Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 1 of 30
`
`YAR R. CHAIKOVSKY (SB# 175421)
`yarchaikovsky@paulhastings.com
`PHILIP OU (SB# 259896)
`philipou@paulhastings.com
`ANDY LEGOLVAN (SB# 292520)
`andylegolvan@paulhastings.com
`JOSEPH J. RUMPLER, II (SB# 296941)
`josephrumpler@paulhastings.com
`BERKELEY FIFE (SB# 325293)
`berkeleyfife@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
`Attorneys for Plaintiff
`APPLIED MATERIALS, INC.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`APPLIED MATERIALS, INC.,
`Plaintiff,
`
`vs.
`DEMARAY LLC,
`
`Defendant.
`
`CASE NO. 5:20-cv-09341-EJD
`APPLIED MATERIALS, INC.’S
`OPPOSITION TO DEMARAY LLC’S
`MOTION TO DISMISS
`
`Hearing Date: April 8, 2021
`Hearing Time: 9:00 a.m.
`
`REDACTED VERSION OF DOCUMENT
`PROPOSED TO BE FILED UNDER SEAL
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`APPLIED’S OPPOSITION TO
`DEMARAY’S MOTION TO DISMISS
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`

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`Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 2 of 30
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`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
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`III.
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`IV.
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`B.
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`C.
`D.
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`INTRODUCTION .............................................................................................................. 1
`BACKGROUND ................................................................................................................ 5
`A.
`Demaray’s Infringement Actions Against Intel and Samsung and
`Proceedings in Related Action in Applied I ............................................................ 5
`Demaray’s Knowledge of Samsung and Intel’s Use of the Accused
`Reactors Prior to Applied’s DJ Complaint and Demaray’s Motion to
`Dismiss.................................................................................................................... 6
`Applied’s New Declaratory Judgment Complaint .................................................. 8
`The Court’s Prior Finding of Lack of Jurisdiction, and Demaray’s
`Mischaracterization of the Court’s Order ............................................................... 9
`Demaray’s Conflicting Post-Complaint Contentions and Conduct ...................... 11
`E.
`ARGUMENT .................................................................................................................... 12
`A.
`Demaray’s Numerous Affirmative Acts Alleged in the DJ Complaint
`Establish a Case or Controversy ........................................................................... 12
`There is an Actual Controversy Applied Might be Liable for Direct
`Infringement Court Based on Demaray’s Customer Allegations ......................... 13
`There is an Actual Controversy Applied Might be Liable for Indirect
`Infringement Based on Demaray’s Customer Allegations ................................... 15
`The Most Efficient and Convenient Way to Resolve All Actions Is By
`Resolution between Applied and Demaray in this Court...................................... 16
`Demaray’s Motion Under Rule 12(b)(6) Should Be Denied ................................ 19
`Applied has Pleaded a Plausible Claim for Relief Based on a License ................ 20
`Applied has Pleaded Sufficient Facts to Support a Plausible Claim for
`Relief for Non-Infringement Based on the Assignment Provisions...................... 23
`CONCLUSION................................................................................................................. 25
`
`B.
`
`C.
`
`D.
`
`E.
`F.
`G.
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`APPLIED’S OPPOSITION TO
`DEMARAY’S MOTION TO DISMISS
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`Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 3 of 30
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Applied Materials, Inc. v. Advanced Micro-Fabrication Equip. (Shanghai) Co.
