1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 1 of 20
`
`
`
`IRELL & MANELLA LLP
`Morgan Chu (70446)
`MChu@irell.com
`Benjamin W. Hattenbach (186455)
`BHattenbach@irell.com
`C. Maclain Wells (221609)
`MWells@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone: (310) 277-1010
`Facsimile:
`(310) 203-7199
`
`Attorneys for Defendant
`DEMARAY LLC
`
`REDACTED VERSION OF
`DOCUMENT SOUGHT TO BE
`SEALED
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`APPLIED MATERIALS, INC.,
`
`
`Plaintiff,
`
`
`
`
`DEMARAY LLC,
`
`
`vs.
`
`Defendant.
`
`
`
`
`
`10918029
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Case No. 5:20-cv-09341-EJD
`
`DEMARAY LLC’S REPLY
`MEMORANDUM IN SUPPORT OF
`MOTION TO DISMISS
`
`
`Hearing Date: April 8, 2021
`Hearing Time: 9:00 a.m.
`
`
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 2 of 20
`
`1
`
`2
`
`3
`
`I.
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`PRELIMINARY STATEMENT ......................................................................................... 1
`
`II.
`
`APPLIED’S DECLARATORY JUDGMENT COMPLAINT LACKS
`SUBJECT MATTER JURISDICTION .............................................................................. 2
`
`A.
`
`B.
`
`Applied Still Focuses On Its Own Subjective Beliefs, Not
`Demaray’s Objective Actions ................................................................................. 2
`
`Applied Presents No Basis For Reconsidering The Court’s Prior
`Determinations ........................................................................................................ 5
`
`1.
`
`Applied Rehashes Its Arguments Regarding The Complaint
`In Applied I .................................................................................................. 5
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`“Demaray’s infringement contentions in the
`Customer Suits” ............................................................................... 5
`
`“Demaray’s refusal to inform Applied or the Court in
`the DJ Action whether it will assert compulsory
`counterclaims” and “Demaray’s refusal to grant
`Applied a covenant not to sue” ....................................................... 6
`
`“Demaray’s requests to obtain discovery from
`Applied to determine if Applied allegedly infringes” ..................... 6
`
`“Demaray’s serving of subpoenas to Applied for
`discovery [in the Texas cases]” ....................................................... 6
`
`“Demaray’s representations in the Customer Suits
`that the discovery from Applied is necessary to
`determine which reactors allegedly infringe” ................................. 7
`
`2.
`
`There Is Still No Implicit Allegation Of Infringement ............................... 7
`
`The Court Should Decline To Exercise Jurisdiction ......................................................... 11
`
`THE COURT SHOULD DISMISS APPLIED’S DEFENSES BASED ON
`ITS UNLAWFUL ASSIGNMENT PROVISIONS .......................................................... 12
`
`A.
`
`B.
`
`C.
`
`Applied’s Attempts To Rewrite The SRA Are Facially Deficient ........................ 13
`
`Applied Was A Party To, And Is Bound By, The Applied Decision .................... 13
`
`Applied’s Vague “Misappropriation” Claims Are Improper ................................ 14
`
`CONCLUSION ................................................................................................................. 15
`
`- i -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`III.
`
`21
`
`IV.
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`V.
