Case 5:20-cv-09341-EJD Document 159 Filed 07/19/22 Page 1 of 3
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`July 19, 2022
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`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
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`Re:
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`Applied Materials, Inc. v. Demaray LLC, 20-cv-09341-EJD (N.D. Cal.)
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`Dear Judge Cousins,
`Applied Materials, Inc. (“Applied”) and Demaray LLC (“Demaray”) submit this joint letter in
`response to Your Honor’s July 12, 2022 order (ECF 154) to submit a joint status update on the Dr.
`Demaray deposition. For brevity, the parties agree to incorporate by reference their joint discovery
`letter on the issue filed on January 24, 2022. ECF 120.
`Applied’s Statement
`As Applied explained in the January 24, 2022 discovery letter, days before Dr. Demaray’s
`deposition was scheduled to occur in this case, Demaray sought to impose additional limitations
`on Applied and non-parties Intel and Samsung (who have their own respective cases against
`Demaray in the Western District of Texas) by demanding a single, coordinated deposition.
`While Demaray has offered to make Dr. Demaray available for deposition since that time, it has
`maintained its unreasonable demand for coordination while continuing its efforts to impose
`additional limitations. On February 7, 2022, Demaray filed a letter brief with Your Honor seeking
`leave to amend its answer to add infringement claims. On February 11, 2022, Demaray offered
`Dr. Demaray for deposition in March, but stated that “Dr. Demaray will not be offered for a second
`deposition in the NDCA matter.” Counsel then confirmed in a meet and confer that if Applied
`moved forward with an “early deposition” of Dr. Demaray, Applied must examine Dr. Demaray
`on all topics, including those that would only become relevant if Demaray’s request to add
`infringement claims was granted (e.g., topics related to alleged damages, such as Demaray’s
`acquisition of the patents, valuation, and prior attempts to license or monetize the patents). If
`Applied opted not to, it would risk foregoing its opportunity to obtain that discovery because Dr.
`Demaray would not be made available for deposition again.
`With its demand, Demaray yet again uses its delay and purported indecision on whether to sue
`Applied to prejudice Applied’s ability to move this case forward. See ECF 142 at 11:19-15:23;
`ECF 139; ECF 143. Due to Demaray’s preclusion positions, Demaray foreclosed Applied’s ability
`to move forward with Dr. Demaray’s deposition until after resolution of the January 24, 2022
`discovery letter brief and Demaray’s motion to amend its answer to add infringement claims. As
`a result, Dr. Demaray’s deposition has been delayed by more than six months. Moreover, Demaray
`deprived Applied of the opportunity to cite to testimony from Dr. Demaray, a named inventor, in
`claim construction briefing. And while Demaray suggests that further delay will be minimal
`because Judge Davila will hear its motion to amend next month, it is unclear on what basis
`Demaray believes the motion will be decided at or shortly after the hearing.
`Applied’s Proposal
`For the reasons explained in the January 24, 2022 discovery letter brief, Applied respectfully
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`Case 5:20-cv-09341-EJD Document 159 Filed 07/19/22 Page 2 of 3
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`requests the Court issue an order expressly denying Demaray’s prior proposal that Dr. Demaray’s
`deposition in this case be a single, coordinate deposition with non-parties Intel and Samsung.
`Applied is not asking for an advisory opinion, as Demaray now contends. Indeed, Demaray has
`repeatedly asked this Court to address whether Applied must coordinate Dr. Demaray’s deposition
`with the Texas cases, including in the original discovery letter last December and in the most recent
`CMC statement. ECF 86 at 3 (“[T]he issue of whether duplicative depositions of Dr. Demaray are
`warranted should be resolved as part of the CMC process...”); id. at 4 (“Applied presents no reason
`why it cannot take a joint deposition… in the WDTX cases”); ECF 151 at 11-12.
`Applied further requests the Court order Dr. Demaray to appear for deposition on the limited topics
`presently at issue in this case and which were contemplated when the Court originally ordered Dr.
`Demaray’s deposition to occur six months ago (claim construction and Applied’s license defense).
