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`Case 5:20-cv-05676-EJD Document 30 Filed 10/19/20 Page 1 of 4
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`IRELL & MANELLA LLP
`Morgan Chu (70446)
`MChu@irell.com
`Benjamin W. Hattenbach (186455)
`BHattenbach@irell.com
`C. Maclain Wells (221609)
`MWells@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone: (310) 277-1010
`Facsimile:
`(310) 203-7199
`
`Attorneys for Defendant
`DEMARAY LLC
`
`APPLIED MATERIALS, INC.,
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`Plaintiff,
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
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`Case No. 5:20-cv-05676-EJD
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`DEMARAY LLC’S MOTION
`FOR LEAVE TO FILE SUR-REPLY TO
`APPLIED MATERIALS’ MOTION FOR
`PRELIMINARY INJUNCTION
`
`The Honorable Edward J. Davila
`
`Hearing Date: November 12, 2020
`Hearing Time: 9:00 a.m.
`
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`
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`DEMARAY’S MOTION
`FOR LEAVE TO FILE SUR-REPLY
`(Case No. 5:20-cv-05676-EJD)
`
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`
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`DEMARAY LLC,
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`vs.
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`Defendant.
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`
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`10885091
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`
`

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`Case 5:20-cv-05676-EJD Document 30 Filed 10/19/20 Page 2 of 4
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`Pursuant to Local Rules 7-3(d) and 7-11, Defendant Demaray LLC (“Demaray”)
`respectfully moves for leave to file a 10-page sur-reply in order to respond to seven new fact
`declarations and several new pieces of evidence submitted by Plaintiff Applied Materials, Inc.
`(“Applied”) for the very first time in Applied’s reply in support of its motion for preliminary
`injunction.1 Demaray has objected to the new evidence and arguments related thereto. See Dkt.
`No. 29. But if the Court considers the new matter, fairness dictates that Demaray be afforded an
`opportunity to address the new evidence and arguments based thereon.
`I.
`Applied Introduced A Large Amount of Brand New Evidence In Its Reply
`In Applied’s motion for preliminary injunction, it attached a single attorney declaration and
`ten corresponding exhibits in support of its arguments relating to convenience of the parties. See
`Dkt. No. 14. In opposition, Demaray responded to the arguments and evidence that Applied timely
`raised. See Dkt. No. 23.
`Applied then sought and received a one-week extension of time to file its reply. See Dkt.
`No. 25. During this time, Applied obtained four brand new fact declarations, one from Applied
`itself and three from the Intel and Samsung defendants in the earlier-filed cases in Texas. See Dkt.
`Nos. 26-8, 10, 12, 14. Applied also submitted an employment agreement and an email
`communication that Applied could have, but did not, submit with its opening filing. See Dkt. Nos.
`26-6, 27-02. Compounding the issues with its late disclosures, Applied also filed five days later a
`“Corrected” Reply with which it submitted three additional, brand-new declarations from other
`witnesses at various Samsung entities. See Dkt. No. 28-10 through 28-12. All seven of Applied’s
`new declarations are from new witnesses who submitted no declaration to Applied’s opening filing
`for its motion. Relying on this new evidence, Applied has introduced a variety of new arguments in
`its reply brief, including for example:
`• Applied now contends that declaratory judgment subject matter jurisdiction is
`
`
`1 Demaray asked Applied to agree to the requested sur-reply, but Applied responded
`demanding unreasonable limitations. See Declaration of C. Maclain Wells ¶¶ 2–4, filed
`concurrently.
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`10885091
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`- 1 -
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`DEMARAY LLC’S MOTION
`FOR LEAVE TO FILE SUR-REPLY
`(Case No. 5:20-cv-05676-EJD)
`
`

