Case 1:14-cv-01430-LPS Document 435 Filed 09/29/21 Page 1 of 36 PageID #: 26525
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ELM 3DS INNOVATIONS, LLC,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG SEMICONDUCTOR, INC.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`and SAMSUNG AUSTIN SEMICONDUCTOR,
`LLC,
`
`Defendants.
`
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`
`C.A. No. 14-01430-LPS-JLH
`
`REDACTED VERSION
`
`JOINT STATUS LETTER TO THE HONORABLE JENNIFER L. HALL
`REGARDING DISCOVERY DISPUTES
`
`Dated: September 17, 2021
`
`

`

`Case 1:14-cv-01430-LPS Document 435 Filed 09/29/21 Page 2 of 36 PageID #: 26526
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`Dear Magistrate Judge Hall:
`
`Pursuant to the Court’s order during the July 21, 2021 discovery dispute teleconference,
`Elm and Samsung submit this joint status letter following their inability to resolve certain
`discovery disputes through meet and confer. The parties met and conferred on August 5, 6, 12,
`13, 16, and 19, 2021 for a total of eight hours. The following attorneys participated in each of the
`telephonic meet and confers:
`
`•
`
`•
`
`•
`
`•
`
`Delaware Counsel for Elm: Brian Farnan
`
`Counsel for Elm: Daniel Taylor
`
`Delaware Counsel for Samsung: Adam Poff
`
`Counsel for Samsung: Soyoung Jung and Cole Malmberg
`
`The below sections of this joint status letter include the status of each of the unresolved
`discovery disputes and the parties’ positions with respect to each.
`
`Elm believes that further oral argument is not necessary on any of the issues Samsung
`raises in this status report. However, if the Court decides to schedule oral argument, Elm
`respectfully requests that it not be scheduled from September 23 to 29. Elm’s counsel is
`unavailable on those days due a law firm retreat and a long-planned vacation.
`
`Issue 3: Elm’s Privilege Claims1
`
`Samsung’s Position: The Court ordered the parties to meet and confer within three
`weeks of the July 21 discovery teleconference to go “document by document” through the
`disputed privilege log entries. 7/21/21 Hr’g Tr. at 26:20–27:5. The parties met and conferred six
`times to review Elm’s privilege log entry-by-entry, in accordance with the Court’s instructions.
`
`Elm continued to withdraw its privilege claims during the meet and confers, agreeing to
`produce about fifty more documents from its log. The fact that Elm continues to find non-
`privileged documents contradicts its prior representations on the thoroughness of its review of
`these issues. See D.I. No. 427 at 3 (“In response to Samsung’s letter, Elm took a careful second
`look at the more than 2,700 documents on its log” and “produced 327 documents from the log”).
`It also reinforces Samsung’s position that there are more documents that should be produced.
`
`During the July 21 teleconference, the Court ordered the parties to “file a joint status
`report” if they could not resolve all disputes. 7/21/21 Hr’g Tr. at 27:6–8. After the meet and
`confers, three (much reduced) categories of disputes remain: (1) entries for which Elm cannot
`provide enough information to support its privilege claim; (2) business-focused communications
`
`
`1 The numbering of issues in this status report corresponds to the order in which the issues
`appeared in Samsung’s initial discovery dispute letter, D.I. 423.
`
`1
`
`

