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`Case 5:20-cv-05676-EJD Document 51 Filed 12/28/20 Page 1 of 6
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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
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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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`DEMARAY LLC,
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`vs.
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`Defendant.
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`10901674
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`Case No. 5:20-cv-05676-EJD
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`DEMARAY LLC’S OPPOSITION TO
`APPLIED MATERIALS, INC.’S
`ADMINISTRATIVE MOTION FOR
`LEAVE TO LODGE NEW
`DECLARATORY JUDGMENT
`COMPLAINT
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`
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`DEMARAY’S OPPOSITION TO APPLIED’S MOTION
`FOR LEAVE TO LODGE NEW DECLARATORY
`JUDGMENT COMPLAINT
`(Case No. 5:20-cv-05676-EJD)
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`
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`

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`Case 5:20-cv-05676-EJD Document 51 Filed 12/28/20 Page 2 of 6
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`Defendant Demaray LLC (“Demaray”) opposes Applied Materials, Inc.’s (“Applied”)
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`Administrative Motion for Leave to Lodge New Declaratory Judgment Complaint, Dkt. 48.
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`Applied’s self-styled “administrative” motion is nothing of the sort. Applied asks the Court to (1)
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`allow Applied to amend the pleadings in the current action by replacing the operative complaint
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`with Applied’s fourth-filed complaint from newly filed case number 5:20-cv-9341, (2) moot
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`Demaray’s pending motion to dismiss which addresses many issues raised in Applied’s fourth-
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`filed complaint (e.g., Applied’s reliance on unlawful assignment provisions for its license and
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`ownership causes of action), and (3) expedite the case management conference for Applied’s new
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`fourth-filed case, before the complaint has even been served, to January 21, 2021. None of these
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`requests is the type of minor administrative issue that the Local Rules contemplate being
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`addressed in a five-page administrative motion. See L.R. 7-11.
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`The Court is well familiar with the declaratory judgment issues in this case. On December
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`23, 2020, the Court denied Applied’s motion in its third-filed case for preliminary injunction of the
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`first- and second-filed Texas actions because there was no subject matter jurisdiction. Dkt. 47 at 12.
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`Applied’s third-filed case has not been formally dismissed; Demaray’s motion to dismiss, Dkt. 39,
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`is pending. Applied nonetheless waited until Christmas Eve to file its “administrative motion,”
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`making Demaray’s response to the numerous substantive issues it raises due just four days later—
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`meaning this response had to be prepared over the Christmas holiday and the following weekend.
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`I.
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`Applied’s “Administrative” Motion Is Procedurally Improper
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`Applied’s Christmas present was not merely unwelcome, but was procedurally improper on
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`numerous grounds. Local Rule 7-11 administrative motions are for minor “miscellaneous
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`administrative matters, not otherwise governed by a federal statute, Federal or local rule or standing
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`order of the assigned judge.” Applied’s request to replace the operative third-filed complaint in this
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`matter with a supplemental pleading, Applied’s fourth-filed complaint in case number 5:20-cv-
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`9341, should have been brought as a properly noticed motion under Fed. R. Civ. P. 15(a)(1)(B)
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`(“[A] party may amend its pleading only with the opposing party’s written consent or the court’s
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`leave.”). Applied’s requested remedy of not only allowing a supplemental pleading, but allowing
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`that supplemental pleading to supplant the original complaint in this case cannot fairly be addressed
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`10901674
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`- 1 -
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`DEMARAY’S OPPOSITION TO APPLIED’S MOTION
`FOR LEAVE TO LODGE NEW DECLARATORY
`JUDGMENT COMPLAINT
`(Case No. 5:20-cv-05676-EJD)
`
`