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`Case 5:20-cv-05676-EJD Document 30 Filed 10/19/20 Page 3 of 4
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`present based upon an email in which Demaray approached Applied to license
`certain Demaray patents. Reply at 2-3.
`• Applied now provides new facts regarding the relationship between Applied and its
`customers. Reply at 4–5.
`• Applied now contends that Mr. Narasimhan’s employment agreement applies to
`patent assignments, despite never informing the Court that these provisions had been
`
`declared unlawful or presenting the Court with said agreement. Reply at 12-13.
`• Applied now provides new facts regarding the activities of the Samsung and Intel
`defendants in the earlier-filed Texas cases. Reply at 14-15.
`There is no good reason for Applied’s late disclosures. The new evidence was in Applied’s
`possession and one of the new declarations is from an Applied employee. In addition, Applied
`confirmed in its opening papers that it is coordinating with Intel and Samsung. Dkt. No. 14 at 12
`n.3. Thus, each piece of evidence offered was either in Applied’s possession or Applied had access
`to it at the time of its opening filing.
`II.
`This Court Should Permit Demaray To File A Response To Applied’s Brand New
`Evidence And Arguments Related Thereto
`Parties may not raise new issues or theories in reply memoranda and thereby prevent the
`other party from having an opportunity to respond. See Thompson v. C. I. R., 631 F.2d 642, 649 (9th
`Cir. 1980). When a court does consider new issues or evidence raised for the first time in a moving
`party’s reply brief, the opposing party may address the new issues in a sur-reply. See Dutta v. State
`Farm Mut. Auto. Ins. Co., 895 F.3d 1166, 1172 (9th Cir. 2018) (“Mitigation of any unfairness,
`following objection, may take the form of granting the objecting party leave to file a sur-reply
`opposition to the new matter.”); Provenz v. Miller, 102 F.3d 1478, 1483 (9th Cir. 1996) (“[W]here
`new evidence is presented in a reply to a motion for summary judgment, the district court should
`not consider the new evidence without giving the [non-]movant an opportunity to respond.”)
`(alteration in original and citation omitted)).
`Applied controlled the timing and content of its motion and could have included this new
`evidence in its original motion, but Applied chose not to do so. Applied offered no explanation for
`
`10885091
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`DEMARAY LLC’S MOTION
`FOR LEAVE TO FILE SUR-REPLY
`(Case No. 5:20-cv-05676-EJD)
`
`

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`Case 5:20-cv-05676-EJD Document 30 Filed 10/19/20 Page 4 of 4
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`its late disclosures, and Demaray would be “unfairly disadvantaged by [this] new factual matter
`included in a reply.” Dutta, 895 F.3d at 1172. Thus, permitting Demaray to file its sur-reply affords
`Demaray the opportunity to respond to Applied’s improper new arguments. See True Health
`Chiropractic Inc v. McKesson Corp., 2015 WL 5341592, at *1 (N.D. Cal. Sept. 12, 2015) (granting
`leave to file sur-reply where “Plaintiffs raised argument and evidence for the first time on reply”);
`Arens v. Popcorn, Ind., LLC, 2014 WL 2737412, at *1 n.1 (N.D. Cal. June 16, 2014) (granting
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`motion for leave to file sur-reply in part because reply “presents new evidence that warrants a
`response” from nonmovant). Demaray’s sur-reply would not impact the noticed hearing date, and,
`depending on the timing of the Court’s permission, briefing could still be completed within the
`Court’s request that briefing for motions allow at least 14 days between the final filing and the
`hearing date.
`III. CONCLUSION
`For the foregoing reasons, Demaray respectfully requests that the Court grant Demaray
`leave to file a 10-page sur-reply.
`
`Dated: October 19, 2020
`
`
`
`Respectfully submitted,
`IRELL & MANELLA LLP
`
`By: /s/ C. Maclain Wells
`C. Maclain Wells
`Attorneys for Defendant DEMARAY LLC
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`10885091
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`- 3 -
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`DEMARAY LLC’S MOTION
`FOR LEAVE TO FILE SUR-REPLY
`(Case No. 5:20-cv-05676-EJD)
`
`