`The deposition should be without prejudice to Applied’s right to seek testimony from Dr. Demaray
`on other (and currently irrelevant) topics at a later time if the Court allows Demaray’s
`infringement claims to be added and the scope of relevant discovery in this case changes.
`Demaray’s Statement
`Demaray has repeatedly offered Dr. Demaray for deposition in this matter alone, in accordance
`with the Court’s prior order. As explained in the January 24, 2022 discovery letter, the parties
`scheduled his deposition for January 21. Before the deposition, Demaray properly put Applied
`on notice that given Applied’s insistence on an early deposition, Demaray would (1) oppose any
`later efforts to take a second deposition here (e.g., if affirmative infringement claims are brought
`or he is designated on 30(b)(6) topics), and (2) “Demaray will oppose any request in the Texas
`cases for an additional, duplicative deposition of Dr. Demaray,” given the overlap of issues on
`which Dr. Demaray will be offering testimony in the Texas cases and the present case, the fact
`that the same attorneys represent the Texas defendants and Applied, and that their interests are
`completely aligned. Demaray confirmed exactly this at the meet and confer prior to the January
`24 submission. Applied then unilaterally cancelled the January 21 deposition.
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`Demaray offered Dr. Demaray again for deposition on February 11, but Applied did not respond.
`In February, Applied informed Demaray that it would like to proceed with the deposition despite
`the pending motion and Demaray offered him on March 2 or March 3. When Applied raised
`conflicts, Demaray offered him on March 11. When Applied raised further conflicts, Deamray he
`offered him on March 24. Applied declined all of these dates and in April decided not to proceed
`with the deposition after all, despite ongoing claim construction briefing, until the Court ruled on
`the January 24 submission and dropped the issue. Indeed, until the Court asked for an update, the
`parties had not spoken on the issue for months.
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`Applied now, for the first time, admits its goal has always been to subject Dr. Demaray to
`repeated depositions in this matter. There are numerous reasons this is improper. First, the
`Federal Rules contemplate a presumptive limit of one, sever-hour deposition for individual fact
`witnesses. Second, Applied falsely claims that this Court contemplated Dr. Demaray being
`deposed repeatedly in this case (first on “claim construction and Applied’s license defense” and
`later on other topics). But the Court’s order makes no mention of multiple depositions. Third,
`Applied claims that issues relating to damages are “currently irrelevant,” but ignores that the
`Court will resolve the pending dispute regarding affirmative claims within a month.
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`Case 5:20-cv-09341-EJD Document 159 Filed 07/19/22 Page 3 of 3
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`Applied also repeats its request for an advisory opinion on how the Texas court should address
`any later-sought deposition of Dr. Demaray in the Texas cases. Put simply, Judge Albright in
`Texas will rule on whether the Texas defendants get a further deposition(s) of Dr. Demaray and
`the bounds thereof. Applied’s counsel acknowledged the same at the last hearing: “[a]s to what
`Judge Albright decides over there with respect to Samsung and Intel’s cases, that’s a separate
`issue. If they want to raise a dispute or protective order issue with respect to those cases,
`they’re more than likely happy to do so.” Tr. at 12:14-20. The propriety of duplicative
`depositions in Texas is not an issue properly before this Court.
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`Demaray’s Proposal
`Given the Court will address whether to allow Demaray’s affirmative infringement claims in less
`than a month clarifying the scope of this matter and the applicable case schedule, if Applied still
`wants an early deposition of Dr. Demaray, the Court should order the deposition to occur a
`reasonable amount of time after Judge Davila issues an order. But Applied should only get one
`bite at the apple in this case as contemplated under the Federal Rules. Regarding potential
`depositions in the Texas cases, that is not an issue properly before this Court and Applied’s request
`for an advisory order is improper.
`Respectfully submitted,
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`/s/ Philip Ou
`Philip Ou
`of PAUL HASTINGS LLP
`Counsel for Plaintiff
`Applied Materials, Inc.
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`Respectfully submitted,
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`/s/ C. Maclain Wells
`C Maclain Wells
`of Folio Law Group LLP
`Counsel for Defendant
`Demaray LLC
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