Case 5:20-cv-05676-EJD Document 42-5 Filed 12/07/20 Page 1 of 25
`Case 5:20-cv-05676—EJD Document 42-5 Filed 12/07/20 Page 1 of 25
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`EXHIBIT C
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`EXHIBIT C
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`Case 6:20-cv-00634-ADA Document 22 Filed 10/13/20 Page 1 of 24Case 5:20-cv-05676-EJD Document 42-5 Filed 12/07/20 Page 2 of 25
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`DEMARAY LLC,
`
`
`
`
`Plaintiff,
`
`v.
`
`
`INTEL CORPORATION,
`
`
`
`
`Defendant.
`
`
`
`
`Case No. 6:20-CV-00634-ADA
`
`JURY TRIAL DEMANDED
`
`DEFENDANT INTEL CORPORATION’S
`FIRST AMENDED ANSWER AND AFFIRMATIVE DEFENSES
`
`Defendant Intel Corporation (“Intel”) herein answers the Complaint filed by Plaintiff
`
`
`
`Demaray LLC (“Demaray”) and states its affirmative defenses. Intel denies all allegations of the
`
`Complaint not explicitly admitted below.1
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`ANSWER TO COMPLAINT
`
`THE PARTIES
`
`1.
`
`Intel admits that Richard E. Demaray is listed as a named inventor on the face of
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`U.S. Patent Nos. 7,544,276 (“the ’276 patent”) and 7,381,657 (“the ’657 patent”) (collectively, the
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`“Patents-in-Suit”). Intel is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations of this paragraph, and therefore denies them.
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`2.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of this paragraph, and therefore denies them.
`
`
`1
`Any statements and admissions included herein reflect Intel’s present understanding of the
`scope of the corresponding allegations and of terms used therein and/or in U.S. Patent Nos.
`7,544,276 and 7,381,657 as those terms may be understood generally and presently understood by
`Intel.
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`3.
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`Intel denies that it uses Demaray’s patented technology. Intel is without knowledge
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`or information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph, and therefore denies them.
`
`4.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
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`of the allegations of this paragraph, and therefore denies them.
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`5.
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`Intel admits that Demaray’s Complaint purports to attach uncertified copies of the
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`’276 patent and ’657 patent as Exhibits 1 and 2, respectively. Intel is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this paragraph,
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`and therefore denies them.
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`6.
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`Intel admits that it is a corporation duly organized and existing under the laws of
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`the State of Delaware, and has a place of business at 1300 South Mopac Expressway, Austin, Texas
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`78746. To the extent this paragraph recites a legal conclusion, no response is necessary. If a
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`response is required, Intel denies this conclusion.
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`JURISDICTION AND VENUE
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`7.
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`Intel admits that Demaray’s Complaint purports to set forth an action arising under
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`the patent laws of the United States, 35 U.S.C. § 1 et seq. Intel denies that there are factual or
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`legal bases for the claims listed in the Complaint. Intel admits that this Court has subject matter
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`jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a).
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`8.
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`For the limited purpose of this action only, Intel admits that it is subject to personal
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`jurisdiction in the Western District of Texas.
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`9.
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`For the limited purpose of this action only, Intel admits that it is subject to personal
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`jurisdiction in the Western District of Texas, but denies the other allegations recited in this
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`paragraph.
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`10.
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`To the extent this paragraph recites a legal conclusion, no answer is required. To
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`the extent that an answer is required, Intel denies that it makes, uses, sells, and/or offers to sell
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`products or processes infringing the Patents-in-Suit and denies that the Western District of Texas
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`is the most convenient venue to litigate this action. Intel admits that it has transacted and is
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`continuing to transact business in the United States, including in the Western District of Texas.
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`TECHNOLOGY BACKGROUND
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`11.
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`Intel admits that semiconductor devices are generally manufactured using a series
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`of process steps applied to a substrate, but denies the other allegations in this paragraph.
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`12.
