Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 1 of 11 PageID #: 18171
`
`AO 88B (Rev. 12/13) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action
`
`UNITED STATES DISTRICT COURT
`for the
` District of Delaware
`__________ District of __________
`
`Civil Action No.
`
`14-1430, -1431, -1432 (LPS)
`
`))))))
`
`Elm 3DS Innovations, LLC
`Plaintiff
`v.
`Micron Tech., Inc. et al. (-1430), Samsung Elecs.
`Co., Ltd. et al. (-1431), SK hynix, Inc. et al. (-1432)
`Defendant
`
`SUBPOENA TO PRODUCE DOCUMENTS, INFORMATION, OR OBJECTS
`OR TO PERMIT INSPECTION OF PREMISES IN A CIVIL ACTION
`
`To:
`
`Kenneth Su, 5546 Rutgers Rd, La Jolla, CA, 92037-7821
`
`(Name of person to whom this subpoena is directed)
`✔
`(cid:117) Production: YOU ARE COMMANDED to produce at the time, date, and place set forth below the following
`documents, electronically stored information, or objects, and to permit inspection, copying, testing, or sampling of the
`material:
`
`See Exhibit A.
`
`Place:
`
`Mutually agreeable place TBD or by electronic means
`
`Date and Time:
`
`12/28/2020 12:00 am
`
`(cid:117) Inspection of Premises: YOU ARE COMMANDED to permit entry onto the designated premises, land, or
`other property possessed or controlled by you at the time, date, and location set forth below, so that the requesting party
`may inspect, measure, survey, photograph, test, or sample the property or any designated object or operation on it.
`
`Place:
`
`Date and Time:
`
`The following provisions of Fed. R. Civ. P. 45 are attached – Rule 45(c), relating to the place of compliance;
`Rule 45(d), relating to your protection as a person subject to a subpoena; and Rule 45(e) and (g), relating to your duty to
`respond to this subpoena and the potential consequences of not doing so.
`12/11/2020
`Date:
`
`CLERK OF COURT
`
`OR
`
`Signature of Clerk or Deputy Clerk
`
`/s/ Rose Prey
`Attorney’s signature
`
`The name, address, e-mail address, and telephone number of the attorney representing (name of party)
`SK hynix, Inc.
`, who issues or requests this subpoena, are:
`Rose Prey, Greenberg Traurig LLP, 200 Park Ave., New York, NY 10166, (212) 801-6473
`
`Notice to the person who issues or requests this subpoena
`A notice and a copy of the subpoena must be served on each party in this case before it is served on the person to whom
`it is directed. Fed. R. Civ. P. 45(a)(4).
`
`

`

`Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 2 of 11 PageID #: 18172
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`AO 88B (Rev. 12/13) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action (Page 2)
`
`Civil Action No.
`
`14-1430, -1431, -1432 (LPS)
`
`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
`
`I received this subpoena for (name of individual and title, if any)
`.
`
`on (date)
`
`(cid:117) I served the subpoena by delivering a copy to the named person as follows:
`
`(cid:117) I returned the subpoena unexecuted because:
`
`on (date)
`
`; or
`
`Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
`tendered to the witness the fees for one day’s attendance, and the mileage allowed by law, in the amount of
`$
`.
`
`My fees are $
`
`for travel and $
`
`for services, for a total of $
`
`0.00
`
`.
`
`.
`
`I declare under penalty of perjury that this information is true.
`
`Date:
`
`Additional information regarding attempted service, etc.:
`
`Server’s signature
`
`Printed name and title
`
`Server’s address
`
`

