Samsung Electronics Co., Ltd. et al v. NVIDIA Corporation et al

Filing 829

MEMORANDUM OPINION. Signed by District Judge Robert E. Payne on 02/29/2016. (ccol, )

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
STRIKE

matter

THE

came

TESTIMONY

before
AND

the

Court

REVERSE

on

NVIDIA'S

ENGINEERING

JEONGDONG CHOE PURSUANT TO RULE 37(c)

REPORTS

{Docket No.

744).

considered the associated papers and oral arguments,
reasons

stated

below,

the

Court

orally

MOTION

granted

the

OF

TO
DR.

Having

and for the
motion

in

part and denied the motion in part. The Court granted a mistrial
as

to the

6,287,902

("'902")

and 8,252,675

("'675")

patents

in

order to provide sufficient time during which NVIDIA Corporation

might engage in curative expert discovery, but denied the motion
as

it

pertained

to

striking

the

testimony

or

reports

of

Dr.

Jeongdong Choe. This Memorandum Opinion followed.

BACKGROUND

This

patent

Electronics

Co.,

infringement
Ltd.

action

("Samsung")

was

against

("NVIDIA"),

alleging infringement of the

as

the

well

as

6,819,602

patent

brought
NVIDIA

'902 and

{"'602").

by

Samsung

Corporation

'675 patents,

(Second Am.

Compl.,

Docket No. 81).^
alleged,

inter

As to the

alia,

that

'675 and

NVIDIA

had

'902 patents,

infringed by

Samsung

importing,

selling, and offering to sell infringing products that were made
by an infringing process and under an infringing design.
Am. Compl.,

alleged

551 1323-2135,

that

accused

NVIDIA

2288-2596}. More specifically, Samsung

sold,

products

offered

from

regarding

discovery,

the

design

infringing products
to

NVIDIA's

Mtn.

Mem.").
and

the

Court.

the

design

have

an

expert

Strike,

In

the

the

down"

to

absence

the

the

Semiconductor

evidence

manufacturing

manufacturing

"tear

imported

Taiwan

sought

Docket

non-responsive

Id.

and

the

and

Id.

Samsung
and

sale

of

(computers and the chips).

to

TSMC was

for

non-party

Manufacturing Company ("TSMC").

During

(Second

No.

755,

(E.g.,

allegedly

TSMC

allegedly

Pl.'s 0pp.

("Pl.'s

from the

evidence

process,

the

17)

entreaties
of

from

from

Choe

parties

TSMC

about

Samsung

elected

infringing

chips

to

and

offer an opinion about the design of the accused chips and how
TSMC had made them.
Choe"),

an

Techlnsights,

Id.

expert
Inc.

in

Samsung chose
reverse

("Techlnsights")

Dr.

Jeongdong Choe

engineering

("Dr.

employed

to provide an expert

by

report

^ Other parties and claims were originally part of the action. By
the time of trial,
and

NVIDIA,

and

the parties had been whittled down to Samsung
the

infringement of the '602,

claims

had

been

whittled

'675, and '902 patents.

down

to

on

the

design

and

structure

of

the

allegedly

infringing

and the process that TSMC used to make those chips.
At the outset of the case,
of the Court,
R.

Civ.

with

26

that

respect

Id.

with the approval

altered some of the disclosure obligations of Fed.

P.

provided

the parties,

chips

through

"all

to

a

Stipulated

materials

that

Discovery

generated

person's

work

by

are

a

Order,

which

testifying

expert

exempt

from

discovery

unless relied upon by the expert in forming any opinions in this
litigation."

(Docket No. 198, 8-9)

up to trial,

NVIDIA served a Request for Production of documents

seeking
your

"documents

behalf

...

and

for

things

(emphasis added)In the run

generated

litigation

or

by

You

or

other(s)

non-litigation

on

purposes,

including but not limited to any teardown or reverse engineering
reports,

electron microscope images,

product

comparison

response

to

reports."

No.

discovery

that

(Docket
request

and

Stipulated Discovery Order,
with the

^ The

reverse

Stipulated

product sample analysis,
751,

Ex.

pursuant

A).

or
In

to

the

Samsung committed to provide NVIDIA

engineering documents

Discovery

Order,

relied upon by Dr.

like

the

Federal

Choe

Rules

protected communications between counsel and testifying experts
(Docket
Mackay,

No. 193 S[ 5); see also, e.g.. Republic of Ecuador v
742
F.3d 860,
869-70
(9th Cir.
2014);
Republic of
Ecuador v.
Hinchee,
741
F.3d 1185,
1195
(11th Cir.
2013)
Republic of Ecuador v.
For Issuance of a Subpoena Under 28

U.S.C.

Sec.

1782(a),

735

F.3d

1179,

1186

(10th

Cir.

2013)

Siemens
Med.
Sols.
USA,
Inc.
v.
Saint-Gobain
Ceramics
Plastics, Inc., 637 F.3d 1269, 1286 (Fed. Cir. 2011).

&

in connection with his expert report.
Mtn.
Dr.

in Supp.

Jeongdong

Dr.

Choe

Pursuant

to

R.

Docket No.

(and,

engineering

751,

following

reports

that

a

Docket

Exs.

No.

745,

No.

751,

his

expert

Exs.

H-J) .

reports

(Def.'s Choe Mem.

46:16-17:14;

At

cited

numerous

8;

infringement

exhibits

Docket No.

47:17-48:22;

cases

751,

which

because

based their analyses on Dr.

both

reverse

cross-sectional

Dr.

were
Ex.

289:13-19).

upon

fifteen)

images

(Def.'s Choe Mem. 6-8; Docket

his deposition.

and

foundation

Choe

testified that

accurate

and

K 19:7-11;

Dr.

complete.

41:16-42:11;

report

served

parties

both

Choe's

built

their

parties'

infringement

experts

Choe's explanation of the design and

manufacture of accused chips produced for NVIDIA by TSMC.
PI.'s Choe Mem.

forming

either

28,

his

opinions,

neither

side.

(E.g.,

16).

During cross-examination at trial,

disclosed

4-5

B-E).

supplement,

of the allegedly infringing chips.

the

37(c),

Choe ultimately produced an expert report that included

thirteen

in

of

to Strike the Testimony and Reverse Engineering Reports of

("Def.'s Choe Mem.");

as

(Def.'s Mem.

in

his

(Def.'s Choe

2016 518:1-519:22,

he

had

expert

Mem.

Dr.

relied
reports

9-14;

Choe testified that,

on

images

nor

see also,

697:14-16; 705:16-21).

to

that

counsel

e.g.,

Tr.

In particular.

were
for

Jan.

Dr.

Choe testified that he had reviewed a large number of so-called
EDS

and

EEL

images

that

were

not

disclosed,

and

that

he

had

relied

on

some

of

those

images

in

reaching

the

conclusions

stated in his expert reports and in his testimony at trial.
essence,

and

Dr.

