Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 1 of 21
`Case 5:20-cv-05676—EJD Document 13-6 Filed 09/01/20 Page 1 of 21
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`EXHIBIT F
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`EXHIBIT F
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`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 2 of 21
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`YAR R. CHAIKOVSKY (SB# 175421)
`yarchaikovsky@paulhastings.com
`PHILIP OU (SB# 259896)
`philipou@paulhastings.com
`JOSEPH J. RUMPLER, II (SB# 296941)
`josephrumpler@paulhastings.com
`BERKELEY FIFE (SB# 325293)
`berkeleyfife@paulhastings.com
`BORIS LUBARSKY (SB# 324896)
`borislubarsky@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, California 94304-1106
`Telephone: 1(650) 320-1800
`Facsimile: 1(650) 320-1900
`Attorneys for Plaintiff
`APPLIED MATERIALS, INC.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`APPLIED MATERIALS, INC.,
`Plaintiff,
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`vs.
`DEMARAY LLC,
`
`Defendant.
`
`CASE NO. 5:20-cv-05676
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
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`FIRST AMENDED COMPLAINT FOR
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`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 3 of 21
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`NATURE OF THE ACTION
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`1.
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`This is an action for a declaratory judgment of noninfringementrelief arising under the
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`patent laws of the United States, Title 35 of the United States Code. Applied Materials, Inc.
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`(“Applied”) requests this reliefbrings the instant action because Defendant Demaray LLC
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`(“Demaray”) has filed lawsuits alleging that certain customers of Applied’s customers infringe
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`United States Patent Nos. 7,544,276 and 7,381,657 (the “Asserted Patents”) by, for example,
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`“making, using, offering to sell, selling, supplying or causing to supply using “semiconductor
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`manufacturing equipment including reactive magnetron sputtering reactors” also identified in the
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`complaints as “frommanufactured by Applied Materials, Inc.”. True and correct copies of these
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`complaints against Applied’s customers are attached as Exhibits A and B. Demaray’s lawsuits
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`hasagainst Applied’s customers have placed a cloud onover Applied’s products; threatened
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`Applied’s business and relationships with its customers and partners, as well as itsthe sales of its
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`reactors; and created a justiciable controversy between Applied and Demaray.
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`2.
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`Therefore, Applied requests declaratory relief as follows: (1) a declaratory judgment that
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`Applied’s products do not infringe the Asserted Patents because they do not meet each and every
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`limitation of any asserted claim; (2) declaratory judgment that Applied’s products cannot infringe
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`the Asserted Patents because the rights of named inventor, Mukundan Narasimhan
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`(“Narasimhan”), in the Asserted Patents were assigned to Applied, making Applied at least a
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`co-owner of the Asserted Patents that has not joined and will not join Demaray in alleging
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`infringement of the Asserted Patents; and (3) declaratory judgment that Applied’s products
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`cannot infringe because Applied has a license to use the Asserted Patents by reason of a license
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`granted to at least Applied Komatsu Technology (“AKT”) and Applied Komatsu Technology
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`America, Inc. (“AKTA”) (collectively “Applied Komatsu”), affiliates of Applied, by Demaray’s
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`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 4 of 21
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`predecessor company, Symmorphix, Inc. (“Symmorphix”) covering the Asserted Patents; or
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`alternatively, declaratory judgment that Applied’s products cannot infringe the Asserted Patents
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`because the rights of one or more of the other named inventors of the Asserted Patents were
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`assigned to AKTA, making AKTA at least a co-owner of the Asserted Patents that has not been
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`joined and will not join Demaray in alleging infringement of the Asserted Patents.
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`THE PARTIES
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`3.
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`2. Plaintiff Applied Materials, Inc. (“Applied”) is a corporation organized and existing
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`under the laws of the state of Delaware, with its principal place of business at 3050 Bowers
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`Avenue, Santa Clara, CA 95054-3299. Applied is a leader in materials engineering solutions that
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`creates technology and products used for semiconductor fabrication, including but not limited to
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`reactors in the “Endura” product line.
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`4.
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`3. Defendant Demaray LLC (“Demaray”) is a limited liability company organized and
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`existing under the laws of the state of Delaware. Dr. Richard Ernest Demaray is the founder of
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`Demaray LLC. Dr. Demaray is also one of the named inventors on the Asserted Patents. Dr.