`

`Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 3 of 11 PageID #: 18173
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`AO 88B (Rev. 12/13) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action(Page 3)
`
`(c) Place of Compliance.
`
`Federal Rule of Civil Procedure 45 (c), (d), (e), and (g) (Effective 12/1/13)
`(ii) disclosing an unretained expert’s opinion or information that does
`not describe specific occurrences in dispute and results from the expert’s
`study that was not requested by a party.
`(C) Specifying Conditions as an Alternative. In the circumstances
`described in Rule 45(d)(3)(B), the court may, instead of quashing or
`modifying a subpoena, order appearance or production under specified
`conditions if the serving party:
`(i) shows a substantial need for the testimony or material that cannot be
`otherwise met without undue hardship; and
`(ii) ensures that the subpoenaed person will be reasonably compensated.
`
` (1) For a Trial, Hearing, or Deposition. A subpoena may command a
`person to attend a trial, hearing, or deposition only as follows:
` (A) within 100 miles of where the person resides, is employed, or
`regularly transacts business in person; or
` (B) within the state where the person resides, is employed, or regularly
`transacts business in person, if the person
` (i) is a party or a party’s officer; or
` (ii) is commanded to attend a trial and would not incur substantial
`expense.
`
` (2) For Other Discovery. A subpoena may command:
` (A) production of documents, electronically stored information, or
`tangible things at a place within 100 miles of where the person resides, is
`employed, or regularly transacts business in person; and
` (B) inspection of premises at the premises to be inspected.
`
`(d) Protecting a Person Subject to a Subpoena; Enforcement.
`
` (1) Avoiding Undue Burden or Expense; Sanctions. A party or attorney
`responsible for issuing and serving a subpoena must take reasonable steps
`to avoid imposing undue burden or expense on a person subject to the
`subpoena. The court for the district where compliance is required must
`enforce this duty and impose an appropriate sanction—which may include
`lost earnings and reasonable attorney’s fees—on a party or attorney who
`fails to comply.
`
` (2) Command to Produce Materials or Permit Inspection.
`(A) Appearance Not Required. A person commanded to produce
`documents, electronically stored information, or tangible things, or to
`permit the inspection of premises, need not appear in person at the place of
`production or inspection unless also commanded to appear for a deposition,
`hearing, or trial.
`(B) Objections. A person commanded to produce documents or tangible
`things or to permit inspection may serve on the party or attorney designated
`in the subpoena a written objection to inspecting, copying, testing, or
`sampling any or all of the materials or to inspecting the premises—or to
`producing electronically stored information in the form or forms requested.
`The objection must be served before the earlier of the time specified for
`compliance or 14 days after the subpoena is served. If an objection is made,
`the following rules apply:
`(i) At any time, on notice to the commanded person, the serving party
`may move the court for the district where compliance is required for an
`order compelling production or inspection.
` (ii) These acts may be required only as directed in the order, and the
`order must protect a person who is neither a party nor a party’s officer from
`significant expense resulting from compliance.
`
` (3) Quashing or Modifying a Subpoena.
`(A) When Required. On timely motion, the court for the district where
`compliance is required must quash or modify a subpoena that:
` (i) fails to allow a reasonable time to comply;
`(ii) requires a person to comply beyond the geographical limits
`specified in Rule 45(c);
`(iii) requires disclosure of privileged or other protected matter, if no
`exception or waiver applies; or
`(iv) subjects a person to undue burden.
`(B) When Permitted. To protect a person subject to or affected by a
`subpoena, the court for the district where compliance is required may, on
`motion, quash or modify the subpoena if it requires:
`(i) disclosing a trade secret or other confidential research,
`development, or commercial information; or
`
`(e) Duties in Responding to a Subpoena.
`
` (1) Producing Documents or Electronically Stored Information. These
`procedures apply to producing documents or electronically stored
`information:
`(A) Documents. A person responding to a subpoena to produce documents
`must produce them as they are kept in the ordinary course of business or
`must organize and label them to correspond to the categories in the demand.
`(B) Form for Producing Electronically Stored Information Not Specified.
`If a subpoena does not specify a form for producing electronically stored
`information, the person responding must produce it in a form or forms in
`which it is ordinarily maintained or in a reasonably usable form or forms.
`(C) Electronically Stored Information Produced in Only One Form. The
`person responding need not produce the same electronically stored
`information in more than one form.
`(D) Inaccessible Electronically Stored Information. The person
`responding need not provide discovery of electronically stored information
`from sources that the person identifies as not reasonably accessible because
`of undue burden or cost. On motion to compel discovery or for a protective
`order, the person responding must show that the information is not
`reasonably accessible because of undue burden or cost. If that showing is
`made, the court may nonetheless order discovery from such sources if the
`requesting party shows good cause, considering the limitations of Rule
`26(b)(2)(C). The court may specify conditions for the discovery.
`
`(2) Claiming Privilege or Protection.
`(A) Information Withheld. A person withholding subpoenaed information
`under a claim that it is privileged or subject to protection as trial-preparation
`material must:
`(i) expressly make the claim; and
`(ii) describe the nature of the withheld documents, communications, or
`tangible things in a manner that, without revealing information itself
`privileged or protected, will enable the parties to assess the claim.
`(B) Information Produced. If information produced in response to a
`subpoena is subject to a claim of privilege or of protection as
`trial-preparation material, the person making the claim may notify any party
`that received the information of the claim and the basis for it. After being
`notified, a party must promptly return, sequester, or destroy the specified
`information and any copies it has; must not use or disclose the information
`until the claim is resolved; must take reasonable steps to retrieve the
`information if the party disclosed it before being notified; and may promptly
`present the information under seal to the court for the district where
`compliance is required for a determination of the claim. The person who
`produced the information must preserve the information until the claim is
`resolved.
`
`(g) Contempt.
`The court for the district where compliance is required—and also, after a
`motion is transferred, the issuing court—may hold in contempt a person
`who, having been served, fails without adequate excuse to obey the
`subpoena or an order related to it.
`
`For access to subpoena materials, see Fed. R. Civ. P. 45(a) Committee Note (2013).
`
`