`
`
`
`10918029
`
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 3 of 20
`
`
`
`Cases1
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Applied Materials, Inc. v. Advanced Micro-Fabrication Equip. (Shanghai) Co.,
`630 F. Supp. 2d 1084 (N.D. Cal. May 20, 2009) ............................................................... passim
`
`Armorlite Lens Co. v. Campbell,
`340 F. Supp. 273 (S.D. Cal. 1972) .............................................................................................15
`
`Arris Grp., Inc. v. British Telecomms. PLC,
`639 F.3d 1368 (Fed. Cir. 2011) ..................................................................................................10
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................15
`
`Hewlett-Packard Co. v. Acceleron LLC,
`587 F.3d 1358 (Fed. Cir. 2009) ....................................................................................................1
`
`Microsoft Corp. v. DataTern, Inc.,
`755 F.3d 899 (Fed. Cir. 2014) ..................................................................................................1, 8
`
`Microsoft Corp. v. GeoTag, Inc.,
`2014 WL 4312167 (D. Del. Aug. 29, 2014) ..............................................................................10
`
`In re Mobile Telecomms. Techs.,
`LLC, 247 F. Supp. 3d 456 (D. Del. 2017) ....................................................................................9
`
`Proofpoint, Inc. v. InNova Patent Licensing,
`2011 WL 4915847 (N.D. Cal. Oct. 17, 2011) ............................................................................11
`
`Space Data Corp. v. X, 2017 WL 5013363 (N.D. Cal. Feb. 16, 2017) ............................................15
`
`TSMC Tech., Inc. v. Zond, LLC,
`2015 WL 661364 (D. Del. Feb. 13, 2015) ...................................................................................8
`
`Whitewater W. Indus., Ltd. v. Alleshouse,
`981 F.3d 1045 (Fed. Cir. 2020) ................................................................................12, 13, 14, 15
`
`Williamson v. Reinalt-Thomas Corp.,
`2012 WL 1438812 (N.D. Cal. Apr. 25, 2012) ...........................................................................13
`
`
`1 Unless otherwise noted, internal citations, quotations and subsequent history are omitted,
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`and emphasis is added unless otherwise indicated.
`
`10918029
`
`
`- ii -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 4 of 20
`
`Statutes
`
`Business and Professions Code ¶ 16600 ..............................................................................12, 13, 14
`
`Page(s)
`
`Rules
`
`Fed. R. Civ. P. 8 ...............................................................................................................................15
`
`Fed. R. Civ. P. 12(b)(1) ......................................................................................................................1
`
`Fed. R. Civ. P. 12(b)(6) ..........................................................................................................2, 12, 15
`
`Other Authorities
`
`Restatement (Second) of Judgments § 27 ........................................................................................14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`10918029
`
`
`- iii -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 5 of 20
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`
`I.
`
`PRELIMINARY STATEMENT
`
`Applied’s new, duplicative declaratory judgment complaint should be entirely dismissed
`
`under Federal Rule of Civil Procedure 12(b)(1) for lack of a case and controversy between
`
`Demaray and Applied supporting subject matter jurisdiction. In its opposition, Applied
`
`concedes—as it must—that a “[patent owners] actions must give reason to believe that it is
`
`asserting its rights under the patents and [t]he objective actions of the patentee are the subject of
`
`that inquiry.” Opp. at 12 (citing Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1362–63
`
`(Fed. Cir. 2009)). The Court has already determined that the Texas complaints show that
`
`Demaray’s focus is on the actual parties, e.g., Intel and Samsung, using the infringing reactor
`
`configurations to produce semiconductor products, not equipment suppliers like Applied. See
`
`Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 907 (Fed. Cir. 2014) (no jurisdiction when
`
`“DataTern’s litigation strategy appears to involve suing software users, not software suppliers”). It
`
`is undisputed that the “Demaray patents … do not cover all PVD reactor configurations.” Mot. at
`
`8. And, Applied admits that in the Texas complaints and Demaray’s October 9, 2020, preliminary
`
`infringement contentions, Demaray did not rely on Applied information for several limitations,
`
`e.g., the narrow band-rejection filter. See, e.g., Opp. at 3 (Applied documents not referenced). The
`
`“new” objective actions of Demaray that Applied points to (see id. at 1 (citing Complaint ¶ 9
`
`(“summar[y]” table listing “new” allegations))) actually establish that Demaray is not in a position
`
`to determine one way or the other whether Applied infringes the Demaray patents at issue.
