Tessera, Inc. v. Advanced Micro Devices, Inc. et al

Filing 1238

ORDER Approving and Adopting re 1221 Special Masters Order filed by Charles A. Legge. Signed by Judge Claudia Wilken on 9/12/2013. (ndr, COURT STAFF) (Filed on 9/12/2013)

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Hon. Charles A. Legge (Ret.)
JAMS
Two Embarcadero Center, Suite 1500
San Francisco, CA 94111
Telephone: [phone]
Fax: [phone]

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Special Master

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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CASE NO. 4:05-CV-04063-CW

TESSERA, INC.,

Plaintiff,

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vs.

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ADVANCED MICRO DEVICES, INC.;
SPANSION, LLC; SPANSION, INC.;
SPANSION TECHNOLOGY, INC.;
ADVANCED SEMICONDUCTOR
ENGINEERING, INC.; ASE (U.S.), INC.;
CHIPMOS U.S.A., INC.; SILICONWARE
PRECISION INDUSTRIES CO., LTD.;
SILICONWARE USA, INC.;
STMICROELECTRONICS N.V.;
STMICROELECTRONICS, INC.; STATS
CHIPPAC, INC.; STATS CHIPPAC (BVI),
LTD.; and STATES CHIPPAC, LTD.,

REPORT AND RECOMMENDATIONS
REGARDING ST'S MOTION TO
STRIKE REPORT OF TESSERA'S
INFRINGEMENT EXPERT

JAMS REF NO. 1100049599

Defendants.

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To the Honorable Claudia Wilken, United States District Judge,

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The undersigned

special master respectfully

submits the following report

and

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recommendations:

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ST filed a motion to strike portions of the report of Tessera's infringement expert Dr.

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Fan. Tessera opposed the motion, with a brief and declarations. The motion was argued and

submitted on August 22, 2013. There was no court reporter at the oral argument.

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This proposed decision on the motion is presented to Your Honor as a report and

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recommendations, rather than as an order. The ground for the motion is Tessera's alleged failure

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to produce certain documents, either timely or not at all, which were arguably portions of

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documents generated by computers during the process of Dr. Fan's Finite Element Analysis

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("FEA") of ST's accused infringing products. To that extent, the motion is within the discovery

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jurisdiction delegated to the special master. However, the relief requested by ST, the striking of

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virtually all of the expert's report, would undoubtedly preclude any use of the report, and

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perhaps also preclude Dr. Fan's testimony at trial. Therefore, the motion concerns trial and

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evidentiary matters, and this decision is presented in the form of a report and recommendations.

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The relief requested by the motion is set forth on pages one and two of ST's letter motion

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of August 5, 2013. The three principal forms of requested relief are to "strike [the] portions of

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Dr. Fan's report..." ST does not expressly state how much of the expert's report would be

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stricken if the motion were granted. But Tessera says that the result would be the striking of all

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of Dr. Fan's conclusions regarding Tessera's infringement claims, and approximately one half of

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Tessera's claims for royalties under license agreements. From the evidence that the special

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master has seen during the motion, Tessera's estimate appears accurate. After the hearing, ST

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submitted two alternative forms of relief, which are discussed below.

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The record of this motion and opposition is significant, and indeed largely controlling:

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ST's motion is not supported by any affidavits or declarations regarding the procedures for or the

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documents generated by the FEA. An FEA is, simply stated, a computer-controlled simulation

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of ST's products under various assumptions. However, ST has not submitted any declarations or

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affidavits by scientists regarding FEA.

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procedures and documents generated is only what is said in the letter motion of August 5 by ST's

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attorneys. On the other hand, Tessera has submitted declarations or affidavits of four scientists

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directly involved in the FEA testing: Dr. Xuejun Fan, the author ofthe expert report, Dr. Bradley

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Davidson, Mr. Vipul Kinariwala, and two by Mr. Joel Kindt.

What the special master is told by ST about the

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The special master is usually willing to accept the statement of attorneys of record,

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without the necessity for verifications or declarations under penalty of perjury, regarding facts

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within their knowledge. But the procedures and documents of an FEA computer simulation are

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highly technical and are not within the usual experience of attorneys. That is indeed why the

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parties use and present the evidence of experts in cases involving FEA. So the special master

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must look to the evidence presented in the scientists' declarations for resolution of issues

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regarding what documents were generated, what they contained, their relationships to other

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documents, the significance of any loss, the procedures of the FEA, and similar scientific and

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technical matters. Therefore, Tessera's record in those regards is uncontroverted by ST in this

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motion, and must stand as the only record on those subjects for the special master to consider.

