Case 1:14-cv-01430-LPS Document 288 Filed 05/26/20 Page 1 of 5 PageID #: 19576
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`May 19, 2020
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`FILED UNDER SEAL
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`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
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`RE: Elm 3DS Innovations, LLC v. Samsung Electronics Co., Ltd., et al.,
`(C.A. No. 14-cv-1430-LPS)
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`Dear Judge Hall:
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`Last week, Samsung made the stunning revelation that it had discovered hundreds of
`relevant products never previously disclosed to Elm in this now five-year-old case. See Knobloch
`Declaration (“Decl.”) ¶¶ 48-49 & Ex. 28. Samsung’s latest revelation is merely the most recent
`example of Samsung’s pattern of delay in disclosing the information necessary for the parties to
`reach a representative products agreement. Elm requests that the Court intervene to send
`Samsung the clear message that its delay must end now, and that it must immediately provide all
`the information needed for the parties to reach a representative products agreement.
`The Importance of a Representative Products Agreement
`Early in this case, the Court ordered the parties to work towards a representative products
`agreement. See D.I. 35, ¶ 6. The parties’ negotiations over that agreement were halted when this
`case was stayed pending the Defendants’ ultimately unsuccessful IPR challenges. See July 11,
`2016 Docket Text. Both parties agree that a representative products agreement would help
`streamline this case. See Decl. ¶ 46 & Ex. 27. But the stay was lifted more than two years ago,
`see D.I. 170, and the parties are nowhere close to finalizing that agreement.
`Samsung has leveraged its delays to postpone discovery on numerous issues by insisting
`that discovery on those issues waits until after the parties finalize a representative products
`agreement. See Decl. ¶ 40 & Ex. 24 (Samsung refusing to complete production of documents
`responsive to more than 40 RFPs until after the parties reach a representative products
`agreement); see also Decl. ¶ 35 & Ex. 20. But, of course, the parties cannot finalize such an
`agreement when Samsung has failed to identify the relevant products, let alone provide other
`information needed to finalize a representative products agreement.1
`Samsung Repeatedly Failed to Disclose Relevant Products
`Almost four years ago, Elm issued an interrogatory asking Samsung to list “all Stacked
`Integrated Circuit Products” that Samsung sells, or that Samsung “incorporate[s] in products that
`you subsequently sell.” Decl. ¶ 2 & Ex. 1. Since serving that interrogatory, Elm has
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`1 In a classic Catch 22, Samsung agreed to produce documents sufficient to show data needed to
`reach a representative products agreement only “once the parties agree on a set of representative
`products.” See Ex. 24, RFP 87 (process node); RFP 91 (number of die); RFP 80 (packaging).
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`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
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`Case 1:14-cv-01430-LPS Document 288 Filed 05/26/20 Page 2 of 5 PageID #: 19577
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`communicated with Samsung about this or related issues in over a hundred emails and on tens of
`calls. Decl. ¶ 6. Not only did Samsung fail to identify these products in response to Elm’s
`requests, but time and again, Samsung falsely assured Elm that it had identified all of its relevant
`products. Id. ¶¶ 13, 15, 17-20, 22-25 & Exs. 8, 10, 12.
`For example, Samsung and Elm discussed the identification of Samsung’s relevant
`products following the Federal Circuit’s decision affirming the denial of the IPR challenges to
`the patents in suit. In that decision, the Federal Circuit held that the “substantially flexible” claim
`terms require at least one die that has been thinned to 50 microns or less. See Samsung Elecs.
`Co., Ltd. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1380 (Fed. Cir. 2019). In discovery, Elm
`had sought the identification of all stacked semiconductor products where “at least one silicon
`die is less than 150 microns in thickness.” Decl. ¶ 2 & Ex. 1. The Federal Circuit’s construction
`thus narrowed the relevant scope of Elm’s request.
`Eight days after the Federal Circuit’s decision, Elm emailed Samsung and asked whether
`Samsung had already “identified all products sold between 2008 and 2018” that contain
`vertically stacked circuit layers “where at least one of the layers has a thickness of 50 microns or
`less.” Decl. ¶ 17 & Ex. 10 at 6.2 Elm followed up with an email reiterating its request and
`attaching a spreadsheet identifying the 50 Samsung products that Elm had determined—based on
`Samsung’s productions—met the above criteria. Ex. 10 at 4-5. Samsung’s counsel responded
`that “Samsung has identified all products that you have asked about based on a reasonable
`search.” Id. at 4. Samsung subsequently reiterated that “Samsung has already identified all such
`products, and you have given us no basis to suspect that Samsung has not done so.” Id. at 2.
`Elm persisted in raising questions about Samsung’s identification of relevant products,
`see, e.g. Decl. ¶ 23 & Ex. 10 at 1, and eventually that persistence paid off. Samsung tacitly
`acknowledged that it had not yet identified all the relevant products and committed to produce “a
`final list of the remaining stacked memory products” by September 20, 2019. Decl. ¶ 24 & Ex.
`12 at 2. On that date, Samsung supplemented its response to Interrogatory No. 4 and informed
`Elm that Samsung had “produced an updated complete list of stacked memory products.” Decl.
`¶¶ 25-26 & Exs. 13-14 (emphasis added). Notably, the spreadsheet Samsung produced that day
`identified 274 stacked memory products with a minimum die thickness of 50 microns—more
`than five times the number that Samsung had indicated just a few months earlier comprised the
`complete list of relevant products. Decl. ¶ 27.
`Since receiving Samsung’s “complete” list of stacked memory products last fall, Elm has
`worked diligently to obtain the information needed to reach a representative products agreement.