`

`
`
`Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 4 of 11 PageID #: 18174
`
`EXHIBIT A
`
`
`DEFINITIONS
`
`The following definitions are applicable to terms employed in this Notice:
`1.
`“Patent-at-Issue” and “Patents-at-Issue” shall mean United States Patent Nos.
`7,193,239; 7,474,004; 7,504,732; 8,035,233; 8,410,617; 8,629,542; 8,653,672; 8,791,581;
`8,796,862; 8,841,778; 8,907,499; 8,928,119; and 8,933,570.
`2.
`“Related Patent” and “Related Patents” shall include, whether or not abandoned
`and whether or not issued, (a) any patent or patent application that claims priority to the Patents-
`at-Issue, (b) any patent or patent application that claims priority from any patent or patent
`application to which the Patents-at-Issue claims priority, (c) any patent or patent application on
`which the Patents-at-Issue depends for priority, (d) any patent or patent application identified in
`the Related U.S. Application Data for the Patents-at-Issue, (e) any patent or patent application that
`claims priority from any patent or patent application identified in the Related U.S. Application
`Data for any of the Patents-at-Issue, (f) any reissue or reexamination of any of the aforementioned
`patents or patent applications, and (g) any foreign counterpart patent or foreign counterpart
`application of any of the aforementioned patents or patent applications (a foreign counterpart
`patent and foreign counterpart application shall include any foreign patent or foreign patent
`application in which a claim for priority has been made in either a U.S. application or a foreign
`application based on the other, or that the disclosures of the U.S. and foreign patent applications
`are substantively identical).
`3.
`“Prior Owner” and “Prior Owners” shall mean all of the persons and entities with
`a prior ownership or financial interest in any of the Patents-at-Issue or Related Patents.
`4.
`“You” shall mean Kenneth Su and any person or entity acting or purporting to act
`on his behalf.
`5.
`The term “Epicenter” shall mean and include Epicenter IP Group LLC and all
`related entities, parents, subsidiaries (either wholly or partly-owned) or divisions, any entity under
`its control, any proprietorship, joint venture, partnership or other business cooperation in which it
`is involved, and any predecessor or successor entities and any of its officers, directors, agents,
`- 5 -
`
`
`
`

`

`
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`Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 5 of 11 PageID #: 18175
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`
`
`
`
`
`attorneys, consultants, employees, and any other persons acting, or purporting to act for or on its
`behalf.
`6.
`The terms “Defendants” refer to SK hynix Inc., SK hynix America Inc., Hynix
`Semiconductor Manufacturing America Inc., and SK hynix Memory Solutions Inc. (collectively,
`“SK hynix”); Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron
`Consumer Products Group, Inc. (collectively, “Micron”); Samsung Electronics Co., Ltd., Samsung
`Semiconductor, Inc., Samsung Electronics America, Inc., and Samsung Austin Semiconductor,
`LLC (collectively, “Samsung”) and their officers, directors, employees, agents, representatives,
`attorneys, affiliates, successors, and assigns, and to persons and entities acting or purporting, to
`act on behalf of SK hynix, Micron, or Samsung.
`7.
`The terms “Elm” and “Elm 3DS” refer to Elm 3DS Innovations LLC and its
`employees, agents, representatives, attorneys, affiliates, predecessors, successors, and assigns, and
`to persons and entities acting or purporting to act on behalf of Elm 3DS Innovations LLC,
`including, but not limited to Elm Technology Corporation Glenn J. Leedy.
`8.
`The term “person,” unless otherwise specified, means any natural person, firm,
`partnership, association, corporation, business, proprietorship, government or quasi-governmental
`body, agency or commission, or any other organization or entity.
`9.
`The term “Tezzaron” shall mean and include Tezzaron Semiconductor Corporation,
`Tachyon Semiconductor Corporation, ASIC Designs Incorporated and all related entities, parents,
`subsidiaries (either wholly or partly owned) or divisions, any entity under its control, any
`proprietorship, joint venture, partnership or other business cooperation in which it is involved, and
`any predecessor or successor entities and any of its officers, directors, agents, attorneys,
`consultants, employees, and any other persons acting, or purporting to act for or on its behalf.
`10.
`The term “document” and its plural shall refer to anything that would be a “writing”
`or “recording” as defined in Rule 1001 of the Federal Rules of Evidence, or a “document,” as
`defined in Rule 34 of the Federal Rules of Civil Procedure, and refers to all handwritten, typed,
`printed, electronic, or otherwise visually or aurally reproduced materials, and all originals and
`
`- 6 -
`
`

