`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`Richmond Division
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Plaintiff,
`
`V.
`
`Civil Action No. 3:14cv757
`
`NVIDIA CORPORATION,
`Defendant.
`
`MEMORANDUM OPINION
`
`This matter
`
`came before the Court
`
`on NVIDIA'S MOTION TO
`
`STRIKE THE
`
`TESTIMONY AND REVERSE
`
`ENGINEERING REPORTS OF DR.
`
`JEONGDONG CHOE PURSUANT TO RULE 37(c)
`
`{Docket No. 744). Having
`
`considered the associated papers and oral arguments, and for the
`
`reasons stated below,
`
`the Court orally granted the motion in
`
`part and denied the motion in part. The Court granted a mistrial
`
`as to the 6,287,902 ("'902")
`
`and 8,252,675 ("'675") patents in
`
`order to provide sufficient
`
`time during which NVIDIA Corporation
`
`might engage in curative expert discovery, but denied the motion
`
`as
`
`it pertained to striking the testimony or
`
`reports of Dr.
`
`Jeongdong Choe. This Memorandum Opinion followed.
`
`BACKGROUND
`
`This patent
`
`infringement
`
`action was
`
`brought
`
`by
`
`Samsung
`
`Electronics Co., Ltd.
`
`("Samsung")
`
`against NVIDIA Corporation
`
`("NVIDIA"), alleging infringement of
`
`the '902 and '675 patents,
`
`as well as
`
`the 6,819,602 patent {"'602").
`
`(Second Am. Compl.,
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 2 of 36 PageID# 42941
`
`Docket No. 81).^
`
`As
`
`to the
`
`'675 and
`
`'902 patents, Samsung
`
`alleged,
`
`inter alia,
`
`that NVIDIA had infringed by importing,
`
`selling, and offering to sell infringing products that were made
`
`by an infringing process and under an infringing design.
`
`(Second
`
`Am. Compl.,
`
`551 1323-2135, 2288-2596}. More specifically, Samsung
`
`alleged that NVIDIA sold, offered for
`
`sale and imported the
`
`accused
`
`products
`
`from
`
`non-party
`
`Taiwan
`
`Semiconductor
`
`Manufacturing Company ("TSMC").
`
`Id.
`
`During
`
`discovery,
`
`Samsung
`
`sought
`
`evidence
`
`from TSMC
`
`regarding the design and
`
`the manufacturing of
`
`the
`
`allegedly
`
`infringing products
`
`(computers and the chips).
`
`(E.g., Pl.'s 0pp.
`
`to NVIDIA's Mtn.
`
`to Strike, Docket No.
`
`755,
`
`17)
`
`("Pl.'s Choe
`
`Mem."). TSMC was non-responsive to entreaties from the parties
`
`and the Court.
`
`Id.
`
`In the absence of evidence from TSMC about
`
`the design and the manufacturing process,
`
`Samsung elected to
`
`have an expert "tear down"
`
`the allegedly infringing chips
`
`and
`
`offer an opinion about
`
`the design of the accused chips and how
`
`TSMC had made them.
`
`Id. Samsung chose Dr.
`
`Jeongdong Choe
`
`("Dr.
`
`Choe"),
`
`an
`
`expert
`
`in
`
`reverse
`
`engineering
`
`employed
`
`by
`
`Techlnsights,
`
`Inc.
`
`("Techlnsights")
`
`to provide an expert
`
`report
`
`^ Other parties and claims were originally part of the action. By
`the time of trial,
`the parties had been whittled down to Samsung
`and
`NVIDIA,
`and
`the
`claims
`had
`been whittled
`down
`to
`infringement of the '602,
`'675, and '902 patents.
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 3 of 36 PageID# 42942
`
`on the design and structure of
`
`the allegedly infringing chips
`
`and the process that TSMC used to make those chips.
`
`Id.
`
`At
`
`the outset of
`
`the case,
`
`the parties, with the approval
`
`of the Court, altered some of the disclosure obligations of Fed.
`
`R. Civ.
`
`P.
`
`26
`
`through
`
`a Stipulated Discovery Order, which
`
`provided that "all materials generated by a
`
`testifying expert
`
`with respect
`
`to that person's work are exempt
`
`from discovery
`
`unless relied upon by the expert
`
`in forming any opinions in this
`
`litigation." (Docket No. 198, 8-9)
`
`(emphasis added)In the run
`
`up to trial, NVIDIA served a Request for Production of documents
`
`seeking "documents and things generated by You or other(s)
`
`on
`
`your
`
`behalf
`
`...
`
`for
`
`litigation or
`
`non-litigation
`
`purposes,
`
`including but not
`
`limited to any teardown or reverse engineering
`
`reports, electron microscope images, product sample analysis, or
`
`product
`
`comparison
`
`reports."
`
`(Docket No.
`
`751,
`
`Ex. A).
`
`In
`
`response
`
`to
`
`that
`
`discovery
`
`request
`
`and
`
`pursuant
`
`to
`
`the
`
`Stipulated Discovery Order, Samsung committed to provide NVIDIA
`
`with the reverse engineering documents
`
`relied upon by Dr. Choe
`
`Federal Rules
`the
`like
`^ The Stipulated Discovery Order,
`protected communications between counsel and testifying experts
`(Docket No.
