Case 5:20-cv-09341-EJD Document 151 Filed 05/27/22 Page 1 of 26
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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
`DAVID OKANO (SB#278485)
`davidokano@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
`
`MATTHIAS KAMBER (SB#232147)
`matthiaskamber@paulhastings.com
`PAUL HASTINGS LLP
`101 California Street, 48th Floor
`San Francisco, California 94111
`Telephone: 1(415) 856-7000
`Facsimile: 1(415)856-7100
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`Attorneys for Plaintiff
`APPLIED MATERIALS, INC.
`
`
`IRELL & MANELLA LLP
`Morgan Chu (70446)
`MChu@irell.com
`Benjamin W. Hattenbach (186455)
`BHattenbach@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone:
`(310) 277-1010
`Facsimile:
`(310) 203-7199
`
`FOLIO LAW GROUP PLLC
`C. Maclain Wells (221609)
`Maclain@foliolaw.com
`2376 Pacific Ave.
`San Francisco, CA 94115
`(415) 562-8632
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`Attorneys for Defendant
`DEMARAY LLC
`
`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-09341-EJD
`UPDATED CASE MANAGEMENT
`STATEMENT PURSUANT TO
`CLERK’S NOTICE (DKT. NO. 150)
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`UPDATED CASE MANAGEMENT
`STATEMENT PURUSANT TO CLERK’S
`NOTICE (DKT. NO. 150)
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`Case 5:20-cv-09341-EJD Document 151 Filed 05/27/22 Page 2 of 26
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`Plaintiff Applied Materials, Inc. (“Applied”) and Defendant Demaray LLC (“Demaray”)
`(collectively, “the Parties”) submit this Updated Joint CMC Statement pursuant to the Court’s
`May 5, 2022 Notice Setting Further Case Management Conference. Dkt. No. 150. The Parties
`further incorporate by reference their prior Case Management Statements submitted on December
`22, 2021, Dkt. No. 106, November 4, 2021, Dkt. No. 82, October 6, 2021, Dkt. No. 69, and
`January 14, 2021, Dkt. No. 27, and, where appropriate for brevity, note below where their
`positions have not changed.
`A. Applied’s Preliminary Statement
`As with the last joint CMC statement, Applied objects to Demaray’s lengthy rehash of
`arguments in pending motions and repeated misrepresentations of Applied’s production. Noting
`this Court’s standing order on Case Management Statements that “except in unusually complex
`cases, [the statement] should not exceed ten pages,” Applied urged Demaray to reduce its lengthy
`arguments, including its 4 page-long discussion regarding discovery (Section 8) below. Rather
`than provide a “brief report on… any identified discovery disputes” as called for by the standing
`order, Demaray lengthened its submission to 5 pages. Demaray’s lengthy submissions (10 pages
`aggregating its positions in the “Disputed” Sections) appear designed to bury the critical issue
`requiring further case management: the scheduling of a Markman hearing as claim construction
`briefing completed six weeks ago. Applied proposes the Markman hearing be set in August 2022
`or at the Court’s earliest convenience.
`B. Demaray’s Position
`In accordance with the Civil Local Rules and the Court’s Standing Orders, which require a
`description of “any identified discovery disputes” as well as “the scope of any anticipated
`discovery,” Demaray has endeavored herein to outline for the Court the issues between the Parties
`relating to discovery and other matters that may impact the case schedule and the application of
`disclosure sequencing and timelines in the Patent Local Rules. While Applied offers conjecture
`as to Demaray’s motives, Demaray respectfully submits that the Court should fully consider the
`issues identified herein, including opportunities to minimize burdens and inefficiencies on the
`Court, the parties, and various third parties.
