`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 14-1430-LPS
`
`REDACTED VERSION
`
`)
`)
`)
`)
`)
`)
`)
`)
`
`))
`
`
`)
`)
`)
`
`ELM 3DS INNOVATIONS, LLC, a
`Delaware limited liability company,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG SEMICONDUCTOR, INC.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., and SAMSUNG AUSTIN
`SEMICONDUCTOR, LLC,
`
`Defendants.
`
`DEFENDANTS’ RESPONSE IN OPPOSITION TO SUSAN R. BROWN’S
`MOTION FOR PROTECTIVE ORDER AS TO SUBPOENA FOR DOCUMENTS
`FROM DISSOLUTION OF MARRIAGE AND SUBPOENA FOR DEPOSITION
`
`Dated: February 17, 2022
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`Adam W. Poff (No. 3990)
`Pilar G. Kraman (No. 5199)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`pkraman@ycst.com
`
`Attorneys for Defendants Samsung Electronics
`Co., Ltd., Samsung Semiconductor, Inc.,
`Samsung Electronics America, Inc., and
`Samsung Austin Semiconductor, LLC
`
`28987958.1
`
`
`
`Case 1:14-cv-01430-LPS Document 480 Filed 02/24/22 Page 2 of 9 PageID #: 27924
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`
`
`C.A. No. 14-cv-01430-LPS
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`ELM 3DS INNOVATIONS, LLC,
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG SEMICONDUCTOR, INC.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`and SAMSUNG AUSTIN SEMICONDUCTOR,
`LLC,
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendants.
`
`DEFENDANTS’ RESPONSE IN OPPOSITION TO SUSAN R. BROWN’S
`MOTION FOR PROTECTIVE ORDER AS TO SUBPOENA FOR DOCUMENTS
`FROM DISSOLUTION OF MARRIAGE AND SUBPOENA FOR DEPOSITION
`
`Defendants Samsung Electronics Co., Ltd., Samsung Semiconductor, Inc., Samsung
`
`Electronics America, Inc., and Samsung Austin Semiconductor, LLC (collectively, “Samsung”)
`
`hereby respond to the motion of Ms. Susan R. Brown for a protective order regarding Samsung’s
`
`document and deposition subpoenas. D.I. 470; Ex. 1.1 Ms. Brown’s motion should be denied
`
`because she has responsive, non-privileged information that is relevant to the present patent case—
`
`namely the deposition transcript of Ms. Julia Leedy, which “address[es] the valuation issue”
`
`related to patents at issue in the divorce between Ms. Leedy and Mr. Glenn Leedy. D.I. 470 ¶ 8;
`
`Ex. 1 ¶ 8. This deposition transcript is relevant to the present patent case, as the value of the same
`
`patent family and some of the same patents asserted in this case was at issue in the Leedy divorce
`
`proceeding. But Ms. Brown improperly refuses to produce this transcript on the basis that it is
`
`
`1 As explained below, Ms. Brown emailed her initial motion to Samsung on February 3 and asked
`that it be e-filed, which Samsung did (D.I. 470). On February 17, Ms. Brown served an amended
`motion on Samsung via email, which is attached as Exhibit 1.
`
`-1-
`
`
`
`Case 1:14-cv-01430-LPS Document 480 Filed 02/24/22 Page 3 of 9 PageID #: 27925
`
`attorney-client privileged or protected work product and that the deponent does not consent,
`
`without providing any support for either position. Ms. Brown’s motion should be denied.
`
`I.
`
`FACTUAL BACKGROUND
`
`On January 11, 2022, Samsung served a document subpoena and deposition subpoena on
`
`Ms. Brown seeking information regarding the value of patents at issue in the divorce proceedings
`
`between Mr. Leedy and Ms. Leedy, including the value of Elm Technology Corporation (an entity
`
`jointly owned by Mr. Leedy and Ms. Leedy to which the patents were assigned at the time). Ex.
`
`2 (Subpoenas); Ex. 3 (Excerpts of the Nov. 18, 2012 Leedy Divorce Agreement) at 9. Some of
`
`the same patents and other patents from the same patent family are asserted against Samsung in
`
`the present case. Ex. 3 at 9, 17–18; Ex. 4 (Patent Related Exhibits to the Divorce Agreement) at
`
`1–3. On January 26 and 27, 2022, Samsung and Ms. Brown discussed the subpoenas, and Samsung
`
`expressed its willingness to work with Ms. Brown to minimize any burden or inconvenience on
`
`Ms. Brown relating to the subpoenas.