`193 S[ 5);
`see also, e.g.. Republic of Ecuador
`v
`Mackay,
`742
`F.3d
`860,
`869-70
`(9th Cir.
`2014); Republic of
`Ecuador
`v. Hinchee,
`741
`F.3d
`1185,
`1195
`(11th Cir.
`2013)
`Republic of Ecuador v.
`For
`Issuance of
`a
`Subpoena Under
`28
`U.S.C.
`Sec.
`1782(a),
`735 F.3d 1179,
`1186
`(10th Cir.
`2013)
`Siemens Med.
`Sols.
`USA,
`Inc.
`v.
`Saint-Gobain Ceramics
`Plastics,
`Inc., 637 F.3d 1269, 1286 (Fed. Cir. 2011).
`
`&
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 4 of 36 PageID# 42943
`
`in connection with his expert
`
`report.
`
`(Def.'s Mem.
`
`in Supp. of
`
`Mtn.
`
`to Strike the Testimony and Reverse Engineering Reports of
`
`Dr.
`
`Jeongdong Choe Pursuant
`
`to R. 37(c), Docket No.
`
`745,
`
`4-5
`
`("Def.'s Choe Mem."); Docket No. 751, Exs. B-E).
`
`Dr. Choe ultimately produced an expert report
`
`that
`
`included
`
`thirteen
`
`(and,
`
`following
`
`a
`
`supplement,
`
`fifteen)
`
`reverse
`
`engineering reports
`
`that cited numerous cross-sectional
`
`images
`
`of the allegedly infringing chips.
`
`(Def.'s Choe Mem. 6-8; Docket
`
`No. 751, Exs. H-J) . At his deposition. Dr. Choe testified that
`
`his
`
`expert
`
`reports
`
`and exhibits were
`
`accurate and complete.
`
`(Def.'s Choe Mem. 8; Docket No. 751, Ex. K 19:7-11; 41:16-42:11;
`
`46:16-17:14; 47:17-48:22; 289:13-19). Dr. Choe's
`
`report
`
`served
`
`as
`
`the
`
`foundation
`
`upon which
`
`both
`
`parties
`
`built
`
`their
`
`infringement
`
`cases because both parties'
`
`infringement experts
`
`based their analyses on Dr. Choe's explanation of the design and
`
`manufacture of accused chips produced for NVIDIA by TSMC.
`
`(E.g.,
`
`PI.'s Choe Mem. 16).
`
`During cross-examination at trial, Dr. Choe testified that,
`
`in forming his opinions,
`
`he
`
`had relied on
`
`images
`
`that were
`
`disclosed neither
`
`in his
`
`expert
`
`reports nor
`
`to counsel
`
`for
`
`either side.
`
`(Def.'s Choe Mem. 9-14;
`
`see also, e.g., Tr.
`
`Jan.
`
`28, 2016 518:1-519:22, 697:14-16; 705:16-21).
`
`In particular. Dr.
`
`Choe testified that he had reviewed a
`
`large number of so-called
`
`EDS
`
`and EEL
`
`images
`
`that were not disclosed,
`
`and that he had
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 5 of 36 PageID# 42944
`
`relied on
`
`some of
`
`those
`
`images
`
`in reaching the
`
`conclusions
`
`stated in his expert
`
`reports and in his testimony at
`
`trial.
`
`In
`
`essence, Dr. Choe explained that he had used both the disclosed
`
`and undisclosed images:
`
`(1)
`
`to select
`
`the most
`
`representative
`
`images for disclosure in his report; and (2)
`
`to confirm that
`
`the
`
`images that he had reproduced in his reports and testified to at
`
`trial were accurate. According to Dr. Choe,
`
`the process that he
`
`followed
`
`is
`
`a
`
`standard
`
`process
`
`used
`
`both
`
`by Techlnsights
`
`specifically and
`
`by practitioners of
`
`semi-conductor
`
`reverse-
`
`engineering generally.
`
`Id.
`
`The Court
`
`instructed Samsung
`
`to procure
`
`the undisclosed
`
`images
`
`from Techlnsights
`
`and
`
`to
`
`provide
`
`them to
`
`NVIDIA
`
`immediately.
`
`(Tr.
`
`Jan. 29, 2016 744:8-21).
`
`Samsung did so.
`
`Id.
`
`Thereafter,
`
`and while trial was progressing on the '602 patent,
`
`NVIDIA's
`
`expert witness
`
`on
`
`infringement. Dr.
`
`Jack Lee
`
`("Dr.
`
`Lee"),
`
`performed a brief preliminary exam of
`
`the previously
`
`undisclosed
`
`images.
`
`NVIDIA
`
`concluded
`
`that
`
`some
`
`of
`
`the
`
`previously undisclosed materials
`
`upon which Dr. Choe
`
`relied
`
`demonstrated that silicon was present
`
`in the TiN/TaTiN layer of
`
`the
`
`allegedly infringing chips.
`
`(Def.'s Choe Mem.
`
`9).
`
`The
`
`presence of silicon in that
`
`layer
`
`is an important aspect of
`
`NVIDIA's non-infringement defense in this case.
`
`Id. The parties
`
`agreed upon an accelerated briefing schedule to address how this
`
`apparent discovery violation should be handled.
`
`(Tr.
`
`Jan.
