Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 1 of 18
`
` REDACTED VERSION OF DOCUMENT
` SOUGHT TO BE SEALED
`
`IRELL & MANELLA LLP
`Morgan Chu (70446) (mchu@irell.com)
`Samuel K. Lu (171969) (slu@irell.com)
`Talin Gordnia (274213) (tgordnia@irell.com)
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone:
`(310) 277-1010
`Facsimile:
`(310) 203-7199
`
`Attorneys for Plaintiff
`LAM RESEARCH CORP.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`Case No. 5:15-cv-01277-BLF
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT
`FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
`AND UNENFORCEABILITY
`
`DEMAND FOR JURY TRIAL
`
`))))))))))
`
`LAM RESEARCH CORP.,
`
`Plaintiff,
`
`
`
`vs.
`
`DANIEL L. FLAMM,
`
`Defendant.
`
`Plaintiff Lam Research Corporation ("Lam"), for its Second Amended Complaint against
`
`Daniel L. Flamm ("Flamm"), to the best of its knowledge, information, and belief, and through its
`
`attorneys, alleges as follows:
`
`NATURE OF ACTION
`
`1.
`
`This is an action for declaratory judgment of non-infringement and
`
`unenforceability of U.S. Patent Nos. 5,711,849 ("the '849 patent"); 6,017,221 ("the '221 patent");
`
`and RE 40,264 ("the '264 patent").
`
`PARTIES
`
`Lam Research Corporation
`
`2.
`
`Plaintiff Lam is a global supplier of innovative wafer fabrication equipment and
`
`services to the semiconductor industry. Lam designs, manufactures, markets, refurbishes, and
`
`services semiconductor processing tools (also referred to as "systems") that are used in the
`
`6315354
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`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
`
`LAM Ex 1026-p. 1
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 2 of 18
`
`fabrication of integrated circuits. A semiconductor processing tool includes many subsystems,
`
`including "reactors" or "chambers" in which semiconductor wafers are processed.
`
`3.
`
`Lam's products are designed to help its customers build smaller, faster, and more
`
`power-efficient devices that are used in a variety of electronic products, including cell phones,
`
`tablets, computers, storage devices, and networking equipment. Lam continues to develop the
`
`new capabilities required by the industry by drawing on multiple areas of expertise, including
`
`engineering, research and development, manufacturing, and customer support.
`
`4.
`
`Lam's products are used in several steps of the chip-making process and include
`
`products used for etching. Etching is a semiconductor fabrication process whereby material is
`
`selectively removed from the surface of the semiconductor device to create device features, such
`
`as the individual components that form an integrated circuit.
`
`5.
`
`Certain Lam products at issue in this action, including Lam etch products such as
`
`the 2300 Kiyo product family, are designed, manufactured, tested, marketed, and/or sold in this
`
`judicial district. Lam maintains documents in this judicial district relating to the Lam products at
`
`issue in this action. Lam has nearly 2,400 employees who maintain regular and established places
`
`of business in this judicial district, many of whom are involved in the research and development,
`
`design, manufacture, testing, marketing, and/or sale of the Lam products at issue in this action.
`
`6.
`
`Lam is a corporation organized and existing under the laws of the State of
`
`Delaware and having its principal place of business at 4650 Cushing Parkway, Fremont, California
`
`94538.
`
`7.
`
`In addition to Lam's headquarter campus in this judicial district at 4650 Cushing
`
`Parkway, Fremont, California 94538, Lam has multi-building campuses or facilities in this judicial
`
`district at the following locations:
`
`(cid:120)
`
`(cid:120)
`
`1 Portola Avenue, Livermore, California 94550
`
`4000 North First Street, San Jose, California 95134.
`Daniel L. Flamm
`
`8.
`
`Defendant Flamm is the purported inventor or co-inventor and, on information and
`
`belief, the assignee of the '849, '221, and '264 patents.
`
`6315354
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`- 2 -
`
`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
`
`LAM Ex 1026-p. 2
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 3 of 18
`
`9.
`
`On information and belief, Flamm graduated from the Golden Gate University
`
`School of Law in this judicial district and was admitted to the State Bar of California in December
`
`of 2005. On information and belief, Flamm is currently an active member of the State Bar of
`
`California and has practiced law in this judicial district since at least 2006.