`
`Unable to point to objective affirmative enforcement acts by Demaray against Applied,
`
`Applied again relies on its self-servingly alleged subjective “belief” that “the Customer Suits
`
`impliedly assert infringement against Applied.” Id. at 4. The Court has already rejected that
`
`argument (Ex. 1 at 12) and it is undisputed that under the applicable legal standard “it is the
`
`objective words and actions of the patentee that are controlling.” See Hewlett-Packard, 587 F.3d
`
`at 1363. Applied next points to its own self-serving, cherry-picked “factual” allegations for the
`
`proposition that Intel and Samsung have nothing to do with reactor configuration. But, these are
`
`Applied’s allegations, not Demaray’s objective actions. Applied cannot manufacture subject
`
`10918029
`
`
`- 1 -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 6 of 20
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`matter jurisdiction by putting words in Demaray’s mouth. And, discovery to date in the Texas
`
`cases actually indicates that the reactors in question (both from Applied and other vendors) are
`
`highly customizable, including by customers. At the same time, Applied entirely ignores
`
`Demaray’s actual, explicit, objective allegations—to leave no doubt, Demaray stated expressly in
`
`the very contentions Applied relies upon that “[f]or avoidance of doubt, these infringement
`
`accusations are specific to [Intel/Samsung]; they are not, and should not be misconstrued as,
`
`accusations against anyone else, including without limitation Applied Materials, Inc. or
`
`[Intel’s/Samsungs’] other vendors.” Dkt. 37-12 (Ex. C) at 14; Dkt. 37-14 (Ex. D) at 15.
`
`Even if subject matter jurisdiction over this action did exist (it does not), the Court should
`
`exercise its discretion to decline jurisdiction. The Texas cases are well underway (e.g., claim
`
`construction briefing is in process and trial is scheduled to occur 10 months) and best suited to
`
`resolving the issues. On the other hand, other substantive proceedings in this case will not resume
`
`until after at least the April 8, 2021 hearing date. Applied fails to identify any reason to address the
`
`14
`
`subset of overlapping issues anew in this Court.
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`Applied’s licensing and ownership declaratory judgment claims should additionally be
`
`dismissed because they fail to state a claim for which relief can be granted under Rule 12(b)(6).
`
`Those claims are predicated on provisions already squarely adjudicated against Applied in this
`
`District as being “unlawful non-compete provisions.” See Applied Materials, Inc. v. Advanced
`
`Micro-Fabrication Equip. (Shanghai) Co., 630 F. Supp. 2d 1084, 1090 (N.D. Cal. May 20, 2009).
`
`Applied should not be permitted to continue brandishing these facially illegal clauses for any
`
`reason, and certainly not in a manner that imposes significant costs on the very employees this
`
`District’s binding ruling was meant to protect. Applied’s positions are incompatible with both
`
`preclusion law and the applicable precedent on California public policy.
`
`24
`
`II.
`
`25
`
`26
`
`27
`
`28
`
`APPLIED’S DECLARATORY JUDGMENT COMPLAINT LACKS SUBJECT
`MATTER JURISDICTION
`
`A.
`
`Applied Still Improperly Focuses On Its Own Subjective Beliefs
`
`Demaray’s objective actions make clear that Applied faced no reasonable risk of an
`
`infringement action from Demaray at the time of its new, duplicative DJ complaint. It is
`
`10918029
`
`
`- 2 -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 7 of 20
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`undisputed that the Demaray patents cover a “specific configuration or method.” Ex. 1 at 8. As the
`
`Court already determined, Demaray did not allege in the Texas actions “that Applied itself
`
`configures the reactors or promotes the patented configuration and method.” Id. The Texas
`
`complaints instead demonstrate Demaray’s approach of suing the actual users of the infringing
`
`reactor configurations, not equipment suppliers like Applied.
`
`Demaray’s October 9, 2020 preliminary infringement contentions in Texas, also before the
`
`Court at the time of the prior order (see Applied I, Dkt. 42-7 & -8), confirm Demaray’s focus is on
`
`Intel’s and Samsung’s infringement by necessity. These contentions have been redacted to remove
`
`references in to confidential Demaray materials and reverse engineering reports of Intel and
`
`10
`
`Samsung products.2 See Mot. at 13; Dkt. 1-3 & -4 (Exs. C-D). Applied does not contest that such
`
`11
`
`12
`
`13
`
`14
`
`15
`
`reverse engineering is not possible for Applied as it does not sell semiconductor products.