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`Case 1:14-cv-01430-LPS Document 435 Filed 09/29/21 Page 3 of 36 PageID #: 26527
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`between Glenn Leedy, Ron Epstein, and/or other Epicenter employees; and (3) business-focused
`communications between Glenn Leedy and Michael Ure. Each is addressed in turn below.
`
`First, during the meet and confers, Elm provided further information previously missing
`from its log. That information allowed Samsung to significantly reduce the number of entries
`disputed on inadequate information. But several entries still remain for which Elm was unable to
`provide sufficient information to substantiate its privilege claims; these are identified in Exhibit
`L. Elm acknowledged that
`
`
`
`
`
`
`Nor does the substance of those documents establish that they were prepared by or for an
`attorney. For example, Elm described ElmPriv_0315 as
`
`
`
`
` Elm “has the burden of establishing the existence of the
`privilege in all respects.” United States v. Davis, 131 F.R.D. 391, 402 (S.D.N.Y. 1990) (holding
`that the party claiming privilege must provide “sufficient facts to bring the disputed documents
`within the confines of the privilege,” which cannot be satisfied by “mere conclusory or ipse dixit
`assertions”). Elm has not met its burden to establish privilege for ElmPriv_0315 and other
`similar documents listed in Exhibit L. See, e.g., ElmPriv_0323, ElmPriv_0405.
`
`
`
`Other documents listed in this first category in Exhibit L appear prepared primarily for
`business purposes with no explicit connection to an attorney (discussed further below, under the
`second category of disputes). For example, ElmPriv_0040 is described in Elm’s most recent
`amended privilege log as
`Ex. M [8/16/21 Amended Privilege Log] at 2.
`
` that document would not be
`privileged because of its primary business purpose. See SanDisk Corp. v. Round Rock Research
`LLC, No. 11-CV-05243-RS (JSC), 2014 WL 691565, at *3 (N.D. Cal. Feb. 21, 2014) (requiring
`a patent assertion entity to produce documents related to its business of patent licensing).
`
`
`
`
`
` Second, Elm improperly maintains its privilege claims over documents and
`communications between Glenn Leedy, Ron Epstein, and/or other Epicenter employees that
`primarily relate to business matters. Some of those privilege log entries are dated before the July
`8, 2013 Epicenter Law engagement, but most are after that date. Samsung is mindful of the
`Court’s guidance “about the 2013 cutoff date not being particularly important” and that “you can
`have communications with your retained attorney that aren’t privilege[d], and you can have
`communications with someone you haven’t formally retained that are privilege and you can have
`
`2
`
`

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`Case 1:14-cv-01430-LPS Document 435 Filed 09/29/21 Page 4 of 36 PageID #: 26528
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`some that aren’t privileged.” 7/21/21 Hr’g Tr. at 33:8–34:8; 40:10–12. Accordingly, Samsung
`follows the test endorsed by Judge Stark, which requires looking to the “primary purpose” of a
`communication to determine whether the attorney client privilege applies. See Onyx
`Therapeutics, Inc. v. Cipla Ltd., No. CV 16-988-LPS, 2019 WL 668846, at *1 (D. Del. Feb. 15,
`2019). In particular, “[i]f the primary purpose of a communication is to solicit or render advice
`on non-legal [e.g., business] matters, the communication is not within the scope of the attorney-
`client privilege.” Hercules, Inc. v. Exxon Corp., 434 F. Supp. 136, 147 (D. Del. 1977).
`
`Along with focusing on a communication’s primary purpose, Samsung also seeks
`consistency across Elm’s privilege log. Where two entries have the same or similar descriptions
`and no indication of attributes requiring differential treatment, those entries should be treated the
`same. See SanDisk, 2014 WL 691565, at *3–4 (N.D. Cal. Feb. 21, 2014) (taking the same
`approach for multiple privilege log entries involving licensing strategy and terms). For example,
`Elm continues to withhold ElmPriv_782,
`
` Ex. M at
` does not appear any different than entries on Elm’s
`22. This
`prior privilege log that it agreed to produce. See, e.g., D.I. No. 423, Ex. E at 19 (including
`ElmPriv_0765 with description of
`
`).
`
`Elm contended during the meet and confers that a “sliding scale” principle applies, where
`the closer communications get to the date of the Epicenter Law engagement, the more likely
`those communications are to be privileged, even if they concern the same business-focused
`matters. Elm further contended that communications after July 8, 2013 can be properly withheld,
`even if they contain exactly the same kinds of substance as in produced communications from
`before that date. Elm provides no authority in support of this approach and contradicts the
`Court’s guidance during the July 21 discovery teleconference.2 Courts agree that “where one
`consults an attorney not as a lawyer but as a friend or as a business advisor . . . or negotiator . . .
`the consultation is not professional nor the statement privileged.” In re Lindsey, 148 F.3d 1100,
`1106 (D.C. Cir. 1998); In re Google Inc., 462 F. App’x 975, 978 (Fed. Cir. 2012) (“It is beyond
`dispute that parties seeking to establish the privilege are required to sufficiently establish the
`communication at issue relates to professional legal services (as opposed to business
`considerations)[.]”); Wilstein v. San Tropai Condo. Master Ass’n, 189 F.R.D. 371, 379 (N.D. Ill.
`1999) (discussions “encompassing business strategy and decision-making are not privileged”).
`
`
`2 During the meet and confers, Elm inaccurately characterized the Court’s ruling as “clearly
`rejecting” Samsung’s position on the effect of the July 8, 2013 agreement, and then took liberties
`with this characterization to broadly claim privilege for most disputed documents. This approach
`is misguided. When advising the parties that the date of engagement should have no significance,
`the Court explained that privileged and non-privileged communications can occur before or after
`formal engagement. 7/21/21 Hr’g Tr. at 33:8–34:8; 40:10–12. Yet Elm has apparently done
`what the Court advised against and applied the July 2013 date as a cutoff to claim privilege for
`communications with Epicenter attorneys afterwards. Samsung respectfully requests that the
`Court keep this misapplication of its ruling in mind when considering the issues still in dispute.
`
`3
`
`

