Case 1:14-cv-01430-LPS Document 383 Filed 12/04/20 Page 1 of 7 PageID #: 24119
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ELM 3DS INNOVATIONS, LLC, a
`Delaware limited liability company,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD., a
`Korean business entity,
`SAMSUNG SEMICONDUCTOR, INC., a
`California corporation,
`SAMSUNG ELECTRONICS AMERICA,
`INC., a New York corporation, and
`SAMSUNG AUSTIN SEMICONDUCTOR,
`LLC, a Delaware limited liability company,
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`Plaintiff,
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`Defendants.
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`LETTER TO THE HONORABLE JENNIFER L. HALL FROM
`ADAM W. POFF REGARDING SAMSUNG DEFENDANTS’ RESPONSE TO
`PLAINTIFF’S NOVEMBER 19, 2020 DISCOVERY LETTER (D.I. 374)
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`C.A. No. 14-1430-LPS
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`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
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`Adam W. Poff (No. 3990)
`Pilar G. Kraman (No. 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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`Dated: November 25, 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
`(202) 551-1705 (fax)
`allansoobert@paulhastings.com
`naveenmodi@paulhastings.com
`phillipcitroen@paulhastings.com
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`26950871.1
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`REDACTED - PUBLIC VERSION
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`Redacted Version: December 4, 2020
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`Case 1:14-cv-01430-LPS Document 383 Filed 12/04/20 Page 2 of 7 PageID #: 24120
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`Dear Magistrate Judge Hall:
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`Elm’s entire motion is based on a false premise that Samsung unilaterally decided to
`exclude products from this case. That is not true. It was Elm—not Samsung—that defined and
`selected the accused products at issue here, as the record clearly demonstrates. Samsung does
`not possess “substrate” thickness data—and has no way to provide it. Samsung thus produced
`“chip”/ “die” thickness data with Elm’s approval—and from that data, Elm itself chose the
`accused products and excluded other products it now seeks to add.
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`There are over 1400 products at issue, and the parties have worked for months toward a
`representative products list, which now stands at 155 products—an unwieldy number placing a
`disproportionate burden on Samsung. Elm’s request to add even more products with just over a
`month left in discovery is untenable, untimely and disingenuous on this record. It is time to
`reduce the number of products, not increase them. Elm’s motion should respectfully be denied.
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`I.
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`Elm Hand-Picked the Products At Issue Based on “Die”/“Chip” Thickness
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`Elm incorrectly states that Samsung “unilaterally” limited this case to “products where
`both the substrate and other material on top of the substrate together were 50 microns or less.”
`D.I. 374 at 1. Not so. The record unequivocally demonstrates that Elm itself selected
`Samsung’s products to accuse of infringement, and continued to accuse those products for over
`sixteen
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`A.
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`Elm Accused Stacked Products with “Die/Chip” Thickness ≤ 50 Microns
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`On June 12, 2019, the Federal Circuit issued its decision construing the “substantially
`flexible” terms. Ex. 6. The constructions differed depending on whether the “substantially
`flexible” terms modified (i) “semiconductor substrate,” or (ii) “‘circuit layers,’ and other similar
`terms,” such as “die,” integrated circuits,” and “integrated circuit layer.” Id. at 5-6. It cannot be
`disputed that these latter terms are used interchangeably, including by the Federal Circuit and
`this Court, and that their construction require more than just a substrate. Id.; D.I. 266 at 7.
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`On June 20, 2019, Elm informed Samsung that, specifically in light of the Federal
`Circuit’s constructions, it is only “accus[ing] of infringement” products having a “circuit
`layer”—not a “semiconductor substrate”—with a thickness of 50 microns or less. Ex. 7 at 1.
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`Subsequently, on June 25, 2019, Elm hand-picked the products it believed satisfied its
`own definition, based on a spreadsheet that Samsung produced on March 14, 2019. Ex. 8-9.
`Samsung had broadly listed its products with their “chip” or “die” thicknesses, ranging from less
`than 50 microns to over 700 microns—not their “substrate” thicknesses, which do not exist at
`Samsung. Ex. 2; D.I. 286, Ex. M, ¶¶ 9-10. Elm selected only those products with a chip/die
`thickness of 50 microns or less, and Elm excluded the very products with chip or die thicknesses
`over 50 microns that it now incredibly and incorrectly claims that Samsung excluded. Ex. 8-9.
