Case 1:14-cv-01430-LPS Document 295 Filed 06/01/20 Page 1 of 7 PageID #: 20099
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 14-1430-LPS
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`LETTER TO THE HONORABLE JENNIFER L. HALL FROM
`ADAM W. POFF REGARDING DEFENDANTS’ RESPONSE TO
`PLAINTIFF’S MAY 19, 2020 DISCOVERY LETTER (D.I. 280)
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`ELM 3DS INNOVATIONS, LLC, a
`Delaware limited liability company,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD., a
`Korean business entity,
`SAMSUNG SEMICONDUCTOR, INC., a
`California corporation,
`SAMSUNG ELECTRONICS AMERICA,
`INC., a New York corporation, and
`SAMSUNG AUSTIN SEMICONDUCTOR,
`LLC, a Delaware limited liability company,
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`Plaintiff,
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`Defendants.
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`OF COUNSEL:
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`Allan M. Soobert
`Naveen Modi
`Phillip W. Citroën
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, D.C. 20005
`(202) 551-1700
`(202) 551-1705 (fax)
`allansoobert@paulhastings.com
`naveenmodi@paulhastings.com
`phillipcitroen@paulhastings.com
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`26546863.1
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`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
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`Adam W. Poff (No. 3990)
`Pilar G. Kraman (No. 5199)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`pkraman@ycst.com
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`Attorneys for Defendants Samsung Electronics
`Co., Ltd., Samsung Semiconductor, Inc.,
`Samsung Electronics America, Inc., and
`Samsung Austin Semiconductor, LLC
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`Dated: May 22, 2020
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`REDACTED - PUBLIC VERSION
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`Redacted Version: June 1, 2020
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`Case 1:14-cv-01430-LPS Document 295 Filed 06/01/20 Page 2 of 7 PageID #: 20100
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`Dear Judge Hall:
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`In what has now become a needlessly time-consuming pattern, Elm once again burdens this
`Court with a non-dispute. As with Elm’s February 13 letter (D.I. 254), the issues raised in Elm’s
`May 19 letter are moot and Elm’s request for relief should respectfully be denied.
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`Elm’s sole request for relief is for Samsung to identify data necessary to complete the chart Elm
`proposed in Exhibit 30. Had Elm presented this chart to Samsung during the meet and confer
`process, Samsung would have readily agreed to work with Elm to complete it and finalize a
`representative products agreement. While there have been hiccups along the way—as there will
`be for any process involving thousands of potentially relevant products sold across decades and
`by several corporate entities—Samsung has been forthright at all times and has diligently worked
`to address any inaccuracies or incompleteness it or Elm has discovered. The Court should be
`unmoved by Elm’s hollow claims to the contrary, which are completely unfounded. The record
`instead demonstrates Samsung’s good faith efforts to meet Elm’s incessant demands.
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`Samsung has already made substantial progress toward completing a slightly modified version of
`Exhibit 30,1 and agrees to complete this chart by June 19,2 mooting any need for the Court’s
`assistance—and underscoring the inappropriateness of Elm’s practice of making serial demands,
`threatening motion practice, and approaching the Court prematurely.
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`Representative Products Agreement. Elm’s letter presents a one-sided version of the events that
`led to this letter briefing, overblowing the length of time it has taken to reach a representative
`products agreement and ignoring Elm’s own role in prolonging that process. Since the start of
`this case, Samsung has worked with Elm in good faith to reach an agreement. See D.I. 89
`(identifying three technical factors by which to group accused products). The stay of the
`litigation pending inter partes review proceedings before the P.T.A.B., and the Federal Circuit
`appeals of those proceedings, delayed progress from February 2017 to August 2019. The
`appeals resulted in claim constructions that significantly refocused the scope of the case on
`relevant products having a substrate that is 50 microns thick or less. See Samsung Elecs. Co. v.
`Elm 3DS Innovations, LLC, 925 F.3d 1373, 1376-80 (Fed. Cir. 2019).
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`The progress the parties had made to that point was largely erased when Elm’s new counsel
`(engaged in the midst of the appeals) proposed an entirely new—and unworkable—approach in
`March 2020, based solely on process node and revenue. That approach, however, would have
`inappropriately lumped together materially different products, with entirely different technical
`characteristics, as representative of one another—which made no sense. Exh. B; Exh. C.
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`While Samsung repeatedly explained the need to group products by technical similarities
`relevant to the patents’ claims and Samsung’s defenses, Elm refused to accept such a proposal
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`1 The parties conferred on May 20, and Elm agreed that “product type” is not necessary for
`the chart. Exh. A. Samsung respectfully submits that the image sensor products and
`downstream product inventory are likewise unnecessary. See infra.