`

`
`
`Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 6 of 11 PageID #: 18176
`
`
`
`
`
`
`copies that contain any notes, handwriting, underscoring, deletions, or that in any way otherwise
`differ from the original thereof. Such documents include but are not limited to: (1) all the written,
`printed, recorded, graphic, or sound reproductions, however produced, including but not limited
`to correspondence, memoranda, notes, telegrams, notebooks, diaries, desk calendars, charts,
`photographs, and records of any kind; (2) all computer-readable data compilations, including but
`not limited to tapes, diskettes, card, cassettes; electronic mail, and all other electronic or
`mechanical devices which contain information stored in mainframe and personal computers or
`devices (such as PDAs/cell phones) or accessible “online”; (3) all originals, drafts, and copies that
`differ in any respect from the original, all marginal comments that appear on such documents, all
`transcripts or recordings of such documents, and all attachments, enclosures, or documents affixed
`or referred to in such documents.
`11.
`The terms “relating,” “related” or “relates” shall mean concerning, referring,
`describing, evidencing, or constituting the referenced subject matter, to the extent that such
`material is reasonably calculated to lead to the discovery of admissible evidence.
`12.
`The words “and,” “or,” and “and/or” shall be construed conjunctively or
`disjunctively, whichever maximizes the scope of each discovery request in which they are used.
`
`INSTRUCTIONS
`
`1.
`You are to search all documents within your possession, custody, or control,
`wherever located, including but not limited to any documents placed in storage facilities or in the
`possession of any employee, agent, representative, attorney, investigator, or other person acting or
`purporting to act on your behalf, in order to fully respond to the requests herein.
`2.
`If you do not produce each document or thing requested herein as they are kept in
`the usual course of business, you must organize and label the documents or things produced to
`correspond with the particular document request to which the document or thing is responsive.
`3.
`You are to produce all documents that are responsive in whole or in part to any of
`the requests herein in full, without abridgement or abbreviation. If any such documents cannot be
`produced in full, produce the document to the extent possible and indicate in your written response
`
`- 7 -
`
`

`

`
`
`Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 7 of 11 PageID #: 18177
`
`
`
`
`
`
`what portion of the document is not produced and why it could not be produced.
`4.
`If any of the documents requested herein are no longer in your possession, custody
`or control, you are requested to identify each such requested document by date, type of document,
`person(s) from whom sent, person(s) to whom sent, and person(s) receiving copies, and to provide
`a summary of its pertinent contents.
`5.
`If any document responsive to these requests has been destroyed, describe the
`content of such document, the location of any copies of such document, the date of such destruction
`and the name of the person who ordered or authorized such destruction.
`6.
`If the production of any documents responsive to these requests is objected to on
`the ground of privilege or work product, or for any other reason, with respect to each such
`document state:
`a.
`
`the date appearing on such document, or if no date appears, the date on
`which such document was prepared;
`the name of each person to whom such document was addressed;
`the name of each person, other than the addressee(s) identified in
`subparagraph (b) above, to whom such document or copy thereof as sent, or
`with whom such document was discussed;
`the name of each person who signed such document or, if not signed, the
`name of each person who prepared it;
`the name of each person making any contribution to the authorship of such
`document;
`the job title or position of each person identified in subparagraph (b), (c),
`(d) and (e) above;
`the date such document was received or discussed by each person identified
`in subparagraphs (b) or (c) above;
`the general nature or description of such document and its number of pages;
`and
`
`b.
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`- 8 -
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`

`

`
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`Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 8 of 11 PageID #: 18178
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`
`
`
`
`
`i.
`
`the specific ground(s) upon which the privilege or work product rests.
`
`- 9 -
`
`

