Case 1:14-cv-01432-LPS Document 297 Filed 08/25/20 Page 1 of 4 PageID #: 18027
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`1313 North Market Street
`P.O. Box 951
`Wilmington, DE 19899-0951
`302 984 6000
`www.potteranderson.com
`
`David E. Moore
`Partner
`Attorney at Law
`dmoore@potteranderson.com
`302 984-6147 Direct Phone
`302 658-1192 Firm Fax
`
`VIA ELECTRONIC-FILING
`
`August 25, 2020
`
`The Honorable Jennifer L. Hall
`U.S. District Court for the District of Delaware
`J. Caleb Boggs Federal Building
`844 N. King Street
`Wilmington, DE 19801-3556
`Re: Elm 3DS Innovations, LLC v. Samsung Electronics Co., Ltd. et al.,
`(C.A. No. 14-1430-LPS); Elm 3DS Innovations, LLC v. Micron Technology, Inc.,
`et al., (C.A. No. 14-1431-LPS); Elm 3DS Innovations, LLC v. SK hynix Inc. et al.
`(C.A. No. 14-1432-LPS)
`Dear Judge Hall:
`We write on behalf of non-party Apple Inc. in accordance with the Court’s Oral Orders dated
`August 13, 2020. Apple opposes production of certain highly-confidential Apple business
`information (the “Apple Confidential Information”) by defendants in each of the underlying
`litigations without being afforded limited and reasonable rights and protections with respect to
`the parties’ use and disclosure of such information. Specifically, Apple has requested that:
`
`1. To the extent that a party seeks to disclose any Apple Confidential Information to any
`individual pursuant to Sections I.A.5.b (regarding experts or consultants) or I.A.5.f (regarding
`“any other person”) of the operative Protective Orders, the parties afford Apple the same notice,
`disclosure, and consent rights as provided to a producing party under the Protective Orders;1
`2. The parties notify Apple should any Apple Confidential Information appear on any
`party’s trial exhibit list; and
`3. The parties use reasonable efforts to seal the courtroom and redact any related transcript
`should the Apple Confidential Information be discussed at hearing or at trial; or provide Apple
`with reasonable notice before such information is used so that it may intervene.
`
`Absent the parties’ agreement to the foregoing requested protections, Apple — as a non-party to
`the litigations—has no insight into or rights regarding how Apple Confidential Information is
`used, disclosed, or potentially de-designated by the parties in the litigations. Therefore, and for
`the reasons set forth below, good cause exists to condition any Order compelling production of
`the Apple Confidential Information on the parties’ agreement to Apple’s requests above.
`
`1 On an August 24, 2020 meet and confer, counsel for Elm agreed that it would provide Apple
`with notice before it disclosed any Apple Confidential Information to experts (pursuant to
`Section I.A.5.b. of the Protective Orders) or any other person (pursuant to Section I.A.5.f. of the
`Protective Orders). This request is therefore no longer at issue.
`
`

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`Case 1:14-cv-01432-LPS Document 297 Filed 08/25/20 Page 2 of 4 PageID #: 18028
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`The Honorable Jennifer L. Hall
`August 25, 2020
`Page 2
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`1. The Apple Documents Subject to Elm’s Motion to Compel Contain Highly Confidential
`Business Information of Apple.
`
`Elm has requested – and the Defendants have agreed to produce subject to this dispute – highly
`confidential documents related to Apple’s purchase and use of memory component products. In
`particular, Elm has sought master purchase agreements between Apple and each Defendant and
`has also demanded purchase orders issued and sold pursuant to these agreements. These
`agreements span at least fourteen years, and govern the purchase and use of memory components
`integrated into Apple products. All of the Apple Confidential Information is among Apple’s most
`highly sensitive and protected business information, and Apple would be seriously harmed if its
`competitors had access to this information. Apple expends significant time and resources to
`maintain the confidentiality and nonpublic nature of the Apple Confidential Information. Even
`within Apple, the Apple Confidential Information is not disseminated or accessible except to a
`small group of Apple employees who maintain its confidentiality. Apple therefore must make
`every effort to maintain visibility into and control over who has access to its Confidential
`Information once produced in litigation.
`
`Moreover, Apple routinely requests and is afforded these protections when its confidential
`information is produced in litigations to which Apple is not a party. Apple responds to dozens of
`these requests as a non-party every year, and it is exceedingly rare that Apple is unable to reach
`an informal agreement with the parties regarding such protections.
