Case 3:14-cv-00757-REP-DJN Document 101 Filed 04/22/15 Page 1 of 21 PageID# 15368
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`RICHMOND DIVISION
`
`
`CIVIL ACTION NO. 3:14-cv-00757-REP
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`
`JURY TRIAL DEMANDED
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`
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`
`
`v.
`
`NVIDIA CORPORATION, OLD MICRO,
`INC. F/K/A VELOCITY MICRO, INC., AND
`VELOCITY HOLDINGS, LLC
`
`
`
`
`Plaintiffs,
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`Defendants.
`
`JOINT SUBMISSION REGARDING DISCOVERY
`RELATING TO NVIDIA’S COUNTERCLAIMS
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`Plaintiffs Samsung Electronics Co., Lt. and Samsung Electronics America, Inc.
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`(collectively, “Samsung”), and Defendants NVIDIA Corporation (“NVIDIA”), Old Micro, Inc.
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`f/k/a Velocity Micro, Inc., and Velocity Holdings, LLC (collectively, “Defendants”) by counsel
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`and pursuant to Docket Nos. 98 & 991 jointly file this submission regarding a discovery dispute
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`relating to NVIDIA’s infringement counterclaims against Samsung.
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`Samsung initiated this litigation more than five months ago, with a complaint filed
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`against Defendants on November 4, 2014. On April 6, 2015, pursuant to the Court’s Scheduling
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`Order, the parties conducted a conference pursuant to Fed. R. Civ. P. 26(f) opening discovery in
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`this case. On April 14, 2015, before the April 15, 2015 pretrial conference in this litigation and
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`before the Court Ordered deadline for filing counterclaims as a matter of right, NVIDIA filed a
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`motion for leave to file counterclaims. That same day, NVIDIA served discovery requests on
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`1 Referring discovery disputes through May 8 in this action to U.S. Magistrate Judge David J.
`Novak and establishing the procedure for raising such a discovery dispute.
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`

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`Samsung relating to its counterclaims. At the pretrial conference, the Court instructed Samsung
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`to file a motion to sever the counterclaims from the current action and set a briefing schedule for
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`the parties relating to the severance motion.
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`Samsung believes that the counterclaim discovery should not proceed until the Court has
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`ruled on the motion to sever and the parties have conducted a discovery conference on the
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`counterclaims, pursuant to Fed. R. Civ. P. 26(f), which would give Samsung a reasonable
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`amount of time to investigate NVIDIA’s recently-filed counterclaims. NVIDIA believes that the
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`motion to sever is irrelevant because NVIDIA’s counterclaims will proceed regardless of
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`severance, that Samsung has been on notice of NVIDIA’s claims for at least thirteen months and
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`that pursuant to the Federal Rules and the Orders entered by the Court, the parties have
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`conducted the Rule 26(f) conference, discovery is open and NVIDIA’s counterclaim discovery is
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`properly served.
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`Although the parties have made good faith efforts to resolve this issue, they have not
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`come to a resolution. Accordingly, the parties seek guidance from the Court.
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`I.
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`POSTURE OF THE LITIGATION
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`Samsung filed this litigation on November 4, 2014, asserting infringement of eight
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`patents against Defendants. (Dkt. No. 1.) Samsung also asserted Virginia false advertising
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`claims against NVIDIA. (Id.) Samsung served the Defendants with the summons and complaint
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`on November 11, 2014 and November 12, 2014. (Dkt. Nos. 5-6.) To more fully comply with
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`the Court’s pleading requirements for patent infringement actions, Samsung filed a First
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`Amended Complaint on December 19, 2014. (Dkt. No. 30.) Samsung’s First Amended
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`Complaint was over 400 pages in length and included over 3,200 numbered allegations.
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`On January 12, 2015, Defendants filed a motion to transfer, sever, and stay the litigation.
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`(Dkt. Nos. 46-47.) Specifically, Defendants asked the Court to transfer venue of Samsung’s
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`2
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`claims against NVIDIA to the Northern District of California and to sever and stay the claims
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`against the Velocity defendants. (Dkt. No. 46 at 1.)
