Case 1:14-cv-01430-LPS Document 298 Filed 06/10/20 Page 1 of 9 PageID #: 20212
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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.
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`SAMSUNG ELECTRONICS CO., LTD., et
`al.
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`Defendants.
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`ELM 3DS INNOVATIONS, LLC,
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`Plaintiff,
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`v.
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`MICRON TECHNOLOGY, INC., et al.,
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`Defendants.
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`ELM 3DS INNOVATIONS LLC,
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`Plaintiff,
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`v.
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`SK HYNIX INC., et al.,
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`Defendants.
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`C.A. No. 14-1430-LPS
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`JURY TRIAL DEMANDED
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`C.A. No. 14-1431-LPS
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`JURY TRIAL DEMANDED
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`C.A. No. 14-1432-LPS-CJB
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`JURY TRIAL DEMANDED
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`DEFENDANTS’ REPLY IN SUPPORT OF ITS MOTION FOR AN EXPEDITED
`SCHEDULE AND LEAVE TO FILE ITS SUMMARY JUDGMENT MOTION ON
`INDEFINITENESS OF THE “LOW STRESS” TERMS
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`Stripped of its histrionic rhetoric, Elm’s Opposition boils down to its argument that
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`Defendants ask Elm to do too much too soon for a case that has been pending for nearly six years.
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`But in reaching that conclusion, Elm conflates indefiniteness with infringement in arguing that
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`Defendant depositions are required. Indefiniteness focuses on the understanding of the claims by
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`Case 1:14-cv-01430-LPS Document 298 Filed 06/10/20 Page 2 of 9 PageID #: 20213
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`a person of ordinary skill at the time of the alleged invention. Indefiniteness is not related to
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`Defendants’ actions or an infringement inquiry. Indeed, had Elm never brought an infringement
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`claim, the claims could still be adjudged indefinite.
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`Contrary
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`to Elm’s attorney argument,
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`indefiniteness and
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`infringement are not
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`“intertwined.”1 D.I. 276 in C.A. 14-14322 (“Opp.”) at 5. “Indefiniteness is a matter of claim
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`construction, and the same principles that generally govern claim construction are applicable to
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`determining whether allegedly indefinite claim language is subject to construction.” Praxair, Inc.
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`v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008); SmithKline Beecham Corp. v. Apotex Corp.,
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`403 F.3d 1331, 1340-41 (Fed. Cir. 2005) (“[t]he test for indefiniteness does not depend on a
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`potential infringer’s ability to ascertain the nature of its own accused product to determine
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`infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the
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`invention[,]”); Confluent Surgical, Inc. v. HyperBranch Med. Tech., Inc., 2019 WL 2897701, at
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`*8 n.10 (D. Del. July 5, 2019) (Burke, M.J.) (rejecting consideration of defendant’s own accused
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`product for indefiniteness analysis based on SmithKline). A claim is indefinite if it fails to inform
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`those skilled in the art “as of the time of the patent application [i.e., the filing date]” about the
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`scope of the claimed subject matter with reasonable certainty. Nautilus, Inc. v. Biosig Instruments,
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`Inc., 572 U.S. 898, 910 (2014).
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`Infringement, conversely, focuses on whether Defendants’ products meet the limitations of
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`1 Defendants never “recognized” that indefiniteness and infringement are “intertwined” as Plaintiff
`alleges. Opp. at 5. Rather, Defendant’s expert, Dr. Fair, rightly criticized Plaintiff’s expert for
`failing to explain how a person of ordinary skill in the art could distinguish with reasonable
`certainty between infringing and non-infringing stress values, which would demonstrate
`indefiniteness. D.I. 237, Ex. B at ¶41. In other words, indefiniteness asks whether one of ordinary
`skill could understand the scope of the claims, not whether Defendants’ products actually fall
`within that scope, which is the infringement question.
`2 All docket citations are to C.A. 14-1432.
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`2
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`Case 1:14-cv-01430-LPS Document 298 Filed 06/10/20 Page 3 of 9 PageID #: 20214
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`the claims as construed, after the patent issues. Elm’s sudden demand for discovery is a red herring
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`because it focuses on the latter (infringement), not the former (indefiniteness). Elm now argues
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`that it needs discovery concerning Defendants’ products including: (1) depositions of Defendants’
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`fact witnesses to understand “what they do generally to manage stress,” and (2) expert testing of
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`Defendants’ products using “established methods” to demonstrate that “stress values can be
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`measured experimentally.”3 Opp. at 4-5. This proposed discovery has nothing to do with
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`indefiniteness, and indeed Elm never sought any of this discovery during the claim construction
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`process. There is no reason why Elm could not have conducted the product testing (per its Rule
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`11 obligations) it purports to now need, or why it cannot do so within Defendants’ proposed
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`schedule.
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`Here, indefiniteness is determined based on how one of ordinary skill in the art would have
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`understood the claims in 1997, when the priority application was filed. D.I. 1 at ¶12.