`630 F. Supp. 2d 1084 (N.D. Cal. 2009) ..............................................................................19, 24
`
`Applied Materials, Inc. v. Demaray LLC,
`Case No. 5:20-cv-05676-EJD, Dkt. No. 46 ..........................................................................1, 19
`
`Armorlite Lens Co. v. Campbell,
`340 F. Supp. 273 (S.D. Cal. 1972)......................................................................................24, 25
`
`Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys.,
`583 F.3d 832 (Fed. Cir. 2009).............................................................................................23, 24
`
`Bd. of Trs. v. Roche Molecular Sys.,
`487 F. Supp. 2d 1099 (N.D. Cal. 2007) ....................................................................................24
`
`Hewlett-Packard Co. v. Acceleron LLC,
`587 F.3d 1358 (Fed. Cir. 2009).................................................................................................12
`
`Kanbar v. O’Melveny & Myers,
`849 F. Supp. 2d 902 (N.D. Cal. 2011) ......................................................................................20
`
`Microsoft Corp. v. DataTern, Inc.,
`755 F.3d 899 (Fed. Cir. 2014)...................................................................................................13
`
`Microsoft Corp. v. GeoTag, Inc.,
`No. 11-cv-175-RGA, 2014 U.S. Dist. LEXIS 120759 (D. Del. Aug. 29, 2014) ......................15
`
`Microsoft Corp. v. SynKloud Techs., LLC,
`No. 20-cv-0007-RGA, 2020 U.S. Dist. LEXIS 162928 (D. Del. Sep. 8, 2020) ...........15, 17, 18
`
`Mobile Telecomms. Techs., LLC v. Mobile Telecomms. Techs., LLC,
`247 F. Supp. 3d 456 (D. Del. 2017)....................................................................................13, 15
`
`Whitewater W. Indus. v. Alleshouse,
`981 F.3d 1045 (Fed. Cir. 2020).....................................................................................20, 23, 24
`
`Statutes
`
`Cal. Civ. Code § 1589.....................................................................................................................22
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`APPLIED’S OPPOSITION TO
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`Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 4 of 30
`
`TABLE OF CONTENTS
`(continued)
`
`Page
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`Other Authorities
`
`Rule 11 ..............................................................................................................................................3
`
`Rule 12(b)(6)...................................................................................................................................19
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`Rule 26(f) ..........................................................................................................................................7
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`APPLIED’S OPPOSITION TO
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`Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 5 of 30
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`I.
`
`INTRODUCTION
`Crediting Demaray’s repeated representations that its lawsuits against Applied’s customers,
`Intel and Samsung, in the Western District of Texas (“WDTX”) were not directed at Applied’s
`products, but rather “specific configurations” of those products purportedly performed by the
`customers (and not Applied), see Dkt. No. 1 (“DJ Compl.”) at ¶ 42, the Court denied Applied’s
`motion for preliminary injunction after concluding it did not have subject matter jurisdiction over
`Applied’s related declaratory relief action. Applied Materials, Inc. v. Demaray LLC, Case No. 5:20-
`cv-05676-EJD (“Applied I”), Dkt. No. 46 at 12. The Court reasoned that “Demaray alleges Intel
`and Samsung configure the reactors such that they are comprised of a pulsed DC power supply
`coupled to the target area, a RF bias power supply coupled to the substrate, and a narrow band
`rejection filter placed between the DC power supply and the target area in order to deposit the thin
`layer films in its semiconductor products” and that “[a]lthough Applied is a supplier of the reactors
`capable of this configuration and deposition method, Demaray does not allege in the WDTX
`Actions that Applied itself configures the reactors.” Id. at 7, 8 (emphasis added).
`Applied, Intel and Samsung have always known that no such post-installation
`“configurations” occur. The Applied reactors accused in the customers suits are designed,
`configured, manufactured, and installed by Applied at the customers’ fabrication facilities, where
`thereafter Applied continues to provide on-site engineering, maintenance and support. Thus,
`contrary to Demaray’s arguments in Applied I, this is “a case where one entity [Applied] makes an
`[allegedly] infringing product [Applied’s accused reactors], and its customers [Intel and Samsung]
`are then sued for nothing more than purchasing and using it [as a practical matter based on the
`commercial realities] in the only way possible.” Applied I, Dkt. No. 23, p. 6:5-9; DJ Compl. at ¶ 3.
`Accordingly, when considering Demaray’s allegations with the commercial realities of Applied’s
`relationships with its customers, and the numerous affirmative acts taken by Demaray after filing
`the Customer Suits, Applied filed its new DJ Complaint based on a reasonable and objective
`interpretation of Demaray’s allegations and affirmative acts as an implied assertion of infringement
`against Applied. The new DJ Complaint, which includes a table, see DJ Compl. at ¶ 9, summarizing
`“Demaray’s Representations (in red) / Affirmative Acts Supporting Subject Matter Jurisdiction
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`APPLIED’S OPPOSITION TO
`DEMARAY’S MOTION TO DISMISS
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`Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 6 of 30
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`(acts expressly directed at Applied in green) and/or Contradicting Representations,” and over thirty
`paragraphs of allegations and evidence, should have ended any reasonable dispute as to this Court’s
`subject matter jurisdiction. DJ Compl. at ¶¶ 26–58. Yet Demaray proceeded with its challenge.