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`Defendants filed their first answers on January 19, 2015. (Dkt. Nos. 50-52.) Defendants
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`filed their First Amended Answers on March 3, 2015, and Second Amended Answers on March
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`31, 2015, to address concerns raised by Samsung.2 None of NVIDA’s first three answers
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`contained any counterclaims. (Dkt. Nos. 50, 59, & 70.)
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`On March 26, 2015, the Court entered a Scheduling Order (Dkt. No. 65) requiring that
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`motions for joinder of additional parties or amendment of the pleadings be filed by April 10,
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`2015. On April 10, 2015, the Court granted Defendants’ unopposed motion for an extension of
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`time to file Amended Answers and Counterclaims, allowing Defendants until April 15, 2015 to
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`assert counterclaims. (Dkt. No. 80.) Also, on April 10, 2015, Samsung filed its Second
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`Amended Complaint, which amended the First Amended Complaint by changing the name of the
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`defendant originally identified as “Velocity Micro, Inc. d/b/a Velocity Micro” to “Old Micro,
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`Inc. f/k/a Velocity Micro, Inc.” See Second Amended Complaint (Dkt. No. 81) at fn. 1.
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`On March 26, 2015, the Court scheduled a pre-trial conference for April 15, 2015. (Dkt.
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`No. 64.) The Court denied Defendants’ motion to sever, transfer, and stay on April 3, 2015.
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`(Dkt. No. 75.) On April 6, 2015, the parties held their Rule 26(f) conference, and that same day
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`they also exchanged their first sets of written discovery related to Samsung’s claims.
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`On April 14, 2015, Defendants filed a motion for leave to file their Answer and
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`Counterclaims to the Second Amended Complaint. (Dkt. No. 83-84.) NVIDIA’s counterclaims
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`asserted that Samsung infringes four NVIDIA patents relating to graphics processing technology
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`2 The parties dispute whether the Defendants’ answers have been sufficient. The Defendants
`filed their first and second amended answers in response to Samsung’s position that
`Defendants’ answers had not adequately responded to Samsung’s First Amended Complaint.
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`3
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`(“NVIDIA Counterclaim Patents”). NVIDIA asserts that Samsung has been on notice of the
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`patents asserted in NVIDIA’s counterclaims for more than a year, since early 2014, when
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`NVIDIA provided detailed claim charts setting forth its claims of infringement. Also on April
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`14, 2015, NVIDIA served its second set of written discovery requests, including 63 requests for
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`production and four interrogatories, relating to NVIDIA’s infringement counterclaims
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`(“counterclaim discovery”).
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`The Court held the pretrial conference on April 15, 2015. At that conference, the Court
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`set a trial date of January 11, 2016, and corresponding case dates. The parties dispute whether
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`this trial date and schedule apply to NVIDIA’s counterclaims or only to Samsung’s claims
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`against the Defendants. During the conference, the Court also instructed Samsung to file a
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`motion to sever NVIDIA’s counterclaims by April 24, 2015. (Dkt. No. 85 at 1.) Defendants’
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`severance response is due on May 8, 2015, and Samsung’s reply is due on May 15, 2015. (Id.)
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`On April 16, the day after the initial pretrial conference, the Court granted NVIDIA’s
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`motion for leave to file its Answer and Counterclaims to the Second Amended Complaint and
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`NVIDIA filed its Answer and Counterclaims that day. NVIDIA has agreed to Samsung’s
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`request for a two-week extension on the time for Samsung to respond to NVIDIA’s
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`counterclaims. Accordingly, Samsung’s response to the counterclaims is due on May 21, 2015.3
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`II.
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`NATURE OF THE DISCOVERY DISPUTE
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`NVIDIA served counterclaim discovery on April 14, 2015. Samsung believes that this
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`discovery is premature and that discovery for NVIDIA’s counterclaims should not properly
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`begin until the Court rules on the motion to sever, and the parties hold a Rule 26(f) conference
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`relating to the counterclaims. Samsung will agree that the discovery be deemed served on the
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`3 Samsung will submit an unopposed motion and proposed order providing for this extension.
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`4
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`same day as a timely Rule 26(f) conference on NVIDIA’s counterclaims. NVIDIA believes that
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`under the Court’s pretrial orders, discovery relating to the counterclaims is already open and that
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`a second Rule 26(f) conference is neither necessary nor contemplated by the Rules. NVIDIA has
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`agreed to a 14-day discovery extension, making Samsung’s objections due May 13, 2015, and its
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`responses due May 28, 2015.