In

Choe explained that he had used both the disclosed

undisclosed

images:

(1)

to

select

the

most

images for disclosure in his report; and (2)

representative

to confirm that the

images that he had reproduced in his reports and testified to at
trial were accurate.

followed

is

a

specifically

According to Dr.

standard

and

by

process

Choe,

used

practitioners

of

the process that he

both

by

Techlnsights

semi-conductor

reverse-

engineering generally. Id.
The

images

Court

from

immediately.
Thereafter,
NVIDIA's
Lee"),

instructed

Techlnsights
(Tr.

Jan.

witness

performed

previously

29,

and

to

to

procure

provide

2016 744:8-21).

the

a

on

brief

images.

infringement.

preliminary

NVIDIA

undisclosed

materials

upon

to

NVIDIA

Samsung did so.

Dr.

exam

concluded

undisclosed

them

and while trial was progressing on the

expert

undisclosed

Samsung

Lee

the

that

which

'602 patent,

Jack

of

("Dr.

previously

some

Dr.

Id.

of

Choe

the

relied

demonstrated that silicon was present in the TiN/TaTiN layer of
the

allegedly

presence

of

infringing

silicon

in

chips.

that

(Def.'s

layer

is

an

Choe

Mem.

important

NVIDIA's non-infringement defense in this case.

Id.

9).
aspect

The
of

The parties

agreed upon an accelerated briefing schedule to address how this
apparent

discovery

violation

should

be

handled.

(Tr.

Jan.

29,

2016

963:17-964:10).

followed.
on

the

This

motion

Following oral argument,

'675

and

'902

patents,

and

the

associated

papers

the Court declared a mistrial

but proceeded with

trial

on

the

'602 patent.

LAW AlID APPLICATION

NVIDIA's motion for sanctions was filed pursuant to Fed.

Civ.

R.

P. 37(c)(1), which provides that:
If a party fails to provide information or
identify a witness as required by Rule 26(a)
or (e) , the party is not allowed to use that
information or witness to supply evidence on
a motion,
at a hearing,
or at a
trial,
unless
the
failure
was
substantially
justified or is harmless.
In addition to or
instead

of

this

sanction,

the

court,

on

motion and after giving an opportunity to be
heard:

(A)

(B)

may order payment of the reasonable
expenses,
including
attorney's
fees,
caused by the failure:
may inform the
jury of the party's
failure;

(C)

and

may impose other appropriate sanctions,
including any of the orders listed in
Rule 37(b)(2)(A)(i)-(vi).

Fed.

R.

Civ.

P.

37 (b) (2) (A) (i) - (vi)

provides

the

following

way of alternate or additional sanctions:

(i)

directing that the matters embraced in
the order or other designated facts be
taken as established for purposes of
the
action,
as
the prevailing party
claims;

(ii)

prohibiting the disobedient party from
supporting
or
opposing
designated
claims or defenses, or from introducing
designated matters in evidence;

by

(iii)striking pleadings in whole or in part;
(iv) staying further proceedings until the
order is obeyed;
(v)
dismissing the action or proceeding in
whole or in part;
(vi) rendering a
default
judgment against
the disobedient party
The process of deciding whether to impose sanctions such as
those

requested

by

NVIDIA

involves

three

major

steps:

(1)

determining that a violation of a discovery order or one of the
Federal

Rules

of

Civil

Procedure

occurred;

(2)

determining

whether that violation was harmless and substantially justified,
by reference to Southern States Rack & Fixture,
Williams Co.,

318 F.3d 592,

a sanction to the violation,

A.

597

{4th Cir.

Inc.

2003);

v.

and

Sherwin-

(3)

fitting

violation of a

rule of

if one is found.

Establishing The Existence Of A Violation
First,

a

court determines whether a

civil procedure or a

court order has occurred.

26

expert

requires

that

an

witness's

report

Fed.

must

R.

Civ.

include

P.

"the

facts or data considered by the witness in forming" his opinion.
Fed.

R.

parties,

Civ.

P.

with

26 (a) (2) (b) (ii)
the

Discovery Order

Court's

that

(emphasis

approval,

provided:

"all

added).

agreed

to

materials

However,
a

the

Stipulated

generated

by

a

testifying expert with respect to that person's work are exempt
from discovery unless

opinions

in

this

relied upon by the expert

litigation."

(Docket

No.

198,

in forming

8-9)

any

(emphasis

added).

Thus,

Samsung's

obligation

here

was

to

disclose

the

documents upon which Dr. Choe relied.
At

trial,

Dr.

Choe's

testimony

was

whether he relied upon the undisclosed scans.
Mem.
on

9-14,

16-17). On January 28,

cross-examination

by

2016,

NVIDIA's

inconsistent

(E.g.,

about

Def.'s Choe

in response to questions

counsel.

Dr.

Choe

clearly

stated that he had relied upon material that was not disclosed
as part of his

report.

(Tr.

Jan 28,

2016

697:14-16,

702:10-22;

Def.'s Choe Mem, 10-13).^ On January 29, 2016, Dr. Choe stated,
with

equal

clarity,

that

he

had

not

relied

that was not disclosed as part of his report.
941:2-5;

PI.'s Choe 0pp.

upon

(Tr.

any material

Jan.

29,

2016

5-6). The parties concur that the Court

is both the appropriate factfinder and the proper judge of Dr.

^ Aside from several minutes of introductory remarks in English,
Dr. Choe testified in Korean through an interpreter, whose work
was verified by a check interpreter. The parties briefly tussled
over whether Dr. Choe's understanding of "relied upon" is the
result of potential linguistic difficulties. (E.g., Def.'s Choe
Mem.
1-2, 18-21; Pl.'s Choe Mem.
6). The Court declines to
investigate potential alternate meanings of "relied upon": the
interpreters were skilled and capable,
and they articulated
concerns about linguistic nuances when such concerns arose.
(E.g., Tr. Jan. 29, 2016, 940:18-19). The Court is not qualified
to judge linguistic nuances, and must rely upon the work of the
translators. Moreover, if the Court began second-guessing the
interpreters' translations of record, it would wreak havoc upon
the Court and the parties' ability to rely upon that record. The
Court and the parties are entitled to - and for the sake of an
orderly record,
must rely upon the work of the capable
translators.

Choe's credibility on this issue.
Choe 0pp.

(Def.'s Choe Mem. 16-18; Pl.'s

6-7).

The

Court

finds

that,

in

keeping

with

regularly by Techlnsights and others

in the

did

disclosed

rely

report.

upon
The

documents,

images

Court

Dr.

that

notes

Choe

were

not

that,

did

in

not

failing

act

procedures

industry.
with

to

used

Dr.

his

expert

disclose

duplicitously

or

Choe

those

with

any

awareness that he was not fulfilling Samsung's obligations.'' It
is

equally

counsel

clear

that,

that

in

Dr.