`Contrary to Demaray’s suggestions, whether Demaray believed these allegations, including
`the commercial reality of Applied’s relationship with its customers, or intended to accuse
`“Applied’s PVD reactors standing alone of infringement” is not the relevant inquiry. If it were,
`patent owners could easily avoid declaratory judgment actions by simply espousing “beliefs” that
`are dissociated from reality and contradicted by their own actions and evidence in their possession.
`And that is precisely what Demaray has done in its motion to dismiss. What is worse, Demaray has
`also known for months that no such post-installation “configurations” by Intel or Samsung occur.
`For example, on October 9, 2020, Demaray served its preliminary infringement contentions in the
`Customer Suits, pointing to Applied literature and documentation in every claim limitation other
`than the narrow band-rejection filter. DJ Compl. at ¶¶ 43–44. For that limitation, no evidence was
`cited whatsoever. On the same day, sworn declarations confirmed that Applied provides the DC
`power supply and power cable as part of the Endura system and that Intel and Samsung use the
`power supply provided by Applied. Id. at ¶ 11. On December 7, 2020, in another sworn declaration,
`Applied explained that post-installation hardware modifications by Applied’s customers, such as
`adding a filter between the DC power supply and the target, would be inconsistent with the
`commercial realities and relationships between an equipment supplier like Applied and its
`customers. DJ Compl. at ¶¶ 3-4; Dk. No. 1-17 (Ex. Q). For avoidance of doubt, Demaray requested
`Samsung in an interrogatory to “[d]escribe the configuration process of the Samsung RMS PVD
`chambers,”
`
`Ou Decl. at ¶4, Ex. A at 11.
`
`Ou Decl. at ¶5, Ex
`B at 28:14-29:24; 40:8-14. With this knowledge, all of which Demaray had prior to the DJ
`Complaint, Demaray cannot credibly assert that its allegations against Samsung for its use of
`Applied’s products do not also impliedly assert infringement against the supplier.
`APPLIED’S OPPOSITION TO
`DEMARAY’S MOTION TO DISMISS
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`Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 7 of 30
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`Nevertheless, and in disregard of these facts (and others described in the DJ Complaint and
`below), Demaray proceeded to challenge the Court’s subject matter jurisdiction again, doubling
`down on its purported theory that Applied’s customers “configure” the equipment by adding their
`own narrow band-rejection filter. Mot. at 3:3–9 (“[The customer-suit complaints] alleged that Intel
`and Samsung each ‘configures, or causes to be configured, [their] RMS reactors such that they
`comprise a narrow band-rejection filter.’”), 9:25–27 (“Like the second group of claim charts in
`DataTern, Demaray did not rely on Applied information for several limitations, e.g., the narrow
`band-rejection filter.”), 11:20–24 (“To the contrary, Demaray has not relied on Applied product
`information for several limitations, e.g., the narrow band-rejection filter.”). Demaray’s apparent
`argument is that because it did not rely on any evidence from Applied in its customer complaints
`or preliminary infringement contentions for this claim limitation, its allegations are not directed at
`Applied. But Demaray ignores that it does not rely on any evidence whatsoever, calling into
`question what Rule 11 basis it had to bring its lawsuits against Intel and Samsung in the first place.1
`To the extent Samsung allegedly infringes, including meeting the claim required narrow band-
`rejection filter, it would only be because Applied supplied the equipment with such a filter. But
`Samsung has denied Demaray’s allegation that the accused products meet this limitation and
`Applied has pled in its DJ Complaint that its products do not infringe for the same reason.