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`III. EFFORTS MADE BY THE PARTIES TO RESOLVE THE DISPUTE
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`In addition to email correspondence, the parties have conducted numerous telephone
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`conferences on this dispute. Specifically, counsel for the parties met and conferred to discuss
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`this issue, sometimes in conjunction with other issues, on at least the following dates: April 17,
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`April 18, April 19, and April 20, 2015.
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`IV.
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`EACH SIDE’S POSITION AS TO COUNTERCLAIM DISCOVERY
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`A.
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`SAMSUNG’S POSITION
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`NVIDIA’s counterclaim discovery is premature, as Samsung has not had a reasonable
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`opportunity to investigate NVIDIA’s recently filed counterclaims. NVIDIA’s opposition ignores
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`Samsung’s need to have a reasonable amount of time to investigate NVIDIA’s counterclaims,
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`and it likewise ignores the significance of the motion to sever that the Court instructed Samsung
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`to file. The Court should order that the discovery will be deemed served after the Court rules on
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`the requested motion to sever and the parties have conducted a Rule 26(f) conference relating to
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`the counterclaims.
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`1.
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`Samsung Requests Only that Discovery Open, As Required by the
`Rules, with the Rule 26(f) Conference
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`NVIDIA seeks to upend the flow of litigation developed by the Federal Rules of Civil
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`Procedure and the rules of this Court. Both sets of rules provide a defendant time to analyze and
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`answer claims before responding to discovery. Under NVIDIA’s proposal, Samsung must serve
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`its objections to NVIDIA’s counterclaim discovery before Samsung answers or responds to the
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`counterclaims. And Samsung will be required to respond to that discovery only one week after
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`Samsung responds to the counterclaims.
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`The Federal Rules provide that discovery may only begin after the parties have conferred
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`regarding a discovery plan, as required by Rule 26(f). Fed. R. Civ. P. 26(d)(1). The Rule 26(f)
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`conference typically occurs just before the Rule 16(b) conference with the court. The time
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`between the filing of the complaint and the Rule 26(f) conference provides a defendant with time
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`to develop its understanding of the case and its defenses. Without Rule 26, a plaintiff could
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`serve discovery immediately after it filed its complaint, forcing a defendant to answer discovery
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`without an understanding of the case. The time between filing the complaint and the Rule 26(f)
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`conference provides critical time for a defendant to develop its understanding of the case such
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`that the parties can have a productive Rule 26(f) conference. The Rules require that the parties
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`consider and confer on, among other issues, the “nature and basis of their claims and defenses”
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`and “the subjects on which discovery may be needed.” Fed. R. Civ. P. 26(f). These topics
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`require that the defendant have an understanding of the claims and defenses at issue in the
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`litigation. And this may be especially true in the context of NVIDIA’s counterclaims because
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`they address a completely different subject matter than the claims already in the case and
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`information about the allegedly infringing functionality may be primarily in the hands of third
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`parties.
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`The history of this case provides a useful example. The Rule 26(f) conference on
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`Samsung’s claims occurred five months after Samsung filed its complaint initiating this action.
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`The parties met-and-conferred pursuant to Rule 26(f) on April 6, 2015, so that the parties could
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`report on their discovery plan to the Court at the pretrial conference on April 15, 2015. The
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`parties exchanged written discovery requests the same day as the Rule 26(f) conference, and the
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`responses to that discovery will be served approximately six months after the case began.
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`Months before discovery on Samsung’s claims began, NVIDIA invoked its need to spend
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`significant time analyzing the complaint and investigating its allegations. NVIDIA sought an
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`extension of its deadline to respond to Samsung’s detailed amended complaint arguing that
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`“NVIDIA, Velocity and their counsel have to, at minimum, meet with various engineers with
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`knowledge of the manufacturing and operation of the hundreds of accused products and search
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`for and identify prior art to the eight patents-in-suit.” (Dkt. No. 34 at 4) [Second motion for
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`extension of time to answer, filed January 2, 2015]. Samsung seeks only the same opportunity to
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`investigate the claims against it, before having to respond to discovery.
