Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 1 of 38
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`Exhibit 2
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`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 2 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 2 of 38
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`IRELL & MANELLA LLP
`Morgan Chu (70446)
`MChu@irell.com
`Benjamin W. Hattenbach (186455)
`BHattenbach@irell.com
`€-Maclain-Wells-221609)Samuel K. Lu (171969)
`MWelsSLu@irell.com
`Olivia L. Weber (319918)
`OWeber@irell.com
`1800 Avenueof the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone:
`(310) 277-1010
`Facsimile:
`(310) 203-7199
`
`ROUP PLL
`FOLIO LA
`C. Maclain Wells (221609)
`Maclain@foliolaw.com
`2376 Pacifie A’
`San Francisco, CA 94115
`(415) 562-8632
`
`Attorneys for Defendant
`DEMARAYLLC
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`APPLIED MATERIALS, INC.,
`
`Case No. 5:20-cv-09341-EJD
`
`) DEFENDANT DEMARAYLLC’S'S”
`)
`[PROPOSED] AMENDED ANSWER-AND,
`) AFFIRMATIVE DEFENSES, AND
`) COUNTERCLAIMS TO COMPLAINT
`
`DEMAND FOR JURY TRIAL
`
`))) )
`
`Plaintiff,
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`VS.
`
`DEMARAYLLC,
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`Defendant.
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`MmBRWwWNO
`Oofeo“SNAN
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`DEMARAY LLC?S!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
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`4404286711074621
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`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 3 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 3 of 38
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`MmBRWwWNO
`Oofeo“SNAN
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`Defendant Demaray LLC (*""Demaray~""), by its undersigned counsel, hereby submitsits
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`Amended Answer_and Counterelaimsto plaintiff Applied Materials, Inc.2's (£''!Applied"')
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`Complaint for Declaratory Judgment. Solely for convenience, the headings from the Complaint are
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`reproducedhere. To the extent not specifically admitted herein, the allegations of the Complaint are
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`denied.
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`NATURE OF THE ACTION
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`1.
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`Demaray admits that Applied has filed this lawsuit purporting to seek a declaratory
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`judgment. Demaray admitsthatit filed lawsuits against Intel and Samsung alleging infringement of
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`U.S. Patent Nos. 7,544,276 (the “?''276 patent’Patent") and 7,381,657 (the ‘!'657
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`10
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`patent”Patent"') on July 14,2020. Demaray admits that what appears to be copies ofits complaints
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`against Intel and Samsung are attached as Exhibit A and B to the Complaint. This paragraph
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`contains legal conclusions to which no response is required. Demaray denies any remaining
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`allegations in this paragraph.
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`2.
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`Demaray admits that the 2!276 and 2'657 patentsPatents are titled “''Biased Pulse
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`DC Reactive Sputtering of Oxide films”"' and share a commonspecification. Demaray admits that
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`the 2'276 patentPatent is directed toward apparatus claims and that the 2'657 patentPatent is
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`directed toward method claims. This paragraph contains legal conclusions to which no responseis
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`required. Demaray is without knowledge sufficient to admit or deny the remaining allegations in
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`this paragraph and therefore denies them.
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`3.
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`Demaray admits that John Forster purports to have been an Applied employee who
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`submitted a declaration in Applied Materials, Inc. v. Demaray LLC, Case No. 5:20-cv-05676-EJD
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`(£''Applied F2"'), a copy of which appears to be attached as Exhibit Q to the Complaint. Demaray
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`affirmatively states that Exhibit Q speaks for itself. This paragraph contains legal conclusions to
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`which no response is required. Demaray denies any remaining allegations in this paragraph.
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`4,
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`Demaray admits that Dr. Ernest Demaray is a former employee of Applied Komatsu
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`Technology, Inc. ({'!Applied Komatsu") and has decades of experience working with or in the
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`semiconductor industry. Demaray admits that a copy of Dr. Demaray's declaration submitted in
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`Applied I appears to be attached as Exhibit M to the Complaint. Demaray admits that Scot Griffin
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`DEMARAY LLC?8!S[PROPOSED]AMENDED
`
`ANSWER F0-COMPLAINFAND
`
`anannsmaanmaras
`
`- 1 -
`
`(Dann In E90 a. ONNIAL TIM
`
`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 4 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 4 of 38
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`MmBRWwWNO
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`works as a consultant to Demaray and “"'has extensive knowledge about the semiconductor
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`industry.2'! Demaray affirmatively states that Exhibits M and R speak for themselves. Demaray
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`denies any remaining allegations in this paragraph.
