Case 5:20-cv-09341-EJD Document 182 Filed 09/19/22 Page 1 of 19
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`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
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`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
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`KIRKLAND & ELLIS LLP
`Adam R. Alper (196834)
`adam.alper@kirkland.com
`Akshay S. Deoras (301962)
`akshay.deoras@kirkland.com
`555 California Street
`San Francisco, CA 94104
`Telephone: (415) 439-1400
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`Michael W. De Vries (211001)
`michael.devries@kirkland.com
`555 South Flower Street, Suite 3700
`Los Angeles, CA 90071
`Telephone: (213) 680-8400
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`Sharre Lotfollahi (258913)
`sharre.lotfollahi@kirkland.com
`2049 Century Park East
`Los Angeles, CA 90067
`Telephone: (310) 552-4200
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`Leslie Schmidt (Pro Hac)
`leslie.schmidt@kirkland.com
`601 Lexington Ave.
`New York, NY 10022
`Telephone: (212) 446-4800
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`Kat Li (Pro Hac)
`kat.li@kirkland.com
`401 Congress Ave.
`Austin, TX 78701
`Telephone: (512) 678-9100
`Attorneys for Plaintiff
`APPLIED MATERIALS, INC.
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`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
`JOINT CASE MANAGEMENT
`STATEMENT
`Honorable Edward J. Davila
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`Joint Case Management Statement
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`Case 5:20-cv-09341-EJD Document 182 Filed 09/19/22 Page 2 of 19
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`Plaintiff and counterclaim defendant Applied Materials, Inc. (“Applied”) and Defendant
`and counterclaim plaintiff Demaray LLC (“Demaray”) (collectively, “the Parties”) jointly submit
`this Joint Case Management Statement in connection with the Court’s Case Management
`Conference scheduled for September 29, 2022. By way of overview, all pending motions before
`the Court have been resolved, and the parties are proceeding in accordance with the case schedule
`that was entered by the Court on August 5, 2022. (Dkt. 163). As set forth below, the parties provide
`a summary of case status, as well as key case management events they anticipate will arise in the
`near-term.
`1.
`Preliminary Statements
`Applied’s Statement
`Applied respectfully provides the following two status updates for the Court, neither of
`which requires the Court to take action at this time. First, in accordance with the Court’s August 5,
`2022 order granting Demaray’s motion to amend its answer to add infringement counterclaims and
`adopting Judge Cousin’s proposed schedule for this action (Dkt. 163), Applied and Demaray are
`moving forward cooperatively with their claims and counterclaims in accordance with the Court’s
`schedule. Given the overlap between the patents and Applied products at issue in this action and
`those pending against two of Applied’s customers (Intel and Samsung) in the Western District of
`Texas (the “Texas cases”), Applied has taken steps to discuss with Demaray what, if any, additional
`discovery is necessary beyond that provided in the Texas cases.1
`The overlap in accused products between this case and the Texas customer cases allows for
`substantial efficiencies in this action. Specifically, Demaray’s infringement contentions in the
`Texas cases identify products within two Applied product lines of allegedly infringing the two
`patents-in-suit: (1) Applied’s Endura® Cirrus™ PVD products, and (2) Applied’s non-Cirrus PVD
`products. Both categories of products are also covered by Applied’s declaratory judgment claims
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`In the Texas cases, the parties have agreed to extend fact discovery as well as the remaining
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`dates in the case schedule, with trial being moved from May 2023 to September 2023. At a recent
`hearing, the Court tentatively indicated that the Court would accept the parties’ proposed schedule
`extension when submitted.
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`Case 5:20-cv-09341-EJD Document 182 Filed 09/19/22 Page 3 of 19
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`in this action. And while Demaray’s infringement contentions in this action have not yet been
`served, Demaray’s newly-filed infringement counterclaims here identify a product falling into only
`one of the two product lines at issue in Texas, the Endura® Cirrus™ HTX PVD products. Dkt.
`174 ¶¶ 37-51, 64-80 (Counterclaims). As such, Applied anticipates that at least most of the
`discovery relevant to this case has been or will be provided in connection with the Texas cases.
`Importantly, regardless of what Applied products Demaray ends up accusing in this case, Applied
`has been diligently and proactively working with Demaray to determine what additional discovery
`is reasonably necessary here, and will promptly make necessary document productions and/or
`provide other discovery to address aspects of discovery that have not been covered in Texas in
`response to reasonable requests from Demaray.
