Case 1:14-cv-01432-LPS Document 281 Filed 06/12/20 Page 1 of 8 PageID #: 17011
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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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`ELM 3DS INNOVATIONS, LLC,
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`Plaintiff,
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`v.
`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.
`SK HYNIX INC., 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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`FILED UNDER SEAL
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`C.A. No. 14-cv-1431-LPS
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`JURY TRIAL DEMANDED
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`FILED UNDER SEAL
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`C.A. No. 14-cv-1432-LPS
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`JURY TRIAL DEMANDED
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`FILED UNDER SEAL
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`PLAINTIFF’S RESPONSE TO DEFENDANTS’ MOTION FOR AN EXPEDITED
`SCHEDULE AND LEAVE TO FILE ITS SUMMARY JUDGMENT MOTION ON
`INDEFINITENESS OF THE “LOW STRESS” TERMS
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`INTRODUCTION
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`The Defendants’ motion for early summary judgment on indefiniteness proceeds under the
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`false premise that indefiniteness is a discrete issue in the case that can be lopped off from
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`infringement. It is not. The indefiniteness and infringement inquiries overlap significantly, and the
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`Defendants’ front-loaded indefiniteness proposal would prejudice Elm and adds nothing to the
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`efficiency of the case.
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`The documents showing how the Defendants measure dielectric stress in the design and
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`manufacture of the accused products will help prove the Defendants’ infringement and demonstrate
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`Case 1:14-cv-01432-LPS Document 281 Filed 06/12/20 Page 2 of 8 PageID #: 17012
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`that the stress terms are not indefinite. The same experts opining on the Defendants’ established
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`methods to measure and control dielectric stress for indefiniteness purposes will describe how those
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`methods prove infringing stress levels in the accused products. And the same fact witnesses—many
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`of whom are in South Korea and currently unavailable—will testify regarding how three of the
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`largest semiconductor manufacturers in the world measure stress during the manufacturing of the
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`accused chips, which supports both the definiteness of the stress terms and infringement.
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`The Defendants mention exactly zero of these issues, instead stating without support that
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`the parties can “quickly fill out [the] record” through a “parallel schedule.” D.I. 284 at 2-3 (14-cv-
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`1430)1. To the contrary, the Defendants’ proposal would either require all the infringement
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`discovery to be addressed during their proposed breakneck schedule or else largely duplicated later.
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`This is the opposite of the “efficiency” and lack of prejudice promised by the Defendants. Given the
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`factual overlap and the nature of the inquiries, the Court’s claim construction order rightly
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`recognizes that indefiniteness should be determined with everything else “at the summary judgment
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`stage (and, if necessary, at trial).” D.I. 266 at 14. The Court should deny the Defendants’ motion.
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`BACKGROUND
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`The accused products in this case are semiconductors in which silicon substrates are thinned
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`and stacked for use in three-dimensional memory products such as flash memory. The “low stress”
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`terms in this case relate to the deposition of a dielectric (or insulating) material on a substrate in a
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`way that does not curve the substrate after it is thinned. A central concern in semiconductor
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`manufacturing is ensuring the substrates are planar or flat. Dielectric layers are formed on top of the
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`substrate. When deposited on to a substrate, stress in the dielectric can cause the substrate to curve
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`after it is thinned. The thinner the substrate, the more the stress imparted by the deposited dielectric
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`1 All docket citations in this response are to C.A. No. 14-cv-1430-LPS.
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`Case 1:14-cv-01432-LPS Document 281 Filed 06/12/20 Page 3 of 8 PageID #: 17013
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`will curve it, defeating the goal of a planarized substrate for semiconductor manufacturing and
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`stacking. Seegenem/br D.I. 266 at 14—15.
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`The Defendants argued during claim construction that the low stress terms are indefinite
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`because a “person of ordinary skill in the art would not know what type of stress to measure, or how
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`and when to measure that stress on a dielectric layer.” D1. 266 at 14. The Court rejected these
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`arguments, noting that the factual record is insufficient at this stage in the case and deferring
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`resolution until summary judgment or trial. III.
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`Since then, discovery has proceeded in earnest. Under the current schedule, the parties are to
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`substantially complete document production for all the factual issues by June 29, 2020. D1. 263 at 4.
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`Fact discovery is currently scheduled to end four months later on October 26, 2020. Almost all of
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`the depositions have yet to occur and will likely be in Asia for Samsung and SK witnesses. Id. Expert
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`discovery would then proceed for another six months through April 2021. Id
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`ARGUMENT
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`Discovery into indefiniteness and infringement cannot be bifurcated because the evidence
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`establishing that the claims are both definite and infringed overlaps extensively._
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` As discussed at claim construction
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`the basic method for evaluating stress
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`in a dielectric layer is by measuring the curvature/deformation caused by the dielectric on a thin
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`Lu
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`Case 1:14-cv-01432-LPS Document 281 Filed 06/12/20 Page 4 of 8 PageID #: 17014
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`substrate.
