One of Europe’s largest chip makers wants a federal judge to order Purdue Research Foundation to turn over documents concerning two patents that are the focus of a different lawsuit.
STMicroelectronics Inc. filed a motion this month in U.S. District Court in Indianapolis against the research foundation, a private, not-for-profit foundation in West Lafayette that promotes and licenses university research.
The chip maker, based in Geneva, Switzerland, said it needs the documents to defend itself in a patent infringement lawsuit brought last year by Purdue University.
The university filed the original suit last July in federal court in Texas, alleging that the company infringed on two of the university’s patents on metal-oxide semiconductor field-effect transistors that are used in car charging stations, heating and air conditioning systems, and other products.
The transistors control and amplify the flow of electricity. Purdue said the technology was invented by James Cooper, professor emeritus of electrical and computer engineering, and then-doctoral student Asmita Saha. The two scientists developed semiconductors for high-voltage power applications and the university had patents on the technology.
The Swiss chip maker now wants the research foundation to turn over “several categories of documents and information that are highly relevant” to the patent infringement case. They include documents regarding the inventors’ original research, attempts to make a prototype, research grants and government licenses, and attempts to commercialize the “alleged inventions.”
The company said the research foundation has refused to do so, even though it said the judge in the original case opened discovery involving third parties.
The patents were issued in 2009 and 2011. According to the company’s motion, the research foundation owned the patents until June 2021, when it transferred ownership to the university—just weeks before the university sued the company.
“Given PRF’s ownership of these patents until June 2021, (STMicroelectronics) presumes PRF also handled the government grants that funded the research that led to these patents, and also managed the actual and attempted licensing of the technology at issue,” the company’s motion said.
The company does not say why it is seeking an order from a judge in Indiana, when the original case was filed in Texas. The case was assigned to Jane Magnus-Stinson.
In response, attorneys for Purdue Research Foundation said in a court filing that the information being sought by the company could be requested from the university “without burdening nonparties.” It added that the company’s request for emails and other electronically stored information ran afoul of the Texas judge’s order governing proceedings.
The research foundation also objected to the company filing the motion in Indianapolis, and is seeking to consolidate the case with the original lawsuit in the Texas court.
In a filed response, the foundation said the company “is attempting to shift the control of fundamental, party discovery from the Issuing Court to this one, and in doing so is blatantly violating orders from the Issuing Court.”
Kelly Nicholl, the foundation’s vice president of marketing and communications, said in a written statement Monday that the organization is “fully committed to protecting the [intellectual property] generated by the inventors affiliated with Purdue University.”