`Second, after ensuring that Demaray has been reasonably provided with adequate discovery
`relating to the Applied products in this case, Applied intends to seek early summary judgment of
`non-infringement of all asserted claims of the patents-in-suit. This case is well-suited for such
`proceedings. The patents-in-suit—which share the same specification and are nearly identical—
`relate to concepts developed over twenty years ago, and in that time, were never implemented in a
`commercial product by their originators, but instead sat on a shelf collecting dust for years. And
`while Demaray now, after that lengthy dormancy, contends that Applied’s products infringe, they
`objectively do not: for example, as confirmed by Demaray’s counterclaims here and its disclosures
`in the Texas actions, none of the Applied products at issue include either a “narrow-band rejection
`filter” or use “pulsed DC power”—requirements of all the asserted claims of the patents-in-suit
`which Demaray relies upon to distinguish its alleged invention from the prior art. See, e.g., ’276
`patent at 22:40-50 (claim 1) (requiring, inter alia, “a pulsed DC power supply coupled to the target
`area” and “a narrow band-rejection filter . . . coupled between the pulsed DC power supply and the
`target area”); ’657 patent at 23:2-15 (claim 1) (requiring, inter alia, a method “providing pulsed
`DC power to the target through a narrow band rejection filter”). 2 Contrary to Demaray’s
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`As set forth in Applied’s complaint and in prior joint case management conference
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`statements, other issues are suitable for summary adjudication as well. For example, Applied is
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`Case 5:20-cv-09341-EJD Document 182 Filed 09/19/22 Page 4 of 19
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`suggestion, summary judgment on the lack of “pulsed DC power” in Applied’s accused products
`is warranted under the construction Demaray urged—and won—in the Texas cases.
`As such, an early summary judgment proceeding is in order to clear the cloud that
`Demaray’s claims have placed over Applied’s products. There are no fact disputes, as several claim
`elements are entirely missing from the Applied products at issue. For example, as all of the party
`and third-party discovery produced thus far has demonstrated, Applied’s products do not in any
`way implement the fundamental “narrow-band rejection filter” aspect of the patents.3 Moreover,
`none of the Applied products that Demaray has accused in any action use pulsed DC power. See
`Dkt. 174 ¶¶ 30, 37-51, 64-80; Dkt. 1-3; Dkt. 1-4 (alleging infringement of Applied’s “Cirrus”
`products, which do not use pulsed DC power). Critically, to date, Demaray has provided no specific
`explanation for how it can meet both of these requirements.
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`Given the complete absence of the “narrow-band rejection filter” or “pulsed DC power” in
`the Applied PVD reactors accused of infringement, no further claim constructions are expected to
`be necessary for summary judgment.4 Moreover, in view of the voluminous party and third-party
`discovery that has already been provided in the Texas cases and here, little if any additional
`discovery will be necessary. Although Demaray appears to complain that it will need discovery to
`make its accusations, it fails to acknowledge Applied’s past and ongoing efforts to provide
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`licensed to the patents-in-suit as a result of an agreement between one of Demaray’s predecessors
`and an Applied affiliate. Dkt. 1 ¶¶ 18-23, 68-90, 101-108; Dkt. 69 at 5-6, 12-13, 16-17; Dkt. 151
`at 15-17. Demaray has indicated that it plans to pursue additional discovery on this issue, and
`Applied will work with Demaray on that issue. Applied, however, disagrees that the licensing issue
`implicates privilege waiver in any way.
`3
`Demaray suggests that significant third-party discovery is required to determine whether
`Applied’s products meet the “narrow band rejection filter” limitation. In fact, third parties have
`already made substantial productions in the Texas cases that clearly demonstrate no such filter is
`present, and Applied will ensure that any such relevant productions are made available in this
`proceeding. Applied does not anticipate that other significant third-party discovery is necessary.
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`To the extent further claim construction relating to these two terms is necessary, such issues
`are expected to be narrow, and can be addressed in the context of the summary judgment briefing.
`Should the case proceed past early summary judgment, the parties may require resolution of
`additional claim construction disputes by the Court, to be presented at the Claim Construction
`Hearing.