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`In the sixteen months that followed, Elm repeatedly confirmed that it was accusing only
`products with a “circuit layer” with 50 microns or less thickness, interchanging the terms “circuit
`layer,” “die” and “chip.” Only a small sampling of Elm’s statements is highlighted below:
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`1
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`Case 1:14-cv-01430-LPS Document 383 Filed 12/04/20 Page 3 of 7 PageID #: 24121
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`• 7/29/2019: Elm explaining that the list provided on 6/25/2019 includes Samsung products
`“that contain at least one die at 50µm or less.” Ex. 56 (emphasis added).
`• 8/16/2019: Elm reiterating that it accuses stacked products that have a “circuit layer”
`with “a thickness of 50 microns or less.” Ex. 15 at 1 (emphasis added).
`• 9/13/2019: Elm asking Samsung to identify every stacked product “where at least one of
`the die has a thickness of 50 microns or less.” Ex. 22 at 1 (emphasis added).
`• 12/15/2019: Elm memorializing that Samsung will produce worldwide sales for stacked
`products “that include one die that is 50 microns or less.” Ex. 29 at 1 (emphasis added).
`• 5/19/2020: Elm’s declaration to the Court requesting that Samsung complete the products
`chart using “die”/”chip” thickness. D.I. 281 ¶ 51 (emphasis added).
`• 7/8/2020: Elm asking Samsung about representative products, referring to “processes for
`the chips that are thicker than 50 microns.” Ex. 40 (emphasis added).
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`See Ex. 1 at ¶¶ 10-51. Against this record, Elm cannot credibly maintain that “Samsung relies
`primarily on one statement” regarding the scope of the case. D.I. 374 at 3. Nor can Elm contend
`that Samsung intentionally or inadvertently misinterpreted Elm’s requests in Samsung’s favor.
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` D.I. 286, Ex. M, ¶¶ 6-23. There was no interpretation by
`Samsung involved; Elm embraced the approach, and selected and continued to accuse products
`from the die/chip thickness data that it asked Samsung to provide. See Ex. 1 at ¶¶ 46-51. It is
`disingenuous, and indeed, not possible to refocus on unknown “substrate” thickness data now.
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`B.
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`Elm Seeks to Impermissibly Contradict the Established Meaning of “Circuit Layer”
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`Elm incorrectly contends that its August 30, 2019 letter informed Samsung that the term
`“circuit layer” covers a substrate because it purportedly used that term broadly to mean “any
`semiconductor layer on which circuits are formed.” D.I. 374 at 1. To the contrary, the letter
`does not explain that “circuit layer” can be a silicon substrate. Ex. 20 at 2. And a semiconductor
`layer with circuits formed on it is no longer a silicon substrate; it is a die or chip. Elm’s letter
`further states that “circuit layer” covers “layers of memory cells” (not a silicon substrate) and
`“image sensor chips which comprise circuits formed on a semiconductor” (also not a silicon
`substrate). Id. (emphasis added). Elm later reconfirmed that, consistent with its August letter, a
`“circuit layer” is a chip (not a substrate within the chip) when it served a claim chart that pointed
`to the chips in Samsung’s image sensor products as the “circuit layer.” Ex. 1 at ¶ 26; Ex. 25.
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`Elm’s new assertion that “circuit layer” is broader contradicts the record in this case, and
`the related IPR and Federal Circuit proceedings. As noted above, the Federal Circuit equated
`“circuit layer” with other terms for a chip. Supra at I.A. This Court did the same. D.I. 266 at 7
`(construing “integrated circuit/integrated circuit layer/circuit layer/circuit
`structure/circuit/structure”); D.I. 299 at 2 (clarifying, over Elm’s objection, that “dice,” “die,”
`“integrated circuit,” and similar terms are construed the same). Elm’s submissions and
`infringement contentions consistently use the “circuit layer” term for the entire integrated
`chip/die, not the substrate. Ex. 1 at ¶¶ 52-58. Elm cannot feign surprise that Samsung produced
`thicknesses for chips/dies, as Elm itself asked and agreed. Nor can Elm claim surprise that those
`chips/dies include a substrate and an “active layer” and a “polyimide layer,” as Elm has
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`Case 1:14-cv-01430-LPS Document 383 Filed 12/04/20 Page 4 of 7 PageID #: 24122
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`conceded that active and passivation (polyimide) layers are included in chips/dies. See Ex. 1 at
`¶¶ 53-58.
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`C.