Choe

following

did

his

not

usual

explain

to

practice,

Samsung's

he

had

not

disclosed all the materials upon which he had relied.

In an attempt to argue that the nondisclosure was still not
a

violation,

"raw

data

typically

(Pl.'s

fall

characterizes

back-up
outside

0pp.

7).

argument.

their

disclosure

his

and

Choe

Samsung's
with

Samsung

own

the

First,

are
the

Stipulated

Thus,

Dr.

even

of

two

according
Fed.

Discovery

to

Civ.

Order
to

non-disclosed

as

Samsung,
P.

26{a).

problems

supplanted

relied upon

the

R.

significant

parties

Choe

if

undisclosed material

that,

reach

There

of whatever

opinions.

files,"

the

Rule

that
form or

with
26(a)

required
support

documetns

were

^ The Court observes that standard practice in the semi-conductor
industry is not standard practice in civil discovery. When the
Court, by rule or order, requires greater disclosure than is
standard in the industry, it is the Court's rule or order that
governs.
9

"raw data and back-up files,"

Choe relied on them.
they

were

subject

they had to be disclosed if Dr.

Because Dr. Choe relied upon these scans,

to

disclosure.

Second,

the

record

suggests

that the undisclosed information was not just "raw data or back
up files."
materials

Choe's

-

EEL

expert

report -

and

only

On

the

EDS

report.

following

disclosed
17-18) .

Much of the omitted materials were the same type of
scans

-

(Def.'s

that

Choe

were

submitted

Mem.

11-18).

with

Dr.

Dr.

Choe's

semiconductor industry standard procedures -

one-tenth

of

these

record before

the

are of the same kind and form

materials.

Court,

{Def.'s

the materials

Choe

Br.

disclosed

(though not the exact content)

the materials that were not disclosed.

Thus,

as

i t is not possible

to characterize them as "raw date or back-up files"

which would

not be subject to the Stipulated Discovery Order.
On this basis,
all

of

Samsung

the

the Court finds that,

materials

violated

nondisclosure

was

the
not

relied

upon

Stipulated
known

by

by

by failing to disclose
its

Discovery
Samsung

or

expert.

Order.
its

Dr.

Choe,

Although

counsel,

the

it

is

nonetheless the responsibility of counsel to make clear to their
experts
Dr.

the

Choe's

scope

of applicable

nondisclosure

and

disclosure
the

obligations.

resulting

violation

ultimately be attributed to Samsung.
B.

Substantially Justified And Harmless

10

(Southern States)

Thus,
must

standing alone,
corrective action.

disclose was not
Fed.

R.

Civ.

P.

nondisclosure

does

not

require

A court only takes action if the

(1)

substantially justified and

37(c)(1);

Southern States,

(2)

or

justify

failure

to

harmless.

318 F.3d at 595.

In

the Fourth Circuit,^ substantial justification and harmlessness
are determined by reference

to

five

factors

stated in Southern

States:

(1)

The surprise to the party against whom the evidence would
be offered.

(2)

The ability of that party to cure the surprise.

(3)

The extent
the

to which

allowing the evidence would disrupt

trial.

(4)

The importance of the evidence,® and

(5)

The nondisclosing party's explanation for its failure to
disclose the evidence.^

^ The Federal Circuit reviews a district court's decision to
exclude evidence under the law of the regional circuit. Tokai
Corp.
Cir.

V.

Easton

Enterprises,

Inc.,

632

F.3d

1358,

1364

(Fed.

2011) .

® "Importance of the evidence" cannot, by itself, save improperly
disclosed evidence from being found unjustified or non-harmless.
Even if a party's entire case hangs on one expert, such that
excluding the
expert
leads
inevitably to
summary
judgment
against that party, then that expert's testimony may be excluded
if that expert's testimony was improperly disclosed.
E.g.,
Zaklit v. Global Linguist Solutions, LLC, 2014 WL 4925780 (E.D.
Va.

Sept.

30,

2014).

11

Southern States,
these

factors

Montgomery,
318

F.3d

318

lies

F.3d at

597.

The

burden

at

"substantially

the

nondisclosing

F.3d 214,

222

(4th Cir.

596.

751

with

the

failure

If

justified"

and

of

party.

2014);
to

"harmless,"

establishing
Wilkins

v.

Southern States,

disclose

then

then

was

the

not

court

proceeds to impose a sanction.
Applying

clear

that

the

Southern

Samsung's

States

failure

nor substantially justified.

to

factors

to

disclose

this

was

case,

neither

it

is

harmless

Each factor will be considered in

turn.

1.

Surprise and Cure

Samsung

argues

nondisclosure
because

before

NVIDIA

this

hearings
August

and

documents.

was

was

notice

Samsung

depositions,
2015,

NVIDIA

able

on

trial.

and
31,

that

that

to

cannot
easily

about

also

NVIDIA
Dr.

Choe

Dr.

be
cure

the

Choe's

points
received
had

surprised

out

the

nondisclosure
methods

that,

notice

relied

by

as

on

months

through
early

as

undisclosed

(Pl.'s Choe 0pp. 9-11).® Thus, Samsung argues, NVIDIA

^ Bad faith is explicitly not one of the Southern States factors.
E.g., Southern States, 318 F.3d at 596 ("excluding evidence only
when the nondisclosing party acted in bad faith would undermine
the basic purpose of Rule 37(c)(1): preventing surprise and
prejudice to the opposing party); Rambus,
Inc. v.
Infineon
Technologies, AG, 145 F. Supp. 2d 721, 725-27 (E.D. Va. 2001).

® Samsung also argues that NVIDIA was on notice of Dr.
scan-selection methods

as

early as May 18,
12

2015,

when

Choe's

Dr.

Choe

could not have been surprised by the testimony at trial,

and it

would have been easy for NVIDIA to have cured this violation if

NVIDIA had acted when it received notice.® (Pl.'s Choe 0pp. 814). On this record,

it is evident that Dr. Choe's disclosure of

the process that he followed at various proceedings put counsel
for

NVIDIA and Samsung on notice

that

Dr.

Choe's

report would

disclose only some of the scans upon which he relied.
However,

notice

failure

to

curable,

even

the

when
that

States,

(relying

This

disclose

material

United

in

deposition

in

that

on Carr v.

F.

expert

deposition

should

626

the

testimony

have

report

testimony

2d

453

587,

F.3d

604

is because

"Rule 26 disclosures

are

of discovery in

litigation that uses

expert

that

fails

opponent's

to

provide

ability

litigation,

and

the

case."

Carr,

was

deposed

in

to

these

properly

undermines

a

453

F.3d

separate

(E.D.

Va.

(4th Cir.

the

district

court's

at

604;

proceeding

2006)).