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`One example of Elm’s inexplicable approach is ElmPriv_0874,
`
` Ex. M at 25. Elm claims that it would have
`produced this communication if it sufficiently pre-dated the engagement agreement. But because
`it came after the engagement, Elm refused to produce it. This position makes no sense. The
`primary purpose of this communication,
` is the licensing of Elm’s
`patents. Such licensing communications are not privileged. Diagnostics Sys. Corp. v. Symantec
`Corp., No. SA CV 06-1211 DOC, 2008 WL 9396387, at *6 (C.D. Cal. Aug. 12, 2008) (holding
`that identifying targets for licensing and patent assertion involves “clearly business functions,
`and documents resulting from these function cannot be categorized in sweeping assertions of
`privileges and protection”). And, this is the same activity for which
` before the Epicenter Law engagement, a characterization that Elm admits by its
`productions and sliding-scale approach. Elm has not explained how this communication differs
`from
` pre-dating July 8,
`2013 that it produced. See D.I. No. 423, Ex. E at 17 (ElmPriv_0527)
`), 18 (ElmPriv_0679)
`). ElmPriv_0874 and all similar documents listed in Exhibit L must be produced.
`
`Samsung has narrowed the list of post-July 8, 2013 privilege log entries to exclude any
`documents and communications that actually discuss anticipated litigation. However, Elm noted
`during the meet and confers that certain entries in Exhibit L
`
`Instead, Elm contended
`that it was withholding those communications because of the “general context” in which they
`were made (i.e., within roughly a year preceding the filing of this lawsuit). But the mere fact that
`litigation was approaching did not give those licensing communications the primary purpose of
`soliciting or rendering legal advice. See SanDisk, 2014 WL 691565, at *3 (requiring production
`of documents analyzing a licensing target because “hold[ing] otherwise merely because [the
`patent owner’s] business involves, at times, filing lawsuits against targets that refuse to license
`[the] patents would mean that nearly every document created by [the patent owner] or its
`licensing agent is work product” or privileged). Elm has the burden of establishing its
`entitlement to privilege, but it has not done so for its privilege log entries listed in Exhibit L.
`
`Third, Elm improperly maintains its claims of privilege over business-focused documents
`and communications between Glenn Leedy and Michael Ure. Elm explained during the meet and
`confers that Michael Ure
`
`Elm agreed
`to produce ElmPriv_0007 through ElmPriv_0010 on the grounds that those communications
`between Glenn Leedy and Michael Ure were for business purposes and thus not privileged. But
`Elm has refused to produce the documents and communications listed in Exhibit L that also have
`a primarily business purpose. For example, ElmPriv_0011 describes
`
`Yet Elm refuses to produce
`
`4
`
`