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`“[D]efiniteness is measured from the viewpoint of a person skilled in [the] art at the time the
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`patent was filed.” Nautilus, 572 U.S. at 908 (emphasis in original). But Defendants did not
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`manufacture, sell, or offer to sell a stacked memory product with a substrate thinned to 50 µm or
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`less (a requirement of the asserted claims) until many years later. D.I. 258 at 6-7.4 Thus,
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`3 Elm does not complain that Defendants’ proposed schedule prevents it from obtaining documents
`it purportedly needs. Indeed, Elm’s Opposition cites Samsung documents, and admits that
`discovery has “proceeded in earnest.” Opp. at 3. Defendants’ proposed close of fact discovery
`for the “low stress” terms is several weeks after the current date for substantial completion.
`4 Elm admits that the “time frames for infringement and validity” in this case are “different,” but
`tries to run from this legal truth by incorrectly and misleadingly citing an out of context statement
`by Dr. Murray—that “typical commercial equipment” at “the time of the inventions in the Asserted
`Patents…all measure curvature or shape.” Opp. at 4. Elm ignores Defendants’ argument stated
`in the very next sentence of Dr. Murray’s declaration, which Elm does not cite. Dr. Murray
`explains that he is quoting from a 2001 article and that the equipment and method referred to was
`“only applicable to films applied to smooth wafers which are measured for curvature before and
`after film deposition, not to dielectric layers incorporated into a three dimensional structure.”
`D.I. 237, Ex. C at ¶39 (emphasis added). Dr. Murray goes on to cite the several other stress
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`3
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`Case 1:14-cv-01430-LPS Document 298 Filed 06/10/20 Page 4 of 9 PageID #: 20215
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`Defendants’ products, let alone test structures that are not accused (which is what Elm cites),
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`cannot be relevant to how one of ordinary skill in the art would have understood the patent claims
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`years earlier, in 1997. Moreover, indefiniteness focuses on the knowledge of those of ordinary
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`skill, not Defendants’ knowledge. See SmithKline, 403 F.3d at 1340-41.
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`As the Court recognized during claim construction, indefiniteness turns on whether a
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`person of ordinary skill in the art would know what type of stress to measure, where to measure
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`stress, how to measure stress, and when to measure stress. D.I. 258 at 14-17. Discovery into
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`Defendants’ products does nothing to answer these questions. Tellingly, Plaintiff fails to explain
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`how its proposed discovery is relevant at all to indefiniteness.
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`Elm argues it would be more efficient to question Defendants witnesses about
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`indefiniteness and infringement issues at the same time (Opp. at 4-5), but there is no need to depose
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`Defendants’ engineers as to products and test structures built years after the alleged inventions as
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`that is wholly irrelevant to the indefiniteness issue.5
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`When Elm’s purported need for discovery into Defendants’ products is disregarded, the
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`parallel schedule proposed by Defendants is workable. Because indefiniteness focuses on how
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`one of ordinary skill would understand the claims, it is fundamentally an expert issue, not an issue
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`measurement techniques available at the time, a fact that is undisputed by Defendants. By taking
`a quote out of context, Elm tries to argue that Dr. Murray’s testimony somehow prevents
`Defendants from noting that these different timelines matter. Opp. at 4. Despite Elm’s misleading
`citation, this does nothing to answer the question of whether one of ordinary skill in the art as of
`1997 would know what type of stress to measure, where to measure stress, how to measure stress,
`and when to measure stress.
`5 Indeed, at the Markman hearing, the Court appeared skeptical that evidence concerning
`Defendants’ purported understanding of stress made the claims definite: “You’re saying don’t tell
`the jury anything about any of this. And your argument seems to be because manufacturers
`understand how to do this, but you don’t even want me to tell the jury that that is fair game to
`look at. So I guess I’m a little lost on how this term could be definite.” D.I. 241, Hearing Tr.
`53:3-8.
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`4
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`Case 1:14-cv-01430-LPS Document 298 Filed 06/10/20 Page 5 of 9 PageID #: 20216
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`concerning Defendants’ products. Defendants’ proposed schedule provides ample time for
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`exchange of expert reports, depositions of those experts, and any relevant third-party discovery.
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`The parallel schedule is designed so that issues relating to the “low stress” terms can be
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`resolved around the time fact discovery for all issues closes. That way, even if the proposed motion
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`is denied, the parties can enter expert discovery for all remaining issues with knowledge of what
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`the “low stress” terms mean, avoiding expert reports and summary judgment motions with
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`alternative interpretations and the possibility of requests for post-summary judgment discovery.
