Multimedia Technologies Pte. Ltd. v. LG Electronics Inc. et al
Filing
241
MEMORANDUM ORDER re 130 SEALED MOTION TO STRIKE PORTIONS OF THE EXPERT REPORT OF DR. DAN SCHONFELD REGARDING INVALIDITY AND THE EXPERT REPORT OF DR. DAN SCHONFELD REGARDING NON-INFRINGEMENT filed by Multimedia Technologies Pte. Ltd.. (Motion(s) 130 terminated). Signed by Magistrate Judge Roy S. Payne on 1/27/2025. (NKL)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
MULTIMEDIA TECHNOLOGIES PTE.
LTD.,
Plaintiff,
v.
LG ELECTRONICS INC. and LG
ELECTRONICS USA, INC.,
Defendants.
§
§
§
§
§
§
§
§
§
Case No. 2:22-cv-00494-JRG-RSP
MEMORANDUM ORDER
Before the Court is the Motion to Strike Portions of the Expert Report of Dan Schonfeld,
filed by Plaintiff Multimedia Technologies Pte. Ltd.. Dkt. No. 130. For the reasons discussed
below, the Motion is GRANTED only in PART.
I.
BACKGROUND
On December 23, 2022, Plaintiff Multimedia filed suit against Defendants LG Electronics
Inc. and LG Electronics USA, Inc. asserting (as is relevant to the instant Motion) that Defendants
infringe five of their patents: U.S. Patent Nos. 9,055,254; 9,055,255; 9,247,174; 9,510,040; and
10,419,805. 1 Dkt. No.1 at 1; Dkt. No. 125 at 1-2.
On December 20, 21, and 22, 2023, Defendants filed petitions for Inter Partes Review of
some of the asserted patents in this lawsuit with the Patent Trial and Appeal Board. IPR202400351; IPR2024-00352; IPR2024-00353; IPR2024-00354. Both Defendants were named as
Petitioners and as real parties-in-interest in each IPR proceeding. Dkt. No. 71 at. 1 The table below
1
On January 8, 2025, Plaintiff filed a notice with the Court in which they elected to not assert U.S.
Patent Nos. 9,185,325; 9,237,291; 9,426,527; 9,578,384; and 9,820,003 in this case. Dkt. No. 231.
Accordingly, the Court does not address arguments directed to these patents.
indicates the IPR number, challenged patent number, and challenged claims of the respective
petitions filed before the PTAB:
IPR Number
IPR2024-00351
IPR2024-00352
IPR2024-00353
IPR2024-00354
Asserted Patent Number
9,510,040
9,247,174
9,247,174
9,247,174
Claims Challenged
1-6, 11-16, 21-22
1-14
1-4, 6, 8-10, 12-17, 19
1-18
Id.
On April 19, 2024, Defendants filed Sotera stipulations with the Court in which they agreed
that if the PTAB institutes an IPR against the above Patents, then “Defendants will not pursue in
this litigation the grounds raised or any other grounds that could have reasonably been raised
before the PTAB in that instituted proceeding.” Id. at 2-3. The PTAB has since instituted trial for
each IPR. IPR2024-00351, Dkt. No. 49; IPR2024-00352, Dkt. No. 49; IPR2024-00353, Dkt. No.
70; IPR2024-00354, Dkt. No. 55.
Pursuant to paragraphs one and three of the Court’s Discovery Order (Dkt. No. 35),
Defendants provided Plaintiff a list of, inter alia, persons having knowledge of relevant facts. Dkt.
No. 129-18. Defendant subsequently supplemented this disclosure. Dkt. No. 129-19.
On August 20, 2024, Plaintiff filed the instant Motion to Strike. Dkt. No. 130.
II.
APPLICABLE LAW
A. Expert Testimony Generally
An expert witness may provide opinion testimony if “(a) the expert’s scientific, technical,
or other specialized knowledge will help the trier of fact to understand the evidence or to determine
a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product
2
of reliable principles and methods; and (d) the expert has reliably applied the principles and
methods to the facts of the case.” Fed. R. Evid. 702.
