Case 1:14-cv-01432-LPS Document 266 Filed 05/13/20 Page 1 of 3 PageID #: 16565
`
` 
`
`May 13, 2020
`
`
`VIA E-FILING
`The Honorable Leonard P. Stark
`J. Caleb Boggs Federal Building
`844 N. King Street
`Room 6124, Unit 26
`Wilmington, DE 19801-3556
`
`
`RE:
`
`
`Elm 3DS Innovations, LLC v. Samsung Electronics Co., Ltd. et al.,
`(C.A. No. 14-cv-1430-LPS)
`Elm 3DS Innovations, LLC v. Micron Technology, Inc., et al.,
`(C.A. No. 14-cv-1431-LPS)
`Elm 3DS Innovations, LLC v. SK hynix Inc. et al.
`(C.A. No. 14-cv-1432-LPS)
`
`
`
`Dear Chief Judge Stark,
`
`
`Pursuant to Federal Rule of Civil Procedure 15(a)(2) and Paragraph 1 of the Amended
`Scheduling Order (D.I. 176 (1:14-cv-1430).), Plaintiff Elm 3DS Innovations, LLC respectfully
`requests leave to amend its complaints in these cases to add allegations of willful infringement.
`(See Exs. 13 (proposed amended complaints); Ex. 4 (blackline comparing proposed Second
`Amended Complaint against Samsung to prior pleading); Ex. 5 (blackline comparing proposed
`Second Amended Complaint against Micron to prior pleading); Ex. 6 (blackline comparing
`proposed Second Amended Complaint against SK hynix to prior pleading).) The facts and
`circumstances in this litigation justify the proposed, timely amendments, which do not require
`the addition of any new factual allegations to the complaints. Therefore, Elm 3DS respectfully
`requests that the Court grant it leave to amend.
`
`I.
`
`Legal Standard
`
`Under Federal Rule of Civil Procedure 15(a)(2), a party may amend its pleadings either
`with consent of the opposing party or with leave of court. The Defendants did not consent to
`these amendments. Absent consent, leave to amend “‘shall be freely given when justice so
`requires.”” Foman v. Davis, 371 U.S. 178, 182 (1962) (quoting Fed. R. Civ. P. 16(a)). The Third
`Circuit has long held that “absent undue or substantial prejudice, an amendment should be
`allowed under Rule 15(a) unless ‘denial [can] be grounded in bad faith or dilatory motive, truly
`undue or unexplained delay, repeated failure to cure deficiency by amendments previously
`allowed or futility of amendment.’” Lundy v. Adamar of N.J., Inc., 34 F.3d 1173, 1196 (3d Cir.
`1994) (internal citation omitted).
`
`
`
`
`
`
`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-01432-LPS Document 266 Filed 05/13/20 Page 2 of 3 PageID #: 16566
`
`
`II.
`
`Nature of the Amendment
`
`In these cases, Elm 3DS asserts that Defendants’ three-dimensional semiconductor
`devices infringe twelve patents.1 Glenn Leedy was the sole inventor on all twelve patents-in-suit.
`Mr. Leedy discussed his invention and its benefits with each of the Defendants before these cases
`were filed in 2014. Elm 3DS included factual details about those meetings in its initial
`Complaints and First Amended Complaints. For example, the First Supplemental Complaint
`against Samsung explains that “Mr. Leedy personally met with Samsung America’s President in
`2000 or 2001, shortly after the issuance of the ’167 patent, the first in the 3DS family of patents,
`in 1999.” (D.I. 109 (1:14-cv-1430) at ¶ 33.) “During the meeting, Mr. Leedy provided Samsung
`America’s President with a slide presentation and a copy of the ’167 patent, and explained the
`benefits of the patented technology.” (Id.) Similarly, the First Amended Complaint against
`Micron explains that “[i]n 2000 or 2001, Mr. Leedy provided Micron with a slide presentation on
`the Elm 3DS technology and a copy of the 5,915,167 patent.” (D.I. 17 (1:14-cv-1431) at ¶ 31.)
`And, the First Amended Complaint against SK hynix explains the same thing about Mr. Leedy’s
`meeting in 2000 or 2001 with SK hynix. (D.I. 13 (1:14-cv-1432) at ¶ 32.) In fact, “Mr. Leedy
`was invited to Korea by” SK hynix. (Id.) So the Defendants have known about the factual
`underpinnings of Elm 3DS’s willful infringement allegations for five years now.
`
`Elm 3DS seeks leave to amend now merely to make clear that it will be pursuing the
`legal theory of willful infringement and potentially seeking enhanced damages under 35 U.S.C.
