Case 5:20-cv-05676-EJD Document 13 Filed 09/01/20 Page 1 of 19
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`YAR R. CHAIKOVSKY (SB# 175421)
`yarchaikovsky@paulhastings.com
`PHILIP OU (SB# 259896)
`philipou@paulhastings.com
`JOSEPH J. RUMPLER, II (SB# 296941)
`josephrumpler@paulhastings.com
`BERKELEY FIFE (SB# 325293)
`berkeleyfife@paulhastings.com
`BORIS LUBARSKY (SB# 324896)
`borislubarsky@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, California 94304-1106
`Telephone: 1(650) 320-1800
`Facsimile: 1(650) 320-1900
`Attorneys for Plaintiff
`APPLIED MATERIALS, INC.
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`APPLIED MATERIALS, INC.,
`Plaintiff,
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`vs.
`DEMARAY LLC,
`Defendant.
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`CASE NO. 5:20-cv-05676
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`FIRST AMENDED COMPLAINT FOR
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`APPLIED MATERIALS EXHIBIT 1077
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`NATURE OF THE ACTION
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`1. This is an action for declaratory relief arising under the patent laws of the United States.
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`Applied Materials, Inc. (“Applied”) brings the instant action because Defendant Demaray LLC
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`(“Demaray”) has filed lawsuits alleging that certain of Applied’s customers infringe United States
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`Patent Nos. 7,544,276 and 7,381,657 (the “Asserted Patents”) by using “semiconductor
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`manufacturing equipment including reactive magnetron sputtering reactors” manufactured by
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`Applied. True and correct copies of these complaints against Applied’s customers are attached as
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`Exhibits A and B. Demaray’s lawsuits against Applied’s customers have placed a cloud over
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`Applied’s products; threatened Applied’s business and relationships with its customers and
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`partners, as well as the sales of its reactors; and created a justiciable controversy between Applied
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`and Demaray.
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`2. Therefore, Applied requests declaratory relief as follows: (1) a declaratory judgment that
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`Applied’s products do not infringe the Asserted Patents because they do not meet each and every
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`limitation of any asserted claim; (2) declaratory judgment that Applied’s products cannot infringe
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`the Asserted Patents because the rights of named inventor, Mukundan Narasimhan (“Narasimhan”),
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`in the Asserted Patents were assigned to Applied, making Applied at least a co-owner of the
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`Asserted Patents that has not joined and will not join Demaray in alleging infringement of the
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`Asserted Patents; and (3) declaratory judgment that Applied’s products cannot infringe because
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`Applied has a license to use the Asserted Patents by reason of a license granted to at least Applied
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`Komatsu Technology (“AKT”) and Applied Komatsu Technology America, Inc. (“AKTA”)
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`(collectively “Applied Komatsu”), affiliates of Applied, by Demaray’s predecessor company,
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`Symmorphix, Inc. (“Symmorphix”) covering the Asserted Patents; or alternatively, declaratory
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`judgment that Applied’s products cannot infringe the Asserted Patents because the rights of one or
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`more of the other named inventors of the Asserted Patents were assigned to AKTA, making AKTA
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`at least a co-owner of the Asserted Patents that has not been joined and will not join Demaray in
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`alleging infringement of the Asserted Patents.
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`THE PARTIES
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`3. Plaintiff Applied Materials, Inc. (“Applied”) is a corporation organized and existing under
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`the laws of the state of Delaware, with its principal place of business at 3050 Bowers Avenue, Santa
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`Clara, CA 95054-3299. Applied is a leader in materials engineering solutions that creates
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`technology and products used for semiconductor fabrication, including but not limited to reactors
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`in the Endura product line.
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`4. Defendant Demaray LLC (“Demaray”) is a limited liability company organized and existing
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`under the laws of the state of Delaware. Dr. Richard Ernest Demaray is the founder of Demaray
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`LLC. Dr. Demaray is also one of the named inventors on the Asserted Patents. Dr. Demaray
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`describes Demaray LLC as a “Silicon Valley, CA” company which “[is] about the portfolio of my
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`patents.”1
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`JURISDICTIONAL STATEMENT
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`5. This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201, and under the
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`patent laws of the United States, 35 U.S.C. §§ 1–390.