`
`The simple truth is that at the time of the Texas complaints, and still today, Demaray is not
`
`in a position to determine whether Applied’s reactors standing alone infringe the Demaray patents
`
`at issue and needs discovery from Applied to make such a determination, including, for example
`
`“schematics of the electrical connections that would be necessary to fully describe all of the
`
`16
`
`infringement contentions in this case.”3 See Dkt. 38-10 (Ex. H) at 72:14–17. Demaray has
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`consistently stated this publicly both to the Texas court (id.) and this Court (see Applied I, Dkt. 40
`
`(Jnt. CMC Stmt.) at 6)—a fact that Applied concedes: “prior to the DJ Complaint, Demaray
`
`already told the Court that ‘discovery [from Applied] is necessary to determine which reactors are
`
`
`2 Applied offers a declaration from Samsung’s local counsel in Texas, Mr. Nash, claiming
`
`that he is “unaware of any ‘references to reverse engineering reports of [] Samsung products’ that
`
`have been redacted from the public version of those contentions.” Dkt. 38-01. Samsung/Intel
`
`moved to compel the production of these confidential reverse engineering reports in Texas and the
`
`Texas judge denied their motion: “I don't see a reason for the … plaintiff to have to produce the
`
`reverse engineering reports at this time.” Dkt. 38-10 (Ex. H) at 65:2–9. Mr. Nash simply does not
`
`know what is in the reverse engineering reports and was referenced in the contentions.
`
`3 Applied successfully resisted producing such materials as of yet in the Texas cases
`
`arguing that they relate to merits discovery, not venue. See id., at 42:16–19, 63:19–22.
`
`10918029
`
`
`- 3 -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 8 of 20
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`in dispute.’” Opp. at 8 (emphasis in original). Demaray’s objective actions thus confirm that
`
`Demaray has never accused Applied reactors standing alone of infringement.
`
`Applied’s attempts to create a dispute with self-serving statements regarding its beliefs and
`
`actions fare no better—these are Applied’s assertions, not Demaray’s objective actions. Applied
`
`attempts in its opposition to recast its employee declaration from Mr. Forster as giving rise to an
`
`“objective” threat of suit. Opp. at 7 (“… considering these commercial realities, an objective
`
`supplier like Applied, interpreted Demaray’s allegations as making an implied assertion of
`
`infringement.” But, Mr. Forster presented his subjective impressions: “[b]ased on my review of
`
`the Customer Complaints, I understood that Demaray was making an implied assertion of
`
`infringement of the Asserted Patents against Applied.” Dkt. 1-17, ¶ 5. Similarly, Applied presents
`
`cherry-picked “factual” allegations that it uses the same reactors and processes as Intel and
`
`Samsung. See, e.g., Opp. at 14 (citing Dkt. 1, ¶¶ 53–54). But, Applied does not claim to make
`
`semiconductor products. Demaray certainly has not made any such allegation, especially given (1)
`
`the unavailability of Applied semiconductor products for reverse engineering, (2) Applied’s
`
`refusal to provide basic product discovery on the reactors it supplies (e.g., electrical schematics),
`
`16
`
`and (3) discovery provided to date that
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`; 37-26 (Ex. L) at 86:7-13
`
`23
`
`Applied’s reactor manuals state
`
` See, e.g., Dkt. 37-22 (Ex. J) at 13
`
`
`
`
`
`
`
`
`
`; see also Dkt. 37-8 (Ex. A) at 13
`
`
`
`.4 As one example,
`
`
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`4 Applied continues to argue that Intel and Samsung use its reactors “in the only way
`
`possible” and that this is thus a classic customer-reseller case. See Opp. at 1. But, the reactors at
`
`issue are highly configurable both in their hardware, the associated process kits, and in the
`
`processes and process variables used. This Court already determined “[t]he claims do not speak to
`
`the reactors themselves or many other non-infringing uses ….” Ex. 1 at 12.
`
`10918029
`
`
`- 4 -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 9 of 20
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`(Ex. D) at 21, 93. The Court should reject Applied’s efforts to manufacture a dispute by putting
`
` Dkt. 37-12 (Ex. C) at 16, 20–21, 84; Dkt. 37-14
`
`words, and inaccurate words at that, in Demaray’s mouth.
`
`B.
`
`Applied Presents No Basis For Reconsideration
`
`Applied’s “new” allegations in its new, duplicative DJ complaint do not warrant
`
`reconsideration of the Court’s prior determination that Applied cannot show a “substantial
`
`controversy … of sufficient immediacy and reality … between itself and Demaray.” Ex. 1 at 12. In
`
`its opposition Applied points to the same table “summarizing Demaray’s Representations …
`
`Affirmative Acts” (Opp. at 1 (citing Dkt. 1 at ¶ 9)) that Demaray addressed in its Motion. Each of
`
`Applied’s new allegations is addressed below:
`
`1.