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`Intel admits that magnetron sputtering is one of many physical vapor deposition
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`(“PVD”) techniques and admits that magnetron sputtering can be carried out in a reactor with
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`power being applied to a target. Intel is without knowledge or information sufficient to form a
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`belief as to the truth of the remaining allegations of this paragraph, and therefore denies them.
`
`13.
`
`Intel admits that the ’276 patent states:
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`Other approaches to providing a uniform condition of sputter erosion rely
`on creating a large uniform magnetic field or a scanning magnetic field that
`produces a time-averaged, uniform magnetic field. For example, rotating magnets
`or electromagnets can be utilized to provide wide areas of substantially uniform
`target erosion. For magnetically enhanced sputter deposition, a scanning magnet
`magnetron source can be used to provide a uniform, wide area condition of target
`erosion.
`
`
`As illustrated in FIG. 1A, apparatus 10 can include a scanning magnet
`magnetron source 20 positioned above target 12. An embodiment of a scanning
`magnetron source used for dc sputtering of metallic films is described in U.S. Pat.
`No. 5,855,744 to Halsey, et. al., (hereafter ’744), which is incorporated herein by
`reference in its entirety. The ’744 patent demonstrates the improvement in
`thickness uniformity that is achieved by reducing local target erosion due to
`magnetic effects in the sputtering of a wide area rectangular target. As described
`in the ’744 patent, by reducing the magnetic field intensity at these positions, the
`local target erosion was decreased and the resulting film thickness nonuniformity
`was improved from 8%, to 4%, over a rectangular substrate of 400x500 mm.
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`’276 patent, 8:38-60. Intel admits that the ’276 patent also states: “Target 12 functions as a cathode
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`when power is applied to it and is equivalently termed a cathode. Application of power to target
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`12 creates a plasma 53. Substrate 16 is capacitively coupled to an electrode 17 through an insulator
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`54.” ’276 patent, 5:24-27. Intel is without knowledge or information sufficient to form a belief
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`as to the truth of the remaining allegations of this paragraph, and therefore denies them.
`
`14.
`
`Intel admits that the ’276 patent states:
`
`In accordance with the present invention, a sputtering reactor apparatus for
`depositing oxide and oxynitride films is presented. Further, methods for depositing
`oxide and oxynitride films for optical waveguide devices are also presented. A
`sputtering reactor according to the present invention includes a pulsed DC power
`supply coupled through a filter to a target and a substrate electrode coupled to an
`RF power supply. A substrate mounted on the substrate electrode is therefore
`supplied with a bias from the RF power supply.
`
`
`The target can be a metallic target made of a material to be deposited on the
`substrate. In some embodiments, the metallic target is formed from Al, Si and
`various rare-earth ions. A target with an erbium concentration, for example, can be
`utilized to deposit a film that can be formed into a waveguide optical amplifier.
`
`
`A substrate can be any material and, in some embodiments, is a silicon
`wafer. In some embodiments, RF power can be supplied to the wafer. In some
`embodiments, the wafer and the electrode can be separated by an insulating glass.
`
`
`In some embodiments, up to about 10 kW of pulsed DC power at a
`frequency of between about 40 kHz and 350 kHz and a reverse pulse time of up to
`about 5µs is supplied to the target. The wafer can be biased with up to about several
`hundred watts of RF power. The temperature of the substrate can be controlled to
`within about 10° C. and can vary from about -50° C. to several hundred degrees C.
`Process gasses can be fed into the reaction chamber of the reactor apparatus. In
`some embodiments, the process gasses can include combinations of Ar, N2, O2,
`C2F6, CO2, CO and other process gasses.
`
`
`’276 patent, 2:45-3:7. Intel admits that the ’276 patent also states: “However, both RF and pulsed
`
`DC deposited films are not fully dense and most likely have columnar structures. These columnar
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`structures are detrimental for optical wave guide applications due to the scattering loss caused by
`
`the structure. By applying a RF bias on wafer 16 during deposition, the deposited film can be
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`dandified by energetic ion bombardment and the columnar structure can be substantially
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`eliminated.” ’276 patent, 5:60-67. Intel is without knowledge or information sufficient to form a
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`belief as to the truth of the remaining allegations of this paragraph, and therefore denies them.
