Case 5:20-cv-05676-EJD Document 45 Filed 12/16/20 Page 1 of 3
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`APPLIED MATERIALS, INC.,
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`Plaintiff,
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`v.
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`DEMARAY LLC,
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`Defendant.
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`Case No. 5:20-cv-05676-EJD
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`ORDER DENYING ADMINISTRATIVE
`MOTION FOR LEAVE TO FILE SUR-
`REPLY
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`Re: Dkt. No. 30
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`Before the Court is Defendant Demaray LLC’s (“Demaray”) Administrative Motion for
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`Leave to File Sur-Reply. See Dkt. No. 30. Demaray seeks leave to file a response to Plaintiff
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`Applied Materials, Inc.’s (“Applied”) Reply in Support of the Motion for Preliminary Injunction,
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`(“Reply”), arguing that Applied presented new evidence in its Reply brief. Applied opposes the
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`motion. See Applied Materials, Inc.’s Opposition to Demaray LLC’s Administrative Motion to
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`File Sur-Reply to Applied’s Motion for Preliminary Injunction (“Opp.”), Dkt. No. 31. For the
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`reasons discussed below, the motion is DENIED.
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`I. BACKGROUND
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`The instant dispute concerns Demaray’s claim that Applied has raised new arguments
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`related to additional evidence attached to its Reply brief that was not included in the moving
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`papers. Demaray identifies the following four categories of new arguments:
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`• “‘Applied now contends that declaratory judgment subject matter jurisdiction is
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`present based upon an email in which Demaray approached Applied to license
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`certain Demaray patents. Reply at 2-3.’
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`•
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`‘Applied now provides new facts regarding the relationship between Applied and
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`Case No.: 5:20-cv-05676-EJD
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`Case 5:20-cv-05676-EJD Document 45 Filed 12/16/20 Page 2 of 3
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`its customers. Reply at 4-5.’
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`•
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`‘Applied now contends that [Mukundan] Narasimhan’s employment agreement
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`applies to patent assignments, despite never informing the Court that these
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`provisions had been declared unlawful or presenting the Court with said agreement.
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`Reply at 12-13.’
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`•
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`‘Applied now provides new facts regarding the activities of the Samsung and Intel
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`defendants in the earlier-filed Texas cases. Reply at 14-15.’”
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`II. DISCUSSION
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`Applied argues that it “properly raised these arguments in its Reply directly in response to
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`the arguments raised in Demaray’s Opposition.” Opp. at 3. “Where new evidence is presented in
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`a reply . . . the district court should not consider the new evidence without giving the non-movant
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`an opportunity to respond.” Provenz v. Miller, 102 F.3d 1478, 1483 (9th Cir. 1996) (alteration and
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`citation omitted). However, evidence submitted with a reply brief is not new evidence when it is
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`submitted to rebut arguments raised in the opposition brief. See Synopsys, Inc. v. Mentor
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`Graphics Corp., 2013 WL 6577143, at *1 (N.D. Cal. Dec. 13, 2013) (“Synopsys’s Administrative
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`Motion for Leave to File Sur–Reply is hereby DENIED. . . Mentor does not “[raise new arguments
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`and evidence] . . . in its reply brief” . . . but, rather, responds to arguments made in Synopsys’s
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`opposition”).
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`Having considered the parties’ briefing on Applied’s Motion for Preliminary Injunction,
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`the Court finds that the arguments raised in Applied’s Reply brief do not present new information,
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`but respond to arguments raised in Demaray’s Opposition. Specifically, Applied does not present
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`new factual contentions about Demaray’s offer to license the asserted patents and the relationship
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`between Applied and its customers, but instead responds to Demaray’s argument regarding
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`whether the Court has subject matter jurisdiction over this case. Moreover, in its Opposition,
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`Demaray argued assignment provisions in licensing/employment agreements referenced in
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`Applied’s Motion for Preliminary Injunction are unlawful and that Applied is estopped from
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`litigating claims addressing these claims given prior court rulings. Opposition to Applied
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`Case 5:20-cv-05676-EJD Document 45 Filed 12/16/20 Page 3 of 3
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`Materials’ Motion for Preliminary Injunction at 11-14. In its Reply brief, Applied responds to the
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`arguments raised in Demaray’s Opposition and introduces the full employment agreement at issue
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`as evidence. Thus, contrary to Demaray’s assertions, Applied’s Reply does not raise the
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`employment agreement as new evidence for the first time in the Reply. Similarly, the Court finds
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`that Demaray’s discussion of the location of relevant customer activities responded to evidence in
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`Demaray’s Opposition used to argue that it is more convenient to litigate this matter in the
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`Western District of Texas. Accordingly, no sur-reply is warranted on these issues.
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`III. CONCLUSION
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`For the reasons stated above, Demaray’s Administrative Motion for Leave to File Sur-
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`Reply is DENIED
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`IT IS SO ORDERED.
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`Dated: December 16, 2020
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`______________________________________
`EDWARD J. DAVILA
`United States District Judge
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`Case No.: 5:20-cv-05676-EJD
`ORDER DENYING ADMINISTRATIVE MOTION FOR LEAVE TO FILE SUR-REPLY
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