Case 5:20-cv-09341-EJD Document 101 Filed 12/15/21 Page 1 of 4
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`APPLIED MATERIALS, INC.,
`Plaintiff,
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`v.
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`DEMARAY LLC,
`Defendant.
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`Case No. 20-cv-09341 EJD (NC)
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`ORDER RE: DISCOVERY
`DISPUTES
`Re: ECF 67, 83, 86
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`Presented to the Court in this multi-venue patent case are three discovery disputes:
`Demaray’s motion to stay pending inter partes review (ECF 67); Applied’s motion to
`compel compliance with patent local rules (ECF 83); and Applied’s motion to compel the
`deposition of Dr. Demaray (ECF 86). Discovery in this venue of the case has been
`referred to me generally and two of the motions were expressly referred to me by the trial
`judge, District Court Judge Edward J. Davila. ECF 87. Not decided here but presented to
`Judge Davila is a separate motion in which Demaray requests a case management
`conference. ECF 92. I held a hearing earlier today on the discovery disputes and now
`rule.
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`NorthernDistrictofCalifornia
`United States District Court
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`Case 5:20-cv-09341-EJD Document 101 Filed 12/15/21 Page 2 of 4
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`1. Demaray’s Motion to Stay: Denied
`Applied filed for inter partes review of the two patents-in-suit and the PTO has
`instituted two of those petitions. Demaray now moves to stay this case pending the
`completion of the IPR review, arguing that a stay would be efficient, practical, and fair.
`Applied, on the other hand, argues against a stay because it would be placed at an unfair
`tactical disadvantage here and in the companion cases in the Western District of Texas
`where Demaray is suing Applied’s customers Intel and Samsung on the same patents.
`Courts have inherent power to manage their dockets, including the discretion to stay
`a case pending concurrent Patent Office proceedings. See Ethicon, Inc. v. Quigg, 849 F.2d
`1422, 1426-27 (Fed. Cir. 1988). In considering a stay, courts generally consider three
`factors: (1) the stage of the case; (2) whether a stay will simplify the issues in question and
`the trial of the case; and (3) whether a stay would unduly prejudice or present a clear
`tactical disadvantage to the non-moving party. Evolutionary Intelligence, LLC v. Apple,
`Inc., 2014 WL 93954, at *2 (N.D. Cal. Jan. 9, 2014).
`Here, the case is at an intermediate stage. Judge Davila earlier this year denied in
`part Demaray’s motion to dismiss (ECF 63) and then granted Applied’s motion to lift the
`stay of discovery (ECF 80). He indicated that this Court has subject matter jurisdiction
`and that the case should proceed forward. A stay during IPR might simplify the issues in
`question and streamline the trial, so the first two factors are in favor of a stay. But a stay
`would unduly prejudice and present an overwhelming tactical disadvantage to Applied.
`I find that this stay request is comparable to Xilinx, Inc. v. Invention Inv. Fund I LP,
`No. 11-cv-671-EJD, Dkt. No. 174, 2012 WL 6003311, at *3 (N.D. Cal. Nov. 30, 2012).
`There, Judge Davila denied a stay pending IPR where the motion revealed “a tactical
`attempt ‘to delay or stop this action in favor of [another action].’” 2012 WL 6003311, at
`*3. Similarly here, Demaray’s stay request would allow its customer suits in Texas to
`proceed.
`The timing of Demaray’s stay motion also reveals gamesmanship. Demaray, like
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`Case 5:20-cv-09341-EJD Document 101 Filed 12/15/21 Page 3 of 4
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`the patentees in Xilinx, made this stay request after this Court denied a motion to dismiss
`for lack of subject matter jurisdiction. Demaray also makes its request here after it: (1)
`successfully opposed Applied’s customers’ requests to defer a scheduling order in
`deference to Applied’s manufacturer suit; and (2) the WDTX court denied motions to
`transfer and the Federal Circuit denied petitions for writs of mandamus.
`Balancing all these considerations, I deny Demaray’s motion to stay.
`2. Applied’s Motion to Compel Compliance with the Patent Local Rules: Granted
`in Part
`Next, Applied moves to compel Demaray’s compliance with the Patent Local Rules
`of the Northern District of California. ECF 83; ECF 98 (updated proposed order). A
`motion to compel compliance with the rules should not be necessary. The rules direct an
`orderly process for patent cases and have been battle-tested through thousands of cases.
`Demaray responds that it is awaiting a case management conference with Judge Davila and
`has moved to stay the case, so is not in procedural default. ECF 90. Demaray essentially
`has granted itself a further stay of the case even after Judge Davila ordered an end to the
`discovery stay on October 15, 2021. ECF 80. Applied’s motion is therefore granted in
`part. Both parties must comply with the Patent Local Rules. This requires communication
`and cooperation. The parties are ordered to confer and file an updated joint case
`management statement by December 22, 2021, setting forth their case management plan(s)
`for Judge Davila. I do not adopt the unilateral case schedule proposed at ECF 98 by
`Applied.
`3. Applied’s Motion to Compel Deposition of Dr. Demaray: Granted.
`Finally, Applied moves to compel the deposition of inventor Dr. Demaray. ECF 86.
`With the stay denied and discovery ordered to proceed, there is little reason given, and no
`persuasive burden shown by Dr. Demaray to preclude this important deposition. Applied’s
`motion is granted and Dr. Demaray must be deposed by January 21, 2022.
`No fees or costs are awarded.
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`Case 5:20-cv-09341-EJD Document 101 Filed 12/15/21 Page 4 of 4
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`IT IS SO ORDERED.
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`Dated: December 15, 2021
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`_____________________________________
`NATHANAEL M. COUSINS
`United States Magistrate Judge
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