`
`During those conversations, Ms. Brown acknowledged that she had in her records the
`
`deposition transcript of Ms. Leedy from the divorce proceedings and that it included multiple
`
`references to patents—the value of which was at issue during the divorce. But Ms. Brown
`
`maintained that she could not produce the deposition transcript because it was attorney-client
`
`privileged or protected work product and that she would only produce it with Ms. Leedy’s consent.
`
`Based on those discussions, Samsung agreed to extend the deadline for Ms. Brown to produce
`
`documents to allow time for further consideration. Ex. 5 (Jan. 2022 Email Chain Between Razick
`
`and Brown) at Jan. 27, 2022 Email from Razick to Brown. Samsung also provided Ms. Brown the
`
`contact information that it was aware of for Ms. Leedy’s current attorney because of the possibility
`
`-2-
`
`
`
`Case 1:14-cv-01430-LPS Document 480 Filed 02/24/22 Page 4 of 9 PageID #: 27926
`
`that Ms. Leedy would consent to production and moot the issue. Id. at Jan. 31, 2022 Email from
`
`Razick to Brown.2
`
`On February 3, 2022, Ms. Brown served Samsung with her motion for a protective order
`
`regarding both the document and deposition subpoenas. D.I. 470.3 In that motion, she confirmed
`
`that she has possession of Ms. Leedy’s deposition transcript and that it “address[es] the valuation
`
`issue” of the patents; Ms. Brown’s motion also included minor additional detail regarding the
`
`contents of that transcript. Id. ¶ 8. While paragraph 8 of Ms. Brown’s motion indicated that she
`
`attached relevant pages of Ms. Leedy’s deposition transcript as Exhibit A, Ms. Brown
`
`subsequently confirmed to Samsung that this statement was in error. Ms. Brown did not intend to
`
`include any Exhibit A or deposition transcript pages and did not do so. And on February 17, Ms.
`
`Brown served an amended motion that removes the reference to an Exhibit A and removes some
`
`of the additional detail regarding Ms. Leedy’s testimony. Ex. 1 ¶ 8. But the amended motion still
`
`makes clear that the deposition transcript “address[es] the valuation issue” of the patents and
`
`further suggests that Ms. Leedy offered, at least, her “opinion of the patents.” Id.
`
`Ms. Leedy’s deposition testimony is relevant to issues in this case, including damages. But
`
`Ms. Brown refuses to produce that transcript on the basis of attorney-client privilege and/or work-
`
`product protection (id. ¶¶ 9–12) and Ms. Leedy’s objection to its production (id. ¶¶ 5, 13). As
`
`explained below, neither is a proper basis to withhold production. And given Samsung’s
`
`willingness to take any necessary deposition via Zoom or other videoconference platform at a date
`
`
`2 As shown in this email, Samsung made clear that Ms. Leedy’s consent was not necessary, nor
`was her potential lack of consent a proper basis to withhold production.
`3 Ms. Brown provided her motion via email to counsel for Samsung and Elm on February 3, 2022.
`She subsequently asked that Samsung e-file the document on her behalf, which Samsung did on
`February 4. D.I. 470.
`
`-3-
`
`
`
`Case 1:14-cv-01430-LPS Document 480 Filed 02/24/22 Page 5 of 9 PageID #: 27927
`
`and time that is convenient for Ms. Brown, Ms. Brown’s motion with respect to a deposition should
`
`also be denied.
`
`II.
`
`ARGUMENT
`
`Ms. Brown has not shown good cause for a protective order because Samsung’s subpoenas
`
`to Ms. Brown do not subject her to “annoyance, embarrassment, oppression, or undue burden or
`
`expense.” Fed. R. Civ. P. 26(c)(1). The party requesting a protective order bears the burden of
`
`establishing good cause and must demonstrate “that disclosure will cause a ‘clearly defined and
`
`serious injury.’” Dommel Properties, LLC v. Jonestown Bank & Tr. Co., No. 1:11-cv-02316, 2013
`
`WL 4855427, at *7 (M.D. Pa. Sept. 11, 2013) (quoting Glenmede Tr. Co. v. Thompson, 56 F.3d
`
`476, 483 (3d Cir. 1995)); see also AbbVie Inc. v. Boehringer Ingelheim Int’l GmbH, No. 17-cv-
`
`1065, 2018 WL 2337133, at *1 (D. Del. May 23, 2018). Ms. Brown has not made this showing.
