Case 5:20-cv-09341-EJD Document 413 Filed 01/02/24 Page 1 of 9
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`APPLIED MATERIALS, INC.,
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`Plaintiff,
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`v.
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`DEMARAY LLC,
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`Case No. 5:20-cv-09341-EJD
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`ORDER GRANTING IN PART AND
`DENYING IN PART MOTION FOR
`SUMMARY JUDGMENT OF NON-
`INFRINGEMENT
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`Defendant.
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`Re: ECF No. 204
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`Plaintiff, Applied Materials, Inc., (“Applied”), brought this suit against Defendant,
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`Demaray LLC (“Demaray”), seeking a declaration of non-infringement of U.S. Patent Nos.
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`7,381,657 and 7,544,276 (collectively, “Patents-in-Suit”). Compl., ECF No. 1. Demaray
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`countersued for a declaration of validity and infringement of the Patents-in-Suit, and Applied
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`brought a counterclaim for a declaration of invalidity for the same Patents-in-Suit. ECF Nos. 174,
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`180. Before the Court is Applied’s motion for summary judgment of non-infringement. Pl.’s
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`Mot. for Summ. J. (MSJ”), ECF No. 204. Demaray filed an opposition and sur-reply, and Applied
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`filed a reply. Def.’s Opp’n to MSJ (“Opp’n”), ECF No. 255; Pl.’s Reply in Supp. of MSJ
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`(“Reply”), ECF No. 274; Def.’s Sur-Reply to MSJ (“Sur-Reply”), ECF No. 289.
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`Having carefully reviewed the relevant documents, the Court finds this matter suitable for
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`decision without oral argument pursuant to Civil Local Rule 7-1(b). For the reasons stated below,
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`the Court GRANTS IN PART and DENIES IN PART Applied’s motion for summary judgment
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`of non-infringement.
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`Case No.: 5:20-cv-09341-EJD
`ORDER GRANTING IN PART AND DEN. IN PART PL.’S MOT. FOR SUMM. J.
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`Case 5:20-cv-09341-EJD Document 413 Filed 01/02/24 Page 2 of 9
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`I.
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`BACKGROUND
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`A.
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`Procedural Background
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`Applied filed its motion for summary judgment on March 23, 2023. MSJ. Demaray filed
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`its opposition on April 24, 2023. Opp’n. On May 9, 2023, the Court issued its Claim
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`Construction Order. Order on Claim Construction (“Claim Construction”), ECF No. 268.
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`Applied filed its reply on May 22, 2023. Reply. The Court allowed additional briefing by
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`Demaray following the Claim Construction Order, and Demaray filed its sur-reply on June 8,
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`2023. Sur-Reply; see also Order re Additional Briefing, ECF Nos. 284. The Court took this
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`matter under submission on June 9, 2023. ECF No. 291.
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`B.
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`Factual Background
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`The two Patents-in-Suit share the title “Biased Pulse DC Reactive Sputtering of Oxide
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`Films.” The ‘276 Patent claims are apparatus claims and the ‘657 Patent claims are method
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`claims. Claim Construction 1. The invention here concerns a way to deposit thin films of
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`materials, such as metals, onto a surface, such as a silicon wafer. MSJ, Ex. 5 (“‘657 Patent”) col.
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`2:45–62, ECF No. 204-7. Such deposition has uses for producing semiconductor devices and
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`optical devices. Id. at col. 1:15–23. It is desirable to precisely control properties of the deposited
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`films, such as the index of refraction, physical and chemical uniformity, low stress, and high
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`density. Id. at col. 1:53–2:2. To that end, the Patents-in-Suit present a “sputtering reactor
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`apparatus” that includes a “pulsed DC power supply coupled through a filter to a target and a
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`substrate electrode coupled to an RF [i.e., radio frequency] power supply,” with a “substrate
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`mounted on the substrate electrode [that] is therefore supplied with a bias from the RF power
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`supply.” Id. at col. 2:45–54; MSJ, Ex. 6 (“‘276 Patent”) col. 2:45–53, ECF No. 204-8.