`
`15.
`
`Intel admits that the ’276 patent states: “The process gas utilized in reactor 10
`
`includes an inert gas, typically argon, used as the background sputtering gas. Additionally, with
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`some embodiments of target 12, reactive components such as, for example, oxygen may be added
`
`to the sputtering gas. Other gasses such as N2, NH3, CO, NO, CO2, halide containing gasses other
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`gas-phase reactants can also be utilized.” ’276 patent, 8:61-67. Intel is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this paragraph,
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`and therefore denies them.
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`FIRST CLAIM
`
`16.
`
`Paragraph 16 does not contain an allegation of fact, and, therefore, no answer is
`
`required. Intel incorporates by reference its answers to the allegations in Paragraphs 1-15 of the
`
`Complaint.
`
`17.
`
`Intel admits that the ’276 patent is titled “Biased pulse DC reactive sputtering of
`
`oxide films” and that it issued on June 9, 2009. Intel admits that the Complaint attaches an
`
`uncertified copy of the ’276 patent as Exhibit 1. Intel denies the remaining allegations of this
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`paragraph.
`
`18.
`
`Intel admits that the face of the ’276 patent lists Hongmei Zhang, Mukundan
`
`Narasimhan, Ravi B. Mullapudi, and Richard E. Demaray as co-inventors.
`
`19.
`
`The allegations in this paragraph regarding the force and effect of the ’276 patent
`
`are legal conclusions and therefore require no response. To the extent a response is required, Intel
`
`is without knowledge or information sufficient to form a belief as to the truth of these allegations,
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`and therefore denies them. Intel is without knowledge or information sufficient to form a belief
`
`as to the truth of the remaining allegations of this paragraph, and therefore denies them.
`
`20.
`
`Intel admits that the ’276 patent states: “The present invention relates to deposition
`
`of oxide and oxynitride films and, in particular, to deposition of oxide and oxynitride films by
`
`pulsed DC reactive sputtering.” ’276 patent, 1:12-14. Intel denies the remaining allegations in
`
`this paragraph.
`
`21.
`
`Intel admits that the ’276 patent states: “a substrate electrode coupled to an RF
`
`power supply. A substrate mounted on the substrate electrode is therefore supplied with a bias
`
`from the RF power supply.” ’276 patent, 2:51-53. Intel denies the remaining allegations in this
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`paragraph.
`
`22.
`
`23.
`
`Intel denies the allegations in this paragraph.
`
`Intel denies the allegations in this paragraph.
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`[“1. A reactor according to the present invention, comprising:”]2
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`24.
`
`25.
`
`Intel denies the allegations in this paragraph.
`
`Intel admits that it uses RMS reactors for deposition of layers in its semiconductor
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`products. Intel admits that it has identified Applied Materials, Inc. as a Preferred Quality Supplier.
`
`Intel is without knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations of this paragraph, and therefore denies them.
`
`26.
`
`Intel denies the allegations in this paragraph.
`
`[“a target area for receiving a target;”]
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`27.
`
`Intel denies the allegations in this paragraph.
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`2
`Intel denies all allegations in Demaray’s headings or subheadings.
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`28.
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`Intel
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`admits
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`that
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`the
`
`document
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`available
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`at
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`the
`
`link
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`https://www.appliedmaterials.com/resources/glossary states: “[i]n PVD, the target is the source of
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`the material to be deposited. Atoms are ejected from the target as a result of the bombardment of
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`energetic particles.” Intel denies the remaining allegations in this paragraph.
`
`29.
`
`Intel is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of this paragraph, and therefore denies them.
`
`[“a substrate area opposite the target area for receiving a substrate;”]
`
`30.
`
`31.
`
`Intel denies the allegations in this paragraph.