`

`Case 1:14-cv-01430-LPS Document 435 Filed 09/29/21 Page 6 of 36 PageID #: 26530
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`that communication and other similar documents and communications. They must be produced
`for the same reasons provided above for the second category of non-privileged communications.
`
`Elm’s Position: As an initial matter, Elm objects to the nature and length of this “status
`report.” More than two weeks after the parties’ last meet and confer to go over privilege log
`issues, Samsung sent Elm a draft “status report” containing nearly eight single-spaced pages of
`argument on issues the parties already briefed and argued to the Court. The Court allowed only
`five single-spaced pages for the initial discovery letters, D.I. 422, and Samsung has inexplicably
`exceeded that limit while admitting that the parties have significantly narrowed the disputed
`issues. Elm will do its best to respond to the issues Samsung has raised as succinctly as possible.
`
`As the Court directed, Elm’s counsel spent approximately eight hours on the phone with
`Samsung’s counsel going document by document through the privilege log entries Samsung
`disputed. Through this process, Elm provided additional information regarding hundreds of
`documents, including by updating the privilege log descriptions. See Ex. M. Elm also agreed to
`produce some additional documents off the log. Samsung faults Elm for agreeing to produce
`documents off its log, but Elm’s actions simply show that Elm engaged in the meet-and-confer
`process in good faith, considered Samsung’s objections and arguments, and ultimately changed
`its position on certain documents in order to avoid or minimize disputes. That is exactly what the
`meet-and-confer process is meant to promote.
`
`Elm has provided sufficient information to claim privilege. Notwithstanding all the
`additional information Elm has provided, Samsung still complains that Elm has not substantiated
`its claims of privilege over certain documents. Elm has provided all the information it can
`regarding documents on the privilege log. For some documents, while it cannot be definitively
`determined which lawyer created or sent the document, it is apparent from the face of the
`document and the overall context that a lawyer was involved in the creation of the document. As
`Elm previously explained, it is unsurprising that some documents fall in this category because
`many documents were kept in hard copy in boxes or stored as standalone files on Mr. Leedy’s
`computer, and Elm is unable to ask Mr. Leedy for more specific details about the documents
`because he is deceased.
`
`Samsung references ElmPriv_0315, and that is a perfect of example of why it is
`appropriate for Elm to claim privilege over these documents. As the privilege log entry for
`ElmPriv_0315 explains, the document is
`
` Ex. M at 13. Although the
`
`document as it was stored
`
`
`
`5
`
`
`
`
`
`
`
`
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`Case 1:14-cv-01430-LPS Document 435 Filed 09/29/21 Page
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`over communications with Mr.
`Elmhas
`claimed
`appropriately
`privilege
`Epstein.
`compel Elm to
`Samsung appears to be asking the Court to
`produceall communications with Mr.
`that touch on
`even communications that took
`Elm and Mr.
`licensing issues,
`Epstein
`place after
`an
`2013. Samsung
`Epstein’s law firm (Epicenter Law) signed
`engagement agreement in July
`an issue the Court
`asked the Court to
`already decided. Samsung previously
`relitigating
`compel
`production of a whole swath of documents on the basis that communications regarding licensing
`were not
`because they related to business matters. D.I. 423, Ex. F at 3-4
`privileged
`(“Combination business-legal documents and communications”). The Court
`rejected that
`the extent that Samsung
`Tr. 38:11-20
`argument. July 21, 2021
`thatall the
`Hr’g
`is arguing
`(“[T]o
`on the basis that they involve business
`documents in this part of the chart has to be produced
`on that basis I’m not
`see also id. at 35:4-12
`to
`grant the
`communications,
`going
`request.”’);
`(describing Samsung’s argument in a
`skeptical manner).
`
`is
`
`to
`
`unusualorsurprising about the fact
`Samsung’s argument, there is nothing
`matters that
`communications with Mr.
`Epstein concerning licensing
`pre-dated
`as an
`over such communicationsthat
`attorney, but claimed privilege
`formed an
`As Elm has
`Epstein
`attorney-client relationship.
`
`
`
`acknowledged,
`
`Contrary
`that Elm
`produced
`Mr.
`Elm retaining
`Epstein
`
`occurred after Elm and Mr.
`
` Samsung contends that because Glenn Leedy and Mr.
`had some communications
`issues
`regarding licensing
`lawyer,
`Epstein
`before
`Elm can neverhave privileged conversations with Mr.
`even
`Epstein regarding licensing issues,
`him asan
`advice on
`to
`after
`that issue. That
`attorney
`formally engaging
`provide legal
`exactly
`position is not the law.?
`extreme
`
`Mr.
`
`became Elm’s
`
`Epstein
`
`Samsung
`
`claimsthat it “narrowed”the list of disputed entries to “exclude any documents
`and communicationsthat
`discuss
`This
`actually
`anticipated litigation.”
`purported “narrowing”
`was not limited to
`andartificial Samsung’s approach is. Mr.
`only demonstrates howrigid
`advice
`about
`giving legal
`on/y
`potential litigation;
`
`Epstein
`
`
`Moreover, in the
`
`and
`were
`overall context in which the communications occurred, licensing
`litigation
`inextricably
`
`were not
`intertwined. Needlessto say, if
`discussions with
`licensing
`particular companies
`
`3
`
`Samsung misunderstands the Court’s comments
`during the discovery teleconference about the
`Law engagement agreement. The Court
`importance of the July 8, 2013
`Epicenter
`rejected
`wasan absolute cutoff,
`Samsung’s argumentthat the date of the formal engagement agreement
`and Elm could not have
`conversations with Mr.
`July 21, 2021
`before that date.
`privileged
`Epstein
`Hr’g Tr. 33:18-34:18. But the Court did not say that the date of the engagement agreement has
`as Samsung contends. Elm’s communications with its attorney Mr. Epstein,
`“no
`significance,”
`concerning a topic
`
`should
`
`be
`
`presumptively privileged.
`
`