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`Demaray describes Demaray LLC as a “Silicon Valley, CA” company which “[is] about the
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`portfolio of my patents.”1
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`JURISDICTIONAL STATEMENT
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`5.
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`4. This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201, and under the
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`patent laws of the United States, 35 U.S.C. §§ 1-390.
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`6.
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`5. This Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331,
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`1338(a), and 2201(a).
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`1 https://www.edemaray.com/bios.html
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`7.
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`6. This Court has personal jurisdiction over Demaray. Among other things, Demaray has
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`continuous and systematic business contacts with Northern California. Demaray’s “founder and
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`president,” Dr. Demaray, describes Demaray as a “Silicon Valley, CA” company:2
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`On information and belief, according to Demaray’s website, several of the Board members and
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`employees of Demaray are from and/or based in Northern California.3 Under its “Partners”
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`sub-page, Demaray’s website lists the University of California at Santa Cruz as one of its primary
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`partners, and claims that “Professor Kobayashi of UCSC is working with Demaray LLC to
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`further develop the Sun2Fiber technology with a grant from ARPA-E.”4 Further, on information
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`and belief, the technology underlying the Asserted Patents was allegedly developed in Northern
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`California.
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`8.
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`7. In addition, this Court has personal jurisdiction over Demaray because Demaray has
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`purposefully directed into California its enforcement activities regarding the Asserted Patents.
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`As referenced above, Demaray has filed complaints against Intel (headquartered in Northern
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`2 https://www.edemaray.com/bios.html; https://www.linkedin.com/in/ernestdemarayphd/
`3 https://www.edemaray.com/bios.html
`4 https://www.edemaray.com/partners.html
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`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 6 of 21
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`California)5 and Samsung (conducts substantial business operations related to the allegedly
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`infringing technology in Northern California and holds a large US office in Northern California).6
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`Further, Demaray’s complaints against both Samsung and Intel accuse Applied technology, and
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`Applied is also headquartered in Northern California.7 And, at least against Samsung, Demaray
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`relies on meetings occurring in Northern California to establish alleged pre-suit notice and
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`knowledge of the Asserted Patents, and alleged willful infringement. See Ex. B at 24-–25.
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`9.
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`8. Venue is proper in this District under 28 U.S.C. §§ 1391(b), (c), because a substantial
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`part of the events giving rise to Applied’s claim occurred in this district, and because Demaray is
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`subject to personal jurisdiction here.
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`9. An immediate, real, and justiciable controversy exists between Applied and Demaray as
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`to whether Applied is infringing or has infringed United States Patent Nos. 7,544,276 and
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`7,381,657.
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`5 https://www.intel.com/content/www/us/en/support/articles/000015107/programs.html
`6
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`https://www.dezeen.com/2016/06/09/samsung-nbbj-silicon-valley-office-campus-california-usa-n
`ap-pods-music-listening-rooms/#:~:text=Located%20in%20San%20Jose%20%E2%80%93%20a
`,the%20company's%20US%20semiconductor%20division.&text=The%20office%20campus%20
`features%20a,glass%20and%20white%20metal%20panels.;
`https://www.samsung.com/us/ssic/location/san-jose-ca/
`7 http://www.appliedmaterials.com/company/contact/locations
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`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 7 of 21
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`DEMARAY’S HISTORY AND BUSINESS
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`10.
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`On information and belief, Demaray was formed by Dr. Demaray in 2013 “to provide
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`portfolio related R&D activities, IP demonstration and development and new product
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`application.”8 11.
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`On information and belief, Dr. Demaray has filed over a hundred patents
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`over the course of his career, which has been spent almost entirely in Northern California.98 After
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`receiving the entirety of his education at schools located in Northern California (Cal State
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`Hayward and the University of California at Santa Cruz), Dr. Demaray has spent almost 40 years
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`working at California-based companies, including Applied Komatsu, Varian Semiconductor,
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`SymmphorixSymmorphix, and Demaray.109
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`11.