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`5.
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`Demaray admits that Applied filed a purported declaratory judgment action of
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`non-infringement in Applied I on August 13, 2020 and that Applied moved for a preliminary
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`injunction on September 4, 2020. This paragraph contains legal conclusions to which no responseis
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`required. Demaray is without knowledge sufficient to admit or deny the remaining allegations in
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`this paragraph and therefore denies them.
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`6.
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`Demaray admits that the excerpted text appears in its opposition to Applied2's
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`motion for preliminary injunction in Applied I. Demaray admits that in the Texas complaints it
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`“"did not accuse Applied PVDreactors standing alone of infringement in the Texas cases.”"! This
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`paragraph contains legal conclusions to which no response is required. Demaray denies any
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`remaining allegations in this paragraph.
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`7.
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`This paragraph contains legal conclusions to which no response is required.
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`Demaray denies any remaining allegations in this paragraph.
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`8.
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`This paragraph contains legal conclusions to which no response is required.
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`Demaray denies any remaining allegations in this paragraph.
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`9.
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`This paragraph contains legal conclusions to which no response is required.
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`Demaraydenies any remainingallegations in this paragraph.
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`10.|Demaray admits that it served infringement contentions on October 9, 2020 in the
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`Texas cases, copies of which appear to be attached as Exhibits C and D to the Complaint. This
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`paragraph contains legal conclusions to which no response is required. Demaray denies any
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`remaining allegations in this paragraph.
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`11.|Demaray admits that Applied submitted declarations in Applied J in alleged support
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`of its motion for preliminary injunction. This paragraph contains legal conclusions to which no
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`response is required. Demaray denies any remaining allegations in this paragraph.
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`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
`
`anannsmaanmaras
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`- 9 -
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`[Daan Tan EAN ae ANIAT TIM
`
`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 5 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 5 of 38
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`12.|Demaray admits that it required, andstill requires, discovery from Applied or other
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`MmBRWwWNO
`Oofeo“SNAN
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`sources such as Applied suppliers to ascertain whether it will
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`file additional _compulsory
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`counterclaims of infringement and that correspondence and conferences occurred regarding the
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`same. Demaray affirmatively states that Exhibit E of the Complaint speaks for itself. Demaray
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`denies any remaining allegations in this paragraph.
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`13.|Demaray admits that the excerpted text appears in the Joint Case Management
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`Statement filed in Applied I. Demaray is without knowledge sufficient to admit or deny the
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`remaining allegations in this paragraph and therefore denies them.
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`14.|Demaray admits that it served Applied with subpoenasin the Texas actions, copies
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`of which appear to be attached as Exhibits F and G to the Complaint. Demaray denies any remaining
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`allegations in this paragraph.
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`15.|Demaray admits that the excerpted text appears in correspondenceto the Court in the
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`Texas action, a copy of which appearsto be attached as Exhibit H to the Complaint. Demaray denies
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`any remaining allegations in this paragraph.
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`16.
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`This paragraph contains legal conclusions to which no response is required.
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`Demaray denies any remaining allegations in this paragraph.
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`17.
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`This paragraph contains legal conclusions to which no response is required.
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`Demaray denies any remaining allegations in this paragraph.
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`18.|Demaray admits that Dr. Demaray left Applied Komatsu and participated in forming
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`Symmorphix, Inc. (£''Symmorphix”"'), and that Symmorphix entered a Sales and Relationship
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`Agreement (“""SRA”"') with Applied Komatsu. Demarayaffirmatively states that Exhibit I speaks
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`for itself. Demaray denies any remaining allegations in this paragraph.
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`19.|Demaray affirmatively states that Exhibit J speaks for itself. Demaray denies any
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`remaining allegations in this paragraph.
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`20.