`
`29,
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 6 of 36 PageID# 42945
`
`2016
`
`963:17-964:10). This motion
`
`and
`
`the
`
`associated papers
`
`followed. Following oral argument,
`
`the Court declared a mistrial
`
`on the '675 and '902 patents, but proceeded with trial on the
`
`'602 patent.
`
`LAW AlID APPLICATION
`
`NVIDIA's motion for sanctions was filed pursuant
`
`to Fed. R.
`
`Civ. P. 37(c)(1), which provides that:
`
`If a party fails to provide information or
`identify a witness as required by Rule 26(a)
`or
`(e) ,
`the party is not allowed to use that
`information or witness to supply evidence on
`a motion,
`at
`a
`hearing,
`or at
`a
`trial,
`unless
`the
`failure
`was
`substantially
`justified or is harmless.
`In addition to or
`instead of
`this
`sanction,
`the
`court,
`on
`motion and after giving an opportunity to be
`heard:
`payment
`(A) may order
`including
`expenses,
`caused by the failure:
`(B) may
`inform the
`jury of
`failure; and
`(C) may impose other appropriate sanctions,
`including any of
`the orders
`listed in
`Rule 37(b)(2)(A)(i)-(vi).
`
`reasonable
`the
`of
`attorney's
`fees,
`
`the party's
`
`Fed. R. Civ.
`
`P.
`
`37 (b) (2) (A) (i) - (vi) provides
`
`the following by
`
`way of alternate or additional sanctions:
`
`(i)
`
`the matters embraced in
`directing that
`the order or other designated facts be
`taken as
`established for purposes of
`the
`action,
`as
`the prevailing party
`claims;
`(ii) prohibiting the disobedient party from
`supporting
`or
`opposing
`designated
`claims or defenses, or
`from introducing
`designated matters in evidence;
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 7 of 36 PageID# 42946
`
`(iii)striking pleadings in whole or in part;
`(iv) staying further proceedings until
`the
`order is obeyed;
`dismissing the action or proceeding in
`whole or in part;
`rendering
`a
`default
`the disobedient party
`
`judgment
`
`against
`
`(v)
`
`(vi)
`
`The process of deciding whether to impose sanctions such as
`
`those
`
`requested
`
`by NVIDIA involves
`
`three major
`
`steps:
`
`(1)
`
`determining that
`
`a violation of a discovery order or one of the
`
`Federal Rules
`
`of Civil
`
`Procedure
`
`occurred;
`
`(2)
`
`determining
`
`whether that violation was harmless and substantially justified,
`
`by reference to Southern States Rack & Fixture,
`
`Inc. v. Sherwin-
`
`Williams Co., 318 F.3d 592, 597 {4th Cir. 2003); and (3)
`
`fitting
`
`a sanction to the violation, if one is found.
`
`A.
`
`Establishing The Existence Of A Violation
`
`First,
`
`a court determines whether
`
`a violation of a
`
`rule of
`
`civil procedure or
`
`a court order has occurred. Fed. R. Civ. P.
`
`26 requires
`
`that an expert witness's
`
`report must
`
`include "the
`
`facts or data considered by the witness in forming" his opinion.
`
`Fed. R. Civ. P.
`
`26 (a) (2) (b) (ii)
`
`(emphasis added). However,
`
`the
`
`parties, with the Court's
`
`approval,
`
`agreed
`
`to a Stipulated
`
`Discovery Order
`
`that provided:
`
`"all materials generated by a
`
`testifying expert with respect
`
`to that person's work are exempt
`
`from discovery unless relied upon by the expert
`
`in forming any
`
`opinions
`
`in this litigation."
`
`(Docket No.
`
`198,
`
`8-9)
`
`(emphasis
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 8 of 36 PageID# 42947
`
`added). Thus,
`
`Samsung's obligation here was
`
`to disclose
`
`the
`
`documents upon which Dr. Choe relied.
`
`At
`
`trial, Dr. Choe's
`
`testimony was
`
`inconsistent
`
`about
`
`whether he relied upon the undisclosed scans.
`
`(E.g., Def.'s Choe
`
`Mem. 9-14, 16-17). On January 28, 2016,
`
`in response to questions
`
`on
`
`cross-examination by NVIDIA's
`
`counsel. Dr.
`
`Choe
`
`clearly
`
`stated that he had relied upon material
`
`that was not disclosed
`
`as part of his report.
`
`(Tr.
`
`Jan 28,
`
`2016 697:14-16, 702:10-22;
`
`Def.'s Choe Mem, 10-13).^ On January 29, 2016, Dr. Choe stated,
`
`with equal clarity,
`
`that he had not
`
`relied upon any material
`
`that was not disclosed as part of his report.
`
`(Tr. Jan. 29, 2016
`
`941:2-5; PI.'s Choe 0pp. 5-6). The parties concur that
`
`the Court
`
`is both the appropriate factfinder and the proper
`
`judge of Dr.
`
`^ Aside from several minutes of introductory remarks in English,
`Dr. Choe testified in Korean through an interpreter, whose work
`was verified by a check interpreter. The parties briefly tussled
`over whether Dr. Choe's understanding of "relied upon"
`is the
`result of potential
`linguistic difficulties.
`(E.g., Def.'s Choe
`Mem.
`1-2,
`18-21; Pl.'s Choe Mem.