`While Demaray may have gotten away with burying its head in the sand with respect to the
`narrow-band rejection filter limitation in its subject matter jurisdiction challenge in Applied I, it can
`no longer do so here. In late December 2020, Intel and Samsung moved to compel Demaray to
`amend its deficient infringement contentions because they did not disclose any explanation, or
`
`1 Demaray has repeatedly stated it relied on “confidential reverse engineering reports.” Yet no
`reports are discussed, or even cited to, in its contentions. Demaray, nevertheless, continues its
`inaccurate representation that the redactions remove “references to reverse engineering reports of
`Intel and Samsung products,” Mot. 13:6–8, while refusing to provide the unredacted versions and
`precluding Applied or the Court from assessing the veracity of its claim. Counsel for Samsung,
`who has reviewed the redactions, has also rebutted Demaray’s claim. Nash Decl. at ¶¶ 3–4.
`APPLIED’S OPPOSITION TO
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`DEMARAY’S MOTION TO DISMISS
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`Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 8 of 30
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`provide any evidence, of how the filter element is met. Ou Decl. at ¶ 6. On January 26, 2021—the
`same day Demaray filed its motion to dismiss—the WDTX Court ordered Demaray to supplement
`its contentions with any evidence in its possession or later risk a motion to strike. Id.
`Faced with that order, Demaray’s cover has been blown. A week later, Demaray
`supplemented its contentions—relying on Applied’s technical documents about its products—for
`every limitation of each asserted claim, including the narrow band-rejection filter limitation. Ou
`Decl. at ¶ 7-8; Exs. C (Intel) at Ex. A, p. 29-31, Ex. B at 23-25; Ex. D (Samsung) at Ex. A, p. 37-
`40, Ex. B, p. 43-48. For example, Demaray cites to DC power manuals produced last November—
`the same power supplies Demaray has known are supplied by Applied and used by Samsung and
`Intel from the October 9, 2020 declarations—as evidence that the narrow-band rejection filter
`limitation is met: “[i]n addition, the AE Pinnacle and AE Pinnacle III includes numerous filters,
`including an ‘output filter’ that may function as a narrow band-rejection filter that rejects at a
`frequency of the RF bias power supply.” See, e.g., Ex. C at Ex. A, p. 30. Notably, Demaray’s
`supplementations make no reference to the customers “configuring” the equipment post-installation
`by, e.g., adding its own filter. Nor do they reference any confidential reverse engineering reports
`of Intel and Samsung products, in further contradiction to Demaray’s representations. These
`contentions confirm what Applied has known and believed since its complaint in Applied I—that
`the Customer Suits impliedly assert infringement against Applied and there is a reasonable potential
`that Demaray could bring an infringement claim against Applied based on the same allegations.
`Likewise, Demaray’s 12(b)(6) challenges to the license and assignment-based non-
`infringement claims should be denied. First, Applied has pleaded that it cannot infringe because
`the Asserted Patents were licensed as part of a Sales and Relationship Agreement (“SRA”) between
`two sophisticated commercial entities. Applied also pleaded that the license grant was not
`conditioned on the validity or enforceability of the assignment provision for which the parties
`already negotiated a release. Despite Dr. Demaray having been involved in those negotiations,
`Demaray offers no explanation or evidence to the contrary. Demaray overreaches by arguing that
`this commercial contract is invalid based on § 16600 and that Applied is estopped from arguing
`otherwise based on the Advanced opinion. Demaray is wrong on both. Advanced never addressed
`APPLIED’S OPPOSITION TO
`DEMARAY’S MOTION TO DISMISS
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`Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 9 of 30
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`this commercial contract, let alone the assignment provisions that the parties were aware of and
`considered as part of their negotiations that led to the agreement. Nor does Advanced address the
`specific facts and issues in this case, where the Federal Circuit has confirmed in both Whitewater
`and Roche that an essential threshold question under § 16600 is whether there is “evidence of a
`restraining effect on [a former employee’s] ability to engage in his profession.” Demaray does not
`argue that there has been a restraining effect on Dr. Demaray or any other former employees’ ability
`to engage in their profession—because there is none. For this reason, § 16600 does not apply to
`Applied’s non-infringement claims based on assignment provisions.
`Unlike in Advanced or Whitewater, Applied is not seeking to enjoin former employees from
`competing with Applied, nor is Applied seeking ownership rights in the Asserted Patents; rather
`Applied is only seeking a declaration that it does not infringe for two independent and distinct
`reasons: (1) Demaray’s predecessor entity granted Applied a license, restricted in scope, that covers
`the Asserted Patents as part of a commercial contract; and separately (2) Demaray cannot establish
`ownership over the ownership interest of at least one named inventor. While Demaray may disagree
`on the merits, Applied has pleaded a plausible claim for relief for these claims.