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`Case 5:20-cv-09341-EJD Document 151 Filed 05/27/22 Page 3 of 26
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`This case involves interplay with two earlier-filed pending cases in Texas, four co-
`pending Applied IPRs, and unresolved issues relating to potential affirmative infringement
`counterclaims and responsive invalidity affirmative defenses and potential declaratory judgment
`claims—it is therefore a particularly complex case as contemplated by the Court’s standing order
`on Case Management Statements. The parties both recognize the complexity of this action
`having submitted four prior Joint CMC Statements (November 4, 2021, Dkt. No. 82, October 6,
`2021, Dkt. No. 69, January 14, 2021, Dkt. No. 27, and December 22, 2021, Dkt. 106) that were of
`similar length or longer. Applied tries to down-play the complexity of this case (and the
`substantial discovery that this case will require), but the simple fact is that Applied has sought a
`declaration that all of its reactor configurations sold to its customers (including ones not at
`issue in the parallel litigations) do not infringe the Demaray patents, while, after almost seven
`months, its production in this case comprises just over forty generic bill of materials for its pre-
`configured reactor offerings. It should not be surprising to Applied that there are substantial
`discovery issues to bring to the Court’s attention.
`1. Jurisdiction and Service (Joint)
`See Dkt. No. 69.
`2. Updated Facts Since The Last Case Management Statement (Joint)
`On December 29, 2021, the Court issued an order referring certain motions (Dkt. Nos. 92
`and 108) relating to Demaray’s request for further case management to Magistrate Judge Cousins.
`Dkt. No. 110. Magistrate Cousins held a hearing on January 12, 2022 and ordered the parties to
`submit updated competing case schedules and confer regarding referral of the Markman to the
`Magistrate. Dkt. No. 113. The parties submitted their then-proposed schedules and response on
`January 14, 2022. Dkt. No. 116. The Court has not yet issued a case schedule.
`On January 20, 2022, the parties submitted a joint discovery letter to Magistrate Cousins
`regarding Demaray’s request for targeted discovery on Applied’s products. Dkt. No. 118.
`On January 24, 2022, the parties submitted a joint discovery letter to Magistrate Cousins
`regarding the deposition of Demaray’s principal, Dr. Ernest Demaray. Dkt. No. 120.
`On January 26, 2022, the parties filed a joint motion for entry of protective order, subject
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`to one disputed provision. Dkt. No. 123. The parties submitted the disputed provision in a joint
`discovery letter to Magistrate Cousins the next day. Dkt. No. 125.
`On February 1, 2022, the parties filed their Joint Claim Construction and Pre-Hearing
`Statement. Dkt. No. 126.
`On February 7, 2022, Demaray submitted a letter brief to Magistrate Judge Cousins to
`amend its answer to add infringement claims. Dkt. No. 127. Applied filed a responsive letter the
`next day. Dkt. No. 128. On March 2, 2022, Applied filed a motion to strike Demaray’s letter
`brief to amend its answer to add infringement claims, Dkt. No. 130, and a motion to shorten to
`time for an earlier hearing or determination on the papers. Dkt. No. 131.
`On March 9, 2022, Demaray filed a motion with this Court to amend its answer to add
`infringement claims. Dkt. No. 133. On March 10, 2022, Demaray filed a notice of withdrawal of
`its February 7, 2022 letter brief. Dkt. No. 134. On March 12, 2022, Demaray filed a motion to
`shorten time for an earlier hearing on its motion to amend. Dkt. No. 136. The same day,
`Demaray submitted a letter brief to Magistrate Judge Cousins requesting the Court hold in
`abeyance the Patent Local Rule deadlines pending resolution of its Motion to Amend or to adopt
`a proposed schedule setting forth deadlines that account for Demaray’s affirmative infringement
`claims as set forth in Dkt. No. 116. Dkt. No. 135. Applied submitted a responsive letter to
`Magistrate Judge Cousins on March 22, 2022. Dkt. No. 139.
`On March 18, 2022, Applied filed its Opening Claim Construction Brief. Dkt. No. 138.
`On March 23, 2022, Demaray filed a motion to enlarge time to respond to Applied’s opening
`claim construction brief, which Demaray states was to accommodate Patent Local Rule
`disclosures regarding its proposed affirmative infringement claims. Dkt. No. 140. The same day,
`Applied filed its response to Demaray’s motion to amend its answer to add infringement claims.