`

`Case 5:20-cv-05676-EJD Document 51 Filed 12/28/20 Page 3 of 6
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`via an administrative motion over a holiday weekend.
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`Similarly, Applied’s attempt to prevent the Court from ruling on Demaray’s motion to
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`dismiss via an “administrative” motion is improper. Applied has not voluntarily dismissed this
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`action and, therefore, Applied’s third-filed complaint remains operative as does Demaray’s motion
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`to dismiss. Applied’s new, duplicative fourth-filed complaint merely clogs the Court’s docket with
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`duplicative pleadings. In addition, Applied’s separate filing of a new civil action will necessitate a
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`motion to strike under Rule 12(f) if the pending complaint is not withdrawn. Applied’s approach is
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`an abuse of the parties’ and the Court’s resources. Rather than wasting judicial and party resources
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`by bringing its duplicative fourth-filed complaint, Applied should have sought to voluntarily
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`dismiss this action and then refiled its new complaint with a Motion to Consider Whether Cases
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`Should be Related pursuant to Civil L.R. 3-12. See L.R. 3-3(c).
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`Applied’s attempt to expedite the case management conference in its new fourth-filed
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`complaint to January 21, 2021, also runs afoul of the Civil Local Rules. Under L.R. 3-12(g), the
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`Court sets the case management conference for a new related case after the ruling on the L.R. 3-12
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`motion. L.R. 3-12(g) (“The case management conference in any reassigned case will be rescheduled
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`by the newly assigned Judge”). The timing of the conference is governed by L.R. 16-2(a). If a party
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`wants to change that procedure, “[b]y serving and filing a motion with the assigned judge pursuant
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`to Civil L.R. 7, a party … may seek relief from an obligation imposed by Fed. R. Civ. P. 16 or 26 or
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`the Order Setting Initial Case Management Conference.” L.R. 16-2(d). Courts in this district have
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`made clear that Applied’s attempts to circumvent the requirements of the Local Rules to expedite
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`its fourth-filed case are improper and should be rejected. See Raymat Materials, Inc. v. A & C
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`Catalysts, Inc., 2014 WL 1647529, at *6 (N.D. Cal. Apr. 22, 2014) (concluding that administrative
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`motion seeking “to modify the scheduling order” was improper because it sought “relief governed
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`by the federal rules”).
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`II.
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`Applied Cannot Correct The Lack Of Subject Matter Jurisdiction In The Pending
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`Matter
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`Applied’s suggestion that it can avoid the requirements for subject matter jurisdiction by
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`replacing the operative complaint in this matter with its new fourth-filed complaint in case number
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`10901674
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`- 2 -
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`DEMARAY’S OPPOSITION TO APPLIED’S MOTION
`FOR LEAVE TO LODGE NEW DECLARATORY
`JUDGMENT COMPLAINT
`(Case No. 5:20-cv-05676-EJD)
`
`

`

`Case 5:20-cv-05676-EJD Document 51 Filed 12/28/20 Page 4 of 6
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`5:20-cv-9341 is contrary to black letter law. Applied admits that “subject matter jurisdiction is
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`determined by the facts as they existed at the time of the operative complaint.” Mot. at 2. Applied
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`cannot avoid that requirement by providing a supplemental complaint.
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`The Federal Circuit dealt with this issue in Innovative Therapies, Inc. v. Kinetic Concepts,
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`Inc., 599 F.3d 1377, 1383 (Fed. Cir. 2010). In that case, the district court concluded that it lacked
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`jurisdiction at the time of the original declaratory judgment complaint. Id. Although the district
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`court also concluded that later acts alleged in a supplemental complaint showed an actual
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`controversy, id., it declined to “permit[] premature (i.e., pre-actual controversy) declaratory
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`judgment patent actions to be saved by a supplemental pleading incorporating events that occurred
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`after the filing of the original complaint,” Innovative Therapies, Inc. v. Kinetic Concepts, Inc., 2008
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`WL 2746960, at *9 (D. Del. July 14, 2008). The Federal Circuit affirmed the district court’s
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`dismissal of “the declaratory action including the supplemental complaint,” Innovative Therapies,
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`599 F.3d at 1385, because “to hold otherwise ‘would invite a declaratory judgment plaintiff in a
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`patent case to file suit at the earliest moment it conceives of any potential benefit to doing so,
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`confident that it will either draw an infringement suit in response (thereby retroactively establishing
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`jurisdiction over their first-filed declaratory judgment suit) or will suffer no adverse consequence
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`other than having its suit dismissed,’” id. at 1384 (quoting Innovative Therapies, 2008 WL
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`2746960, at *10). Like in Innovative Therapies, Applied’s attempt to retroactively establish
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`jurisdiction should be rejected.
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`III. Applied’s “New Facts” Should Not Impact The Court’s Determination That Subject
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`Matter Jurisdiction Is Lacking
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`Applied’s motion is also futile as Demaray still has not taken any affirmative actions against
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`Applied. In concluding that there is no subject matter jurisdiction for Applied’s action, the Court
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`addressed Demaray’s Texas allegations and other record evidence, and concluded that “Demaray
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`does not allege in the WDTX Actions that Applied itself configures the reactors or promotes the
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`patented configuration and method.” Dkt. 47 at 8. This was after acknowledging that “[t]he Applied
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`publications Demaray references do not discuss the specific configuration or method covered under
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`Demaray’s Asserted Patents.” Id. As to any potential indirect infringement claims, the Court
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`10901674
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`- 3 -
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`DEMARAY’S OPPOSITION TO APPLIED’S MOTION
`FOR LEAVE TO LODGE NEW DECLARATORY
`JUDGMENT COMPLAINT
`(Case No. 5:20-cv-05676-EJD)
`
`

