clarified at the hearing, Micron is seeking documents about efforts to test, evaluate, 3 qualify, or validate the accused products in the United States – meaning that the testing, 4 evaluating, qualifying or validating happened in the United States, rather than in some other 5 country for later contemplated sales into the United States. This seems relevant because testing, 6 evaluating, qualifying or validating are forms of using, and since the products are manufactured in 7 China, this would also be evidence that importing had occurred. However, as discussed at the 8 hearing, “all documents and things” seems overbroad. The Court GRANTS in part the motion as 9 to RFP 44 but limits it to “documents sufficient to show YMTCL’s and YMTI’s past and present 10 efforts to test, evaluate, qualify, or validate Accused YMTC Products in the United States.” 11 RFP 45: “All marketing materials, white papers, application notes, brochures, pamphlets, 12 flyers, sales collateral, or other documents provided to any customer or potential customer 13 regarding the Accused YMTC products or YMTC’s Xtacking® technology, regardless of version 14 or generation.” 15 As discussed at the hearing, once “or other documents” is struck from this RFP, the extent 16 of the burden in responding to it depends on how many document custodians there are and what 17 non-custodial sources are being searched. The Court does not see how this RFP would be 18 burdensome if the search for responsive documents is limited to central files likely to contain 19 marketing materials and to documents possessed by a reasonable number of custodians. Further, 20 these documents are relevant to sales and offers to sell, including for foreign conduct that may be 21 relevant to damages. The parties report that they do not have an agreement on custodians and non- 22 custodial sources. Accordingly, the Court ORDERS the parties to meet and confer on document 23 custodians and non-custodial sources. If the parties cannot reach an agreement, they should file 24 another joint discovery letter brief. In the meantime, the Court STRIKES “or other documents” 25 and “YMTC’s Xtacking® technology” (because if it is not an accused YMTC product, the Court 26 does not see why these documents would be relevant) and otherwise GRANTS the motion as to 27 RFP 45. 1 Accused YMTC Products between YMTC and YMTI.” 2 The Court GRANTS the motion as to RFP 48. Because YMTI is in this district, transfers 3 of accused products from YMTC to YMTI would seem to be imports. Technically, the RFP also 4 reaches transfers from YMTI to YMTC. If that has ever happened, those would be accused 5 products that had previously been imported. 6 RFP 49: “Documents and things sufficient to describe all sales or offers for sale of the 7 Accused YMTC Products made on behalf of YMTC by an employee, manager, member, director, 8 or board member of YMTI.” 9 The Court GRANTS the motion as to RFP 49. Because YMTI is in this district, its sales 10 or offers to sell would likely be in the United States, but as explained above, the Court also thinks 11 foreign sales may be relevant to damages, so sales or offers to sell by YMTI to other countries are 12 also relevant. 13 RFP 50: “Documents sufficient to describe all sales and offers for sale of the Accused 14 YMTC Products since January 1, 2016, including, on a monthly and per-country basis, the number 15 of units sold, the revenue for each sale, the cost of each sale, the profits for each sale, the identity 16 and location of the customer or purchaser for each sale, the identity and location of all distributors, 17 importers, and exporters for each sale, the location to which the products are shipped, the location 18 to which the products are billed, and the country from which the product was shipped.” 19 The Court GRANTS the motion as to RFP 50. As explained above, global sales may be 20 relevant to damages. 21 RFP 51: “Documents and things sufficient to show and describe in detail Your historical, 22 existing, and projected sales, monthly and quarterly revenue, profits, profit margins, pricing, 23 pricing strategies, market shares, and costs—including without limitation development, personnel, 24 material, advertising, promotion, sales commission, and equipment costs—for each Accused 25 YMTC Product existing or under development, from the date that You began to develop each 26 product.” 27 It became clear at the hearing that the parties have not met and conferred sufficiently about 1 RFP 53: “Documents and things sufficient to show the first prototypes, first testing, first 2 release, and first use of each Accused YMTC Product.” 