`2 Defendants initially proposed a five-month extension due to COVID-19, but Elm refused
`and only agreed to three months. D.I. 263. Defendants noted that five months was more realistic
`and that further extensions may be necessary, given the circumstances. See D.I. 264.
`1
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`Case 1:14-cv-01430-LPS Document 295 Filed 06/01/20 Page 3 of 7 PageID #: 20101
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`unless Samsung also agreed to reveal its non-infringement positions—a request that had no
`connection to the parties’ discussions3 and that sought disclosure of contentions and expert
`opinions well before the deadlines imposed by the Court. Exh. E. Elm then further conditioned
`its acceptance on Samsung identifying where in its documents the relevant technical information
`relating to the product groupings could be found and correlating that information to the accused
`products. Exh. F. Not once did Elm propose a chart as in Exhibit 30, instead waiting until it
`filed its letter with the Court to make such a proposal. Elm’s tactics are not consistent with its
`obligation to make good faith efforts to resolve discovery matters. D.I. 111 at 10.
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`Despite Elm’s unreasonable demands, and in the face of the global COVID-19 pandemic,
`Samsung has made more than a good faith attempt to both fulfill its discovery obligations and
`work toward a representative products agreement. Over the past two months alone, Samsung has
`made eight productions of over 6,000 documents and 150,000 pages of materials, with six of
`those productions directed to the representative products issue.4 Exh. G Ideally, some of these
`productions could have been made earlier, but security protocols, the change in scope of the
`accused products, the age of many of the products, the number of individuals involved, and
`COVID-19 stay-at-home restrictions required additional time to navigate.
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`Notwithstanding Samsung’s efforts in moving the parties closer to a representative products
`agreement, it was not until May 11—less than two weeks ago—that Elm first proposed a
`workable approach to grouping products based on technical similarities; an approach that is not
`so different from what Elm now presents in its letter brief. Exh. H. Samsung preliminarily
`agreed to that approach on May 13 and confirmed its agreement on May 18. Exh. I; Exh. J. But
`Elm pressed forward with its letter regardless and presented, for the first time, the completion of
`Exhibit 30 as requested relief. Samsung stands by its agreement of May 18, and remains willing
`to continue to negotiate in good faith a fair and accurate representative products agreement with
`Elm—including by completing a slightly revised version of the chart in Exhibit 30 by June 19.5
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`The required refinements to the chart are minor. First, Elm’s chart includes image sensor
`products, which are technically different than memory products and may require a different
`approach to grouping them. The parties have never met and conferred on how to group these
`products, and while Samsung is confident that the parties can work toward an agreement,
`Samsung respectfully submits that it is improper to simply lump them together with the memory
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`3 Elm has consistently threatened motion practice as a companion to its demands, even when
`its demands were patently unreasonable. For instance, Elm initially threatened motion practice
`when Samsung declined to produce unrelated product cost information from a different case.
`Exh. D. Yet, after Samsung orally confirmed the irrelevance of the products, Elm fell silent.
`4 Elm acknowledged during the parties’ recent meet and confers that it did not fully
`understand or comprehend Samsung’s productions. Exh. F.
`5 Elm included many items in Exhibit 30 that it never raised during the parties’ meet and
`confers. For instance, Exhibit 30 includes image sensor products, but the parties have not even
`begun to discuss how to group image sensor products, because they are technically different than
`the memory products. See infra. (Nor had Elm raised product types or downstream product
`inventory as gating items until the filing of its letter.) Samsung nevertheless is willing to work
`with Elm on how best to group image sensor products. Exh. A.
`2
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`Case 1:14-cv-01430-LPS Document 295 Filed 06/01/20 Page 4 of 7 PageID #: 20102
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`products in the chart. Second, the chart should not include downstream product inventory6
`because this criteria does not distinguish representative products from one another and, yet again,
`Elm never raised this as a potential criteria for selecting representative products until the filing of
`its letter.7 In fact, Elm’s letter is the first request for Samsung’s inventory of downstream
`products in this case.
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`With those minor modifications—i.e., excluding image sensor products, downstream products
`inventory, and product type—Samsung agrees to complete the chart in Exhibit 30 by June 19 for
`the correct list of memory products. This moots Elm’s request for relief for those products.
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`Newly-Identified Products. Elm incorrectly suggests that Samsung’s identification of new
`products is part of a “pattern of delay,” and that Samsung somehow deliberately overlooked
`these products and misled the Court in the process. These allegations are categorically false.
