Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 1 of 14 PageID #: 27083
`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 1 of 14 PagelD #: 27083
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`EXHIBIT A
`EXHIBIT A
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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 2 of 14 PageID #: 27084
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`1(858) 458-3014
`elizabethbrann@paulhastings.com
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`March 29, 2021
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`VIA E-MAIL
`
`Matt Ford
`Bartlit Beck LLP
`Courthouse Place
`54 West Hubbard Street
`Chicago, IL 60654
`Matthew.Ford@BartlitBeck.com
`
`Re:
`
`
`Elm 3DS Innovations, LLC v. Samsung Elecs. Co., Ltd., et al., No. 14-cv-1430-LPS (D. Del.)
`
`Dear Matt:
`
`We write on behalf of Samsung, Micron, and SK hynix regarding Elm’s supplemental response of March
`12, 2021 to Defendants’ Common Interrogatory No. 4, which requests Elm to “Identify each agreement
`and relationship that YOU have with any person or entity that has a financial stake in any of these
`Cases . . . .” Elm’s response is incomplete and does not adequately respond to the interrogatory.
`
`First, Elm’s response states that it entered into an agreement with Epicenter Law, P.C. on June 20, 2014
`that sets forth the amount that Ron Epstein (through Epicenter Law, P.C.) would receive for any recovery
`in this case. This agreement is responsive to Defendants’ RFP Nos. 40, 71, 73, 79, 82-83, 93 and 99 and
`relevant at least to witness bias. But we are not aware of any assertion of privilege over this agreement
`to justify its withholding from production. Indeed, the agreement between Elm and Epicenter does not
`appear to be an attorney-client communication, work product, or otherwise protected from disclosure.
`See Montgomery County v. Microvote Corp., 175 F.3d 296, 304 (3rd Cir. 1999) (“The attorney-client
`privilege does not shield fee arrangements.”); United States v. Kossak, 275 F. Supp. 2d 525, 533 (D. Del.
`2003) (“[T]he Third Circuit has consistently held that ‘in the absence of unusual circumstances, the
`[attorney-client] privilege does not shield the fact of retention, the identity of clients, and fee
`arrangements.’”) (citation omitted). As such, Defendants are entitled to the document and Elm has no
`basis to withhold it.
` 
`Second, Elm’s response quotes a provision from the agreement that includes a number of terms lacking
`definitions and thus context. For example, Elm’s response refers to “Gross Revenue,” but does not
`provide a definition for that term. We also cannot determine which amounts constitute “Guaranteed
`Payments” and which amounts constitute “Contingent Revenue.” Without the definitions and full context
`for these terms, including other provisions or limitations in the agreement in which they may appear, it is
`difficult to assess the total amount that Epstein is expected to receive from any recovery in this litigation.
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`Third, we do not know the services that Epstein has agreed to provide pursuant to this agreement. We
`do not know if the agreement covers legal, consultant, expert, testifying, management and/or any other
`services from Epstein. Without knowing the services for which Elm will compensate Epstein, we cannot
`assess whether his compensation arrangement is reasonable.
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`