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`In its Claim Construction Order, the Court adopted the following construction of “pulsed
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`DC power”: “direct current power that oscillates between positive and negative voltages,”
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`wherein “oscillates” should have its plain and ordinary meaning. Claim Construction 5. The
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`Court further adopted the parties’ undisputed proposed construction of “pulsed DC power supply”
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`as a “supply for providing pulsed DC power.” Id.
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`Case No.: 5:20-cv-09341-EJD
`ORDER GRANTING IN PART AND DEN. IN PART PL.’S MOT. FOR SUMM. J.
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`Case 5:20-cv-09341-EJD Document 413 Filed 01/02/24 Page 3 of 9
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`The accused Cirrus chambers all include both a DC power source and an RF power source
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`for providing power to the target. Joint Statement of Undisputed Facts (“Undisputed Facts”) ¶ 12,
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`ECF No. 204-2. Demaray contends that Applied’s Cirrus chambers infringe on both Patents-in-
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`Suit. Id. ¶ 10. Applied argues that its Cirrus chambers do not meet all the limitations of the
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`Patents-in-Suits’ claims, and that Demaray is precluded from raising its doctrine of equivalents
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`(“DOE”) theory under prosecutorial estoppel. Id. ¶ 11; MSJ.
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`II.
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`LEGAL STANDARD
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`Under Federal Rule of Civil Procedure 56, a court may grant summary judgment only
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`when the moving party shows that there is no genuine dispute of material fact. A genuine dispute
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`exists if there is sufficient evidence that a reasonable fact finder could decide in favor of the
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`nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). And that dispute is
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`material if it might affect the outcome of the suit. Id. In determining if a genuine dispute of
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`material fact exists, a court must “tak[e] the evidence and all reasonable inferences drawn
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`therefrom in the light most favorable to the non-moving party.” Torres v. City of Madera, 648
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`F.3d 1119, 1123 (9th Cir. 2011).
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`The moving party bears the burden of persuading the Court that there is no genuine dispute
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`of material fact, and it also bears the initial burden of producing evidence that demonstrates there
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`is no dispute. Cunningham v. Medtronic, Inc., 2018 WL 4053446, at *2 (N.D. Cal. Aug. 24,
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`2018) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986)). When the moving party bears
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`the ultimate burden of persuasion, its initial burden of production is to “establish ‘beyond
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`controversy every essential element of’” its claim or defense. S. Cal. Gas Co. v. City of Santa
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`Ana, 336 F.3d 885, 888 (9th Cir. 2003) (citation omitted). If the moving party satisfies this initial
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`burden, the nonmoving party can nonetheless defeat summary judgment by showing “the
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`evidence, taken as a whole, could lead a rational trier of fact to find in its favor.” Id.
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`Case No.: 5:20-cv-09341-EJD
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`Case 5:20-cv-09341-EJD Document 413 Filed 01/02/24 Page 4 of 9
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`III. DISCUSSION
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`To establish infringement, a patentee must show that the accused product “meets each
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`claim limitation either literally or under the doctrine of equivalents.” Seachange Int'l, Inc. v. C-
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`COR, Inc., 413 F.3d 1361, 1377 (Fed. Cir. 2005). The Court will address each in turn.
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`A.
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`Literal Infringement
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`Literal infringement requires a showing that each claim element is present. Becton
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`Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 796 (Fed. Cir. 1990). Courts engage in a two-
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`step literal infringement analysis: (1) interpreting the meaning and scope of patent claims through
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`claim construction; and (2) determining whether the claims, as construed, read on the accused
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`product. Markman v. Westview, Instruments Inc., 52 F.3d 967, 976, 979 (Fed. Cir. 1995) (en
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`banc). This Court issued its claim construction ruling on May 9, 2023. Therefore, the Court will
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`proceed to determine whether the product meets each claim as construed in its Claim Construction
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`Order.