`
`10.
`
`On information and belief, Flamm has been a registered patent attorney since 2006
`
`and a registered patent agent since 2003.
`
`11.
`
`On information and belief, Flamm is presently employed as a patent lawyer and
`
`CEO of Microtechnology Law & Analysis, a law firm in this judicial district.
`
`12.
`
`On information and belief, from 2008-2009, Flamm was employed as a senior
`
`counsel by IPxLaw Group LLP, a law firm in this judicial district. On information and belief,
`
`from 2007-2008, Flamm was employed as an associate attorney at Buchanan Ingersoll and
`
`Rooney LLC, a law firm in this judicial district during the 2007-2008 time period. On information
`
`and belief, in 2006, Flamm was employed as an associate attorney at Sughrue Mion PLLC, a law
`
`firm in this judicial district.
`
`13.
`
`On information and belief, from 1989 until 2007, Flamm was employed by
`
`Microtechnology Analysis Group. On information and belief, in connection with his employment
`
`at Microtechnology Analysis Group, Flamm provided legal consulting and expert witness services
`
`in patent cases, among other services.
`
`14.
`
`On information and belief, Flamm has been employed and/or self-employed in this
`
`judicial district since at least 1988.
`
`15.
`
`On information and belief, Defendant Flamm is an individual who resides in
`
`Walnut Creek, California.
`
`JURISDICTION AND VENUE
`
`16.
`
`This action arises under the Patent Laws of the United States of America, 35 U.S.C.
`
`§ 1 et seq. This Court has subject matter jurisdiction over the action under 28 U.S.C. §§ 1331 and
`
`1338, based on an actual controversy between Lam, on the one hand, and Flamm, on the other
`
`hand, for claims under the Patent Laws of the United States of America, 35 U.S.C. § 1 et seq.
`
`Lam is seeking relief pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202.
`
`6315354
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`- 3 -
`
`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
`
`LAM Ex 1026-p. 3
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 4 of 18
`
`17.
`
`This Court has personal jurisdiction over Flamm because, upon information and
`
`belief, Flamm is a California resident and resides in this judicial district in Walnut Creek,
`
`California.
`
`18.
`
`This Court also has personal jurisdiction over Flamm because, upon information
`
`and belief, Flamm has a regular and established place of business in this judicial district in Walnut
`
`Creek, California.
`
`19.
`
`Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b), 1391(c) and
`
`1400.
`
`INTRADISTRICT ASSIGNMENT
`
`20.
`
`Because this action is an Intellectual Property Action within the meaning of Civil
`
`L.R. 3-2(c), the action is to be assigned on a district-wide basis.
`
`THE PATENTS-IN-SUIT
`
`21.
`
`On January 27, 1998, the '849 patent, titled "Process Optimization In Gas Phase
`
`Dry Etching," issued to Flamm and John P. Verboncoeur. A copy of the '849 patent is attached to
`
`this Complaint as Exhibit A.
`
`22.
`
`23.
`
`24.
`
`Flamm is listed as the assignee on the face of the '849 patent.
`
`On information and belief, the '849 patent is assigned to Flamm.
`
`On January 25, 2000, the '221 patent, titled "Process Depending on Plasma
`
`Discharges Sustained By Inductive Coupling," issued to Flamm. A copy of the '221 patent is
`
`attached to this Complaint as Exhibit B.
`
`25.
`
`26.
`
`On information and belief, the '221 patent is assigned to Flamm.
`
`On April 29, 2008, the '264 patent, titled "Multi-Temperature Processing," issued to
`
`Flamm. A copy of the '264 patent is attached to this Complaint as Exhibit C.
`
`27.
`
`On information and belief, the '264 patent is assigned to Flamm.
`
`6315354
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`- 4 -
`
`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
`
`LAM Ex 1026-p. 4
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 5 of 18
`
`FACTUAL BACKGROUND
`
`Flamm's Accusations Against Lam's Products
`
`28.
`
`The '849, '221, and '264 patents are expired. However, on information and belief,
`
`Flamm never sought to assert the '849, '221, and '264 patents, either through licensing or litigation,
`
`until September of 2014.