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`Demaray affirmatively states that Exhibit K speaks for itself. Demaray denies any
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`remaining allegations in this paragraph.
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`21.
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`Denied.
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`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
`
`anannsmaanmaras
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`- 3 -
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`[Daan Tan EAN ae ANIAT TIM
`
`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 6 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 6 of 38
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`22.|Demaray admits that Mukundan Narasimhan is one of the four named inventors on
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`the 2'276 and 2'657 patentsPatents and joined Symmorphix on April 16, 2001. Demaray denies any
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`remaining allegations in this paragraph.
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`23.|Demaray admits that Applied purports to request declaratory relief as described in
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`this paragraph.
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`THE PARTIES
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`MmBRWwWNO
`Oofeo“SNAN
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`24.|Demaray admits that Applied asserts that it is a Delaware corporation with its
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`principal place of business at 3050 Bowers Avenue, Santa Clara, CA 95054-3299. Demaray is
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`without knowledge sufficient to admit or deny the remaining allegations in this paragraph and
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`therefore denies them.
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`25.|Demaray admits that Demaray is a Delaware LLC. Demaray admits that Dr.
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`Demarayis the founder of Demaray and that Dr. Demarayis one of the named inventors on the 2'276
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`and 2'657 patentsPatents. Demaray admits that the excerpted text in this paragraph appears on the
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`hyperlinked website. Demaray admits that Dr. Demaray has over 50 years of experience working
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`with or in the semiconductorindustry.
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`SUBJECT MATTER JURISDICTION
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`26.|Demaray admits that Applied-has purports to bring this action for a declaration under
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`the Declaratory Judgment Act, 28 U.S.C. § 2201. Demaray denies any remaining allegationsin this
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`paragraph.
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`27.
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`Demaray admits that
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`it
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`filed lawsuits against
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`Intel and Samsung alleging
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`infringementof the 2!276 patentPatent and 2'657 patentPatent on July 14, 2020. This paragraph
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`contains legal conclusions to which no response is required. Demaray denies any remaining
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`allegations in this paragraph.
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`28.
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`29.
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`Admitted.
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`Admitted.
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`30.|Demaray admits that its complaints in the Texas cases identified the Endura product
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`line from Applied that can be configured for deposition of TaN layers (e.g., CuBS RFX PVD with
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`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
`
`anannsmaanmaras
`
`- A -
`
`[Daan Tan EAN ae ANIAT TIM
`
`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 7 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 7 of 38
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`the Encore II Ta(N) barrier chamber) and TiN layers(e.g., Cirrus ionized PVD chamber). Demaray
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`denies any remaining allegations in this paragraph.
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`31.|Demaray admits that Intel and Samsung use Applied reactors, among others, to
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`deposit film layers in semiconductor products. Demaray is without knowledge sufficient to admit or
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`deny the remainingallegations in this paragraph and therefore denies them.
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`32.|Demaray is without knowledge sufficient to admit or deny the allegations in this
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`MmBRWwWNO
`Oofeo“SNAN
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`paragraph and therefore denies them.
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`33.
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`Denied.
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`34.|Demaray admits that its complaints in the Texas cases mentioned Applied reactors.
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`Demaraydenies any remaining allegations in this paragraph.
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`35.|Demaray admits that its complaints in the Texas cases mentioned Applied reactors.
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`Demaray denies any remaining allegations in this paragraph.
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`36.|Demaray admits that the excerpted text appears in its complaints in the Texascases.
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`Demaray denies any remaining allegations in this paragraph.
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`37.|Demaray admits that its complaints in the Texas cases mentioned Applied reactors.
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`Demaray admits that the excerpted text appears in Exhibit Q of the complaint. Demaray denies any
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`remaining allegations in this paragraph.
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`38.|Demaray admits that its complaints in the Texas cases mentioned Applied reactors.
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`Demaraydenies any remaining allegations in this paragraph.
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`39.
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`Denied.
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`40.|Demaray admits that Applied filed a purported declaratory judgment complaint on
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`August 13, 2020 and amendedits complaint on September 1, 2020. Demaray denies any remaining
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`allegations in this paragraph.
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`41.
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`Admitted.