A party
its

prolongs

management

Campbell

also

v.

2009)

inhibits

unnecessarily

593,

or

centerpiece

witnesses.

unfairly

a

covers

Perkins

prepare,

the

ITC

E.g.,

often

disclosures

render

completely

591-92

593,

not

unsurprising

been disclosed.

Supp.

Deeds,

does

of

v.

United

between

Samsung

and NVIDIA. (Pl.'s Choe 0pp. 9). It is the Court's understanding
that NVIDIA's outside counsel in this case also represents
NVIDIA in the ITC proceeding.

® The Court observes that this argument cuts both ways. If NVIDIA
was on notice of the violation in August, then Samsung also was
on notice on the violation in August, and could have remedied
the violation before t r i a l .
13

States, 2011 WL 588344 (E.D. Va. Feb. 8, 2011)
26(a)(2)

exists

partly

so

that

parties

(noting that Rule

are not

required to

discover the basis for an expert's testimony entirely through
deposition testimony);

see also Abraham v.

237 F.3d 386, 392-93

(4th Cir. 2001)

failure

motion

to

file

a

to

Cty.

(noting that one party's

compel

did

nondisclosing party's obligation to disclose);
Ltd. P'ship I, No.
Dec.

2,

2013)

of Greenville,

not

waive

Adams

v.

3:11-CV-141, 2013 WL 6229379, at *2

(noting

the

general

proposition

that

the

Kroqer

(E.D. Va.
what

an

opposing party should have known does not affect a nondisclosing
party's obligations). A failure to disclose in the right form,
at

the

right

nondisclosure,
notice

does

time,

impedes

such that
not

discovery

at

the

time

of

later putting the opposing party on

render

the

nondisclosure

unsurprising

or

curable.

The United States Court of Appeals for the Fourth Circuit

and the district courts in this circuit are clear that an expert
report

should

provides

all

be
the

trial,

along

with

United

States,

Global

Linguist

470

a

comprehensive

expert's

the
Fed.

opinions

bases

for

App'x

Solutions,

document

those

153

LLC,

that

2014

(4th
WL

that,

will

be

opinions.
Cir.

by

offered

at

Campbell

v.

2012);

4925780,

itself,

at

Zakit
*3

v.

("the

advisory committee intended that an expert's written report be
so detailed and complete that it would Mispense[] with the need
14

to

depose

the

expert.");

Sharpe

v.

United

States,

230

F.R.D.

452, 458 (E.D. Va. 2005). The significance of the expert report
as

the

proper

time

and

place

for

complete

disclosure

finds

support in the structure of discovery: experts provide reports,

and those reports form the basis for informed deposition-taking.
Campbell,
that

2011 WL 588344 at *3

an

expert

[expert's]
revealing

deposition

report

is

information

(noting that "Rule 26 provides

^may

be

provided'"
at

a

conducted

to

support

deposition

does

only
the

not

after

the

notion

that

alleviate

the

surprise or incurability of a failure to disclose in a report).^®
In

conclusion,

the

record

is

clear

that

NVIDIA

was

on

notice that Dr, Choe's report would disclose only a portion of
the

scans

upon

which

he

relied.

However,

that

notice

is

not

dispositive to a Southern States surprise or curability analysis
because

the

duty

to

timely

and

completely

fulfill

expert

disclosure requirements rests at all times on the proponent of
the expert witness.

What NVIDIA could have done does not alter

what Samsung ought to have done.

The

rule

is

different

when

an

expert's

disclosures

are

complete, but simply not articulated as clearly as it might have
been. Golden Nugget, Inc. v. Chesapeake Bay Fishing Co., L.C.,
93 F. App'x 530, 536 {4th Cir. 2004). The case before this Court
is not one of lack of clarity, however, but of absence of
material.

15

Additionally,
cure

a

failure

notice

to

at

disclose

a

deposition

materials

is

that

insufficient

ought

to

have

to

been

included in the expert report because disclosure in the right
form

(complete)

before

the

party's

and at the right time

expert's

ability

(critical

deposition)

is

engage

to

analysis

{with the expert report,

meaningful

of

the

targeted

deposition) ,

In

surprise

(such as it was)

in

critical

expert's

this

the

an

opposing

expert

report,

case,

to

and

only

way

discovery

taking
to

of

cure

a

the

at this juncture is to give NVIDIA an

opportunity to engage in the full

expert discovery to which it

was

cure

entitled.

The

nature

of

this

will

be

discussed

in

a

following section.
2.

Disruption To Trial

The

^602 patent did not involve any of Dr. Choe's work, and

required only several days of evidence.

Accordingly,

no disruption of the trial as to that patent.
record,

for

the

consequence

of

the nondisclosure was

effecting

the

there was

However,

on this

only meaningful

complete disruption

of the

cure

trial

on

the ^902 and ^675 patents.

Theoretically,

directed

the

evidence

on

expert
and

(3)

as Samsung urged,

parties
the

'602

discovery while
directed

the

to

proceed

patent;

(2)

trial on the
parties

to
16

the Court might have:

with

the

allowed

*602

proceed

presentation

NVIDIA

to

(1)

of

conduct

patent was underway;
with

evidence

on

the

'675 and '902 patents promptly after the conclusion of evidence
on

the

'602

patent.

That

would

have

allowed

the

trial

proceed roughly within the time period allocated for trial,

all

three

patents

would

originally

chosen

for

theoretical

alternative

have

been

that

purpose.

would

have

tried
In

kept

before

and

the

jury

words,

other

the

to

this

trial

going

with

minimal disruption to the jury and the Court.
However,
discovery

forcing

in

a

matter

opportunity to cure,
been

no

cure

NVIDIA

at

of

to

all.

analyze,

days

complete

would

have

supplemental
been

an

expert

ineffective

so much so that it would essentially have
Techlnsights

processing these images.
NVIDIA

to

(Tr.

2016 1229:15-16).
produce

hours

Asking

opinions on these images over the course of a few days,

in the

of

and

of

expert

standards

on,

1,

hundreds

jury-ready

middle of a trial,

depose

Feb.

spent

would be an impossible schedule,

large-scale

civil

litigation.

In

even by the
sum,

forcing

NVIDIA to conduct expert discovery in a time period short enough
to avoid disrupting the trial would have meant that NVIDIA could

not conduct effective expert discovery.
On

excluding

the

Dr.

other

hand,

Choe

curing

entirely,

as

the

failure

NVIDIA

urged,

to

disclose

would

make

by

it

impossible to hold a trial on the '675 and '902 patents at all.
Both Samsung and NVIDIA's
opinions upon Dr.

infringement

Choe's report.
17

experts predicate their

If the Court had excluded Dr.

Choe's

report,

intelligently

then

neither

about

infringement

infringement,

because

expert
both

could

relied

speak
on

Dr.

