Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 1 of 37
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 1 of 37
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`EXHIBIT B
`EXHIBIT B
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`

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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 2 of 37
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`Case Nos. 6:20-cv-00634 and 6:20-cv-00636
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`Demaray LLC v Intel Corp.
`Demaray LLC v Samsung Electronics Co., Ltd., et al.
`Supplemental Markman Hearing on ’657 Patent Claim 2 Terms
`
`February 28, 2022
`*All docket citations to docket entries in Case No. 6:20-cv-00634
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`Defendants' Markman
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`1
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`

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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 3 of 37
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`Preamble
`
`’657 Patent, Claim 2
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`Defendants’ Markman
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`2
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`Preamble
`
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 4 of 37
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`Claim Term
`
`Tentative Construction
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`“preamble” (’657 patent, claim 2)
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`Preamble is not limiting, except for “insulating
`film on a substrate”
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`DISPUTED
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`AGREED
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`Defendants’ Markman
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`3
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 5 of 37
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`History of Oxide Claims: Demaray Asserts Claim 2 of the ’657 Patent
`One Year After Preliminary Contentions Based on New Theory
`Jan. 26
`Oct. 9
`Aug. 16
`Court orders Plaintiff to
`Preliminary
`3rd supplement to
`supplement contentions
`infringement
`contentions
`contentions
`Feb. 5
`1st supplement to contentions
`
`Dec. 27
`4th supplement to
`contentions,
`asserting claim 2
`
`Aug. 17
`Markman (addressed
`claim 1 of ’657 patent)
`Sept. 22
`Demaray raises new
`claim 2 infringement
`theory
`Sept. 27
`Hearing/Order on
`claim construction
`for claim 2
`
`Apr. 15
`2nd supplement to
`contentions
`
`2020
`
`2021
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`2022
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`Defendants’ Markman
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`4
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 6 of 37
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`History of Oxide Claims: Demaray Asserts Claim 2 of the ’657 Patent
`One Year After Preliminary Contentions Based on New Theory
`Demaray’s Original Interpretation of Claim 2
`Jan. 26, 2021 Discovery Hearing on
`(Oct. 2020 – Sept. 2021)
`Placeholder Claims
`
`[Defendant] has asserted that it does not use
`a DC power supply to the target coupled
`with an RF bias to produce an oxide
`material… To the extent
`that discovery
`confirms this assertion, Demaray will not
`pursue this claim or
`related dependent
`claims against [Defendant].
`
`2. A method of depositing an insulating film
`on a substrate, comprising:
`
`… [
`
`e] wherein an oxide material is deposited
`on the substrate, and the insulating film is
`formed by reactive sputtering in a mode
`between a metallic mode and a poison
`mode.
`
`Demaray’s New Interpretation of Claim 2
`
`2. [e] wherein an oxide material is
`deposited on the substrate, and the
`insulating film is formed by reactive
`sputtering in a mode between a metallic
`mode and a poison mode.
`
`the [Defendant]
`On information and belief,
`Accused Product includes layers including
`oxide materials that are deposited before
`and after the [layers allegedly deposited by
`the claimed method steps].
`
`Mr. NASH: …
`So if you were to look at Slide 11, Your Honor, as
`you see on here, there's Claim 2. It's blank. They say
`this is an asserted claim, but it's blank. And, Your
`Honor, this is every single claim in the '657 patent
`except for Claim 1.
`And similarly in the '276, the majority of the claims
`there as well, there's nothing there. It's a placeholder
`that says we'll tell you when we tell you.
`
`THE COURT: Well, let's find out from the plaintiff
`when they intend to tell you -- when they intend to fill
`in those blanks. What deadline, Mr. Wells, are you
`assuming you're going to get that done by?
`
`Mr. WELLS: So, Your Honor, those claims relate
`to the deposition of thin films that are oxides.
`
`Jan. 26, 2021 Tr. at 68:13–69:1; Dkt. No. 129 (excerpt from contentions); 6:20-cv-636, Dkt. No. 146 (excerpt from contentions)
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`Defendants’ Markman
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`5
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`Court’s Prior Construction of Claim 1’s Preamble (Only “Insulating
`Substrate” Is Limiting) Is Not Applicable to Claim 2
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 7 of 37
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`’657 Patent, Claim 1
`
`’657 Patent, Claim 2
`
`Unlike claim 2, no limitation in body of claim
`reciting “depositing”/“deposited” or “film”