Rule 702 requires a district court to make a preliminary determination, when requested, as
to whether the requirements of the rule are satisfied with regard to a particular expert’s proposed
testimony. See Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999); Daubert v. Merrell Dow
Pharm., Inc., 509 U.S. 579, 592-93 (1993). District courts are accorded broad discretion in making
Rule 702 determinations of admissibility. Kumho Tire, 526 U.S. at 152 (“the trial judge must have
considerable leeway in deciding in a particular case how to go about determining whether
particular expert testimony is reliable”). Although the Fifth Circuit and other courts have identified
various factors that the district court may consider in determining whether an expert’s testimony
should be admitted, the nature of the factors that are appropriate for the court to consider is dictated
by the ultimate inquiry—whether the expert’s testimony is sufficiently reliable and relevant to be
helpful to the finder of fact and thus to warrant admission at trial. United States v. Valencia, 600
F.3d 389, 424 (5th Cir. 2010).
Importantly, in a jury trial setting, the Court’s role under Daubert is not to weigh the expert
testimony to the point of supplanting the jury’s fact-finding role; instead, the Court’s role is limited
to that of a gatekeeper, ensuring that the evidence in dispute is at least sufficiently reliable and
relevant to the issue before the jury that it is appropriate for the jury’s consideration. See Micro
Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1391-92 (Fed. Cir. 2003) (applying Fifth Circuit law)
(“When, as here, the parties’ experts rely on conflicting sets of facts, it is not the role of the trial
court to evaluate the correctness of facts underlying one expert’s testimony.”); Pipitone v.
Biomatrix, Inc., 288 F.3d 239, 249-50 (5th Cir. 2002) (“‘[t]he trial court’s role as gatekeeper [under
Daubert] is not intended to serve as a replacement for the adversary system.’ . . . Thus, while
3
exercising its role as a gate-keeper, a trial court must take care not to transform a Daubert hearing
into a trial on the merits,” quoting Fed. R. Evid. 702 advisory committee note). As the Supreme
Court explained in Daubert, 509 U.S. at 596, “Vigorous cross-examination, presentation of
contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate
means of attacking shaky but admissible evidence.” See Mathis v. Exxon Corp., 302 F.3d 448, 461
(5th Cir. 2002).
B. Expert Testimony and the Federal Rules of Civil Procedure
Despite the above, however, “[e]ven if testimony is reliable, it may still be excluded if it
relies on information that violates the [Federal] [R]ules [of Civil Procedure].” Estech Sys. IP, LLC
v. Carvana LLC, 2023 WL 3292881, at *2 (E.D. Tex. May 5, 2023).
III.
ANALYSIS
Plaintiff moves to exclude portions of Dr. Schonfeld’s expert report for two purported
deficiencies: (1) that he relies on a reference which does not qualify as prior art; and (2) that he
relies on undisclosed engineers. See generally Dkt. No. 130.
The Court takes each argument up in turn.
A. Prior Art Issue
The arguments that Plaintiff advances here are identical to those found in the Motion to
Strike Portions of the Expert Report of Loren Terveen. See generally Dkt. No. 129. Accordingly,
the Court DENIES Plaintiff’s Motion to Strike on this basis for the same reasons found in the
Court’s Order on the aforementioned Motion.
4
B. Undisclosed Employees Issue
In the Motion, Plaintiff argues that Dr. Schonfeld relied upon LG engineers in forming his
non-infringing alternative (“NIA”) opinions, but that some of the engineers—namely Hyun-Seung
Lee, Kwang-Hee Jang, and Jae-Won Oh 2—were not timely disclosed. Dkt. No. 130 at 6. In support
of this, they point to Defendants’ disclosures in which Hyun-Seung Lee’s and Kwang-Hee Jang‘s
names do not appear. Id. at 5-6 (citing Dkt. No. 129-18; Dkt. No. 129-19). Plaintiff further
contends that because Dr. Schonfeld was allegedly unable to identify which specific engineers
provided any of the critical information relied on in his NIA’s opinions, this means that
Defendants’ failure to disclose “infects his entire NIA analysis.” Id. at 13. Therefore, Plaintiff
asserts that all of Dr. Schonfeld’s NIA opinions should be stricken, especially now that discovery
has closed. Id. at 13.
