Case 5:20-cv-09341-EJD Document 135 Filed 03/12/22 Page 1 of 2
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`March 12, 2022
`Honorable Magistrate Judge Nathaniel M. Cousins
`United States District Court Northern District of California
`San Jose Courthouse, Courtroom 7, 4th Floor
`280 South 1st Street, San Jose, CA 95113
`Re:
`Applied Materials, Inc. v. Demaray LLC, 20-cv-09341-EJD (N.D. Cal.)
`Dear Judge Cousins,
`Demaray LLC (“Demaray”) submits this letter to update its proposed schedule (Dkt. 116)
`and to seek resolution and clarity regarding the Patent Local Rule deadlines in view of Demaray’s
`Notice of Motion and Motion to Amend Its Answer to Add Affirmative Counterclaims for
`Infringement. Dkt. 133 (“Motion to Amend”). The parties met and conferred but were unable to
`resolve their dispute.
`No case schedule has been entered in this case, and Judge Davila has referred the case
`scheduling issue to this Court. Dkt. 87. The Court has ruled that the Patent Local Rules apply and
`has ordered the parties to submit a proposed case management plan. Dkt. 101.
`Accordingly, Demaray had previously submitted two alternative proposed case schedules,
`including one that accounts for affirmative infringement claims. Dkt. 116. Since that submission,
`Demaray submitted to the Court a letter brief request for leave to amend its answer to include
`affirmative infringement claims. Dkt. 127. Despite its prior position that "Applied does not oppose
`Magistrate Judge Cousins addressing whether Demaray should be allowed to amend its answer
`and make compulsory counterclaims of infringement" (Dkt. 116 at 2 n.1), Applied opposed that
`request on substantive and procedural grounds (Dkt. 128), and also moved to strike Demaray’s
`motion (Dkt. 130), insisting upon a noticed motion before Judge Davila rather than a letter brief
`(Dkt. 128).
`While Demaray believes that its letter brief was procedurally proper, in order (a) to avoid
`burdening the Court with deciding Applied's motion to strike and (b) to avoid the delay that
`Applied had sought to introduce through the motion to strike, Demaray withdrew its letter brief in
`favor of the Motion to Amend. See Dkt. 134. Demaray also requested and reserved the earliest-
`available hearing date: September 29, 2022. In light of the delay that this late September hearing
`date would impose (and which Demaray sought to avoid with the filing of its letter brief), Demaray
`will also file a motion to request an earlier date before Judge Davila.
`In view of its filing of the Motion to Amend, and consistent with Demaray's previously
`proposed case schedules, Demaray respectfully requests this Court either (a) hold in abeyance the
`Patent Local Rule deadlines pending a ruling on the Motion to Amend from Judge Davila, or,
`(b) in the alternative, adopt a schedule based upon Demaray’s proposed schedule setting forth
`deadlines that account for Demaray’s affirmative infringement claims, see Dkt. 116.
`Demaray’s requested relief will promote the conservation of the Court’s and the parties’
`resources. For example, temporarily holding in abeyance the forthcoming Patent Local Rules
`deadlines for cases without affirmative infringement claims will lessen the likelihood of premature
`or duplicative claim construction briefing. For example, should Judge Davila grant Demaray's
`motion to amend, Demaray would be required to provide its infringement contentions and Applied
`would be required to provide its invalidity contentions (including any claim terms that it believes
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`Case 5:20-cv-09341-EJD Document 135 Filed 03/12/22 Page 2 of 2
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`are indefinite). Patent L.R. 3-3, 3-4.
`Such early disclosure of infringement and invalidity contentions is intended to enable the
`parties to surface and identify claim construction issues prior to the claim construction process.
`Otherwise, the parties would be shooting at moving targets, briefing claim constructions without
`full disclosure of the infringement and invalidity issues that are at play in this particular case,
`particularly those issues involving these two specific parties.1 Moreover, in the absence of such
`disclosures, it would be difficult for key aspects of the claim construction disclosure process to
`play out (e.g., identifying which claim terms require construction, much less identifying the "most
`significant" claim terms). Patent L.R. 4-3.
`For all of these reasons, Demaray respectfully requests this Court either (a) hold in abeyance the
`Patent Local Rule deadlines pending a ruling on the Motion to Amend from Judge Davila, or,
`(b) in the alternative, adopt a schedule based upon Demaray’s proposed schedule setting forth
`deadlines that account for affirmative infringement claims, see Dkt. 116.
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`Respectfully submitted,
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`/s/ Olivia Weber
`Olivia Weber
`of Irell and Manella LLP
`Counsel for Defendant
`Demaray LLC
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`1 Although Demaray has also sued Applied's customers in the Texas court, there is no indication,
`much a less a guarantee from Applied, that Applied will proffer the same invalidity and/or claim
`construction positions as its customers. This is because Applied's customers use and are
`therefore liable for their use of tools made by other manufacturers. Thus, the invalidity and
`claim construction positions of Applied's customers likely diverge from those of Applied.
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