`
`29.
`
`At that time, attorneys representing Flamm began sending Lam's customers
`
`unsolicited letters requesting that they take a license to the '849, '221, and '264 patents. On
`
`information and belief, Flamm has since sent such letters to the vast majority of Lam's key
`
`customers.
`
`30.
`
`In these unsolicited letters, Flamm, through his attorneys, accused Lam's customers
`
`of infringing the '849, '221, and '264 patents through their use of Lam's products. Flamm
`
`explicitly and specifically accused Lam and its products by name. Indeed, Flamm, through his
`
`attorneys, even attached Lam product literature to these letters, stating that the 2300 Kiyo product
`
`family described in the attached literature was one example of an allegedly infringing product.
`
`31.
`
`As a result of these unsolicited letters, Lam has been contacted by its customers.
`
`As set forth in greater detail below, many of these customers have requested that Lam indemnify
`
`them against Flamm's patent infringement claims relating to their use of Lam's products.
`
`32.
`
`In July of 2015, Flamm sent additional letters to Lam's customers, this time
`
`regarding the instant lawsuit. In those letters, Flamm again explicitly and specifically accused the
`
`use of Lam's products of infringement, stating that the instant lawsuit "would not exculpate other
`
`users of Lam's plasma etching devices from liability for using those machines in a manner that
`
`infringes Dr. Flamm's Patents . . . ."
`
`The '849 Patent
`
`33.
`
`In the unsolicited letters sent to Lam's customers, Flamm, through his attorneys, has
`
`explicitly and specifically accused Lam tools of at least directly infringing the '849 patent. For
`
`example, claim 10 of the '849 patent is directed towards a method of designing a reactor, or
`
`processing chamber, in a plasma etch tool. Other than a statement that "semiconductor
`
`manufacturers use a machine, or commonly called tools [sic], that was designed using the
`
`6315354
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`- 5 -
`
`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
`
`LAM Ex 1026-p. 5
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 6 of 18
`
`infringing method," Flamm's chart for claim 10 of the '849 patent makes no mention of any actions
`
`performed by Lam's customers that would constitute a basis for infringement.
`
`34.
`
`Instead, Flamm's chart for claim 10 of the '849 patent sets forth the steps
`
`purportedly taken by equipment suppliers (such as Lam) to create tools "designed using the
`
`infringing method." For example, the chart asserts that "[e]quipment supplier[s] deployed a
`
`plasma etching apparatus" and makes specific reference to the use of the claimed method in
`
`"machine prototyping/development." The chart also explicitly and specifically states that
`
`"[e]xamples of equipment suppliers include . . . Lam Research."
`
`35.
`
`Flamm's claim chart accusing Lam of at least directly infringing claim 10 of the
`
`'849 patent is reproduced below:
`
`6315354
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`- 6 -
`
`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
`
`LAM Ex 1026-p. 6
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 7 of 18
`
`Exhibit D (Flamm letter to Lam customer) at 12-13 (emphasis added).
`36.
`Because Flamm asserts that Lam's plasma etch tools were "designed using the
`
`infringing method" and Flamm asserts that these tools are used by Lam's customers, Flamm has
`
`explicitly and specifically accused Lam of also contributorily infringing the '849 patent. Id.
`
`Moreover, on information and belief, Flamm asserts that Lam tools "designed using the infringing
`
`method" are not staple articles or commodities of commerce suitable for substantial non-infringing
`
`use.
`
`37.
`
`Lam had knowledge of the '849 patent after its customers contacted Lam regarding
`
`the '849 patent. Lam has continued to encourage its customers to use its plasma etch tools with the
`
`knowledge that Flamm has accused the use of these tools by Lam's customers of infringement.
`
`Moreover, Flamm has asserted that Lam is an "equipment supplier," thereby impliedly asserting
`
`that Lam encourages its customers to use Lam's plasma etch tools by supplying such tools to them.
`
`Id. Indeed, Flamm asserts that "[e]quipment suppliers deployed a plasma etching apparatus."
`
`Id.at 12. Thus, there is a case or controversy regarding whether Lam has induced infringement of
`
`the '849 patent.