`

`Case 1:14-cv-01430-LPS Document 435 Filed 09/29/21 Page 8 of 36 PageID #: 26532
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`successful, litigation was the fallback option. That is exactly what happened with Samsung.
`
`
`
`
`
`
`
`
`
`The Court should reject Samsung’s arguments about communications on licensing issues
`with another Elm attorney, Michael Ure, for the same reasons explained above.
`
`Issue 4: Redactions to Epicenter Law Engagement Agreement
`
`Samsung’s Position: During the July 21 teleconference, the Court agreed with Samsung
`that it was entitled to know about Elm’s fee arrangement with Epicenter “because it goes to
`bias.” 7/21/21 Hr’g Tr. at 40:24–41:3. After Elm explained the general substance of the portions
`of the Epicenter Law engagement agreement it redacted, including
`
` the Court ordered the parties to meet and confer
`about the details of the redacted contents. Id. at 45:2–10. The Court noted that
`
` Id. at 45:14–23. The
`Court ordered the parties to “report back” following the meet and confer, and Samsung does so
`below. Id. at 46:2–9. In addition, if helpful to the Court, Samsung is willing to fully brief this
`issue in a separate discovery letter, in light of Elm’s ongoing productions and representations,
`and the corresponding prejudice to Samsung described further below in footnote 2.
`
`Elm represented to the Court that the redacted version of its agreement with Epicenter
`Law “shows all provisions relevant to Epicenter’s fees and compensation.” D.I. No. 427 at 5
`(emphasis added); see also 7/21/21 Hr’g Tr. at 41:11–21 (stating that the redacted portions were
`“all the other aspects of the attorney/client relationship beyond . . . the fee arrangements”); 42:2–
`6 (“Samsung is particular[ly] interested in the financial arrangement with Mr. Epstein. So we
`produced that.”). These representations turned out to be untrue. After the parties discussed the
`redactions on their August 19 meet and confer, Elm produced a less redacted version on August
`25. Compare Ex. N [ELM3DS00153769], with D.I. No. 423, Ex. K. Contrary to Elm’s prior
`representations, the newly unredacted portions included
`
`both of which relate directly to Epstein’s compensation. Ex. N at 5–7. Elm gave no explanation
`as to why these “fee arrangements” provisions were redacted in the previous produced version.4
`
`
`
`
`
`4 Samsung has concerns about a pattern of misrepresentations by Elm regarding its discovery
`obligations that could be the cause of unnecessary disputes before the Court. For example, Elm
`previously argued that it would not produce the Epicenter Law engagement agreement in full on
`the basis of relevance only, which is the point that Samsung briefed in its discovery letter. Elm
`argued for the first time in its responsive letter that the redacted portions of the agreement were
`privileged, and then proceeded to withdraw redactions to clearly non-privileged provisions after
`the hearing. Similar to these shifting positions over the engagement agreement, Elm repeatedly
`refused to produce its settlement agreement with SK Hynix, a defendant in a parallel litigation
`
`7
`
`

`

`Case 1:14-cv-01430-LPS Document 435 Filed 09/29/21 Page 9 of 36 PageID #: 26533
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`It is Elm’s burden to establish that a privilege applies to any document or portions thereof
`withheld on that basis, and Elm has not met its burden here. Pfizer Inc. v. Ranbaxy Labs. Ltd.,
`No. 03-209-JJF, 2004 WL 2323135, at *1 (D. Del. Oct. 7, 2004) (the party invoking privilege
`has the burden to establish all required elements). Elm alleged generally that the redacted