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`Demaray with appropriate discovery, which will put this case in a position to allow for targeted,
`case-dispositive early summary judgment proceedings. For example, Demaray is incorrect that
`Applied has previously “refused” to provide “targeted product disclosures detailing its use of the
`reactor configurations.” Applied has already produced significant discovery on its reactor
`configurations, including for products that are not accused in the co-pending Texas cases against
`Applied’s customers. Across this case and the Texas cases,5 Applied has produced hundreds of
`documents, made a corporate representative available for deposition, provided declarations
`regarding schematics and inspections of its products, and facilitated discovery from Applied’s
`suppliers of potentially relevant components. This discovery was not limited to just the products
`Demaray accuses in the co-pending Texas cases, but also includes other Applied reactors/chambers
`as well. Indeed, Judge Cousins’ denied Demaray’s request for this additional discovery, finding
`that Demaray failed to demonstrate “how the information Applied has already supplied is
`insufficient.” Dkt. 155 at 1-2. Regardless, as set forth above, Applied is working to diligently and
`proactively address Demaray’s requests by investigating what, if any, additional information it is
`able to provide and will promptly provide that discovery in order to put this case in a near-term
`position for focused and efficient summary judgment proceedings.
`Lastly, proceeding with an early summary judgment at the appropriate time in this case will
`avoid undue prejudice to Applied associated with proceeding through the entire claim construction
`and discovery period on all aspects of this matter, and any undue burden on the Court. If Applied
`prevails, a judgment of non-infringement will dispose of Demaray’s claims in this case in their
`entirety, and eliminate or substantially narrow all other issues.
`Applied believes that the parties and the Court will be well-positioned to engage in
`streamlined summary judgment proceedings to quickly, efficiently, and economically adjudicate
`the merits of this dispute as well as disputes in the Western Texas customer cases.
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`Per the parties’ agreement, Applied productions in the co-pending Texas cases are deemed
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`crossed produced in this matter.
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`Case 5:20-cv-09341-EJD Document 182 Filed 09/19/22 Page 6 of 19
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`Demaray’s Statement
`This case involves interplay with two earlier-filed pending cases in Texas, four Applied
`IPRs (two of which were not instituted and two of which were resolved in Demaray’s favor),
`affirmative infringement counterclaims potentially addressing all of Applied’s reactors (including
`reactor models and processes not at issue in Texas), and responsive invalidity affirmative defenses.
`It is therefore a particularly complex case as contemplated by the Court’s standing order on Case
`Management Statements.
`While Demaray has brought affirmative infringement counterclaims based upon a subset of
`reactors on which Applied has provided some discovery in Texas, the full scope of Applied’s
`infringement in this case remains unclear. Since the beginning of this case, Demaray proposed that
`Applied provide immediate targeted product disclosures detailing its use of the reactor
`configurations for which Applied sought a declaratory judgment of non-infringement, so that the
`parties could evaluate which reactors deserved a deeper look. Applied refused to provide this basic
`information—even though Applied is seeking a declaratory judgment of noninfringement for all of
`its reactors and not just the ones at issue in the Texas cases.
`Demaray consequently moved the Court for such immediate targeted discovery on
`Applied’s reactors to evaluate the full scope of Applied’s infringement in determining whether to
`assert affirmative counterclaims for infringement. While Magistrate Judge Cousins denied
`Demaray’s motion, 6 fact discovery opened months ago and Demaray has also propounded
`discovery necessary for Demaray to make infringement determinations regarding all of Applied’s
`reactors. Despite seeking 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, after
`ten months, Applied’s production in this case comprises just over forty generic bill of materials
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` While Applied insinuates that Magistrate Judge Cousins found that no “additional discovery” on
`Applied’s reactors is required, he did no such thing. He merely determined that Demaray’s
`request for immediate targeted discovery was not necessary to support Demaray’s motion to
`amend its complaint to add affirmative infringement claims. Dkt. 155. Tellingly, Applied does
`not claim to have disclosed all of its relevant reactor configurations in the ten months that
`Demaray’s discovery requests have been pending.
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`for its pre-configured reactor offerings. Moreover, Applied manufactures additional chambers
`that are not currently at issue in the Texas litigations, and Demaray still needs substantial discovery
`regarding these other chambers in order to make infringement determinations (let alone to oppose
`any motions for summary judgment). Applied only today confirmed that it will begin
`supplementing its production to address certain identified deficiencies beginning on September 30,
`2022, including information that Demaray has been seeking from Applied for months.