Choe's analyses and opinions in framing their own opinions.
The

fact

that

it

was

impossible

to

cure

the

failure

to

disclose without significantly disrupting the trial demonstrates
the failure to disclose was not harmless.

3.

The Nondisclosing Party's Explanation

Samsung stresses that it held a good faith belief that the

reports it disclosed contained all of the material relied upon
by

Dr.

Choe

in

reaching

his

opinions,

as

required

by

the

Stipulated Discovery Order.

(Pl.'s Choe 0pp. 5-7, 17). The Court

has no doubt that is true.

Additionally, the parties agree that

the

experts

believed

that

Dr.

Choe's

report

followed the semi-conductor industry standard.

as

disclosed

(Def.'s Choe Mem.

10, 17-18; Pl.'s Choe 0pp. 17).
But

faith

-

good or bad -

is

not

relevant

the

substantial

justification component or the harmless component of a Southern
States analysis.

Southern States,

F.

725-27.^^

Supp,

objective
Southern

2d at

circumstances
States,

318

nondisclosing party

318

Instead,

at

failed

to

598

the

Rambus,

nondisclosure.

(considering

disclose

145

argument

E.g.
that

because opposing party

Good faith comes into play in fitting
failure, discussed in a subsequent section.
18

596;

"explanation" looks to the

surrounding

F.3d

F.3d at

the

sanction to

the

delayed

producing

based);

Rambus,

actions

of

145 F.

court

disclosure).

In

feasibility
parties'

formula

of

full

2d at

opposing

sense,
and

undisclosed

732

was

(considering whether

party

justified

"explanation"

timely

opinion

looks

disclosure

than

belated

more

at

the

it

does

at

intent.

Examining

the

nondisclosure

circumstances

arose

understand the full
Choe,

which

Supp.

and

that

upon

and

obligations

hence
under

because

here,

it

is

Samsung's

counsel

extent of the material
the

the

full

extent

Stipulated

of

clear

that

the

failed

to

relied upon by Dr.

Samsung's

Discovery Order.

disclosure
(Pl.'s

Choe

Mem. 3-7). Counsel's lack of knowledge of the full extent of Dr.

Choe's

disclosure

obligations

is

that substantially justifies a

not

the

sort

nondisclosure.

of

circumstance

Campbell,

2011 WL

588344, at *5.^^ Indeed, any contrary holding would minimize the
obligation
retained

that

experts

accordingly.

counsel
are

bears

doing

Furthermore,

to

and

any

fully
to

make

understand
Rule

26

what

their

disclosures

contrary holding would neglect

that expert witnesses are under contract to the hiring party.

" Again, the Court notes that, if NVIDIA was on notice of Dr.
Choe's inadequate methods, then Samsung also was on notice of
Dr. Choe's inadequate methods as early as August 31, 2015 (Pl.'s

Choe 0pp. 9-11). As such, the ability to properly disclose
through supplementation prior to trial was not the sort of
circumstance outside Samsung's control that provides an adequate
"explanation" under Southern States.

19

e»q->

Burger

v.

1587396, at *1
must

be

Allstate

Ins.

Co.,

No.

07-11870,

2009

WL

(E.D. Mich. June 8, 2009), and that their actions

attributed

to

the

party

if

the

Court

is

to maintain

reasonable control over discovery.

In conclusion,

the Southern States factors uniformly weigh

against finding that Samsung's failure to disclose was harmless
or substantially justified.
C.

Fitting The Sanction To The Failure

Having determined that a violation occurred,

violation

was

not

harmless

or

substantially

justified,

necessary to determine what sanction to impose.

R.

Civ.

P.

37(c) (1)

is often read as

and that the

it

is

Although Fed.

an automatic preclusion

sanction against a noncomplying party that prevents that party
from

offering

sentence

of

the

the

nondisclosed

rule

permits

evidence

"other

at

trial,

appropriate

Supp.

select

2d at

724.

District

courts

Rambus,

in

145

enjoy broad discretion to

an appropriate remedy in light of the

circumstances. Southern States,

second

sanctions"

addition to or in lieu of the automatic preclusion.
F.

the

318 F.3d at 593;

totality of the
Fed.

R.

Civ.

P.

37(c) (1) .

The

Fourth Circuit employs a

four-part

test to guide the

exercise of that discretion:

(1)

Whether the non-complying party acted in bad faith;

20

(2)

The amount of prejudice that noncompliance caused the
adversary;

(3)

The need for deterrence of the particular sort of noncompliance; and

(4)

Whether

less

drastic

sanctions

would

have

been

effective.

Law

Enforcement Alliance of Am.,

Fed. App'x 822,

830

for Advancement,
500,

504

(4th

Carriers,

(4th Cir.

Educ.
Cir.

Inc.,

39

2003)

v.

USA Direct,

Supp.

see

also

3d 752,

Fourth Circuit has also noted a

F.3d

583,

590

(4th

Indians^

Flame

764

S.A.

(E.D.

155 F.3d
v.

Va.

Found.

Indus.

2014).

The

need for sanctions to "level []

the evidentiary playing field." Silvestri v.

271

Inc. ^ 61

(quoting Anderson v.

and Employment of Am.
1998));

F.

Inc.

Cir.

2001)

Gen.

Motors Corp.,

(evaluating

appropriate

sanction in case of spoliation) .

NVIDIA

sanctions:

requested

(1)

exclude

mistrial on the

below,

the

Court

that

Dr.

'675 and

the

Court

Choe's

testimony,

'902 patents.

concludes

that

impose

a

or

one

(2)

of

declare a

For the reasons

mistrial

plus

two

an

stated

award

of

Levelling the playing field is a fairly common factor for
formulating an appropriate sanction in the spoliation context.
E.g.,

Cir.

W.

v.

1999) .

Goodyear Tire & Rubber Co.,

167

F.3d 776,

That approach has also been used when

779

(2d

crafting a

sanction when previously undisclosed evidence was revealed at
trial. Estate of Wallace v. City of Los Angeles, 229 F.R.D. 163
(C.D.
Cal.
2005)
(considering
the
need
to
"restore
the

prejudiced parties to the same position they would have been in
absent the wrongful concealment of evidence.").
21

certain

expenses

best

suits

the

conduct

in

question

and

the

purposes of discovery sanctions.

1.

Lack Of Bad Faith

Although good faith is irrelevant to determining whether a

discovery

violation

occurred

under

Southern

States,

Samsung's

good faith is nevertheless relevant to fashioning a sanction for
that

violation

although

under

Samsung's

Anderson.

counsel

violation, they were not.

The

should

record
have

been

is

clear
aware

that,
of

the

In fact, they believed that they were

acting in compliance with their obligations under the Stipulated

Discovery Order.