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`6. This Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331, 1338(a),
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`and 2201(a).
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`7. This Court has personal jurisdiction over Demaray. Among other things, Demaray has
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`continuous and systematic business contacts with Northern California. Demaray’s “founder and
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`president,” Dr. Demaray, describes Demaray as a “Silicon Valley, CA” company:2
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`1 https://www.edemaray.com/bios.html
`2 https://www.edemaray.com/bios.html; https://www.linkedin.com/in/ernestdemarayphd/
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`On information and belief, according to Demaray’s website, several of the Board members and
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`employees of Demaray are from and/or based in Northern California.3 Under its “Partners” sub-
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`page, Demaray’s website lists the University of California at Santa Cruz as one of its primary
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`partners, and claims that “Professor Kobayashi of UCSC is working with Demaray LLC to further
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`develop the Sun2Fiber technology with a grant from ARPA-E.”4 Further, on information and belief,
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`the technology underlying the Asserted Patents was allegedly developed in Northern California.
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`8. In addition, this Court has personal jurisdiction over Demaray because Demaray has
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`purposefully directed into California its enforcement activities regarding the Asserted Patents. As
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`referenced above, Demaray has filed complaints against Intel (headquartered in Northern
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`California) 5 and Samsung (conducts substantial business operations related to the allegedly
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`infringing technology in Northern California and holds a large US office in Northern California).6
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`Further, Demaray’s complaints against both Samsung and Intel accuse Applied technology, and
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`Applied is also headquartered in Northern California.7 And, at least against Samsung, Demaray
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`3 https://www.edemaray.com/bios.html
`4 https://www.edemaray.com/partners.html
`5 https://www.intel.com/content/www/us/en/support/articles/000015107/programs.html
`6 Error! Hyperlink reference not valid.https://www.samsung.com/us/ssic/location/san-jose-ca/
`7 http://www.appliedmaterials.com/company/contact/locations
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`relies on meetings occurring in Northern California to establish alleged pre-suit notice and
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`knowledge of the Asserted Patents, and alleged willful infringement.8
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`9. Venue is proper in this District under 28 U.S.C. §§ 1391(b), (c), because a substantial part
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`of the events giving rise to Applied’s claim occurred in this district, and because Demaray is subject
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`to personal jurisdiction here.
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`10. On information and belief, Dr. Demaray has filed over a hundred patents over the course of
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`his career, which has been spent almost entirely in Northern California.9 After receiving the entirety
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`of his education at schools located in Northern California (Cal State Hayward and the University
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`of California at Santa Cruz), Dr. Demaray has spent almost 40 years working at California-based
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`companies, including Applied Komatsu, Varian Semiconductor, Symmorphix, and Demaray.10
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`11. On information and belief, in addition to Dr. Demaray, Ravi Mullapudi, one of the other
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`named inventors of the Asserted Patents, also resides in Northern California. On information and
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`belief, Gary Edwards, the patent prosecution attorney for the Asserted Patents, resides in Northern
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`California.11 Further, on information and belief, the research and development of the Asserted
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`Patents was performed in Northern California. On information and belief, the Sales and
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`Relationship Agreement between Applied Komatsu and Symmorphix, which granted Applied
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`Komatsu a license to the Asserted Patents, as detailed infra, was negotiated and executed in
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`Northern California.
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`12. An immediate, real, and justiciable controversy exists between Applied and Demaray as to
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`whether Applied and/or Applied’s products are infringing or have infringed the Asserted Patents.
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`8 See Ex. B at 24–25.
`9 https://www.linkedin.com/in/ernestdemarayphd/
`10 Id.
`11 https://www.haynesboone.com/people/e/edwards-gary
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`FACTUAL BACKGROUND
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`13. Demaray, its principals and predecessor companies, on the one hand, and Applied and
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`Applied Komatsu, on the other hand, have a long history together, including as it relates to the
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`Asserted Patents.