`Regarding Applied’s anticipated early summary judgement motions, neither what remains
`of its licensing defense, nor its purported non-infringement defenses are amenable to summary
`judgement in Applied’s favor. On Applied’s licensing defense, the Court’s order on the motion to
`dismiss held that the assignment provisions in employee agreements underlying various Applied
`claims are “void and unenforceable as an unlawful restraint on trade in violation of California
`Business and Professions Code § 16000.” Dkt. No. 63 at 20. The Court allowed Applied’s license
`defense to survive only to the extent such a defense is independent of the unlawful assignment
`provisions. Because there is no other provision that Applied identifies which would arguably give
`rise to a license, Applied is left arguing that the Court should ignore the actual language of the
`contract in favor of Applied’s characterization of the parties’ relative subjective intents. See Dkt.
`No. 1, Complaint at ¶¶ 80-81. To the extent that Applied makes such an argument, factual
`determinations regarding documents, witness testimony, and evaluation of witness credibility from
`Applied Komatsu, Applied Materials, Symmorphix, Corning (Symmorphix’s customer involved
`with the amended contract terms), as well as the negotiators, counsel, etc. will be necessary to
`resolve this issue. Indeed, as addressed in Section 9, Applied’s counsel on behalf of the Texas
`defendants identified 20+ potential witnesses – just for the licensing defense. See Dkt. 81-2, Exs.
`11-12 (Texas defendants’ initial disclosures on duplicative licensing defense). It is unclear why
`such witnesses identified by Applied’s counsel in Texas as relevant to Applied’s license defense
`would not also be relevant here.
`Regarding Applied’s non-infringement positions, the Texas court has already rejected
`attempts to read limitations into the claims requiring the DC power source to pulse at fixed
`frequencies and afforded the term its plain meaning—a DC power source that issues one or more
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`pulses of DC power (e.g., at arc detection). There is no dispute that the DC power sources in
`Applied’s reactors do just that. Applied’s assertion that summary judgment would be appropriate
`based upon a claim construction already rejected by the Texas court (and that Applied has already
`raised with this Court in prior claim construction briefing (Dkt. 138 at 8)), defies logic.
`Regarding the “narrow-band rejection filter” limitation in the patents, Applied has told the
`Texas court repeatedly for the last two years that it does not know the details of the protective RF
`filters that it uses with its power supplies. Applied admitted that there are protective RF filters for
`certain reactors supplied to the Texas defendants, but refused to provide circuit-level details on
`those filters with sufficient specificity to determine whether those filters are “narrow band rejection
`filters.” It was only after Demaray subpoenaed a third party Applied component supplier that the
`requisite details on a subset of reactors came to light. Demaray anticipates that similar efforts will
`be necessary here (once Applied identifies the additional reactors and filter components at issue
`here). It is surprising and contrary to Applied's representations to the Texas court that Applied now
`asserts to this Court that it has knowledge of such filters (including the filters implemented in
`reactors not at issue in Texas) sufficient to determine whether the filters are “narrow band rejection
`filters.” Demaray looks forward to Applied actually producing such information—it has not done
`so to date, either in this case or the Texas cases, despite Demaray’s discovery requests. Demaray
`is unaware of any support for Applied’s statement that it “does not anticipate that other significant
`third-party discovery is necessary”—if Applied’s claimed ignorance regarding the configuration of
`protective filters in its reactors is to be believed, extensive third-party discovery will be required.
`At least due to these discovery-related and claim construction issues, this case is not suitable
`for an early summary judgment. At a minimum, Applied needs to first confirm the scope of reactors
`at issue in this case by identifying all of its reactors that include DC power to the target and an RF
`generator capable of biasing the substrate, including those not already identified in the Texas
`litigations (because they are not used by either Samsung or Intel, for example), and also provide
`configurations and technical details regarding those reactors.
`2.
`Jurisdiction And Service (Joint)
`There are no pending issues with respect to jurisdiction and service.
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`3.