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`42.|Demaray admits that the excerpted text appears in its opposition to Applied2's
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`motion for preliminary injunction. Demaray denies any remaining allegations in this paragraph.
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`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
`
`anannsmaanmaras
`
`-4.-
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`[Daan Tan EAN ae ANIAT TIM
`
`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 8 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 8 of 38
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`43.|Demaray admits that it served infringement contentions on October 9, 2020.
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`Demaraydenies any remaining allegations in this paragraph.
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`44._Denied.
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`45.|Demaray admits that Applied submitted declarations in Applied I in purported
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`support of its motion for preliminary injunction. Demaray denies any remainingallegations in this
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`paragraph.
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`MmBRWwWNO
`Oofeo“SNAN
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`46.|Demaray admits that it required, and still requires, discovery from Applied or other
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`sources such as Applied suppliers to ascertain whether it will file_additional compulsory
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`counterclaims of infringement and that correspondence and conferences occurred regarding the
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`same. Demaray denies any remaining allegationsin this paragraph.
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`47.|Demaray admits that the excerpted text appears in the Joint Case Management
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`Conference Statement submitted in Applied I. Demaray denies any remaining allegations in this
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`paragraph.
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`48.
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`49.
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`Denied.
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`Demaray admits that it served Applied with subpoenas in the Texas actions.
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`Demaray denies any remaining allegations in this paragraph.
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`50.
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`Denied.
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`51.—_Denied.
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`52.
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`This paragraph contains legal conclusions to which no response is required.
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`Demaraydenies any remaining allegations in this paragraph.
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`53.|This paragraph contains legal conclusions to which no response is required.
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`Demaray denies any remaining allegations in this paragraph.
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`54.
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`This paragraph contains legal conclusions to which no response is required.
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`Demaray denies any remaining allegations in this paragraph.
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`55.
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`This paragraph contains legal conclusions to which no response is required.
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`Demaray denies any remaining allegations in this paragraph.
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`DEMARAY LLC?8!S[PROPOSED]AMENDED
`
`ANSWER F0-COMPLAINFAND
`
`anannsmaanmaras
`
`- A -
`
`[Daan Tan EAN ae ANIAT TIM
`
`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 9 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 9 of 38
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`56.
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`This paragraph contains legal conclusions to which no response is required.
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`Demaray denies any remaining allegations in this paragraph.
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`contains legal conclusions to which no response is required. Demaray denies any remaining
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`allegations in this paragraph.
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`58.
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`This paragraph contains legal conclusions to which no response is required.
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`Demaraydenies any remaining allegations in this paragraph.
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`PERSONAL JURISDICTION AND VENUE
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`59.
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`For purposes of this case only, Demaray admits that this Court has personal
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`MmBRWwWNO
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`57.|Demaray admits that the excerpted text appears in Exhibits A and B. This paragraph
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`10
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`jurisdiction over Demaray. Demaray admits that the excerpted information appears on the
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`hyperlinked webpages. Demaray denies any remainingallegations in this paragraph.
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`60.
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`For purposes of this case only, Demaray admits that this Court has personal
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`13
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`jurisdiction over Demaray. Demaray admits that Intel purports to be headquartered in Northern
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`California and that Samsung has an office in Northern California. Demaray admits that Applied
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`asserts that it is headquartered in Northern California. Demaray denies any remaining allegations in
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`this paragraph.
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`61.
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`For purposesof this case only, Demaray admits that venueis proper inthis district.
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`Demaray denies any remaining allegationsin this paragraph.
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`62.|Demaray admits that Dr. Demaray hasfiled for over a hundred patents and has spent
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`muchofhis career in California. Demaray denies any remaining allegations in this paragraph.
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`63.|Demaray admits that Gary Edwardsresides in Northern California. Demaray admits
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`that the Sales and Relationship Agreement between Applied Komatsu and Symmorphix was
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`executed in Northern California. Demaray is without knowledge sufficient to admit or deny the
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`remaining allegations in this paragraph and therefore denies them.
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`FACTUAL BACKGROUND
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`64.
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`65.
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`Denied.
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`Admitted.
