Texas Instruments v. Hyundai Electronics Ind., 2:98CV74(TH).

• Decision Date: 15 March 1999
• Docket Number: No. 2:98CV74(TH).,2:98CV74(TH).
• Parties: TEXAS INSTRUMENTS, INC., Plaintiff, v. HYUNDAI ELECTRONICS INDUSTRIES, CO. LTD., Hyundai Electronics America, Inc., and Hyundai Semiconductor America, Inc., Defendants.
• Court: U.S. District Court — Eastern District of Texas

50 F.Supp.2d 619

TEXAS INSTRUMENTS, INC., Plaintiff, v. HYUNDAI ELECTRONICS INDUSTRIES, CO. LTD., Hyundai Electronics America, Inc., and Hyundai Semiconductor America, Inc., Defendants.

No. 2:98CV74(TH).

United States District Court, E.D. Texas, Marshall Division.

March 15, 1999.

Kenneth Robert Adamo, Jones, Day, Reavis & Pogue, Dallas, TX, Jay Carl Johnson, Texas Instruments Incorporated, Dallas, TX, Carl R. Roth, Law Office of Carl R. Roth, Marshall, TX, Jack William Campbell, IV, Gregory A. Castanias, Jones, Day, Reavis & Pogue, Washington, DC, Barry Satine, Michael Covino, Jones

Day Reavis & Pogue, New York City, for Texas Instruments Inc., plaintiff.

Thomas John Ward, Brown McCarroll & Oaks Hartline, Longview, TX, David J. Beck, Beck, Redden & Secrest LLP, One Houston Center, Houston, TX, Danny Lloyd Williams, Williams, Morgan & Amerson PC, Houston, TX, Kenneth L. Nissly, Thelen Reid & Priest LLP, San Jose, CA, for Hyundai Electronics Industries Co., Ltd., Hyundai Electronics America Inc., Hyundai Semiconductor America, defendants.

Elizabeth Ellen Mack, Locke, Purnell, Rain, Harrell, Dallas, TX, Anthony de Alcuaz, Howard Rice Nemerowski Canady, Palo Alto, CA, for Nikon Precision Inc., movant.

Roderick M. Thompson, Pillsbury Madison & Sutro, San Francisco, CA, for DNS Electronics LLC, movant.

ORDER DENYING MOTION FOR RECONSIDERATION AND GRANTING MOTION TO PRECLUDE RELIANCE UPON ALLEGED PRIOR ART

HEARTFIELD, District Judge.

Before this Court is Defendant Hyundai's Motion for Reconsideration [275]. Having considered the motion, the response, and the arguments of counsel, this Court DENIES Defendant Hyundai's Motion for Reconsideration [275]. In addition, this Court VACATES its Memorandum and Opinion Order [261] insofar as it denied Texas Instruments' Motion to Preclude Hyundai from Relying Upon Certain Alleged Prior Art as Part of its Invalidity Defense [143]. This Court GRANTS in its entirety Texas Instruments' Motion to Preclude Hyundai from Relying Upon Certain Alleged Prior Art as Part of its Invalidity Defense ("Motion to Preclude Prior Art") [143].

1. Procedural History

On March 4, 1999 this Court held a hearing on pending evidentiary motions.¹ Specifically, this Court considered two motions previously argued at a February 4, 1999 hearing: 1) Texas Instruments' Motion to Preclude Hyundai's Use of, or Reliance Upon Opinions of Counsel ("Motion to Exclude Opinions of Counsel") [131]; and 2) Texas Instruments' Motion to Preclude Hyundai from Relying Upon Certain Alleged Prior Art as Part of its Invalidity Defense ("Motion to Preclude Prior Art") [143]. On February 4, 1999, this Court issued its Memorandum and Opinion Order [197]; in that order, this Court held in abeyance Texas Instruments' Motion to Exclude Opinions of Counsel [131] and denied Texas Instruments' Motion to Preclude Prior Art [143], subject to its re-urging at the final pretrial conference and hearing. See Memorandum and Opinion Order [197] 4. Exactly one month later — on March 4, 1999 — this Court held its final pretrial hearing. Accepting this Court's invitation for re-urging its Motion to Preclude Prior Art [143], Texas Instruments did, in fact, re-urge its Motion to Preclude Prior Art [143]. After considering the motion, the response, and the arguments of counsel presented at both the February 4, 1999 hearing and the March 4, 1999 final pretrial conference and hearing, this Court granted in part and denied in part Texas Instruments' Motion to Preclude Hyundai from Relying Upon Certain Alleged Prior Art as Part of its Invalidity Defense [143].² Specifically, this Court held: "The evidence regarding Sundstrand, specifically as to the information in the supplemental report [by Dr. Wedig] provided to TI on February 8, 1999, shall be EXCLUDED. The information provided to TI regarding Sundstrand prior to the February 8 report shall be ADMITTED at trial, subject to TI's Motion in Limine, paragraphs 7, 8, and 9." Memorandum and Opinion Order [261] 9. On the first day of trial in this case, March 8, 1999, this Court received Hyundai's Motion for Reconsideration [275] wherein Hyundai³ seeks reconsideration of this particular ruling-particularly, this Court's exclusion of Dr. Wedig's Second Supplemental Expert Report provided to Texas Instruments on February 8, 1999.

