Case 1:14-cv-01430-LPS Document 256 Filed 02/20/20 Page 1 of 4 PageID #: 18392
`
` 
`
`
`
`February 13, 2020
`
`
`
`FILED UNDER SEAL
`
`
`VIA E-FILING
`The Honorable Jennifer L. Hall
`J. Caleb Boggs Federal Building
`844 N. King Street
`
`
`Unit 17, Room 3124
`Wilmington, DE 19801-3555
`
`
`RE: Elm 3DS Innovations, LLC v. Samsung Electronics Co., Ltd., et al.,
`(C.A. No. 14-cv-1430-LPS)
`
`
`Dear Judge Hall:
`
`
`Elm respectfully requests that the Court compel Samsung to produce sales data about the
`accused products that Samsung has promised, but failed, to produce. Elm is entitled to this data
`under the Supreme Court’s decision in WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct.
`2129 (2018), and this Court’s decision in Power Integrations, Inc. v. Fairchild Semiconductor
`Int’l, Inc., No. 04-1371-LPS, 2018 WL 4804685 (D. Del. Oct. 4, 2018). This Court also recently
`granted Elm’s motion to compel similar data from Micron in a related case. See C.A. No. 14-cv-
`1431-LPS, D.I. 201 (Elm letter) & 204 (Stark, C.J., Order). The result here should be the same.
`This case is about semiconductor technology. The asserted claims cover three-
`dimensional integrated circuit devices that are used in a wide variety of products, including
`smartphones and tablets. In June 2019, Elm served interrogatories seeking monthly revenue and
`profit for the accused products from 2008 to 2018, both worldwide and for products that were
`manufactured, sold, offered for sale, or imported into the United States. Ex. A, Elm 3rd Common
`Interrogatories.1 After learning that Samsung had manufactured in the United States silicon die
`that it subsequently used to create infringing products abroad, Elm asked Samsung to provide
`sales data for any infringing devices made with those die. Ex. C, Elm 4th Interrogatories.
`Elm’s interrogatories generated significant opposition from Samsung. Following
`extensive discussion, the parties reached agreement on many of the disputed sales-related issues.
`Elm memorialized this agreement in a detailed email. See Ex. D, Dec. 15, 2019 Email. Elm’s
`email asked Samsung to “let me know right away if you believe I’ve missed or misstated
`anything.” Id. Samsung did not raise any concerns in response to this email. Three days later, the
`parties had a telephonic meet and confer and Samsung gave no indication that it intended to
`abandon the parties’ agreement. To the contrary, Samsung emailed Elm a couple days later
`confirming that it could provide some of the data that had been left open in Elm’s December 15
`email. See Ex. E, Dec. 20, 2019 Email.
`Samsung’s productions have failed to live up to Samsung’s agreements and do not
`include the following significant categories of information covered by Elm’s interrogatories:
`
`                                                            
`1 Elm also served an interrogatory seeking sales data in 2018. See Ex. B, Elm First Common
`Interrogatories. Samsung never provided fulsome responses to Elm’s 2018 request.
`
`9 1 9 N . M A R K E T S T R E E T , 1 2 T H F L O O R , W I L M I N G T O N , D E 1 9 8 0 1
`P H O N E : ( 3 0 2 ) 7 7 7 – 0 3 0 0 · F A X : ( 3 0 2 ) 7 7 7 – 0 3 0 1 · W W W . F A R N A N L A W . C O M
`
`

