LG Display Co. v. AU Optronics Corp.

265 F.R.D. 189, 2010 U.S. Dist. LEXIS 12903, 2010 WL 545916
CourtDistrict Court, D. Delaware
DecidedFebruary 16, 2010
DocketCivil Action Nos. 06-726-JJF, 07-357-JJF
StatusPublished
Cited by3 cases

This text of 265 F.R.D. 189 (LG Display Co. v. AU Optronics Corp.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
LG Display Co. v. AU Optronics Corp., 265 F.R.D. 189, 2010 U.S. Dist. LEXIS 12903, 2010 WL 545916 (D. Del. 2010).

Opinion

MEMORANDUM OPINION

FARNAN, District Judge.

In the first phase of the Bench Trial in this patent infringement action, Defendants, AUO Optronics Corporation and AUO Optronics Corporation America (collectively, “AUO”), asserted four patents and seven claims1 against Plaintiff, LG Display Co., Ltd. (“LGD”). The Court reserved judgment on several evidentiary objections raised by the parties during the course of the trial. The parties have briefed their respective positions on the evidentiary matters raised, and this Memorandum Opinion constitutes the Court’s rulings with regard to the pending evidentiary matters in Phase I of the Bench Trial.

I. AUO’S POST-TRIAL EVIDENTIARY OBJECTIONS

A. The Opinions Of LGD’s Experts on the '160 and '629 Patents

AUO contends that LGD’s experts, Mr. Eccles on the '160 patent and Dr. Rubloff on the '629 patent, offered opinions that were not previously disclosed in their expert reports or during their depositions. AUO contends that it was denied the opportunity to take discovery on these opinions, and therefore, these opinions should be stricken from the record.

In response, LGD contends that Mr. Ec-cles’ June 4, 2009 trial testimony was proper rebuttal testimony to Dr. Silzar’s expert report, because the methodology underlying Dr. Silzar’s opinions was not disclosed until his May 1-2, 2009 deposition. Regarding Dr. Rubloffs opinions, LGD contends that his opinions were properly disclosed in his expert reports, and therefore, AUO had adequate notice of LGD’s non-infringement positions.

Federal Rule of Civil Procedure 26(a)(2)(B) provides that an expert report “shall contain a complete statement of all opinions to be expressed and the basis and reasons therefore.” The failure to disclose information required by this Rule may result in the exclusion of evidence based on that information, unless the failure to disclose is substantially justified or harmless. Fed.R.Civ.P. 37(c)(1). The determination of whether to exclude evidence is committed to the discretion of the Court. In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 749 (3d Cir.1994).

LGD does not dispute that Mr. Eccles’ objected to trial opinions were not disclosed by LGD until the third day of trial. Tr. 1039:24-1041:2 (Eccles); Tr. 1363:3-13 (Sil-zars).2 LGD only argues that Mr. Eccles’ undisclosed opinions were proper rebuttal to Dr. Silzar’s allegedly late disclosed methodology. Specifically, LGD contends that Mr. Eccles did not realize that Dr. Silzar’s was using a photodiode with a linear response. In light of the record, however, the Court finds LGD’s position untenable.

Mr. Eccles had approximately one month to review Dr. Silzar’s expert report before submitting his own rebuttal expert report on March 27, 2009, and another month to review and analyze the testing methodology before his deposition was taken on April 21, 2009. Tr. 1040:5-19, 1041:14-1043:9 (Eccles); see also Tr. 1333:21-1334:7 (Silzars). A review of Dr. Silzar’s expert reports reveals that his methodology was disclosed, and Mr. Eccles, as an expert in the field, could have set up [193]*193his own tests to rebut or verify Dr. Silzar’s results. Tr. 1343:10-23, 1335:3-8 (Silzars). Yet, Mr. Eccles ran no such independent tests. In fact, Mr. Eccles admitted at trial that he didn’t even “g[e]t into the measurements” of Dr. Silzar’s tests or make his own list of what he would have done while directing photometric measurements until the week before trial. Tr. 1044:12-1046:1 (Ec-cles). Mr. Eccles also conceded that although Dr. Silzar’s deposition testimony was the trigger for his new opinions regarding the accuracy of Dr. Silzar’s data, he “should have noticed [the purported inaccuracies] a couple of months ago.” Tr. 1045:22-23 (Ec-cles). Moreover, the Court notes that LGD never supplemented Mr. Eccles’ expert report, even though there was a month between Dr. Silzar’s deposition and Mr. Eccles’ trial testimony.

LGD contends that AUO had an opportunity to conduct cross-examination and rebut Mr. Eccles’ testimony through Dr. Silzar’s testimony. However, the fact that Dr. Sil-zars was able to, on the spot, offer rebuttal to Mr. Eccles’ testimony does not, in the Court’s view, provide a complete remedy to AUO. AUO and its expert were given no advance notice of Mr. Eccles’ testimony, and LGD made no attempt to amend its expert report prior to allowing Mr. Eccles to take the stand and reveal what LGD acknowledges were undisclosed, new opinions. In the Court’s view, this is precisely the type of attorney conduct that is prohibited by the Federal Rules of Civil Procedure. Accordingly, the Court concludes that Mr. Eccles’ testimony should be stricken from the record, and AUO’s objection will be sustained as it pertains to the testimony of Mr. Eccles at Tr. 924:12-926:17, 931:22-942:3, 963:20-966:8 and the related trial exhibit, LGD 1085 at Slides 160-009 through 160-018.

As for the testimony of Dr. Rubloff, the Court will overrule AUO’s objection. Though without much detailed analysis, it is apparent that Dr. Rubloff at least identified LT060VT and LT071VI in his expert report as products that give rise to the alleged on-sale bar with respect to the '629 patent. (LGDTX 399 Expert Report of Gary W. Rubloff on Invalidity of '629 Patent (February 27, 2009) at 76-77). AUO contends that Dr. Rubloffs opinion was premised on a finding that these two products were found to infringe the asserted claims, and AUO contends that it did not accuse LT060VI and LT071YI of infringement. However, the Court agrees with LGD that AUO cannot avoid the potential of an on-sale bar by simply not accusing the identified products of infringement in the first instance. The burden to prove the on-sale bar defense rests with LGD, and therefore, LGD must show that the products giving rise to the on-sale bar meet the elements of that defense.

As for the mask file correlation to LT060VI and LT071VI, there appears to be some basis for LGD’s assertion that it did not disclose the correct mask file because it was not within the temporal frame of AUO’s discovery request. AUO limited the term “LGD and LGDA Product” to “all LCD Modules and LCD Panels made, used, imported, offered for sale, or sold by or for LGD and/or LGDA since December 1, 2000.” (D.I. 1382, Exh. 1 at ¶ 5) (emphasis added). As LGD points out, the time-period for the correlation chart (post December 2000) is not the same for the invalidating sales (1999). However, the Court also notes that Interrogatory No. 23 requested “all corresponding (a) electronic mask files,” and therefore, there is an arguable basis for AUO’s argument that LGD did not meet its disclosure obligations. (Id.) (emphasis added). In any event, to the extent there is confusion over the correct mask file or to the extent that the change in mask file suggests modifications to the identified LGD products that preclude them from being prior art, the Court will consider those issues in the context of evaluating the merits of LGD’s on-sale bar defense, but will not use these issues as a basis to exclude LGD’s evidence regarding the on-sale bar.

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265 F.R.D. 189, 2010 U.S. Dist. LEXIS 12903, 2010 WL 545916, Counsel Stack Legal Research, https://law.counselstack.com/opinion/lg-display-co-v-au-optronics-corp-ded-2010.