Samsung Electronics Co., Ltd. et al v. NVIDIA Corporation et al
Filing
822
MEMORANDUM OPINION. Signed by District Judge Robert E. Payne on 02/23/2016. (tjoh, )
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 is before the Court on Samsung Electronics Co.,
Ltd.'s
the
(''Samsung")
oral
motion,
proposed testimony of
instituting
this
action.
made
during
Jay Shim about
The
elicited by NVIDIA Corporation
evidence
For the reasons
on
January
record
set
forth
on
exclude
was
to
for
be
as part of its defense
on the issue of infringement.
the
to
Samsung's motive
proposed
(''NVIDIA")
trial,
26,
stated below,
2016,
Samsung's
and
oral
motion to exclude motive evidence was sustained.
BACKGROUND
This case is about whether NVIDIA's computer chips infringe
a patent owned by Samsung.
objected
to
NVIDIA's
On the first day of trial,
proposed
examination
of
a
Samsung
Samsung
vice-
president. Jay Shim C'Shim").^ In particular, Samsung sought to
prohibit NVIDIA from asking questions of Shim intended to show:
that
Samsung
C'TSMC"),
were
and
the
for
Samsung brought
after
NVIDIA
foreclose
TSMCs
NVIDIA to
use
26,
and
same
address
retaliation
thinly
^
of
Company
computer
from
chips,
NVIDIA;
that
retaliating against
fabricator
NVIDIA's
fabricator
Evid.
also
rather
than
Samsung
would
(Tr.
a
this
(Tr.
be
to
force
objected
(Tr.
on
substantially
delay,
and
unfair
173:5-174:18).
On the
curative
implication
NVIDIA.
as
irrelevant to infringement,
403.
brought
so
of NVIDIA chips.
confusion,
sought
veiled
Samsung
chips
223:17-243:7).
time,
R.
against
245:12-255:25).
its
relevance
of
Samsung
that
as
of
the
marginal
Fed.
statement
its
as
waste
a
contract
such evidence was
by
basis,
NVIDIA's
a means
TSMC
Manufacturing
and that this action was a way for Samsung to
under
prejudice
chose
173:5-182:1;
any
outweighed
fabrication
manufacture
that
that
fabricated
action as
Samsung
2016
the grounds
a
this
choosing Samsung;
Jan.
Semiconductor
company that
competitors
NVIDIA
Taiwan
in
instruction
NVIDIA's
action
a
17 3:5-174:23;
to
opening
means
of
176:14-21,
Neither party introduced case law in support of
respective position on the admissibility of evidence about
The
parties
agreed
to,
and
the
Court
permitted,
NVIDIA
conducting its direct examination of Shim for NVIDIA's case at
the beginning of trial and thus during Samsung's case-in-chief
on infringement so that Shim could return to Korea. (Tr. Jan.
26,
2016 177:12-179:1).
the motive for bringing a
a
proffer
on
Shim's
that
Court
and
ruled
on
(Tr.
would
the
in
make
such
favor
in
the
testimony
and
223:23-238:16)
law
patent infringement action.
of
statements
242:19-243:7;
on
continued
evidence
Samsung
made
curative
instruction
as
to
opening
statement.
(Tr.
absence
of
180:21-181:1;
any
to
decisional
this
Shim's
case,
preferred
NVIDIA's
during
the
(Tr.
relevant
on
24 5:12-255:25).
motive
Following
opening
the
testimony
statement.
The Court subsequently gave a
implications
245:12-255:25;
made
in
NVIDIA's
298:21-299:4).
This
opinion outlines the reasoning for that decision.
LEGAL ANALYSIS
A.
As A General Matter, Motive For Bringing Suit Is Irrelevant
The rule generally prevailing is that,
a
where
suitor is entitled to relief in respect to
the
matter
motives
concerning
are
which
immaterial;
he
that
sues,
the
his
legal
pursuit of his rights, no matter what his
motive in bringing the action,
cannot be
deemed either illegal or inequitable;
and
that he may always insist upon his strict
rights and demand their enforcement.
Johnson
1930) .
763
v.
King-Richardson
See also
F.3d 524,
should
have
Plaintiff's
trade
dress
Co.,
36
Innovation Ventures,
542
(6th Cir.
been
business
through
2014)
permitted
strategy
to
of
litigation
F.2d
675,
LLC v.
677
N2G
(1st
Distrib.,
Cir.
Inc.,
(''Defendants assert that they
introduce
protecting
....
evidence
its
about
trademark
Plaintiff's
motive
and
in
bringing this case was all but irrelevant — what mattered what
whether Defendants'
Caldwell
2000)
v.
Wal-Mart
("Absent
none
was
products were confusingly similar to FHE.");
some
long
proffered),
a
motives
is
pursuing
4662
BSJ
JCF,
2013
Piontek v.
I.C.
Sys.,
(M.D.
Apr.
17,
Pa.
Cintas
(M.D.
V.
Corp.,
La.
No.
Oct.
Prostyle,
680929,
No.
1986);
Corp.
2004);
16
Rorer
v.
Sharon
his
are
344
remedy
Louisiana
Envtl.