`

`
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`Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 9 of 11 PageID #: 18179
`
`DOCUMENTS TO BE PROVIDED PURSUANT TO FED. R. CIV. P. 45
`REQUEST FOR PRODUCTION NO. 1:
`All communications between you and Elm.
`REQUEST FOR PRODUCTION NO. 2:
`All communications between you and Glenn Leedy.
`REQUEST FOR PRODUCTION NO. 3:
`All documents received by you and from Glenn Leedy or Elm.
`REQUEST FOR PRODUCTION NO. 4:
`Any communications between you and ASIC Designs Inc., Tachyon, and/or Tezzaron
`related to Glenn Leedy or Elm.
`REQUEST FOR PRODUCTION NO. 5:
`Any communications between you and a third party relating to three dimensional integrated
`circuits.
`REQUEST FOR PRODUCTION NO. 6:
`All documents relating to any licensing agreements or contracts between 3DS Logic and
`
`Elm.
`REQUEST FOR PRODUCTION NO. 7:
`All agreements, contracts, or licenses between you and Glenn Leedy or Elm.
`REQUEST FOR PRODUCTION NO. 8:
`All agreements, contracts, or licenses related to any patent or patent application with Glenn
`Leedy as a named inventor.
`REQUEST FOR PRODUCTION NO. 9:
`Any communications between you and anyone related to licensing agreements or contracts
`between 3DS Logic and Elm.
`REQUEST FOR PRODUCTION NO. 10:
`
`All communications between you and Ron Epstein concerning any patent or patent
`application with Glenn Leedy as a named inventor.
`REQUEST FOR PRODUCTION NO. 11:
`
`
`
`- 10 -
`
`

`

`
`
`Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 10 of 11 PageID #: 18180
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`All communications between you and Epicenter IP Group LLC concerning any patent or
`patent application with Glenn Leedy as a named inventor.
`REQUEST FOR PRODUCTION NO. 12:
`
`All communications between you and IPotential LLC concerning any patent or patent
`application with Glenn Leedy as a named inventor.
`REQUEST FOR PRODUCTION NO. 13:
`
`All documents and communications related to valuation, monetization, licensing, existing
`licenses, attempts to license, attempts to sell or assign patent rights, enforcement, or patent
`enforceability analysis related to any patent or patent application with Glenn Leedy as a named
`inventor.
`REQUEST FOR PRODUCTION NO. 14:
`
`All documents and communications related to any attempt to implement, any attempt to
`prototype, or any attempt to commercialize the disclosed or claimed subject matter of any patent or
`patent application with Glenn Leedy as a named inventor.
`REQUEST FOR PRODUCTION NO. 15:
`
`All documents and communications related to any attempt to implement, any attempt to
`prototype, or any attempt to commercialize a three-dimensional integrated circuit pursuant to or
`under any licensing agreements or contracts between 3DS Logic and Elm.
`REQUEST FOR PRODUCTION NO. 16:
`All documents related to any potential or actual acquisition of any patent or patent application
`with Glenn Leedy as a named inventor, or to any potential or actual acquisition of any ownership or
`financial interest in any patent or patent application with Glenn Leedy as a named inventor.
`REQUEST FOR PRODUCTION NO. 17:
`All documents related to any litigation concerning any patent or patent application with Glenn
`Leedy as a named inventor.
`REQUEST FOR PRODUCTION NO. 18:
`All documents and communications related to Your knowledge concerning conception and
`reduction to practice of the inventions disclosed in the Patents-at-Issue.
`
`
`
`- 11 -
`
`

`

`
`
`Case 1:14-cv-01432-LPS Document 329-1 Filed 12/11/20 Page 11 of 11 PageID #: 18181
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`REQUEST FOR PRODUCTION NO. 19:
`All documents and communications related to Your knowledge concerning the benefits of the
`alleged inventions disclosed in the Patents-at-Issue.
`REQUEST FOR PRODUCTION NO. 20:
`All documents and communications related to 3DS Logic’s termination of any license,
`agreement, contract, investment, project or collaboration with Glenn Leedy or Elm.
`REQUEST FOR PRODUCTION NO. 21:
`All documents and communications related to your or 3DS Logic’s attempts to raise funds or
`find resources to fabricate any invention, design, idea or prototype described by Glenn Leedy,
`including reasons for why any such funds or resources could not be procured.
`REQUEST FOR PRODUCTION NO. 22:
`All documents and communications related to your or 3DS Logic’s determination that any
`invention, design, idea or prototype described by Glenn Leedy is unfeasible or cannot be fabricated.
`
`
`
`
`- 12 -
`
`