`
`Intel
`
`admits
`
`that
`
`the
`
`document
`
`available
`
`at
`
`the
`
`link
`
`https://www.appliedmaterials.com/resources/glossary states: “[t]he material upon which thin films
`
`are manipulated. Silicon is most commonly used for semiconductors . . . .” Intel denies the
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`remaining allegations in this paragraph.
`
`32.
`
`Intel is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of this paragraph, and therefore denies them.
`
`[“a pulsed DC power supply coupled to the target area, the pulsed DC power supply
`
`providing alternating negative and positive voltages to the target;”]
`
`33.
`
`34.
`
`35.
`
`Intel denies the allegations in this paragraph.
`
`Intel denies the allegations in this paragraph.
`
`Intel is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of this paragraph, and therefore denies them.
`
` [“an RF bias power supply coupled to the substrate;”]
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`36.
`
`Intel denies the allegations in this paragraph.
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`37.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of this paragraph, and therefore denies them.
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`38.
`
`Intel is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of this paragraph, and therefore denies them.
`
` [“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.”]
`
`39.
`
`40.
`
`Intel denies the allegations in this paragraph.
`
`Intel denies the allegations in this paragraph.
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`SECOND CLAIM
`
`41.
`
`Paragraph 41 does not contain an allegation of fact, and, therefore, no answer is
`
`required. Intel incorporates by reference its answers to the allegations in Paragraphs 1-40 of the
`
`Complaint.
`
`42.
`
`Intel admits that the ’657 patent is titled “Biased pulse DC reactive sputtering of
`
`oxide films” and that it issued on June 3, 2008. Intel admits that the Complaint attaches an
`
`uncertified copy of the ’657 patent as Exhibit 2. Intel denies the remaining allegations in this
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`paragraph.
`
`43.
`
`Intel admits that the face of the ’657 patent lists Hongmei Zhang, Mukundan
`
`Narasimhan, Ravi B. Mullapudi, and Richard E. Demaray as co-inventors.
`
`44.
`
`The allegations in this paragraph regarding the force and effect of the ’657 patent
`
`are legal conclusions and therefore require no response. To the extent a response is required, Intel
`
`is without knowledge or information sufficient to form a belief as to the truth of these allegations,
`
`and therefore denies them. Intel is without knowledge or information sufficient to form a belief
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`as to the truth of the remaining allegations of this paragraph, and therefore denies them.
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`45.
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`Intel admits that the ’657 patent states: “The present invention relates to deposition
`
`of oxide and oxynitride films and, in particular, to deposition of oxide and oxynitride films by
`
`pulsed DC reactive sputtering.” ’657 patent, 1:11-13. Intel denies the remaining allegations in
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`this paragraph.
`
`46.
`
`Intel admits that the ’657 patent states: “A sputtering reactor according to the
`
`present invention includes a pulsed DC power supply coupled through a filter to a target and a
`
`substrate electrode coupled to an RF power supply. A substrate mounted on the substrate electrode
`
`is therefore supplied with a bias from the RF power supply.” ’657 patent, 2:49-54. Intel denies
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`the remaining allegations in this paragraph.
`
`47.
`
`48.
`
`Intel denies the allegations in this paragraph.
`
`Intel denies the allegations in this paragraph.
`
` [“A method of depositing film on an insulating substrate, comprising:”]
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`49.
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`50.
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`Intel denies the allegations in this paragraph.
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`Intel admits that it deposits certain TaN and/or TiN layers for certain of its
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`Broadwell Processors, which are fabricated using silicon wafers. Intel denies the remaining
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`allegations in this paragraph.
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`[“providing a process gas between a conductive target and the substrate;”]
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`51.
`
`Intel admits that it fabricates semiconductor products in part by using a process gas,
`
`a target, and a substrate. Intel denies the remaining allegations in this paragraph.
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`52.
`
`Intel admits that it uses an RMS reactor in the fabrication of TaN layers for at least
`
`some of its Core M 5Y70/5Y10 14 nm Gen 2 Broadwell Processors. Intel admits that in some
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`processes it uses nitrogen gas. Intel denies the remaining allegations in this paragraph.