3 The Court GRANTS the motion as to RFP 53. Where these events happened (such as 4 whether they happened in the United States) is relevant. 5 B. Inventor-Related Requests 6 Rog 22: “For YMTC employees who were previously Micron engineers, including but not 7 limited to Hongbin Zhu, Daesik Song, Jun Liu, Zhenyu Lu, Qian Tao, Yushi Hu, and Changhyun 8 Lee, identify when each was hired by YMTC, current and previous job titles and responsibilities 9 of each from the time of hire at YMTC to the present, and any documents or things that relate to or 10 originate from any of the foregoing employees’ work at Micron.” 11 Having considered the matter further since the hearing, the Court DENIES the motion as 12 to rog 22. In its third and fourth counterclaims, Micron alleges it is the true owner of the ’322 and 13 ’254 patents because Hongbin Zhu invented that technology while employed at Micron and 14 assigned ownership of it to Micron. However, rog 22 seeks information about every YMTC 15 employee who was previously a Micron engineer, not just those who are listed as inventors of the 16 ’322 and ’254 patents, and even most of the individuals listed by name in the rog are not named 17 inventors for those patents. Further, the requested identification of documents is not limited to 18 things relating to the ’322 and ’254 patents. The Court concludes that rog 22 is in no way 19 calibrated at relevant and proportional discovery concerning Micron’s third and fourth 20 counterclaims. Micron argues that this rog is also relevant to its affirmative defenses of invalidity 21 and standing. However, as pled in the answer, to the extent the invalidity defense rests on the 22 contention that YMTC’s patents actually belong to Micron, that is alleged only as to the ’322 and 23 ’254 patents. (Paragraph 3 in Micron’s affirmative defenses may very well embrace other 24 invalidity defenses, but the one in paragraph 4 is specific to these two patents.) Similarly, 25 Micron’s standing defense is limited to the ’322 and ’254 patents, again based on the claim that 26 Micron is the true owner of those patents. Accordingly, none of these theories of relevance comes 27 anywhere close to justifying this rog. Rather, this rog seems like an attempt to take discovery into 1 RFP 15: “All documents and things relating to communications between any Named 2 Inventor and YMTC relating to the YMTC Asserted Patents, Related Patents or Patent 3 Applications, Accused YMTC Products, or this Action.” 4 The Court GRANTS the motion as to RFP 15. Although the RFP is broad, 5 communications are likely to be custodial documents, and so the breadth of the RFP will 6 necessarily be limited by the number of custodians, and presumably search terms for the named 7 inventors would make responsive documents easy to find. 8 RFP 73: “Documents sufficient to identify all YMTC engineers who previously worked at 9 Micron on Micron’s 3D NAND memory products, processes, or technology.” 10 RFP 74: “All documents and things obtained from Micron or from any present or former 11 employee of Micron.” 12 RFP 75: “All documents and things reflecting communications between any current or 13 former employee of Micron and YMTC regarding Micron’s 3D NAND memory products, 14 processes, or technology including but not limed to Hongbin Zhu, Daesik Song, Jun Liu, Zhenyu 15 Lu, Qian Tao, Yushi Hu, and Changhyun Lee.” 16 RFP 76: “All documents and things related to 3D NAND memory obtained directly or 17 indirectly from any current or former employee of Micron, including without limitation from 18 Hongbin Zhu, Daesik Song, Jun Liu, Zhenyu Lu, Qian Tao, Yushi Hu, and Changhyun Lee.” 19 RFP 77: “All documents, things, and communications related to Micron’s 3D NAND 20 memory products, their structure, their operation, or their fabrication obtained from Micron or any 21 former employee of Micron, including without limitation from Hongbin Zhu, Daesik Song, Jun 22 Liu, Zhenyu Lu, Qian Tao, Yushi Hu, and Changhyun Lee.” 23 RFP 78: “All documents, things, and communications that originated from Micron or from 24 a Micron employee, including all documents, things, and communications that any former 25 employee of Micron, including without limitation Hongbin Zhu, Daesik Song, Jun Liu, Zhenyu 26 Lu, Qian Tao, Yushi Hu, and Changhyun Lee, brought from Micron to YMTC.” 27 The Court DENIES the motion as to RFPs 73-78. As with rog 22, there is simply no 1 attempt to develop a trade secret misappropriation claim that so far has not been pled. 2 IT IS SO ORDERED. 3 4 Dated: October 18, 2024 5 TAA. | □□

THOMAS S. HIXSON

6 United States Magistrate Judge 7 8 9 10 11 12

© 15 16

= 17

Z 18

19 20 21 22 23 24 25 26 27 28