Case 1:14-cv-01430-LPS Document 378 Filed 11/25/20 Page 1 of 3 PageID #: 24023
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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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`v.
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`Plaintiff,
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`SAMSUNG ELECTRONICS CO., LTD., 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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`LETTER TO THE HONORABLE JUDGE HALL
`IN OPPOSITION TO SAMSUNG’S MOTION TO COMPEL
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`Dated: November 25, 2020
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`Matthew R. Ford (admitted pro hac vice)
`matthew.ford@bartlitbeck.com
`BARTLIT BECK LLP
`54 W. Hubbard Street, Suite 300
`Chicago, IL 60654
`Tel: (312) 494-4400
`Fax: (312) 494-4440
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`Adam K. Mortara (admitted pro hac vice)
`adam@mortaralaw.com
`125 South Wacker Dr., Suite 300
`Chicago, IL 60606
`Tel: (773) 750-7154
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`Brian E. Farnan (#4089)
`Michael J. Farnan (#5165)
`FARNAN LLP
`919 North Market Street, 12th Floor
`Wilmington, DE 19801
`(302) 777-0300
`bfarnan@farnanlaw.com
`mfarnan@farnalaw.com
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`John M. Hughes (admitted pro hac vice)
`Nosson D. Knobloch (admitted pro hac vice)
`Katherine L.I. Hacker (admitted pro hac vice)
`Daniel C. Taylor (admitted 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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`Attorneys for Plaintiff Elm 3DS
`Innovations, LLC
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`Case 1:14-cv-01430-LPS Document 378 Filed 11/25/20 Page 2 of 3 PageID #: 24024
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`Dear Judge Hall,
`The parties’ dispute is narrow. Elm has agreed to produce financial documents to the extent
`they reflect the value of the patents asserted in this case. The only question is whether Elm must
`produce all of its financial documents, even those that do not reflect the value of the asserted
`patents. Elm opposes that production because the documents are irrelevant, and this is a fishing
`expedition into Elm’s finances.
`Elm has never been a complicated business. It did not make or sell products covered by the
`asserted patents. Instead, the company was an extension of its founder, Glenn Leedy. Mr. Leedy was
`an inventor and, as a company, Elm held the patents that Mr. Leedy obtained—including the
`asserted patents and several other patent portfolios.
`Samsung points to three general categories of documents that it wants: Elm’s tax returns,
`financial statements, and valuation documents. With respect to the tax returns, these documents do
`not contain relevant information. Elm is prepared to submit a representative tax return in camera. As
`far as Elm can tell, the tax returns it has located do not value the patents at all. Nor do they provide
`any other meaningful information that would be relevant to this case.
`With respect to the remaining categories, Elm has agreed to produce documents to the
`extent they reflect the value of the asserted patents. Beyond that, however, it is unclear what
`relevance Elm’s balance sheets and cash-flow statements have to a reasonable royalty from Samsung.
`Samsung’s focus on Elm’s finances for damages purposes has it backwards. Elm is not seeking lost
`profits. And therefore the damages inquiry examines Elm’s “lost opportunity to obtain a reasonable
`royalty that the infringer would have been willing to pay if it had been barred from infringing.”
`AstraZeneca AB v. Apotex Corp., 782 F.3d 1324, 1334 (Fed. Cir. 2015). The focus is squarely on the
`value of Samsung’s use of infringing technology—not valuing Elm’s finances or any harm that
`occurred to Elm. Elm suspects that Samsung only wants these documents to disparage Elm’s
`financial success, which has no bearing on the damages that Samsung owes.
`Samsung’s cited cases offer no support. To the contrary, they reinforce the same line that
`Elm has drawn between information valuing patents and financial information generally. For
`example, in TQ Delta, the plaintiff produced financial documents that were largely redacted to shield
`“anticipated expenditures and its finances.” Special Master Order, TQ Delta v. Adtran, No. 14-954-
`RGA, D.I. 380 at 7–9 (D. Del. May 2, 2018). The Special Master rejected the defendants’ request to
`un-redact the financial statements in their entirety. This redacted information is what Samsung is
`seeking here—Elm’s financial information unrelated to the asserted patents or their valuation.
`The remaining cases reinforce this divide. Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech.
`Holdings Ltd. required the plaintiff to produce damages reports and depositions from another case
`involving potentially comparable patents. No. CV 15-634-JFB-SRF, 2018 WL 6978576, at *2 (D.
`Del. Mar. 8, 2018). Robocast, Inc. v. Microsoft Corp. involved actual valuations of comparable patents.
`No. 10-1055-RGA, D.I. 431 (D. Del. Jan. 16, 2014). And Spectralytics, Inc. v. Cordis Corp. involved
`documents that valued the asserted patent or documents relating to a proposed sale of the
`business—not all the company’s financial records. 650 F. Supp. 2d 900, 915 (D. Minn. 2009).
`Finally, Blue Spike LLC and Van Romer contain no analysis whatsoever. See Blue Spike, LLC v. Vizio,
`Inc., No. 8:17-cv-01172-DOC-KESx, 2018 WL 8646477, at *3 (C.D. Cal. Aug. 31, 2018); Van Romer
`v. Interstate Prod. Inc., No. CV 6:06-2867-HFF, 2009 WL 10710851, at *1 (D.S.C. Mar. 20, 2009).
`In an effort to avoid burdening the Court, Elm agreed to produce patent-related financial
`statements or tax documents and offered a mutual exchange to resolve the parties’ remaining
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`Case 1:14-cv-01430-LPS Document 378 Filed 11/25/20 Page 3 of 3 PageID #: 24025
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`disputes. This was unsuccessful. Elm disagrees with Samsung that Samsung has produced all
`relevant financial information or that Elm’s requests are “duplicative.” But Elm does not intend to
`press this Court to compel Samsung to produce its tax returns because they are not relevant to this
`case. Neither are Elm’s.
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`cc: Counsel of Record (Via E-Mail)
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`Respectfully submitted,
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`/s/ Michael J. Farnan
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`Michael J. Farnan
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