`Dkt. No. 142. On March 28, 2022, Applied responded to Demaray’s motion to enlarge time,
`which Applied states was filed to indefinitely delay claim construction briefing to the prejudice of
`Applied. Dkt. No. 143. On March 30, 2022, Demaray filed its reply brief to its motion to amend
`its answer. Dkt. No. 144. On April 1, 2022, Demaray filed its Responsive Claim Construction
`Brief. Dkt. No. 145. On April 8, 2022, Applied filed its Reply Claim Construction Brief. Dkt.
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`Case 5:20-cv-09341-EJD Document 151 Filed 05/27/22 Page 5 of 26
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`No. 147. On April 15, 2022, Demaray filed its Sur-Reply Claim Construction Brief. Dkt. No.
`148.1 No Markman date has been set.
`On May 4, 2022, the Court issued an order granting Demaray’s motion to shorten time for
`its motion to amend its answer, setting a hearing for August 11, 2022. Dkt. No. 149.
`3. Legal Issues (Disputed)
`A. Applied’s Position
`This case raises the following legal issues: (1) the construction of six disputed claim terms
`in the Demaray Patents; (2) whether Applied or its products infringe the Demaray Patents; and (3)
`whether Applied has a license to the Demaray Patents.
`Nearly six months after Demaray filed its answer, but chose not assert counterclaims of
`infringement, and twenty months after accusing the very same Applied products in its customer
`suits, Demaray filed an opposed motion to amend its answer to assert infringement claims to try
`and stop claim construction from moving forward, as evidenced by multiple filings thereafter
`(Dkt. Nos. 135 and 140) and Demaray’s proposal on the case schedule below. If Demaray’s
`motion to amend is granted (it should not be), the case will involve additional legal issues,
`including at least damages sought by Demaray for Applied’s alleged infringement.
`Demaray’s continued misrepresentations below that Applied has not provided the details
`of its reactor configurations is belied by the fact that Demaray’s final infringement contentions in
`the customer suits (which accuse the same Applied reactors at issue in this case) are due in less
`than three weeks. If Demaray genuinely believed Applied was withholding relevant discovery,
`Demaray would have long ago moved to enforce the subpoenas it served on Applied out of those
`customer suits. Demaray has not. Demaray’s complaints are nothing more than its vehicle to
`continue to seek delay in this case. Notably, last month the Texas Court held a discovery hearing
`on Demaray’s motion to compel (1) production of documents sufficient for Demaray to evaluate
`the presence of any filter circuitry in certain components of certain Applied reactors; (2)
`inspection of those reactors and certain components thereof; and (3) for an adverse inference that
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` The parties previously proposed (Dkt. No. 116 n.5) and later stipulated to equal briefing for
`claim construction. Dkt. No. 146.
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`Case 5:20-cv-09341-EJD Document 151 Filed 05/27/22 Page 6 of 26
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`Intel Corporation (“Intel”) uses the claimed narrow band rejection filter in those Applied reactors
`(when no such filter exists). The Court denied Demaray’s motion and sua sponte added to the
`parties joint proposed order:
`“To provide further guidance to the parties, the Court takes this opportunity to
`clarify that it denied all other relief because it finds that Defendant provided a
`proportional amount of discovery under Rule 26 after balancing the great
`importance of this discovery to the plaintiff against the heavy burden of the
`discovery on the defendant, in view of the less burdensome avenues of discovery
`otherwise available, and in view of the continually diminishing likelihood that
`additional discovery will reveal new information beyond the great amount of
`discovery already provided.”
`Demaray LLC v. Intel Corp., 6:20-cv-634, Dkt. No. 166 (emphasis added).