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`14. On information and belief, Dr. Demaray was a general manager of a joint venture between
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`Applied and Komatsu Ltd., called Applied Komatsu Technology, Inc. (“AKT”), developing
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`sputtered silicon deposition technology for flat panel displays.12 On information and belief, Dr.
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`Demaray, and other employees working with Dr. Demaray, were working in Northern California
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`and employed by AKT’s subsidiary, AKTA.
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`15. On information and belief, Dr. Demaray, along with several other colleagues from Applied
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`and/or Applied Komatsu left in late 1998 to start a new company, Symmorphix. On information
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`and belief, Dr. Demaray was a founder and the CTO of Symmorphix.13
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`16. On information and belief, at Symmorphix, Dr. Demaray and his team of former Applied
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`or Applied Komatsu employees continued to develop the technology they worked on at Applied or
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`Applied Komatsu related to sputtered silicon deposition technology, including on methods of
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`sputtering using varying frequencies of RF in order to produce denser dielectric films for optical
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`components, such as optical waveguides.
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`17. On December 11, 1998, Applied Komatsu and Symmorphix executed a Sale and
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`Relationship Agreement, under which Symmorphix would purchase two Applied Komatsu systems
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`and continue using the Applied Komatsu facilities to operate the equipment.14 A true and correct
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`copy of the Sale and Relationship Agreement attached hereto as Exhibit C.15 Pursuant to the Sales
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`12 https://www.linkedin.com/in/ernestdemarayphd/
`13 https://www.linkedin.com/public-profile/in/ernestdemarayphd/
`14 Ex. C, Sales and Relationship Agreement (“SRA”), ¶¶ 1, 6.
`15 Ex. C has been redacted to remove confidential financial information and to remove hand-written
`notes from the copy of the SRA maintained by Applied in its business records.
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`and Relationship Agreement, Symmorphix continued using the Applied Komatsu facilities and
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`equipment until at least until September 30, 1999, as evidenced by two further Addendums to the
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`Sale and Relationship Agreement.16
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`18. The Sale and Relationship Agreement provided that “[t]he parties have agreed to certain
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`provisions regarding future dealings, intellectual property, confidential information, and licenses,
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`as described in Exhibit C.”17 On January 29, 1999, Applied Komatsu and Symmorphix executed
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`an amended Exhibit C to the Sale and Relationship Agreement which modified the December 11,
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`1998 version:
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`THIS MODIFIED VERSION OF EXHIBIT C IS EFFECTIVE ON THE
`DATE SIGNED ON BEHALF OF [APPLIED KOMATSU] AND
`SYMMORPHIX, AND SUPERCEDES THE VERSION ATTACHED TO
`THE SALE AND RELATIONSHIP AGREEMENT DATED 12/11/98. 18
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`19. The Amended Exhibit C included a license grant from Symmorphix to Applied Komatsu,
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`including for “inventions, improvements, or enhancements developed by Symmorphix relating to
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`sputtered silicon deposition technology”—the technology embodied in the Asserted Patents.
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`Further, the license grant also expressly permitted Applied Komatsu to transfer or assign such
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`license grant to Applied, and expressly allowed Applied Komatsu’s customers to use such
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`inventions as well:
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`To the extent required by existing [Applied Komatsu] Employee
`Agreements with any Symmorphix personnel, Symmorphix grants to
`[Applied Komatsu] a non-assignable, non-transferable, non-exclusive,
`perpetual, royalty-free license to any rights of Symmorphix under any
`patents issued based on any patent applications filed for inventions,
`improvements, or enhancements developed by Symmorphix relating to
`sputtered silicon deposition technology, provided that [Applied Komatsu]
`shall not utilize such rights to pursue a business of providing Services.
`Notwithstanding the generality of the foregoing, [Applied Komatsu] shall
`be authorized to assign or transfer any or all of the above license to one or
`more of [Applied Komatsu’s] parent entities, with the same restriction on
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`16 Ex. C, SRA, Second Addendum at ¶ 6.
`17 Ex. C, SRA ¶ 21.
`18 Ex. C, SRA, Amended Ex. C.
