Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 1 of 12 PageID 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`
`In re Chien-Min Sung Subpoena Upon 3M
`Company
`
`C.A. No. 6:23-mc-2
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`CHIEN-MIN SUNG’S MEMORANDUM OF LAW IN SUPPORT OF HIS MOTION TO
`COMPEL 3M COMPANY’S RESPONSE TO SUBPOENA
`
`Dated: November 27, 2023
`
`Alex Chan
`Texas Bar No. 24108051
`DEVLIN LAW FIRM LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Telephone: (302) 449-9010
`achan@devlinlawfirm.com
`
`Counsel for Plaintiff
`Chien-Min Sung
`
`IPR2024-00535
`Samsung Electronics Co. Ltd. et al v. Chien-Min Sung
`Samsung's Exhibit 1044
`Ex. 1044, Page 1
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`

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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 2 of 12 PageID 2
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`I.
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`INTRODUCTION
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`Movant Dr. Chien-Min Sung (“Dr. Sung”) hereby moves the Court to compel
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`Respondent 3M Company (“3M”) to produce documents and testimony responsive to the
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`subpoena issued to 3M (“Motion”) in Chien-Min Sung v. Texas Instruments, Inc., No. 4:23-cv-
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`753-SDJ, pending in the U.S. District Court for the Eastern District of Texas (“Subpoena”), and
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`more specifically, to substantially complete its document production within one week of the
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`Court’s ruling and to produce its corporate witness for deposition within a week thereafter. Dr.
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`Sung, a 76-years-old individual inventor with limited financial resources, also moves the Court
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`to award him reasonable expenses, including attorney’s fees and costs, incurred by Dr. Sung in
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`compelling 3M to comply with the Subpoena.
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`The Subpoena to 3M names 3M’s own manufacturing facility in the Northern District of
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`Texas as the place of compliance; yet, 3M intentionally disregarded this fact and filed a Motion
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`to Quash in the District of Minnesota, which remains pending as of the date of this Motion, fully
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`knowing that its challenge to the Subpoena should have been brought in this District. 3M has
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`failed to meet its burden to show that the Subpoena is unduly burdensome or unreasonable
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`because 3M has not identified any deficiency in the Subpoena itself; instead, 3M complains only
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`that it wants more time to respond to the Subpoena and does not wish to commit to any timeline
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`or date on which to fully comply with the Subpoena. Rule 45 does not offer 3M any relief
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`because 3M had already been given 14 days (and counting) to comply with the Subpoena. Dr.
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`Sung had also offered 3M more than five weeks to produce responsive documents and more than
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`seven weeks to produce deposition testimony beyond the noticed date of November 17, 2023,
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`which 3M twice rejected.
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`1
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`EX1044, Page 2
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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 3 of 12 PageID 3
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`Further, 3M’s protestations based on the purported unavailability of a single, unidentified
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`witness and the upcoming holiday season are insufficient to resist compliance. 3M cannot
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`postpone discovery indefinitely simply because it is inconvenient to 3M.
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`II.
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`PROCEDURAL POSTURE
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`On November 3, 2023, Dr. Sung issued a third-party subpoena on 3M seeking documents
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`and depositions (the “Subpoena”) related to a pending action in the United States District Court
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`for the Eastern District of Texas, Chien-Min Sung v. Texas Instruments Incorporated, 4:23-cv-
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`00753-SDJ (E.D. Tex.) (“EDTX Litigation”). (See Ex. 1.) 1 Rather than responding to the
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`Subpoena by the noticed deadline of November 17, 2023, 3M claimed that it was not provided
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`sufficient time to respond. (See Ex. 2 at 4.) But 3M was given 14 days to comply with the
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`Subpoena (Ex. 1 at 4)—a timeline that falls well within what many courts have considered
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`presumptively reasonable for compliance by third parties. See Cellspin Soft, Inc. v. FitBit, Inc.,
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`Case No. 17-cv-05928-YGR (KAW), slip op. at 5 (N.D. Cal. Sep. 13, 2021) (“Courts, however,
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`have regularly held that at least ten days is a reasonable time to comply for a Rule 45
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`subpoena.”); see also Elliot v. Mission Tr. Servs., LLC, No. 14 C 9625-JNC, 2015 U.S. Dist.