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`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
`
`anannsmaanmaras
`
`-7.-
`
`[Daan Tan EAN ae ANIAT TIM
`
`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 10 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 10 of 38
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`66.|Demaray admits that Dr. Demaray, along with several other former employees of
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`Applied Komatsu formed Symmorphix and that Dr. Demaray held several roles at Symmorphix.
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`Demaraydenies any remaining allegations in this paragraph.
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`67.|Demaray admits that Symmorphix employees continued to develop sputtered silicon
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`deposition technology at Symmorphix. Demaray denies any remainingallegations in this paragraph.
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`68.|Demaray affirmatively states that Exhibit I speaks for itself. Demaray denies any
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`MmBRWwWNO
`Oofeo“SNAN
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`69.|Demaray affirmatively states that Exhibit I speaks for itself. Demaray denies any
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`remaining allegations in this paragraph.
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`remaining allegations in this paragraph.
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`70.|Demaray affirmatively states that Exhibits I, J, and K speaksspeak for themselves.
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`Demaray denies any remaining allegations in this paragraph.
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`71.|Demaray affirmatively states that Exhibit J speaks for itself. Demaray denies any
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`remaining allegations in this paragraph.
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`72.|Demaray admits that the excerpted text appears in Dr. Demaray2's declaration
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`submitted in Applied I. Demaray denies any remaining allegations in this paragraph.
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`73.|Demaray affirmatively states that Exhibit J speaks for itself. Demaray denies any
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`remaining allegations in this paragraph.
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`74.
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`Demarayaffirmatively states that Exhibit N speaks for itself. Demaray denies any
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`remaining allegations in this paragraph.
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`75.|Demaray admits that the excerpted text appears in Exhibit N. Demaray denies any
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`remaining allegations in this paragraph.
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`76.|Demaray admits that the excerpted text appears in Exhibit N. Demaray denies any
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`remaining allegations in this paragraph.
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`77.|Demaray affirmatively states that Exhibit K speaks for itself. Demaray denies any
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`remaining allegations in this paragraph.
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`78.|Demaray affirmatively states that Exhibit K speaks for itself. Demaray denies any
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`remaining allegations in this paragraph.
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`28
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`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
`
`anannsmaanmaras
`
`- R -
`
`[Daan Tan EAN ae ANIAT TIM
`
`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 11 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 11 of 38
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`1
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`2
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`3
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`4
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`5
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`79.
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`80.
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`81.
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`82.
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`83.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`Denied.
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`84.
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`This paragraph contains legal conclusions to which no response is required.
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`6 7|D
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`emaray denies any remaining allegations in this paragraph.
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`8
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`85.
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`This paragraph contains legal conclusions to which no response is required.
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`9 Demaraydenies any remaining allegations in this paragraph.
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`10
`
`11
`
`12
`
`13
`
`86.
`
`87.
`
`88.
`
`89.
`
`Denied.
`
`Admitted.
`
`Admitted.
`
`Denied.
`
`
`
`14 90.|Demaray admits that Mukundan Narasimhan2's employee agreement with Applied
`
`15||contained the excerpted text. Demaray admitsthat the 2'276 and 2'657 patentsPatents claim priority
`
`16|to the 2'863 Application filed on March 16, 2002. Demaray denies any remainingallegationsin this
`
`17|paragraph.
`
`18
`
`FIRST COUNT
`
`(Declaration of Non-Infringementof U.S. Patent No. 7,544,276)
`19
`
`30 91.|Demaray incorporates its answers to paragraphs1-90.
`31
`92.
`Demaray admits that it ownsall rights, title, and interest in the 2'276 patentPatent.
`
`0 93.|This paragraph contains legal conclusions to which no response is required.
`33 Demaray denies any remaining allegations in this paragraph.
`
`94.
`
`Denied.
`
`24
`
`35 95.|Demaray admits that Applied purports to seek declaratory judgmentthat Applied?'s
`
`36 reactors, including those in the Endura productline, do not directly or indirectly infringe any claim
`37 of the 2'276 patentPatent. Demaray admits that its complaints in the Texas cases mentioned
`38 Applied reactors. Demaray denies any remaining allegations in this paragraph.