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`competition with the Services provided by Symmorphix, and [Applied
`Komatsu’s] customers may use equipment provided by [Applied
`Komatsu] incorporating inventions licensed to [Applied Komatsu]
`hereunder without further consideration. 19
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`20. On March 16, 2002, U.S. Patent Application No. 10/101,863 (“’863 Application”) was filed
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`naming Richard E. Demaray, Hongmei Zhang, Mukundan Narasimhan, and Ravi Mullapudi as
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`named inventors.
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`21. On October 1, 2004, U.S. Patent Application No. 10/954,182 was filed as a continuation
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`application of the ’863 Application naming Richard E. Demaray, Hongmei Zhang, Mukundan
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`Narasimhan, and Ravi Mullapudi as named inventors. On June 3, 2008, this application issued as
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`U.S. Patent No. 7,381,657 (“the ’657 patent”). A true and correct copy of the ’657 patent is attached
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`hereto as Exhibit D.
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`22. On September 16, 2005, U.S. Patent Application No. 10/228,834 was filed as a divisional
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`application of the ’863 Application naming Richard E. Demaray, Hongmei Zhang, Mukundan
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`Narasimhan, and Ravi Mullapudi as named inventors. On June 9, 2009, this application issued as
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`U.S. Patent No. 7,544,276 (“the ’276 patent”). A true and correct copy of the ’276 patent is attached
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`hereto as Exhibit E.
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`23. On information and belief, all four named inventors had executed Employee Agreements
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`with Applied, or its subsidiary, Applied Komatsu.
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`24. On information and belief, one or more of the named inventors has the following assignment
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`provision in their Applied Komatsu Employee Agreement:
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`In case any invention is described in a patent application or is disclosed to
`third parties by me after terminating my employment with [Applied
`Komatsu], it is to be presumed that the invention was conceived or made
`during the period of my employment for [Applied Komatsu], and the
`invention will be assigned to [Applied Komatsu] as provided by this
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`19 Ex. C, SRA, Amended Ex. C ¶ 3(b)(emphasis added).
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`Agreement, provided it relates to my work with [Applied Komatsu] or any
`of its subsidiaries.
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`25. On information and belief, Mukundan Narasimhan (“Narasimhan”), one of the named
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`inventors, left Applied to join Symmorphix on April 16, 2001. Narasimhan’s Employee Agreement
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`with Applied contains the following assignment provision:
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`In case any invention is described in a patent application or is disclosed to
`third parties by me within one (1) year after terminating my employment
`with APPLIED, it is to be presumed that the invention was conceived or
`made during the period of my employment for APPLIED, and the invention
`will be assigned to APPLIED as provided by this Agreement, provided it
`relates to my work with APPLIED or any of its subsidiaries.
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`26. The Asserted Patents claims priority to the ’863 Application, which was filed on March 16,
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`2002, and within one year of Narasimhan terminating his employment with Applied.
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`APPLIED DOES NOT INFRINGE THE ASSERTED PATENTS
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`27. Applied’s reactors in the Endura product line do not directly or indirectly infringe any claim
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`of the Asserted Patents. To the best of Applied’s knowledge, no third party infringes any claim of
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`the Asserted Patents by using Applied’s reactors in the Endura product line. Applied has not caused,
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`directed, requested, or facilitated any such infringement, much less with specific intent to do so.
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`Applied’s reactors in the Endura product line are not designed for use in any combination which
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`infringes any claim of the Asserted Patents. To the contrary, each is a product with substantial uses
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`that does not infringe any claim of these patents.
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`APPLIED HAS AN OWNERSHIP INTEREST IN THE ASSERTED PATENTS BASED ON
`NARASIMHAN’S EMPLOYMENT AGREEMENT WITH APPLIED
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`28. Even though Applied’s reactors do not directly or indirectly infringe any of the Asserted
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`Patents, the licensing and/or ownership issues, described infra, would further moot any potential
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`infringement question.
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`29. On information and belief, Narasimhan, one of the named inventors of the Asserted Patents,
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`left Applied to join Symmorphix on April 16, 2001. On information and belief, Narasimhan’s
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`Employment Agreement contains the following assignment provision:
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`In case any invention is described in a patent application or is disclosed
`to third parties by me within one (1) year after terminating my
`employment with APPLIED, it is to be presumed that the invention was
`conceived or made during the period of my employment for APPLIED, and
`the invention will be assigned to APPLIED as provided by this
`Agreement, provided it relates to my work with APPLIED or any of its
`subsidiaries.