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`LEXIS 45412, at *14 (N.D. Ill. Apr. 7, 2015) (citing a string of supporting cases in various
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`courts and districts) (“Fed. R. Civ. P. 45(d)(2)(B) suggests that 14 days is the benchmark for time
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`for compliance; and courts have found that fourteen days from the date of service is
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`presumptively reasonable”).
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`Rather than using this time to gather documents and prepare its corporate witness(es) for
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`deposition, 3M chose to disregard its discovery obligation and instead improperly moved to
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`1 All references to Exhibits in this Motion are to Exhibits to the co-filed Declaration of Alex Chan
`in Support of Movant Dr. Chien-Min Sung’s Motion to Compel 3M Company’s Response to
`Subpoena (“Chan Decl.”).
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`2
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`EX1044, Page 3
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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 4 of 12 PageID 4
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`quash the Subpoena in the United States District Court for the District of Minnesota (“Minnesota
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`Motion”). In re Chien-Min Sung Subpoena Upon 3M Company, C.A. No. 23-mc-00104-JFD (D.
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`Minn.). The 14-day deadline continues to accrue while this Motion (as well as the Minnesota
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`Motion) remains pending, which affords 3M even more time to prepare and respond to the
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`Subpoena. As of the date of filing this Motion, 3M still has refused to identify a date on which
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`to produce the requested documents or make its corporate designee available for deposition.
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`III. ARGUMENT
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`A.
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`This Court Has Jurisdiction Over the Subpoena
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`3M contends that the District of Minnesota, not this Court, has jurisdiction over the
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`Subpoena because it “does not contemplate producing any one for a deposition who resides or
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`works in Texas.” (Ex. 4 at 10.) Rule 45 states that “[o]n timely motion, the court for the district
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`where compliance is required must quash or modify a subpoena . . .” that fails to meet the rule’s
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`requirements. Fed. R. Civ. P. 45(d)(3). 3M does not dispute that the place of compliance on the
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`face of the Subpoena for both responsive documents and testimony is 3M’s own manufacturing
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`facility in the Northern District of Texas (i.e., Brownwood, Texas) where 3M regularly transacts
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`business. (See Ex. 4 at 10.) This Court therefore has jurisdiction over the Subpoena under Rule
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`45. CSS, Inc. v. Herrington, Case No. 17-71, 354 F. Supp. 3d 702, 2017 WL 4750707, at *5-6
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`(N.D. Tex. Oct. 20, 2017) (“This Court takes the position that, for the purposes of a Rule
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`45(d)(2) or 45(d)(3) motion, the court or district ‘where compliance is required’ is determined by
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`the location or ‘place’ for compliance identified on the subpoena as required by Rule
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`45(a)(1)(A)(iii).”).
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`Rule 45 does not set the “place of compliance” based on who a subpoenaed party
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`designates as a corporate witness and where that corporate witness “resides or works.” If it were,
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`3
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`EX1044, Page 4
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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 5 of 12 PageID 5
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`any third party could easily avoid complying with a properly served subpoena simply by
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`designating a witness outside the “place of compliance” to testify.
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`Additionally, 3M does not dispute that Dr. Sung’s Subpoena was properly served. Nor
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`does 3M contend that it could not designate a witness outside of the District of Minnesota to
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`testify pursuant to the Subpoena, and for good reason—3M is free to designate and prepare any
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`corporate witness who can bind the company, including individuals inside and outside of this
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`District. Nothing in Rule 45, nor the Subpoena itself, mandates 3M to designate a witness who
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`must reside or work in the District of Minnesota. That 3M chose to designate a witness in that
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`District does not unilaterally shift the enforcement power over the Subpoena to a court in that
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`district and somehow remove this Court’s jurisdiction explicitly authorized under Rule 45, as 3M
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`advocates. It is simply “frivolous” for 3M to rest its jurisdictional argument solely on where 3M
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`purports to designate its corporate witness for deposition while disregarding Brownwood, Texas
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`as the place of compliance in the Subpoena. Textile Computer Systems, Inc. v. Broadway
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`National Bank d/b/a/ Broadway Bank, et. al., Case No. 6:21-cv-1050-ADA, at *4 (W.D. Tex.