`
`Applied Rehashes Its Arguments Regarding The Complaint In Applied I
`
`Applied points to portions of its new, duplicative DJ complaint and rehashes many of the
`
`same alleged jurisdictional facts already considered, and rejected by, the Court. For example,
`
`Applied argues that “the Court did not … address the commercial realities of Applied’s
`
`relationship with its customers.” Opp. at 9; see also id. at 2 (citing to reply declarations in
`
`Complaint ¶ 11). But, Applied raised, and the Court specifically considered and rejected,
`
`Applied’s arguments related to these alleged “commercial realities” in Applied I. See Applied I,
`
`Dkt. 28 at 3-5, Dkt. 28-6 through 28-12 (Applied, Intel and Samsung declarations regarding
`
`customer relationships and post-installation configuration)); Ex. 1 at 1 n.1 (Court considered reply
`
`evidence). Applied presents no basis to reconsider the Court’s prior determinations.
`
`(a)
`
`“Demaray’s infringement contentions in the Customer Suits”
`
`Applied argues that the Court did not have access to or consider Demaray’s October 9,
`
`2020, preliminary infringement contentions at the time of its December 23, 2020 order. Opp. at
`
`10. Applied itself submitted Demaray’s preliminary contentions to the Court on December 7, 2020
`
`(see Applied I, Dkt. 42-7 & -8).5 Further, it is uncontested that these contentions, like the Texas
`
`
`5 Applied makes the same argument regarding the Forester Declaration that was submitted
`
`as part of the same filing. See Dkt. 42-1. In addition, the Forester Declaration is duplicative or
`
`other materials before the Court. See Dkt. 28 at 3-5, Dkt. 28-6 through 28-12 (other declarations).
`
`10918029
`
`
`- 5 -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 10 of 20
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`complaints, state that Intel and Samsung “configure[] and use[], among other reactors … the
`
`Endura product line from Applied ….” Dkt. 1-3 (Ex. C) at 26; Dkt. 1-4 (Ex. D) at 27. And for the
`
`method claims, the contentions accuse Intel and Samsung, not Applied, of practicing the claimed
`
`methods. Ex. C at 44 (“Intel practices a method of depositing a film ….”); Ex. D at 44 (same for
`
`Samsung). Applied also admits that the contentions did not cite to Applied evidence for certain
`
`limitations, including “the narrow band-rejection filter.” Opp. at 2. While Applied may disagree
`
`with Demaray’s allegations that “Intel and Samsung configure … reactors” (see Opp. at 9
`
`(“Demaray’s … allegation that Intel and Samsung configure Applied’s reactors is simply
`
`wrong.”)), that does not change Demaray’s objective statements.
`
`(b)
`
`“Demaray’s refusal to inform Applied or the Court in the DJ Action
`whether it will assert compulsory counterclaims” and “Demaray’s
`refusal to grant Applied a covenant not to sue”
`
`Applied abandons these allegations as alleged support for subject matter jurisdiction.
`
`(c)
`
`“Demaray’s requests to obtain discovery from Applied to determine
`if Applied allegedly infringes”
`
`Applied acknowledges that “prior to the DJ Complaint, Demaray already told the Court
`
`that ‘discovery [from Applied] is necessary to determine which reactors are in dispute.’” Opp. at
`
`8, 12 (discovery necessary to determine whether it will allege infringement against Applied), 18
`
`(same). This is an objective assertion from Demaray that it is not in a position currently to assert
`
`that Applied reactors standing alone infringe. Applied has no legitimate reason to fear
`
`“accusations” that Demaray has not made and has reaffirmed it lacks the ability to make.