`6). The Court declines
`to
`investigate potential alternate meanings of "relied upon":
`the
`interpreters were
`skilled and
`capable,
`and
`they articulated
`concerns
`about
`linguistic nuances when
`such
`concerns
`arose.
`(E.g., Tr. Jan. 29, 2016, 940:18-19). The Court is not qualified
`to judge linguistic nuances, and must rely upon the work of the
`translators. Moreover,
`if the Court began second-guessing the
`interpreters'
`translations of record,
`it would wreak havoc upon
`the Court and the parties' ability to rely upon that record. The
`Court and the parties are entitled to -
`and for
`the sake of an
`orderly record, must
`-
`rely upon
`the work
`of
`the
`capable
`translators.
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 9 of 36 PageID# 42948
`
`Choe's credibility on this issue.
`
`(Def.'s Choe Mem. 16-18; Pl.'s
`
`Choe 0pp. 6-7).
`
`The Court
`
`finds
`
`that,
`
`in keeping with procedures
`
`used
`
`regularly by Techlnsights and others in the industry. Dr. Choe
`
`did rely upon images
`
`that were not disclosed with his expert
`
`report.
`
`The Court notes
`
`that,
`
`in failing to disclose
`
`those
`
`documents, Dr.
`
`Choe did not
`
`act duplicitously or with
`
`any
`
`awareness
`
`that he was not fulfilling Samsung's obligations.'' It
`
`is equally clear
`
`that Dr. Choe did not explain to Samsung's
`
`counsel
`
`that,
`
`in following his
`
`usual practice,
`
`he
`
`had not
`
`disclosed all the materials upon which he had relied.
`
`In an attempt
`
`to argue that
`
`the nondisclosure was still not
`
`a violation,
`
`Samsung characterizes the undisclosed material as
`
`"raw data
`
`and
`
`back-up
`
`files,"
`
`that,
`
`according
`
`to Samsung,
`
`typically fall outside
`
`the
`
`reach of Fed.
`
`R. Civ.
`
`P.
`
`26{a).
`
`(Pl.'s Choe 0pp. 7). There are two significant problems with
`
`Samsung's
`
`argument. First,
`
`the parties
`
`supplanted Rule 26(a)
`
`with
`
`their
`
`own
`
`Stipulated Discovery Order
`
`that
`
`required
`
`disclosure of whatever Dr. Choe relied upon to form or support
`
`his opinions.
`
`Thus,
`
`even if the non-disclosed documetns were
`
`^ The Court observes that standard practice in the semi-conductor
`industry is not standard practice in civil discovery. When the
`Court,
`by rule or order,
`requires greater disclosure than is
`standard in the industry,
`it is the Court's rule or order
`that
`governs.
`
`9
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 10 of 36 PageID# 42949
`
`"raw data and back-up files," they had to be disclosed if Dr.
`
`Choe relied on them.
`
`Because Dr. Choe relied upon these scans,
`
`they were
`
`subject
`
`to disclosure.
`
`Second,
`
`the record suggests
`
`that
`
`the undisclosed information was not
`
`just "raw data or back
`
`up files." Much of the omitted materials were the same type of
`
`materials -
`
`EEL and EDS
`
`scans
`
`-
`
`that were
`
`submitted with Dr.
`
`Choe's
`
`expert
`
`report.
`
`(Def.'s Choe Mem.
`
`11-18). Dr. Choe's
`
`report
`
`-
`
`following semiconductor
`
`industry standard procedures -
`
`disclosed only one-tenth of
`
`these materials.
`
`{Def.'s Choe Br.
`
`17-18) . On the record before the Court,
`
`the materials disclosed
`
`are of the same kind and form (though not
`
`the exact content) as
`
`the materials that were not disclosed.
`
`Thus, it is not possible
`
`to characterize them as "raw date or back-up files" which would
`
`not be subject to the Stipulated Discovery Order.
`
`On this basis,
`
`the Court finds that, by failing to disclose
`
`all of
`
`the materials
`
`relied upon
`
`by
`
`its
`
`expert. Dr. Choe,
`
`Samsung violated the Stipulated Discovery Order. Although the
`
`nondisclosure was not
`
`known by Samsung or
`
`its counsel,
`
`it
`
`is
`
`nonetheless the responsibility of counsel
`
`to make clear to their
`
`experts the scope of applicable disclosure obligations.
`
`Thus,
`
`Dr. Choe's
`
`nondisclosure
`
`and
`
`the
`
`resulting
`
`violation must
`
`ultimately be attributed to Samsung.
`
`B.
`
`Substantially Justified And Harmless (Southern States)
`
`10
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 11 of 36 PageID# 42950
`
`standing alone, nondisclosure does not
`
`require or
`
`justify
`
`corrective action. A court only takes action if the failure to
`
`disclose was not
`
`(1)
`
`substantially justified and (2) harmless.
`
`Fed. R. Civ. P. 37(c)(1); Southern States,
`
`318 F.3d at 595.
`
`In
`
`the Fourth Circuit,^ substantial
`
`justification and harmlessness
`
`are determined by reference to five factors stated in Southern
`
`States:
`
`(1)
`
`The surprise to the party against whom the evidence would
`
`be offered.
`
`(2)
`
`The ability of that party to cure the surprise.
`
`(3)
`
`The extent
`
`to which allowing the evidence would disrupt
`
`the t r i a l .