`
`II.
`
`BACKGROUND
`
`A.
`
`Demaray’s Infringement Actions Against Intel and Samsung and Proceedings
`in Related Action in Applied I
`
`On July 14, 2020, Demaray filed two actions in WDTX against Applied’s customers—Intel
`and Samsung—accusing them of infringing U.S. Patent Nos. 7,544,276 and 7,381,657 (the
`“Asserted Patents”) by using Applied’s semiconductor manufacturing equipment (herein
`“Applied’s reactors”). See Dkt. No. 1-2; Dkt. No. 1-3 (“Customer Suits”); DJ Compl. at ¶ 1. The
`Applied reactors identified and accused in the Customer Suits are used for the same applications
`by Applied in its own laboratories in Santa Clara, California for research and development and
`customer demonstrations.
`Id. at ¶¶ 2, 38. On August 13, 2020, Applied filed a declaratory
`judgment action (Applied I) that its products did not infringe the Asserted Patents and on September
`4, 2020, moved for a preliminary injunction to enjoin Demaray from proceeding with its Customer
`Suits. Applied I., Dkt. No. 14. Demaray opposed by arguing that the Court did not have subject
`APPLIED’S OPPOSITION TO
`DEMARAY’S MOTION TO DISMISS
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`matter jurisdiction by representing that its allegations in the Customer Suits were directed at
`“particular configurations” made by Intel and Samsung to Applied’s reactors such that “Demaray
`[did not] accuse Applied PVD reactors standing alone of infringement in the Texas cases—
`Demaray accused particular reactor configurations, and methods of depositing thin films using
`them, of infringement in the Texas cases[.]” Applied I, Dkt. No. 23 at 5:26–6:9 (emphasis added).
`While the injunction motion remained pending, and despite Demaray’s knowledge from
`sworn declarations submitted in Applied’s reply brief to its injunction motion and discovery
`provided in the Customer Suits contradicting Demaray’s assertions that Intel and Samsung make
`post-installation hardware modifications the Applied’s reactors, Demaray moved to dismiss for
`lack of subject matter jurisdiction, doubling down on its arguments made in opposing Applied’s
`injunction motion. In support of its motion, Demaray urged the Court to ignore Demaray’s “Post-
`Complaint Conduct,” the declarations from Applied, Samsung and Intel, as well as Demaray’s
`infringement contentions in the Customer Suits. Applied I, Dkt. No. 43, p. 5–7 (Section II.B).
`On December 16, 2020, the Court issued an order denying Applied’s injunction motion after
`concluding it did not have subject matter jurisdiction in Applied I, Dkt. No. 46 at 12. Demaray’s
`motion to dismiss, however, remained pending. As did Demaray’s lawsuits against Applied’s
`customers in WDTX, including discovery Demaray continued to obtain from Intel and Samsung,
`as well as from Applied voluntarily and through a third-party subpoena, that confirmed to Demaray
`that the representations it had been making to this Court regarding the nature of its infringement
`allegations in Texas were disconnected from reality and not supported by any evidence.
`
`B.
`
`Demaray’s Knowledge of Samsung and Intel’s Use of the Accused Reactors
`Prior to Applied’s DJ Complaint and Demaray’s Motion to Dismiss
`
`Leading up to Applied’s DJ Complaint, and while Demaray was challenging subject matter
`jurisdiction in Applied I, Demaray was well aware that Intel and Samsung did not modify Applied’s
`reactors after Applied manufactures and installs them into an allegedly infringing “configuration”
`such that the Customer Suits did not impliedly assert infringement against Applied. On November
`6, 2020, Intel and Samsung moved to transfer the Customer Suits to the Northern District of
`California, wherein, they argued that “Applied engineers responsible for development of the
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`accused technology and knowledge of Applied products configured for and supplied to
`[Intel/Samsung]” were located in this district. See, e.g., Ou Decl. at ¶ 9; Ex. E at 2. In support of
`transfer, Applied’s Director of Engineering responsible for the design of Applied’s PVD process
`chambers accused of infringement, Keith Miller, submitted a declaration confirming that
`
`
`Ou Decl. at ¶ 10; Ex. F at ¶ 4.