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`On information and belief, in addition to Dr. Demaray, Ravi Mullapudi, one of the other
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`named inventors of the Asserted Patents, also resides in Northern California. On information and
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`belief, Gary Edwards, the patent prosecution attorney for the Asserted Patents, resides in
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`Northern California.10 Further, on information and belief, the research and development of the
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`Asserted Patents was performed in Northern California. On information and belief, the Sales and
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`Relationship Agreement between Applied Komatsu and Symmorphix, which granted Applied
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`Komatsu a license to the Asserted Patents, as detailed infra, was negotiated and executed in
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`Northern California.
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`12.
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`An immediate, real, and justiciable controversy exists between Applied and Demaray as
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`to whether Applied and/or Applied’s products are infringing or have infringed the Asserted
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`Patents.
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`FACTUAL BACKGROUND
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`8 https://www.edemaray.com/bios.html
`98 https://www.linkedin.com/in/ernestdemarayphd/
`109 Id.
`10 https://www.haynesboone.com/people/e/edwards-gary
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`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 8 of 21
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`13.
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`Demaray, its principals and predecessor companies, on the one hand, and Applied and
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`Applied Komatsu, on the other hand, have a long history together, including as it relates to the
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`Asserted Patents.
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`14.
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`On information and belief, Dr. Demaray was a general manager of a joint venture between
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`Applied and Komatsu Ltd., called Applied Komatsu Technology, Inc. (“AKT”), developing
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`sputtered silicon deposition technology for flat panel displays.11 On information and belief, Dr.
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`Demaray, and other employees working with Dr. Demaray, were working in Northern California
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`and employed by AKT’s subsidiary, AKTA.
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`15.
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`On information and belief, Dr. Demaray, along with several other colleagues from
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`Applied and/or Applied Komatsu left in late 1998 to start a new company, Symmorphix. On
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`information and belief, Dr. Demaray was a founder and the CTO of Symmorphix.12
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`16.
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`On information and belief, at Symmorphix, Dr. Demaray and his team of former Applied
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`or Applied Komatsu employees continued to develop the technology they worked on at Applied
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`or Applied Komatsu related to sputtered silicon deposition technology, including on methods of
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`sputtering using varying frequencies of RF in order to produce denser dielectric films for optical
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`components, such as optical waveguides.
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`17.
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`On December 11, 1998, Applied Komatsu and Symmorphix executed a Sale and
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`Relationship Agreement, under which Symmorphix would purchase two Applied Komatsu
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`systems and continue using the Applied Komatsu facilities to operate the equipment.13 A true and
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`correct copy of the Sale and Relationship Agreement attached hereto as Exhibit C.14 Pursuant to
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`the Sales and Relationship Agreement, Symmorphix continued using the Applied Komatsu
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`11 https://www.linkedin.com/in/ernestdemarayphd/
`12 https://www.linkedin.com/public-profile/in/ernestdemarayphd/
`13 Ex. C, Sales and Relationship Agreement (“SRA”), ¶¶ 1, 6.
`14 Ex. C has been redacted to remove confidential financial information and to remove
`hand-written notes from the copy of the SRA maintained by Applied in its business records.
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`facilities and equipment until at least until September 30, 1999, as evidenced by two further
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`Addendums to the Sale and Relationship Agreement.15
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`18.
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`The Sale and Relationship Agreement provided that “[t]he parties have agreed to certain
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`provisions regarding future dealings, intellectual property, confidential information, and licenses,
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`as described in Exhibit C.”16 On January 29, 1999, Applied Komatsu and Symmorphix executed
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`an amended Exhibit C to the Sale and Relationship Agreement which modified the December 11,
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`1998 version:
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`THIS MODIFIED VERSION OF EXHIBIT C IS EFFECTIVE ON THE DATE
`SIGNED ON BEHALF OF [APPLIED KOMATSU] AND SYMMORPHIX,
`AND SUPERCEDES THE VERSION ATTACHED TO THE SALE AND
`RELATIONSHIP AGREEMENT DATED 12/11/98. 17
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`19.
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`The Amended Exhibit C included a license grant from Symmorphix to Applied Komatsu,
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`including for “inventions, improvements, or enhancements developed by Symmorphix relating to
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`sputtered silicon deposition technology”—the technology embodied in the Asserted Patents.