`portions “deal with other aspects of the attorney-client relationship that remain privileged,” D.I.
`No. 427 at 5, but has not explained how these other aspects are privileged communications with
`an attorney or work product. The only case Elm cited to support its general privilege claim—
`Stoba v. Saveology.com, LLC—concerned whether an engagement agreement must be produced
`under California law. No. 13-cv-2925 BAS (NLS), 2015 WL 10857528, at *3 (S.D. Cal. July 7,
`2015). 5 But California law does not apply in this case, which involves federal question
`jurisdiction, not the diversity jurisdiction in Stoba. Indeed, Stoba noted that “application of
`federal law on this issue would likely yield the opposite result.” Id. at *4 n.2 (emphasis added)
`(citing Gusman v. Comcast Corp., 298 F.R.D. 592, 599 (S.D. Cal. 2014) (“The Ninth Circuit has
`repeatedly held retainer agreements are not protected by the attorney-client privilege or work
`product doctrine.”)). The law in this district compels production of the agreement. Montgomery
`Cty. v. MicroVote Corp., 175 F.3d 296, 304 (3d Cir. 1999) (“[T]he fee agreement letter is not
`privileged.”); In re Semel, 411 F.2d 195, 197 (3d Cir. 1969) (“In the absence of unusual
`circumstances, the fact of a retainer, the identity of the client, the conditions of employment and
`the amount of the fee do not come within the privilege of the attorney-client relationship.”).
`
`brought by Elm, which forced Samsung to raise and brief that issue to the Court. D.I. Nos. 420 at
`2, 423 at 1. Only after Samsung filed its discovery letter did Elm agree to produce the settlement
`agreement, with no explanation for its abrupt change in positions. D.I. No. 427 at 1. Further, as
`explained above with respect to Issue 3, Elm continued to withdraw its privilege claims and
`produce documents corresponding to deficient entries on its privilege log. This occurred long
`after Elm took its “careful second look” at those entries and forced Samsung to raise them with
`the Court. Id. at 3. Should the Court find it helpful, Samsung can provide further briefing on its
`entitlement to attorneys’ fees for being forced to ask the Court to resolve disputes on which Elm
`had no defensible positions. See Fed. R. Civ. P. 37(a)(5)(A) (“If the motion is granted—or if the .
`. . requested discovery is provided after the motion was filed—the court must, after giving an
`opportunity to be heard, require the party or deponent whose conduct necessitated the motion,
`the party or attorney advising that conduct, or both to pay the movant’s reasonable expenses
`incurred in making the motion, including attorney’s fees.” (emphasis added)).
`5 Further, the only argument that Elm has articulated, during recent and prior meet and confers, is
`that its agreement with Epicenter Law is not discoverable for the same reasons that Samsung
`would be unwilling to produce its engagement agreements with its outside counsel. That
`argument misses the mark. While Elm is correct that Samsung would object to producing such
`agreements, that is because they have no relevance to any issue in this case. Samsung’s outside
`counsel are not testifying witnesses—much less the only party witness, as Ron Epstein is—and
`do not implicate the same need to investigate witness bias. The Court ruled that the Epicenter
`Law agreement could be relevant and has not made analogous rulings for Samsung’s agreements
`with its outside counsel. It is nonetheless improper for Elm to condition its discovery obligations
`on Samsung’s willingness to produce discovery on seemingly (but not) similar issues. Elm’s sole
`argument underscores the lack of any legitimate basis to withhold the Epicenter Law agreement.
`
`8
`
`

