Case 5:20-cv-09341-EJD Document 180 Filed 09/08/22 Page 1 of 33
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`KIRKLAND & ELLIS LLP
`Adam R. Alper (SBN 196834)
`adam.alper@kirkland.com
`Akshay S. Deoras (SBN 301962)
`akshay.deoras@kirkland.com
`555 California Street
`San Francisco, CA 94104
`Telephone: (415) 439-1400
`
`Michael W. De Vries (SBN 211001)
`michael.devries@kirkland.com
`555 South Flower Street, Suite 3700
`Los Angeles, CA 90071
`Telephone: (213) 680-8400
`
`Sharre Lotfollahi (SBN 258913)
`sharre.lotfollahi@kirkland.com
`2049 Century Park East
`Los Angeles, CA 90067
`Telephone: (310) 552-4200
`
`Leslie Schmidt (admitted pro hac vice)
`leslie.schmidt@kirkland.com
`601 Lexington Ave.
`New York, NY 10022
`Telephone: (212) 446-4800
`
`Kat Li (admitted pro hac vice)
`kat.li@kirkland.com
`401 Congress Ave.
`Austin, TX 78701
`Telephone: (512) 678-9100
`Attorneys for Plaintiff
`APPLIED MATERIALS, INC.
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`APPLIED MATERIALS, INC.,
`Plaintiff,
`
`vs.
`DEMARAY LLC,
`Defendant.
`
`
`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
`
`
`CASE NO. 5:20-cv-09341-EJD
`APPLIED MATERIALS, INC.’S
`ANSWER, AFFIRMATIVE DEFENSES
`AND COUNTERCLAIMS TO
`COUNTERCLAIMS OF DEMARAY
`LLC
`PUBLIC – REDACTED VERSION
`Honorable Edward J. Davila
`
`
`
`Case No. 5:20-cv-09341-EJD
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`Case 5:20-cv-09341-EJD Document 180 Filed 09/08/22 Page 2 of 33
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`APPLIED MATERIAL’S ANSWER, AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS TO COUNTERCLAIMS OF DEMARAY LLC
`
`Plaintiff and Counterclaim Defendant Applied Materials, Inc. (“Applied Materials”) files
`this Answer, Affirmative Defenses and Counterclaims to Demaray LLC’s (“Demaray”)
`Counterclaims to Complaint (“Demaray’s Counterclaims”). Applied Materials denies all
`allegations in Demaray’s Counterclaims unless expressly admitted. Any admissions herein are for
`purposes of this matter only. Applied Materials also reserves the right to take further positions and
`raise additional defenses that may become apparent as a result of additional information discovered
`subsequent to filing this Answer and Counterclaims. Applied Materials demands a jury trial on all
`issues and claims so triable.
`
`ANSWER
`1.
`Applied Materials admits Demaray’s Counterclaims purport to set forth a civil
`action seeking a judgment of infringement of U.S. Patent Nos. 7,544,276 (the “’276 Patent”) and
`7,381,657 (the “’657 Patent”) arising under the patent laws of the United States, 35 U.S.C. § 1 et
`seq., including 35 U.S.C. § 271, giving rise to remedies specified under 35 U.S.C. § 281 and 283-
`85. Applied Materials denies that there are factual or legal bases for Demaray’s Counterclaims.
`PARTIES
`2.
`Applied Materials admits that Richard E. Demaray is listed as a named inventor on
`the face of the ’276 and ’657 Patents. Applied Materials lacks knowledge or information sufficient
`to form a belief as to the truth of the remaining allegations in Paragraph 2 of Demaray’s
`Counterclaims, and therefore denies them.
`3.
`Applied Materials lacks knowledge or information sufficient to form a belief as to
`the truth of the allegations in Paragraph 3 of Demaray’s Counterclaims, and therefore denies them.
`4.
`Applied Materials denies that it uses Demaray’s patented technology. Applied
`Materials lacks knowledge or information sufficient to form a belief as to the truth of the remaining
`allegations in Paragraph 4 of Demaray’s Counterclaims, and therefore denies them.
`
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
`
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`Case 5:20-cv-09341-EJD Document 180 Filed 09/08/22 Page 3 of 33
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`5.
