KAIST IP US LLC v. Samsung Electronics Co., LTD., et al

Filing 348

MEMORANDUM OPINION re 215 Opposed SEALED PATENT MOTION for Leave to Supplement Expert Reports of David B. Witt and Roy Weinstein filed by KAIST IP US LLC.. Signed by Magistrate Judge Roy S. Payne on 4/16/2018. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
KAIST IP US LLC,
Plaintiff,
v.
SAMSUNG ELECTRONICS CO.,
LTD., et al.,
Defendants.

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No. 2:16-CV-01314-JRG-RSP

MEMORANDUM OPINION
In this patent case, KAIST moves for leave to supplement two of its expert reports
based on purportedly new assertions from Defendants. Pl.’s Mot. for Leave to Supplement
[Dkt. # 215]. The Court will GRANT the motion IN PART.
I.

BACKGROUND
KAIST asserts U.S. Patent 6,885,055, which relates generally to semiconductor

manufacturing techniques for field effect transistors (FETs). ’055 Patent abst. More
particularly, the ’055 Patent relates to the formation of a fin field effect transistor, also
called a FinFET. Id.
In February 2018, KAIST served the expert reports of David Witt, one of KAIST’s
technical experts, and Roy Weinstein, KAIST’s damages expert. Witt’s report analyzed the
benefits obtained by Defendants in practicing the accused bulk FinFET design. See
generally Witt Rep. (Feb. 5, 2018) [Dkt. # 235-4, 235-5]. Relying in part on Witt’s analysis,

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Weinstein analyzed KAIST’s alleged damages. See generally Weinstein Rep. (Feb. 5, 2018)
[Dkt. # 225-2].
In March, Defendants served the rebuttal expert damages report of Stephen Becker.
The report asserts a 14 nm SOI (silicon-on-insulator) process as a commercially acceptable,
noninfringing alternative and presents a cost comparison between 14 nm SOI and 14 nm
bulk processes. Becker Rep. (Mar. 2, 2018) [Dkt. # 224-2] ¶¶ 143–44. Becker relied on a
conversation with Globalfoundries’ Rule 30(b)(6) witness, Srikanth Samavedam, for
estimates of the comparative costs of the two different processes. Id. ¶ 144.
According to KAIST, Defendants first proffered the 14 nm SOI process as an
alternative in Becker’s report. KAIST notes that Samavedam testified he was not involved
in the development of the 14 nm SOI process, had no direct knowledge of it, and did
nothing to investigate the facts surrounding the process. KAIST’s Motion [Dkt. # 215] at
2–3. Also, in September 2017, KAIST asked Defendants to identify each commercially
feasible alternative to the accused technology, but Defendants never referenced 14nm SOI
in their responses. See generally KAIST’s Reply [Dkt. # 275] at 2–3.
Defendants make five arguments in opposition. First, Defendants complain the
supplemental reports do not “supplement,” but rather respond to Defendants’ damages
rebuttal report. Defs.’ Opp’n [Dkt. # 258] at 1–2. Second, Defendants contend the
information addressed by the proposed supplements is not new, noting Samavedam
specifically testified in January 2018 that Globalfoundries’ 14 nm SOI process was a
commercially feasible alternative. Id. [Dkt. # 258] at 2–4 (citing Samavedam Dep. (Mar.

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14, 2018) [Dkt. # 258-3] at 137:18–22). Third, Defendants contend Weinstein admitted he
was aware of Globalfoundries’ 14 nm HP SOI product while preparing his report, but did
not ask Witt to perform any analysis. Id. 4–5 (citing Weinstein Dep. (Mar. 14, 2018) [Dkt.
# 285-4] at 119:9–20). Fourth, Defendants contend Witt inserts new opinions unrelated to
the SOI process in an attempt to cure fundamental defects in his opening report. Id. at 5–6.
Finally, Defendants contend they would be prejudiced given the short time until trial. Id.
at 6–7.
II.

APPLICABLE LAW
In deciding whether there is good cause to grant leave to supplement expert reports,

courts in the Fifth Circuit consider “(1) the explanation for the failure to submit a complete
report on time; (2) the importance of the testimony; (3) potential prejudice in allowing the
testimony; and (4) the availability of a continuance to cure such prejudice.” Reliance Ins.
Co. v. Louisiana Land & Exploration Co., 110 F.3d 253, 257 (5th Cir. 1997).
III.