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`Nov. 9, 2022) (citing Fed. R. Civ. P. 45(d)(3) and cases in other districts) (“Unified’s frivolous
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`motion in California is no bar to this Court ruling. One day before a scheduled meet and confer,
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`Unified filed an anticipatory motion to quash in the Northern District of California. That motion
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`is frivolous: because the subpoenas specify Waco as the place of compliance, this Court is the
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`proper forum for a motion to quash.)
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`B.
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`There is No Legal Basis for 3M to Not Comply with the Subpoena
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`1.
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`The Subpoena Gave 3M Fourteen (14) Days to Respond, Which Many
`Courts Consider Presumptively Reasonable
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`In the Minnesota Motion, 3M does not identify any substantive problems in complying
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`with the Subpoena’s requests for document production or noticed deposition topics, nor does it
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`4
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`EX1044, Page 5
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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 6 of 12 PageID 6
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`cite to any specific topics or discovery requests as being substantively improper. Rather, 3M’s
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`only basis for resisting compliance is its contention that it has not been provided sufficient time
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`to comply with the Subpoena. 3M, however, had already been given 14 days to comply—a
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`timeline that falls well within what many courts have considered presumptively reasonable for
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`compliance by third parties. See Cellspin Soft, Inc. v. FitBit, Inc., Case No. 17-cv-05928-YGR
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`(KAW), slip op. at 5 (N.D. Cal. Sep. 13, 2021) (“Courts, however, have regularly held that at
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`least ten days is a reasonable time to comply for a Rule 45 subpoena.”); see also Elliot v. Mission
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`Tr. Servs., LLC, No. 14 C 9625-JNC, 2015 U.S. Dist. LEXIS 45412, at *14 (N.D. Ill. Apr. 7,
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`2015) (citing a string of supporting cases in various courts and districts) (“Fed. R. Civ. P.
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`45(d)(2)(B) suggests that 14 days is the benchmark for time for compliance; and courts have
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`found that fourteen days from the date of service is presumptively reasonable”). This 14-day
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`timeline continues to accrue while this Motion remains pending, which affords 3M even more
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`time to prepare and respond to the Subpoena.
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`Despite multiple meet-and-confers between the parties, 3M had repeatedly refused to
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`identify a firm date on which to produce the requested documents and deposition testimony.
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`3M’s intent is clear—it wants to use its immense financial and legal resources to impose an
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`indefinite delay on meeting its discovery obligation without regard to Rule 45 while imposing
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`undue prejudice on Dr. Sung, an inventor over the age of 75 with limited financial resources
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`(Chan Decl. at ¶ 4), from receiving the necessary third-party discovery from 3M to show
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`infringement by the defendant in the EDTX Litigation that uses 3M’s pad conditioners in
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`manufacturing that defendant’s accused products.
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`For example, during the parties’ meet and confer on November 14, 2023, 3M made it
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`clear to Dr. Sung that it was unwilling to provide a firm commitment to produce documents and
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`5
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`EX1044, Page 6
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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 7 of 12 PageID 7
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`witnesses by a certain date—a point raised by Dr. Sung in a follow-up correspondence (See Ex. 2
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`at 4 (“While Dr. Sung is willing to work with 3M and agree to an extension where possible, Dr.
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`Sung is unable to do so without a firm commitment from 3M to produce documents and
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`witnesses by a certain date.”).) On November 21, 2023, when prompted during the parties’ meet
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`and confer regarding this Motion, 3M “again refused to provide a date certain as to when 3M
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`would comply with the subpoena.” (Ex. 5 at 1.)