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`30. On March 16, 2002, the ’863 Application, the parent patent application to the Asserted
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`Patents, was filed naming Narasimhan as one of the named inventors. The ’863 Application was
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`filed less than one year after Narasimhan’s termination from Applied. On information and belief,
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`at Symmorphix, the named inventors continued developing work from their time at Applied or
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`Applied Komatsu related to sputtered silicon deposition technology.
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`31. On information and belief, Mr. Narasimhan’s Applied Employee Agreement further
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`provides:
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`I agree that all inventions, copyrightable works and confidential
`information (including but not limited to new contributions, improvements,
`ideas or discoveries, whether patentable or not and computer source code
`and documentation) produced, conceived, made or first actually reduced
`to practice by me solely or jointly with others during the period of my
`employment with APPLIED (the foregoing are subsequently referred to as
`Creative Works), are hereby assigned to APPLIED and shall be the
`exclusive property of APPLIED.
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`32. The Sales and Relationship Agreement between Applied Komatsu and Symmorphix
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`explains that it applies “[t]o the extent required by existing [Applied Komatsu] Employee
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`Agreements with any Symmorphix personnel.” 20 On information and belief, Narasimhan was an
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`employee of Applied, not an employee of Applied Komatsu.
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`20 Ex. C, SRA, Amended Ex. C ¶ 3(b)(emphasis added).
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`33. On information and belief, the SRA did not amend Narasimhan’s assignment obligations to
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`Applied and Applied’s Employee Agreement with Narasimhan bestowed an automatic assignment
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`of Narasimhan’s ownership rights in the Asserted Patents to Applied.
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`APPLIED HAS A LICENSE TO THE ASSERTED PATENTS
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`34. Applied has a perpetual, royalty-free license to the Asserted Patent pursuant to the terms of
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`the Sales and Relationship Agreement between Applied Komatsu and Symmorphix.
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`35. Applied Komatsu and Symmorphix executed the Sales and Relationship Agreement and an
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`Amended Exhibit 3, agreeing that Symmorphix grants Applied Komatsu a perpetual, royalty-free
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`license to Symmorphix’s patents “based on any patent applications filed for inventions,
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`improvements, or enhancements developed by Symmorphix relating to sputtered silicon deposition
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`technology.” 21 Both Asserted Patents relate to sputtered silicon deposition technology. Further,
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`Applied Komatsu is authorized to assign or transfer its license to any of Applied Komatsu’s parent
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`entities, including Applied. 22 Moreover, the amended agreement permits “[Applied Komatsu’s]
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`customers may use equipment provided by [Applied Komatsu] incorporating inventions licensed
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`to [Applied Komatsu] hereunder without further consideration.” 23
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`36. The license grant explains that it applies “[t]o the extent required by existing [Applied
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`Komatsu] Employee Agreements with any Symmorphix personnel.”24 On information and belief,
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`one or more of Applied Komatsu Employee Agreements with the named inventors contains the
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`following provision:
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`In case any invention is described in a patent application or is disclosed to
`third parties by me after terminating my employment with [Applied
`Komatsu], it is to be presumed that the invention was conceived or made
`during the period of my employment for [Applied Komatsu], and the
`invention will be assigned to [Applied Komatsu] as provided by this
`
`
`21 Id.
`22 Id.
`23 Id.
`24 Id.
`
`
`
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`- 10 -
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 5:20-cv-05676-EJD Document 13 Filed 09/01/20 Page 12 of 19
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`Agreement, provided it relates to my work with [Applied Komatsu] or any
`of its subsidiaries.
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`37. The Amended Exhibit 3 converted this assignment obligation into a perpetual royalty-free
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`license to Symmorphix’s patents relating to sputtered silicon deposition technology. Both Asserted
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`Patents relate to sputtered silicon deposition technology, and all four named inventors are former
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`Applied or Applied Komatsu employees. Applied is a parent entity of Applied Komatsu. Under the
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`terms of Amended Exhibit 3, Applied has a perpetual, royalty-free license to the Asserted Patents.
