Case 1:14-cv-01430-LPS Document 412 Filed 05/24/21 Page 1 of 5 PageID #: 25457
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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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`Plaintiff,
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`V.
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`C.A. No. 14-1430-LPS-JLH
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`SAMSUNG ELECTRONICS CO., LTD., et al.,
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`Defendants.
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`MEMORANDUM ORDER
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`WHEREAS, Magistrate Judge Hall issued an oral discovery order (D.I. 393) ("Order")
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`on December 4, 2020, having heard argument on December 2 (D.I. 387) ("Tr") 1 and on
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`December 4, granting Elm 3DS Innovations, LLC's ("Elm") motion to compel Samsung
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`Electronics Co., Ltd., et al. ("Samsung") to produce discovery regarding relevant products with a
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`die thickness of 65 microns or less2 and ordering Elm to pay for half of the expense of the
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`additional discovery;
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`1 Most of the argument took place on December 2, but the parties answered a few additional
`questions from Judge Hall on December 4 before she issued her ruling. (See Order at 3-7)
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`2 Elm' s motion to compel seeks discovery regarding "relevant products with a substrate
`thickness of 50 microns or less." (D.I. 374) (emphasis added) Samsung, however, does not keep
`information on substrate thickness alone. (See Tr. at 16, 22, 37) Thus, Elm reframed its request
`to seek discovery relating to relevant products with a die thickness of 65 microns or less. (See id.
`at 26-27; Order at 11) The parties agree that, for infringement purposes, the relevant inquiry
`pertains to the products' substrate thickness. (See Objs. at 2; Resp. at 2) In light of the Federal
`Circuit' s construction of "a substantially flexible semiconductor substrate" in Samsung
`Electronics Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1380 (Fed. Cir. 2019), and this
`Court's subsequent claim construction order (see D.I. 267), it is undisputed that the claims of
`Elm's asserted patents only cover products with a layer in which the substrate thickness is 50
`microns or less.
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`1
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`Case 1:14-cv-01430-LPS Document 412 Filed 05/24/21 Page 2 of 5 PageID #: 25458
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`WHEREAS, on December 18, 2020, Samsung objected to the portion of the Order
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`granting the additional discovery (D.I. 389) ("Objections" or "Objs."), asserting that Elm is
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`judicially estopped from seeking discovery on such products and that Elm' s request is untimely,
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`unwarranted, and not proportional to the needs of the case;
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`WHEREAS, on January 11 , 2021 , Elm responded to the Objections (D.I. 397)
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`("Response" or "Resp.");
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`WHEREAS, the Court has reviewed Judge Hall's Order under a "clearly erroneous or
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`contrary to law" standard, see 28 U.S.C. § 636(b)(l )(A); Fed. R. Civ. P. 72(a); see also
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`Norguard Ins. Co. v. Serveon Inc., 2011 WL 344076, at *2 (D. Del. Jan. 28, 2011) ("In discovery
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`matters, decisions of the magistrate judge are given great deference and will be reversed only for
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`an abuse of discretion.");
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`WHEREAS, a magistrate judge' s order "is contrary to law only when the magistrate
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`judge has misinterpreted or misapplied the applicable law," Evans v. John Crane, Inc., 2019 WL
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`5457101 , at *6 (D. Del. Oct. 24, 2019) (internal citation and quotation marks omitted);
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`WHEREAS, under the "clearly erroneous" standard, the Court will only set aside
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`findings of a magistrate judge when it is "left with the definite and firm conviction that a mistake
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`has been committed," Green v. Fornario , 486 F.3d 100, 104 (3d Cir. 2007) (internal citation and
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`quotation marks omitted);
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`NOW THEREFORE, IT IS HEREBY ORDERED that Samsung' s Objections are
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`OVERRULED, the Order is ADOPTED, and Elm's motion to compel remains GRANTED, for
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`the following reasons:
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`1.
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`As an initial matter, the Court agrees with Elm that Samsung's Objections can be
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`overruled based on a procedural failing. Samsung failed to comply with Local Rules 7.1 .5(b)
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`2
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`Case 1:14-cv-01430-LPS Document 412 Filed 05/24/21 Page 3 of 5 PageID #: 25459
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`and 72. l(b), which require a party filing objections to a magistrate judge's order to identify the
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`appropriate standard of review. As Elm points out, "Samsung may have omitted the standard
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`because its Objections clearly fail under the correct standard of review, which is deferential to
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`Judge Hall's order." (Resp. at 5; see also id. at 6 ("[T]he Court does not exercise unfettered
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`discretion on discovery matters that were referred to a Magistrate Judge in the first instance."))3
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`2.