`See, e.g., id. ¶¶ 29-30 & Exs. 16-17. Like so many of the discovery issues in this case, that
`process has been plagued by delays. See, e.g. Decl. ¶¶ 36-45. In the midst of negotiations over
`those issues, Samsung suddenly revealed, last week, that “Samsung just discovered that there are
`additional stacked memory products with a minimum die thickness of 50 microns or less that
`have been inadvertently overlooked.” Decl. ¶¶ 48-49 & Ex. 28. Samsung has provided, to date,
`very little additional information about those products, except its statement that “[f]rom what we
`can tell so far, there are a few hundred new products, all made by Samsung.” Id.
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`2 Elm has also served interrogatories seeking sales data for products containing “a semiconductor
`layer that is 50 microns or less.” Decl. ¶ 21 & Ex. 11 at 3.
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`2
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`Case 1:14-cv-01430-LPS Document 288 Filed 05/26/20 Page 3 of 5 PageID #: 19578
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`Samsung’s recent disclosure leads to the troubling conclusion that Samsung made false
`representations to this Court in its February 18, 2020 response to Elm’s prior motion to compel.
`D.I. 254. In that response, Samsung represented to the Court that it had produced, among other
`things, “all worldwide sales for accused memory and image sensor components” and “US Sales
`for . . . accused memory components…” Id. Last week’s revelation of hundreds of previously
`undisclosed stacked memory products means those representations were untrue.3
`While last week’s revelation of hundreds of previously undisclosed products is especially
`egregious, it is not the first time this year that Samsung has surprised Elm with the late revelation
`of previously undisclosed products. Elm recently discovered that—despite repeated requests—
`Samsung failed for years to disclose 34 of the 40 stacked memory components it incorporates
`into Samsung consumer electronics shipped to the United States. See Decl. ¶¶ 2, 7-9, 33.
`Samsung has been importing some of those products into the U.S. since at least 2011, and has
`generated significant revenue from those sales. Decl. ¶¶ 33, 47. Nonetheless, Samsung waited
`until February 2020—more than three and a half years after receiving Interrogatory No. 4 and
`more than a year and a half after receiving Elm’s request for an updated list of relevant
`products—to disclose 34 of the 40 relevant stacked memory components to Elm. Id. ¶ 33.
`Data Necessary for a Representative Products Agreement
`Identifying the relevant products is just the first step in reaching a representative products
`agreement. That agreement must also take into account basic technical and sales data about those
`products. See Decl. ¶ 37 & Ex. 22 at 1-2. To date, Samsung has not even identified all the
`relevant products to Elm, much less produce all the data necessary for the parties to reach a
`representative products agreement. To be fair, Samsung has generally agreed to provide this data
`to Elm. See Decl. ¶ 50 & Ex. 29. But Samsung’s history of incremental delays—and its prior
`misstatements regarding the identification of the relevant products—leaves Elm with no
`confidence in Samsung’s assurances. See generally Decl. ¶¶ 5-50. Without an order mandating
`Samsung’s timely production of this data, discovery in this case will likely proceed in fits and
`starts for years to come.
`Accordingly, Elm respectfully requests that the Court order Samsung to identify the data
`necessary for the parties to reach a representative products agreement. To aid in this process, and
`to enable efficient monitoring of Samsung’s compliance with the Court’s order, Elm has attached
`a chart for Samsung to complete in accordance with the requested Order. See Decl. ¶ 51 & Ex.
`30. This chart provides a list of relevant products and identifies the categories of data that will
`enable the parties to negotiate a representative products agreement. Where Elm has been able to
`determine relevant data from Samsung’s productions, it has endeavored to input the data into the
`chart. Elm respectfully requests that the Court order Samsung to complete this chart, within the
`next two weeks, by doing the following: (a) confirming the accuracy of the data Elm has already
`compiled and correcting any errors; (b) updating the chart to add all relevant products not
`already listed; and (c) filling-in all the technical and sales data that is missing from this chart.
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`3 Samsung has also acknowledged other discrepancies with statements it made to the Court. For
`example, Samsung’s response stated that it “had already” produced “worldwide sales” for the
`accused “memory/image sensor components.” D.I. 254. Samsung subsequently acknowledged
`that “the data used to prepare the” relevant spreadsheet “was incomplete.” Decl. ¶ 42 & Ex. 25.
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`3
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`Case 1:14-cv-01430-LPS Document 288 Filed 05/26/20 Page 4 of 5 PageID #: 19579
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`Respectfully submitted,
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`/s/ Brian E. Farnan
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`Brian E. Farnan
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`cc:
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`Counsel of Record (via E-Mail)
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`4
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`Case 1:14-cv-01430-LPS Document 288 Filed 05/26/20 Page 5 of 5 PageID #: 19580
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ELM 3DS INNOVATIONS, LLC,
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`Plaintiff,
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`v.
`SAMSUNG ELECTRONICS CO., LTD., et
`al.,
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`Defendants.
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`C.A. No. 14-cv-1430-LPS
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`JURY TRIAL DEMANDED
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`[PROPOSED] ORDER
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`On this _____ of May, 2020, having considered Plaintiff Elm 3DS Innovations, LLC’s
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`(“Elm”) motion to compel Defendant Samsung’s production of data relevant to the parties’
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`negotiation of a representative products agreement, and any response thereto, the Court
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`hereby ORDERS that Samsung complete the chart attached as Exhibit 30 to Elm’s motion
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`within two weeks of this Order.
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`The Honorable Jennifer L. Hall
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