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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 3 of 14 PageID #: 27085
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`January 21, 2021
`Page 2
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`Therefore, we request production of the June 20, 2014 agreement between Elm and Epicenter to cure the
`deficiencies in Elm’s supplemental interrogatory response. Without it, we cannot fully understand the
`terms of Epstein’s compensation arrangement and assess its reasonableness. We also request the full
`production of any addenda, amendments or other documents related to the June 20, 2014 agreement, as
`well as any other responsive documents containing information on Epstein’s compensation in exchange
`for his services in this case.
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`
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`Best regards,
`
`/s/ Elizabeth L. Brann
`
`Elizabeth L. Brann
`of PAUL HASTINGS LLP
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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 4 of 14 PageID #: 27086
`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 4 of 14 PagelD #: 27086
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`EXHIBIT B
`EXHIBIT B
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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 5 of 14 PageID #: 27087
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`1(858) 458-3014
`elizabethbrann@paulhastings.com
`
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`November 8, 2021
`
`
`VIA E-MAIL
`
`Nosson Knobloch
`Bartlit Beck LLP
`1801 Wewatta Street
`Suite 1200
`Denver, CO 80202
`
`Re:
`
`Elm 3DS Innovations, LLC v. Samsung Elecs. Co., Ltd., et al., No. 14-cv-1430-LPS (D. Del.)
`
`Dear Nosson:
`
`We write regarding Elm’s production of documents from its privilege log following the Court’s October 15,
`2021 order (D.I. No. 442). We further write regarding deficiencies in Elm’s most recent Amended Privilege
`Log, dated October 25, 2021.
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`Matching Previous Privilege Log Entries with Produced Documents
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`On October 15, the Court’s ordered Elm to produce and/or reduce redactions for a total of 61 documents
`corresponding to deficient entries in Elm’s privilege log. D.I. No. 422. Subsequently on October 25, Elm
`produced 59 documents that appear to include at least some of the documents ordered to be produced.
`However, Elm has provided no information regarding which previous privilege log entries match up with
`which of the produced documents, leaving Samsung unable to ascertain whether all of the ordered
`documents have been produced.
`
`Following Elm’s production of a quantity of documents from its privilege log earlier this year, Samsung
`requested and Elm provided information matching up the produced documents with the previous privilege
`log entries. See S. Jung’s April 30, 2021 letter. Please confirm that you will do the same for Elm’s October
`25 document productions no later than November 12.
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`Unproduced Documents
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`Certain of the documents included in Elm’s October 25 production reveal the possible existence of other,
`as yet unproduced documents. In particular, the document bearing Bates numbers ELM3DS00154153–
`54 appears to be a draft “Equity Investment Term Sheet” containing handwritten notes. Yet Elm does not
`appear to have produced any other versions of this document, such as any final executed version. Those
`other versions, as well as any related documents and/or communications, are relevant because they
`provide information about the value of the asserted patents and about Ron Epstein’s compensation. See
`D.I. No. 442 at 12 (concluding that details about Ron Epstein’s compensation have “potential relevance to
`bias”). Please confirm by no later than November 17 whether Elm has any such documents or
`communications in its possession, custody, or control that have not yet been produced. If so, Samsung
`expects those documents and communications to be produced no later than November 19.
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`While Elm has produced an unredacted copy of the July 8, 2013 Contingent Fee Engagement Agreement
`between Epicenter Law, P.C. and Elm Technology Corporation pursuant to the Court’s October 15 order,
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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 6 of 14 PageID #: 27088
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`Nosson Knobloch
`November 8, 2021
`Page 2
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`Elm has produced no engagement agreements between Epicenter Law, P.C. (or Epicenter IP Group LLC)
`and Elm 3DS Innovations, LLC, the plaintiff in this case. The draft “Equity Investment Term Sheet”
`identified above mentions the possible termination of Elm’s relationship with Epicenter Law, P.C. and a
`new “services agreement” with Epicenter IP Group LLC. Any agreements establishing, modifying, and/or
`terminating a relationship between any Elm-related entity and Epicenter Law, P.C. or Epicenter IP Group
`LLC are relevant at least to bias from their effect on Ron Epstein’s compensation. Please confirm by no
`later than November 17 whether Elm has any such agreements in its possession, custody, or control that
`have not yet been produced. If so, Samsung expects them to be produced no later than November 19.
`
`Samsung reserves the right to seek relief from the Court (including, but not limited to its attorneys’ fees)
`for Elm’s failure to timely produce any documents falling within the above categories, all of which should
`have been produced long ago.
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`New Privilege Log Entries
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`Elm’s October 25 Amended Privilege Log includes five new entries, at least two of which contain similar
`deficiencies to those disputed over the past six months and ultimately resolved by the Court’s October 15
`order. In particular, ElmPriv_2742 and ElmPriv_2743 provide insufficient information to support Elm’s
`claim of privilege. ElmPriv_2742 has a description of “[e]mail between counsel related to licensing
`discussion with Micron.” This description does not indicate any connection to providing legal advice. It
`instead appears to be a communication with a primarily business purpose. As for ElmPriv_2743, it does
`not provide any information about who authored the document, so Samsung is unable to assess Elm’s
`privilege claim. Please either provide additional information to support Elm’s claim of privilege over these
`documents, or confirm that they will be produced no later than November 15.
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`Samsung reserves all rights to seek relief from the Court for Elm’s belated inclusion of these new entries
`on its privilege log after the parties and the Court expended considerable resources litigating the previous
`deficiencies with Elm’s privilege log.
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`
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`Sincerely,
`
`/s/ Elizabeth L. Brann
`
`Elizabeth L. Brann
`of PAUL HASTINGS LLP
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`

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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 7 of 14 PageID #: 27089
`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 7 of 14 PagelD #: 27089
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` EXHIBIT C
`EXHIBIT C
`REDACTED IN ITS ENTIRETY
`REDACTEDIN ITS ENTIRETY
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`