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`53.
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`Intel admits that it uses a process gas including nitrogen, a tantalum target, and a
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`silicon substrate in certain of its processes. Intel denies the remaining allegations in this paragraph.
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`[“providing pulsed DC power to the target through a narrow band rejection filter such that
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`the target alternates between positive and negative voltages;”]
`
`54.
`
`Intel admits that it fabricates semiconductor products. Intel does not know what
`
`meaning Demaray is ascribing to “providing pulsed DC power to the target through a narrow band
`
`rejection filter such that the target alternates between positive and negative voltages,” and therefore
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`denies the remaining allegations in this paragraph.
`
`55.
`
`Intel admits that it uses an RMS reactor in the fabrication of TaN layers for at least
`
`some of its Core M 5Y70/5Y10 14 nm Gen 2 Broadwell Processors. Intel is without knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations of this paragraph,
`
`and therefore denies them.
`
`56.
`
`Intel is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of this paragraph, and therefore denies them.
`
`57.
`
`Intel denies the allegations in this paragraph.
`
` [“providing an RF bias at a frequency that corresponds to the narrow band rejection filter
`
`to the substrate;”]
`
`58.
`
`Intel admits that it fabricates semiconductor products. Intel does not know what
`
`meaning Demaray is ascribing to “providing an RF bias at a frequency that corresponds to the
`
`narrow band rejection filter to the substrate,” and therefore denies the remaining allegations in this
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`paragraph.
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`59.
`
`Intel admits that it uses an RMS reactor in the fabrication of TaN layers for at least
`
`some of its Core M 5Y70/5Y10 14 nm Gen 2 Broadwell Processors. Intel denies the remaining
`
`allegations in this paragraph.
`
`60.
`
`Intel is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations of this paragraph, and therefore denies them.
`
`[“providing a magnetic field to the target;”]
`
`61.
`
`Intel admits that it fabricates semiconductor products. Intel admits that a magnetic
`
`field is provided at certain times during fabrication of certain products. Intel denies the remaining
`
`allegations in this paragraph.
`
`62.
`
`Intel admits that it uses an RMS reactor in the fabrication of TaN layers for at least
`
`some of its Core M 5Y70/5Y10 14 nm Gen 2 Broadwell Processors. Intel denies the remaining
`
`allegations in this paragraph.
`
`63.
`
`Intel admits that page 9 of Exhibit 5 to the Complaint contains an image with a red
`
`box and the word “Magnetron” next to it. Intel is without knowledge or information sufficient to
`
`form a belief as to the truth of the remaining allegations of this paragraph, and therefore denies
`
`them.
`
`[“and reconditioning the target;”]
`
`64.
`
`Intel admits that it fabricates semiconductor products. Intel denies the remaining
`
`allegations in this paragraph.
`
`65.
`
`Intel admits that it uses an RMS reactor in the fabrication of TaN layers for at least
`
`some of its Core M 5Y70/5Y10 14 nm Gen 2 Broadwell Processors. Intel denies the remaining
`
`allegations in this paragraph.
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`[“wherein reconditioning the target includes reactive sputtering in the metallic mode and
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`then reactive sputtering in the poison mode.”]
`
`66.
`
`Intel admits that it fabricates semiconductor products. Intel denies the remaining
`
`allegations in this paragraph.
`
`67.
`
`Intel admits that it uses an RMS reactor in the fabrication of TaN layers for at least
`
`some of its Core M 5Y70/5Y10 14 nm Gen 2 Broadwell Processors. Intel denies the remaining
`
`allegations in this paragraph.
`
`68.
`
`Intel admits that, as of the filing of the Complaint, it has knowledge of the Patents-
`
`in-Suit. Intel denies the remaining allegations in this paragraph.
`
`69.
`
`70.
`
`71.
`
`Intel denies the allegations in this paragraph.
`
`Intel denies the allegations in this paragraph.
`
`Intel denies the allegations in this paragraph.