`

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`Even with Elm’s removal of certain redactions to the Epicenter Law agreement,
`substantial portions remain redacted. Ex. N. Those portions must be produced as the entire
`agreement is not privileged. At the very least, Elm must produce
` The newly unredacted portions of the agreement
`
`
`
`
`light of the newly unredacted portions,
` would have a direct effect on Epicenter Law’s and Ron Epstein’s compensation.
`
`Samsung respectfully requests that the Court order Elm to produce the unredacted
`Epicenter Law engagement agreement by September 24.
`
`
`
` In
`
`Elm’s Position: The Court directed that it would likely order unredacted in the Epicenter
`Law engagement agreement “anything that has to do with [Mr. Epstein’s] compensation.” July
`21, 2021 Hr’g Tr. 46:3-9. Elm previously unredacted the provisions in the letter that outline how
`Mr. Epstein’s and his firm’s compensation is determined. See D.I. 423, Ex. K at 1-3. After the
`hearing, given the Court’s guidance, Elm agreed to unredact a few other portions of the
`agreement that arguably touched on compensation. The Court should leave it at that.
`
`Contrary to Samsung’s assertion, Elm has always maintained that other portions of the
`engagement letter are protected by privilege (in addition to being irrelevant).
`
`Samsung has
`not identified any authority from this district holding that engagement agreements are not
`privileged in toto. The Third Circuit cases Samsung cites, Montgomery and Semel, at most
`establish that a client’s fee arrangement with a lawyer are not privileged, along with other basic
`aspects of the representation such as the fact of the retention and the identity of the client. Here,
`Elm has produced information on all of those topics. The remaining portions of the engagement
`letter are still privileged.
`
`
`
`The remaining portions of the engagement agreement are also irrelevant to any issue in
`this case. Samsung has articulated only one basis justifying its request for Elm’s confidential
`retention agreement with its counsel: the alleged bias of Mr. Epstein. The portions of the
`agreement that might conceivably be relevant to that issue have been unredacted. Samsung is not
`entitled to review other portions of this otherwise confidential and privileged document.
`
`Issue 5: Deposition of Ron Epstein
`
`Samsung’s Position: During the July 21 discovery dispute teleconference, the Court
`granted Samsung’s request that Elm make Ron Epstein available for four days of deposition.6
`7/21/21 Hr’g Tr. at 47:4–7. Following the Court’s order, Samsung promptly sought dates from
`
`6 While the Court did not specifically request an update on Ron Epstein’s deposition in this status
`report, the parties have been unable to resolve an issue related to the scheduling of that
`deposition. To the extent the Court would like this issue briefed in a new motion for discovery
`teleconference, Samsung is happy to do so.
`
`9
`
`