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`Samsung's Objections fail on the merits as well. Samsung argues that Elm is
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`judicially estopped from seeking discovery on products with a "substrate" thickness of 50
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`microns or less, because Elm previously sought and obtained discovery on products with a
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`"circuit layer" or "die" thickness of 50 microns or less. (See Objs. at 9-10)
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`3.
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`Judicial estoppel is only appropriate when: (1) the party to be estopped is
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`asserting a position that is irreconcilably inconsistent with one she previously asserted; (2) the
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`party changed her position in bad faith, i.e., with an intent to play fast and loose with the court,
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`and (3) the use of judicial estoppel is tailored to address the affront to the Court' s authority or
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`integrity and no lesser sanction would adequately remedy the situation. See Montrose Med. Grp.
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`Participating Sav. Plan v. Bulger, 243 F.3d 773 , 777-78 (3d Cir. 2001).
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`4.
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`Although Judge Hall had no occasion to address judicial estoppel (see supra n.3 ),
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`she made a finding that Elm did not act in bad faith. (See Order at 13) She stated that "while I
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`do find that the situation is a result [ of] a change of strategy on the part of Elm, I cannot
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`3 Elm contends that Samsung' s Objections may also be overruled based on Samsung' s failure to
`adequately clarify in its certification - required by the Court's October 9, 2013 Standing Order
`for Objections Filed Under Fed. R. Civ. P. 72 ("Standing Order") - that its judicial estoppel
`argument in its Objections is "new." (Resp. at 7) The Court agrees with Elm that judicial
`estoppel was not fairly presented to Judge Hall; it was only raised for the first time during the
`December 2, 2020 hearing (see Tr. at 44-46), was not raised in Samsung' s briefs or extensive
`exhibits (see Resp. at 7), and is not addressed in Judge Hall' s Order. The Court need not
`determine whether Samsung's certification (D.I. 390) was so deficient as to provide an
`independently adequate basis for overruling its Objections.
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`3
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`conclude that Elm has acted in bad faith. " (Id. ) Nothing in the record suggests this finding is
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`clearly erroneous. Nor does Samsung argue it is, stating instead in its Objections that Judge
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`Hall's "underlying factual findings are entirely correct." (Objs. at 1) (emphasis added)
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`Accordingly, Elm is not judicially estopped. See Montrose, 243 F.3d at 780-81 ("Inconsistencies
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`are not sanctionable unless a litigant has taken one or both positions in bad faith. ") (internal
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`citation and quotation marks omitted). Additionally, there is no indication of any affront to the
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`integrity of the courts from allowing Elm to press its current position, and Judge Hall' s remedy -
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`which considers and addresses the prejudice to Samsung- belies Samsung' s argument that no
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`lesser sanction would adequately remedy the situation.4
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`3.
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`Samsung also asks the Court to conclude that Elm's delay renders the discovery at
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`issue untimely, unwarranted, and not proportional to the needs of the case. In fact, as Judge Hall
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`noted, fact discovery has not yet closed and a trial date has not been set; there remains sufficient
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`time for the additional discovery to occur.5 (See Order at 13) (" [A]lthough I understand that we
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`are talking about producing core technical documents and sales data for potentially hundreds of
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`additional products, there is time for this discovery to take place.") There is nothing clearly
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`erroneous in Judge Hall's findings - and, again, Samsung does not really argue to the contrary.
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`Moreover, the discovery sought by Elm is warranted and proportional to the needs of the case. 6
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`The products at issue meet the substrate limitation of the claims, Samsung has not yet produced
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`4 While Elm disagrees (see Resp. at 5) with Judge Hall' s finding that the parties' dispute arose
`from a "change in strategy on the part of Elm" (Order at 12), Elm does not contend this finding is
`clearly erroneous. Even accepting this finding, however, Samsung has nevertheless failed to
`show that Elm's current position is "diametrically opposed" to (or irreconcilably inconsistent
`with) Elm's prior position. (Objs. at 9)
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`5 The deadline for fact discovery has been extended to July 15, 202 1. (See D.I. 395)
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`6 The Court so concludes while recognizing that, as Samsung points out, " [t]his case has been
`pending for six years, and already involves over 1,400 products." (Objs. at 1)
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`4
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`Case 1:14-cv-01430-LPS Document 412 Filed 05/24/21 Page 5 of 5 PageID #: 25461
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`information about those products, and there is a reasonable basis to believe that "billions of
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`dollars" of sales of these products may be at issue. (See id. ) Finally, the fact that Elm will pay
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`for half of the expense of the additional discovery significantly reduces the prejudice to
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`Samsung.
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`4.
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`Given the detailed reasoning provided in the Order, the Court finds it
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`unnecessary to address Samsung' s Objections any further.
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`May 24, 2021
`Wilmington, Delaware
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`LE LEONARD P. STARK
`HONO
`UNITED STATES DISTRICT JUDGE
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`5
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