Case 5:20-cv-05676-EJD Document 48 Filed 12/24/20 Page 1 of 4
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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
`ANDY LEGOLVAN (SB# 292520)
`andylegolvan@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.
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`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`APPLIED MATERIALS, INC.,
`Plaintiff,
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`vs.
`DEMARAY LLC,
`Defendant.
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`CASE NO. 5:20-cv-05676-EJD
`APPLIED MATERIALS, INC.’S
`ADMINISTRATIVE MOTION FOR
`LEAVE TO LODGE NEW
`DECLARATORY JUDGMENT
`COMPLAINT
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`APPLIED’S ADMIN. MOTION FOR LEAVE
`TO LODGE NEW COMPLAINT
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`Case 5:20-cv-05676-EJD Document 48 Filed 12/24/20 Page 2 of 4
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`Applied Materials, Inc. (“Applied”) submits this administrative motion for leave to lodge
`a new declaratory judgment complaint against Demaray LLC (“Demaray”), concurrently filed
`herewith as Exhibit 1. The new declaratory judgment complaint has also been concurrently filed
`as a new civil action, assigned case number 5:20-cv-9341.
`On December 16, 2020, the Court denied Applied’s motion for preliminary injunction to
`enjoin Demaray from proceeding with infringement actions filed against Applied’s customers,
`finding that Applied did not plead in its operative complaint a sufficient controversy to warrant
`declaratory judgment jurisdiction. Dkt. Nos. 46, 47. Currently pending before the Court is
`Demaray’s motion to dismiss the operative complaint for lack of jurisdiction. Dkt. Nos. 39, 42,
`43. The Court has not yet ruled on Demaray’s motion.
`Since the filing of Applied’s operative complaint (Sept. 1, 2020, Dkt. No. 13), Demaray’s
`conduct in both this action and Demaray’s infringement actions against Applied’s customers
`confirms that there is a substantial controversy between Applied and Demaray. The details
`supporting this Court’s subject matter jurisdiction are set forth in detail in the new complaint.
`Under the totality of the evidence and the facts that exist today, which include: (i) the commercial
`realities of the relationship between Applied and its customers using Applied’s products; (ii)
`Demaray’s exclusive reliance on Applied’s products in the Customer Complaints; (iii) Demaray’s
`infringement contentions in the Customer Suits; (iv) Applied’s customers’ confirmation that they
`do not perform the post-installation modifications to Applied’s reactors that Demaray contended
`took place; (v) Demaray’s refusal to grant Applied a covenant not to sue; (vi) Demaray’s refusal
`to inform Applied or the Court in the DJ Action whether it will assert compulsory counterclaims;
`(vii) Demaray’s requests to obtain discovery from Applied to determine if Applied allegedly
`infringes; (viii) Demaray’s serving of subpoenas to Applied for discovery regarding the reactors it
`supplies to Intel and Samsung, including Applied’s configurations of the hardware components
`Demaray previously alleged that Intel and Samsung configures on their own; and (ix) Demaray’s
`representations in the Customer Suits that the discovery from Applied is necessary to determine
`which reactors allegedly infringe—there is a substantial controversy between the parties having
`adverse legal interests, of sufficient immediacy and reality regarding the Asserted Patents.
`APPLIED’S ADMIN. MOTION FOR LEAVE
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`TO LODGE NEW COMPLAINT
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`- 1 -
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`Case 5:20-cv-05676-EJD Document 48 Filed 12/24/20 Page 3 of 4
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`Demaray’s affirmative acts, which include recently utilizing the subpoena power of the
`court where the customer suits are pending to request documents and deposition testimony from
`Applied, including documents relating to Applied’s reactors supplied to Applied’s customers and
`Applied’s configurations of those reactors, resolve any prior ambiguity as to whether this Court
`has subject matter jurisdiction over Applied’s claims. In other words, it has become clear that
`Demaray’s customer suits have shifted from purportedly accusing Applied’s customers of
`performing post-installation configurations to Applied’s reactors such that Demaray was not
`accusing “Applied PVD reactors standing alone of infringement,” to now accusing Applied of
`performing the allegedly infringing configurations, and the customers simply using the allegedly
`infringing reactors as supplied to them by Applied. These recent developments, including
`Demaray’s acknowledgment in the November 30, 2020 Joint Case Management Statement (see
`Dkt. No. 40 at p. 5:6-11, 11:11-14) that it intended to seek discovery from Applied to determine if
`Applied’s configurations allegedly infringe, confirm that there is a substantial controversy
`between the parties having adverse legal interests, of sufficient immediacy and reality regarding
`the Asserted Patents.
`Because subject matter jurisdiction is determined by the facts as they existed at the time of
`the operative complaint, and these recent developments in the customer suits post-date the
`operative complaint in this action, Applied has filed the enclosed complaint as a new action to
`account for the facts as they exist today.
`However, Applied respectfully submits that it would be more judicially efficient to have
`this new complaint become operative in this action (or alternatively in a new action before this
`Court) in light of the Court’s familiarity with the facts and procedural posture of this action and
`the case management conference set for January 21, 2021, Dkt. No. 41. Demaray agrees that if
`the new complaint is accepted, the case should proceed before this Court. While maintaining its
`belief that subject matter jurisdiction exists over the original complaint, for purposes of resolving
`Demaray’s pending motion to dismiss, Applied agrees to voluntarily dismiss the operative
`complaint in view of the Court’s prior finding of lack of subject matter jurisdiction.
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`APPLIED’S ADMIN. MOTION FOR LEAVE
`TO LODGE NEW COMPLAINT
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`Case 5:20-cv-05676-EJD Document 48 Filed 12/24/20 Page 4 of 4
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`Therefore, Applied requests (1) leave to lodge the concurrently filed declaratory judgment
`complaint, (2) that the Court permit the new complaint to become the operative complaint in this
`action, and (3) that the Court deny as moot Demaray’s pending motion to dismiss.
`Alternatively, with the Court’s approval and guidance, Applied can voluntarily dismiss the
`operative complaint in this action, proceed with a new-filed action based on the concurrently filed
`complaint, and take appropriate action to relate the new action with this Court under Local Rule
`3-12. Under these circumstances, in the interest of judicial efficiency and avoiding further delay
`of Applied’s declaratory judgment causes of action, Applied respectfully requests that the Court
`maintain the currently scheduled January 21, 2021 case management conference.
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`DATED: December 24, 2020
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`YAR R. CHAIKOVSKY
`PHILIP OU
`JOSEPH J. RUMPLER, II
`ANDY LEGOLVAN
`BERKELEY FIFE
`BORIS LUBARSKY
`PAUL HASTINGS LLP
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`By: /s/ Yar R. Chaikovsky
`YAR R. CHAIKOVSKY
`Attorneys for Plaintiff
`APPLIED MATERIALS
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`APPLIED’S ADMIN. MOTION FOR LEAVE
`TO LODGE NEW COMPLAINT
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