2004
Indem.
*2
(E.D.
Pa.
Indus.,
Inc.,
Inc.,
599
1021
bad
law
12 CIV.
25,
2013);
Sept.
Supp.
at *1
Network
6225390,
at
Properties,
(E.D.
Co.,
108 F.R.D.
F.
his
No.
Feb.
WL
2d 1012,
Home
Time,
LLP,
('"As
state
a
Action
Supp.
v.
1995)
2009 WL 1044596,
Football League
at
to
No.
16,
742,
538,
to
in this
requested,
(S.D.N.Y.
1:08-1207,
(and
issues
irrelevant"
*2
part
(8th Cir.
Kucker & Bruh,
at
Cir.
motivation
to any of the
the
(10th
Caldwell's
Nat'1
F.
1162
financial
03-711-C-M2,
Inc.
Sys.
v.
CIV.
CIV.A.
1991 WL 183842,
Equip.
Lee v.
2009);
Inc.,
Rhone-Poulenc
9752,
1,
suit
F.3d
on
48 F.3d 341,
the
WL
of
seeking
abuse of process claim);
229
fraud
relevant
Mazur^.
plaintiff
for
of
evidence
not
Krakover v.
as
Inc.,
evidence
bring the suit was
case");
Stores,
Wis.
CIV.
1991);
v.
*2
Inc.
1998);
A.
88-
Digital
743
(D.
Mass.
586
(S.D.N.Y.
1984) .
However,
a
this general
defendant pleads
estoppel,
rule has been held not to apply when
certain equitable defenses
such as
laches or
when there are questions about whether a plaintiff is
an
appropriate
seeks
attorneys'
proceedings.
4662
representative
BSJ
Parsons
1992)
See,
JCF,
v.
fees
e.g.,
2013
for
WL
is
a
class,
bad
Lee v.
faith
at
*2
suit
Corp.,
141
well-established
is
litigation");
not
relevant
Denny v.
Carey,
that
to
in
securities
litigation
in
to
that
named
representative).
Under
certain
No.
Feb.
408,
of
12 CIV.
25,
414
ordinary
654,
2013);
(M.D.N.C.
litigation,
matter
656
(E.D.
of
Pa.
the
1977)
in seeking to certify a
absence
plaintiff
LLP,
subject
73 F.R.D.
irrelevant
show
plaintiff
the plaintiff's motive in
the
the
a
multiplication
F.R.D.
(finding plaintiff's motive
class
when
(S.D.N.Y.
not involving the clean hands defense,
bringing
or
Kucker & Bruh,
680929,
Jefferson-Pilot
{"[i]t
of
was
of
evidence
not
tending
suitable
circumstances
motive
class
has
been
found to be admissible for purposes of assessing the credibility
of the testifying witness.
0814
JB/SMV,
2013
WL 6504291,
Texas Utilities Co.
814
(N.D.
Tex.
Although
the
Courts
Circuit
of
on
v.
equitable
Vill.
*1
of Cuba,
(D.N.M.
Serv.
Nov.
Co.,
No.
30,
470
F.
CIV 11-
2013);
Supp.
798,
decisions
from
1979).
the
Court
Appeals
this
suit
at
Texas Elec.
has
for
point,
district courts present a
bringing
Montoya v.
is
defenses,
not
the
the
Fourth
faith,
except
or
any
Circuit
decisions
general rule:
irrelevant,
bad
identified
of
or
other
the
Federal
circuit
and
a plaintiff's motive for
in
the
questions
face
of
of
certain
witness
bias.
None of these exceptions is present in this case.^ The Court
accordingly
finds
that
the
general
rule
applies,
and Samsung's
motive is irrelevant to the underlying questions of infringement
and validity.
B.
Motive
Fed.
Is
R.
Irrelevant
Civ.
P.
the sort of bad faith
V.
MAC
patentee
may
lawfully
defined
by
its
(''Concrete
and
rights
until
133
F.3d 860,
police
776
Unlimited
using,
bringing an infringement action is not
patent.");
Inc.,
making,
Absent Violation Of
that makes motive relevant.
Panel Co.,
Cementcraft,
Patent Cases,
11 Or Patent Misuse
As a general matter,
Corp.
In
the
a
873
market
(Fed.
that
Concrete
1537,
1539
the
right
to
selling
'028
the
patent
invention
was
Cir.
is
(Fed.
exclude
and
held
to
1997)
("A
effectively
Unlimited
F.2d
had
Virginia Panel
Inc.
Cir.
v.
1985)
others
from
enforce
those
invalid.
Concrete
Unlimited did only what any patent owner has the right to do to
enforce
its
patent,
and
that
includes
threatening
alleged
infringers with suit.").
That is not to say that the right to bring an infringement
action is completely unbounded.
For example,
a
patentee may not
bring a suit that is so unreasonable as to run into the regional
circuit's
governing
law
on
Fed.
R.
Civ.
P.
11.
Raylon,
LLC
v.
^ NVIDIA identified none of these issues as a predicate for the
admissibility of Shim's motive testimony (or any like it).
sole relevance predicate posited by NVIDIA was infringement.
The
Complus
Cir.