`
`The '221 Patent
`
`38.
`
`In the unsolicited letters sent to Lam's customers, Flamm, through his attorneys, has
`
`explicitly and specifically accused the Lam 2300 Kiyo product family of at least contributorily
`
`infringing the '221 patent. In particular, Flamm alleges that: "Claims 1-7 of U.S. Patent No.
`
`6315354
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`- 7 -
`
`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
`
`LAM Ex 1026-p. 7
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 8 of 18
`
`6,017,221 . . . are infringed by present semiconductor devices [made] using plasma etch tools,
`
`such as those manufactured by . . . Lam Research Corporation." Exhibit D at 5. Flamm even
`
`attaches product literature describing Lam's 2300 Kiyo product family as an "example[] of the
`
`plasma etch tools, which include a plasma source with the novel features." Id. at 5, 10.
`
`39.
`
`Flamm's claim chart accusing Lam (and, indeed, all ICP tools) of at least
`
`contributorily infringing claim 1 of the '221 patent is reproduced below:
`
`6315354
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`- 8 -
`
`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
`
`LAM Ex 1026-p. 8
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 9 of 18
`
`Exhibit D at 5-6 (emphasis added).
`40.
`Because Flamm's claim chart states, without limitation, that the use of
`
`"conventional" and "modern" ICP plasma tools infringe the '221 patent, Flamm at least impliedly
`
`asserts that the 2300 Kiyo product family is not a staple article or commodity of commerce
`
`suitable for substantial non-infringing use. Id. Moreover, on information and belief, Flamm
`
`asserts that "modern" and "conventional" ICP plasma tools such as the 2300 Kiyo product family
`
`are not staple articles or commodities of commerce suitable for substantial non-infringing use.
`
`41.
`
`Lam had knowledge of the '221 patent after its customers contacted Lam regarding
`
`the '221 patent. Lam has continued to encourage its customers to use its plasma etch tools,
`
`including the 2300 Kiyo product family, with the knowledge that Flamm has accused the use of
`
`these tools by Lam's customers of infringement. Moreover, Flamm has referenced in his letters to
`
`Lam's customers that Lam encourages the use of the 2300 Kiyo product family for allegedly
`
`infringing purposes, by including, for example Lam product literature teaching the use of the 2300
`
`Kiyo product family for etching. Id. at 10. Thus, there is a case or controversy regarding whether
`
`Lam has induced infringement of the '221 patent.
`
`The '264 Patent
`
`42.
`
`In the unsolicited letters sent to Lam's customers, Flamm, through his attorneys, has
`
`explicitly and specifically accused Lam tools of at least contributorily infringing the '264 patent.
`
`In particular, Flamm alleges that: "Commercial tools (e.g., Lam, Applied, TEL) include
`
`temperature control, sensor, circuits, and heat transfer process via convection or conduction" that
`
`are used in the claimed methods. Id. at 19.
`
`43.
`
`Flamm's claim chart accusing Lam of contributorily infringing claim 37 of the
`
`'264 patent is reproduced below:
`
`6315354
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`- 9 -
`
`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
`
`LAM Ex 1026-p. 9
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 10 of 18
`
`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
`
`6315354
`
`- 10 -
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`LAM Ex 1026-p. 10
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 11 of 18
`
`Exhibit D at 18-20 (emphasis added).
`44.
`On information and belief, Flamm asserts that Lam tools that "include temperature
`
`control, sensor, circuits, and heat transfer process via convection or conduction" are not staple
`
`articles or commodities of commerce suitable for substantial non-infringing use.
`
`45.
`
`Lam had knowledge of the '264 patent after its customers contacted Lam regarding
`
`the '264 patent. For certain processes, Lam has continued to encourage its customers to use its
`
`plasma etch tools for multi-temperature processing with the knowledge that Flamm has accused
`
`the use of these tools by Lam's customers of infringement. Moreover, Flamm has referenced in
`
`his letters to Lam's customers that Lam "include[s] temperature control, sensor, circuits, and heat
`
`transfer process via convection or conduction" in its tools, thereby at least suggesting that Lam
`
`encourages their use for allegedly infringing purposes. Id. at 19. Thus, there is a case or
`
`controversy regarding whether Lam has induced infringement of the '264 patent.