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`Further, the license grant also expressly permitted Applied Komatsu to transfer or assign such
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`license grant to Applied, and expressly allowed Applied Komatsu’s customers to use such
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`inventions as well:
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`To the extent required by existing [Applied Komatsu] Employee
`Agreements with any Symmorphix personnel, Symmorphix grants to
`[Applied Komatsu] a non-assignable, non-transferable, non-exclusive,
`perpetual, royalty-free license to any rights of Symmorphix under any
`patents issued based on any patent applications filed for inventions,
`improvements, or enhancements developed by Symmorphix relating
`to sputtered silicon deposition technology, provided that [Applied
`Komatsu] shall not utilize such rights to pursue a business of providing
`Services. Notwithstanding the generality of the foregoing, [Applied
`Komatsu] shall be authorized to assign or transfer any or all of the above
`license to one or more of [Applied Komatsu’s] parent entities, with the
`same restriction on competition with
`the Services provided by
`Symmorphix, and [Applied Komatsu’s] customers may use equipment
`15 Ex. C, SRA, Second Addendum at ¶ 6.
`16 Ex. C, SRA ¶ 21.
`17 Ex. C, SRA, Amended Ex. C.
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`provided by [Applied Komatsu] incorporating inventions licensed to
`[Applied Komatsu] hereunder without further consideration. 18
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`20.
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`On March 16, 2002, U.S. Patent Application No. 10/101,863 (“’863 Application”) was
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`filed naming Richard E. Demaray, Hongmei Zhang, Mukundan Narasimhan, and Ravi Mullapudi
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`as named inventors.
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`21.
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`On October 1, 2004, U.S. Patent Application No. 10/954,182 was filed as a continuation
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`application of the ’863 Application naming Richard E. Demaray, Hongmei Zhang, Mukundan
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`Narasimhan, and Ravi Mullapudi as named inventors. On June 3, 2008, this application issued as
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`U.S. Patent No. 7,381,657 (“the ’657 patent”). A true and correct copy of the ’657 patent is
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`attached hereto as Exhibit D.
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`22.
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`On September 16, 2005, U.S. Patent Application No. 10/228,834 was filed as a divisional
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`application of the ’863 Application naming Richard E. Demaray, Hongmei Zhang, Mukundan
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`Narasimhan, and Ravi Mullapudi as named inventors. On June 9, 2009, this application issued as
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`U.S. Patent No. 7,544,276 (“the ’276 patent”). A true and correct copy of the ’276 patent is
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`attached hereto as Exhibit E.
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`23.
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`On information and belief, all four named inventors had executed Employee Agreements
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`with Applied, or its subsidiary, Applied Komatsu.
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`24.
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`On information and belief, one or more of the named inventors has the following
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`assignment provision in their Applied Komatsu Employee Agreement:
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`In case any invention is described in a patent application or is disclosed to
`third parties by me after terminating my employment with [Applied
`Komatsu], it is to be presumed that the invention was conceived or made
`during the period of my employment for [Applied Komatsu], and the
`invention will be assigned to [Applied Komatsu] as provided by this
`Agreement, provided it relates to my work with [Applied Komatsu] or any
`of its subsidiaries.
`
`18 Ex. C, SRA, Amended Ex. C ¶ 3(b)(emphasis added).
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`25.
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`On information and belief, Mukundan Narasimhan (“Narasimhan”), one of the named
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`inventors, left Applied to join Symmorphix on April 16, 2001. Narasimhan’s Employee
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`Agreement with Applied contains the following assignment provision:
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`In case any invention is described in a patent application or is disclosed to
`third parties by me within one (1) year after terminating my employment
`with APPLIED, it is to be presumed that the invention was conceived or
`made during the period of my employment for APPLIED, and the
`invention will be assigned to APPLIED as provided by this Agreement,
`provided it relates to my work with APPLIED or any of its subsidiaries.
`The Asserted Patents claims priority to the ’863 Application, which was filed on March
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`26.
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`16, 2002, and within one year of Narasimhan terminating his employment with Applied.
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`APPLIED DOES NOT INFRINGE THE ASSERTED PATENTS
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`27.
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`12. Applied’s reactors in the “Endura” product line do not directly or indirectly infringe
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`any claim of the Asserted Patents.13. To the best of Applied’s knowledge, no third party
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`infringes any claim of the Asserted Patents by using Applied’s reactors in the “Endura” product
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`line. Applied has not caused, directed, requested, or facilitated any such infringement, much less
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`with specific intent to do so. Applied’s reactors in the “Endura” product line are not designed for
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`use in any combination which infringes any claim of the Asserted Patents. To the contrary, each
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`is a product with substantial uses that does not infringe any claim of these patents.