`Applied Materials admits that Demaray is a limited liability company organized and
`existing under the laws of the state of Delaware. Applied Materials lacks knowledge or information
`sufficient to form a belief as to the truth of the remaining allegations in Paragraph 5 of Demaray’s
`Counterclaims, and therefore denies them.
`6.
`Applied Materials admits that Exhibits 1 and 2 purport to be copies of the ’276 and
`’657 patents, respectively. Applied Materials lacks knowledge or information sufficient to form a
`belief as to the truth of the remaining allegations in Paragraph 6 of Demaray’s Counterclaims, and
`therefore denies them.
`7.
`Admitted.
`
`JURISDICTION AND VENUE
`8.
`Applied Materials admits that Demaray’s Counterclaims purport to set forth an
`action arising under the patent laws of the United States, 35 U.S.C. § 1 et seq. Applied Materials
`denies that there are factual or legal bases for the claims listed in the Counterclaims. Applied
`Materials admits that this Court has subject matter jurisdiction over this action pursuant to 28
`U.S.C. §§ 1331 and 1338(a).
`9.
`For purposes of this action only, Applied Materials admits that it is subject to
`personal jurisdiction in this Court.
`10.
`For purposes of this action only, Applied Materials admits that it is subject to
`personal jurisdiction in this Court, but denies the remaining allegations in Paragraph 10 of
`Demaray’s Counterclaims.
`11.
`Applied Materials admits that, for purposes of this action only, venue is proper, but
`denies the remaining allegations in Paragraph 11 of Demaray’s Counterclaims.
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`TECHNOLOGY BACKGROUND
`12.
`Applied Materials admits that semiconductor devices are generally manufactured
`using a series of process steps applied to a substrate, but denies the other allegations in Paragraph
`12 of Demaray’s Counterclaims.
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`Case 5:20-cv-09341-EJD Document 180 Filed 09/08/22 Page 4 of 33
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`13.
`Applied Materials admits that magnetron sputtering is one of many physical vapor
`deposition (“PVD”) techniques, and admits that magnetron sputtering can be carried out in a reactor
`with power being applied to a target. Applied Materials lacks knowledge or information sufficient
`to form a belief as to the truth of the remaining allegations in Paragraph 13 of Demaray’s
`Counterclaims, and therefore denies them.
`14.
`Applied Materials admits the ’276 patent states:
`
`Other approaches to providing a uniform condition of sputter erosion rely on
`creating a large uniform magnetic field or a scanning magnetic field that produces a time-
`averaged, uniform magnetic field. For example, rotating magnets or electromagnets can be
`utilized to provide wide areas of substantially uniform target erosion. For magnetically
`enhanced sputter deposition, a scanning magnet magnetron source can be used to provide a
`uniform, wide area condition of target erosion.
`As illustrated in FIG. 1A, apparatus 10 can include a scanning magnet magnetron
`source 20 positioned above target 12. An embodiment of a scanning magnetron source used for
`dc sputtering of metallic films is described in U.S. Pat. No. 5,855,744 to Halsey, et. al.,
`(hereafter ’744), which is incorporated herein by reference in its entirety. The ’744 patent
`demonstrates the improvement in thickness uniformity that is achieved by reducing local target
`erosion due to magnetic effects in the sputtering of a wide area rectangular target. As described
`in the ’744 patent, by reducing the magnetic field intensity at these positions, the local target
`erosion was decreased and the resulting film thickness nonuniformity was improved from 8%,
`to 4%, over a rectangular substrate of 400x500 mm.
`
`’276 patent, 8:38-60. Applied Materials admits that the ’276 patent also states: “Target 12 functions
`as a cathode when power is applied to it and is equivalently termed a cathode. Application of power
`to target 12 creates a plasma 53. Substrate 16 is capacitively coupled to an electrode 17 through an
`insulator 54.” ’276 patent, 5:24-27. Applied Materials lacks knowledge or information sufficient
`to form a belief as to the truth of the remaining allegations in Paragraph 14 of Demaray’s
`Counterclaims, and therefore denies them.
`15.