`
`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
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`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 12 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 12 of 38
`
`1
`
`SECOND COUNT
`
`(Declaration of Non-Infringementof U.S. Patent No. 7,381,657)
`5
`
`3 96.|Demaray incorporates its answers to paragraphs1-95.
`
`4 97.|_Demaray admits that it ownsall rights, title, and interest in the 2657 patentPatent.
`5
`98.
`This paragraph contains legal conclusions to which no response is required.
`‘ Demaray denies any remaining allegations in this paragraph.
`
`99.
`
`‘Denied.
`
`7 8
`
`100. Demaray admits that Applied purports to seek declaratory judgment that Applied2's
`9 reactors, including those in the Endura product line, do not directly or indirectly infringe any claim
`10 of the 2'657 patentPatent. Demaray admits that its complaints in the Texas cases mentioned
`1 Applied reactors. Demaray denies any remaining allegations in this paragraph.
`
`12
`13
`
`14
`
`THIRD COUNT
`(Declaration of Non-Infringement Based on License)
`101. Demaray incorporates its answers to paragraphs 1-100.
`
`102.
`
`This paragraph contains legal conclusions to which no response is required.
`
`15 Demaray denies any remaining allegations in this paragraph.
`
`16
`
`17
`
`18
`
`103. Denied.
`
`104. Denied.
`
`105. Demaray admits that Ravi Mullapudi had an Applied Komatsu Employee
`
`19 Agreement. Demaray denies any remaining allegations in this paragraph.
`
`20
`
`21
`
`106. Denied.
`
`107. Denied.
`
`22
`108. Demaray admits that Applied purports to seek a declaration that it holds a license to
`
`23|the 21276 and 2'657 patentsPatents. Demaray denies any remaining allegations in this paragraph.
`24
`FOURTH COUNT
`5
`(Declaration of Non-Infringement Based on Assignmentof Rights to Applied and
`Demaray2's Failure to Join All Co-Owners)
`
`26
`
`27
`
`28
`
`109.
`
`This claim has been dismissed pursuant to an order of the Court.
`
`110.
`
`This claim has been dismissed pursuant to an order of the Court.
`
`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
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`anannsmaanmaras
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`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 13 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 13 of 38
`
`111.
`
`This claim has been dismissed pursuant to an order of the Court.
`
`112.
`
`This claim has been dismissed pursuant to an order of the Court.
`
`113.
`
`This claim has been dismissed pursuant to an order of the Court.
`
`114.
`
`This claim has been dismissed pursuant to an order of the Court.
`
`115.
`
`This claim has been dismissed pursuant to an order of the Court.
`
`116.
`
`This claim has been dismissed pursuant to an order of the Court.
`
`117.
`
`This claim has been dismissed pursuant to an order of the Court.
`
`118.
`
`This claim has been dismissed pursuant to an order of the Court.
`
`DENIAL OF APPLIED?'S PRAYER FOR RELIEF
`
`Demaray denies that Applied is entitled to any relief, and specifically denies the allegations
`
`and requestsfor relief set forth in paragraphs A-G underthe heading “''PRAYER FOR RELIEF”""
`
`in the Complaint.
`
`FIRST AFFIRMATIVE DEFENSE
`(No Declaratory Judgment Jurisdiction)
`
`The Complaint, and each purported cause of action asserted therein, improperly seeks to
`
`invoke the jurisdiction of this Court under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and
`
`2202, and the Court should decline to exercise such jurisdiction.
`
`SECOND AFFIRMATIVE DEFENSE
`(Failure To State A Claim For Non-Infringement)
`
`The Complaint, and each purported cause of action asserted therein,fails to state a claim
`
`upon whichrelief can be granted because, amongother things, Applied has notplausibly alleged
`
`
`that it does not infringe either the 2'276 patentPatentor the 2'657 patentPatent.
`
`THIRD AFFIRMATIVE DEFENSE
`(Failure To State A Claim For License)
`
`The Complaint, and each purported cause of action asserted therein,fails to state a claim
`
`upon whichrelief can be granted because, amongother things, Applied has notplausibly alleged
`
`that it holds a license to the 2'276 patentPatent or the 2'657 patentPatent.