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`Elm Mischaracterizes its Prior Discovery Dispute with Samsung
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`Elm justifies its revisionist position by citing discovery requests and motions to compel
`discovery on “all relevant products.” D.I. 374, 1-2. But those requests did not define the
`accused products, and Samsung objected to them as “not reasonably tied to Elm’s infringement
`allegations” or unrelated to products “properly accused in this case.” Ex. 51 at 3, 7-10; Ex. 53 at
`8; Ex. 55 at 7-18. While Samsung was required to complete Elm’s chart, that chart asked for the
`“minimum thickness of the die”—not a semiconductor layer or a substrate. D.I. 281 at ¶ 51(B)
`and Ex. 30. Elm even acknowledged that “die” referred to a processed die or “chip.” D.I. 281 at
`¶ 51(D) (“Where more than one process node is used to make the die, each relevant process node
`should be listed.”); id. at ¶ 51(E) (“This column identifies the number of die or ‘chips’ that are
`stacked in the product.”). Samsung provided die/chip thickness data, as Elm requested.
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`II.
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`Elm’s Request to Expand the Case Is Untimely and Impracticable
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`Elm incorrectly alleges that it raised this issue “immediately.” But the record shows Elm
`knew that Samsung produced die thickness data at least sixteen months ago, and indisputably six
`months ago, upon the filing of the May 22, 2020 declaration of Ms. Hyung,
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`. Supra at I.A. Elm has no excuse for its delay, and
`with just over one month left in discovery, Elm’s request is untimely. EON Corp. IP Holdings,
`LLC v. FLO TV Inc., No. 10-812, 2013 WL 5890571, *2 (D. Del. Aug. 28, 2013) (disallowing
`new products four months before close of discovery as untimely).
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`Elm’s request should also be denied
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`s. Invensas Corp. v. Renesas Elecs. Corp., No. 11-448, 2013 U.S. Dist. LEXIS
`199894, *7 (D. Del. May 8, 2013) (“the Court cannot compel a party to produce documents
`regarding a ‘family’ or ‘category’ that does not itself exist”).
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` Ex. 1, ¶ 65. The burden on
`Samsung of expanding an already-unwieldy number of products is disproportionate and
`prejudicial. Invensas Corp. v. Samsung Elecs. Co., No. 2:17-cv-00670, 2018 U.S. Dist. LEXIS
`189260, *13 (E.D. Tex. Nov. 6, 2018) (discovery on new chips was untimely and “unwarranted
`in light of the burden that would be imposed upon the Defendants at this late stage of the case”).
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`If anything, the number of products should be reduced at this time, not expanded. See
`Ex.1 at ¶ 66 (Judge Stark’s standing order contemplating “reasonable proposals to reduce” the
`number of accused products); Fenster Fam. Pat. Holdings, Inc., Elscint Ltd., No. 04-0038, 2005
`WL 2304190, *3 (D. Del. Sept. 20, 2005) (requiring a reduction in accused products where
`plaintiff expanded the case five weeks before close of discovery); Voip-Pal.com, Inc. v. Apple
`Inc., No. 18-CV-06217, D.I. 73 (N.D. Cal. Jan. 16, 2019) (Ex. 57) (ordering reductions in the
`number of accused products in several stages, from claim construction order to pre-trial).
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`For at least the foregoing, Samsung respectfully requests that Elm’s motion be denied,
`and instead, that Elm be required to reduce the total number of accused products.
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`3
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`Case 1:14-cv-01430-LPS Document 383 Filed 12/04/20 Page 5 of 7 PageID #: 24123
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`Respectfully submitted,
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`/s/ Adam W. Poff
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`Adam W. Poff (No. 3990)
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`Case 1:14-cv-01430-LPS Document 383 Filed 12/04/20 Page 6 of 7 PageID #: 24124
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`CERTIFICATE OF SERVICE
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`I, Adam W. Poff, hereby certify that on December 4, 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 December 4, 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
`125 South Wacker Dr., Suite 300
`Chicago, IL 60606
`adam@mortaralaw.com
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`Matthew R. Ford, Esquire
`Bartlit Beck LLP
`54 West Hubbard Street, Suite 300
`Chicago, IL 60654
`matthew.ford@bartlit-beck.com
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`26987969.1
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`Case 1:14-cv-01430-LPS Document 383 Filed 12/04/20 Page 7 of 7 PageID #: 24125
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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
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`26987969.1
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