`Applied Materials admits that the ’276 patent states:
`
`In accordance with the present invention, a sputtering reactor apparatus for
`depositing oxide and oxynitride films is presented. Further, methods for depositing oxide and
`oxynitride films for optical waveguide devices are also presented. A sputtering reactor
`according to the present invention includes a pulsed DC power supply coupled through a filter
`to a target and a substrate electrode coupled to an RF power supply. A substrate mounted on
`the substrate electrode is therefore supplied with a bias from the RF power supply.
`The target can be a metallic target made of a material to be deposited on the
`substrate. In some embodiments, the metallic target is formed from Al, Si and various rare-earth
`
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`Case 5:20-cv-09341-EJD Document 180 Filed 09/08/22 Page 5 of 33
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`ions. A target with an erbium concentration, for example, can be utilized to deposit a film that
`can be formed into a waveguide optical amplifier.
`A substrate can be any material and, in some embodiments, is a silicon wafer. In
`some embodiments, RF power can be supplied to the wafer. In some embodiments, the wafer
`and the electrode can be separated by an insulating glass.
`In some embodiments, up to about 10 kW of pulsed DC power at a frequency of
`between about 40 kHz and 350 kHz and a reverse pulse time of up to about 5μs is supplied to
`the target. The wafer can be biased with up to about several hundred watts of RF power. The
`temperature of the substrate can be controlled to within about 10° C. and can vary from about -
`50° C. to several hundred degrees C. Process gasses can be fed into the reaction chamber of the
`reactor apparatus. In some embodiments, the process gasses can include combinations of Ar,
`N2, O2, C2F6, CO2, CO and other process gasses.
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`’276 patent, 2:45-3:7. Applied Materials admits that the ’276 patent also states: “However, both RF
`and pulsed DC deposited films are not fully dense and most likely have columnar structures. These
`columnar structures are detrimental for optical wave guide applications due to the scattering loss
`caused by the structure. By applying a RF bias on wafer 16 during deposition, the deposited film
`can be dandified by energetic ion bombardment and the columnar structure can be substantially
`eliminated.” ’276 patent, 5:60-67. Applied Materials lacks knowledge or information sufficient to
`form a belief as to the truth of the remaining allegations in Paragraph 15 of Demaray’s
`Counterclaims, and therefore denies them.
`
`APPLIED MATERIALS’ KNOWLEDGE OF THE ASSERTED PATENTS
`16.
`Applied Materials admits that ’657 patent was cited during the prosecution of U.S.
`Patent No. 8,894,827. Applied Materials admits it filed IPR2021-00103 and IPR2021-00105
`against the ’276 patent on October 23, 2020. Applied Materials admits it filed IPR2021-00104 and
`IPR2021-00106 against the ’657 patent on October 23, 2020. Applied Materials denies the
`remaining allegations in Paragraph 16 of Demaray’s Counterclaims.
`
`COUNTERCLAIM I
`17.
`Paragraph 17 of Demaray’s Counterclaims does not contain an allegation of fact,
`and therefore, no answer is required. Applied Materials incorporates by reference each of the
`statements set forth above in Paragraphs 1-16.
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`Case 5:20-cv-09341-EJD Document 180 Filed 09/08/22 Page 6 of 33
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`18.
`Applied Materials admits that the ’276 patent is titled “Biased pulse DC reactive
`sputtering of oxide films” and issued on June 9, 2009. Applied Materials denies the remaining
`allegations in Paragraph 18 of Demaray’s Counterclaims.
`19.
`Applied Materials admits the face of the ’276 patent lists Hongmei Zhang,
`Mukundan Narasimhan, Ravi Mullapudi, and Richard E. Demaray as co-inventors.
`20.
`To the extent this paragraph recites a legal conclusion, no answer is required. To
`the extent an answer is required, Applied Materials lacks knowledge or information sufficient to
`form a belief as to the truth of these allegations, and therefore denies them.
`21.
`Applied Materials admits that the ’276 patent states: “The present invention relates
`to deposition of oxide and oxynitride films and, in particular, to deposition of oxide and oxynitride
`films by pulsed DC reactive sputtering.” ’276 patent, 1:12-14. Applied Materials denies the
`remaining allegations in Paragraph 21 of Demaray’s Counterclaims.
`22.