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`3M cites “school breaks, the holiday season, and year-end activities” (Ex. 4 at 12) as its
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`purported justification to resist compliance of the Subpoena by the compliance deadline. None
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`of these events and activities are legally recognized reasons to escape discovery obligations. If
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`they were, it is difficult to imagine a scenario in which a court could deny a motion to quash
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`where the subpoenaed party simply cites to summer/winter vacation or holidays to resist
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`compliance. But what makes 3M’s refusal to comply even more egregious in this case is that 3M
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`attempts to delay compliance by at least two months and beyond. 3M was served with the
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`Subpoena on November 3, 2023, and the holiday season does not end until January 1, 2024 at the
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`earliest. If the celebration of Epiphany is included, the pause would last even longer, until
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`January 5, 2024. But as will be discussed below, 3M had already rejected any effort to comply
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`with the Subpoena by early January of 2024, all but reinforces 3M’s intent to indefinitely delay
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`discovery by Dr. Sung.
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`2.
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`Dr. Sung Had, in Good Faith, Offered 3M Five Additional Weeks to
`Produce Documents and Seven Additional Weeks for Corporate
`Deposition, Which 3M Summarily Rejected
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`In response to 3M’s claim that it could not comply with the noticed deadline, Dr. Sung
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`initially offered to extend 3M’s deadline to produce responsive documents by December 15,
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`2023 (i.e., four additional weeks beyond the date of compliance on November 17, 2023). (Ex. 2
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`at 4.) 3M rejected this proposal. As a good faith compromise, Dr. Sung offered 3M another
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`6
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`EX1044, Page 7
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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 8 of 12 PageID 8
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`week to produce responsive documents by December 22, 2023 (five additional weeks beyond the
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`date of compliance on November 17, 2023) and to produce relevant testimony by January 5,
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`2024 (i.e., seven additional weeks beyond the date of compliance). (Id. at 2.) 3M again rejected
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`this proposal. (Id.) Dr. Sung had also offered to meet and confer with 3M to discuss the
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`document requests and deposition topics during the week of November 13 and the week of
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`November 20. (See id. at 3 (Dr. Sung “mentioned that we are available to meet and confer with
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`3M this week as well as next week”).) 3M summarily rejected this proposal. (See Ex. 5 at 1
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`(“Plaintiff again proposed at today’s meet and confer as well as the one held last Thursday, that
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`the parties meet and confer today and tomorrow as well as anytime next week in the event 3M
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`requires clarification as to the nature and scope of any of Dr. Sung’s document requests and
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`deposition topics—a proposal 3M rejected twice.”).) Beyond its mere representation that it
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`needs time to negotiate objections and prepare witnesses, 3M never cooperated and had offered
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`no legitimate reason why it could not meet its discovery obligation and comply with the
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`Subpoena under this proposed extended schedule (or in between “school breaks, the holiday
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`season, and year-end activities”), particularly where Dr. Sung had made good faith efforts to
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`accommodate 3M at every turn.
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`Even if 3M was not willing to comply with the Subpoena due to Thanksgiving in
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`November and Christmas in December, 3M made no attempt to explain why it cannot produce
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`responsive documents in between those dates. 3M also never explained why it is unable to
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`prepare and produce a witness for deposition after the New Year on January 5, 2024. Dr. Sung
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`had given 3M reasonable time to comply, and then some. The notion that 3M, the subpoenaed
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`party, be given time to comply with the Subpoena should not be an open-ended license to delay
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`discovery indefinitely.
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`7
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`EX1044, Page 8
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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 9 of 12 PageID 9
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`For at least these reasons, should the Court retain jurisdiction over the Subpoena, deny
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`3M’s Motion, and grant Dr. Sung’s Cross Motion, it is respectfully requested that the Court
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`compel 3M to produce all responsive documents within a week of its ruling and avail a corporate
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`witness for deposition within two weeks of that ruling.
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`3.