`

`Case 1:14-cv-01430-LPS Document 256 Filed 02/20/20 Page 2 of 4 PageID #: 18393
`
`Worldwide Sales: The parties agreed that, instead of producing all worldwide sales of
`relevant products, Samsung would “produce worldwide sales data for all relevant products . . .
`regarding which Samsung has conducted sales-related activities in the U.S.” on January 24. See
`Ex. D, Item 2. But Samsung’s January 24 production was limited to a single spreadsheet
`identifying its non-U.S. sales to companies based in the U.S. See SAMSUNG-ELM-000062367.2
`Elm’s December 15 email memorialized the parties’ agreement that Samsung’s January 24
`production would include: (1) All worldwide sales data for relevant products that “Samsung
`knows or has reason to believe . . . will be imported into the United States;” (2) “[A]ll worldwide
`sales of relevant products to any customer who has ever received, in the United States, an email,
`call, or other communication from any Samsung entity,” and (3) “all worldwide sales of relevant
`products to any customer who has ever met with any representative of any Samsung entity in the
`United States, and all worldwide sales of relevant products to any affiliates of such customers.”
`Ex. D. Samsung’s January 24 production came nowhere close to providing the agreed-upon data.
`Downstream Products: Samsung also has not produced data that it promised to produce
`regarding worldwide sales of downstream products (e.g. consumer electronic products) that use
`an accused image sensor incorporating a die that Samsung manufactured in the U.S. See id. at
`Item 3. Elm requested those sales in Interrogatory No. 5. See Ex. C. It is now more than a month
`after the agreed-upon deadline for the production of that data, but Elm has yet to receive it.
`This omission is likely significant. Samsung has disclosed less than
` in sales of
`accused stacked memory products in the United States, see SAMSUNG-ELM-000062357, and
`more than
` that amount in U.S. sales of downstream products that include an accused
`stacked memory component, see SAMSUNG-ELM-000062360. Samsung has disclosed more
`than
` in sales of stacked image sensor products. See SAMSUNG-ELM-00062365-66.
`So this omission may well involve
` in infringing sales.
`Identification of Accused Products Included in Samsung’s Downstream Products:
`Samsung has identified more than
` in U.S. sales of downstream products that include
`an accused product. See SAMSUNG-ELM-000062360; SAMSUNG-ELM-000062362. But
`Samsung has not identified which of the accused products are included in those downstream
`products. This information is critical to, among other things, identifying the top-selling accused
`products that the parties may choose to focus on for purposes of a representative products
`agreement. Samsung clearly knows this information; if it did not, it could not have identified the
`downstream product sales. And this information is covered by Elm’s Common Interrogatory No.
`4, which sought revenue data for Samsung’s “Products” on a “product-by-product” basis. Ex. A.
`U.S. Sales of Downstream Products that Include Infringing Components Made by
`Third Parties: Elm’s Common Interrogatory No. 5 sought Samsung’s sales of accused products
`“manufactured, sold, offered for sale, or imported into the United States.” Ex. A. This request
`plainly covers all of Samsung’s sales of infringing products; it is not limited to components that
`Samsung makes. However, as late as December 15, Samsung had not investigated what products
`it sells in the U.S. that include an infringing component made by a third party. And, to date,
`Samsung has not produced any such data.
`
`                                                            
`2 The produced spreadsheets are in native Excel format and not easily printed to PDF. Elm would
`be happy to lodge native versions of these documents upon the Court’s request.
`
`2
`
`

`

`Case 1:14-cv-01430-LPS Document 256 Filed 02/20/20 Page 3 of 4 PageID #: 18394
`
`Worldwide Sales of Accused Memory Products (and Downstream Products that
`Include such Products) That Include Die Manufactured in the United States: Samsung
`originally stated that it did not know “where the individual wafers processed and sold” by
`Samsung in the U.S. “travel downstream.” Ex. F, Samsung Resp. to Interrog. No. 5. Samsung
`subsequently agreed to investigate its ability to estimate its “worldwide sales of relevant memory
`products that incorporate die made from wafers that Samsung made in or supplied from the U.S.”
`Ex. D, Item 4. Samsung agreed to provide any available estimate by January 31. Id. Samsung
`subsequently confirmed that it planned to provide that estimate. See Ex. E. Samsung still has not
`provided that estimate to Elm.
`Intra-Company Transfer Prices: Samsung sometimes realizes revenue from its sales of
`accused products when it sells the products to a third party. Samsung also often realizes revenue
`from its “sale” of the product to a related Samsung entity responsible for incorporating the
`accused component into a downstream product. Elm’s sales interrogatories were not limited to
`the former type of revenue. See Ex. B, Common Interrog. No. 2; Ex. A, Common Interrog. No.
`4. Samsung agreed to investigate whether it could provide what it has called “internal pricing.”
`See, e.g., Ex. E. Samsung subsequently indicated that it could provide that data by February 3.
`See Ex. G, Jan. 29, 2020 Email. To date, Elm has not received that data.
`Incomplete Data: Samsung’s data is also incomplete in the following respects:
` SAMSUNG-ELM-000063260 identifies Samsung’s U.S. sales of downstream products that
`include an accused memory product. Many entries in that spreadsheet show significant net
`quantities, but no sales. Despite Elm’s requests, Samsung has not explained this discrepancy.
` SAMSUNG-ELM-00006326 identifies Samsung’s U.S. sales of downstream products that
`include an accused image sensor product. The product codes listed in this spreadsheet are
`shorter than Samsung’s other product codes and appear, therefore, to be incomplete.
`Samsung has not responded to Elm’s request for an explanation of this discrepancy.
` Missing data: Samsung has stated that SEA—its US affiliate responsible for many of the
`accused product sales—
`. See Ex. H, Jan. 21 Email.
`
`
`
`
`Samsung’s Last-Minute Productions: Hours before this brief was due, Samsung
`produced a number of files and sent an email stating that its “productions moot any need for
`Elm’s motion.” Ex. I. Elm has not yet had the opportunity to review Samsung’s productions. To
`the extent that Samsung’s recent productions narrow the issues presented in this brief, Elm will
`update the Court in advance of the February 21 teleconference.
` Elm respectfully requests that the Court compel Samsung to produce the sales data Elm
`requested and Samsung agreed to provide. Elm has attached a Proposed Order for the Court’s
`consideration that identifies the specific categories of data outlined above.
`
`
`
`
`
`
`3
`
`

`

`Case 1:14-cv-01430-LPS Document 256 Filed 02/20/20 Page 4 of 4 PageID #: 18395
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Brian E. Farnan
`
`Brian E. Farnan
`
`cc:
`
`Counsel of Record (via E-Mail)
`
`4
`
`