`Applied Materials admits that the ’276 patent states: “a substrate electrode coupled
`to an RF power supply. A substrate mounted on the substrate electrode is therefore supplied with a
`bias from the RF power supply.” ’276 patent, 2:51-53. Applied Materials denies the remaining
`allegations in Paragraph 22 of Demaray’s Counterclaims.
`23.
`Denied.
`24.
`Applied Materials admits that it makes, offers to sell, sells, and supplies
`semiconductor manufacturing equipment including reactors. Applied Materials denies the
`remaining allegations in Paragraph 24 of Demaray’s Counterclaims.
`25.
`Applied Materials admits that it provides and/or sells reactors in the United States.
`Applied Materials denies the remaining allegations in Paragraph 25 of Demaray’s Counterclaims.
`26.
`Applied Materials admits that it sells and offers to sell reactors in the United States.
`Applied Materials denies the remaining allegations in Paragraph 26 of Demaray’s Counterclaims.
`27.
`Applied Materials admits it has knowledge of the ’276 Patent as set forth in
`Paragraph 16.
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`Case 5:20-cv-09341-EJD Document 180 Filed 09/08/22 Page 7 of 33
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`28.
`Applied Materials admits it supplies reactors and provides product materials,
`directions, instructions, training, and or technical support to instruct its customers and its
`distributors. Applied Materials denies the remaining allegations in Paragraph 28 of Demaray’s
`Counterclaims.
`29.
`Applied Materials admits that it provides and/or sells reactors in the United States.
`Applied Materials denies the remaining allegations in Paragraph 29 of Demaray’s Counterclaims.
`30.
`Applied Materials admits it has knowledge of the ’276 Patent as set forth in
`Paragraph 16.
`31.
`Denied.
`32.
`Applied Materials admits that it sells and offers to sell reactors. Applied Materials
`denies the remaining allegations in Paragraph 32 of Demaray’s Counterclaims.
`33.
`Denied.
`34.
`Applied Materials admits it supplies components of reactors and provides product
`materials, directions, instructions, training, and or technical support to instruct its employees, its
`contractors, its agents, its subsidiaries, its customers, and its distributors. Applied Materials denies
`the remaining allegations in Paragraph 34 of Demaray’s Counterclaims.
`35.
`Applied Materials admits it supplies components of reactors and provides product
`materials, directions, instructions, training, and or technical support to instruct its employees, its
`contractors, its agents, its subsidiaries, its customers, and its distributors. Applied Materials denies
`the remaining allegations in Paragraph 35 of Demaray’s Counterclaims.
`36.
`Denied.
`[“1. A reactor according to the present invention, comprising:”]
`37.
`Denied.
`38.
`Applied Materials admits that it configures its reactors for deposition of layers in its
`semiconductor products. Applied Materials lacks knowledge or information sufficient to form a
`belief as to the truth of the remaining allegations in Paragraph 38 of Demaray’s Counterclaims, and
`therefore denies them.
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`Case 5:20-cv-09341-EJD Document 180 Filed 09/08/22 Page 8 of 33
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`39.
`Denied.
`[“a target area for receiving a target;”]
`40.
`Denied.
`41.
`link
`the
`the document available at
`that
`Applied Materials admits
`https://www.appliedmaterials.com/resources/glossary states: “[i]n PVD, the target is the source of
`the material to be deposited. Atoms are ejected from the target as a result of the bombardment of
`energetic particles.” Applied Materials denies the remaining allegations in Paragraph 41 of
`Demaray’s Counterclaims.
`42.
`Applied Materials lacks knowledge or information sufficient to form a belief as to
`the truth of the allegations in Paragraph 42 of Demaray’s Counterclaims, and therefore denies them.
`[“a substrate area opposite the target area for receiving a substrate;”]
`43.
`Denied.
`44.
`link
`the
`the document available at
`that
`Applied Materials admits
`https://www.appliedmaterials.com/resources/glossary states: “[t]he material upon which thin films
`are manipulated. Silicon is most commonly used for semiconductors . . . .” Applied Materials denies
`the remaining allegations in Paragraph 44 of Demaray’s Counterclaims.
`[“a pulsed DC power supply coupled to the target area, the pulsed DC power supply
`providing alternating negative and positive voltages to the target;”]
`45.
`Denied.
`[“an RF bias power supply coupled to the substrate;”]
`46.