DISCUSSION
The Court will grant leave to supplement concerning the 14 nm SOI process. First,

nothing in the record suggests KAIST should have been aware that Defendants intended to
proffer evidence that its 14 nm SOI process was a non-infringing alternative before they
served Becker’s report. Although Defendants argue KAIST should have anticipated that
position based on Samavedam’s testimony, Samavedam’s deposition is not so clear as to
indicate whether that is a position Globalfoundries would take or simply could take. In fact,
the record is not clear about whether Samavedam’s testimony was as a Rule 30(b)(6)

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witness,1 as Samavedam indicates his answer was based only on personal knowledge.
Samavedam Dep. (Jan. 4, 2018) [Dkt. # 258-3] at 144:24–145:4. Identifying the 14 nm SOI
process in an interrogatory response would strengthen Defendants’ position, but
Defendants did not make such an identification. Thus, KAIST was reasonably diligent in
seeking leave to supplement once it was certain Defendants were taking that position.
Second, the supplement is important because, given that experts are confined to the
content of their reports, KAIST would arguably be unable to respond to Defendants’
contention that their 14 nm SOI process was an acceptable alternative. Witt v. Chesapeake
Exploration, LLC, No. 2:10-CV-00022-TJW, 2011 WL 2790174, at *6 (E.D. Tex. July 14,
2011) (noting “[t]his Court has consistently limited experts’ testimony to the opinions and
bases disclosed in their expert report” and collecting cases).
Third, to the extent the supplements only rebut affirmative testimony within
Becker’s report concerning the 14 nm SOI process, Defendants will not be prejudiced. The
supplementation is minimal and will not impede trial preparation. Moreover, Defendants
have examined at least Witt concerning his proposed supplement.
Given KAIST’s reasonable diligence, the importance of the supplement, and the
lack of prejudice, the Court finds good cause and will grant leave as to the portions of the
Witt and Weinstein supplements that relate to the 14 nm SOI process.

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KAIST noticed Samavedam as both a Rule 30(b)(1) and 30(b)(6) witness. Samavedam
Dep. [Dkt. # 258-3] at PageID #: 15955. Moreover, none of the deposition questions cited
by Defendants asks whether Defendants will be contending the 14 nm SOI process is an
acceptable alternative for royalty-calculation purposes.

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The Court, however, will deny leave as to other portions of Witt’s supplement. The
last two paragraphs surrebut parts of Becker’s report. Witt Supp. Rep. [Dkt. # 215-1] ¶¶ 21–
22 (noting the Becker report critiques his assessment of the value contributed by the ’055
Patent). Thus, granting leave with respect to these paragraphs would fall into the pattern of
perpetual supplementation frowned upon by the Court. See, e.g., Biscotti Inc. v. Microsoft
Corp., No. 2:13-CV-01015-JRG-RSP, 2017 WL 2607882, at *2 (E.D. Tex. May 25, 2017).
The last sentence of Paragraph 1 comments about the amount of evidence relied on by
Becker, which is not necessary to assist the trier of fact under Rule 702(a). Similarly,
Paragraph 2 is more appropriately attorney argument than expert testimony given Witt is
in no better position than a lay person to determine whether Becker’s reliance on
Samavedam in light of Samavedam’s prior testimony is confusing. See, e.g., United States
v. Vest, 116 F.3d 1179, 1185 (7th Cir. 1997) (noting “[c]redibility is not a proper subject for
expert testimony; the jury does not need an expert to tell it whom to believe, and the
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expert’s ‘stamp of approval’ on a particular witness’ testimony may unduly influence the
jury”).
IV.

CONCLUSION
The Court GRANTS Plaintiff’s Motion for Leave to Supplement [Dkt. # 215] IN

PART. Specifically, the Court GRANTS the motion except for (1) the last sentence of the
first paragraph of Witt’s supplement; (2) paragraph 2 of Witt’s supplement and (3)
paragraphs 21–22 of Witt’s supplement.

SIGNED this 3rd day of January, 2012.

SIGNED this 16th day of April, 2018.

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5 / 5 ROY S. PAYNE

UNITED STATES MAGISTRATE JUDGE