Data
2012) .
Innovations^
However,
be decided by the
Inc.^
700
F.3d
1361,
whether Rule 11 applies
jury.
As
such,
it
is
1367-68
is not a
improper to
(Fed.
matter to
raise
that
issue before the jury.
Additionally,
a patentee may not engage in patent misuse by
bringing suit for the purpose of perpetuating an anticompetitive
market.
1368
E.g.,
(Fed.
misuse,
patent
C.R.
Cir.
with
only
v.
Inv'rs,
applicable
Bard,
Inc.
antitrust
prohibit
that
the
in
success
157
157
F.3d 1340,
underpinnings
patent
business
F.3d at
Pictures
Court
''sham"
suit
is
of
to
patent
enforce
invalid
or
a
not
such
that
the merits;"
1368.
In Prof'l Real
Indus.,
Inc.,
established
litigation:
"the baseless lawsuit conceals
the
Inc.,
"bringing
the
Columbia
Supreme
such
on
Inc.,
v.
objectively meritless
with
M3 Sys.,
and the litigation is conducted for anti-competitive
(1993),
expect
The
knowledge
purposes." C.R.
49
Inc.
1998).
however,
infringed,
Estate
Bard,
''no
and
(1)
a
the
two-part
it
U.S.
test
lawsuit must
reasonable
(2)
508
litigant
must
be
be
could
found
that
'an attempt to interfere directly
relationships
of a
competitor.'"
NVIDIA has
not raised patent misuse violative of the antitrust laws either
as
a
defense
or
a
configured,
Samsung's
within
bounds
the
of
counterclaim.
motives
a
are
Thus,
as
irrelevant,
patentee's
lawful
this
and
right
action
are,
to
is
rather,
"police
a
market
that
is
Panel Corp.,
That
effectively
defined
by
its
patent."
Virginia
133 F.3d at 873.
conclusion
is
further
supported by a
handful of cases
explicitly stating that motive is irrelevant in similar,
not identical,
Circulation
that
a
Sys.,
Inc.,
defendant's
frivolous
V.
motive
jurisdiction
that
a
U.S.
for
is
of
Acres Gaming,
(finding
See Holmes Grp.,
535
counterclaim
appellate
Corp.
situations.
patentee
a
Federal
patentee
has
infringed);
good
SGS-Thomson
Rectifier Corp.,
motive
a
for
31
patent
faith
to
belief
(Fed.
assignment
standing to enforce the patent,
is
and
assignment'")
States,
for
patent
implied
337
389
does
not
(internal
F.2d
448,
acquisition
license);
F.3d 1362,
see
1373
on
citation
(Ct.
has
no
enforce
Cir.
its
Cir.
1998)
patent,
so
long as
patents
Inc.
1994)
Gaming
its
suit,
irrelevant
v.
Int'1
(finding
to
are
that
a
assigning's
^is of no concern to the
the
effectiveness
omitted);
Cl.
1968)
weight
as
also McNeil-PPC,
(Fed.
Mikohn
and that ''[e]ven a motive solely
bear
451
the
(Fed.
that
Cir.
and expressly to facilitate litigation
defendant
non-
897
Microelectronics,
F.3d 1177
and
Circuit);
right
(finding
determining
including threatening alleged infringers with
the
(2002)
to
165 F.3d 891,
a
Vornado Air
compulsory
irrelevant
has
v.
837-38
bringing
the
Inc.,
826,
Inc.
though
2003)
AMP
Inc.
(holding
to
Inc.
the
v.
(finding that
the
v.
United
that
motive
legal
L.
of
issue
of
Perriqo Co.,
^'motives
for
making and attempting to patent new inventions of lesser medical
value"
1538,
are
irrelevant);
1548
(Fed.
Cir.
Rite-Hite
1995)
Corp.
v.
(''The motive,
Kelley
Co.,
56
or motivation,
F.3d
for the
infringement is irrelevant if it is proved that the infringement
in
fact
the
caused
parties'
is
whether
the
loss.").
intentions
the
are
patent
was
The
thrust
generally
actually
of
these
cases
irrelevant:
infringed
is
that
what
is
or
matters
actually
invalid.
Thus,
as
in
irrelevant
to
non-patent
the
trial
of
law,
a
circumstances not present here.
is
true
topic.
generally,
Therefore,
motive
motive
patent
Fed.
evidence
for
bringing
infringement
R.
Evid.
can be
suit,
402.
quite
suit
absent
Moreover,
a
is
as
complicated
admitting motive evidence would of necessity
open the door to countervailing evidence that would necessarily
detract
of time,
unfairly
from
the
real
issues,
that
would
and that would confuse the jury.
prejudicial
and
would
cause
delay
and waste
All of that would be
substantially
outweigh
marginal relevance of the motive evidence offered here.
403.
Fed.
any
R.
CONCLUSION
For
the
reasons
stated
above,
Samsung's
exclude motive evidence was sustained and a
oral
motion
limiting instruction
was given.
It
is
so ORDERED.
/s/
Robert E. Payne
Senior United States District Judge
Richmond, Virginia
Date:
February Z-T, 2016
to
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