`Over the next three weeks, as part of meet and confers in the customers suits regarding
`discovery, as well as between Demaray and Applied for the Rule 26(f) conference in Applied I,
`Demaray was repeatedly informed that
` and that “the accused ‘Intel/Samsung reactors’ identified
`in the complaint and contentions are the reactors supplied by Applied to its customers.” Ou Decl.
`at ¶ 11.; Applied I, Dkt. No. 40 at 4:1–12. On December 4, 2020, Samsung provided its first set of
`written discovery responses to Demaray where it disclosed certain Applied reactors and explained
`
`Three days later, Applied’s Senior Director, Process Engineer for Metal Deposition
`Products, John Forster, explained in a declaration that post-installation hardware modifications by
`Applied’s customers, such as adding a filter between the DC power supply and the target, would
`be inconsistent with the commercial realities and relationships between an equipment supplier like
`Applied and its customers. DJ Compl. at ¶¶ 3–4; Dkt. No. 1-17 (Ex. Q). Mr. Forster explained why,
`considering these commercial realities, an objective supplier like Applied, interpreted Demaray’s
`allegations as making an implied assertion of infringement against Applied. Id. at ¶¶ 5–8.
`Five days later, Demaray served Applied with subpoenas for documents and deposition
`testimony directed to Applied’s configuration (not Samsung’s or Intel’s) of its reactors. DJ Compl.
`at ¶¶ 15-16; 49-50. While Demaray has sought to downplay the relevance of these subpoenas by
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`DEMARAY’S MOTION TO DISMISS
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`characterizing the requests as seeking “legitimate transfer-related information,” see Mot. at 15:7,
`Demaray’s statements regarding the subpoenas show otherwise. On the same day and just hours
`before Demaray filed its motion to dismiss, Demaray told the Court in the Customer Suits that:
`So for a little background, we’ve talked about it a little bit already. Applied is a
`third party to this suit in name only. . . . [¶] . . . In the course of these proceedings
`we’ve deposed Samsung already, and we’ve received [] some materials from Intel,
`and counsel for Intel in the meet and confers has informed us that, you know, a lot
`of this information rests with Applied. You’ve got to go there. [¶] So we subpoena
`Applied for this information. Someone needs to tell us how the DC power sources
`are configured in the accused reactors, how the RF bias is configured, whether
`there’s filters, the electrical components and how they go together.
`
`See Ou Decl. at ¶ 13, Ex. H at 32:7–33:2 (emphasis added).
`[Intel and Samsung] say that Applied has this information. For example, we asked
`witnesses, tell us about what types of filters are used to protect the DC power
`source. And the answer was, you got to ask Applied. We don’t know that. So this
`is necessary proof from Applied regarding certain aspects of these devices.
`
`Id. at 34:16–21 (emphasis added). Indeed, prior to the DJ Complaint, Demaray already told the
`Court that “discovery [from Applied] is necessary to determine which reactors are in dispute.” Id.;
`see also id. (“Given Applied’s involvement in the development, manufacture, assembly and
`installation of reactors which are then used by Intel/Samsung in an infringing manner, Demaray
`has sought from Applied certain ‘[m]aterials relating to Samsung/Intel reactors with RMS PVD
`chambers with the option of providing DC power to the target and a RF bias to the substrate’ to
`determine Applied’s involvement and the location of such activities.”).
`On December 18, 2020, both Samsung and Intel provided additional discovery responses
`
`Ou Decl. at ¶¶ 4, 14; Ex. A at 11; Ex. I at 9-10. Demaray deposed
`Samsung on December 23, 2020, the day before Applied’s DJ Complaint,
`
`Applied’s New Declaratory Judgment Complaint
`C.
`Meanwhile, Demaray succeeded in its jurisdiction challenge in opposing the injunction
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`APPLIED’S OPPOSITION TO
`DEMARAY’S MOTION TO DISMISS
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`

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`Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 13 of 30
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`motion in Applied I. In response, Applied filed a new DJ Complaint, detailing the numerous
`affirmative acts and totality of circumstances supporting that an actual case or controversy exists
`between Demaray and Applied. Dkt. No. 1 at ¶¶ 26–58; see also ¶ 9 (summary table).