`
`Lam's Indemnity Obligations To Its Customers
`
`46.
`
`Flamm has accused Lam's customers of infringing the '849, '221, and '264 patents
`
`through their use of Lam's products. In these accusations, Flamm has explicitly and specifically
`
`accused Lam and its products by name.
`
`47.
`
`Under pre-determined conditions and limitations, Lam indemnifies its customers
`
`for infringement of third party intellectual property rights by Lam's products and services. In
`
`particular, Lam's standard indemnity provision provides, in relevant part:
`
`6315354
`
`- 11 -
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`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
`
`LAM Ex 1026-p. 11
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 12 of 18
`
`A true and correct copy of Lam's standard indemnity provision is attached as Exhibit E.
`
`48.
`
`On information and belief, the '849, '221, and '264 patents are owned by Flamm, a
`
`third party. Flamm has made a claim that Lam's products infringe the '849, '221, and '264 patents.
`
`And the '849, '221, and '264 patents existed on the dates of deliveries in the U.S. of the Lam tools
`
`accused of infringement, including tools from the 2300 Kiyo product family.
`
`49. Multiple Lam customers subject to Lam's standard indemnity provision have
`
`demanded that Lam indemnify them against Flamm's claims that Lam's products infringe the '849,
`
`'221, and '264 patents. These customers have also provided Lam with copies of the unsolicited
`
`demand letters sent by Flamm through his attorneys. See, e.g., Exhibit D (letter from Flamm's
`
`attorneys to a Lam customer who has demanded that Lam indemnify it).
`
`50.
`
`Since Lam's Complaint was filed, Flamm has filed suit against at least one Lam
`
`customer.
`
`Other Semiconductor Tool Companies
`
`51.
`
`The unsolicited letters that Lam's customers received from attorneys representing
`
`Flamm also accuse products made and sold by Applied Materials, Inc. ("AMAT") and Tokyo
`
`Electron Ltd. ("TEL") of infringing the '849, '221, and '264 patents.
`
`52.
`
`On information and belief, AMAT is a corporation organized and existing under
`
`the laws of the State of Delaware and has headquarters located in this judicial district at 3050
`
`Bowers Avenue, Santa Clara, California 95054.
`
`53.
`
`On information and belief, AMAT also has facilities located in this judicial district
`
`at 974 East Arques Ave., Sunnyvale, California 94085 and at 3101 Scott Blvd., Santa Clara,
`
`California 95054.
`
`54.
`
`On information and belief, TEL has headquarters in Tokyo, Japan and has facilities
`
`in this judicial district at 3100 West Warren Ave., Fremont, California 94538.
`
`6315354
`
`- 12 -
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`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
`
`LAM Ex 1026-p. 12
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 13 of 18
`
`COUNT I
`
`(Declaratory Judgment Of Non-Infringement Of The '849 Patent)
`
`Paragraphs 1 to 54 are incorporated herein as set forth above.
`
`An actual and justiciable case or controversy exists between Lam and Flamm
`
`55.
`
`56.
`
`regarding the alleged infringement of the '849 patent by the Lam products that are the subject of
`
`this action, including Lam etch products such as the 2300 Kiyo product family.
`
`57.
`
`The manufacture, use, offer for sale, sale, and/or importation of the Lam products
`
`at issue, including Lam etch products such as the 2300 Kiyo product family, have not infringed,
`
`and do not infringe any claim of the '849 patent, either literally or under the doctrine of
`
`equivalents.
`
`58.
`
`Lam is entitled to a judgment declaring that the manufacture, use, offer for sale,
`
`sale, and/or importation of the Lam products at issue, including Lam etch products such as the
`
`2300 Kiyo product family, do not and will not constitute infringement of the '849 patent, in
`
`particular, that (a) the Lam products and the use of the Lam products as designed do not and will
`
`not infringe; (b) the Lam products and the use of the Lam products as recommended, taught, or
`
`approved by Lam do not and will not infringe; and (c) Lam and its customers do not design or use
`
`its products in an infringing manner.