`
`MmBRWwWNO
`Oofeo“SNAN
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
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`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
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`anannsmaanmaras
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`- 1 1 -
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`[Daan Tan EAN ae ANIAT TIM
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`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 14 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 14 of 38
`
`FOURTH AFFIRMATIVE DEFENSE
`(Unenforceability Due to Estoppel, Waiver, and/or Unclean Hands)
`
`The Complaint, and each purported cause of action asserted therein, is barred by the
`
`doctrines of laches, estoppel, waiver, acquiescence, unclean hands, and/or other applicable
`
`equitable defenses. For example, Applied has asserted various license and ownership claimsto the:
`
`2!276 patentPatent or the 2'657 patentPatent based upon assignmentprovisions in employee
`
`agreements that it knew had been previously found by courtsin this district to be void and
`
`unenforceable as an unlawful restraint on trade in violation of California Business and Professions
`
`Code § 16000.
`
`—
`
`N
`
`we
`
`BR
`
`in
`
`Oofeo“SNAN
`
`FIFTH AFFIRMATIVE DEFENSE
`(Not An Exceptional Case Warranting Attorneys~' Fees From Demaray)
`10
`Applied cannot provethat this is an exceptional case justifying an award of attorneys?! fees
`11
`12 against Demaray pursuant to 35. U.S.C. § 285.
`
`13
`14
`'
`
`5
`
`DEMARAY LLC'S COUNTERCLAIMS FOR INFRINGEMENT
`OF U.S. PATENT NOS. 7,544,276 and 7,381,657
`Demaray hereby asserts the following Counterclaims against Applied, as follows:
`
`1
`
`This
`
`i
`
`ivil
`
`action
`
`kin
`
`j
`
`ment
`
`of infringement
`
`of
`
`Paten
`
`20
`
`21
`
`2.
`
`Dr. Richard Ernest Demaray, a named inventor on both of the patents at issue
`
`PARTIES
`
`22|in this case, has been working in and with the semiconductor industry for more than forty
`
`ears.
`
`.
`.
`studving ultraviolet
`
`photoconductivity of materials. His doctoral work focused on cross-supersonic molecular and
`
`23
`
`24
`
`25
`
`36 atomic beams with which he demonstrated lossless conversion of molecular vibration to light
`
`
`07 in vacuum. During his post-doctoral fellowship, hedesignedandbuiltsomeofthefirstpulsed
`
`
`
`
`paitexcimerlaserdriventunabledyelasersforresonantmultiphotonphotoionizationinthe,
`
`DEMARAY LLC?8!S[PROPOSED]AMENDED
`
`ANSWER F0-COMPLAINFAND
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`anannsmaanmaras
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`- 19 -
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`[Daan Tan EAN ae ANIAT TIM
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`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 15 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 15 of 38
`
`3.
`
`Muchof Dr. Demaray's workin industry has involved advancesin thin film
`
`
`
`mpanies
`
`in the
`
`thin film
`
`incl
`
`in
`
`mmorphix In
`
`here h
`
`hief
`
`Technol
`
`ffi
`
`rand
`
`Chairman of the Boar
`
`4,
`
`After serving in senior managementroles at some of the more prominent
`
`
`
`rk—which remains
`
`ongoing—rel
`
`
`
`MmBRWwWNO
`Oofeo“SNAN
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
`[Daan Tan EAN ae ANIAT TIM
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`-12-
`
`

`

`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 16 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 16 of 38
`
`1 horization,tomanuf;mers—with re thin films in Samsung and Intel electroni
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`East Loockerman Street, Suite 202, Dover, DE 19901. The name of Demaray's registered
`n
`h
`ress
`i
`iegel
`rera, P.A
`
`Demaray
`
`is
`
`th
`
`ignee
`
`an
`
`ns
`
`all right,
`
`title,
`
`and
`
`inter
`
`he
`
`'276 Paten
`
`2 3 4 5 6
`
`7
`
`8
`
`9 and the '657 Patent. A true and correct copy of the '276 Patent is attached hereto as Exhibit 1.