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`3M Claims an “Impossible Burden” But Provides No Elements On
`Which the Court Could Determine Whether any Undue Burden
`Exists
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`3M argues that the Subpoena “imposes an impossible burden upon 3M Company,”
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`(Minnesota Motion at 11) but declines to identify with any specificity how the Subpoena is
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`unduly burdensome other than for the same reasons it argues that it provides insufficient time to
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`respond. The existence of other personal or business commitments during the time for
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`compliance with the Subpoena does not constitute undue burden. See VP Sales v. Guerra et al.,
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`No. 2:22-cv-00224, slip op. at 2 (S.D. Tex. May 17, 2023) (finding that a deponent’s status as the
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`“only person able to provide transportation to school for her young children” did not constitute
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`an undue burden.). 3M’s claim that “it is difficult for a non-party to produce an adequately
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`prepared Rule 30(b)(6) designee on two-weeks’ notice” (Ex. 4 at 11) is disingenuous because, as
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`alluded to above, this 14-day timeline is presumptively reasonable and that Dr. Sung had already
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`offered to extend 3M’s deadline for both document production and deposition testimony by more
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`than five and seven weeks, respectively, which 3M summarily rejected.
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`Nor do 3M’s concerns regarding the Protective Order constitute an undue burden. The
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`Protective Order in force in the overarching lawsuit explicitly limits access to Confidential
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`Information to Qualified Persons which are defined as outside counsel of record for the parties,
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`their employees and the court. Dr. Sung has also agreed to treat any information designated by
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`3M as confidential information as Protected Documents under the Protective Order and to limit
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`their disclosure to counsel for TI and its employees and the Court accordingly. That is more than
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`8
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`EX1044, Page 9
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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 10 of 12 PageID 10
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`sufficient to address any potential concerns regarding confidential information in 3M’s
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`possession, custody or control that is responsive to the Subpoena.
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`4.
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`3M Does Not Identify Its Purportedly Essential Witness Nor Explain
`Why No Alternative Witness Is Available
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`3M also attempts to excuse itself from its obligations pursuant to the Subpoena based on
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`the purported unavailability of its corporate designee. (Ex. 4 at 11.) As an initial matter, the fact
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`that 3M has identified a witness who will serve as corporate designee contradicts 3M’s claims
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`that it cannot prepare within the ample time remaining under the current schedule or Dr. Sung’s
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`proposed extended schedule. More importantly, Rule 45 does not recognize the unavailability of
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`an individual witness as a reason to indefinitely delay compliance with a subpoena. There is no
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`legitimate reason for a large and sophisticated corporation like 3M to justify delaying
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`compliance based on the unavailability of a single witness when 3M does not dispute that there
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`are other witnesses who are available for deposition during this time period.
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`Additionally, 3M’s reliance on the unspecified “personal commitments” (Ex. 4 at 8) of
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`this unidentified corporate representative should not be taken at face value. While 3M states that
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`“the individual would most likely designate for any deposition is unavailable until early next
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`year” (Ex. 4 at 8), 3M does not provide any basis for the Court to understand why the person
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`alluded to is an essential witness, including such basic information as the person’s name and title
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`while working at 3M.
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`Moreover, 3M also does not represent that there are no other witnesses who have relevant
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`knowledge and documents. In fact, 3M’s email communications refer to the need for 3M
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`Company “to prepare any designee” (Ex. 2 at 3), which suggests that 3M does not intend to rely
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`on a single designee for all of the deposition topics. If that is the case, then the unavailability of
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`a single witness does not explain why testimony cannot be timely provided on all other topics for
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`9
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`EX1044, Page 10
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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 11 of 12 PageID 11
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`which 3M will designate a different witness.
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`Finally, without any explanation of why 3M’s mystery designee is “the individual most
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`likely able to help 3M Company and its attorneys understand the issues” (Ex. 4 at 11) or the
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`subjects on which he has personal knowledge, Dr. Sung and this Court are without any basis to
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`understand why this witness’s testimony is essential or why he cannot be substituted or replaced
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`by a different witness unencumbered by the same set of personal commitments.
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`It is axiomatic that the selected corporate designee need not be the most knowledgeable
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`person—and, in fact, does not need any personal knowledge of the noticed topics as long as the
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`selected corporate designee is adequately prepared to provide corporate testimony that binds the
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`subpoenaed party. 3M cannot manufacture an undue burden where none exists based on a single
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`employee’s unavailability, particularly where it has made no showing that there are no other
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`corporate designees available who could take his place and where 3M, a publicly traded
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`company, has more than a single employee in its manufacturing facility in Brownwood, Texas.