`
`D.
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`The Court’s Prior Finding of Lack of Jurisdiction, and Demaray’s
`Mischaracterization of the Court’s Order
`
`Unable to explain away the affirmative acts and totality of circumstances pled in Applied’s
`new DJ Complaint, Demaray instead mischaracterizes these proceedings as a “reconsideration” of
`the Court’s order on jurisdiction in denying Applied’s injunction motion in Applied I. See Mot. at
`1:17, 7:13–15. There is no “reconsideration” when the facts and circumstances presented are vastly
`different. In resolving the jurisdictional question in Applied I, the Court was limited to the facts
`alleged in Applied’s operative complaint, Demaray’s customer-suit complaints and the evidence
`submitted in briefing Applied’s injunction motion. The Court did not, for example, address the
`commercial realities of Applied’s relationship with its customers, and whether the weight of the
`evidence disproved Demaray’s unsupported allegation that Intel and Samsung configure Applied’s
`reactors post-installation. The Court credited Demaray’s allegations that the Customer Suits were
`about Intel and Samsung’s own specific configurations to Applied’s reactors, as distinguished from
`whether Applied’s reactors, as installed, infringe the Asserted Patents. Ex. 1 to Mot. at 7–8.
`Applied’s new DJ Complaint, however, alleges the relevant facts and evidence to show that
`Demaray’s conclusory allegation that Intel and Samsung configure Applied’s reactors is simply
`wrong, thus compelling the inescapable conclusion that Demaray is impliedly accusing Applied’s
`reactors, by themselves, of having all allegedly infringing configurations. See DJ Compl. at ¶¶ 3,
`11. As detailed at length in Applied’s new DJ Complaint and above, Intel and Samsung do not
`configure Applied’s reactors after Applied installs them; rather, Applied designs, develops,
`manufactures, configures, and installs the reactors at its customers’ facilities, and Intel and
`Samsung use Applied’s reactors (as configured) to make semiconductor products.
`Unable to reconcile this reality with its jurisdictional challenge, Demaray attempts to
`rewrite history by suggesting that the Court already considered all of this new evidence. For
`example, Demaray incorrectly asserts that the Court already considered the evidence submitted
`APPLIED’S OPPOSITION TO
`DEMARAY’S MOTION TO DISMISS
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`Case 5:20-cv-09341-EJD Document 38 Filed 02/17/21 Page 14 of 30
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`with its new complaint, for example, the declaration of John Forster (Ex. Q to the DJ Compl., Dkt.
`No. 1-17). See Mot. at 4:1–6, 6:19–7:1. But this is not true. That declaration was submitted with
`Applied’s opposition brief to Demaray’s motion to dismiss in Applied I, which the Court never
`ruled on; it was not submitted as part of Applied’s preliminary injunction motion, and the Court
`did not consider this evidence in ruling on the jurisdictional issue as part of that motion.
`Next, Demaray erroneously asserts that its contentions were “submitted in public filings in
`the Texas cases and thus the Court considered them in rendering its prior order. See Ex. 1 at 3, n. 2
`(taking judicial notice).” Mot. at 13:1–2. But this is also not true. Demaray’s contentions were
`never publicly filed in the Texas cases. Indeed, during the injunction briefing, Applied requested
`that Demaray provide Applied with the contentions as Applied believed they would refute
`Demaray’s claim that its contentions were not directed at Applied—but Demaray refused. Dkt. No.
`1 at ¶¶ 43–44; Dkt. No. 1-19 (Ex. S). Only after Intel and Samsung objected to Demaray’s improper
`confidentiality designations in the Customer Suits did Applied finally obtain public versions of the
`contentions. Dkt. No. 1 at ¶ 43. Indeed, when Applied sought to obtain and submit the contentions
`in this Court, Demaray took the position that they were irrelevant to the injunction motion, arguing
`that “Article III standing is evaluated at the time of the filing of the complaint,” and therefore since
`the contentions were served after the original complaint, they were not relevant. Dkt. No. 1-19.
`As described above, Demaray knows that Intel and Samsung do not make any post-
`installation hardware modi