`
`f the
`
`'657 Patent
`
`i
`
`hed
`
`her
`
`Exhibit 2
`
`10! « true
`
`and
`
`corr
`
`
`
`18||and 1338(a).
`
`19
`
`9.
`
`Applied is subject to this Court's specific and general personal jurisdiction
`
`20 consistent with the principles of due process.
`21
`
`10.
`
`Personal jurisdiction exists generally over Applied because it has sufficient
`
`22
`
`minimum contacts with the forum as a result of business conducted within the State of
`
`23
`7A California and the Northern District of California and/or has engaged in continuous and
`
`25
`
`systematic activities in the Northern District of California, and Applied is believed to haveits
`
`
`
`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
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`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 17 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 17 of 38
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1|mark r rpr ithin th f California and th rthern District of
`
`
`
`
`
`2
`
`lifornia
`
`that
`
`infringe
`
`one
`
`or more
`
`claims
`
`of
`
`the Asserted
`
`Paten
`
`li
`
`mor
`
`3 particularly below. The Court further has personal jurisdiction over Applied because Applied
`Vn
`mi
`he
`personal jurisdiction of
`thi:
`hrough
`the filing
`of
`th
`mplain
`
`11,__Venuein this District is proper under 28 U.S.C.§§1400(b) and 1391(b) and (c
`
`
`
`TECHNOLOGY BACKGROUND
`
`7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`
`
`
`
`
`
`
`
`1812.___Semiconductordevicesaregenerallymanufacturedusingaseriesofprocess.
`
`19
`
`steps applied to a substrate. A particularly important portion of typical semiconductor
`
`20 manufacturing processes involves the deposition of thin films used to form structures in the
`al
`final product. One of the most practical and effective approachesto thin film deposition used
`i. to make modern semiconductor devices, andwhich is often used a dozen ormoretimes in
`7A manufacturing even a single semiconductor product, is called "magnetron sputtering."
`
`25
`
`13. Magnetron sputtering is a physical vapor deposition (‘'PVD")
`
`technique. It can
`
`
`
`28
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`DEMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
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`MmBRWwWNO
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`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 18 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 18 of 38
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`Oofeo“SNAN
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`24||the '657 Patent and its family member, the '276 Patent, is eviden he referen
`
`
`
`
`
`
`
`
`
`EMARAY LLC?8!S[PROPOSED]AMENDED
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`ANSWER F0-COMPLAINFAND
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`anannsmaanmaras
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`- 14 -
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`[Daan Tan EAN ae ANIAT TIM
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`
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`r D
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`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 19 of 38
`Case 5:20-cv-09341-EJD Document 133-3 Filed 03/09/22 Page 19 of 38
`
`
`
`IPR2021-00105 against the '276 Patent, and PTAB Case Nos. IPR2021-00104 and
`
`IPR2021-001
`
`inst
`
`the
`
`'657 Paten
`
`ERWw—
`Oofeo“SNAN
`
`in
`COUNTERCLAIMI
`
`Infringement
`
`of
`
`Paten
`
`7,544,27
`
`17.
`
`Demarayre-alleges and incorporates herein by reference Paragraphs 1-16 ofits
`
`Counterclaims.
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`18.
`
`The '276 Patent, entitled "Biased pulse DC reactive sputtering of oxide films,"
`
`was duly andlawfully issued on June 9, 2009. Ex. 1.
`
`19.
`
`The '276 Patent names Hongmei Zhang, Mukundan Narasimhan, Ravi B.
`
`Mullapudi, and Richard E. Demarayasco-inventors.
`
`20.
`
`The '276 Patent has been in full force and effect since its issuance. Demaray
`
`owns by assignmentthe entire right, title, and interest in and to the '276 Patent, including the
`
`right to seek damagesfor past, current, and future infringement thereof.
`
`21.
`
`The '276 Patent relates generally to a configuration of a reactor for deposition
`
`of thin films by sputtering, which, in certain implementations, uses ''a pulsed DC power
`
`supply providing alternating negative and positive voltages to the target," and ''a narrow
`
`band-rejection filter'' coupled between the pulsed DC power supply and a target area that
`
`
`
`22.
`
`The '276 Patent also describes, among other things, ''a substrate electrode
`
`coupled to an