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`Here, there are four relevant claim limitations, which, per the Court’s Claim Construction
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`Order, are effectively identical in terms of what they require: ’276 Patent claims 1 and 6, and ’657
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`Patent claims 1 and 2, all require “a pulsed DC power supply” that supplies “alternating positive
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`and negative voltages” to the target. Claim Construction 5–6. There are two parts to the
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`limitation, and both must be satisfied for a product to satisfy the limitation. First, there must be a
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`component, “a pulsed DC power supply,” which the Court construed to mean a supply providing
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`“direct current power that oscillates between positive and negative voltages.” Id. at 6. Second,
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`that component must have a certain function, which is to supply “alternating positive and negative
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`voltages” to the target. Id.
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`1.
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`Pulsed DC Power Supply
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`To reiterate, a pulsed DC power supply is a “supply for providing pulsed DC power.”
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`Claim Construction 6–7. Pulsed DC power is “direct current power that oscillates between
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`positive and negative voltages.” Id. at 6. Therefore, a pulsed DC power supply is necessarily a
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`supply for providing direct current power that oscillates between positive and negative voltages.
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`Case No.: 5:20-cv-09341-EJD
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`In other words, a pulsed DC power supply depends on whether the power supply itself emits
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`positive and negative voltages; the presence of alternating voltages to the target is a separate part
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`of the limitation and is independent of the requirement of a pulsed DC power supply.
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`There is no genuine dispute that the DC power supplies in the accused Cirrus chambers
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`never provide a positive voltage. See, e.g., MSJ, Ex. 11 (“Pankratz Dep.”) 184:6–13 (“The [DC
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`power supply] does not provide an oscillation to the . . . load.”), 184:15–185:1 (“The [DC power
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`supply] does not provide a method to oscillate or change the polarity of the voltage between
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`positive and negative.”), 185:4–7, 185:17–186:6 (“The [DC power supply] does not have the
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`ability to alternate between positive and negative outputs,” or “provide[] DC power that oscillates
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`between positive and negative voltages”), 192:17–193:9 (“There is nothing in the [DC power
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`supply] design that is intended to reverse the voltage.”), 209:5–15 (“There is nothing in the design
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`of the [DC power supply] that would intentionally cause a polarity of the voltage.”), 210:23-
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`211:14, ECF No. 204-13; see also Sur-Reply 1 (arguing only that “the pulsed DC power supplies
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`in the Cirrus chambers provide DC power that, together with other power in the system, causes the
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`voltage to the target to oscillate between positive and negative to prevent microarcs”) (emphasis
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`added). Thus, the DC power supplies do not provide “direct current power that oscillates between
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`positive and negative voltages,” and therefore are not “pulsed DC power supplies” as the Court
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`has construed them.
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`Demaray’s arguments to the contrary are unpersuasive. First, Demaray essentially argues
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`that the Court’s construction does not require that the pulsed DC power supplies output a positive
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`voltage; rather, a pulsed DC power supply “encompasses arrangements in which the DC power
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`supply works together with other elements to provide a positive voltage to the target encompasses
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`systems where the voltage to the target oscillates positive and negative.” Sur-Reply 1 (emphasis
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`added). Demaray misinterprets the Court’s construction. The presence of alternating voltages to
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`the target is a separate part of the limitation and is independent of the requirement of a pulsed DC
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`power supply providing direct current power that oscillates between positive and negative
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`voltages.
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`Case No.: 5:20-cv-09341-EJD
`ORDER GRANTING IN PART AND DEN. IN PART PL.’S MOT. FOR SUMM. J.