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`Case 5:20-cv-05676-EJD Document 51 Filed 12/28/20 Page 5 of 6
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`concluded “there is no evidence apparent to the Court that Demaray provides a lengthy presentation
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`of infringement contentions in the WDTX Actions that use of Applied’s reactors is central to
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`Demaray’s infringement claims against Intel and Samsung.” Id. at 11; see also id. at 12 (Demaray’s
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`“claims do not speak to the reactors themselves or many other non-infringing uses described in
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`Applied’s publications … As Applied has not alleged its reactors could not be used without
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`infringing the Asserted Patents, there is no indication that Applied contributed to the alleged
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`infringement by its customers.”).
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`Applied’s fourth-filed declaratory judgment complaint does nothing to address these fatal
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`deficiencies. It appears that Applied’s only allegations that the Court has not already considered are
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`discovery proceedings in the Texas cases related to motions to transfer filed by the defendants in
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`those cases. See Mot. at 1. That discovery is expected to include certain information about Intel’s
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`and Samsung’s infringing use of the reactor configurations, which is not publicly available. Once
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`Demaray has such information, Demaray will evaluate it. Demaray obviously cannot do so before
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`receiving the information. Those discovery events are entirely consistent with the Court’s
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`conclusion “at this stage in the litigation, the Court sees no way to tell definitively whether the
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`references to Applied’s Endura reactors are intended as required parts of the accused configurations
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`and methods, or whether they are simply offered as illustrations or as part of the background of the
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`accused reactor configuration and method.” Dkt. 47 at 11; see also Dkt. 43 at 4 (Demaray’s
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`representation to the Court that “Demaray does not have the information necessary to determine
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`whether Applied’s reactors standing alone can be accused of infringing the Demaray patents”).
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`Thus, even today, there is no actual case or controversy between Demaray and Applied.1
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`IV. CONCLUSION
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`Applied is not entitled to an exception from the Federal and Local Rules. Applied’s
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`1 The Texas cases with Intel and Samsung are well underway. The parties have already
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`exchanged claim terms for claim construction under the Texas schedule. Applied’s continued
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`attempt to burden Demaray with duplicative litigation before this Court, particularly when there is
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`still no jurisdiction for it, amounts to a further waste of party and judicial resources.
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`10901674
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`- 4 -
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`DEMARAY’S OPPOSITION TO APPLIED’S MOTION
`FOR LEAVE TO LODGE NEW DECLARATORY
`JUDGMENT COMPLAINT
`(Case No. 5:20-cv-05676-EJD)
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`

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`Case 5:20-cv-05676-EJD Document 51 Filed 12/28/20 Page 6 of 6
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`administrative motion should be denied.
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`Dated: December 28, 2020
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`Respectfully submitted,
`IRELL & MANELLA LLP
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`By: /s/ C. Maclain Wells
`C. Maclain Wells
`Attorneys for Defendant DEMARAY LLC
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`10901674
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`- 5 -
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`DEMARAY’S OPPOSITION TO APPLIED’S MOTION
`FOR LEAVE TO LODGE NEW DECLARATORY
`JUDGMENT COMPLAINT
`(Case No. 5:20-cv-05676-EJD)
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`