`
`(4)
`
`The importance of the evidence,® and
`
`(5)
`
`The nondisclosing party's explanation for
`
`its failure to
`
`disclose the evidence.^
`
`a district court's decision to
`reviews
`^ The Federal Circuit
`the law of
`the regional circuit. Tokai
`exclude evidence under
`Corp. V. Easton Enterprises,
`Inc.,
`632 F.3d 1358,
`1364
`(Fed.
`Cir. 2011) .
`
`save improperly
`®"Importance of the evidence" cannot, by itself,
`disclosed evidence from being found unjustified or non-harmless.
`Even if a party's entire case hangs on one expert,
`such that
`excluding
`the
`expert
`leads
`inevitably
`to
`summary
`judgment
`against
`that party,
`then that expert's testimony may be excluded
`if
`that
`expert's
`testimony was
`improperly disclosed. E.g.,
`Zaklit v. Global Linguist Solutions, LLC, 2014 WL 4925780 (E.D.
`Va. Sept. 30, 2014).
`
`11
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 12 of 36 PageID# 42951
`
`Southern States,
`
`318 F.3d at 597. The burden of establishing
`
`these
`
`factors
`
`lies with the nondisclosing party. Wilkins
`
`v.
`
`Montgomery,
`
`751 F.3d 214, 222
`
`(4th Cir. 2014); Southern States,
`
`318
`
`F.3d
`
`at
`
`596.
`
`If
`
`the
`
`failure
`
`to
`
`disclose
`
`was
`
`not
`
`"substantially justified" and "harmless,"
`
`then then the court
`
`proceeds to impose a sanction.
`
`Applying the Southern States factors
`
`to this case,
`
`it
`
`is
`
`clear
`
`that Samsung's
`
`failure to disclose was neither harmless
`
`nor substantially justified.
`
`Each factor will be considered in
`
`turn.
`
`1.
`
`Surprise and Cure
`
`Samsung
`
`argues
`
`that NVIDIA cannot
`
`be
`
`surprised by
`
`the
`
`nondisclosure
`
`and was
`
`able
`
`to easily cure
`
`the nondisclosure
`
`because NVIDIA was on notice about Dr. Choe's methods months
`
`before
`
`this
`
`trial.
`
`Samsung
`
`also
`
`points
`
`out
`
`that,
`
`through
`
`hearings
`
`and depositions, NVIDIA received notice as early as
`
`August
`
`31,
`
`2015,
`
`that Dr.
`
`Choe
`
`had
`
`relied on
`
`undisclosed
`
`documents.
`
`(Pl.'s Choe 0pp. 9-11).® Thus, Samsung argues, NVIDIA
`
`^ Bad faith is explicitly not one of the Southern States factors.
`E.g., Southern States, 318 F.3d at 596 ("excluding evidence only
`when the nondisclosing party acted in bad faith would undermine
`the basic purpose of Rule 37(c)(1):
`preventing surprise and
`prejudice
`to the
`opposing party);
`Rambus,
`Inc.
`v.
`Infineon
`Technologies, AG, 145 F. Supp. 2d 721, 725-27 (E.D. Va. 2001).
`
`that NVIDIA was on notice of Dr. Choe's
`® Samsung also argues
`scan-selection methods as early as May 18, 2015, when Dr. Choe
`
`12
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 13 of 36 PageID# 42952
`
`could not have been surprised by the testimony at trial,
`
`and it
`
`would have been easy for NVIDIA to have cured this violation if
`
`NVIDIA had acted when it received notice.® (Pl.'s Choe 0pp. 8-
`
`14). On this record, it is evident
`
`that Dr. Choe's disclosure of
`
`the process that he followed at various proceedings put counsel
`
`for NVIDIA and Samsung on notice that Dr. Choe's
`
`report would
`
`disclose only some of the scans upon which he relied.
`
`However, notice in deposition testimony does not
`
`render
`
`a
`
`failure
`
`to
`
`disclose
`
`in
`
`the
`
`expert
`
`report
`
`unsurprising
`
`or
`
`curable,
`
`even when that deposition testimony completely covers
`
`the material
`
`that
`
`should have been disclosed. E.g., Perkins v.
`
`United States,
`
`626
`
`F.
`
`Supp.
`
`2d
`
`587,
`
`591-92
`
`(E.D. Va.
`
`2009)
`
`(relying on Carr v. Deeds,
`
`453 F.3d 593,
`
`604
`
`(4th Cir. 2006)).
`
`This
`
`is because "Rule 26 disclosures are often the centerpiece
`
`of discovery in litigation that uses expert witnesses. A party
`
`that
`
`fails to provide these disclosures unfairly inhibits its
`
`opponent's ability to properly prepare, unnecessarily prolongs
`
`litigation,
`
`and undermines
`
`the district court's management of
`
`the case." Carr,
`
`453 F.3d 593,
`
`at
`
`604; Campbell v. United
`
`separate ITC proceeding also between Samsung
`was deposed in a
`and NVIDIA.
`(Pl.'s Choe 0pp. 9). It is the Court's understanding
`that NVIDIA's outside
`counsel
`in this
`case
`also represents
`NVIDIA in the ITC proceeding.
`® The Court observes that this argument cuts both ways. If NVIDIA
`was on notice of the violation in August,
`then Samsung also was
`on notice on the violation in August,
`and could have remedied
`the violation before trial.