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`Indeed, the breadth of NVIDIA’s counterclaims illustrates the wisdom (and necessity) of
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`affording Samsung a reasonable time to investigate those claims, as well as allowing the Court to
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`rule on the motion to sever and requiring the parties to first hold a Rule 26(f) conference to
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`discuss the new discovery issues raised by NVIDIA’s counterclaims. NVIDIA’s infringement
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`counterclaims span 1900 paragraphs and more than 400 pages. (Dkt No. 87 at Counterclaim ¶¶
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`1–1913, pages 816–1253.) NVIDIA’s counterclaims assert infringement of 47 claims in four
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`patents related to highly technical aspects of the operation of Graphics Processing Units (GPUs).
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`NVIDIA accuses of infringement 284 specifically identified Samsung products, as well as all
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`other products that use similar technology or “operate in a reasonably similar manner.” (Id. at
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`Counterclaim ¶¶ 19–22, pages 821-825.) Recognizing at least some need for Samsung to
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`responsibly investigate these new claims, NVIDIA agreed to a two-week extension (to May 21)
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`for the time for Samsung to respond to the counterclaims.
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`NVIDIA argues that the Rules do not contemplate a further Rule 26(f) conference, but it
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`is incorrect. The advisory committee notes to the 1993 Amendments to Rule 26 provide that “If
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`more parties are joined or appear after the initial [Rule 26(f)] meeting, an additional meeting may
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`be desirable.” An additional Rule 26(f) is equally desirable to give the Court time to rule on the
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`motion to sever and to give Samsung time to investigate NVIDIA’s peripheral counterclaims.
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`NVIDIA cites two cases purportedly to show that courts have rejected the idea of
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`multiple Rule 26(f) conferences. But those cases are inapposite. In Steppes Apartment, Ltd. v.
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`Armstrong, the parties, including the new third-party defendants, proceeded along the typical
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`sequence of complaint, answer, discovery, with significant time for the third-party defendants to
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`investigate the litigation before discovery began. (Case No. 2:97-cv-00663, D. Utah.) There, the
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`defendant filed counterclaims against the third-party defendants on June 1, 1999. (Id. at Dkt. No.
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`132.) The third-party defendants answered the counterclaims on July 20, 1999. (Id. at Dkt. No.
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`159.) And the counterclaimant then served discovery requests on the third-party defendants on
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`August 9, 1999. Steppes Apartment, Ltd. v. Armstrong, 188 F.R.D. 642, 643 (D. Utah 1999).
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`Thus, the third-party defendants had more than two months to prepare for discovery to begin—
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`more time than Samsung is requesting in the present case. In Infosystems, Inc. v. Ceridian Corp.,
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`the court considered a situation in which the movant was deposed as a non-party on the same day
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`that counterclaims were filed against the movant. 197 F.R.D. 303, 307 (E.D. Mich. 2000). The
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`facts of that case are not at all applicable to the present matter.
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`Moreover, none of the cases cited by NVIDIA considers a situation even closely
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`approximating the present factual scenario, which involves dozens of claims on unrelated
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`technology, hundreds of accused products, and an instruction from the Court to file a motion to
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`sever. In this case, it makes sense for the parties to reconsider after the Court rules on the motion
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`to sever what discovery issues may arise in the case, especially those involving third parties.
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`Further, NVIDIA’s proposed deadlines for its expansive and premature counterclaim
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`discovery are inconsistent with allowing a party a responsible amount of time to investigate the
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`claims against it. NVIDIA served 63 requests for production and four interrogatories as part of
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`its counterclaim discovery. Under NVIDIA’s proposal, Samsung must serve its objections to
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`NVIDIA’s counterclaim discovery even before Samsung answers or responds to the
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`counterclaims. And Samsung will be required to respond to this extensive discovery only one
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`week after it responds to the counterclaims. As but one example of NVIDIA’s broad discovery
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`requests, it seeks discovery relating to Samsung’s contentions and defenses that Samsung has not
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`yet even raised:
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`All documents relating to your contentions, if any, that you have
`not infringed, induced the infringement of, or contributed to the
`infringement of any of the NVIDIA-Patents-In-Suit.4
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`NVIDIA argues that Samsung should have been prepared for immediate discovery on the
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`Counterclaim Patents based on notice of the alleged infringement that NVIDIA provided to
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`Samsung more than one year ago. This argument falls flat. As NVIDIA states, NVIDIA
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`provided notice of alleged infringement of the four Counterclaim Patents—as well as more than
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`30 other patents—in January and March of 2014. But until it filed the counterclaims, NVIDIA
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`did not further even mention the Counterclaim Patents to Samsung. Even when NVIDIA filed
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`claims last year against Samsung, it did not include any of the Counterclaim Patents. There is no
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`4 NVIDIA’s Second Set of Requests For Product at No. 99. In the interests of brevity, Samsung
`has not attached a copy of NVIDIA’s counterclaim discovery requests. At the Court’s request,
`Samsung will promptly submit those discovery requests to the Court, if it would aid the
`Court’s resolution of this matter.