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`APPLIED HAS AN OWNERSHIP INTEREST IN THE ASSERTED PATENTS BASED ON
`NARASIMHAN’S EMPLOYMENT AGREEMENT WITH APPLIED
`
`28.
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`Even though Applied’s reactors do not directly or indirectly infringe any of the Asserted
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`Patents, the licensing and/or ownership issues described infra would further moot any potential
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`infringement question.
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`29.
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`On information and belief, Narasimhan, one of the named inventors of the Asserted
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`Patents, left Applied to join Symmorphix on April 16, 2001. On information and belief,
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`Narasimhan’s Employment Agreement contains the following assignment provision:
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`In case any invention is described in a patent application or is
`disclosed to third parties by me within one (1) year after terminating
`my employment with APPLIED, it is to be presumed that the invention
`was conceived or made during the period of my employment for
`APPLIED, and the invention will be assigned to APPLIED as provided
`by this Agreement, provided it relates to my work with APPLIED or any
`of its subsidiaries.
`
`30.
`
`On March 16, 2002, the ’863 Application, the parent patent application to the Asserted
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`Patents, was filed naming Narasimhan as one of the named inventors. The ’863 Application was
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`filed less than one year after Narasimhan’s termination from Applied. On information and belief,
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`at Symmorphix, the named inventors continued developing work from their time at Applied or
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`Applied Komatsu related to sputtered silicon deposition technology.
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`31.
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`On information and belief, Mr. Narasimhan’s Applied Employee Agreement further
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`provides:
`
`I agree that all inventions, copyrightable works and confidential
`information
`(including but not
`limited
`to new contributions,
`improvements, ideas or discoveries, whether patentable or not and
`computer source code and documentation) produced, conceived, made or
`first actually reduced to practice by me solely or jointly with others
`during the period of my employment with APPLIED (the foregoing are
`subsequently referred to as Creative Works), are hereby assigned to
`APPLIED and shall be the exclusive property of APPLIED.
`
`32.
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`The Sales and Relationship Agreement between Applied Komatsu and Symmorphix
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`explains that it applies “[t]o the extent required by existing [Applied Komatsu] Employee
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`Agreements with any Symmorphix personnel.” 19 On information and belief, Narasimhan was an
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`employee of Applied, not an employee of Applied Komatsu.
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`33.
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`On information and belief, the SRA did not amend Narasimhan’s assignment obligations
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`to Applied and Applied’s Employee Agreement with Narasimhan bestowed an automatic
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`assignment of Narasimhan’s ownership rights in the Asserted Patents to Applied.
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`APPLIED HAS A LICENSE TO THE ASSERTED PATENTS
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`19 Ex. C, SRA, Amended Ex. C ¶ 3(b)(emphasis added).
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`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 13 of 21
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`34.
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`Applied has a perpetual, royalty-free license to the Asserted Patent pursuant to the terms
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`of the Sales and Relationship Agreement between Applied Komatsu and Symmorphix.
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`35.
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`Applied Komatsu and Symmorphix executed the Sales and Relationship Agreement and
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`an Amended Exhibit 3, agreeing that Symmorphix grants Applied Komatsu a perpetual,
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`royalty-free license to Symmorphix’s patents “based on any patent applications filed for
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`inventions, improvements, or enhancements developed by Symmorphix relating to sputtered
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`silicon deposition technology.” 20 Both Asserted Patents relate to sputtered silicon deposition
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`technology. Further, Applied Komatsu is authorized to assign or transfer its license to any of
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`Applied Komatsu’s parent entities, including Applied. 21 Moreover, the amended agreement
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`permits “[Applied Komatsu’s] customers may use equipment provided by [Applied Komatsu]
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`incorporating inventions licensed to [Applied Komatsu] hereunder without further consideration.”
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`22
`
`36.