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`Updated Facts Since Last Case Management Statement (Joint)
`Since the last joint case management statement, the Court resolved all pending motions
`between the parties. Specifically, in its August 5, 2022 order, the Court granted Demaray’s motion
`for leave to amend its answer to add infringement counterclaims, adopted the case schedule
`proposed by Judge Cousins (Dkt. 156), and denied Applied’s motion for relief from that schedule
`(Dkt. 161). See Dkt. 163. Additionally, in his July 14, 2022 order, Judge Cousins resolved all but
`one of the pending discovery motions filed by the parties, including (1) denying Demaray’s request
`for immediate “targeted” discovery to determine whether affirmative infringement claims would
`be appropriate in this matter; (2) deferring ruling on the parties’ dispute over Applied’s requested
`deposition of Dr. R. Ernest Demaray; and (3) resolving the parties’ dispute over the protective order
`for this case and entering that order. Dkt. 155. On July 21, 2022, Judge Cousins resolved the final
`then-pending discovery motion, when he issued an order resolving the parties’ then-pending dispute
`over Dr. Demaray’s deposition. Dkt. 160.
`On June 29, 2022, the Patent Trial and Appeal Board issued its Final Written Decision on
`petitions challenging the patents at issue, concluding that the petitions failed to show that claims
`1–13 of the ’276 Patent and claims 1–21 of the ’657 Patent were unpatentable over the prior art
`raised in the petitions. Dkt. 175.
`On August 10, 2022, attorneys from Kirkland & Ellis LLP made their respective
`appearances on behalf of Applied, and will serve as lead counsel for Applied in this matter.
`Dkts. 166–73.
`On August 11, 2022, Demaray filed its Amended Answer, Affirmative Defenses, and
`Counterclaims. On September 8, 2022, Applied filed its Answer, Affirmative Defenses and
`Counterclaims to Counterclaims of Demaray LLC.
`4.
`Legal Issues (Joint)
`The following is a high-level description of the legal issues before this Court, and no legal
`issues beyond those discussed in the pleadings are currently before the Court to decide.
`Applied has asserted the following disputes in its Complaint: (1) declaration of non-
`infringement of U.S. Patent No. 7,544,276; (2) declaration of non-infringement of U.S. Patent No.
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`7,381,657; (3) declaration of non-infringement based on license, and (4) declaration of non-
`infringement based on assignment of rights to Applied and Demaray’s failure to join all co-owners.
`Dkt. 1. The Court since dismissed Applied’s claim for declaration of non-infringement based on
`assignment of rights and failure to join all co-owners. Dkt. 63.
`In response, Demaray has raised the following affirmative defenses: (1) no declaratory
`judgment jurisdiction under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, (2) failure
`to state a claim for non-infringement, (3) failure to state a claim for license, (4) unenforceability
`due to estoppel, waiver, and/or unclean hands, and (5) not an exceptional case warranting attorneys’
`fees under 35. U.S.C. § 285.
`Demaray has also asserted the following counterclaims: (1) infringement of the ’276 Patent,
`(2) infringement of the ’657 Patent, and (3) a request for a finding of willful infringement.
`In response, Applied raised counterclaims for (1) declaration of invalidity of U.S. Patent
`No. 7,544,276 and (2) declaration of invalidity of U.S. Patent No. 7,381,657. Applied also asserted
`the following affirmative defenses: (1) failure to state a claim, (2) non-infringement, (3) invalidity,
`(4) prosecution history estoppel and disclaimer, (5) ensnarement and/or claim vitiation, (6) license
`and/or exhaustion, (7) limitation on damages, (8) unenforceability, equitable estoppel and/or
`implied license, (9) no injunctive relief, (10) no willful infringement, and (11) statute of limitations.
`5.
`Motions (Joint)
`There are currently no motions pending before the Court, and the parties do not anticipate
`filing non-discovery motions prior to the service of infringement and invalidity contentions. As
`discussed above, Applied intends to file an early motion for summary judgment of non-
`infringement.
`6.
`Amendment of Pleadings (Joint)
`Demaray has submitted its Amended Affirmative Answer, Affirmative Defenses, and
`Counterclaims to Applied’s Complaint. Dkt. 174. Demaray’s Amended Answer includes two
`counterclaims regarding infringement of the patents-in-suit, and an allegation of willful
`infringement. Id. at 12–31. Applied submitted its response to Demaray’s counterclaims on
`September 8, 2022, which includes affirmative defenses and two counterclaims for declaratory
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`judgment of invalidity of the patents-in-suit. Dkt. 180. Demaray’s response to Applied’s
`counterclaims for declaratory judgment of invalidity of the patents-in-suit is due on September
`29, 2022.