`§ 284 based on that theory. Given that Elm 3DS is not adding any factual allegations to the
`complaints, no additional discovery will be necessary based on these amendments. And even if
`the Defendants believe these amendments would require additional discovery, the Defendants
`have not yet conducted any fact or expert witness depositions. The deadline for fact discovery is
`not until October 26, 2020. (D.I. 263 at 4.) So the Defendants will have time to respond to and
`fully investigate these allegations.
`
`
`Elm 3DS only made two other substantive changes in these amended complaints (in
`addition to fixing some typographical errors and nits). Elm 3DS removed U.S. Patent No.
`8,035,233. Although Elm 3DS initially asserted the ’233 patent in these cases, the Patent Trial
`and Appeal Board concluded that claims 33 and 34 of that patent were invalid. Based on that
`decision, Elm 3DS no longer intends to assert the ’233 patent in these cases.
`
`Finally, Elm 3DS also updated some of the statements in the complaints about the sole
`inventor, Glenn Leedy, to reflect the fact that he passed away in 2017. Defendants have known
`about Mr. Leedy’s passing since then and this change does not affect any of the remaining
`discovery.
`
`
`
`
`                                                            
`1 The twelve patents-in-suit are the following: U.S. Patent Nos. 7,193,239; 7,474,004; 7,504,732;
`8,410,617; 8,629,542; 8,653,672; 8,791,581; 8,796,862; 8,841,778; 8,907,499; 8,928,119; and
`8,933,570.
`
`2
`
`

`

`Case 1:14-cv-01432-LPS Document 266 Filed 05/13/20 Page 3 of 3 PageID #: 16567
`
`III. Elm 3DS’s Motion Should Be Granted
`
`As an initial matter, Elm 3DS’s motion to amend is timely under the Court’s Scheduling
`Order. The Scheduling Order explains that “motions to amend to include . . . allegations of
`willful infringement . . . may be made up to thirty days after the Court’s Claim Construction
`Order.” (D.I. 176 (1:14-cv-1430) at ¶ 1.) The Court issued its claim construction order on April
`13, 2020. (D.I. 267 (1:14-cv-1430).) So Elm 3DS has until May 13 to file such a motion, making
`this request timely.
`
`In addition, Elm 3DS’s motion is far from futile. An amendment is futile only when “it
`fails to state a claim upon which relief may be granted.” Roquette Frères v. SPI Pharma, Inc.,
`No. 06-540-GMS, 2009 WL 1444835, at *3 (D. Del. May 21, 2009). “[I]n order to sufficiently
`plead willful infringement, a plaintiff must allege facts plausibly showing that as of the time of
`the claim’s filing, the accused infringer: (1) knew of the patent-in-suit; (2) after acquiring that
`knowledge, it infringed the patent; and (3) in doing so, it knew, or should have known, that its
`conduct amounted to infringement of the patent.” Sunoco Partners Mktg. & Terminals L.P. v.
`Powder Springs Logistics, LLC, No. 17-1390-LPS-CJB, 2019 WL 8641303, at *2 (D. Del. Aug.
`7, 2019). Elm 3DS’s amended complaints sufficiently plead each of these elements.
`
`First, as discussed above, the amended complaints detail how each Defendant knew of
`the patents-in suit based on, at least, their meetings with Mr. Leedy in 2000 and 2001. (Ex. 1 at
`¶ 33; Ex. 2 at ¶¶ 31, 50; Ex. 3 at ¶ 32.) Beyond just those meetings, the amended complaints
`include additional detail showing that the Defendants knew of the patents-in-suit. For example,
`Micron cited Elm 3DS patents, including some of the patents-in-suit, in more than 40 of its own
`patents between 2000 and 2014. (Ex. 3 at ¶¶ 5160.) Second, the complaints also allege that after
`acquiring knowledge of the patents-in-suit, the Defendants infringed Elm 3DS’s patents. (See,
`e.g., Ex. 1 at ¶¶ 3449; Ex. 2 at ¶¶ 3242; Ex. 3 at ¶¶ 3343.) Third and finally, the complaints
`explain that for each patent-in-suit, “Defendants engaged in egregious conduct by having
`continued to infringe the . . . patent despite having knowledge of the patent and despite knowing
`that they were infringing the patent.” (See Ex. 1 at ¶¶ 114, 119, 124, 129, 134, 139, 144, 149,
`154, 159, 164, 176; Ex. 2 at ¶¶ 106, 111, 116, 121, 126, 131, 136, 141, 146, 151, 156, 161; Ex. 3
`at ¶¶ 103, 108, 113, 118, 123, 128, 133, 138, 143, 148, 153, 158.)
`
`For these reasons, Elm 3DS respectfully requests that the Court grant this motion and
`allow Elm 3DS to file amended complaints asserting willful infringement against the
`Defendants.
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Michael J. Farnan
`
`Michael J. Farnan
`
`
`
`
`
`
`
`cc:
`
`Counsel of Record (via E-File)
`
`3
`
`