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`IV. CONCLUSION
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`For all of the foregoing reasons, this Court should grant this Motion and compel 3M to
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`substantially complete production of all responsive documents within a week of the Court’s
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`ruling and to produce relevant testimony within two weeks of the Court’s ruling.
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`10
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`EX1044, Page 11
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`Case 6:23-mc-00002-BU Document 1 Filed 11/27/23 Page 12 of 12 PageID 12
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`Dated: November 27, 2023
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`
`
`s/ Alex Chan
`Alex Chan
`Texas Bar No. 24108051
`DEVLIN LAW FIRM LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Telephone: (302) 449-9010
`Facsimile: (302) 353-4251
`achan@devlinlawfirm.com
`
`Attorneys for Movant
`CHIEN-MIN SUNG
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`11
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`EX1044, Page 12
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`Case 6:23-mc-00002-BU Document 1-1 Filed 11/27/23 Page 1 of 2 PageID 13
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`
`
`
`In re Chien-Min Sung Subpoena Upon 3M
`Company
`
`C.A. No. 6:23-mc-2
`
`
`
`
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`
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`DECLARATION OF ALEX CHAN IN SUPPORT OF MOVANT CHIEN-MIN SUNG’S
`MOTION TO COMPEL 3M COMPANY’S RESPONSE TO SUBPOENA
`
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`I, Alex Chan, Esq., declare as follows:
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`1.
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`I am a partner at the Devlin Law Firm LLC. I am currently in good standing and
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`licensed to practice in the State of Texas and the District Court for the Northern District of
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`Texas.
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`2.
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`I am counsel of record for Movant Dr, Chien-Min Sung (“Dr. Sung”) in this
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`action, and make this Declaration in support of Dr. Sung’s contemporarily-filed Motion to
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`Compel 3M Company’s (“3M”) Response to Subpoena.
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`3.
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`The facts set forth herein are true to my personal knowledge, and if called upon to
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`testify thereto, I could and would competently do so under oath.
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`4.
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`5.
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`I attest that Dr. Sung was born in 1947 and has limited financial resources.
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`Attached as Exhibit 1 to this Declaration is true and correct copy of the Subpoena
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`served by Dr. Sung on 3M, dated November 3, 2023.
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`6.
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`Attached as Exhibit 2 to this Declaration is true and correct copy of an email
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`chain between counsel for Dr. Sung and counsel for 3M Company dated between November 14
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`and 16, 2023.
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`1
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`EX1044, Page 13
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`Case 6:23-mc-00002-BU Document 1-1 Filed 11/27/23 Page 2 of 2 PageID 14
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`7.
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`Attached as Exhibit 3 to this Declaration is true and correct copy of Dr. Sung’s
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`Opposition to 3M’s Motion to Quash the Subpoena in the United States District Court for the
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`District of Minnesota. In re Chien-Min Sung Subpoena Upon 3M Company, C.A. No. 23-mc-
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`00104-JFD (D. Minn.).
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`8.
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`Attached as Exhibit 4 to this Declaration is true and correct copy of 3M’s Motion
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`to Quash the Subpoena in the United States District Court for the District of Minnesota. In re
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`Chien-Min Sung Subpoena Upon 3M Company, C.A. No. 23-mc-00104-JFD (D. Minn.).
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`9.
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`Attached as Exhibit 5 to this Declaration is true and correct copy of an email
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`chain between counsel for Dr. Sung and counsel for 3M Company dated between November 20
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`and 21, 2023.
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`
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`I declare under penalty of perjury under the laws of the United States that to the best of
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`my knowledge and recollection the foregoing is true and correct.
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`Executed this 27th day of November, 2023.
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`/s/ Alex Chan
`Alex Chan
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`2
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`EX1044, Page 14
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`Case 6:23-mc-00002-BU Document 1-2 Filed 11/27/23 Page 1 of 31 PageID 15
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`EXHIBIT 1
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`EX1044, Page 15
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`Case 6:23-mc-00002-BU Document 1-2 Filed 11/27/23 Page 2 of 31 PageID 16
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
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`CHIEN-MIN SUNG,
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`
`
`
`v.