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`ALTERNATIVELY, APPLIED HAS AN OWNERSHIP INTEREST IN THE ASSERTED
`PATENTS BASED ON THE AKTA EMPLOYMENT AGREEMENTS
`
`38. In the alternative, if the Amended Exhibit 3 did not convert the former Applied Komatsu
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`employee’s assignment obligations into a perpetual, royalty-free license to the Asserted Patents,
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`Applied has an ownership interest in the Asserted Patents.
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`39. On information and belief, at Symmorphix, Dr. Demaray and the other named inventors
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`continued developing work from their time at Applied Komatsu related to sputtered silicon
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`deposition technology.
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`40. On information and belief, under the terms of the Applied Komatsu Employee Agreement
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`with at least one of the named inventors:
`
`In case any invention is described in a patent application or is disclosed
`to third parties by me after terminating my employment with [Applied
`Komatsu], it is to be presumed that the invention was conceived or made
`during the period of my employment for [Applied Komatsu], and the
`invention will be assigned to [Applied Komatsu] as provided by this
`Agreement, provided it relates to my work with [Applied Komatsu] or any
`of its subsidiaries.
`
`41. The Applied Komatsu Employee Agreement further specifically provides:
`
`I agree that all inventions, copyrightable works and confidential
`information (including but not limited to new contributions, improvements,
`ideas or discoveries, whether patentable or not and computer source code
`and documentation) produced, conceived, made or first actually reduced
`to practice by me solely or jointly with others during the period of my
`employment with [Applied Komatsu] (the foregoing are subsequently
`
`- 11 -
`
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`1
`2
`3
`4
`5
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`10
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`Case 5:20-cv-05676-EJD Document 13 Filed 09/01/20 Page 13 of 19
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`
`
`referred to as Creative Works), are hereby assigned to [Applied
`Komatsu] and shall be the exclusive property of [Applied Komatsu].
`
`42. Thus, the Applied Komatsu Employee Agreement bestowed an automatic assignment of at
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`least one or more of the named inventors’ ownership rights in the Asserted Patents to Applied
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`Komatsu.
`
`FIRST COUNT
`(Declaration of Non-Infringement of U.S. Patent No. 7,544,276)
`
`43. Applied restates and incorporates by reference all allegations in this Complaint as if fully
`
`set forth herein.
`
`44. Demaray claims to own all rights, title, and interest, including the right to seek damages for
`
`past, present, and future infringement thereof, in U.S. Patent No. 7,544,276 (“the ’276 patent”). A
`
`true and correct copy of the ’276 patent is attached hereto as Exhibit E.
`
`45. In the cases Demaray has brought against Samsung and Intel, Demaray accuses Defendants
`
`Samsung Electronics Ltd, Samsung Electronics America, Inc., Samsung Semiconductor, Inc.,
`
`Samsung Austin Semiconductor, LLC, and Intel Corporation of infringing the ’276 patent based
`
`on allegations that each “mak[es], us[es], offer[s] to sell, and sell[s] within the United States,
`
`suppl[ies] or caus[es] to be supplied in or from the United States, and/or import[s] into the United
`
`States” Applied technology and devices. Ex. A at 6; Ex. B at 7-8. For example, in its complaints
`
`against both the Intel and Samsung Defendants, Demaray accuses the Defendants’ use of “RMS
`
`reactors” from “the Endura product line from Applied Materials, Inc.” Ex. A at 7-14; Ex. B. at 8-
`
`16.
`
`46. A substantial, immediate, and real controversy exists between Applied and Demaray
`
`regarding whether Applied’s reactors infringe or have infringed the ’276 patent. A judicial
`
`declaration is necessary to determine the parties’ respective rights regarding the ’276 patent.