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` As the Defendants’ experts explained during claim construction, there are
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`several techniques to conduct this measurement, and “[a]t the time of the inventions in the Asserted
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`Patents, and afterwards, the ‘typical commercial equipment available to determine stress’ all ‘measure
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`curvature or shape.’’’ D.I. 239, Ex. C, Murray Decl. ¶ 39.2
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`Any fact deposition
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` would address both infringement
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`and the definiteness of the measurement techniques. Using a technique known to produce certain
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`stress values is evidence of infringement, Defendants’ knowledge of their infringement, and of the
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`definiteness of the “low stress” claim terms. Elm cannot ask the Defendants’ employees only what
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`they do generally to manage stress (indefiniteness) without also being able to ask what they do
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`specifically to manage stress with respect to the accused products (infringement). Nonetheless,
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`Defendants want Elm to ask the indefiniteness questions on a separate track from the infringement
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`questions.
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`Further, deposing employees with knowledge of these techniques will result in wasteful
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`duplication. Putting aside the logistical hurdles posed by the pandemic, Elm would have to take
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`separate depositions on the same document. Or if Elm is only allowed a single deposition, Elm
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`would have to somehow depose these fact witnesses in the three weeks between the end of
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`2 Thus, the Defendants cannot argue in reply that the different time frames for infringement and
`validity make it possible to excise indefiniteness from infringement.
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`Case 1:14-cv-01432-LPS Document 281 Filed 06/12/20 Page 5 of 8 PageID #: 17015
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`document production on infringement (June 29th) and the proposed close of indefiniteness fact
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`discovery (July 17th). D.I. 284 at 4-5.3
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`Elm’s expert discovery would be similarly affected. In addition to the Defendants’
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`documents, dielectric stress values can be measured experimentally, as shown above. D.I. 240-1,
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`Baker Decl. at 24-30. Such expert work would necessarily employ methods that demonstrate both
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`infringement and the definiteness of the “low stress” terms. The experts would use established
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`methods to measure dielectric stress to prove infringement (and by implication the reasonably
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`certain meaning of the claims). Id. Under the Defendants’ proposal, an expert would have to either
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`conduct these experiments twice or frontload any infringement analysis to meet the new schedule.
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`Even then, the Defendants ask that expert discovery regarding indefiniteness end a month before
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`fact depositions would be completed for the rest of the case. Those depositions will also likely
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`inform the experts’ analyses.
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`The Defendants’ proposal also flies in the face of their own recognition that the
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`infringement and indefiniteness inquiries are intertwined. During claim construction, Defendants’
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`expert Dr. Fair criticized Elm’s expert for failing to offer infringement opinions in response to the
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`Defendants’ claims that the “low stress” terms are indefinite. D.I. 239, Ex. B, Fair Rebuttal Decl. ¶
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`41 (“Dr. Baker does not explain whether a dielectric layer having an average stress above the claimed
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`threshold value, but with some locations having a stress within the claimed range, would infringe
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`these claims.”). Their expert Dr. Murray said the question of indefiniteness turned on whether
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`infringement could be shown, saying a person of skill in the art had “to distinguish with reasonable
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`certainty between infringing and non-infringing stress values.” D.I. 239, Ex. D, Murray Rebuttal
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`3 The Defendants oppose setting a trial date in late 2021 because the pandemic allegedly imposes
`uncertainty on the parties’ ability to complete discovery. D.I. 285 at 2. And they alert the Court in
`their motion that they may not meet their discovery obligations. Yet here they demand that Elm
`complete all discovery on stress in a matter of weeks.
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`Case 1:14-cv-01432-LPS Document 281 Filed 06/12/20 Page 6 of 8 PageID #: 17016
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`Decl. ¶¶ 12, 22. The process by which Elm’s experts prove infringement will inform the Court’s
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`inquiry into whether known methods exist to measure dielectric stress.
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`Balanced against this prejudice to Elm, the Defendants justifications for a double-track
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`schedule are weak at best. They say that their indefiniteness motion could be dispositive. But the
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`Defendants do not propose accelerating all their dispositive motions, so the Court would have to
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`preside twice over fact-intensive and potentially related dispositive motions. Ex. 2, May 1, 2020
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`Email from H. Davis (“My proposal is that the parties would have a dispositive motion on
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`indefiniteness of the stress terms per the proposed schedule, and then a second, regularly scheduled
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`motion on other issues if needed.”). And patent cases do not proceed by first structuring discovery
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`around all potentially “dispositive” issues. See Revised Patent Form Scheduling Order (June 2014),
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`https://www.ded.uscourts.gov/sites/ded/files/LPS-PatentSchedOrder-Non-ANDA.pdf.
