United States District Court, N.D. California, San Jose Division
ORDERING DENYING MOTION FOR SUMMARY JUDGMENT
(Re: Docket No. 320)
PAUL S. GREWAL, Magistrate Judge.
Plaintiff GSI Technology, Inc. has a problem with its trade secret claim against Defendant United Memories, Inc.: GSI doesn't actually own any of the 576 Mb low latency DRAM semiconductor trade secrets that UMI supposedly misappropriated. Or at least that what UMI says in its motion for summary judgment. UMI and GSI were once partners; UMI designed the 576Mb chip for GSI under a now-terminated contract. GSI claims that after the parties' falling out, UMI put 576 Mb trade secrets that belong to GSI into an "Atris" chip database UMI sold to Defendant Integrated Silicon Solutions, Inc.
Because GSI's efforts to protect its claimed secrets remain in genuine dispute, the court DENIES UMI's motion.
UMI is a Colorado company that provides integrated circuit design and layout services. GSI is a California corporation that designs, develops and markets computer memory products. In May 2008, UMI signed an agreement to provide design and layout services for GSI's 576 Mb chip. The parties initially planned to leverage UMI's work in designing a different, more advanced chip called "Atris" that GSI would supply to Cisco Systems. UMI ultimately delivered to GSI a final 576 MB chip design, along with various UMI internal emails and communications, third-party documents, circuit schematics and a library. But the relationship between the parties had run its course and ultimately terminated.
More than three years later, Cisco solicited bids for a supply of Atris chips. GSI submitted a bid, but lost out to ISSI. After GSI learned that ISSI had worked with UMI to prepare its winning bid, GSI filed this suit against UMI with claims for breach of contract, violation of California's Unfair Competition Law and a declaratory judgment as to the rights conferred by the 576Mb agreement.
GSI later amended its complaint, adding ISSI as a party and asserting four more state law causes of action: fraud, false promise, misappropriation of trade secrets and intentional interference with prospective economic advantage. After the court granted-in-part Defendants' motion to dismiss, a subset of claims remain: GSI's claims for unfair competition and intentional interference with prospective economic advantage against ISSI and GSI's claim for misappropriation of trade secrets against both ISSI and UMI.
The simple matter of identifying the trade secrets at issue has not been simple. For months GSI avoided saying exactly what secrets were taken, pointing to the limited discovery tendered on the subject by UMI. After a hearing last August on seven discovery motions, the court finally ordered GSI to "clearly and specifically identify all its claimed trade secrets to move forward." GSI identified two sets of trade secrets, one for the 576 Mb chip and another for Atris. As to the 576 Mb chip, GSI identified a compilation of roughly 46, 000 pages, characterized as "the 576 Mb chip layout, library and schematic database, delivered in the final form of June 9, 2009, as an entire compilation." In addition, GSI identified five designs within the compilation: the "Coherent Register write' phase design, " "Output Impedance Calibration design, " "Boundary scan design, " "Reduced latency design" and "Broadside column address design."
Focusing exclusively on GSI's underlying ownership of the 576 Mb trade secrets it identified, and GSI's reasonable efforts to preserve such secrets, UMI now moves for summary judgment on GSI's claim that it misappropriated GSI's secrets.
This court has jurisdiction under 28 U.S.C. § 1367. The parties further consented to the jurisdiction of the undersigned under 28 U.S.C. § 636(c) and Fed.R.Civ.P. 72(a).
A court may grant summary judgment when the pleadings, depositions and answers to interrogatories and admissions on file show no genuine dispute of material fact. There is a genuine dispute of material fact when a reasonable jury can return a verdict for the nonmovant based on the evidence. Further, all justified inferences are drawn in favor of the nonmovant. Because a reasonable jury could find that GSI may claim the trade secrets at issue at its own, UMI's motion for summary judgment must be denied.
First, GSI has met its burden to show that the parties' agreement assigned all rights in the claimed secrets to GSI. Article III.1, ...