`
`13
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 14 of 36 PageID# 42953
`
`States, 2011 WL 588344 (E.D. Va. Feb. 8, 2011)
`
`(noting that Rule
`
`26(a)(2)
`
`exists partly so
`
`that parties are not
`
`required to
`
`discover
`
`the basis
`
`for an expert's testimony entirely through
`
`deposition testimony);
`
`see also Abraham v. Cty. of Greenville,
`
`237 F.3d 386, 392-93
`
`(4th Cir. 2001)
`
`(noting that one party's
`
`failure
`
`to
`
`file
`
`a motion
`
`to
`
`compel
`
`did
`
`not waive
`
`the
`
`nondisclosing party's obligation to disclose); Adams v. Kroqer
`
`Ltd. P'ship I, No. 3:11-CV-141, 2013 WL 6229379, at *2
`
`(E.D. Va.
`
`Dec.
`
`2,
`
`2013)
`
`(noting the general proposition that what
`
`an
`
`opposing party should have known does not affect a nondisclosing
`
`party's obligations). A failure to disclose in the right
`
`form,
`
`at
`
`the
`
`right
`
`time,
`
`impedes
`
`discovery
`
`at
`
`the
`
`time
`
`of
`
`nondisclosure,
`
`such that
`
`later putting the opposing party on
`
`notice
`
`does
`
`not
`
`render
`
`the
`
`nondisclosure
`
`unsurprising
`
`or
`
`curable.
`
`The United States Court of Appeals
`
`for
`
`the Fourth Circuit
`
`and the district courts in this circuit are clear that an expert
`
`report
`
`should be
`
`a
`
`comprehensive
`
`document
`
`that,
`
`by
`
`itself,
`
`provides all
`
`the expert's opinions
`
`that will
`
`be offered at
`
`trial,
`
`along with the bases
`
`for
`
`those opinions. Campbell v.
`
`United States,
`
`470 Fed. App'x 153
`
`(4th Cir.
`
`2012); Zakit v.
`
`Global Linguist Solutions,
`
`LLC,
`
`2014 WL 4925780, at
`
`*3
`
`("the
`
`advisory committee intended that an expert's written report be
`
`so detailed and complete that it would Mispense[] with the need
`
`14
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 15 of 36 PageID# 42954
`
`to depose
`
`the expert."); Sharpe v. United States,
`
`230 F.R.D.
`
`452, 458 (E.D. Va. 2005). The significance of the expert report
`
`as
`
`the proper
`
`time
`
`and place
`
`for
`
`complete disclosure
`
`finds
`
`support
`
`in the structure of discovery: experts provide reports,
`
`and those reports form the basis for informed deposition-taking.
`
`Campbell,
`
`2011 WL 588344 at *3
`
`(noting that
`
`"Rule 26 provides
`
`that
`
`an
`
`expert deposition
`
`^may
`
`be
`
`conducted only after
`
`the
`
`[expert's]
`
`report
`
`is provided'"
`
`to support
`
`the notion that
`
`revealing information at
`
`a deposition does not alleviate the
`
`surprise or incurability of a failure to disclose in a report).^®
`
`In conclusion,
`
`the
`
`record is clear
`
`that NVIDIA was
`
`on
`
`notice that Dr, Choe's
`
`report would disclose only a portion of
`
`the
`
`scans upon which he
`
`relied. However,
`
`that notice is not
`
`dispositive to a Southern States surprise or curability analysis
`
`because
`
`the
`
`duty
`
`to
`
`timely
`
`and
`
`completely
`
`fulfill
`
`expert
`
`disclosure requirements
`
`rests at all
`
`times on the proponent of
`
`the expert witness. What NVIDIA could have done does not alter
`
`what Samsung ought to have done.
`
`are
`disclosures
`expert's
`an
`is different when
`rule
`The
`complete, but simply not articulated as clearly as it might have
`been. Golden Nugget,
`Inc. v. Chesapeake Bay Fishing Co., L.C.,
`93 F. App'x 530, 536 {4th Cir. 2004). The case before this Court
`is not
`one of
`lack of clarity,
`however,
`but of
`absence of
`material.
`
`15
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 16 of 36 PageID# 42955
`
`Additionally,
`
`notice at
`
`a deposition is
`
`insufficient
`
`to
`
`cure a
`
`failure to disclose materials that ought
`
`to have been
`
`included in the expert
`
`report because disclosure in the right
`
`form (complete)
`
`and at
`
`the right
`
`time {with the expert
`
`report,
`
`before
`
`the expert's deposition)
`
`is critical
`
`to an
`
`opposing
`
`party's
`
`ability to
`
`engage
`
`in meaningful
`
`expert
`
`discovery
`
`(critical analysis of
`
`the expert's
`
`report,
`
`and
`
`taking of
`
`a
`
`targeted deposition) ,
`
`In this case,
`
`the only way to cure the
`
`surprise (such as it was) at
`
`this juncture is to give NVIDIA an
`
`opportunity to engage in the full expert discovery to which it
`
`was entitled. The nature of
`
`this cure will be discussed in a
`
`following section.
`
`2.
`
`Disruption To Trial
`
`The
`
`^602 patent did not
`
`involve any of Dr. Choe's work, and
`
`required only several days of evidence. Accordingly,
`
`there was
`
`no disruption of the trial as to that patent.