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`Plaintiff,
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`C.A. No. 4:23-cv-00753-SDJ
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`DEMAND FOR JURY TRIAL
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`TEXAS INSTRUMENTS INCORPORATED
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`
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`Defendant.
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`
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`NOTICE OF SERVICE OF SUBPOENA TO TESTIFY AT A DEPOSTION
`AND FOR PRODUCTION OF DOCUMENTS ON 3M COMPANY
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`TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
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`PLEASE TAKE NOTICE that pursuant to Rule 45 of the Federal Rules of Civil
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`
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`Procedure, Plaintiff CHIEN-MIN SUNG (“Dr. Sung” or “Plaintiff”) intends to serve a subpoena
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`to testify at a deposition and for the production of documents on 3M Company (“3M”). A copy
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`of the subpoena is attached hereto.
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`Pursuant to Rule 45 of the Federal Rules of Civil Procedure, Plaintiff respectfully
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`requests that on or before November 17, 2023, Saesol produce the documents described in
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`Attachment A of the attached Subpoena to Plaintiff either electronically or at 4501 Highway 377
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`South Brownwood, Texas 76804. Additionally, Plaintiff requests that on December 1, 2023, or
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`such other date as mutually agreed upon, 3M appear to testify at a deposition on topics described
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`in Attachment A either remotely via videoconference, at 4501 Highway 377 South Brownwood,
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`Texas 76804, or at a location to be agreed.
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`1
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`EX1044, Page 16
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`

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`Case 6:23-mc-00002-BU Document 1-2 Filed 11/27/23 Page 3 of 31 PageID 17
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`
`
`/s/ Alex Chan
`Alex Chan  
`achan@devlinlawfirm.com   
`DEVLIN LAW FIRM LLC 
`1526 Gilpin Avenue 
`Wilmington, Delaware 19806 
`Telephone: (302) 449-9010 
`Facsimile: (302) 353-4251 
`
`Attorney for Plaintiff, 
`Dr. Chien-Min Sung
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`
`
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`Dated: November 3, 2023
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`By:
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`2
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`EX1044, Page 17
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`

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`Case 6:23-mc-00002-BU Document 1-2 Filed 11/27/23 Page 4 of 31 PageID 18
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the above and foregoing document has
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`been served on all counsel of record via email on November 3, 2023.
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`
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`
`/s/ Alex Chan
`Alex Chan
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`
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`3
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`EX1044, Page 18
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`

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`Case 6:23-mc-00002-BU Document 1-2 Filed 11/27/23 Page 5 of 31 PageID 19
`AO 88A (Rev.
`/
`) Subpoena to Testify at a Deposition in a Civil Action
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`UNITED STATES DISTRICT COURT
`for the
` Eastern District of Texas
`__________ District of __________
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`Civil Action No.
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`))))))
`
`Plaintiff
`v.
`
`Defendant
`
`SUBPOENA TO TESTIFY AT A DEPOSITION IN A CIVIL ACTION
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`To:
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`(Name of person to whom this subpoena is directed)
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`Place:
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`Date and Time:
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`The deposition will be recorded by this method:
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`Production: You, or your representatives, must also bring with you to the deposition the following documents,
`electronically stored information, or objects, and must permit inspection, copying, testing, or sampling of the
`material:
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`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.
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`Date:
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`CLERK OF COURT
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`OR
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`Signature of Clerk or Deputy Clerk
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`Attorney’s signature
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`The name, address, e-mail address, and telephone number of the attorney representing (name of party)
`, who issues or requests this subpoena, are:
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`Notice to the person who issues or requests this subpoena
`If this subpoena commands the production of documents, electronically stored information, or tangible things before
`trial, 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).
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`EX1044, Page 19
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`

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`Case 6:23-mc-00002-BU Document 1-2 Filed 11/27/23 Page 6 of 31 PageID 20
`AO 88A (Rev.