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`The license grant explains that it applies “[t]o the extent required by existing [Applied
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`Komatsu] Employee Agreements with any Symmorphix personnel.”23 On information and belief,
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`one or more of Applied Komatsu Employee Agreements with the named inventors contains the
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`following provision:
`
`In case any invention is described in a patent application or is disclosed to
`third parties by me after terminating my employment with [Applied
`Komatsu], it is to be presumed that the invention was conceived or made
`during the period of my employment for [Applied Komatsu], and the
`invention will be assigned to [Applied Komatsu] as provided by this
`Agreement, provided it relates to my work with [Applied Komatsu] or any
`of its subsidiaries.
`
`37.
`
`The Amended Exhibit 3 converted this assignment obligation into a perpetual royalty-free
`
`license to Symmorphix’s patents relating to sputtered silicon deposition technology. Both
`
`20 Id.
`21 Id.
`22 Id.
`23 Id.
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`- 11 -
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`
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`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 14 of 21
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`Asserted Patents relate to sputtered silicon deposition technology, and all four named inventors
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`are former Applied or Applied Komatsu employees. Applied is a parent entity of Applied
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`Komatsu. Under the terms of Amended Exhibit 3, Applied has a perpetual, royalty-free license to
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`the Asserted Patents.
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`ALTERNATIVELY, APPLIED HAS AN OWNERSHIP INTEREST IN THE ASSERTED
`PATENTS BASED ON THE AKTA EMPLOYMENT AGREEMENTS
`
`38.
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`In the alternative, if the Amended Exhibit 3 did not convert the former Applied Komatsu
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`employee’s assignment obligations into a perpetual, royalty-free license to the Asserted Patents,
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`Applied has an ownership interest in the Asserted Patents.
`
`39.
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`On information and belief, at Symmorphix, Dr. Demaray and the other named inventors
`
`continued developing work from their time at Applied Komatsu related to sputtered silicon
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`deposition technology.
`
`40.
`
`On information and belief, under the terms of the Applied Komatsu Employee Agreement
`
`with at least one of the named inventors:
`
`In case any invention is described in a patent application or is
`disclosed to third parties by me after terminating my employment
`with [Applied Komatsu], it is to be presumed that the invention was
`conceived or made during the period of my employment for [Applied
`Komatsu], and the invention will be assigned to [Applied Komatsu] as
`provided by this Agreement, provided it relates to my work with
`[Applied Komatsu] or any of its subsidiaries.
`
`41.
`
`The Applied Komatsu Employee Agreement further specifically provides:
`
`I agree that all inventions, copyrightable works and confidential
`information
`(including but not
`limited
`to new contributions,
`improvements, ideas or discoveries, whether patentable or not and
`computer source code and documentation) produced, conceived, made or
`first actually reduced to practice by me solely or jointly with others
`during the period of my employment with [Applied Komatsu] (the
`foregoing are subsequently referred to as Creative Works), are hereby
`assigned to [Applied Komatsu] and shall be the exclusive property of
`[Applied Komatsu].
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`- 12 -
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`
`

`

`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 15 of 21
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`42.
`
`Thus, the Applied Komatsu Employee Agreement bestowed an automatic assignment of at
`
`least one or more of the named inventors’ ownership rights in the Asserted Patents to Applied
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`Komatsu.
`
`FIRST COUNT
`(Declaration of Non-Infringement of U.S. Patent No. 7,544,276)
`
`43.
`
`14. Applied restates and incorporates by reference theall allegations in paragraphs 1
`
`through 13 of this Complaint as if fully set forth herein.
`
`44.
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`15. Demaray claims to own all rights, title, and interest, including the right to seek
`
`damages for past, present, and future infringement thereof, in U.S. Patent No. 7,544,276 (“the
`
`’276 patent”). A true and correct copy of the ’276 patent is attached hereto as Exhibit CE.
`
`45.
`
`16. In the cases Demaray has brought against Samsung and Intel, Demaray accuses
`
`Defendants Samsung Electronics Ltd, Samsung Electronics America, Inc., Samsung
`
`Semiconductor, Inc., Samsung Austin Semiconductor, LLC, and Intel Corporation of infringing
`
`the ’276 patent based on allegations that each “mak[es], us[es], offer[s] to sell, and sell[s] within
`
`the United States, suppl[ies] or caus[es] to be supplied in or from the United States, and/or
`
`import[s] into the United States” Applied technology and devices. Ex. A at 6; Ex. B at 7-8. For
`
`example, in its complaints against both the Intel and Samsung Defendants, Demaray accuses the
`
`Defendants’ use of “RMS reactors” from “the Endura product line from Applied Materials, Inc.”