`
`However, on this
`
`record,
`
`the consequence of effecting the only meaningful cure
`
`for
`
`the nondisclosure was complete disruption of
`
`the trial on
`
`the ^902 and ^675 patents.
`
`Theoretically, as Samsung urged,
`
`the Court might have:
`
`(1)
`
`directed the parties
`
`to
`
`proceed with
`
`the
`
`presentation
`
`of
`
`evidence
`
`on
`
`the
`
`'602 patent;
`
`(2)
`
`allowed NVIDIA to conduct
`
`expert discovery while trial on the
`
`*602 patent was underway;
`
`and
`
`(3) directed the parties to proceed with evidence on the
`
`16
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 17 of 36 PageID# 42956
`
`'675 and '902 patents promptly after the conclusion of evidence
`
`on
`
`the
`
`'602 patent.
`
`That would have
`
`allowed the
`
`trial
`
`to
`
`proceed roughly within the time period allocated for trial,
`
`and
`
`all
`
`three
`
`patents would
`
`have
`
`been
`
`tried before
`
`the
`
`jury
`
`originally chosen
`
`for
`
`that
`
`purpose.
`
`In
`
`other words,
`
`this
`
`theoretical alternative would have kept
`
`the trial going with
`
`minimal disruption to the jury and the Court.
`
`However,
`
`forcing NVIDIA to complete
`
`supplemental
`
`expert
`
`discovery in a matter of days would have been an ineffective
`
`opportunity to cure,
`
`so much so that it would essentially have
`
`been
`
`no
`
`cure at all. Techlnsights
`
`spent
`
`hundreds
`
`of
`
`hours
`
`processing these images.
`
`(Tr. Feb. 1, 2016 1229:15-16). Asking
`
`NVIDIA to analyze,
`
`depose
`
`on,
`
`and produce
`
`jury-ready expert
`
`opinions on these images over
`
`the course of a
`
`few days,
`
`in the
`
`middle of a
`
`trial, would be an impossible schedule, even by the
`
`standards
`
`of
`
`large-scale
`
`civil
`
`litigation.
`
`In
`
`sum,
`
`forcing
`
`NVIDIA to conduct expert discovery in a time period short enough
`
`to avoid disrupting the trial would have meant
`
`that NVIDIA could
`
`not conduct effective expert discovery.
`
`On
`
`the other
`
`hand,
`
`curing the
`
`failure
`
`to disclose
`
`by
`
`excluding Dr. Choe entirely,
`
`as NVIDIA urged, would make
`
`it
`
`impossible to hold a trial on the '675 and '902 patents at all.
`
`Both Samsung and NVIDIA's
`
`infringement experts predicate their
`
`opinions upon Dr. Choe's report.
`
`If the Court had excluded Dr.
`
`17
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 18 of 36 PageID# 42957
`
`Choe's
`
`report,
`
`then neither
`
`infringement
`
`expert
`
`could speak
`
`intelligently about
`
`infringement,
`
`because both relied on Dr.
`
`Choe's analyses and opinions in framing their own opinions.
`
`The
`
`fact
`
`that
`
`it was
`
`impossible to cure the failure to
`
`disclose without significantly disrupting the trial demonstrates
`
`the failure to disclose was not harmless.
`
`3.
`
`The Nondisclosing Party's Explanation
`
`Samsung stresses that it held a good faith belief that
`
`the
`
`reports it disclosed contained all of
`
`the material
`
`relied upon
`
`by Dr. Choe
`
`in reaching his
`
`opinions,
`
`as
`
`required by
`
`the
`
`Stipulated Discovery Order.
`
`(Pl.'s Choe 0pp. 5-7, 17). The Court
`
`has no doubt
`
`that is true. Additionally,
`
`the parties agree that
`
`the
`
`experts
`
`believed
`
`that Dr. Choe's
`
`report
`
`as
`
`disclosed
`
`followed the semi-conductor industry standard.
`
`(Def.'s Choe Mem.
`
`10, 17-18; Pl.'s Choe 0pp. 17).
`
`But faith - good or bad -
`
`is not
`
`relevant
`
`the substantial
`
`justification component or the harmless component of a Southern
`
`States analysis. Southern States,
`
`318 F.3d at 596; Rambus,
`
`145
`
`F.
`
`Supp,
`
`2d at
`
`725-27.^^
`
`Instead,
`
`"explanation"
`
`looks
`
`to the
`
`objective
`
`circumstances
`
`surrounding
`
`the
`
`nondisclosure.
`
`E.g.
`
`Southern States,
`
`318 F.3d at
`
`598
`
`(considering argument
`
`that
`
`nondisclosing party failed to disclose because opposing party
`
`into play in fitting the sanction to the
`Good faith comes
`failure, discussed in a subsequent section.
`
`18
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 19 of 36 PageID# 42958
`
`delayed producing formula
`
`upon which undisclosed opinion was
`
`based);
`
`Rambus,
`
`145 F.
`
`Supp.
`
`2d at
`
`732
`
`(considering whether
`
`actions
`
`of
`
`court
`
`and
`
`opposing
`
`party
`
`justified
`
`belated
`
`disclosure).