`Denied.
`[“and a narrow band-rejection filter that rejects at a frequency of the RF bias power
`supply coupled between the pulsed DC power supply and the target area.”]
`47.
`Denied.
`48.
`Denied.
`49.
`Denied.
`50.
`Denied.
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`Case 5:20-cv-09341-EJD Document 180 Filed 09/08/22 Page 9 of 33
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`51.
`
`Denied.
`
`COUNTERCLAIM II
`52.
`Paragraph 52 does not contain an allegation of fact, and therefore, no answer is
`required. Applied Materials restates and incorporates by reference each of the statements set forth
`above.
`
`53.
`Applied Materials admits that the ’657 patent is titled “Biased pulse DC reactive
`sputtering of oxide films” and issued on June 3, 2008. Applied Materials denies the remaining
`allegations in Paragraph 53 of Demaray’s Counterclaims.
`54.
`Applied Materials admits the face of the ’657 patent lists Hongmei Zhang,
`Mukundan Narasimhan, Ravi Mullapudi, and Richard E. Demaray as co-inventors.
`55.
`To the extent this paragraph recites a legal conclusion, no answer is required. To the
`extent an answer is required, Applied Materials lacks knowledge or information sufficient to form
`a belief as to the truth of these allegations, and therefore denies them.
`56.
`Applied Materials admits that the ’657 patent states: “The present invention relates
`to deposition of oxide and oxynitride films and, in particular, to deposition of oxide and oxynitride
`films by pulsed DC reactive sputtering.” ’657 patent, 1:11-13. Applied Materials denies the
`remaining allegations in Paragraph 56 of Demaray’s Counterclaims.
`57.
`Applied Materials admits that the ’657 patent states: “A sputtering reactor according
`to the present invention includes a pulsed DC power supply coupled through a filter to a target and
`a substrate electrode coupled to an RF power supply. A substrate mounted on the substrate electrode
`is therefore supplied with a bias from the RF power supply.” ’657 patent, 2:49-54. Applied
`Materials denies the remaining allegations in Paragraph 57 of Demaray’s Counterclaims.
`58.
`Denied.
`59.
`Applied Materials admits that it manufacturers semiconductor products. Applied
`Materials denies the remaining allegations in Paragraph 59 of Demaray’s Counterclaims.
`60.
`Applied Materials admits that it sells and offers for sale reactors in the United States.
`Applied Materials denies the remaining allegations in Paragraph 60 of Demaray’s Counterclaims.
`
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`Applied Materials admits it has knowledge of the ’657 Patent as set forth in
`
`61.
`Paragraph 16.
`62.
`Applied Materials admits it supplies semiconductor products and provides product
`materials, directions, instructions, training, and or technical support to instruct its customers and/or
`its distributors. Applied Materials denies the remaining allegations in Paragraph 62 of Demaray’s
`Counterclaims.
`63.
`Denied.
`[“A method of depositing a film on an insulating substrate, comprising:”]
`64.
`Denied.
`65.
`Applied Materials admits that it manufactures and tests reactors for fabricating
`semiconductor products. Applied Materials denies the remaining allegations in Paragraph 65 of
`Demaray’s Counterclaims.
`[“providing a process gas between a conductive target and the substrate;”]
`66.
`Applied Materials admits that it manufactures and tests reactors for fabricating
`semiconductor products. Applied Materials denies the remaining allegations in Paragraph 66 of
`Demaray’s Counterclaims.
`67.
`fabricating
`for
`reactors
`it manufactures
`that
`Applied Materials admits
`semiconductor products. Applied Materials denies the remaining allegations in Paragraph 67 of
`Demaray’s Counterclaims.
`[“providing pulsed DC power to the target through a narrow band rejection filter such
`that the target alternates between positive and negative voltages;”]
`68.
`Applied Materials admits it manufactures reactors for fabricating semiconductor
`products. Applied Materials denies the remaining allegations in Paragraph 68 of Demaray’s
`Counterclaims.
`69.
`Applied Materials admits it manufactures reactors for fabricating semiconductor
`products. Applied Materials denies the remaining allegations in Paragraph 69 of Demaray’s
`Counterclaims.