`2/
`) Subpoena to Testify at a Deposition in a Civil Action (Page 2)
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`Civil Action No.
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`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
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`I received this subpoena for (name of individual and title, if any)
`.
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`on (date)
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`I served the subpoena by delivering a copy to the named individual as follows:
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`I returned the subpoena unexecuted because:
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`on (date)
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`; or
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`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
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`$
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`.
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`My fees are $
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`for travel and $
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`for services, for a total of $
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`.
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`.
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`I declare under penalty of perjury that this information is true.
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`Date:
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`Server’s signature
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`Printed name and title
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`Server’s address
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`Additional information regarding attempted service, etc.:
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`EX1044, Page 20
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`

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`Case 6:23-mc-00002-BU Document 1-2 Filed 11/27/23 Page 7 of 31 PageID 21
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`ATTACHMENT A
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`You are hereby subpoenaed and commanded to appear to testify and produce the
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`documents as requested below:
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`DEFINITIONS
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`When used in the below topics, the following definitions apply:
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`1.
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`“3M,” “You,” or “Your” shall each mean and refer, individually and collectively,
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`to 3M Company, and all of its corporate locations, and all predecessors, successors, assigns,
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`parents, subsidiaries and divisions, affiliates, partners; and all past and present directors, officers,
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`employees, agents, and representatives (including accountants, consultants, and attorneys) of any
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`of the foregoing, and all persons acting, or purporting to act, on their behalf.
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`2.
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`“Action” shall mean Chien-Min Sung v. Texas Instruments Incorporated, 4:23-cv-
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`00753-SDJ (E.D. Tex.).
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`3.
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`“TI” shall mean Texas Instruments Incorporated, as well as all predecessors,
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`successors, assigns, parents, subsidiaries and divisions, affiliates, partners of any of the
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`foregoing, and all persons acting, or purporting to act, on behalf of any of the foregoing.
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`4.
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`“Samsung” shall mean Samsung Electronics Co. LTD., Samsung Electronics
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`America, Inc., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor LLC, as well
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`as all predecessors, successors, assigns, parents, subsidiaries and divisions, affiliates, partners of
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`any of the foregoing, and all persons acting, or purporting to act, on behalf of any of the
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`foregoing.
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`5.
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`6.
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`“Defendant” or “Defendants” shall mean TI and Samsung.
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`“Asserted Patents” shall mean U.S. Patent Nos. 9,138,862 (“’862 Patent”),
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`9,724,802 (“’802 Patent”), and 8,974,270 (“’270 Patent”).
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`A - 1
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`EX1044, Page 21
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`

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`Case 6:23-mc-00002-BU Document 1-2 Filed 11/27/23 Page 8 of 31 PageID 22
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`7.
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`“CMP” shall mean any chemical mechanical polishing or planarization for cutting,
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`leveling, polishing, planarizing, and/or otherwise smoothing the surfaces, films, or layers of
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`semiconductor wafers or substrates during, for example, the manufacture, fabrication, assembly
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`and/or production of semiconductor systems, devices, components, and/or integrated circuits, such
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`as
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`that described on Your website at https://www.3m.com/3M/en_US/semiconductor-
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`us/solutions/cmp-materials.
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`8.
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`“Polishing pad” shall mean any disk, pad, substrate, device, tool, or system used to
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`polish, planarize, or smoothen a surface, film, or layer of a semiconductor wafer or substrate during
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`CMP,
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`as
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`described,
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`for
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`example,
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`on
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`Your
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`website
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`at
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`https://www.3m.com/3M/en_US/p/c/electronics-components/cmp-materials/cmp-
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`pads/i/electronics/semiconductor/.
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`9.
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`“Pad Conditioner” or “Pad Dresser” shall mean any disk, pad, substrate, device,
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`tool, or system used to cut, level, smoothen, dress, or condition a surface, film, or layer of a
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`Polishing Pad in order to, for example, minimize pad wear and maintain consistent or uniform
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`asperities of
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`the Polishing Pad, as described,
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`for example, on Your website at
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`https://www.3m.com/3M/en_US/semiconductor-us/solutions/cmp-materi