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`Second, Demaray argues that the voltage from the DC power supplies may briefly go
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`positive during arc suppression. Opp’n 12. However, even if assumed true, Demaray admits that
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`the brief spike of positive voltage is not generated or emitted by the DC power supplies—rather,
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`the spike is a result of residual power in the system, which includes RF power from the RF power
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`source, after having gone through unspecified interactions with the system. See e.g., Sur-Reply 4
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`(“T]he specific voltage to the target is always the result of the combination of the DC and RF
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`power, not one isolated source . . . Regarding hard arcs, the uncontested expert testimony is that
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`when a hard arc event is detected, the pulsed DC power supply quickly and purposefully ceases
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`providing power and shunts its back end to ground, which can cause, together with the other
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`elements of the system, a positive voltage to be supplied to the target.”). In no meaningful way
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`can it be said that the DC power supply was the one supplying that positive voltage.
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`Third, Demaray argues that a “pulse” is simply a rapid change from an operating voltage
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`and back. This is not consistent with the Court’s construction, which requires oscillation. See
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`Opp’n at 15–16; Claim Construction Order 6.
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`Therefore, the Court finds that the accused Cirrus chambers do not have “a pulsed DC
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`power supply” and therefore do not infringe on the Patents-in-Suit. The Court GRANTS
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`Applied’s motion on this ground.
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`2.
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`Alternating Positive and Negative Voltages
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`Because the Court finds that the family of products do not have a “pulsed DC power
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`supply,” Demaray cannot establish literal infringement and the Court will not address the second
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`requirement that component supplies “alternating positive and negative voltages” to the target.
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`B.
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`Doctrine of Equivalents
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`“If a patentee surrenders some scope during prosecution, that territory isn't available later
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`as a doctrine-of-equivalents battleground.” Traxcell Techs., LLC v. Nokia Sols. & Networks Oy,
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`15 F.4th 1136, 1145 (Fed. Cir. 2021) (citing Amgen Inc. v. Coherus BioSciences Inc., 931 F.3d
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`1154, 1159 (Fed. Cir. 2019)). Scope surrender can occur through a claim amendment or through
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`arguments whereby the prosecution history demonstrates “a clear and unmistakable surrender of
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`Case No.: 5:20-cv-09341-EJD
`ORDER GRANTING IN PART AND DEN. IN PART PL.’S MOT. FOR SUMM. J.
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`Case 5:20-cv-09341-EJD Document 413 Filed 01/02/24 Page 7 of 9
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`subject matter.” Amgen Inc., 931 F.3d at 1159. “An applicant's argument that a prior art reference
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`is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the
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`applicant distinguishes the reference on other grounds as well.” SpeedTrack, Inc. v. Amazon.com,
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`998 F.3d 1373, 1380 (Fed. Cir. 2021). “Whether prosecution-history estoppel applies is a question
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`of law.” Traxcell Techs, 15 F.4th at 1145.
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`Applied argues that, during patent prosecution, the applicants expressly distinguished its
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`patents from Smolanoff, a prior art, by arguing that a “pulsed DC power supply” provided power
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`that oscillated between positive and negative. Therefore, Applied argues that “any DOE theory on
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`the ‘pulsed DC power’ or ‘pulsed DC power supply’ requirements must be disregarded as a matter
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`of law because Demaray is estopped from contending that chambers whose power supplies do not
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`provide a positive voltage still infringe.” MSJ 21.
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`Specifically, in distinguishing its patents from Smolanoff during prosecution, the
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`applicants stated:
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`Applicants have explicitly defined pulsed DC power to refer to power
`that oscillates between positive and negative voltages . . . . However,
`a second definition of ‘pulsed DC power’ was also in use at the time,
`and the second definition is apparently the definition utilized in
`Smolanoff. In this second definition, which is also referred to as
`unipolar pulsed DC, the DC power supplied to the target is grounded
`on occasion, either periodically or when an impending discharge is
`detected. The DC power can be shunted to ground so that the voltage
`on the target was brought from a high negative voltage to near ground
`voltage until the arc condition was dissipated, while the negative
`voltage power supply was protected from the discharge. This process
`was also referred to as ‘pulsed DC power,’ but in Smolanoff, the
`target remains at a negative voltage throughout the deposition.