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`reason Samsung should be prepared to immediately launch into discovery on these patents when
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`NVIDIA stood silent for so long on these and dozens of other patents.
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`Consistent with allowing Samsung a responsible amount of time to investigate the claims
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`against it, the Court should grant Samsung’s request to defer the time for its objections and
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`responses to NVIDIA’s discovery.
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`2.
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`Samsung is Requesting Only a Short Delay in Discovery
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`Samsung only requests that the Court delay discovery by a short period, until the Court
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`rules on the requested motion to sever and the parties have conducted a Rule 26(f) conference on
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`the counterclaims. Briefing on the motion to sever that the Court requested will be completed on
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`May 15, 2015. (Dkt. No. 85 at 1.) It is anticipated the Court will rule on the severance motion
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`promptly, and the parties can hold a Rule 26(f) conference after that ruling. Samsung thus seeks
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`significantly less time than NVIDIA had before the opening of discovery on Samsung’s claims
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`against NVIDIA. If the Court rules on the motion to sever before the end of May (over two
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`weeks after briefing is completed), there will only be approximately six weeks between the date
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`NVIDIA first filed its counterclaims and the date discovery will open. This is far shorter than
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`the almost five-month period between the date by which Samsung served its complaint against
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`Defendants (November 12, 2014) and the date discovery opened on Samsung’s claims (April 6,
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`2015).
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`NVIDIA, on the other hand, seeks a tactical advantage from its late inclusion of its
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`counterclaims. Although the Court requested that Samsung file a motion to sever the
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`counterclaims (Dkt. No. 85), NVIDIA has apparently decided that this motion will be denied:
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`NVIDIA publically proclaimed on its website that NVIDIA’s counterclaim patents “are
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`scheduled to be decided at the same time as Samsung’s case against us [NVIDIA]” and that its
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`counterclaim patents will be heard at the January 11, 2016 trial set by the Court for Samsung’s
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`claims against NVIDIA. Ex. A5 at 1-2. NVIDIA’s counterclaim discovery seeks to compound
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`the attempted advantage from its late counterclaim filing, by forcing Samsung to object and
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`respond to discovery before the Court has an opportunity to rule on the motion to sever and
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`before Samsung has had a full opportunity to analyze the claims and its defenses. A reasonable
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`schedule should give the Court the opportunity to rule on the motion to sever and provide
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`Samsung an opportunity to investigate the claims against it. Samsung ’s requested extension
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`provides it far less time to object and respond to NVIDIA’s discovery than the five months
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`NVIDIA had to prepare for discovery on the claims against it.
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`3.
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`Any Delay in the Counterclaim Discovery is of NVIDIA’s Own
`Making
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`NVIDIA admits that it has been aware of Samsung’s alleged infringement of the
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`Counterclaim Patents for more than a year: NVIDIA alleges that it made Samsung aware of the
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`Counterclaim Patents no later than March 8, 2014. (Dkt. No. 84 at 4.) NVIDIA thus could have
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`filed claims on those patents at any time in the intervening 13 months. And NVIDIA could have
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`filed counterclaims in this action when it first answered the complaint in January, over three
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`months ago. Instead, NVIDIA chose to wait until literally the eve of the pretrial conference
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`before seeking leave to file its counterclaims, after the Court rejected its attempted severance and
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`transfer.