`7.
`Evidence Preservation (Joint)
`The Court entered the parties’ proposed ESI order on January 26, 2022. Dkt. 122.
`Disclosures (Joint)
`The parties have served their initial disclosures.
`Discovery (Disputed)
`The parties reference their prior submission and agreement regarding discovery limits.
`Dkt. No. 27. Where appropriate and not prejudicial to their respective rights to take discovery
`pursuant to the Federal Rules, the parties agree to coordination with discovery in the Texas cases,
`in particular with regards to non-party witnesses.
`A. Applied’s Statement
`There are no pending discovery-related motions before the Court. As explained below,
`Applied is working collaboratively with Demaray to address each of the “discovery issues” it has
`raised, and thus there are no discovery-related disputes that need to be resolved at this time.
`Demaray Issue #1 – Discovery Regarding Applied’s Products and Processes
`Most, if not all, of the discovery that Demaray needs to evaluate its infringement claims
`has already been produced by Applied, either in this action or the co-pending Texas cases.
`Applied has already produced hundreds of documents, made a corporate representative available
`for deposition, provided declarations regarding schematics and inspections of its products, and
`facilitated discovery from Applied’s suppliers of potentially relevant components. Indeed, Judge
`Cousins recently denied Demaray’s motion seeking the very discovery that Demaray requests
`below, finding that Demaray failed to demonstrate “how the information Applied has already
`supplied is insufficient.” Dkt. 155 at 1-2. But to resolve any potential discovery disputes or
`claim by Demaray that early summary judgment is inappropriate in light of outstanding
`discovery, Applied has already committed to (and is in the process of) expeditiously identifying
`any additional discovery that Demaray may need to “make [its] full infringement evaluations,”
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`and if such discovery is identified, will produce that information.
`Demaray Issue #2 – Coordination with the Texas Cases
`Applied agrees that the parties should work together and take reasonable efforts to
`minimize duplicative discovery to alleviate the burdens on deponents, including by coordinating
`discovery with the co-pending Texas cases for both discovery of Demaray and Applied.
`Accordingly, Applied is not aware of any dispute regarding the handling of depositions or other
`discovery, and remains committed to working with Demaray to find efficient solutions for each
`deponent.
`To the extent there are issues related to the timing and scope of the depositions that
`Demaray raises below, they are of Demaray’s own making. With respect to Ms. Zhang, the first-
`named inventor of the asserted patents, Demaray acknowledges that it has not made her available
`for deposition in the co-pending Texas cases, despite Applied requesting that deposition over a
`year ago. While Ms. Zhang was deposed in connection with inter partes review challenges to the
`asserted patents, the scope of that deposition was limited to the issues raised in that proceeding—
`validity of the challenged patents in view of the asserted paper art references—and did not cover
`the additional issues present in this and the co-pending Texas cases. And with respect to Dr.
`Demaray’s deposition, Applied has not yet received Dr. Demaray’s ESI documents, and thus
`cannot agree to foregoing another deposition after those documents are produced. However, to
`the extent that Demaray agrees to produce that ESI by a date certain, Applied has agreed to wait
`to take that deposition until after Dr. Demaray’s ESI is produced.
`Demaray Issue #3 – Discovery Regarding Applied's License Defense
`While Applied is not aware of any pending requests from Demaray on this issue, Applied
`is willing to work with Demaray to produce any non-privileged discovery that is responsive to
`any reasonable requests that Demaray may have. Applied, however, disagrees that its license
`defense (or discovery produced related to that defense) implicates any waiver of privilege, and
`Demaray has yet to articulate a basis for any such waiver.
`B. Demaray's Statement
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`There are numerous discovery issues to be addressed, including: (1) Applied’s failure to
`provide timely discovery on its reactors necessary to make full infringement evaluations;
`(2) Applied’s refusal to coordinate certain depositions with the co-pending Texas cases; and
`(3) necessary discovery on Applied’s licensing defense.
`Issue #1 – Demaray Requires Discovery Regarding Applied's Products And
`Processes. 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 issued discovery requesting that
`Applied provide disclosures sufficient to identify (1) all Applied reactors with DC power to the
`target and RF generator to either the target or the