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`U.S. Patent Application No. 10/101,863 File History (“Prosecutorial History”), ECF No. 204-10 at
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`41.
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`Applied argues that Smolanoff, like Applied’s Cirrus chambers, is described as using a
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`negative DC power supply that shuts down and goes to ground (zero) during arcing and does not
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`provide positive voltage output. MSJ 22. Therefore, Demaray is precluded from arguing a DOE
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`theory whereby the “pulsed DC power” or “pulsed DC power supply” limitations are satisfied by a
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`power supply whose voltage never goes from negative to positive. Id. at 22–23.
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`Case 5:20-cv-09341-EJD Document 413 Filed 01/02/24 Page 8 of 9
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`Demaray argues that this disclaimer was limited to chamber configurations in which the
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`target remains negative, not configurations in which the DC power supply shuts down and goes to
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`zero during arcing and does not provide positive voltage output. Opp’n 21. Even if the Court
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`finds that the DC power supplies never goes positive, Demaray argues that there are “genuine
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`disputes of fact regarding whether the voltage to the target in the Cirrus family of reactors
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`alternates between positive and negative voltages” with the combined DC/RF power supplies. Id.
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`at 2.
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`When drawing all inferences in the light most favorable to Demaray, the Court finds that
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`the applicants’ highlighted arguments could be reasonably interpreted as distinguishing the prior
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`art based on the target voltage, not the output of the DC power supply. See Torres, 648 F.3d at
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`1123 (9th Cir. 2011). While the applicants do describe Smolanoff’s DC power supply as
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`providing only negative voltage, a closer examination at the last sentence of the paragraph shows
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`that the distinguishing feature may be, unlike in the patented product, Smolanoff’s target
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`remaining at a negative voltage: “This process was also referred to as ‘pulsed DC power,’ but in
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`Smolanoff, the target remains at a negative voltage throughout the deposition.” Prosecutorial
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`History, ECF No. 204-10 at 41 (emphasis added). As the Court established above, the DC power
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`supplies here never go positive; however, there are genuine disputes regarding whether voltage in
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`the chambers ultimately goes positive with the combined DC/RF power supplies. Regardless of
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`whether, as Applied contends, the claim elements at issue here do not focus on the target, the
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`language quoted above could be reasonably interpreted to focus on the voltages to the target, such
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`that Demaray is not estopped from alleging DOE theories based on the output voltages.
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`Therefore, because the arguments at prosecution could be interpreted to distinguish the
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`prior art based on voltages to the target rather than output voltages, the Court finds that Applied
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`has failed to show how the prosecution history demonstrates “a clear and unmistakable surrender
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`of subject matter.” Amgen Inc., 931 F.3d at 1159. The Court DENIES Applied’s motion for
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`summary judgment on this ground.
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`Case No.: 5:20-cv-09341-EJD
`ORDER GRANTING IN PART AND DEN. IN PART PL.’S MOT. FOR SUMM. J.
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`Case 5:20-cv-09341-EJD Document 413 Filed 01/02/24 Page 9 of 9
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`IV. CONCLUSION
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`For the foregoing reasons, the Court GRANTS IN PART and DENIES IN PART
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`Applied’s motion for summary judgment. The Court finds that there are no genuine disputes that
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`Applied’s products do not literally infringe on the Patents-in-Suit, but Applied has failed to show
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`that prosecutorial estoppel precludes Demaray from asserting infringement under DOE.
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`IT IS SO ORDERED.
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`Dated: January 2, 2024
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`EDWARD J. DAVILA
`United States District Judge
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`Case No.: 5:20-cv-09341-EJD
`ORDER GRANTING IN PART AND DEN. IN PART PL.’S MOT. FOR SUMM. J.
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`Northern District of California
`
`United States District Court
`
`