`
`Ex. A at 7-14; Ex. B. at 8-16.
`
`46.
`
`17. A substantial, immediate, and real controversy exists between Applied and Demaray
`
`regarding whether Applied’s reactors infringe or have infringed the ’276 patent. A judicial
`
`declaration is necessary to determine the parties’ respective rights regarding the ’276 patent.
`
`47.
`
`18. Applied seeks a judgment declaring that Applied’s reactors, including those in the
`
`Endura product line, do not directly or indirectly infringe any claim of the ’276 patent. In its
`
`- 13 -
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
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`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 16 of 21
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`complaints against Applied’s customers, Demaray cites to Applied’s Endura products as
`
`purported evidence of infringement of claim 1 of the ’276 patent. Based on Applied’s present
`
`understanding of claim 1 of the ’276 patent and Demaray’s allegations, Applied’s Endura
`
`products fail to meet or embody limitations of claim 1 of the ’276 patent. For example, claim 1
`
`recites a reactor comprising, in part, “a pulsed DC power supply coupled to the target area” and
`
`“a narrow band-rejection filter that rejects at a frequency of the [RF] bias power supply coupled
`
`between the pulsed DC power supply and the target area.” Applied’s Endura products do not
`
`infringe claim 1 of the ’276 patent at least because these products do not meet or embody a
`
`reactor comprising “a pulsed DC power supply coupled to the target area” and/or “a narrow
`
`band-rejection filter that rejects at a frequency of the [RF] bias power supply coupled between the
`
`pulsed DC power supply and the target area.”
`
`SECOND COUNT
`(Declaration of Non-Infringement of U.S. Patent No. 7,381,657)
`
`48.
`
`19. Applied restates and incorporates by reference theall allegations in paragraphs 1
`
`through 18 of this Complaint as if fully set forth herein.
`
`49.
`
`20. Demaray claims to own all rights, title, and interest, including the right to seek
`
`damages for past, present, and future infringement thereof, in U.S. Patent No. 7,381,657 (“the
`
`’657 patent”). A true and correct copy of the ’657 patent is attached hereto as Exhibit D.
`
`50.
`
`21. In the cases Demaray recently brought against Samsung and Intel, Demaray accuses
`
`Defendants Samsung Electronics Ltd, Samsung Electronics America, Inc., Samsung
`
`Semiconductor, Inc., Samsung Austin Semiconductor, LLC, and Intel Corporation of infringing
`
`the ’657 patent in that each uses “the claimed methods for reactive sputtering in an infringing
`
`manner to produce semiconductor products, and/or making, offering to sell, and selling within the
`
`United States, and/or importing into the United States, without authority or license,
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT
`
`

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`Case 5:20-cv-05676-EJD Document 13-6 Filed 09/01/20 Page 17 of 21
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`semiconductor products produced using the claimed methods for reactive sputtering in an
`
`infringing manner.” Ex. A at 15-16; Ex. B at 17. Specifically, Demaray alleges Defendants use
`
`“RMS reactors” to perform the claimed method. Ex. A at 16-23; Ex. B at 17-24. As discussed
`
`above, the only RMS reactors Demaray identifies as used by Defendants are “reactors in the
`
`Endura product line from Applied Materials, Inc.”
`
`51.
`
`22. A substantial, immediate, and real controversy exists between Applied and Demaray
`
`regarding whether Applied’s reactors infringe or have infringed the ’657 patent. A judicial
`
`declaration is necessary to determine the parties’ respective rights regarding the ’657 patent.
`
`52.
`
`23. Applied seeks a judgment declaring that Applied’s reactors, including those in the
`
`Endura product line, do not directly or indirectly infringe any claim of the ’657 patent. In its
`
`complaints against Applied’s customers, Demaray cites to Applied’s Endura products as
`
`purported evidence of infringement of claim 1 of the ’657 patent. Based on Applied’s present
`
`understanding of claim 1 of the ’657 patent and Demaray’s allegations, Applied’s Endura
`
`products fail to meet or embody steps of the method recited in claim 1 of the ’657 patent. For
`
`example, claim 1 recit