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`
`
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`- 12 -
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`
`Page 13 of 19
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`Case 5:20-cv-05676-EJD Document 13 Filed 09/01/20 Page 14 of 19
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`
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`47. Applied seeks a judgment declaring that Applied’s reactors, including those in the Endura
`
`product line, do not directly or indirectly infringe any claim of the ’276 patent. In its complaints
`
`against Applied’s customers, Demaray cites to Applied’s Endura products as purported evidence
`
`of infringement of claim 1 of the ’276 patent. Based on Applied’s present understanding of claim
`
`1 of the ’276 patent and Demaray’s allegations, Applied’s Endura products fail to meet or embody
`
`limitations of claim 1 of the ’276 patent. For example, claim 1 recites a reactor comprising, in part,
`
`“a pulsed DC power supply coupled to the target area” and “a narrow band-rejection filter that
`
`rejects at a frequency of the [RF] bias power supply coupled between the pulsed DC power supply
`
`and the target area.” Applied’s Endura products do not infringe claim 1 of the ’276 patent at least
`
`because these products do not meet or embody a reactor comprising “a pulsed DC power supply
`
`coupled to the target area” and/or “a narrow band-rejection filter that rejects at a frequency of the
`
`[RF] bias power supply coupled between the pulsed DC power supply and the target area.”
`
`SECOND COUNT
`(Declaration of Non-Infringement of U.S. Patent No. 7,381,657)
`
`48. Applied restates and incorporates by reference all allegations in this Complaint as if fully
`
`set forth herein.
`
`49. Demaray claims to own all rights, title, and interest, including the right to seek damages for
`
`past, present, and future infringement thereof, in U.S. Patent No. 7,381,657 (“the ’657 patent”). A
`
`true and correct copy of the ’657 patent is attached hereto as Exhibit D.
`
`50. In the cases Demaray recently brought against Samsung and Intel, Demaray accuses
`
`Defendants Samsung Electronics Ltd, Samsung Electronics America,
`
`Inc., Samsung
`
`Semiconductor, Inc., Samsung Austin Semiconductor, LLC, and Intel Corporation of infringing the
`
`’657 patent in that each uses “the claimed methods for reactive sputtering in an infringing manner
`
`to produce semiconductor products, and/or making, offering to sell, and selling within the United
`
`States, and/or importing into the United States, without authority or license, semiconductor
`FIRST AMENDED COMPLAINT FOR
`
`DECLARATORY JUDGMENT
`
`- 13 -
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`Case 5:20-cv-05676-EJD Document 13 Filed 09/01/20 Page 15 of 19
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`products produced using the claimed methods for reactive sputtering in an infringing manner.” Ex.
`
`A at 15-16; Ex. B at 17. Specifically, Demaray alleges Defendants use “RMS reactors” to perform
`
`the claimed method. Ex. A at 16-23; Ex. B at 17-24. As discussed above, the only RMS reactors
`
`Demaray identifies as used by Defendants are “reactors in the Endura product line from Applied
`
`Materials, Inc.”
`
`51. A substantial, immediate, and real controversy exists between Applied and Demaray
`
`regarding whether Applied’s reactors infringe or have infringed the ’657 patent. A judicial
`
`declaration is necessary to determine the parties’ respective rights regarding the ’657 patent.
`
`52. Applied seeks a judgment declaring that Applied’s reactors, including those in the Endura
`
`product line, do not directly or indirectly infringe any claim of the ’657 patent. In its complaints
`
`against Applied’s customers, Demaray cites to Applied’s Endura products as purported evidence
`
`of infringement of claim 1 of the ’657 patent. Based on Applied’s present understanding of claim
`
`1 of the ’657 patent and Demaray’s allegations, Applied’s Endura products fail to meet or embody
`
`steps of the method recited in claim 1 of the ’657 patent. For example, claim 1 recites a method
`
`comprising, in part, “providing pulsed DC power to the target through a narrow band rejection filter
`
`such that the target alternates between positive and negative voltages” and “providing an RF bias
`
`at a frequency that corresponds to the narrow band rejection filter to the substrate.” Using Applied’s
`
`Endura products does not infringe claim 1 of the ’657 patent at least because these products do not
`
`comprise “providing pulsed DC power to the target through a narrow band rejection filter such that
`
`the target alternates between positive and negative voltages” and/or “providing an RF bias at