Case 1:14-cv-01432-LPS Document 273 Filed 05/26/20 Page 1 of 3 PageID #: 16927
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`May 26, 2020
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`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
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`RE:
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`Dear Chief Judge Stark:
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`Elm 3DS Innovations, LLC v. Samsung Electronics Co., Ltd. et al.,
`(C.A. Nos. 14-cv-1430-32-LPS)
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`“The court should freely give leave [to amend] when justice so requires.” Fed. R. Civ. P.
`15(a)(2). Defendants’ arguments in opposition to Elm’s motion do not overcome the Federal
`Rules’ “liberal amendment regime.” Mullin v. Balicki, 875 F.3d 140, 149 (3d Cir. 2017).
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`I.
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`Elm’s Amendment Is Timely Under the Scheduling Order and Defendants
`Have Not Been Prejudiced
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`The Scheduling Order allowed Elm to move to amend its complaints to include
`“allegations of willful infringement . . . up to thirty days after the Court’s Claim Construction
`Order.” D.I. 176 (14-cv-1430-LPS-CLB). Elm filed its motion within this deadline. The Court
`routinely grants leave to amend where the motion is filed before the deadline specified in the
`scheduling order. See, e.g., Boston Sci. Corp. v. Edwards Lifesciences Corp., No. 16-275-SLR,
`2017 WL 781046, at *2 (D. Del. Feb. 28, 2017) (granting “motion for leave to amend [that] was
`filed within the deadline set forth in the scheduling order for amending pleadings, which
`generally precludes a finding of undue delay”); Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`No. 11-54-SLR, 2012 WL 2365905, at *2 (D. Del. June 21, 2012) (“The instant motion to amend
`was filed timely and, therefore, there can be no unfair prejudice to defendant.”).
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`Defendants rely on the Court’s decision denying leave to amend in Delaware Display
`Group LLC v. Lenovo Group Ltd., No. 13-2108-RGA, 2016 WL 720977 (D. Del. Feb. 23, 2016).
`In that case, however, the plaintiff sought to add the underlying facts supporting willfulness to its
`complaint many years into the case—facts that plaintiff could have pled much earlier. See id. at
`*8-9. Here, by contrast, the facts that support Elm’s willfulness allegations, including pre-suit
`meetings with each of the Defendants, have been alleged in Elm’s complaints since the
`beginning of this case. The only substantive change in the amendments is adding the formal
`allegations of willful infringement—precisely what the Scheduling Order allows.
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`Defendants’ claims of prejudice do not withstand scrutiny. Defendants complain they
`cannot serve document requests related to Elm’s willfulness allegations. But Defendants have
`known for years about the underlying factual allegations, including Glenn Leedy’s pre-suit
`meetings with the Defendants and citations of Elm’s patents in Defendants’ own patent
`applications. Defendants have served multiple document requests related to these topics, see Ex.
`7, RFP Nos. 29, 41, 42, and Elm will of course produce any such documents that are located
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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-01432-LPS Document 273 Filed 05/26/20 Page 2 of 3 PageID #: 16928
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`through a reasonable search. Moreover, the parties have not yet started fact depositions, so
`Defendants will be able to ask Elm deponents about the allegations. Defendants also complain
`they will not be able to depose Mr. Leedy, who died in 2017. But Mr. Leedy died while these
`cases were stayed at Defendants’ request pending their ultimately unsuccessful IPR petitions. See
`July 11, 2016 Oral Order; D.I. 170, February 26, 2018 Order lifting stay (14-cv-1430-LPS-CJB).
`Finally, Defendants claim they would have sought opinions of counsel. But Defendants have had
`every incentive to seek such an opinion given Elm’s allegations of indirect infringement, and
`there is nothing stopping Defendants from seeking such an opinion today.
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`II.
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`Elm’s Proposed Amendments Are Not Futile
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`Defendants incorrectly contend that Elm’s proposed amendments are futile. Most of
`Defendants’ arguments are inappropriate attempts to litigate the factual merits of Elm’s
`allegations. Defendants complain that Elm has not produced documents evidencing to
`Defendants’ satisfaction meetings that took place 20 years ago. Micron devotes a page to
`quibbling about emails Elm has produced that reference a meeting between Elm and Micron,
`going so far as to argue the emails are inadmissible hearsay. D.I. 254 at 4 (14-cv-1431-LPS-
`CJB). Micron also argues that, although it cited Elm’s patents in its own patent applications,
`Micron could not possibly have had knowledge of those patents or Micron’s infringement
`because Micron has a lot of patents (apparently more than 13,000 according to Micron, although
`that fact is nowhere in the record). Id. at 5. This is neither the time nor the place for these
`arguments. When evaluating a motion to amend, the Court must “accept as true all of the
`allegations” and must view “all reasonable inferences” in the “light most favorable to” Elm.
`Merck & Co., Inc. v. Apotex, Inc., 287 F. App’x 884, 888-89 (Fed. Cir. 2008) (quoting Morse v.
`Lower Merion Sch. Dist., 132 F.3d 902, 906 (3d Cir. 1997)).
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`Taking the allegations as true, Elm’s complaints plausibly state claims for willful
`infringement. They allege that Mr. Leedy met with each of the Defendants around 2000 or 2001
`and explained the patented technology. Ex. 1 ¶ 33; Ex. 2 ¶¶ 31, 50; Ex. 3 ¶ 32. They also allege
`that the Defendants had knowledge of the patents through other means, including (for Micron)
`having cited Elm 3DS patents in many of its own patents and patent applications. Ex. 3 ¶¶ 51-60.
`These allegations make it plausible that Defendants knew or should have known of the asserted
`patents and infringed them anyway.
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`Defendants harp on the fact that the pre-suit meetings were about the ’167 patent, not the
`asserted patents. The ’167 patent was the parent of the family that constitutes Elm’s 3DS
`portfolio. All of the asserted patents spring from the ’167 patent. Construing the allegations in
`the light most favorable to Elm, it is plausible that Defendants, having specifically been alerted
`to the ’167 patent and Elm’s 3DS technology more generally, would have monitored later patents
`Elm received in the same family, including the patents in suit. In any event, there is no dispute
`that Defendants had knowledge of the asserted patents and Elm’s claims of infringement as of
`the filing of the complaints in November 2014. So Elm can undoubtedly state a willfulness claim
`for infringement that continued after the complaints were filed.
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`For these reasons, Elm respectfully requests that the Court grant leave to amend.
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`Case 1:14-cv-01432-LPS Document 273 Filed 05/26/20 Page 3 of 3 PageID #: 16929
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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-File)
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