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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 8 of 14 PageID #: 27090
`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 8 of 14 PagelD #: 27090
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` EXHIBIT D
`EXHIBIT D
`REDACTED IN ITS ENTIRETY
`REDACTEDIN ITS ENTIRETY
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`C a s e 1 : 1 4 - c v - 0 1 4 3 0 - L P S
`v- 0143 0-L P S$
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` D o c u m e n t
`Docume
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`EXHIBIT E
`EXHIBIT E
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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 10 of 14 PageID #: 27092
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`1(858) 458-3014
`elizabethbrann@paulhastings.com
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`January 20, 2021
`
`
`VIA E-MAIL
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`Katherine L.I. Hacker
`Bartlit Beck LLP
`1801 Wewatta Street
`Suite 1200
`Denver, CO 80202
`kat.hacker@bartlitbeck.com
`
`Re:
`
`Elm 3DS Innovations, LLC v. Samsung Elecs. Co., Ltd., et al., No. 14-cv-1430-LPS (D. Del.)
`
`Dear Kat:
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`We write regarding Elm’s discovery responses relating to Mr. Ron Epstein’s compensation in this case.
`At the hearing on litigation funding, the Court noted that this topic is clearly relevant, and Elm agreed.
`See 10/30/2020 Hr’g Tr. at 17:18–22 (“THE COURT: . . . . So Elm, they're allowed to ask Mr. Epstein if he
`is going to get a payout of the litigation, if he is involved in the litigation funding. I mean that is clearly
`relevant to bias; right? MS. HACKER: Yes.”). And to be clear, you agreed to not object to questions
`about his compensation. Id. at 18:1–5 (“THE COURT: Right. And are you going to object at deposition if
`he is asked if he is going to get a payout related to litigation funding, in connection? MS. HACKER: No,
`we won't object to that, Your Honor.”). Defendants are thus clearly entitled to this information.
`
`Elm also informed the Court that it has “already produced any documents showing any compensation Mr.
`Epstein would get in this case or because of this case.” Id. at 23–24. However, we are not aware of any
`such documents showing this information, except for
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`, and
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` do not show what amount Mr. Epstein is actually
` However,
`receiving, has received, is expecting to receive, or is entitled to receive, in his connection as: (1) manager
`of Elm, (2) trustee of the Leedy Trust, (3) consultant for Elm, or (4) for any other reason.
`
`We note that Mr. Epstein’s multiple hats implicate ethical issues because he is Elm’s primary fact witness
`in this action and fact witnesses generally cannot be paid for their testimony. See BAE Sys. Info. & Elec.
`Sys. Integration Inc. v. Lockheed Martin Corp., No. CIV.A. 3099-VCN, 2011 WL 3689007, at *2 (Del. Ch.
`Aug. 10, 2011) (“The prohibition against paying fact witnesses for their testimony protects the integrity of
`the adversary process: compensating a fact witness for her testimony creates the perception that, but for
`the compensation, the witness might not offer testimony consistent with the proponent’s interest.”) (citing
`Del. Law. R. Prof. Conduct 3.4(b)). Courts across jurisdictions interpret their professional rules of conduct
`consistently. Defendants are entitled to investigate the boundaries of Mr. Epstein’s various roles and to
`assess the compensation that he receives for any particular role.
` 
`Therefore, we request that Elm supplement its responses to Defendants’ Common Interrogatory No. 4
`and RFP Nos. 40, 71, 73, 79, 82-83, 93 and 99 on Mr. Epstein’s financial interests in this action,
`particularly with responses and documents providing a complete picture of any financial interest,
`
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`

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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 11 of 14 PageID #: 27093
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`January 20, 2021
`Page 2
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`contingent or otherwise, that Mr. Epstein has in this case, including but not limited to information that
`discloses his specific fees, total amount received to date, and the percentage of any award, settlement or
`outcome of this case that he would be entitled to. If Elm refuses to provide this information, we intend to
`move to compel. Please let us know by January 27 when we can expect these supplemental responses
`and documents.
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`
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`Best regards,
`
`/s/ Elizabeth L. Brann
`
`Elizabeth L. Brann
`of PAUL HASTINGS LLP
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`

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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 12 of 14 PageID #: 27094
`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 12 of 14 PagelD #: 27094
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` EXHIBIT F
`EXHIBIT F
`REDACTED IN ITS ENTIRETY
`REDACTEDIN ITS ENTIRETY
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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 13 of 14 PageID #: 27095
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 14-1430-LPS
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` FILED UNDER SEAL
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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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`
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`Plaintiff,
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`Defendants.
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`[PROPOSED] ORDER
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`WHEREAS, the Court held a conference regarding certain discovery disputes raised by
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`Defendants on January 14, 2022;
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`NOW THEREFORE, the Court having considered Defendants’ letter brief, and any
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`response thereto, as well as arguments made during the January 14, 2022 conference, it is hereby
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`ORDERED as follows:
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`1.
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`Plaintiff shall produce all amendments to the Contingent Fee Engagement
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`Agreement between Elm and Epicenter.
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`2.
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`Plaintiff shall produce
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`that affect Ron Epstein’s compensation.
`1
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` and any other related documents
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`Case 1:14-cv-01430-LPS Document 457-1 Filed 01/12/22 Page 14 of 14 PageID #: 27096
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`Dated: January ___, 2022
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`__________________________________
`The Honorable Jennifer L. Hall
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`2
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