`
`COUNT II
`
`(Declaratory Judgment Of Non-Infringement Of The '221 Patent)
`
`Paragraphs 1 to 58 are incorporated herein as set forth above.
`
`An actual and justiciable case or controversy exists between Lam and Flamm
`
`59.
`
`60.
`
`regarding the alleged infringement of the '221 patent by the Lam products that are the subject of
`
`this action, including Lam etch products such as the 2300 Kiyo product family.
`
`61.
`
`The manufacture, use, offer for sale, sale, and/or importation of the Lam products
`
`at issue, including Lam etch products such as the 2300 Kiyo product family, have not infringed,
`
`and do not infringe any claim of the '221 patent, either literally or under the doctrine of
`
`equivalents.
`
`6315354
`
`- 13 -
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`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
`
`LAM Ex 1026-p. 13
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 14 of 18
`
`62.
`
`Lam is entitled to a judgment declaring that the manufacture, use, offer for sale,
`
`sale, and/or importation of the Lam products at issue, including Lam etch products such as the
`
`2300 Kiyo product family, do not and will not constitute infringement of the '221 patent, in
`
`particular, that (a) the Lam products and the use of the Lam products as designed do not and will
`
`not infringe; (b) the Lam products and the use of the Lam products as recommended, taught, or
`
`approved by Lam do not and will not infringe; and (c) Lam and its customers do not design or use
`
`its products in an infringing manner.
`
`COUNT III
`
`(Declaratory Judgment Of Non-Infringement Of The '264 Patent)
`
`Paragraphs 1 to 62 are incorporated herein as set forth above.
`
`An actual and justiciable case or controversy exists between Lam and Flamm
`
`63.
`
`64.
`
`regarding the alleged infringement of the '264 patent by the Lam products that are the subject of
`
`this action, including Lam etch products such as the 2300 Kiyo product family.
`
`65.
`
`The manufacture, use, offer for sale, sale, and/or importation of the Lam products
`
`at issue, including Lam etch products such as the 2300 Kiyo product family, have not infringed,
`
`and do not infringe any claim of the '264 patent, either literally or under the doctrine of
`
`equivalents.
`
`66.
`
`Lam is entitled to a judgment declaring that the manufacture, use, offer for sale,
`
`sale, and/or importation of the Lam products at issue, including Lam etch products such as the
`
`2300 Kiyo product family, do not and will not constitute infringement of the '264 patent, in
`
`particular, that (a) the Lam products and the use of the Lam products as designed do not and will
`
`not infringe; (b) the Lam products and the use of the Lam products as recommended, taught, or
`
`approved by Lam do not and will not infringe; and (c) Lam and its customers do not design or use
`
`its products in an infringing manner.
`
`COUNT IV
`
`(Declaratory Judgment Of Unenforceability Of The '849 Patent)
`
`67.
`
`Paragraphs 1 to 66 are incorporated herein as set forth above.
`
`6315354
`
`- 14 -
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`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
`
`LAM Ex 1026-p. 14
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 15 of 18
`
`68.
`
`An actual and justiciable case or controversy exists between Lam and Flamm
`
`regarding the enforceability of the '849 patent.
`
`69.
`
`One or more claims of the '849 patent are unenforceable because of laches,
`
`estoppel, and/or other equitable doctrines, including waiver. By way of example only, Flamm has
`
`represented that "the [Lam] machines themselves do not and cannot infringe those patented
`
`method claims of" the '849 patent. Flamm has also represented that he does not ever intend to
`
`enforce the '849 patent against Lam for any of Lam's activities, including the use of Lam's tools to
`
`process semiconductor wafers by Lam, its employees, and its contractors in research,
`
`development, sales, marketing, training, testing, and installation. Flamm has further represented
`
`that he has no dispute with Lam regarding the '849 patent, and that he has no intention of ever
`
`asserting claims against Lam for direct or indirect infringement of this patent.
`
`70.
`
`Lam is entitled to a judgment declaring that one or more claims of the '849 patent
`
`are unenforceable because of laches, estoppel, and/or other equitable doctrines, including waiver.