`
`2. Apple Lacks Any Insight Regarding the Disclosure and Use of Its Confidential
`Information by the Parties.
`
`In refusing Apple’s requests, Elm suggests that Apple is already afforded protections under the
`Protective Orders as a third-party. In its letter brief, Elm states that “[t] he 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.” (D.I. 322
`at 3.) But the Protective Orders do not confer any rights to Apple; rather, they cover only “any
`party to this action and any non-party producing information or material voluntarily or pursuant
`to a subpoena or a court order in connection with this action.” (Protective Orders, Section I.A.1
`(emphasis added).) See United States v. Dentsply Int’l, Inc., 187 F.R.D. 152, 160 n.7 (D. Del.
`1999) (“The risk of injury to the owner of confidential information is presumably greater where
`the owner was never in a position to accept or reject the risk of disclosure of confidential
`information… the nonparty has never undertaken the risks of disclosure.”)
`
`While Apple appreciates that the Apple Confidential Information itself will be subject to the
`Protective Order, the rights afforded to Defendants as producing parties are insufficient to protect
`Apple’s interests in its Confidential Information.
`
`Apple’s requests are essential to protect Apple as a non-party. Without the parties’ cooperation,
`Apple has no visibility into whether or when its Confidential Information may be de-designated,
`discussed, or disclosed in open court. Apple’s supplemental protections are thus necessary to
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`Case 1:14-cv-01432-LPS Document 297 Filed 08/25/20 Page 3 of 4 PageID #: 18029
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`The Honorable Jennifer L. Hall
`August 25, 2020
`Page 3
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`permit Apple any practical possibility of maintaining the confidentiality of its Confidential
`Information at hearing and/or at trial.
`
`3. It Is Not Sufficient for Defendants to Unilaterally Agree to Apple’s Requests Without
`Elm’s Participation or Consent.
`
`Elm argues that it should not have to comply with Apple’s request because “Micron itself could
`meet at least some of Apple’s demands without Elm’s agreement at all.” (D.I. No. 322 at 2.) This
`may be true with respect to certain of Apple’s requests, provided Defendants were willing to
`agree to provide notice to Apple of any party’s trial exhibit list (to the extent the list includes
`Apple confidential Information). But Defendants have not yet all confirmed that they will
`comply with this request, nor is their acceptance of Apple’s requests without Elm’s participation
`or consent sufficient to protect the Apple Confidential Information at least with respect to use of
`such information in open court.
`
`Specifically, Apple requests that the parties use reasonable efforts to seal the Courtroom and
`redact any transcripts when Apple Confidential Information is presented or discussed at hearing
`or trial. Absent agreement by Elm, however, Elm may oppose a Defendant’s efforts to seal
`and/or redact. In such a case, Apple — who would have the strongest interest in maintaining the
`confidentiality of the Apple Confidential Information — would lack any notice of or ability to
`participate in the dispute. It is only with all the parties’ agreement that Apple can be reasonably
`confident that the Court will not resolve a dispute regarding the confidentiality of Apple’s
`Confidential Information without notice to or participation by Apple.2
`
`4. Apple’s Request is Narrowly Tailored.
`
`Apple’s requests are narrowly tailored to be as minimally burdensome as possible on the parties.
`For example, Apple’s request that it be provided with notice of the inclusion of Apple
`Confidential Information on the party’s exhibit lists is intended to be a low-burden proxy for
`putting Apple on notice that the Apple Confidential Information may be used during pretrial
`hearings or at trial. Similarly, by requesting that the parties use reasonable efforts to seal the
`courtroom and redact any related transcript if/when Apple Confidential Information is discussed
`in open court, Apple foregoes requesting advance notice of any intended disclosure at a hearing.
`***
`Apple therefore respectfully requests that the Court require the parties to adhere to Apple’s
`requests for any Apple Confidential Information produced in these actions.
`
`Respectfully,
`/s/ David E. Moore
`David E. Moore
`
`2 In the alternative, Apple requests that the Court order that the parties provide Apple with notice
`and the opportunity to object before any Apple Confidential Information is used in open court at
`hearing or at trial.
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`Case 1:14-cv-01432-LPS Document 297 Filed 08/25/20 Page 4 of 4 PageID #: 18030
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`The Honorable Jennifer L. Hall
`August 25, 2020
`Page 4
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`DEM:nmt/6850597/50503
`cc: Counsel of Record (via email)
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