Commissariat à l'Energie Atomique v. Samsung Electronics Co.

245 F.R.D. 177, 2007 WL 6849534, 2007 U.S. Dist. LEXIS 76716
District Court, D. Delaware·Decided October 16, 2007·No. Civil Action No. 03-484-MPT·Published·Cited by 8 cases

Opinion

MEMORANDUM ORDER

MARY PAT THYNGE, United States Magistrate Judge.

Plaintiff, Commissariat à l’Energie Atomique (“CEA”) objected to the Report and Recommendations (“Report”) (D.I. 659) of the Special Master issued on May 12, 2006.1 The Report resulted from a request by then defendant AU Optronics Corporation (“AUO”) to compel production of communications relating to the prosecution of French patents, many of which related to the those underlying the patents-in-suit.2 CEA asserts that those documents are shielded from production on the basis of French law on privilege and contends that the findings of the Special Master to the contrary are erroneous. The Special Master found that communications between CEA and its patent agent do not enjoy the privilege of absolute professional secrecy under French law because CEA failed to show that: (1) the communications involve individuals who are entitled to assert evidentiary privilege by virtue of their position; (2) the appearance on the Special List entitles an entity or its employees to professional secrecy; and/or (3) the communications are between individuals who had the requisite independence at the time that they occurred. As a result, the Special Master concluded that communications between CEA and its patent agents or engineers and internal communications between or among its own employees are not subject to evidentiary privilege protection. This is the court’s de novo review of the Special Master’s findings.

Procedural Background

Samsung moved to compel the production of certain communications relating the prosecution of French patents, the production of which CEO opposes on the basis that the communications between CEA and a French firm of patent agents, Brevatome, are privileged.

When the issue arose, a schedule was established by the Special Master to address this matter and other discovery disputes between the parties. Included in the process was selection of the court-appointed expert. Notably, in the selection of the court-appointed expert, the list of candidates was reviewed and discussed with the parties, “who unanimously expressed a preference for someone with ‘practical’ experience.”3 No objection was raised with the retention of Isabelle Leroux as the court-appointed expert.

The schedule included: a due date of the report of the court-appointed independent expert on French law issues, specifically French privilege law; a date when CEA was required to provide documents that outlined any ownership relations between CEA and Brevatome, including organizational charts; a due date for identification by the parties of any fact witnesses expected to testify at the evidentiary hearing, along with the nature of their expected testimony; and deposition dates for any fact witnesses, the court-appointed expert and the parties’ expert witnesses.4 The hearing and submission of relevant evidence occurred on April 21, 2006, which resulted in the Report, of which thirty-one of the thirty-nine pages were devoted to the issue of French privilege.5

[179] Standard of Review

Pursuant to Federal Rule of Civil Procedure 53(g), when acting on a master’s report and recommendations, the “court must afford an opportunity to be heard and may receive evidence, and may: adopt or affirm; modify; wholly or partly reject or reverse; or resubmit to the master with instructions.” 6 Findings of fact and conclusions of law are reviewed de novo.7 The Special Master’s findings on procedural matters are reviewed under the abuse of discretion standard.8

De novo review, however, does not necessarily mean a review that includes the submission of new evidence, particularly when evidentiary proceedings previously occurred before the Special Master. When a record on review “is sufficiently developed the district court may, in its discretion, merely conduct a de novo review” of the decision, making its own independent determination.9 Although de novo review refers to the review based on the record below plus any additional evidence received by the reviewing court, it also refers to review of the decision based only on the record below. The plain language of Rxxle 53 shows that the review of a Special Master’s decision requires the court to make a de novo determination, not conduct a de novo hearing. Rule 53 is similar to 28 U.S.C. § 636(b)(1)(C), when a district court reviews the recommendations of a magistrate judge, the district judge “may accept, reject, or modify” the findings made by the magistrate and “may receive further evidence.” Unlike a de novo hearing, “a de novo determination requires the district judge to ‘consider the record which has been developed before the magistrate [judge] and make his own determination on the basis of that record, without being bound to adopt the findings and conclusions of the magistrate [judge].”’10

After having the opportunity to reflect on the Special Master’s decision, CEA chose to designate certain previously unidentified individuals as fact witnesses, who also express opinions, by submitting their declarations.11 Further, CEA submitted two additional declarations from its expert, Mr. Monegier du Sorbier, commenting on why, in his opinion, the Special Master is wrong.12 Attached to his declarations is additional literature, not previously submitted, on the alleged inherent danger in making assumptions about a law’s [180] intended reach.13 The literature attached are articles or treatises on French law, not decisions regarding the interpretation of French law.

In light of the opportunity to develop the record including: a time period to identify fact witnesses, along with their expected testimony; to depose such witnesses; to provide expert opinions both through declarations and depositions; to submit exhibits and the extensive evidentiary hearing, which permitted additional examination of the experts, along with opening statements and post-hearing submissions, CEA had more than an adequate opportunity to present all relevant information and argument to the Special Master before his Report issued. The court sees no need to augment the record further with more expert opinions and factual assumptions and to do so in this situation would emasculate the purpose of the Special Master and Rule 53.14

Factual Background

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Commissariat à l'Energie Atomique v. Samsung Electronics Co., 245 F.R.D. 177, 2007 WL 6849534, 2007 U.S. Dist. LEXIS 76716 (D. Del. 2007).

245 F.R.D. 177 (Commissariat à l'Energie Atomique v. Samsung Electronics Co.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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