(Pl.'s Choe 0pp. 5-7, 17). Although the failure

to disclose was a violation of the Stipulated Discovery Order,
it was an honest mistake. Samsung's good faith counsels in favor

of imposing the least severe sanction that also accomplishes the
purposes of Anderson and Silvestri.

2.

The Amount Of Prejudice

Based on what

is

known

now,

the

failure

to disclose may

have deprived NVIDIA of an opportunity^'' to make an argument that
goes to the heart of NVIDIA's non-infringement defense.

{Def.'s

Samsung insists that this material will ultimately not help
NVIDIA's case.
(Pl.'s Choe 0pp. 15-17). The Court makes no
judgment about how helpful this material will be. Assessment of
such facts is reserved for the jury, and NVIDIA is entitled to

make to the jury an argument informed by its expert's analysis
of all the materials relied upon by Samsung's expert.
22

Choe Mem. 1, 14, 25). Denying NVIDIA that opportunity by forcing
it to proceed without time adequately to analyze,
supplement

on

the

previously

undisclosed

constitute significant prejudice.

sanction must

be

shaped

to

depose,

information

would

In light of this factor,

allow

NVIDIA time

to

and

any

effectively

analyze, depose, and supplement.
3.

Need For Deterrence

The

the

exact

alleged

design

and

product,

circumstances

that

led

to

this

nondisclosure

infringer's

alleged

lack

of

knowledge

manufacturing

method

used

to

create

about

the

-

the

imported

and the resulting need to rely on third-party reverse

engineering reports
not foresee a

-

are

somewhat unusual,

and the Court does

significant need to structure a

sanction to deter

the exact type of oversight presented by the reverse engineering
expert in this case.

However,

because

deterrence is

nondisclosure,

still necessary

left

untreated,

snarls that eat up the parties'
jury's

time,

in

contravention of

resolved in a just, speedy,

P. 1.

of

gives

broader

rise

to

the Court's time,

the

rule

that

cases

and inexpensive manner.

sense

nasty

and the

should be

Fed. R. Civ.

There may not be much need to deter incomplete disclosure

semi-conductor

there

time,

in a

is

reverse

certainly

nondisclosure more

a

engineering

need

generally.

to

take

Thus,
23

scans
a

any

firm

specifically,
stance

sanction

in

to

this

but
deter

case

must sufficiently and strongly coininunicate that it is counsel's

duty to fully understand its expert's process of generating a
report and to ensure
everything

that

that

party

the expert provides the party with
requires

to

meet

its

disclosure

obligations.

Adequately
measure

of

communicating

deterrent

this

sanctions

position

that

leave

requires

the

some

nondisclosing

party worse off than it would have been if it had disclosed. Any

less severe ruling would not adequately encourage attorneys to
communicate the nature and extent of a

party's obligation when

dealing with expert witnesses,

and might even encourage counsel

to

expert

ignore

missteps

by

their

witnesses.

Additionally,

emphasizing counsel's obligation in such a fashion will help to
foreclose future disruption of the sort presented here. As such,

the

final

sanction in

this

case must

leave Samsung worse

off

than it would have been had it properly disclosed.
In
final
the

of

determining

extent

calculus must also take

infraction.

NVIDIA's

NVIDIA

the

was

discussed
shifting,

Here,

counsel
placed

on

that

to

follow

the

that

sanction,

into account all

calculus

notice

subsequently,

of

up

months

Court

in conjunction with a

24

must

on

factor

the

before

finds

mistrial,

the

Court's

circumstances of
in

the

failure

nondisclosure
trial.

that

As

when

will

limited

be

cost-

best effectuates the

need for deterrence of nondisclosure while not granting NVIDIA a
windfall for inaction.

4.

Availability Of Less Drastic Sanctions; Levelling The
Playing Field

The remedies available to a court for discovery violations
include: an order to the nondisclosing party to provide further
discovery,

shifting

of

costs

adverse inference instruction,
excluding all

of

a

certain

or

issues,

facts

judgment

or

witness's

dismissal.

and

testimony,

a mistrial,
Fed.

9948284,

consider

at

*8

(S.D.N.Y.

whether

effective,

less

imposing

fines,

an

excluding the withheld evidence,

R.

Fitzpatrick v. Am. Int'l Grp.,
WL

fees,

May

drastic

order

and an

Civ.
Inc.,

an

P.
No.

29,

entry of default

37;

see

10 CIV.
2013).

sanctions

establishing

also,

e.g.,

142 MHD,

The

would

and choose the least drastic sanction.

2013

court

must

have

been

Anderson,

155

F.Sd at 504.

In

fulfills

this

case,

the

goals

the

of

least

drastic

Anderson

and

sanction

Silvestri

is

which

a

also

mistrial

coupled with limited cost-shifting.
(a)

A

Mistrial

Is

A

Necessary

Component

Of

An

Effective Sanction

Mistrials

for

neither

are

they

blessed

the

grant

discovery

unheard
of

a

violations

of.

The

mid-trial
25

are

Fourth

mistrial

not

Circuit
on

the

common,

but

previously
basis

of

a

discovery

violation.

Abraham,

237

F.3d

at

392-93

(4th

Cir.

2001).^^ The Second Circuit has held explicitly that, "where ...
the nature of the alleged breach of a discovery obligation is
the

non-production

of

evidence,

a

District

Court

has

broad

discretion in fashioning an appropriate sanction, including ... to
declare

a

mistrial

if

the

Residential Funding Corp. v.

Cir.

2002).

Circuits

trial

supports

already

DeGeorge Financial,

Dicta from the First,

also

has

the

Seventh,

notion

that

commenced."

306 F.3d 99

Eighth,

mistrials

(2d

and Sixth

may

be

an

appropriate remedy when discovery violations are unearthed midtrial.
Cir.

1991);

Matei
1994);

V.

DesRosiers

Davis v.

{8th Cir.
F.3d 843,

Cessna

v.

Co.,

Moran,

see also Jones v.

(6th Cir.

35

949

American Jet Leasing,

1988);
852

Aircraft

F.3d

1142,

1147

{7th

(1st

Cir.

F.2d

15,

22

Inc.,

864

F.2d 612,

Illinois Cent.

R.

Co.,

613
617

2010).

In the criminal context, mistrials are only permitted when no

other remedy will
Harris

v.

Young,

suffice,
607

F.2d

owing to double
1081,

1086-87

discussed,
the Court believes that
severe sanction which fulfills the

jeopardy concerns.

(4th

Cir.

1979).

As

a mistrial is the least
purposes of Anderson and

Silvestri. Additionally, the double jeopardy concern is absent
in this case. As such, the proper standard is Anderson's more
flexible

"no

lesser

sanction will

suffice"

rather than

inflexible "no other remedy will suffice." Accord.

Harris's

Zambrano v.