`
`Unlike claim 1, “depositing” clearly linked
`and not just intended use
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`Defendants’ Markman
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`6
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`Preamble of Claim 2 Is Analogous to Bio-Rad (Preamble Limiting)
`Bio-Rad Patent
`’657 Patent
`
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 8 of 37
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`“We also are disinclined to sanction finding a preamble ‘partially’ limiting by
`splicing it as the district court did here. The fact that the terms ‘reaction’ and
`‘microfluidic systems’ provide antecedent basis for these terms in the body of the
`claim is a strong indication that the preamble acts “as a necessary component of the
`claimed invention.” Based on the antecedent relationship, it is clear the claim
`drafters intended to limit the claimed methods to on-chip reactions, using both
`the preamble and the body of the claim to define the claimed invention.”
`
`Bio-Rad Laboratories, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1371 (Fed. Cir. 2020)
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`Defendants’ Markman
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`7
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`Claim 2’s Preamble Is Different from Tom-Tom Case Demaray Relies on
`Tom-Tom Patent
`’657 Patent
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 9 of 37
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`“However, the court erred in determining that it had to construe the entire preamble if
`it construed a portion of it. That the phrase in the preamble ‘destination tracking
`system of at least one mobile unit’ provides a necessary structure for claim 1 does
`not necessarily convert the entire preamble into a limitation, particularly one that
`only states the intended use of the invention. Thus, the generating language is
`not limiting and does not provide an antecedent basis for any of the claims. Rather,
`it is language stating a purpose or intended use and employs the standard
`pattern of such language: the words ‘a method for a purpose or intended use
`comprising,’ followed by the body of the claim, in which the claim limitations
`describing the invention are recited.”
`TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323-24 (Fed. Cir. 2015)
`8
`Defendants’ Markman
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 10 of 37
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`“wherein an oxide material . . .”
`’657 Patent, Claim 2
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`Defendants’ Markman
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`9
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`“Wherein an oxide material is deposited … by reactive sputtering …”
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 11 of 37
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`Claim Term
`
`Tentative Construction
`
`“wherein an oxide material is deposited on the
`substrate, and the insulating film is formed by
`reactive sputtering in a mode between a metallic
`mode and a poison mode” (’657 patent, claim 2)
`
`Plain-and-ordinary meaning
`
`Fine-Tuned Dispute: Whether the plain-and-ordinary meaning of the “wherein” clause in claim 2:
`
`1)
`
`requires that the preceding claimed method steps result in “an oxide material [being]
`deposited on the substrate… by reactive sputtering” (as Defendants propose); or
`
`2) allows the preceding claimed method steps to be wholly unrelated to “an oxide material
`[being] deposited on the substrate” such that the oxide material can be deposited using any
`unclaimed method (as Plaintiff proposes)
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`Defendants’ Markman
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`10
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`Claims: Depositing Oxide Material by Reactive Sputtering
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 12 of 37
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`Plain and Ordinary Meaning
`Method: depositing an
`insulating film on a
`substrate
`Steps: to deposit the
`insulating film on the
`substrate
`Result: deposition of
`oxide material on the
`substrate forming the
`insulating film by reactive
`sputtering
`
`“It is correct that a ‘whereby’ clause generally states the result of the patented process.”
`
`Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005)
`See also Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1376 (Fed. Cir. 2019) (treating “wherein” the same as “whereby”)
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`Defendants’ Markman
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`11
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`Claims: Demaray Disembodies “Oxide Material” Deposition From Rest of Claim
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 13 of 37
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`Demaray’s Alleged Plain and Ordinary Meaning
`Method #1: depositing
`an insulating film on a
`substrate
`Method #1 Steps: to
`deposit the insulating
`film on the substrate
`
`and an oxide material is deposited on the substrate
`[by any method]
`
`Method #1 Result: the
`insulating film is formed by
`reactive sputtering
`Method #2: separately
`depositing oxide material
`on the substrate by any
`method, including
`disparaged CVD
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`Defendants’ Markman
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`12
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`