2. Motion for Reconsideration Law

Hyundai wants this Court to "reconsider" its prior Memorandum and Opinion Order [261] excluding Dr. Wedig's supplemental report provided to Texas Instruments on February 8, 1999. Hyundai's Motion for Reconsideration [275] 1. "The Federal Rules do not recognize a `motion for reconsideration' in haec verba." Lavespere v. Niagara Mach. & Tool Works, 910 F.2d 167, 173 (5th Cir.1990) (reversed on other grounds). Latin aside, this Court recognizes that reconsideration is, in essence, what Hyundai seeks in this motion.

"Motions for reconsideration `serve the narrow purpose of allowing a party to correct manifest errors of law or fact or to present newly discovered evidence.'" Lupo v. Wyeth-Ayerst Labs., 4 F.Supp.2d 642, 643 (E.D.Tex.1997) (citing Waltman v. Intl. Paper Co., 875 F.2d 468, 473 (5th Cir.1989)); Harsco Corp. v. Zlotnicki, 779 F.2d 906, 909 (3rd Cir.1985), cert. denied, 476 U.S. 1171, 106 S.Ct. 2895, 90 L.Ed.2d 982 (1986); Seidman v. American Mobile Systems, 965 F.Supp. 612, 629 (E.D.Pa.1997). Moreover, motions for reconsideration "should not be used to raise arguments that could, and should, have been made before the entry of judgment ... [or] to re-urge matters that have already been advanced by a party." Lupo, 4 F.Supp.2d at 645 (citing In re Liljenerg Enter., No. CV-A-97-0456, 1997 WL 222497, at *2, *3 (E.D.La. May 1, 1997)); Resolution Trust Corp. v. Holmes, 846 F.Supp. 1310, 1316 (S.D.Tex.1994) (stating that a motion to reconsider is not "the proper vehicle for rehashing old arguments or advancing legal theories that could have been presented earlier"); State v. Sprint Comm. Co., 899 F.Supp. 282, 284 (M.D.La.1995). "[L]itigants are expected to present their strongest case when the matter is first considered. A motion to reconsider based on recycled arguments only serves to waste the resources of the court." State v. Sprint Comm. Co., 899 F.Supp. 282, 284 (M.D.La.1995). With this standard in mind, this Court now turns to Defendants' purported grounds for relief.

3. Discovery Sanction Law

As it noted in its March 5, 1999 Memorandum and Opinion Order [261] which addressed the parties' most recent barrage of evidentiary motions, this Court enjoys wide latitude in matters of evidence, as Provided by Federal Rule of Civil Procedure 37:

A party that without substantial justification fails to disclose information required by Rule 26(a) or 26(e)(1) shall not, unless such failure is harmless, be permitted to use as evidence at a trial, at a hearing, or on a motion any witness or information not so disclosed.

Fed.R.Civ.P. 37(c)(1).

The Court has broad discretion to make whatever rulings that are just in light of the facts of the particular case. As recited above, one of the options available is the power to preclude evidence when a party's discovery is evasive or misleading. The Court also has the power to sanction or order payment of expenses and/or attorney fees. Id.

In determining whether violation of Rule 26 requiring disclosure of evidence is harmless, such that the evidence may be used at trial despite non-disclosure, the trial court's discretion is to be guided by the consideration of four factors: (1) the importance of the evidence or witness' testimony; (2) the prejudice to the opposing party of allowing the evidence in; (3) the possibility of curing such prejudice by granting a continuance; and (4) the explanation, if any, for the party's failure to identify the witness or evidence. Fed. R.Civ.P. 26(a), (e)(1), 37(c)(1); United States v. $9,041,598.68, 163 F.3d 238 (5th Cir.1998). The court is not required to make express findings of fact or conclusions of law concerning the existence of substantial justification or harmless failure to disclose, either by the express language of Rule 37, the Advisory Committee Notes, or Fifth Circuit case law. Id.; see also Bradley v. United States, 866 F.2d 120, 125 (5th Cir.1989). Such rulings by the trial court will not be disturbed on appeal absent a showing of abuse of discretion. See Harris v. Amoco Production Co., 768 F.2d 669, 684 (5th Cir.1985).

Furthermore, the admission or exclusion of expert testimony is a matter left to the discretion of the trial court, and will not be disturbed on appeal unless it is manifestly erroneous. Eiland v. Westinghouse Elec. Corp., 58 F.3d 176, 180 (5th Cir.1995); see also First Nat. Bank of Durant v. Trans Terra Corp. Intern., 142 F.3d 802 (5th Cir.1998).

4. Analysis

Hyundai urges several grounds for reconsideration of this Court's Memorandum and Opinion Order [261] excluding Dr. Wedig's Second Supplemental Expert Report. This Court will consider each ground in turn.⁴

First, Hyundai argues that one of this Court's findings is not supported by any evidence and, accordingly, should be vacated. That finding is this: "The Sundstrand System appears at the heart of Wedig's invalidity opinion, and it is clear that Wedig and Hyundai had knowledge of the alleged new prior art months before finally disclosing it to TI."⁵ Memorandum and Opinion Order [261] 2. Hyundai says that Dr. Wedig did not learn of the Sundstrand System until January 4, 1999; and that this Court's finding to the contrary should be vacated. This Court VACATES the afore-mentioned language insofar that it suggests Dr. Wedig had knowledge of the Sundstrand System prior to January 4, 1999.⁶ However, this Court stands firm by that language insofar that it notes Hyundai has known — for several months — about the Sundstrand System. The fact that Hyundai did not disclose its knowledge of the Sundstrand System to Dr. Wedig is simply irrelevant as to whether Hyundai should have disclosed it...