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`NVIDIA has presented no reasonable justification for its delay in filing the
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`counterclaims. In its motion for leave to file the counterclaims, it admitted that the delay was “in
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`part because of its [previously] pending motion to transfer.” (Dkt. No. 84 at 4.) But there is no
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`obvious connection between NVIDIA’s counterclaims and its motion to transfer. Notably,
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`5 Exhibit A attached hereto is an NVIDIA website posting dated April 16, 2015 titled “Two
`Latest Developments in Our Patent Dispute with Samsung,” which can be accessed at
`http://blogs.nvidia.com/blog/2015/04/16/update-patent-samsung/.
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`NVIDIA has never tried to explain why its decision to bring counterclaims depends on whether
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`this case is heard in the Eastern District of Virginia or in California. Nor can NVIDIA claim that
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`it was unready to proceed with litigation when Samsung filed its complaint in November of last
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`year: NVIDIA first sued Samsung and Samsung’s supplier Qualcomm for patent infringement in
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`the District of Delaware and the United States International Trade Commission in September of
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`2014, two months before Samsung filed the present action before this Court. And, as NVIDIA is
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`quick to point out, NVIDIA provided claim charts on the Counterclaim Patents to Samsung in
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`early 2014.
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`NVIDIA could have added its counterclaims to this litigation at any time. Instead,
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`NVIDIA chose to delay, lodging the counterclaims the night before the pretrial conference, five
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`months into this litigation. The consequence is that these claims are likely to be, and should be,
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`treated as a separate case filed in April 2015. A further consequence is that discovery on
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`NVIDIA’s counterclaims should not open until Samsung has had a fair opportunity to review the
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`voluminous allegations in the counterclaims and to develop its defenses. The Court should
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`therefore order that this discovery is deemed served after the Court rules on the requested motion
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`to sever and the parties have conducted a Rule 26(f) conference on the counterclaims.
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`B.
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`DEFENDANTS’ POSITION
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`The parties conducted a Rule 26(f) conference on April 6, consistent with the Court’s
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`scheduling order. That same day NVIDIA served its initial set of discovery requests relating to
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`the claims and defenses then at issue in the case. NVIDIA moved for leave to amend its answer
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`as of right, on April 14, adding counterclaims, again, consistent with the Court’s schedule. That
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`same day, NVIDIA served its second set of discovery requests, relating to the claims and
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`defenses set forth in the amended answer. NVIDIA’s counterclaims asserted that Samsung
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`infringes four NVIDIA patents relating to graphics processing technology (“NVIDIA
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`Counterclaim Patents”). Samsung has been on notice of the patents asserted in NVIDIA’s
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`counterclaims for more than thirteen months—since at least March 2014.
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`Samsung manufacturers a host of excuses to justify its unilateral refusal to engage in
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`timely-filed discovery on NVIDIA’s counterclaims but they all fall flat. Samsung essentially
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`seeks a protective order barring NVIDIA from seeking any discovery for an indeterminate
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`amount of time but provides no basis in the rules or case law for such relief. But there is no
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`dispute that NVIDIA timely filed its counterclaims and served discovery under the Court’s
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`schedule. Samsung identifies no law supporting its position that the assertion of counterclaims
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`requires the parties to conduct a “second” Rule 26(f) conference, or that the Court’s grant of
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`leave to file a motion to sever stays discovery on presently pending counterclaims until that
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`conference. Nor does Samsung identify a single issue to be discussed at that conference.
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`Regardless, to mitigate any perceived prejudice against Samsung, NVIDIA has already agreed to
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`give Samsung six weeks to respond to discovery requests on patents that Samsung has known it
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`infringes since at least March 2014, when NVIDIA expressly put Samsung on notice of
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`infringement. At bottom, Samsung seeks a stay of NVIDIA’s entire case under the guise of a
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`discovery dispute. This attempt should be rejected.
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`First, NVIDIA timely filed its counterclaims in accordance with the Court’s March 26,
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`2015 and April 10, 2015 Orders. NVIDIA’s counterclaims were originally due April 10, 2015
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`pursuant to the Court’s March 26, 2015 Scheduling Order.6 (Dkt. No. 65.) Samsung agreed to
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`extend the date for amending the pleadings to add counterclaims from April 10, 2015 to April 15,
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`2015. The Court granted NVIDIA’s unopposed motion for an extension of time to amend the
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`6 Indeed, the Court’s March 26 Scheduling Order contemplated that motions to amend the
`pleadings to add counterclaims would be filed after the April 6, 2015 Rule 26(f) Conference.