`
`ANSWER TO PRAYER FOR RELIEF
`
`72.
`
`Intel denies that is it liable for any relief requested in the Prayer for Relief, including
`
`that requested in subparagraphs A though H. Intel has not directly, indirectly, literally and/or by
`
`the doctrine of equivalents infringed the Patents-in-Suit. Demaray is not entitled to any relief in
`
`this action, either as requested in its Complaint or otherwise.
`
`73.
`
`Intel further denies all allegations in Demaray’s Complaint to which it has not
`
`specifically responded.
`
`INTEL’S AFFIRMATIVE DEFENSES
`
`Intel asserts the following affirmative defenses as a response to the allegations in
`
`Demaray’s Complaint. To the extent any of these defenses, in whole or in part, relates to or negates
`
`an element of Demaray’s claims, Intel in no way seeks to relieve Demaray of its burden of proof
`
`or persuasion on that element.
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`First Affirmative Defense
`(Failure to State a Claim)
`
`74.
`
`Demaray’s Complaint fails to state a claim upon which relief can be granted.
`
`Second Affirmative Defense
`(Noninfringement)
`
`75.
`
`Intel has not infringed and does not infringe (not directly, contributorily, or by
`
`inducement), either literally or under the doctrine of equivalents, any claim of the Patents-in-Suit.
`
`Third Affirmative Defense
`(Patent Invalidity)
`
`76.
`
`The claims of the Patents-in-Suit are invalid because they do not satisfy the
`
`requirements of 35 U.S.C. § 100, et seq., including but not limited to: 35 U.S.C. §§ 101, 102, 103,
`
`112 and/or 116.
`
`Fourth Affirmative Defense
`(Prosecution History Estoppel / Prosecution Disclaimer)
`
`77.
`
`Demaray’s claims are barred by the doctrines of prosecution history estoppel and/or
`
`prosecution disclaimer.
`
`78.
`
`During prosecution of the Patents-in-Suit, the patent application from which the
`
`Patents-in-Suit claim priority (U.S. Patent Application No. 10/101,863 (“the ’863 Application)),
`
`and the other patent applications related to the Patents-in-Suit, the United States Patent and
`
`Trademark Office (“USPTO”) Examiners made multiple rejections in view of the prior art of
`
`record. The Patentees made arguments, amendments, admissions, representations, and statements
`
`during those prosecutions to overcome those rejections.
`
`79.
`
`For example, during prosecution of the ’863 Application, in response to a February
`
`24, 2004 Non-Final Rejection, the Patentees made arguments regarding “pulsed DC power supply”
`
`in their July 23, 2004 response.
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`80.
`
`Demaray is estopped from construing the claims of the Patents-in-Suit to cover or
`
`include, either literally or by the doctrine of equivalents, accused products or methods that were
`
`surrendered because of arguments, amendments, admissions, representations, and/or statements
`
`made before the USPTO during prosecution.
`
`Fifth Affirmative Defense
`(Ensnarement)
`
`81.
`
`Demaray’s claims are barred or limited by the doctrine of ensnarement.
`
`Sixth Affirmative Defense
`(Plaintiff’s License and/or Exhaustion of Rights)
`
`82.
`
`To the extent any products accused by way of the Complaint are subject to a license
`
`for any of the Patents-in-Suit, or to the extent Demaray has otherwise exhausted its rights in the
`
`Patents-in-Suit, Demaray’s claims are barred, in whole or in part.
`
`83.
`
`On information and belief, Dr. Demaray was a general manager of Applied
`
`Komatsu Technology, Inc., developing sputtered silicon deposition technology for flat panel
`
`displays. On information and belief, Dr. Demaray, and other employees working with Dr.
`
`Demaray, were working in Northern California and were employed by either Applied Komatsu
`
`Technology, Inc.’s (“AKT”) subsidiary, Applied Komatsu Technology America Inc. (“AKTA”)
`
`(AKT and AKTA collectively, “Applied Komatsu”), or by Applied Materials, Inc. (“Applied”).
