Case 1:14-cv-01432-LPS Document 295 Filed 08/19/20 Page 1 of 3 PageID #: 17982
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`August 19, 2020
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`VIA E-FILING
`The Honorable Jennifer L. Hall
`J. Caleb Boggs Federal Building
`844 N. King Street
`Room 3124, Unit 17
`Wilmington, DE 19801-3556
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`RE:
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`Elm 3DS Innovations, LLC v. Samsung Electronics Co., Ltd. et al.,
`(C.A. No. 14-cv-1430-LPS)
`Elm 3DS Innovations, LLC v. Micron Technology, Inc., et al.,
`(C.A. No. 14-cv-1431-LPS)
`Elm 3DS Innovations, LLC v. SK hynix Inc. et al.
`(C.A. No. 14-cv-1432-LPS)
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`Dear Judge Hall,
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`Plaintiff Elm 3DS Innovations, LLC respectfully moves to compel Defendants to produce
`documents and product samples that Defendants admit are responsive to Elm’s requests and non-
`privileged. Defendants are withholding these documents and samples solely because they are
`allegedly subject to non-disclosure or confidentiality agreements with third parties. The Court’s
`Protective Orders in these cases will protect these confidential materials. (See D.I. 117 (14-cv-
`1430); D.I. 71 (14-cv-1431); D.I. 112 (14-cv-1432).) Elm should not be forced to provide third
`parties with more assurances than this Court’s Protective Orders already provide, or be forced to
`wait months to receive relevant information while the Defendants re-negotiate their third-party
`confidentiality agreements.
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`As one example, Elm served a request for production for “purchase orders and/or other
`contracts or agreements” related to the sale of the Accused Products. (Ex. 1 at 2.) Defendant
`Micron Technology, Inc. acknowledges that it has agreements with third-party Apple for the sale
`of accused semiconductors that are responsive to this request. (See id.) But Micron has said that
`third-party Apple will not allow Micron to produce these documents unless Elm agrees to all of
`the following four conditions:
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`1. Should the Agreements appear on either party’s trial exhibit list, the parties
`must agree to let Apple know at the time trial exhibit lists are first
`exchanged.
`2. Should the Agreements be discussed at hearing or trial, the parties must
`agree to use reasonable efforts to seal the courtroom and redact any related
`transcript person.
`3. To the extent either party seeks to disclose the Agreements to any experts
`or consultants pursuant to Sections I.A.5.b and III of the Protective Order,
`the parties must agree to provide the name [and] materials for each
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`Case 1:14-cv-01432-LPS Document 295 Filed 08/19/20 Page 2 of 3 PageID #: 17983
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`individual to Apple so it can evaluate whether it has any objections.
`Similarly, if any individuals have been disclosed pursuant to the Agreement,
`the parties must agree to provide the names and materials of those
`individuals to Apple.
`4. To the extent either party seeks permission to disclose the Agreements to
`anyone pursuant to Section I.A.5.f., the parties must agree to notify Apple
`the name of the individual so Apple can evaluate whether it has any
`objections.
`(Id.) Elm explained during a meet and confer that it did not oppose Defendant Micron agreeing
`to these provisions with Apple. That would be the most reasonable solution given that Micron
`and Apple are the two companies that have an ongoing business relationship. Micron itself could
`meet at least some of Apple’s demands without Elm’s agreement at all. For example, if any party
`lists these documents on an exhibit list before trial, Micron can notify Apple. Elm also informed
`Micron that Elm has no objection to Micron sharing the names of the experts disclosed pursuant
`to the Protective Orders. That way Apple can determine whether it has any concerns with the
`disclosed experts. But Micron responded that Apple refuses to allow Micron to produce these
`documents unless Elm agrees to these conditions as is.
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`At this point, despite Elm’s attempts to negotiate conditions that would satisfy all the
`parties involved, Micron has stated that it “cannot produce the requested materials absent a court
`order.” (Id. at 1.) Micron made clear in a meet and confer that it does not oppose this motion to
`compel it to produce the requested documents.
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`Defendant Samsung Electronics Co., Ltd. refuses to produce responsive, non-privileged
`documents and product samples for the same reason. Samsung has explained that it is
`withholding “[o]ne of the [responsive] licenses . . . based on an objection by the licensor.” (Ex. 2
`at 2.) Samsung has also explained that it is currently withholding responsive communications,
`including communications with dielectric suppliers that are likely to address some of the key
`contested issues in this case. In addition to those documents, Samsung also refuses to produce
`samples of products that it claims “are subject to NDAs.” (Ex. 3 at 1.) Samsung stated that it was
`“collecting the NDAs so [it could] determine next steps” related to the requested samples. (Id.)
`But during the parties’ meet and confer almost a month later, Samsung did not provide any
`proposed next steps to resolve this issue but instead wrongfully claimed that Elm had not
`requested these samples. To be clear, Elm served a request for production for “[t]en (10) samples
`of each Product.” (Ex. 4 at 6.) Elm served that request on February 6, 2020. (Id.) Elm
`specifically asked for these products by product number on July 5, 2020. (Ex. 3 at 2.) Samsung’s
`position—that each sample allegedly covered by an NDA be addressed separately, and Elm’s
`access to the sample be negotiated over the course of many months—will unreasonably delay a
`case that has already dragged on for far too long.
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`Finally, Defendant SK hynix Inc. is withholding purchase agreements with Apple,
`Microsoft, and Intel. In discussing this issue, SK hynix shared the confidentiality provisions that
`it claims prevents the production of some of these documents. But the language of these
`provisions actually supports Elm’s position. Both agreements make clear that these documents
`can be produced as long as they are marked confidential under the Protective Order. (Ex. 5 at 2
`(“Receiving Party may disclose Confidential Information of Disclosing Party in accordance with
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`Case 1:14-cv-01432-LPS Document 295 Filed 08/19/20 Page 3 of 3 PageID #: 17984
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`a judicial or other governmental order, provided that Receiving Party . . . obtains written
`assurance from the applicable judicial or governmental entity that it will afford the Confidential
`Information the highest level of protection afforded under applicable law or regulation.”); id.
`(“Recipient may disclose Confidential Information to the extent required by law, provided
`Recipient makes reasonable efforts to give Discloser written notice of such requirement before
`disclosure and takes reasonable steps to obtain protective treatment of the Confidential
`Information.”).) Most nondisclosure or confidentiality agreements have provisions like these
`allowing for the production of confidential materials based on legal obligations, such as requests
`for production. Yet, SK hynix refuses to produce these documents without a Court order. Though
`similar to Micron, SK hynix made clear in a meet and confer that it will take no position in
`response to this motion.
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`The Court’s Protective Orders already provide these third parties protection over
`confidential documents—the same protection afforded the parties’ confidential documents
`produced in these cases. Forcing Elm to agree to different protections demanded by different
`third parties will lead to confusion that will make it difficult for Elm and the Defendants to meet
`each third parties’ demands. That is one reason that it is preferable to have one Protective Order
`issued by the Court that governs all documents in a case. The Defendants all agree these
`documents and product samples are responsive. The Defendants also agree that these documents
`and samples are not privileged. Therefore, Elm believes the Defendants should mark the
`documents confidential under the Protective Orders and produce them without any additional
`conditions.
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`For these reasons, Elm 3DS respectfully requests that the Court grant this motion and
`order that Defendants produce all responsive, non-privileged documents protected by
`nondisclosure or confidentiality agreements.
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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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