`
`COUNT V
`
`(Declaratory Judgment Of Unenforceability Of The '221 Patent)
`
`Paragraphs 1 to 70 are incorporated herein as set forth above.
`
`An actual and justiciable case or controversy exists between Lam and Flamm
`
`71.
`
`72.
`
`regarding the enforceability of the '221 patent.
`
`73.
`
`One or more claims of the '221 patent are unenforceable because of laches,
`
`estoppel, and/or other equitable doctrines, including waiver. By way of example only, Flamm has
`
`represented that "the [Lam] machines themselves do not and cannot infringe those patented
`
`method claims of" the '221 patent. Flamm has also represented that he does not ever intend to
`
`enforce the '221 patent against Lam for any of Lam's activities, including the use of Lam's tools to
`
`process semiconductor wafers by Lam, its employees, and its contractors in research,
`
`development, sales, marketing, training, testing, and installation. Flamm has further represented
`
`that he has no dispute with Lam regarding the '221 patent, and that he has no intention of ever
`
`asserting claims against Lam for direct or indirect infringement of this patent.
`
`6315354
`
`- 15 -
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`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
`
`LAM Ex 1026-p. 15
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 16 of 18
`
`74.
`
`Lam is entitled to a judgment declaring that one or more claims of the '221 patent
`
`are unenforceable because of laches, estoppel, and/or other equitable doctrines, including waiver.
`
`COUNT VI
`
`(Declaratory Judgment Of Unenforceability Of The '264 Patent)
`
`Paragraphs 1 to 74 are incorporated herein as set forth above.
`
`An actual and justiciable case or controversy exists between Lam and Flamm
`
`75.
`
`76.
`
`regarding the enforceability of the '264 patent.
`
`77.
`
`One or more claims of the '264 patent are unenforceable against Lam and its
`
`customers because of laches, estoppel, and/or other equitable doctrines, including waiver. One or
`
`more claims of the '264 patent are unenforceable because of laches, estoppel, and/or other
`
`equitable doctrines, including waiver. By way of example only, Flamm has represented that "the
`
`[Lam] machines themselves do not and cannot infringe those patented method claims of" the '264
`
`patent. Flamm has also represented that he does not ever intend to enforce the '264 patent against
`
`Lam for any of Lam's activities, including the use of Lam's tools to process semiconductor wafers
`
`by Lam, its employees, and its contractors in research, development, sales, marketing, training,
`
`testing, and installation. Flamm has further represented that he has no dispute with Lam regarding
`
`the '264 patent, and that he has no intention of ever asserting claims against Lam for direct or
`
`indirect infringement of this patent.
`
`78.
`
`Lam is entitled to a judgment declaring that one or more claims of the '264 patent
`
`are unenforceable because of laches, estoppel, and/or other equitable doctrines, including waiver.
`
`RELIEF SOUGHT
`
`
`
`WHEREFORE, Plaintiff Lam respectfully requests that a judgment be entered against
`
`Defendant Flamm as follows:
`
`a.
`
`That a declaration be issued that the manufacture, use, offer for sale, sale, and/or
`
`importation of the Lam products at issue, including Lam etch products such as the 2300 Kiyo
`
`product family, do not infringe and will not infringe any claim of the '849 patent, in particular, that
`
`(a) the Lam products and the use of the Lam products as designed do not and will not infringe;
`
`(b) the Lam products and the use of the Lam products as recommended, taught, or approved by
`
`6315354
`
`- 16 -
`
`LAM RESEARCH CORPORATION'S
`SECOND AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`Case No. 5:15-cv-01277-BLF
`
`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
`
`LAM Ex 1026-p. 16
`LAM v FLAMM
`IPR2015-01767
`
`

`
`Case 5:15-cv-01277-BLF Document 52-3 Filed 01/15/16 Page 17 of 18
`
`Lam do not and will not infringe; and (c) Lam and its customers do not design or use its products
`
`in an infringing manner;
`
`b.
`
`That a declaration be issued that the manufacture, use, offer for sale, sale, and/or
`
`importation of the Lam products at issue, including Lam etch products such as the 2300 Kiyo
`
`product family, do not infringe and will not infringe any claim of the '221 patent, in particular, that
`
`(a) the Lam