`B. Demaray’s Position
`Applied has raised the following legal issues: Applied’s request for a declaration of
`noninfringement for its reactors and whether Applied has a valid license independent of
`assignment provisions that the Court has already confirmed are unlawful and void as a matter of
`public policy. While Applied has requested construction of six claims in the Demaray Patents, the
`court in the co-pending cases in the Western District of Texas has already rejected either the exact
`constructions Applied now offers here, or ones that are substantively similar, and no further claim
`construction is necessary.
`In addition, based upon discovery obtained from a third-party supplier of Applied reactor
`components, Demaray has sought to amend its answer to assert infringement claims regarding, at
`least, a subset of the Applied reactors. Dkt. No. 133. This information only came to light in the
`Texas actions through Demaray’s subpoenas to third party component suppliers. The motion is
`fully briefed and set for hearing on August 11, 2022. If Demaray’s motion to amend is granted,
`the case will also involve at least damages for Applied’s infringement regarding such reactors.
`Applied points to statements by the Court in Texas, but leaves out that Applied has been subject
`to repeated motions to compel there and in those hearings has told the Court it does not have
`information on the configuration of power supplies and filters in its own reactors. The Texas
`court has thus encouraged Demaray to seek further discovery from the component suppliers, and
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`Demaray is doing so. Given Applied’s positions, Demaray anticipates that extensive third party
`discovery will be required here regarding Applied’s other reactors.
`While Demaray has moved to amend based upon these third-party disclosures, the full
`scope of Applied’s infringement in this case remains unclear. Demaray has proposed since the
`beginning of this case that Applied provide targeted product disclosures (as detailed in Section 8
`below) detailing its use of the claimed reactor configurations. Applied refuses to provide this
`basic information—even though Applied is seeking a declaratory judgment of noninfringement
`for its reactors—and Demaray has moved the Court for targeted discovery on Applied’s reactors
`to evaluate the full scope of Applied’s infringement. Dkt. No. 118. Demaray’s current proposal
`is that Applied make such disclosures by June 30, 2022, as reflected in the attached proposed
`schedule. Once Applied provides the required details on its products and processes (which
`discovery is proper in view of Applied’s declaratory judgment claim, regardless of any Demaray
`infringement counterclaim), including details on the protective filters or alternative protective
`mechanisms used, Demaray will timely make infringement determinations. Demaray’s proposal
`is that it do so within 30 days of Applied’s targeted disclosures.
`4. Motions (Joint)
`The following motions are still at issue and remain pending before the Court:
`Dkt. No. 123: Joint motion for entry of protective order, subject to disputed provision set
`forth in Dkt. No. 125.
`Dkt. No. 133: Demaray’s motion to amend answer to add infringement claims.
`Dkt. No. 140: Demaray’s motion to enlarge time to respond to Applied’s opening claim
`construction brief, which Demaray contends was to accommodate Patent Local Rule disclosures
`regarding its proposed affirmative infringement claims. Applied contends the motion was filed to
`indefinitely delay claim construction briefing to the prejudice of Applied.
`The following letter briefs were submitted to Magistrate Cousins and remain unresolved:
`Dkt. No. 118: Joint discovery letter regarding Demaray’s request for targeted discovery on
`Applied’s products.
`Dkt. No. 120: Joint discovery letter regarding the deposition of Demaray’s principal, Dr.
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`Ernest Demaray.
`Dkt. No. 125: Joint discovery letter regarding disputed provision in protective order.
`Dkt. Nos. 135/139: Demaray letter brief to hold in abeyance the Patent Local Rule
`deadlines pending resolution of its Motion to Amend or to adopt its proposed schedule based
`upon Demaray’s proposed schedule setting forth deadlines that account for Demaray’s affirmative
`infringement claims.
`The following motions or letter brief are moot:
`Dkt. No. 130/131: Applied’s motion to strike Demaray’s letter brief and motion to shorten
`time are moot in view of Demaray’s notice of withdrawal of its letter brief. Dkt. No. 134.
`5. Amendment of Pleadings (Disputed)
`As noted above, pending before the Court is Demaray’s motion to amend its answer to
`add infringement claims. Dkt. No. 133.