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`At a minimum, that is not how the parties have structured this case, with fact discovery
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`currently proceeding into all the issues in the case, requiring the parties to now figure out how to
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`excise the discovery that just goes to “indefiniteness.” The case’s structure is clear from paragraph
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`19 of the May 9, 2018 Amended Scheduling Order on which the Defendants base their motion.
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`After making clear that dispositive motions will occur after expert discovery is complete, that
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`paragraph allows parties to seek leave to file an early dispositive motion under Rule 56. D.I. 176 at
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`11. It is not a mechanism for blowing up the case schedule or a license to seek leave to compress
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`fact and expert discovery in service of a dispositive motion. Their motion under the Scheduling
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`Order is even more bizarre given that the Defendants stipulated two months ago to the same
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`schedule they now seek to detonate. D.I. 263.
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`They also say that there will be uncertainty as to the parties’ respective positions on the
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`meaning of the “low stress” terms. But there is no requirement that the Court construe claims
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`before fact or expert discovery—or even trial, for that matter. CytoLogix Corp. v. Ventana Med. Sys.,
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`Case 1:14-cv-01432-LPS Document 281 Filed 06/12/20 Page 7 of 8 PageID #: 17017
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`Inc., 424 F.3d 1168, 1172 (Fed. Cir. 2005) (“[T]he district court has considerable latitude in
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`determining when to resolve issues of claim construction”). Each party will know the other’s views
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`regarding the meaning of the claim terms through interrogatories, contentions, expert reports, and
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`expert depositions.
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`Defendants bizarrely cite the worldwide pandemic as a reason to cram fact and expert
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`discovery on indefiniteness into four months. They oppose resolving indefiniteness under the
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`current case schedule because of the “uncertainty” the pandemic poses to a 2021 trial date (and
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`presumably a motion at that time). This is absurd. How does the pandemic—which may or may not
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`have just crested—justify a warp-speed schedule for international discovery over the coming
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`summer but pose unacceptable uncertainty in sixteen months? If anything, the pandemic and its
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`attendant restrictions will undermine Elm’s ability to get necessary discovery under the Defendants’
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`proposal, including from documents and witnesses in South Korea. Remarkably, the Defendants
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`note they may need more time because of COVID-19 “irrespective of Defendants’ proposed
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`motion” even as they propose slashing months off the fact-discovery schedule for indefiniteness.
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`D.I. 284 at 5 n.5. They cannot claim pandemic-related delays but then insist that Elm sprint to
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`complete fact discovery.
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`The reality is that the Defendants do not want to defend their infringement case. Their
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`validity challenges before the PTAB and Federal Circuit failed. After a two-year stay, their
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`indefiniteness arguments during claim construction were unsuccessful. And instead of letting the
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`case finally proceed apace, they want to create a gerrymandered and untenable parallel litigation track
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`that prejudices Elm and compresses a key portion of the discovery schedule on the heels of a
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`pandemic. To the extent that the Defendants make a sideways reference to using the schedule to
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`“encourage settlement,” the better path is for the Defendants to finally have to defend their
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`noninfringement case, not grant their motion.
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`Case 1:14-cv-01432-LPS Document 281 Filed 06/12/20 Page 8 of 8 PageID #: 17018
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`For the foregoing reasons, the Court should deny the Defendants’ motion and maintain the
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`CONCLUSION
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`Respectfully submitted,
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`FARNAN LLP
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`/s/ Michael J. Farnan
`Brian E. Farnan (#4089)
`Michael J. Farnan (#5165)
`919 North Market Street
`12th Floor
`Wilmington, DE 19801
`Tel: (302) 777-0300
`Fax: (302) 777-0301
`bfarnan@farnanlaw.com
`mfarnan@farnanlaw.com
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`Adam K. Mortara (pro hac vice)
`Matthew R. Ford (pro hac vice)
`BARTLIT BECK LLP
`54 West Hubbard Street, Suite 300
`Chicago, IL 60654
`Tel: (312) 494-4400
`Fax: (312) 494-4440
`adam.mortara@bartlitbeck.com
`matthew.ford@bartlitbeck.com
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`John M. Hughes (pro hac vice)
`Nosson D. Knobloch (pro hac vice)
`Katherine L.I. Hacker (pro hac vice)
`Daniel C. Taylor (pro hac vice)
`BARTLIT BECK LLP
`1801 Wewatta Street, Suite 1200
`Denver, CO 80202
`Tel: (303) 592-3100
`Fax: (303) 592-3140
`john.hughes@bartlitbeck.com
`nosson.knobloch@bartlitbeck.com
`kat.hacker@bartlitbeck.com
`dan.taylor@bartlitbeck.com
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`Counsel for Plaintiff
`ELM 3DS INNOVATIONS, LLC
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`current schedule in the case.
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`Dated: June 4, 2020
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