`
`In that
`
`sense,
`
`"explanation"
`
`looks more at
`
`the
`
`feasibility of
`
`full
`
`and
`
`timely disclosure
`
`than it
`
`does
`
`at
`
`parties'
`
`intent.
`
`Examining
`
`the
`
`circumstances here,
`
`it
`
`is clear
`
`that
`
`the
`
`nondisclosure
`
`arose
`
`because
`
`Samsung's
`
`counsel
`
`failed
`
`to
`
`understand the full extent of
`
`the material
`
`relied upon by Dr.
`
`Choe,
`
`and
`
`hence
`
`the
`
`full
`
`extent
`
`of
`
`Samsung's
`
`disclosure
`
`obligations under
`
`the Stipulated Discovery Order.
`
`(Pl.'s Choe
`
`Mem. 3-7). Counsel's lack of knowledge of the full extent of Dr.
`
`Choe's disclosure obligations
`
`is not
`
`the sort of circumstance
`
`that substantially justifies a nondisclosure. Campbell,
`
`2011 WL
`
`588344, at *5.^^ Indeed, any contrary holding would minimize the
`
`obligation that
`
`counsel bears
`
`to fully understand what
`
`their
`
`retained experts
`
`are doing and to make Rule
`
`26 disclosures
`
`accordingly.
`
`Furthermore,
`
`any contrary holding would neglect
`
`that expert witnesses are under contract
`
`to the hiring party.
`
`if NVIDIA was on notice of Dr.
`the Court notes that,
`" Again,
`Choe's
`inadequate methods,
`then Samsung also was on notice of
`Dr. Choe's inadequate methods as early as August 31, 2015 (Pl.'s
`Choe
`0pp.
`9-11). As
`such,
`the ability to properly disclose
`through supplementation prior
`to trial was not
`the
`sort of
`circumstance outside Samsung's control
`that provides an adequate
`"explanation" under Southern States.
`
`19
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 20 of 36 PageID# 42959
`
`e»q-> Burger
`
`v. Allstate
`
`Ins. Co.,
`
`No.
`
`07-11870,
`
`2009 WL
`
`1587396, at *1
`
`(E.D. Mich.
`
`June 8, 2009), and that their actions
`
`must be attributed to the party if the Court
`
`is to maintain
`
`reasonable control over discovery.
`
`In conclusion,
`
`the Southern States factors uniformly weigh
`
`against
`
`finding that Samsung's failure to disclose was harmless
`
`or substantially justified.
`
`C.
`
`Fitting The Sanction To The Failure
`
`Having determined that
`
`a violation occurred,
`
`and that
`
`the
`
`violation was not harmless or
`
`substantially justified,
`
`it
`
`is
`
`necessary to determine what sanction to impose.
`
`Although Fed.
`
`R. Civ.
`
`P.
`
`37(c) (1)
`
`is often read as
`
`an automatic preclusion
`
`sanction against
`
`a noncomplying party that prevents that party
`
`from offering the nondisclosed evidence at
`
`trial,
`
`the second
`
`sentence of
`
`the rule permits "other appropriate sanctions" in
`
`addition to or in lieu of the automatic preclusion. Rambus, 145
`
`F. Supp.
`
`2d at 724. District courts enjoy broad discretion to
`
`select
`
`an appropriate remedy in light of
`
`the totality of
`
`the
`
`circumstances. Southern States, 318 F.3d at 593; Fed. R. Civ. P.
`
`37(c) (1) .
`
`The Fourth Circuit employs
`
`a
`
`four-part
`
`test
`
`to guide the
`
`exercise of that discretion:
`
`(1) Whether the non-complying party acted in bad faith;
`
`20
`
`
`
`Case 3:14-cv-00757-REP-DJN Document 829 Filed 02/29/16 Page 21 of 36 PageID# 42960
`
`(2)
`
`(3)
`
`The amount of prejudice that noncompliance caused the
`adversary;
`
`The need for deterrence of the particular sort of non-
`compliance; and
`
`less
`(4) Whether
`effective.
`
`drastic
`
`sanctions
`
`would
`
`have
`
`been
`
`Law Enforcement Alliance of Am.,
`
`Inc. v. USA Direct,
`
`Inc. ^ 61
`
`Fed. App'x 822, 830
`
`(4th Cir. 2003)
`
`(quoting Anderson v. Found.
`
`for Advancement, Educ.
`
`and Employment of Am.
`
`Indians^ 155 F.3d
`
`500,
`
`504
`
`(4th Cir.
`
`1998));
`
`see
`
`also Flame
`
`S.A.
`
`v.
`
`Indus.
`
`Carriers,
`
`Inc.,
`
`39 F. Supp.
`
`3d 752,
`
`764
`
`(E.D. Va. 2014). The
`
`Fourth Circuit has also noted a need for sanctions to "level []
`
`the evidentiary playing field." Silvestri v. Gen. Motors Corp.,
`
`271
`
`F.3d
`
`583,
`
`590
`
`(4th Cir.
`
`2001)
`
`(evaluating
`
`appropriate
`
`sanction in case of spoliation) .
`
`NVIDIA
`
`requested
`
`that
`
`the Court
`
`impose
`
`one
`
`of
`
`two
`
`sanctions:
`
`(1)
`
`exclude Dr. Choe's
`
`testimony, or
`
`(2) declare a
`
`mistrial on the '675 and '902 patents. For
`
`the reasons stat