`If Demaray’s motion is granted, Applied’s position is that it may respond with one or
`more invalidity counterclaims. Demaray cites to no legal authority requiring Applied to have
`made declaratory judgment claims of invalidity when it filed its complaint. Nevertheless, the
`matter is premature and will be moot if the Court’s denies Demaray’s motion to amend.
`Demaray responds as follows: Applied did not include affirmative claims for invalidity in
`its complaint in this matter, even though Applied confirmed during the meet and confer process
`for case management in Applied I and at the prior case management conference in this case that
`its affirmative claims for invalidity are ripe. These include claims and defenses regarding
`purported invalidity and improper inventorship. There is no proper basis on which Applied
`should be excused from bringing such claims in a timely manner. In accordance with settled law
`they should be brought, if at all, within 14 days of the further case management conference.
`6. Evidence Preservation (Joint)
`The Court entered the parties’ proposed ESI order on January 26, 2022. Dkt. No. 122. .
`7. Disclosures (Joint)
`The Parties have served their initial disclosures.
`8. Discovery (Disputed)
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`The parties reference their prior submission and agreement regarding discovery limits.
`Dkt. No. 27. The parties filed a motion for entry of protective order subject to resolution of one
`disputed provision on January 26, 2022. Dkt. No. 123. The dispute was submitted in a joint
`letter brief on January 27, 2022. Dkt. No. 125.
`A. Applied’s Position:
`Applied objects to Demaray’s 5-page discussion below which rehashes arguments in
`pending motions instead of providing “a brief report on… any identified discovery disputes” as
`called for by this Court’s standing order on Case Management Statements. Applied briefly
`responds to the five issues identified by Demaray below.
`Discovery from Applied (Response to Demaray’s Issue #s 1, 3 and 4 below). Demaray
`continues to misrepresent the status of Applied’s production of information regarding its reactor
`configurations, which cannot be reconciled with the fact that Demaray’s final infringement
`contentions in Texas are due in less than three weeks. Its strains credibility for Demaray to
`represent to this Court that it does not have sufficient information when it has been accusing the
`same products in Texas for nearly two years and through six rounds of supplemental infringement
`contentions. The Texas Court’s recent order, cited supra Section 3, denying Demaray’s motion
`for an adverse inference that Intel and Samsung have the claim required narrow band rejection
`filter, and denying all of Demaray’s requests for documents and inspection as to the Applied
`products, reveals the true status of Applied’s disclosures and frivolity of Demaray’s claims.
`Nor has Applied limited its discovery responses to those products at issue in Texas.
`Demaray admits that Applied provided the bill of materials for each PVD configuration that
`Demaray requested. Applied has also produced the electrical schematics covering all of those
`PVD configurations. Demaray’s insinuation that Applied has limited its document production to
`only forty bill of materials ignores the volumes of documents produced in response to Demaray’s
`subpoenas from the Texas cases that were deemed produced in this case by agreement. For
`purposes of the non-infringement/infringement disputes, Demaray is well aware that Applied has
`produced the relevant information in its possession for all of Applied’s reactors for Demaray to
`make the same infringement determinations as it has in done in Texas. There is no stone-walling.
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`For the reasons explained in the joint discovery letter on this issue, Dkt. No. 118, Demaray’s
`statements below are incorrect.