`
`To the extent Ms. Brown’s motion is considered a motion to quash, she has not met her
`
`heavy burden to quash the subpoenas. “The party seeking to quash the subpoena bears the burden
`
`of demonstrating that the requirements of Rule 45 are satisfied.” Robocast, Inc. v. Microsoft Corp.,
`
`No. 1:13-mc-00104-RGA, 2013 WL 1498666, at *1 (D. Del. Apr. 12, 2013) (citation and quotation
`
`marks omitted). “Courts have described this as a heavy burden.” Id.
`
`Document Subpoena. Ms. Brown’s motion should be denied. First, Ms. Leedy’s
`
`deposition transcript is relevant, as Ms. Brown’s motion acknowledges that it addresses the
`
`valuation issue of the patents, which was an issue in the divorce. Ex. 1 ¶ 8; Ex. 3 at 9, 17–18; Ex.
`
`4 at 1–3; see Pers. Audio, LLC v. Apple, Inc., No. 09-cv-111, 2011 WL 3269330, at *10 (E.D. Tex.
`
`July 29, 2011) (finding patentee’s offer to sell patent and then-pending application for $5 million
`
`relevant and worthy of “substantial weight” in determining patent damages). That the final divorce
`
`agreement did not rely on Ms. Leedy’s testimony and did not put a specific dollar value on the
`
`patents (Ex. 1 ¶ 8) does not render testimony regarding value irrelevant. Likewise, Ms. Brown’s
`
`-4-
`
`
`
`Case 1:14-cv-01430-LPS Document 480 Filed 02/24/22 Page 6 of 9 PageID #: 27928
`
`suggestion that the 2012 time period of the transcript renders it irrelevant (id. ¶ 7) is unavailing,
`
`especially because calculations of patent damages may relate to a time period many years prior to
`
`the present day. See, e.g., Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120
`
`(S.D.N.Y. 1970) (stating that factor 15 relates to an amount “at the time the infringement began.”).
`
`Second, a deposition transcript is not protected by attorney-client privilege and does not
`
`qualify as work product—regardless of whether it is filed. See Ex. 1 ¶¶ 9–12. Samsung is not
`
`aware of any authority holding otherwise, and while Ms. Brown’s motion accurately quotes a
`
`portion of Federal Rule of Evidence 502(g)(2) (id. ¶ 9), her motion does not explain how it could
`
`apply to a deposition transcript where opposing attorneys were present, testimony was recorded,
`
`etc. Ms. Brown’s motion invites the Court to determine whether work-product protection applies
`
`to this deposition transcript (id. ¶ 12), and Samsung respectfully submits that the Court should
`
`deny the motion and confirm that the deposition transcript should be produced.
`
`Finally, that Ms. Leedy—who
`
` based on
`
`the divorce agreement (Ex. 3 at 17–18)—objects to production of the document does not warrant
`
`granting Ms. Brown’s motion for a protective order. None of Ms. Brown, Ms. Leedy, or even Ms.
`
`Brown on behalf of Ms. Leedy has met the applicable standard to justify a protective order.
`
`Furthermore, documents from divorce proceedings are properly discoverable. See Bd. of Trustees
`
`of the Michigan Laborers’ Pension Fund v. Rite Way Fence, Inc., No. 14-cv-14142, 2016 WL
`
`6215982, at *4 (E.D. Mich. Oct. 25, 2016) (ordering production of deposition transcripts and
`
`exhibits from prior divorce proceeding pursuant to subpoena to divorce attorney’s law firm). To
`
`the extent that Ms. Brown is concerned about non-responsive information 4 mingled with
`
`
`4 Samsung is not seeking unrelated information regarding, for example, child custody or the value
`of homes or automobiles.
`
`-5-
`
`
`
`Case 1:14-cv-01430-LPS Document 480 Filed 02/24/22 Page 7 of 9 PageID #: 27929
`
`responsive information, Samsung is willing to meet and confer regarding possible ways to redact
`
`or otherwise not produce non-responsive information while still providing Samsung the relevant
`
`discovery.5 Ms. Leedy’s objection does not provide a basis to withhold production.