City of Tustin, 885 F.2d 1473 {9th Cir. 1989) (holding that
district courts are "under an affirmative obligation to explore
alternative

remedies"

before

declaring

case).
26

mistrial

in

a

civil

District

a

mistrial

particularly

violations:
discovery,

280, 285

*9

(1)

suited

Arqo Marine Systems,

E.E.O.C. v.

(N.D.

information,

as

other

a

factors

remedy

that make

for

discovery

the wronged party's need to conduct additional

(S.D.N.Y. 1984);

evidence,
at

courts have noted several

Ohio

the

Inc.

v.

Camar Corp.,

(2) the importance of the nondisclosed

Spitzer Management,
May

amount

102 F.R.D.

22,

2013);

of time

it

Inc.,

and

will

2013 WL 2250757,

(3)

the

take

volume

to process

of

that

information, and the resulting hardship to the jury. Id.; Estate
of Wallace,

229

F.R.D.

2.^® These factors

at 156;

Milburn,

are all present

1993 WL 173403,

in this

at *1-

case to varying

degrees.

In this case,
of

reasonable

a mistrial,

expenses,

is

coupled with a limited assessment
the

least

severe

sanction

that

fulfills the goal of restoring NVIDIA to the situation it would
have been in absent the failure to disclose.

at

590;

Estate

of

Wallace,

229

F.R.D.

Silvestri,

at

165-66.

271 F.3d

Ordering

Samsung to provide further discovery is useless to NVIDIA unless

NVIDIA

has

time

to

process,

depose,

and

use

that

discovery.

Cases discussing the decision to grant a midtrial mistrial
only in passing include Koehn v. Yamaha Motor Corp., USA, 1997
WL 250456 (D. Kan. Apr. 2, 1997) and In re Connolly N. Am., LLC,
376 B.R. 161, 164 (Bankr. E.D. Mich. 2007). These cases lack
substantive discussion of why a mistrial was appropriate, but

their existence tends to demonstrate that mistrials are accepted
across the federal system as sanctions for discovery violations.
27

Given that Techlnsights spent hundreds of hours processing these
images

(Tr.

Feb.

expect

NVIDIA

to

1,

2016

put

1229:15-16),

these

materials

it

is

to

inappropriate to

use

several weeks from the time of production.

any

sooner

than

Granting a mistrial

provides NVIDIA with the time i t needs.

(b)

Any

Sanction

Lesser

Than

A

Mistrial

Would

Be

Ineffective

Of course,

it is not enough that a mistrial can level the

playing field:

to meet the requirements of Anderson,

a mistrial

must

the

capable

also

be

least

severe

sanction

which

is

of

curing the violation.
Under

severe

the

than

because

a

circumstances

other

of

this

"terminating"

mistrial

delays

Samsung's access to a

jury.

but

does

severity -

the highest level -

disagrees

Dismissing

with

Samsung's

states

face,

that

Fitzpatrick,

that

Samsung's

unquestionably

the

such

a

is

less

dismissal,

completely

preclude

Fitzpatrick characterizes its

reproduced above, as an "ascending" order of

and

dismissal.

not

mistrial

A mistrial is also less severe than

sanctions,

or

a

sanctions

exclusion of Dr. Choe's testimony.

list of sanctions,

case,

a

mistrial

is

harshest

precluding

the

same

level

of

as an entry of default judgment

2013

WL

9948284,

characterization,

claims

on

on

the

sanction

future

28

at

'902
-

*8.

in

and

'675

of

slam

those

The

Court

this

least

would

relief

at

case.

patents

the

door

patents

in

are

being

infringed.

fundamental

to

However,

because

Samsung's

Dr.

infringement

Choe's

testimony

case,

excluding

is
his

testimony would have the same impact as outright dismissal.By
contrast,

declaring a

mistrial leaves the door to relief open.

Samsung may return to the courtroom in a

has

been

afforded

sufficient

time

to

few weeks,

analyze,

when NVIDIA

depose,

and

supplement. Samsung's opportunity to take its case to trial will
be

briefly

mistrial

delayed,

is

less

but

severe

not

permanently

than dismissal

lost.

As

such,

a

or exclusion under these

circumstances.

No

sanction

less

severe

than

mistrial

would

what it needs to level the playing field:

time.

drastic

to

sanctions

discovery,
inadequate

cost
to

of

ordering

shifting

level

the

Samsung

(standing
discovery

Thus,

provide

alone),
playing

give

and

field

NVIDIA

the less
further

fines
and

are

restore

NVIDIA to the position it would have been in absent the failure

to

disclose.

Additionally,

several weeks
rebut,

the

insufficient.

is

necessary

lesser

sanction

having
for

concluded

NVIDIA to

of

It is inappropriate,

a

mere

that

analyze,

a

depose,

continuance

having told a

delay

is

of
and

also

jury to expect

a three-week commitment, to subsequently tell that jury that the

Thus, NVIDIA's preferred sanction - exclusion of Dr. Choe's
testimony - ins inappropriate, because a less severe sanction (a
mistrial plus limited cost shifting) will satisfy Anderson and
Silvestri.
29

case is going into an extended recess and that the jurors will
need to return in several weeks. E.E.O.C. v. Spitzer Management,

Inc•,

2013 WL 2250757

(N.D. Ohio May 22, 2013)

(noting that such

procedural irregularity would suggest attorney incompetence to a
jury);

Estate

of

impossibility

of

Wallace,

229

concluding

F.R.D.

at

discovery

163

within

(noting
the

the

timeframe

initially given to the jury as a reason to declare a mistrial) .
Moreover,

even

if

the

Court

declared

an

called this jury back in several weeks,

extended

recess

and

it is unlikely that the

jurors would remember the evidence on the '902 and '675 patents
that were presented during the first days of trial.

Stone,

1993 WL 173403,

that dividing a

at

*1-2

(D.D.C.

May 14,

Milburn v.

1993)

(noting

case over several weeks creates an "incoherent"

presentation) .

In

this

inference
mistrial,

situation,

instruction

the

would

Court

also

actually

finds

be

more

spoliation cases,
is

severe

adverse

than

a

Incoherence

71

is

typically given in

instructs that the jury may infer that absent

favorable

Marine Corp.,

1.8

an

and would also be inappropriate to the nature of the

violation. An adverse inference instruction,

evidence

that

to

F.3d 148,

a

a

party.
156

particular

patent cases.

30

E.g.,

(4th Cir.

concern

Vodosek
1995).

in

v.

Bayliner

In this case.

already-confusing

the evidence is not actually missing.