` Coordination with Texas Cases (Response to Demaray’s Issue #2 below). Demaray
`misstates Applied’s position. Where appropriate and not prejudicial to their respective rights to
`take discovery pursuant to the Federal Rules, Applied, Intel and Samsung have been amenable to
`coordination, in particular with regards to non-party witnesses. For example, the only merits-
`based deposition taken in any of the three cases—the deposition of Bob Conner, former CEO of
`Symmorphix (the original assignee of the patents-in-suit)—was coordinated because there was
`complete overlap in subject matter. But Demaray cannot use “coordination” to limit the parties’
`rights to take the deposition of, for example, Demaray’s principal, Dr. Demaray, in their
`respective cases. Indeed, Demaray previously refused to make Dr. Demaray available for
`deposition, forcing Applied to file a motion to compel. Judge Cousins granted Applied’s motion,
`rejecting Demaray’s arguments that Applied must coordinate the deposition with Intel and
`Samsung (who are not parties to this case). Dkt. No. 101 at 3:22-26. Despite the order, four days
`before the scheduled deposition, Demaray insisted that Intel and Samsung participate in the
`deposition, or risk their own rights to take his deposition in their respective cases. The parties
`thereafter filed a joint discovery dispute letter with Magistrate Judge Cousins, which remains
`pending. Dkt. No. 120.
`License Defense (Response to Issue #5). It is unclear to Applied what dispute or “scope
`of anticipated discovery” Demaray is even raising. Demaray’s statement appears to just rehash
`certain arguments the Court rejected in denying Demaray’s motion to dismiss Applied’s license
`defense. Demaray suggests that the license defense is not straight-forward or ripe for summary
`judgment because initial disclosures, served nearly a year ago by Intel and Samsung (non-parties
`to this case) in Texas, identified numerous individuals who may have potentially relevant
`information. Based on Applied’s investigation, the majority of those individuals do not have or
`do not recall any relevant information. Demaray’s reliance on those disclosures is a red herring.
`B. Demaray’s Position:
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`In accordance with the Court’s form Joint Case Management Statement & [Proposed]
`Order, updated May 2018 and downloaded by Demaray’s attorneys yesterday, Demaray hereby
`sets forth “any identified discovery disputes” as well as “the scope of any anticipated discovery”
`(for which the parties cannot agree upon a joint position as set forth above). See Joint Case
`Management Statement & [Proposed] Order (May 2018), https://cand.uscourts.gov/forms/civil-
`forms/. In short, despite seeking a declaration that all of its reactors do not infringe the Demaray
`patents and discovery opening last fall, Applied has limited its production of documents in this
`case to just over forty generic bills of materials that fail to describe the actual purported highly-
`configurable reactors it actually has sold. Applied should not be able to stonewall discovery,
`while at the same time push for an expedited case schedule. If its goal was actual resolution of
`the issues, it should be forthcoming with the details on its reactors.
`There are numerous discovery issues to be addressed, including: (1) Applied’s refusal to
`provide discovery on its reactors necessary to make full infringement evaluations; (2) Applied’s
`refusal to coordinate certain depositions with the co-pending Texas cases; (3) the substantial
`additional discovery in this case that will be required to address infringement, validity, and
`damages issues; (4) Applied’s continued failure to disclose critical discovery in Texas; as well as
`(5) necessary discovery on Applied’s licensing defense.
`Issue #1 – Demaray Requires Discovery Regarding Applied’s Products And
`Processes. As discussed above in Section 3, Demaray currently lacks details regarding Applied’s
`products and processes sufficient to evaluate the full scope of Applied’s infringement—even
`though it is Applied that has brought a declaratory judgment of non-infringement. Demaray has
`proposed that Applied provide targeted product disclosures by June 30, 2022, sufficient to
`identify (1) all Applied reactors with DC power to the target and RF bias to the substrate
`(including the reactor configurations, power sources, magnetron usage, and heating elements), (2)
`the details of any RF filters or alternative protective mechanisms used (including the type of RF
`filter/alternative protective mechanism, the operating frequency, and the attenuated bandwidth),
`(3) the details on Applied’s use of such reactors (including the targets and substrates used and the
`thin-films deposited), (4) Applied’s interactions with its customers regarding the same (e.g., to
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`address indirect infringement issues), and (5) Applied’s importation and exportation of reactors
`and chamber parts sufficient to address Applied’s activities abroad (e.g., under 35 U.S.C. §
`271(f)). Despite Applied bringing this case asking for a declaratory judgment of noninfringement
`of the Demaray patents and having an obligation to support such claims, Applied has refused to
`prioritize this targeted discovery to allow Demaray to make affirmative infringement
`determinations regarding Applied’s use of the claimed reactor configurations.