In response, Defendants argue that all engineers were properly disclosed. See Dkt. No. 148
at 6-8, 13. They also argue that, regardless of the above, all factual bases for Dr. Schonfeld’s NIA
opinions were disclosed by way of interrogatory responses served before the close of discovery.
Id. at 5-7, 12-13 (citing Dkt. No. 130-8 at 26-36).
In reply, Plaintiff argues that regardless of the factual bases found in the interrogatory
responses, the responses still fail to identify all the engineers, and so, they do not provide the entire
factual basis for Dr. Schonfeld’s opinions. Dkt. No. 167 at 5. Further, Plaintiff argues that even if
the interrogatories did supply all factual bases, this does not obviate Defendants’ obligation to
disclose the individuals who provided these bases under Rule 26. Id.
In their sur-reply, Defendants first appear to suggest that their interrogatories and other
2
Jae-Won Oh was disclosed in Defendants’ initial disclosure, but his name was removed from
Defendants’ subsequent supplemental disclosure. See Dkt. No. 129-18 at 5; compare Dkt. No. 12919 at 5.
5
disclosures put Plaintiff on sufficient notice that there were numerous engineers involved with the
formation of factual bases that would eventually go into Dr. Schonfeld’s report, and that Plaintiff,
therefore, could have deposed these engineers (identified or otherwise) upon request. See Dkt. No.
184 at 4. Next, they argue that Dr. Schonfeld’s supposed admissions during his deposition—that
the engineers he identified by name were not the only ones that he relied upon—are being taken
out of context. Id. at 5. Defendants contend that Dr. Schonfeld simply could not specifically recall
which engineers he had talked with since he was being deposed almost a month and a half after
the conversations took place, and that he was allowing for the possibility that there were ones other
than those he specifically identified as a precaution. See id.
The Court finds that LG failed to disclose all of the engineers with whom Dr. Schonfeld
talked during the formation of his NIA opinions, striking is not appropriate here. As a preliminary
matter, Defendants’ proffered excuse that the disclosures they did make disclosed all the factual
bases for Dr. Schonfeld’s opinions is helpful but not dispositive. Defendants have an affirmative
obligation under Rule 26 to disclose individuals with relevant knowledge and, where necessary, to
supplement these disclosures. FED. R. CIV. P. 26. However, Plaintiff’s argument that this infects
the entirety of Dr. Schonfeld’s NIA analysis is unpersuasive.
The Court agrees that Dr. Schonfeld’s supposed admissions are being taken out of context
and that, as Defendants urged, he was allowing for the possibility that there were also other
engineers other than the ones he mentioned by name. Despite this, Defendants’ failure to disclose
Kwang-Hee Jang and Jae-Won Oh is without excuse. 3 Dr. Schonfeld clearly relies on Kwang-Hee
Jang in his NIA opinions regarding the ’805 Patent. Dkt. No. 130-2 at 63 (“My opinion and
3
Dr. Schonfeld’s reliance on Hyun-Seung Lee was only for opinions regarding U.S. Patent Nos.
9,237,291 and 9,426,527, which are no longer being asserted. Dkt. No. 231. Accordingly, this issue
is moot.
6
understanding has been informed by conversations with LG engineers, including Kwang-Hee
Jang.”) (emphasis added). Dr. Schonfeld also clearly relies on Jae-Won Oh in his NIA opinions
regarding the ’325 Patent. 4 Dkt. No. 130-2 at 81 (“My opinion and understanding has been
informed by conversations with LG engineers, including Jae-Won Oh.”) (emphasis added). The
fact that the only named engineers that Dr. Schonfeld attributes his understanding of the relevant
facts to are these undisclosed individuals is problematic.