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ST nevertheless argues that three groups of documents, listed in Exhibits A, B, and C to

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its motion papers, were not produced or were produced late (that is, after Dr. Fan's report was

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sent to ST).

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After reviewing the record and the oral arguments, the special master finds and concludes

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that all three groups of documents about which ST complains, perhaps with a few immaterial

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exceptions, have now been produced by Tessera to ST in one electronic form or another. Those

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productions are itemized in Exhibit 3A to Tessera's opposition, entitled "Final simulations of ST

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packages." The few documents which Tessera may not have produced to ST are discussed on p.

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4 of Tessera's brief and in Tessera's Exhibit 4, 32.

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whether this information has now been produced. But in any event, ST has made no showing of

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any materiality of the few "missing" items to ST's requested remedy of striking the report.

The special master is uncertain as to

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Some additional comments are appropriate. As to the documents referred to in ST's

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Exhibits, ST complains that Tessera has "destroyed" the .err files. Without having to decide

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whether all of those files have in fact been produced, the record establishes that the same

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information is contained in the .out files, all of which have been produced to ST. ST's Exhibit C

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also refers to the .out files. The special master believes that Tessera's Exhibit 3A demonstrates

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that all of the .out files for the simulations addressed in ST's motion, both final and preliminary,

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have now been produced. ST also argues that documents it entitles "input scripts" were not

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produced. These are apparently listed in ST's Exhibit B, which mentions input, .txt, and .rst

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files. But the record demonstrates that on the day that Tessera produced Dr. Fan's report, it also

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produced the scripts used to run the simulations of ST's packages, and that Tessera has now

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produced all of the scripts and the corresponding result files. Finally, regarding any of the sub-

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files for which ST argues there are missing documents or information: because ST has all of the

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input scripts, ST can obtain the information in the sub-files by running those scripts on its own

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equipment.

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In summary, as to all of the files allegedly not produced to ST, Tessera has demonstrated

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through affidavits and declarations that those files, possibly with a few immaterial exceptions,

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have been produced.

And if ST does not have immediate easy access to them, the same

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information is replicated in the .out files and/or in the input scripts, which ST has.

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As noted, ST subsequently filed two alternative proposed forms of orders. The cover

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letter of August 23, 2013 states that ST has filed them "in light of the admissions by Tessera

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concerning the FEA files...." However, the special master interprets the subsequent filing as

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really an admission by ST that the relief requested in the motion was inappropriate and not

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supported by an adequate record. In any event, the special master concludes that all of ST's

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"striking" relief regarding Dr. Fan's report should be denied for the reasons discussed above.

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As to ST's argument that some documents were produced by Tessera later than Dr. Fan's

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report, ST is correct. But as stated, ST now has them. And the special master is prepared to

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consider adjustments to the present schedule (e.g. dates for ST's rebuttal expert's report, and

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dates for the depositions of the experts) to accommodate the time concerns. However, when the

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special master suggested such adjustments during the oral argument- and even when ST later

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submitted its alternative forms of orders- ST did not request any date adjustments. Rather, ST's

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motion still requests striking the expert's report.

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It is therefore recommended that ST's motion to strike portions or all ofthe report of Dr.

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Fan be denied. ST's arguments may nevertheless be appropriate for its rebuttal expert's report

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and for its cross-examination ofDr. Fan.

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An additional request is made in ST's motion. That is, for the production of an article

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written by Dr. Fan and others for Intel Corporation in a separate matter. The article was listed in

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the materials which Dr. Fan reviewed and relied upon in his report.

However, Dr. Fan

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subsequently stated that he did not rely on this article in forming his opinions, and that he

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incorrectly included it in the list of materials. Dr. Fan does have a copy of the article, but it is

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allegedly proprietary to Intel and contains confidential information of Intel. Tessera has agreed

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to use its good faith best efforts to obtain permission from Intel to produce the article to ST, and

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to advise ST by August 29, 2013.

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Respectfully submitted,

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Dated: August 28, 2013

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ST's objections having been considered, the report and recommendation of the special
master is Approved and Adopted.

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Dated: September 12, 2013

Hon. Claudia Wilken, U.S.D.J.