`

`Case 1:14-cv-01430-LPS Document 435 Filed 09/29/21 Page 11 of 36 PageID #: 26535
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`Elm for Epstein’s deposition. Samsung emailed Elm’s counsel on August 3 proposing several
`two-day blocks of dates in September and October. Ex. O [8/3/21 email from S. Jung]. Elm did
`not respond. When Samsung again raised the issue before the parties’ August 19 meet and
`confer, Elm responded that it would not be in a position to discuss the deposition. Ex. P [8/18/21
`email from D. Taylor]. Samsung emailed Elm again on August 25 to schedule the deposition. Ex.
`Q [8/25/21 email from S. Jung]. Elm finally responded on August 26, more than three weeks
`after Samsung’s initial email, offering dates on or after October 4. Ex. R [8/26/2021 email from
`D. Taylor]. Elm refused Samsung’s proposal to split the deposition into two-day blocks because
`doing so was “inconvenient” for Mr. Epstein and his counsel, and stated that the only way the
`deposition of Mr. Epstein could proceed is that “those four days will take place back to back.” Id.
`
`The Court gave Elm the option to move for a protective order if Epstein’s deposition
`becomes cumulative or harassing. 7/21/21 Hr’g Tr. at 47:7–14. However, Samsung has no
`assurances that it will obtain the discovery that it needs if it proceeds with a four-consecutive-
`day deposition of Epstein, who is both Elm’s sole Rule 30(b)(1) witness and Elm’s sole Rule
`30(b)(6) representative.7 He is designated to cover more than 100 corporate deposition topics.
`Samsung has reason to be concerned that Elm may use overbroad privilege objections to
`improperly limit the scope of Epstein’s testimony, based on its positions to date. For example,
`Elm has made overbroad privilege claims over several hundred documents; it only agreed to
`produce some improperly withheld documents after Samsung detailed deficient privilege log
`entries in correspondence, and only agreed to produce other documents when Samsung raised the
`deficiencies with the Court. Months after Samsung first raised these issues, these disputes remain
`unresolved. Samsung is concerned that Elm (or Epstein himself) may make similarly overbroad
`privilege objections in deposition that prevent Samsung from obtaining discoverable testimony.
`
`Moreover, Elm has failed to timely produce relevant documents, including, for example,
`its communications with Epstein, its settlement agreement with SK Hynix, and documents
`relating to its standing to maintain this litigation. Elm produced these documents only after
`considerable effort on Samsung’s part or pursuant to Court order. See, e.g., 7/21/21 Hr’g Tr. at
`12:22–13:6. Epstein may identify additional documents during his deposition that Elm has not
`produced. Given Elm’s resistance to producing documents relating to Epstein in particular,
`Samsung has concerns that Elm will also refuse to timely produce any such additional documents
`learned about during his deposition. Indeed, a four-consecutive-day deposition would give Elm
`the ability to stonewall Samsung’s efforts to obtain any such documents and leave Samsung no
`recourse to obtain them in time to question Epstein about them. While Elm can simply withhold
`Epstein and move for a protective order if it alleges that the deposition “becomes cumulative or
`harassing,” 7/21/21 Hr’g Tr. at 47:7–14, Samsung does not have any assurance of additional
`deposition time in the event of the need for further document production, document review,
`and/or resolution by the Court on legitimate disputes or improper discovery conduct. Procee