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`[“providing an RF bias at a frequency that corresponds to the narrow band rejection
`filter to the substrate;”]
`70.
`Applied Materials admits that it manufacturers reactors that can be used to fabricate
`semiconductor products. Applied Materials denies the remaining allegations in Paragraph 70 of
`Demaray’s Counterclaims.
`71.
`Applied Materials admits it manufactures reactors for fabricating semiconductor
`products. Applied Materials denies the remaining allegations in Paragraph 71 of Demaray’s
`Counterclaims.
`[“providing a magnetic field to the target;”]
`72.
`Applied Materials admits that it manufacturers reactors that can be used to fabricate
`semiconductor products. Applied Materials denies the remaining allegations in Paragraph 72 of
`Demaray’s Counterclaims.
`73.
`Applied Materials admits it manufactures reactors for fabricating semiconductor
`products. Applied Materials denies the remaining allegations in Paragraph 73 of Demaray’s
`Counterclaims.
`[“and reconditioning the target;”]
`74.
`Applied Materials admits that it manufacturers reactors that can be used to fabricate
`semiconductor products. Applied Materials denies the remaining allegations in Paragraph 74 of
`Demaray’s Counterclaims.
`75.
`Applied Materials admits it manufactures reactors that can be used to fabricate
`semiconductor products. Applied Materials denies the remaining allegations in Paragraph 75 of
`Demaray’s Counterclaims.
`[“wherein reconditioning the target includes reactive sputtering in the metallic mode
`and then reactive sputtering in the poison mode.”]
`76.
`Applied Materials admits that it manufacturers reactors that can be used to fabricate
`semiconductor products. Applied Materials denies the remaining allegations in Paragraph 76 of
`Demaray’s Counterclaims.
`
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`77.
`Applied Materials admits it manufactures reactors that can be used to fabricate
`semiconductor products. Applied Materials denies the remaining allegations in Paragraph 77 of
`Demaray’s Counterclaims.
`78.
`Denied.
`79.
`Denied.
`80.
`Denied.
`
`APPLIED MATERIALS’ NON-INFRINGEMENT
`OF THE ASSERTED PATENTS
`
`81.
`Paragraph 81 does not contain an allegation of fact, and, therefore no answer is
`required. Applied Materials incorporates by reference each of the statements set forth above.
`82.
`Denied.
`83.
`Denied.
`84.
`Denied.
`85.
`Denied.
`86.
`Denied.
`87.
`Denied.
`DENIAL OF DEMARAY’S PRAYER FOR RELIEF ON THE COUNTERCLAIMS
`88.
`Applied Materials denies that it is liable for any relief requested in the Prayer for
`Relief on the Counterclaims, including that requested in subparagraphs A through J. Applied
`Materials has not directly, indirectly, literally and/or by the doctrine of equivalents infringed the
`Patents-in-Suit. Demaray is not entitled to any relief in this action, either as requested in its
`Counterclaims or otherwise.
`89.
`Applied Materials further denies all allegations in Demaray’s Counterclaims to
`which is has not specifically responded.
`
`FIRST AFFIRMATIVE DEFENSE
`(Failure to State a Claim)
`Demaray’s Counterclaims fail to state a claim upon which relief can be granted.
`
`
`90.
`
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`SECOND AFFIRMATIVE DEFENSE
`(No Infringement)
`91.
`Applied Materials does not infringe any valid and enforceable claim of the Asserted
`Patents in any manner under 35 U.S.C. § 271 either literally or under the doctrine of equivalents,
`directly or indirectly, willfully or otherwise. Applied Materials has not performed any act and is
`not proposing to perform any act in violation of any rights validly belonging to Demaray.
`92.
` Demaray bears the burden to prove that the accused PVD chambers and processes
`infringe the asserted claims. On information and belief, Demaray’s infringement allegations, as
`shown by at least its infringement contentions in the cases against Applied Materials’ customers,
`fail to identify evidence sufficient to carry its burden with regard to any accused PVD chamber or
`process. Further, Applied Materials’ noninfringement is exemplified by the absence of several key
`limitations required by all asserted claims in the accused products, including, but not limited to, the
`claimed “pulsed DC power supply” and/or “narrow-band rejection filter.”