`
`(d)
`
`“Demaray’s serving of subpoenas to Applied for discovery [in the
`Texas cases]”
`
`Demaray has sought discovery to determine the location of Intel’s and Samsung’s reactors
`
`having the accused configurations for purposes of pending transfer motions in Texas. Applied
`
`acknowledges that Demaray’s focus in WDTX in on reactors “used by Intel/Samsung in an
`
`infringing manner.” Opp. at 12 (describing discovery correspondence with the Texas court).6 As
`
`stated above, Applied resisted providing configuration information regarding reactors (e.g.,
`
`
`6 Applied argues that Demaray somehow violated this Court’s stay on discovery. Mot. at
`
`12. Demaray was entitled to seek discovery in the Texas cases on transfer issues, which it did.
`
`10918029
`
`
`- 6 -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 11 of 20
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`electrical schematics) on the basis that such materials relate to merits discovery (i.e., whether the
`
`reactors infringe) as opposed to venue discovery (i.e., the reactor locations). Dkt. 38-10 (Ex. H) at
`
`42:16–19, 63:19–22, 72:14–17. Applied’s assertion that Demaray has the discovery necessary to
`
`“decide whether it will assert infringement counterclaims” by way of the subpoenas (Opp. at 18) is
`
`contradicted by its own attorneys’ arguments to the Texas court preventing “merits” discovery.
`
`Information about the location of Intel and Samsung reactors (the request that was made) for
`
`opposing venue motions in which Intel and Samsung raised the subject is quite different from an
`
`accusation that Applied reactors standing alone infringe (an accusation that has not been made).
`
`(e)
`
`“Demaray’s representations in the Customer Suits that the discovery
`from Applied is necessary to determine which reactors allegedly
`infringe”
`
`Intel and Samsung have refused to answer particular questions about the configurations of
`
`their reactors and told Demaray to obtain that information from Applied, which Demaray then
`
`endeavored to do through its subpoenas. See Dkt. 1-6 & -7 (Exs. F-G). These subpoenas seek
`
`documents; they do not make objective allegations. As above, Applied self-servingly misconstrues
`
`the entirely proper reasons for which the information (that Applied refused to provide) was
`
`sought—use in the Texas cases to respond to allegations from Intel/Samsung regarding transfer.
`
`2.
`
`There Is Still No Implicit Allegation Of Infringement
`
`Viewed objectively, Applied’s continued assertion that the Texas complaints include an
`
`“implied assertion of infringement against Applied” (Opp. at 1) should be rejected. The Court has
`
`already determined that nowhere in the Texas complaints did Demaray allege that Applied’s
`
`reactors alone necessarily include a narrow band-rejection filter (itself a specific configuration of
`
`filter over other filters). Ex. 1 at 11 (there is “no way to tell definitively whether the references to
`
`Applied’s Endura reactors are intended as required parts of the accused configurations and
`
`methods ….”). As discussed above, the additional allegations to which Applied now points do
`
`nothing to change Demaray’s allegations in the Texas complaints. Nor do the additional
`
`allegations show an objective risk that Demaray would sue Applied for infringement existed at the
`
`time of filing (Christmas Eve, 2020). See Section II.B.1, supra.
`
`Unable to carry its burden of demonstrating a controversy between Applied and Demaray
`
`10918029
`
`
`- 7 -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 12 of 20
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`based upon the actual allegations in its new DJ complaint, Applied points to extraneous materials
`
`post-dating its new DJ complaint. Opp. at 1, 4, 11–14. These extraneous materials cannot cure
`
`Applied’s insufficient pleadings. TSMC Tech., Inc. v. Zond, LLC, 2015 WL 661364, at *3 (D. Del.
`
`Feb. 13, 2015). “A declaratory judgment plaintiff must plead facts sufficient to establish
`
`jurisdiction ….” DataTern, 755 F.3d at 906. “[P]ost-complaint facts cannot create jurisdiction
`
`where none existed at the time of filing.” Id. The timing of Applied’s new materials thus renders
`
`them legally irrelevant for purposes of the present motion.
`
`Applied hinges most of its opposition on Demaray’s supplement to its preliminary
`
`infringement contentions served over a month after the complaint in this case.7 Opp. at 4, 11–14.