When the newly disclosed

evidence is presented, the jury may find that it is favorable to
NVIDIA,

that

neutral,

Dr.

or

Choe's

unfavorable

testimony plays

to

NVIDIA.

in this

Given

case,

jury that the missing information would be
places

Samsung in a

process

the

the

key

role

instructing the

favorable

to NVIDIA

worse position than giving NVIDIA time to

information,

and

is,

as

such,

actually

a

harsher

sanction than a mistrial under these circumstances.^® Moreover,
an

adverse

inference

instruction

would

levy

more

blame

on

Samsung than the facts warrant: although the principal fault for

the nondisclosure

rests

with Samsung,

NVIDIA was

on notice of

the nondisclosure but took no action to remedy the nondisclosure
prior to trial. To tell the jury that Samsung failed to disclose

evidence

would,

severely

than

on
the

this

record,

circumstances

prejudice
warrant

Samsung

under

more

Anderson

s
and

Silvestri.

A mistrial is necessary to place NVIDIA in the position it

would

have

enjoyed

absent

the

nondisclosure.

Accordingly,

a

mistrial is an essential component of crafting the least-drastic
sanction available.

Additionally, given the complex nature of the case and the
parties' dispute over the utility of the newly disclosed data
(Def.'s Choe Mem. 1, 14, 25; Pl.s Choe Mem. 15-17), it is
unlikely

that

the

Court

could

craft

describes the nature and significance of
data to the satisfaction of both parties.
31

an

the

instruction

newly

that

disclosed

(c)

Limited Cost
More
Severe
Effective

Declaring

a

Shifting Is An Essential, But Not
Than
Necessary,
Component Of An

Sanction

mistrial

expense to NVIDIA.

will

necessarily

result

in

added

An allocation of all or part of that expense

is also an appropriate and permissible component of a sanction.
In this case,
future

some allocation of expense is necessary to deter

nondisclosure

by

ensuring

that

the

Court's

sanction

places the nondisclosing party in a worse position than it would
have been if it had fulfilled its obligations.
NVIDIA

to

(1)

will

necessarily incur additional

supplemental

relitigating the

expert

'902 and

discovery

'675 patents.

expenses

and

(2)

related

partially

Because of Samsung's

role in creating the need for a mistrial, it is appropriate to
shift

some

of

this

expense

to

Samsung.

However,

NVIDIA

is

certainly not blameless in the circumstances that necessitated a

mistrial.

Indeed,

NVIDIA could have headed off the need for a

mistrial months ago if it had acted on the notice that it was
given in August,
parties

the

goal

best

be

have

of

2015.

played,

the

achieving

served

by

Considering the relative roles that both

a

purpose

level

allocating

of deterrence

playing

part

32

of

field

the

(Anderson)

(Silvestri)

added

and

will

expense

of

supplemental expert discovery to Samsung.

Specifically, Samsung

will be assessed the reasonable costs incurred by NVIDIA:

(1)

For the work of Dr.

Lee in examining the previously

nondisclosed images from Techlnsights,
advising

NVIDIA's

counsel

with

in studying and

respect

to

the

supplemental report to be prepared by Dr. Fair and any
rebuttal

report

submitted by

for

being

deposed

and

report,

the

in

helping

deposition

of

Choe,

respecting

NVIDIA's

Dr.

Dr.

these supplemental reports

his

counsel

Choe

and

Dr.

(and,

in

preparing

supplemental

prepare

Fair

rebuttal

to

take

respecting
reports

as

to Dr. Choe, if any); and

(2)

For the services of one lawyer in working with Dr. Lee
on the work outlined as to Dr.

Lee in paragraph

(1)

above;

the

the

and

depositions

in
of

preparing
Dr.

supplemental reports
Choe)

Choe

for
and

Dr.

taking

Fair

as

of
to

their

(and any rebuttal report of Dr.

and the defending of the deposition of Dr.

Lee

as to his supplemental report; and

(3)

The reasonable cost, if any, of travel and lodging for
Dr. Lee for the taking of his deposition; and

(4)

The

reasonable

cost

of

travel

and

lodging

for

lawyer to take the deposition of Dr. Choe and Dr.

one
Fair

on their supplemental reports (and any rebuttal report
33

of Dr.

Choe)

and to attend the deposition of Dr.

Lee

(if that deposition is taken where Dr. Lee lives).

This limited cost-shifting provision takes into account all

the goals enumerated in Anderson and Silvestri. First,
the

cost-shifting

supplemental

related

to

expert

general

second trial,

is a

to

the

reasonable

discovery,

expenses

rather

preparation

for

than

either

limiting

associated

to

the

fees

and

first

with
costs

or

the

relatively limited sanction that takes into

account Samsung's good faith.

Second,

granting cost-shifting at

all takes into account the prejudice that NVIDIA incurred by
proceeding through discovery with a significant handicap. Third,

granting cost-shifting at all deters future similar failures by
establishing

a

sanction

which

ensures

that

the

costs

of

nondisclosure are higher than the costs of proper disclosure.

Fourth, no lesser sanction will do, because deterrence requires
that the Court leave Samsung worse off than it would have been

if it had disclosed properly.

Finally,

imposing partial cost-

shifting restores NVIDIA to where it would have been

it had

alerted Samsung or the Court to Dr. Choe's nondisclosure at the

time NVIDIA was on notice of the nondisclosure.
in

this

case

nondisclosure,

is

intended

without

to

giving

inaction.

34

Cost-shifting

compensate

NVIDIA

NVIDIA

windfall

a

as

to
for

the
its

In

conclusion,

addition

to

declaring

Anderson^ s
expenses
the

deterrent

a

severe

and

(2)

cost-shifting

mistrial

goal.

incurred during

least

goals;

reasonable

is

necessary

Limiting

supplemental

sanction that

of

some

to

kind

in

effectuate

cost-shifting

only

expert discovery:

effectuates Anderson's

to

(1)

is

deterrent

discourages opposing parties from inaction after

receiving notice of a failure to disclose, best effectuating the
"just, speedy, and inexpensive" purposes of the Federal Rules of
Civil Procedure.
CONCLUSION

For the reasons stated above, NVIDIA'S MOTION TO STRIKE THE
TESTIMONY AND REVERSE ENGINEERING REPORTS OF DR.

PURSUANT TO RULE 37(c)

JEONGDONG CHOE

(Docket No. 744) was granted in part and

denied in part. The Court has ordered a mistrial on the '902 and

'67 5 patents
curative

to provide

expert

discovery.

NVIDIA an
The

opportunity to

Court

declined

testimony or expert reports of Dr. Choe.

to

engage
strike

in
the

NVIDIA must carefully

account for the fees and costs that it incurs (and has incurred)

in effecting the cure for the Rule 26 violation.

35

It may submit

a claim for those fees after the trial is concluded.

20

It is so ORDERED.

1s1

flE/

Robert E. Payne
Senior United States District Judge

Richmond, Virginia
Date:
February Z,.f, 2016

20

NVIDIA is cautioned that reasonableness is the standard by
which
its
claim
will
be
measured.
Here,
reasonableness
encompasses the requirement of frugality because NVIDIA is far
from blameless in the creation of the need for a mistrial.

36