`
`84.
`
`On information and belief, Dr. Demaray, along with several other colleagues from
`
`Applied and/or Applied Komatsu left in late 1998 to start a new company, Symmorphix. On
`
`information and belief, Dr. Demaray was a founder and the CTO of Symmorphix.
`
`85.
`
`On information and belief, at Symmorphix, Dr. Demaray and his team of former
`
`Applied and/or Applied Komatsu employees continued to develop the technology they worked on
`
`at Applied and/or Applied Komatsu related to sputtered silicon deposition technology, including
`
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`methods of sputtering using varying frequencies of RF in order to produce denser dielectric films
`
`for optical components, such as optical waveguides.
`
`86.
`
`On information and belief, on December 11, 1998, Applied Komatsu and
`
`Symmorphix executed a Sale and Relationship Agreement, under which Symmorphix would
`
`purchase two Applied Komatsu systems and continue using the Applied Komatsu facilities to
`
`operate the equipment. Pursuant to the Sale and Relationship Agreement, Applied Komatsu
`
`provided Symmorphix with access to Applied Komatsu facilities through and including April 30,
`
`1999. On information and belief, on April 30, 1999, Applied Komatsu executed a First Addendum
`
`to the Sale and Relationship Agreement, which extended the period of Symmorphix’s access to
`
`Applied Komatsu facilities to continue from April 30, 1999, to July 31, 1999. On information and
`
`belief, on July 28, 1999, Applied Komatsu executed a Second Addendum to the Sale and
`
`Relationship Agreement, which extended the period of Symmorphix’s access to Applied Komatsu
`
`facilities to continue from July 31, 1999, to September 30, 1999. Symmorphix continued using
`
`the Applied Komatsu facilities and equipment at least until September 30, 1999.
`
`87.
`
`On information and belief, the Sale and Relationship Agreement provided that
`
`“[t]he parties have agreed to certain provisions regarding future dealings, intellectual property,
`
`confidential information, and licenses, as described in Exhibit C.” On information and belief, on
`
`January 29, 1999, Applied Komatsu and Symmorphix executed an amended Exhibit C to the Sale
`
`and Relationship Agreement which modified the December 11, 1998 version:
`
`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.
`
`88.
`
`On information and belief, the Amended Exhibit C included a license grant from
`
`Symmorphix to Applied Komatsu, including for “inventions, improvements, or enhancements
`
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`developed by Symmorphix relating to sputtered silicon deposition technology”—the technology
`
`embodied in the Patents-in-Suit. Further, the license grant also expressly permitted Applied
`
`Komatsu to transfer or assign such license grant to Applied, and expressly allowed Applied
`
`Komatsu’s customers to use such inventions as well:
`
`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 application
`files 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 provided by [Applied Komatsu] incorporating inventions licensed
`to [Applied Komatsu] hereunder without further consideration.
`
`89.
`
`On March 16, 2002, the ’863 Application was filed naming Richard E. Demaray,
`
`Hongmei Zhang, Mukundan Narasimhan, and Ravi Mullapudi as named inventors.
`
`90.
`
`On October 1, 2004, U.S. Patent Application No. 10/954,182 was filed as a
`
`continuation application of the ’863 Application naming Richard E. Demaray, Hongmei Zhang,
`
`Mukundan Narasimhan, and Ravi Mullapudi as named inventors. On June 3, 2008, this application
`
`issued as the ’657 patent.
`
`91.
`
`On September 16, 2005, U.S. Patent Application No. 11/228,834 was filed as a
`
`divisional application of the ’863 Application naming Richard E. Demaray, Hongmei Zhang,
`
`Mukundan Narasimhan, and Ravi Mullapudi as named inventors. On June 9, 2009, this application
`
`issued as the ’276 patent.
`
`92.
`
`On information and belief, all four named inventors had executed Employee
`
`Agreements with Applied or Applied Komatsu.
`
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`93.
`
`On information and belief, one or more of the named inventors has the following
`
`assign