`
`On February 5, 2021, Demaray voluntarily supplemented its preliminary infringement contentions
`
`to reflect discovery received in the Texas cases as of January 26, 2021. See Dkt. 37-10 (Ex. H)
`
`72:25–73:2 (“So we’re happy to amend, Your Honor, to reflect the information they’ve provided
`
`thus far, but we can't do more than that.”); Dkt. 37-12 & -14 (Exs. C-D). These month-later
`
`contentions cannot substantiate an objective controversy at the time of Applied’s new complaint.
`
`Even if considered, Demaray’s supplemental preliminary infringement contentions, like
`
`the Texas complaints, state that Intel/Samsung “configure[] and use[], among other reactors …
`
`17
`
`in the Endura product line from Applied….” Dkt. 37-12 at 53; Dkt. 37-14 at 64. For the method
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`claims, the contentions accused Intel/Samsung, not Applied, of practicing the method of
`
`depositing the thin-film. E.g., Dkt. 37-12 at 86 (“Intel practices a method of depositing a film
`
`….”); Dkt. 37-14 at 95 (same for Samsung). Applied fails to mention that these contentions
`
`explicitly affirm that Applied is not being accused of infringement: “[f]or avoidance of doubt,
`
`these infringement accusations are specific to [Intel/Samsung]; they are not, and should not be
`
`misconstrued as, accusations against anyone else, including without limitation Applied
`
`Materials, Inc. or [Intel’s/Samsungs’] other vendors.” Dkt. 37-12 at 14; Dkt. 37-14 at 15.
`
`Applied also provides an incomplete picture of these contentions by redacting information
`
`on reactor products from other vendors in its submitted exhibits: “[p]ortions containing
`
`
`7 Applied also improperly points to later-served Intel and Samsung discovery responses
`
`and statements from discovery hearings post-dating the complaint. Opp. at 8.
`
`10918029
`
`
`- 8 -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/21 Page 13 of 20
`
`confidential information unrelated to Applied’s products have been redacted.”8 Dkt. 37-6 (Ou
`
`Decl.), Exs. A, C-D, I-K. But, even the limited portions included reference other suppliers’
`
`involvement in configuration of claim elements, e.g., the narrow band-rejection filter:
`
`
`
`
`
`
`
` Dkt. 37-12 at 42; Dkt. 37-14 at 51. In addition, like the October 9, 2020 preliminary
`
`infringement contentions, the supplemental contentions are redacted to remove references to
`
`confidential reverse engineering reports of Intel and Samsung products—reverse engineering that
`
`is not possible because (as far as Demaray knows) Applied does not sell semiconductor products.
`
`Applied argues that Demaray’s “supplementations make no reference to [1] the customers
`
`‘configuring’ the equipment … [or] [2] confidential reverse engineering reports.” Opp. at 4. As
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`discussed above, the cited Applied manuals state
`
`
`
`13
`
`14
`
`at 17, 21, 93)
`
`15
`
`13
`
` (Dkt. 37-12 at 16, 20–21; Dkt. 37-12
`
` (e.g., Dkt. 37-22 (Ex. J) at
`
`
`
`. Regarding
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`materials related to reverse engineering, as discussed above, such references were redacted.
`
`Applied’s case law does not lead to a different conclusion. In In re Mobile
`
`Telecommunications Techs., LLC, 247 F. Supp. 3d 456, 462 (D. Del. 2017), the patentee’s
`
`“infringement theories [we]re not customer-specific.” Rather, the theories were based on
`
`functionality “built directly into the equipment sold by [DJ Plaintiffs] to [their] customers.” Id.
`
`Based on that infringement theory, the “potential suits against [suppliers] are no different than
`
`they are for a suit against these suppliers’ customers.” Id. Quite the opposite is true here. The
`
`reactors at issue are highly configurable both in their hardware, the associated process kits, and in
`
`the processes and process variables used. This Court already determined “[t]he claims do not
`
`speak to the reactors themselves or many other non-infringing uses ….” Ex. 1 at 12; see also id. at
`
`
`8 Because the redacted information relates to Samsung/Intel and the Texas cases and is
`
`subject to a protective order, Demaray has not attached the information here.
`
`10918029
`
`
`- 9 -
`
`REPLY ISO DEMARAY’S MOTION TO DISMISS
`(Case No. 5:20-cv-09341-EJD)
`
`

`

`Case 5:20-cv-09341-EJD Document 41 Filed 03/01/2