`
`THIRD AFFIRMATIVE DEFENSE
`(Invalidity)
`93.
`The asserted claims of the Asserted Patents are invalid for failure to satisfy the
`requirements of 35 U.S.C. § 100, et seq., including, but not limited to, one or more of the following:
`35 U.S.C. §§ 101, 102, 103, 112, and/or 116.
`94.
`Applied Materials incorporates by reference herein to its counterclaims for
`invalidity. See infra.
`
`FOURTH AFFIRMATIVE DEFENSE
`(Prosecution History Estoppel and Disclaimer)
`95.
`Demaray’s claims are barred in whole or in part by the doctrines of prosecution
`history estoppel and/or prosecution disclaimer.
`96.
`During the prosecution of the Asserted Patents, the patent application to which the
`Asserted Patents claim priority (U.S. Patent Application No. 10/101,863 (“the ’863 Application”)),
`and the other patent applications related to the Asserted Patents, the United States Patent and
`
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`Trademark Office (“USPTO”) Examiners made multiple rejections in view of the prior art. The
`Patentees made arguments, amendments, admissions, representations, and statements during those
`prosecutions to overcome those rejections and/or gain allowance of the claims.
`97.
`For example, during prosecution of the ’863 Application, the Patentees in their
`July 23, 2004 response, responded to a February 24, 2004 Non-Final Rejection, and made
`arguments regarding the “pulsed DC power supply.”
`98.
`Similarly, during inter partes review proceedings for the Asserted Patents, Demaray
`made arguments, admissions, representations, and statements during those proceedings to
`overcome asserted prior art.
`99.
`For example, in its February 16, 2021 Patent Owner’s Preliminary Response for
`IPR2021-00103 pertaining to the ’276 patent, Demaray made arguments regarding the “narrow
`band-rejection filter.”
`100. Demaray is estopped from construing the claims of the Asserted Patents to cover or
`include, either literally or under the doctrine of equivalents, products or methods that were
`surrendered because of arguments, amendments, admissions, representations, and/or statements
`made during prosecution or inter partes review before the USPTO.
`
`FIFTH AFFIRMATIVE DEFENSE
`(Ensnarement and/or Claim Vitiation)
`101. Demaray’s claims are barred or limited in whole or in part by the doctrine of
`ensnarement and/or claim vitiation. On information and belief, Demaray’s infringement
`allegations, as shown by at least its infringement contentions in the cases against Applied Materials’
`customers, rely on the doctrine of equivalents theories for multiple requirements of the asserted
`claims—including, but not limited to, the claimed “narrow-band rejection filter”—to expand the
`scope of the claims in a way that encompasses prior art systems and/or vitiate the claim
`requirements altogether.
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`APPLIED MATERIALS’ ANSWER,
`AFFIRMATIVE DEFENSES AND
`COUNTERCLAIMS
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`SIXTH AFFIRMATIVE DEFENSE
`(License and/or Exhaustion)
`102. To the extent that Demaray has licensed or otherwise exhausted its rights and
`remedies as to products or services that are accused by way of the Counterclaims, Applied Materials
`is not liable to Demaray for any alleged acts of infringement related to such products or services.
`103. On information and belief, Dr. Demaray was a general manager of Applied Komatsu
`Technology, Inc., developing sputtered silicon deposition technology for flat panel displays. On
`information and belief, Dr. Demaray, and other employees working with Dr. Demaray, were
`working in Northern California and were employed by either Applied Komatsu Technology, Inc.’s
`(“AKT”) subsidiary, Applied Komatsu Technology America Inc. (“AKTA”) (AKT and AKTA
`collectively, “Applied Komatsu”), or by Applied Materials, Inc.
`104. On information and belief, Dr. Demaray, along with several other colleagues from
`Applied Materials, Inc. and/or Applied Komatsu, left in late 1998 to start a new company,
`Symmorphix. On information and belief, Dr. Demaray was a founder and the CTO of Symmorphix.
`105. On information and belief, at Symmorphix, Dr. Demaray and his team of former
`Applied Materials, Inc. and/or Applied Komatsu employees continued to develop the technology
`they worked on at Applied Materials, Inc. and/or Applied Komatsu related to sputtered silicon
`deposition technology, including methods of sputtering u