Case 5:20-cv-09341-EJD Document 155 Filed 07/14/22 Page 1 of 4
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`APPLIED MATERIALS, INC.,
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`Plaintiff,
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`v.
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`DEMARAY LLC,
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`Case No. 20-cv-09341-EJD (NC)
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`ORDER RESOLVING
`DISCOVERY DISPUTES
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`Re: ECF 116, 118, 120, 123–125,
`127, 128, 130, 131, 134, 135, 139
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`Defendant.
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`On referral from Judge Edward J. Davila are several discovery disputes between
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`Plaintiff Applied Materials, Inc. and Defendant Demaray LLC in this patent infringement
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`case. The Court addresses each outstanding matter, as identified in the most recent case
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`management statement at ECF 151, in turn.
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`I.
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`ECF 118: DEMARAY’S “TARGETED” DISCOVERY
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`On January 20, 2022, the parties filed a joint discovery letter brief regarding
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`Demaray’s request for “targeted” discovery from Applied to allow Demaray to determine
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`whether or not to bring an affirmative infringement claim. ECF 118. Demaray asks the
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`Court to order Applied to provide “targeted” disclosures sufficient to detail:
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`“(1) 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
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`Case 5:20-cv-09341-EJD Document 155 Filed 07/14/22 Page 2 of 4
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`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 thin-films
`deposited), (4) Applied’s interactions with its customers
`regarding the same (e.g. to address indirect infringement issues),
`and (5) Applied’s importation and exportation to reactors and
`chamber parts sufficient to address Applied’s activities abroad
`(e.g. under 35 U.S.C. § 271(f)).”
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`Id. at 2 (citing ECF 106 at 11–13).
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`In response, Applied recounts the discovery it has already provided relevant to each
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`of Demaray’s five requests. ECF 118 at 4–5. Applied concludes that the discovery it has
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`already provided is sufficient for Demaray’s needs and supports this conclusion by
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`referencing Judge Davila’s comment that Demaray could easily have asserted a claim for
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`direct infringement against Applied based on the same underlying circumstances as
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`Demaray’s suit against Applied customers–Intel and Samsung–in Texas. Id. at 3–4.
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`Because Demaray has not demonstrated how the information Applied has already
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`supplied is insufficient, the Court DENIES Demaray’s request for “targeted” discovery.
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`II.
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`ECF 120: DEPOSITION OF ERNEST DEMARAY
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`On January 24, 2022, the parties filed a joint discovery letter brief regarding
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`Applied’s requested deposition of Dr. R. Ernest Demaray. ECF 120. On July 12, 2022,
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`the Court ordered the parties to confer and file a joint status update on the deposition of Dr.
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`Demaray by July 19, 2022. ECF 154. Accordingly, the Court DEFERS ruling on this
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`discovery dispute until the parties file their joint update.
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`III. ECF 123, 124, 125: PROTECTIVE ORDER
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`On January 27, 2022, the parties filed a joint discovery letter brief regarding their
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`dispute over language in ¶ 5 of their proposed protective order. ECF 124. The next day,
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`they filed a corrected discovery letter brief, which the Court now addresses. See ECF 125.
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`The disputed proposed protective order was filed at ECF 123.
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`In the brief, Applied asserts that the heightened “OUTSIDE COUNSEL EYES
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`ONLY – SOURCE CODE” provision should be applied to its design files because “for a
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`semiconductor manufacturing equipment company like Applied, design files such as
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`schematics are akin to a software company’s proprietary source code.” ECF 125 at 1–3.
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`Case 5:20-cv-09341-EJD Document 155 Filed 07/14/22 Page 3 of 4
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`In support of its argument, Applied relies heavily on the Western District of Texas court’s
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`denial of Demaray’s request to exclude design files and schematics from the heightened
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`category. Id. However, this Court is not bound by the Western District of Texas court’s
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`ruling on the protective order in that case.
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`Considering the arguments presented by the parties here, the Court finds that
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`heightened provision is unnecessarily burdensome. In its argument, Applied incorrectly
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`places the burden on Demaray to “identify any undue burden associated with treating
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`Applied’s design files and schematics under the same protections that a party would treat
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`source code in a software case.” ECF 125 at 2. In fact, the party seeking to protect a
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`specific document bears the burden of showing that specific prejudice or harm will result if
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`protection is not granted. See Foltz v. State Farm Mut. Auto Ins. Co., 331 F.3d 1122, 1130
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`(9th Cir. 2003). Applied has not explained why the less restrictive “OUTSIDE COUNSEL
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`EYES ONLY” designation is insufficient to protect its files. Thus, the Court DENIES
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`Applied’s request for a heightened designation for design files and GRANTS the
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`protective order as filed at 123-1 without the bold and bracketed language at lines 11–13.
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`IV. ECF 127, 128, 130, 131, 134: DEMARAY’S DISCOVERY LETTER BRIEF
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`REQUEST TO AMEND
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`On February 7, 2022, Demaray filed a discovery letter brief requesting to amend its
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`Answer to add an infringement claim. ECF 127. Applied opposed Demaray’s brief on
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`procedural and substantive grounds and moved to strike it. ECF 128; ECF 130. On March
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`10, 2022, Demaray withdrew its brief, thereby rendering Applied’s motion to strike and
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`motion to shorten time, at ECF 131, moot. ECF 134. Accordingly, the Court confirms
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`that ECF 127, 128, 130, 131, and 134 are RESOLVED.
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`V.
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`ECF 116, 135, 139: CASE SCHEDULING
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`On December 2, 2021, Judge Davila referred the parties’ case schedule disputes to
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`the Court. ECF 87. On December 15, 2021, the Court ruled that the Patent Local Rules
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`apply to this case and ordered the parties to file proposed case schedules. ECF 101. On
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`January 14, 2022, the parties submitted alternative case schedules. ECF 116.
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`3
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`Case 5:20-cv-09341-EJD Document 155 Filed 07/14/22 Page 4 of 4
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`On March 12, 2022, Demaray filed a discovery letter brief regarding the case
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`schedule requesting that the Court either: (a) hold the Patent Local Rules deadlines in
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`abeyance while Judge Davila considers the motion to amend, or (b) adopt Demaray’s
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`proposed case schedule in ECF 116. ECF 135 at 1. Applied challenges Demaray’s
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`requests on the grounds that: (a) pausing the Patent Local Rules deadlines assumes that
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`Judge Davila will grant Demaray’s motion for leave amend, and (b) Demaray’s proposed
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`case schedule enables Demaray to further stall progress on the case. ECF 139.
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`After considering the parties’ arguments, the Court setting a case schedule that
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`takes into account Judge Davila’s consideration of Demaray’s motion to amend is the most
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`judicially efficient solution. Any delay in case progress is outweighed by the burden of
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`having to set a new case schedule should Judge Davila grant the motion. Further, at this
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`point, the parties’ hearing on the motion to amend is next month, so delay is minimal. See
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`ECF 149. Accordingly, the Court will issue a case schedule based on the parties’
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`proposals that incorporates time for Judge Davila to rule on the motion to amend.
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`VI. CONCLUSION
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`The Court now considers ECF 118, 123–125, 127, 128, 130, 131, 134, 135, and 139
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`RESOLVED. A case scheduling order, resolving ECF 116, will be issued shortly. And
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`ECF 120 will be resolved separately. Any party may file a written objection with Judge
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`Davila within fourteen days of being served with this order. See Fed. R. Civ. P. 72(a).
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`IT IS SO ORDERED.
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`Dated: July 14, 2022
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`_____________________________________
`NATHANAEL M. COUSINS
`United States Magistrate Judge
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