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`Defendants are not necessarily wed to the specific dates outlined in their proposal. If the current
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`schedule is ultimately extended by a few months because of the COVID-19 situation, Defendants
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`are open to a commensurate extension to the early summary judgment schedule such that the
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`indefiniteness issues are still resolved around the end of fact discovery.6
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`Plaintiff’s claims of prejudice ring hollow. Although Plaintiff now asserts that discovery
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`“into indefiniteness and infringement cannot be bifurcated because the evidence establishing that
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`the claims are both definite and infringed overlap extensively” (Opp. at 3), Plaintiff never
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`mentioned this purported need for discovery into Defendants’ products when it briefed these same
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`indefiniteness issues during claim construction. Plaintiff also never sought such discovery in the
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`many months leading up to the Markman hearing. Had Elm really believed that it needed to depose
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`any of Defendants’ witnesses for indefiniteness purposes, it could have and should have done so
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`already. Plaintiff’s sudden, professed need for this discovery should be seen for what it is—a
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`6 Contrary to Plaintiff’s assertions, Defendants are not trying to use the “worldwide pandemic as a
`reason to cram fact and expert discovery into four months” and do not “oppose resolving
`indefiniteness under the current case schedule because of the ‘uncertainty’ the pandemic poses to
`a 2021 trial date.” Opp. at 7. Defendants mentioned the “uncertainty” of the pandemic simply to
`explain why they believe a trial date in 2021 is impractical, not to “justify” their proposed
`indefiniteness schedule. D.I. 270 at 5 n.5.
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`5
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`Case 1:14-cv-01430-LPS Document 298 Filed 06/10/20 Page 6 of 9 PageID #: 20217
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`litigation tactic to avoid early summary judgment.
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`For all these reasons, this Court should grant Defendant’s motion.
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`Dated: June 10, 2020
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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
`allansoobert@paulhastings.com
`naveenmodi@paulhastings.com
`phillipcitroen@paulhastings.com
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`Of Counsel:
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`John Kappos
`Hana Oh Chen
`O’MELVENY & MYERS LLP
`610 Newport Center Drive
`Newport Beach, CA 92660
`(949) 823-6900
`jkappos@omm.com
`hoh@omm.com
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`Brian Cook
`Xin-Yi Zhou
`O’MELVENY & MYERS LLP
`400 South Hope Street
`Los Angeles, CA 90071
`(213) 430-6000
`bcook@omm.com
`vzhou@omm.com
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`Respectfully submitted,
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`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
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` /s/ Adam w. Poff
`Adam W. Poff (#3990)
`Pilar G. Kraman (#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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`RICHARDS LAYTON & FINGER, PA
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` /s/ Tyler E. Cragg
`Frederick L. Cottrell, III (#2555)
`Travis S. Hunter (#5350)
`Tyler E. Cragg (#6398)
`One Rodney Square
`920 North King Street
`Wilmington, DE 19801
`(302) 651-7836
`cottrell@rlf.com
`hunter@rlf.com
`cragg@rlf.com
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`Attorneys for Defendants Micron Technology,
`Inc., Micron Semiconductor Products, Inc. and
`Micron Consumer Products Group, Inc.
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`6
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`Case 1:14-cv-01430-LPS Document 298 Filed 06/10/20 Page 7 of 9 PageID #: 20218
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`GREENBERG TRAURIG, LLP
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` /s/ Benjamin J. Schladweiler
`Benjamin J. Schladweiler (#4601)
`The Nemours Building
`1007 North Orange Street, Suite 1200
`Wilmington, DE 19801
`(302) 661-7352
`schladweilerb@gtlaw.com
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`Counsel for Defendants SK hynix Inc.,
`SK hynix America Inc., Hynix Semiconductor
`Manufacturing America Inc., and SK hynix
`Memory Solutions Inc.
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`Of Counsel:
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`L. Howard Chen
`Harold H. Davis
`Nicholas A. Brown
`GREENBERG TRAURIG, LLP
`Four Embarcadero Center, Suite 3000
`San Francisco, CA 94111
`(415) 655-1300
`chenh@gtlaw.com
`davish@gtlaw.com
`brownn@gtlaw.com
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`Vishesh Narayen
`GREENBERG TRAURIG, LLP
`101 East Kennedy Boulevard, Suite 1900
`Tampa, FL 33602
`(813) 318-5700
`narayenv@gtlaw.com
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`Rose Cordero Prey, Esquire
`Margaret Ukwu, Esquire
`GREENBERG TRAURIG, LLP
`200 Park Avenue
`New York, NY 10166
`(212) 801-9200
`preyr@gtlaw.com
`ukwum@gtlaw.com
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`7
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`Case 1:14-cv-01430-LPS Document 298 Filed 06/10/20 Page 8 of 9 PageID #: 20219
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`CERTIFICATE OF SERVICE
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`I, Adam W. Poff, hereby certify that on June 10, 2020, I caused to be
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`electronically filed a true and correct copy of the foregoing document with the Clerk of the Court
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`using CM/ECF, which will send notification that such filing is available for viewing and
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`downloading 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 10, 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 298 Filed 06/10/20 Page 9 of 9 PageID #: 20220
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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 Samsung Electronics Co.,
`Ltd., Samsung Semiconductor,
`Inc., Samsung
`Electronics America, Inc., and Samsung Austin
`Semiconductor, LLC
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`16577858.1
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`2
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