`
`Deposition Subpoena.6 Ms. Brown’s motion should be denied. First, Ms. Brown has not
`
`offered any support for her argument that the possibility that she may be asked questions that
`
`would call for her to “disclose potentially confidential settlement negotiations” means a deposition
`
`cannot proceed. Ex. 1 ¶ 17; see, e.g., U.S. v. Barrier Indus., Inc., No. 95-cv-9114 BSJ, 1997 WL
`
`97842, at *2 (S.D.N.Y. Mar. 5, 1997) (“[Federal Rule of Evidence 408] does not apply to
`
`discovery.”) (citations omitted); see also Fla. Stat. § 90.408. Second, while Samsung’s deposition
`
`subpoena did not explicitly specify a location for a deposition, Samsung is willing to proceed with
`
`a remote deposition via Zoom or other videoconferencing platform. Thus, Ms. Brown can attend
`
`any deposition from her office, home, or wherever else is convenient. Ex. 1 ¶ 16 (requesting that
`
`any deposition take place via Zoom). Finally, Ms. Brown’s complaint regarding the date of the
`
`subpoena (Ex. 1 ¶ 14) is obviated by Samsung’s willingness to schedule any deposition at a
`
`mutually agreeable date and time. And the subpoena allowed more than a month after service for
`
`the deposition, which is more than a reasonable time to comply. See, e.g., Subair Sys., LLC v.
`
`Precisionaire Sys., Inc., No. 08-cv-60570, 2008 WL 1914876, at *2 n.4 (S.D. Fla. Apr. 26, 2008)
`
`(stating that even ten days to comply with a deposition subpoena could be deemed reasonable).
`
`Even if the Court were to find that time insufficient, the solution would be to modify the time for
`
`
`5 The parties have not previously discussed this possibility because of Ms. Brown’s position that
`the entire transcript is privileged and/or work product.
`6 To the extent the Court orders Ms. Brown to produce the deposition transcript, Samsung will
`review it and further evaluate whether a deposition is necessary. But given the limited information
`Ms. Brown has provided, Samsung must maintain its deposition subpoena.
`
`-6-
`
`
`
`Case 1:14-cv-01430-LPS Document 480 Filed 02/24/22 Page 8 of 9 PageID #: 27930
`
`the deposition. See Robocast, 2013 WL 1498666, at *1 (“[T]his Court can lengthen the time frame
`
`of compliance.”).
`
`Attorney’s Fees. Ms. Brown’s motion includes a conclusory request for attorney’s fees.
`
`Ex. 1 ¶ 20. However, no attorney’s fees are warranted because Samsung took reasonable steps to
`
`avoid imposing an undue burden or expense on Ms. Brown, and Ms. Brown has not shown
`
`otherwise. Fed. R. Civ. P. 45(d)(1). As explained in this opposition, Samsung contends that Ms.
`
`Brown’s motion lacks merit and should be denied. Ms. Brown’s motion largely relies on the
`
`legally erroneous assertion that a deposition transcript is privileged or work product. Furthermore,
`
`Samsung has been working with and remains willing to work with Ms. Brown to minimize any
`
`burden, including by, for example, agreeing to a remote deposition that requires no travel. No
`
`attorney’s fees should be awarded in these circumstances.
`
`
`
`*
`
`*
`
`*
`
`For the reasons above, Samsung respectfully requests that Ms. Brown’s motion for a
`
`protective order be denied.
`
`
`
`-7-
`
`
`
`Case 1:14-cv-01430-LPS Document 480 Filed 02/24/22 Page 9 of 9 PageID #: 27931
`
`DATED: February 17, 2022
`
`
`OF COUNSEL:
`
`Allan M. Soobert
`Naveen Modi
`Phillip W. Citroen
`Koichiro Kidokoro
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, D.C. 20005
`(202) 551-1700
`allansoobert@paulhastings.com
`naveenmodi@paulhastings.com
`phillipcitroen@paulhastings.com
`koichirokidokoro@paulhastings.com
`
`Yar R. Chaikovsky
`Philip Ou
`Joseph J. Rumpler, II
`PAUL HASTINGS LLP
`1117 California Avenue
`Palo Alto, CA 94304
`(650) 320-1800
`yarchaikovsky@paulhastings.com
`philipou@paulhastings.com
`josephrumpler@paulhastings.com
`
`Elizabeth L. Brann
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`(858) 458-3000
`elizabethbrann@paulhastings.com
`
`Soyoung Jung
`PAUL HASTINGS LLP
`515 S. Flower Street, 25th Floor
`Los Angeles, CA 90071
`(213) 683-6000
`soyoungjung@paulhastings.com
`
`
`
`Respectfully submitted,
`
`
`YOUNG CONAWAY STARGATT &
`TAYLOR, LLP
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Pilar G. Kraman (No. 5199)
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`(302) 571-6600
`apoff@ycst.com
`pkraman@ycst.com
`Attorneys for Defendants Samsung Electronics
`Co., Ltd., Samsung Semiconductor, Inc.,
`Samsung Electronics America, Inc., and
`Samsung Austin Semiconductor, LLC
`
`-8-
`
`