`(Dkt. No. 65.)
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`pleadings to add counterclaims. (Dkt. No. 80.) NVIDIA subsequently filed its counterclaims
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`and served its discovery requests on Samsung on April 14, 2015, in advance of the Court’s
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`deadline. NVIDIA asserted its counterclaims prior to the date set under the Court’s Scheduling
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`Order and discovery should therefore proceed on NVIDIA’s counterclaims in accordance with
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`that schedule.
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`Second, NVIDIA timely served its counterclaim-related discovery requests, one week
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`after the parties’ April 6, 2015 Rule 26(f) conference. Pursuant to Federal Rule of Civil
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`Procedure 26(d), “a party may not seek discovery from any source before the parties have
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`conferred as required by Rule 26(f).” Fed. R. Civ. P. 26(d). The parties conducted their Rule
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`26(f) conference in this case on April 6, 2015, at which time the parties discussed at length issues
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`related to the protective order, the source code addendum, and the schedule. Significantly, the
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`parties did not discuss any issues related to the substance of the claims in the case, and Samsung
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`identifies no substantive issues to discuss at a second Rule 26(f) conference. All of the
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`procedural issues discussed at the parties’ Rule 26(f) conference have now either been resolved
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`or have been submitted to the District Court for resolution. Thus, there remains nothing further
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`to be accomplished in a second Rule 26(f) conference. NVIDIA served its counterclaim
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`discovery one week later on April 14, 2015, after filing its Answer and Counterclaims to the
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`Second Amended Complaint. NVIDIA’s discovery falls squarely within the parameters of Rule
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`26.
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`Nor can Samsung refuse to respond to NVIDIA’s timely discovery requests by insisting
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`that the parties conduct a second Rule 26(f) conference. The Federal Rules of Civil Procedure
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`do not contemplate multiple Rule 26(f) conferences between the original parties to a dispute.
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`Samsung cites to the advisory committee notes to the 1993 Amendments to Rule 26, which states
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`that “[i]f more parties are joined or appear after the initial [Rule 26(f)] meeting, an additional
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`meeting may be desirable.” But no new parties have joined or appeared in this matter and thus
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`the advisory committee note is entirely irrelevant to this case. Moreover, Samsung fails to
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`identify a single case supporting its argument for multiple Rule 26(f) conferences. In fact,
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`despite Samsung’s attempt to distinguish it, the applicable case law is just the opposite.
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`For instance, in Steppes Apartment, Ltd. v. Armstrong, 188 F.R.D. 642 (D. Utah 1999),
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`the court rejected a third party defendants’ motion for a protective order to preclude discovery
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`against the new defendants until the parties, including the new defendants, conducted a second
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`Rule 26(f) conference. The original parties to the lawsuit had already conducted a Rule 26(f)
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`conference and discovery was ongoing before the third party defendants were involved in the
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`case. The third party defendants argued that a second Rule 26(f) conference involving them was
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`required before they were required to engage in discovery. Id. at 643. The Court held that the
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`Federal Rules “do not contemplate sequential and periodic Rule 26(f) and Rule 16 proceedings
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`before discovery may be commenced.” Id. at 644 (emphasis added). The Court further held that
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`“to hold otherwise would add unnecessary confusion, rigidity and delay to the discovery process
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`and burden the court with formalistic requirements which may be of little actual value.” Id.
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`Samsung attempts to distinguish Steppes by arguing that the third party defendant in the case had
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`time to investigate the litigation before discovery began but this point is irrelevant to Samsung’s
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`argument that another Rule 26(f) conference is necessary. It relates only to whether the six
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`weeks that Samsung has to respond to NVIDIA’s discovery request is sufficient—and NVIDIA
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`has explained why it is.
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`Likewise, in Infosystems, Inc. v. Ceridian Corporation, 197 F.R.D. 303 (E.D. Mich.
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`2000), the court held that a defendant, as counter-plaintiff, was not required to separately meet
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`and confer with a newly-added counter-defendant before seeking discovery from the counter-
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`defendant. The Court noted that “it is far from clear that Rule 26(f) and (d) require an additional
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`conference and discovery plan each time a new party is named in an action.” Id. at 308
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`(emphasis in original). Samsung’s response that Infosys