“When confronted with a violation of Rule 26, Rule 37 grants district courts the authority
to exclude untimely information.” Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., No. 2:17-CV00651-JRG, 2019 WL 2267212, at *3 (E.D. Tex. May 28, 2019) (citing Fed. R. Civ. P. 37(c)(1)).
Four factors guide the Court's exercise of discretion in evaluating whether to exclude evidence
under Rule 37. CQ, Inc. v. TXU Min. Co., L.P., 565 F.3d 268, 280 (5th Cir. 2009). Those factors
are: “(1) [The untimely party's] explanation for its failure to disclose . . . , (2) the importance of
the evidence, (3) the potential prejudice to [the objecting party] in allowing the evidence, and (4)
the availability of a continuance.” Id.
As to the first factor: as discussed above, Defendants failed to disclose Kwang-Hee Jang
and Jae-Won Oh and have no valid explanations vis-à-vis their affirmative obligations under Rule
26. Even though Jae-Won Oh had initially been disclosed, Defendants removed him from their list
in their supplemental disclosure. See Dkt. No. 129-18 at 5; compare Dkt. No. 129-19 at 5. As
discussed above, Parties have an obligation to disclose and to supplement when necessary. Because
Dr. Schonfeld ultimately wound up relying on Jae-Won Oh for his NIA opinions, Defendants were
4
Dr. Schonfeld also relies on Jae-Won Oh for his NIA opinions regarding U.S. Patent No.
9,578,384, which is no longer being asserted. Dkt. No. 231. Accordingly, this point is moot.
7
required to (re)disclose Jae-Won Oh but did not do so. Accordingly, this factor weighs in favor of
striking the offending portions of Dr. Schonfeld’s report.
As to the second factor: the evidence at issue, while important to Defendants’ ability to
bring arguments regarding NIA, only goes towards the ’805 and ’325 Patents. The remainder of
Dr. Schonfeld’s report is left intact. 5 Thus, the evidence, when considered in the broader context,
is not critical to the Defendants’ case as a whole. Accordingly, this factor also weighs slightly in
favor of striking.
As to the third factor: because discovery is now closed and the case is on the eve of trial, 6
Plaintiff has been deprived 7 of their opportunity to cross-examine Kwang-Hee Jang and Jae-Won
Oh. Dr. Schonfeld relied on Kwang-Hee Jang and Jae-Won Oh to opine that the NIA options would
take minimal time to implement and would be at minimal cost, but Plaintiff now has no ability to
substantively rebut these conclusions. Accordingly, Plaintiff is prejudiced here, and so, this factor
also favors striking.
As to the fourth factor: neither party seeks a continuance (Dkt. No. 129 at 15; Dkt. No. 142
at 15), nor does the Court find a continuance would be appropriate since this case, as stated above,
is on the eve of trial.
The Court finds that the factors, on balance, weigh in favor of striking. Accordingly, the
Motion to Strike is GRANTED to that extent that all sections of Dr. Schonfeld’s report regarding
NIA opinions which rely on Kwang-Hee Jang or Jae-Won Oh are stricken.
5
Defendants can also rely on all of Dr. Terveen’s NIA opinions. See the Court’s Order on Plaintiff’s
Motion to Strike Portions of the Expert Report of Loren Terveen.
6
Jury selection is set for February 7, 2025.
7
See also infra regarding the inappropriateness of a continuance as a cure to this.
8
IV.
CONCLUSION
For the reasons discussed above, the Motion is GRANTED only in PART as to Dr.
Schonfeld’s report regarding NIA opinions which rely on Kwang-Hee Jang or Jae-Won Oh, but
otherwise DENIED.
SIGNED this 3rd day of January, 2012.
SIGNED this 27th day of January, 2025.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
9
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?