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`The process of identifying accused products here is complex and involves many steps and
`several employees, as reflected by the attached declaration of Youngok Hyung (Exh. M). Given
`the nature of the technology, Samsung (not the Plaintiff, Elm, as is typical) first had to check
`certain databases to manually identify all memory products, whether standalone or included in
`downstream products, sold worldwide. Exh. M ¶¶ 5-6. Then, it had to manually search another
`database to determine whether the products are stacked, id. ¶ 7, and yet another set of databases
`to determine the thickness of each stacked chip in each memory product. Id. ¶¶ 8-20. To
`complicate matters, many of the products at issue are obsolete and locating data for them is
`particularly difficult, especially with organizational changes and employee turnover through the
`years. Id. ¶ 23. And this process had to be repeated once the parties agreed to modify the scope
`of accused products in January 2020 for not only products sold in the U.S., but products sold
`worldwide. Exh. K; Exh. M ¶ 21. Despite those challenges, Samsung has been diligent and
`responsive throughout, disclosing any issues promptly.8 Exh. M ¶¶ 22, 24.
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`And, that continued here. As soon as Samsung realized that certain products were not included
`in its list, Elm was promptly informed of the error and Samsung immediately acted to correct it,
`collecting relevant data on those products in Korea and the United States, all during the global
`pandemic. Exh. L. There is simply no truth to Elm’s allegations that Samsung has deliberately
`misled Elm or the Court in any way.9 Samsung is taking all steps to cure that oversight, and
`agrees to substantially complete its collection of data for these new products by June 19.
`Samsung, therefore, respectfully requests that Elm’s motion be denied.
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`6 Elm seeks information about Samsung’s downstream product inventory, but apparently has
`made no attempt to purchase those downstream products itself. See, e.g., Invensas Corp. v.
`Renesas Elecs. Corp., 287 F.R.D. 273, 285 (D. Del. 2012).
`7 Elm agreed to drop “product type” from the chart. See n.1, supra.
`8 Elm has had its own issues. For example, although Elm was notified on March 30 that the
`image sensor with product code S5K3H1G was not a stacked product, and therefore not relevant,
`Elm still included it in Exhibit 30 as an accused product.
`9 Elm incorrectly suggests that Samsung misled the Court in prior briefing, stating, for
`example, that Samsung misrepresented that it had produced “all worldwide sales.” There was no
`deception, however, as Samsung did in fact produce all worldwide sales for the accused products
`identified at that time and will, of course, update that data for the new products.
`3
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`Case 1:14-cv-01430-LPS Document 295 Filed 06/01/20 Page 5 of 7 PageID #: 20103
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`Respectfully submitted,
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`/s/ Adam W. Poff
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`Adam W. Poff (No. 3990)
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`Attachments
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`Case 1:14-cv-01430-LPS Document 295 Filed 06/01/20 Page 6 of 7 PageID #: 20104
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`CERTIFICATE OF SERVICE
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`I, Adam W. Poff, hereby certify that on June 1, 2020, I caused to be electronically
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`filed a true and correct copy of the foregoing document with the Clerk of the Court using
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`CM/ECF, which will send notification that such filing is available for viewing and downloading
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`to the following counsel of record:
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`Joseph J. Farnan, Jr. Esquire
`Brian E. Farnan, Esquire
`Michael J. Farnan, Esquire
`Farnan, LLP
`919 North Market Street, 12th Floor
`Wilmington, DE 19801
`farnan@farnanlaw.com
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
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`Attorneys for Plaintiff
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`I further certify that on June 1, 2020, I caused a true and correct copy of the
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`foregoing document to be served by e-mail on the above-listed counsel of record, and on the
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`following:
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`Adam K. Mortara, Esquire
`Matthew R. Ford, Esquire
`Bartlit Beck LLP
`54 West Hubbard Street, Suite 300
`Chicago, IL 60654
`adam.mortara@bartlit-beck.com
`matthew.ford@bartlit-beck.com
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`16577858.1
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`Case 1:14-cv-01430-LPS Document 295 Filed 06/01/20 Page 7 of 7 PageID #: 20105
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`John M. Hughes, Esquire
`Katherine L.I. Hacker, Esquire
`Nosson D. Knobloch, Esquire
`Daniel C. Taylor, Esquire
`Bartlit Beck LLP
`1801 Wewatta, Suite 1200
`Denver, CO 80202
`john.hughes@bartlit-beck.com
`kat.hacker@bartlit-beck.com
`nosson.knobloch@bartlit-beck.com
`dan.taylor@bartlit-beck.com
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`Attorneys for Plaintiff
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` YOUNG CONAWAY STARGATT
` & TAYLOR, LLP
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`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Pilar G. Kraman (No. 5199)
`Rodney Square
`1000 North King Street
`Wilmington, Delaware 19801
`(302) 571-6600
`apoff@ycst.com
`pkraman@ycst.com
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`Attorneys for Defendants
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`16577858.1
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`2
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