Samsung Electronics Co., Ltd. v. NVIDIA Corporation, No. 3:2014cv00757 - Document 822 (E.D. Va. 2016)
Court Description: MEMORANDUM OPINION. Signed by District Judge Robert E. Payne on 02/23/2016. (tjoh, )
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Samsung Electronics Co., Ltd. v. NVIDIA Corporation Doc. 822 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- Dockets.Justia.com 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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