`Issue #2 – Applied Has Demanded Expedited And Duplicative Demaray And Third
`Party Depositions, But Refuses To Coordinate With The Texas Case. A second issue is that
`Applied has also demanded expedited Demaray and third party depositions in this case. The
`Federal Rules require that the Parties take reasonable efforts to minimize duplicative discovery to
`alleviate the burdens on witnesses. There are significant burdens imposed by Applied’s decision
`to pursue overlapping/duplicative causes of action in multiple forums, including filings multiple
`IPRs in the Patent Office and its declaratory judgment claims here, including its duplicative
`license defense. Applied and Demaray both acknowledge that overlapping discovery, including
`depositions, will be required in these various actions.
`For example, one of the named inventors on the Demaray patents, Dr. Hongmei Zhang, is
`not affiliated with either party. Applied’s counsel asked for her deposition in the Texas cases
`back in August 2021 (it has not yet been scheduled); Applied deposed her in Applied’s IPRs,
`where her deposition was taken on November 12, 2021; and, Applied is now demanding yet
`another deposition in this case (it has not been scheduled). Dr. Zhang is a third party witness with
`a full time job and responsibilities outside of these disputes. Applied’s insistence that she be
`subject to multiple depositions on overlapping issues in various cases has nothing to do with
`efficiency or minimizing burdens on witnesses. The same issues apply to other witnesses for
`whom Applied is demanding immediate depositions, including third parties and Demaray
`witnesses.
`Coordination of discovery in the various cases should be straightforward. In the Texas
`cases, general discovery opened in June 2021 and is set to close on October 26, 2022. This Court
`has ordered discovery in this case to commence (Dkt. No. 80), but there is not yet a discovery
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`deadline. Given that Applied’s counsel here is also handling Applied’s IPRs and is also counsel
`for both defendants and Applied in the Texas cases, there is no need for duplicative or immediate
`depositions of third party and Demaray witnesses. Demaray requests guidance from the Court on
`coordination of these duplicative depositions.
`Magistrate Judge Cousins ordered the deposition of Dr. Ernest Demaray, the primary
`technologist at Demaray, to occur in this case by January 21, 2021. Demaray properly pointed
`out to Applied that it would oppose any efforts to depose Dr. Demaray on overlapping issues in
`the Texas cases. While Applied took the deposition off calendar, it refuses to coordinate Dr.
`Demaray’s deposition with the Texas cases. As Applied is aware, Dr. Demaray is likely to be a
`30(b)(6) designee in this case (and in Texas) and Applied should be bound should it elect to
`depose Dr. Demaray immediately in this case (i.e., it should not be allowed to later seek
`additional deposition time with Dr. Demaray). With regard to other third party witnesses (e.g.,
`the other named inventors and various third party witnesses relating to licensing issues), Demaray
`requests that the Court order the Parties to make reasonable accommodations such that they be
`deposed just once across the various cases. Applied has argued that Magistrate Judge Cousins
`rejected any need to coordinate discovery in the different cases. That assertion is inconsistent
`with the Federal Rules. Moreover, Magistrate Judge Cousins has done no such thing—he only
`addressed Applied’s request for Dr. Demaray’s early deposition. See Dkt. No. 101.
`Issue #3 - Applied Refuses To Provide Discovery Regarding Products And Processes
`That Are The Subject Of Its Declaratory Judgment Claim Here But That Are Not At Issue
`In The Texas Case (Because That Case Is Limited To Two Of Applied’s Customers).
`Regarding discovery on infringement, validity, and damages issues, the fact is that
`substantial discovery remains to be taken. Demaray has served both interrogatories and
`document requests on Applied in this case. Despite the fact that Applied filed this action seeking
`a declaratory judgment of noninfringement for all of its reactors, in responding to these