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`“Wherein an oxide material is deposited … by reactive sputtering …”
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 14 of 37
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`Claim Term
`
`Fine-Tuned Construction
`
`“wherein an oxide material is deposited on the
`substrate, and the insulating film is formed by
`reactive sputtering in a mode between a metallic
`mode and a poison mode” (’657 patent, claim 2)
`
`“resulting in an oxide material is deposited on
`the substrate, and the insulating film is formed by
`reactive sputtering in a mode between a metallic
`mode and a poison mode” (’657 patent, claim 2)
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`Defendants’ Markman
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`13
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`Claims: Claim 9 Requires Oxygen Used to Form Insulating Film in Claim 2
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 15 of 37
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`Defendants’ Markman
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`14
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`Specification: Claims Cannot Cover Prior Art Methods of
`Depositing Insulating Films
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 16 of 37
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`’657 Patent at 2:3-24; 2:25-28; 4:48-57
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`Defendants’ Markman
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`15
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`Specification: Problem - Need for New Methods of Depositing Insulating Films
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 17 of 37
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`’657 Patent at 2:39-41
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`Defendants’ Markman
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`16
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`Specification: Solution - Biased Pulsed DC Reactive Sputtering of Insulating Films
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 18 of 37
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`’657 Patent at Title, Abstract, 1:10-13
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`Defendants’ Markman
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`17
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`Specification’s Description of “Substrate” (Not Claimed Reactive Sputtering
`Process) Does Not Support Demaray’s Disembodied Claim Interpretation
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 19 of 37
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`Demaray’s Responsive Brief
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`Dkt. 134 at 5
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`Defendants’ Markman
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`18
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`Specification Description of “Substrate” (Not Claimed Reactive Sputtering
`Process) Does Not Support Demaray’s Disembodied Claim Interpretation
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 20 of 37
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`’657 Patent at Claim 2
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`See also Dkt. 46 at 6
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`’657 Patent at 7:53-8:4
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`Defendants’ Markman
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`19
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`Specification: Claims Cannot Cover Prior Art Methods of
`Depositing Insulating Films
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 21 of 37
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`’657 Patent at 2:3-24; 2:25-28; 4:48-57
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`Defendants’ Markman
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`20
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`Specification Description of Depositing Other Non-Oxide Materials
`Does Not Support Demaray’s Disembodied Claim Interpretation
`Demaray’s Responsive Brief
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 22 of 37
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`Oxide Required
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`Dkt. 134 at 3
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`Oxide Not Required
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`Defendants’ Markman
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`21
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`Prosecution History: Does Not Support Demaray’s Disembodied
`Claim Interpretation
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 23 of 37
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`11/15/2007
`Non-Final Rejection
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`12/18/2007
`Applicant’s Response
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`Applicant amends the claim to overcome prior art rejection
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`Ex. C (Dkt. 128-4) at 8, 41
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`Defendants’ Markman
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`22
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`Prosecution History: Does Not Support Demaray’s Disembodied
`Claim Interpretation
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 24 of 37
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`oxide film
`•
`conducting
`•
`insulating
`
`insulating film
`•
`oxides
`•
`other material
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`Ex. C (Dkt. 128-4) at 8, 41
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`Defendants’ Markman
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`23
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`Prosecution History: Does Not Support Demaray’s Disembodied
`Claim Interpretation
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 25 of 37
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`oxide film
`•
`conducting
`•
`insulating
`
`insulating film,
`comprising
`oxide material
`
`insulating film
`•
`oxides
`•
`other materials
`
`Ex. C (Dkt. 128-4) at 8, 41
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`Defendants’ Markman
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`24
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`Prosecution History: Does Not Support Demaray’s Disembodied
`Claim Interpretation
`
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 26 of 37
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`11/15/2007
`Non-Final Rejection
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`12/18/2007
`Applicant’s Response
`
`Why? Claim 85 is rejected over Smolanoff in view of Fu and Li
`
`Ex. C (Dkt. 128-4) at 32-33, 41, 44-45
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`Defendants’ Markman
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`25
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`Prosecution History: Does Not Support Demaray’s Disembodied
`Claim Interpretation
`
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 27 of 37
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`11/15/2007
`Non-Final Rejection
`
`12/18/2007
`Applicant’s Response
`
`Applicant amends the claim to overcome prior art rejection
`
`Ex. C (Dkt. 128-4) at 8, 41
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`Defendants’ Markman
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`26
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`

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`“Wherein an oxide material is deposited … by reactive sputtering …”
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 28 of 37
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`Claim Term
`
`Fine-Tuned Construction
`
`“wherein an oxide material is deposited on the
`substrate, and the insulating film is formed by
`reactive sputtering in a mode between a metallic
`mode and a poison mode” (’657 patent, claim 2)
`
`“resulting in an oxide material is deposited on
`the substrate, and the insulating film is formed by
`reactive sputtering in a mode between a metallic
`mode and a poison mode” (’657 patent, claim 2)
`
`Defendants’ Markman
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`27
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`

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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 29 of 37
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`Appendix / Rebuttal Slides
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`Defendants’ Markman
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`28
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`Specification: “Poison Mode” and “Metallic Mode” Reinforces Oxide Material
`Deposited by Reactive Sputtering
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 30 of 37
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`Defendants’ Markman
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`29
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`Specification: “Poison Mode” and “Metallic Mode” Reinforces Oxide Material
`Deposited by Reactive Sputtering
`
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 31 of 37
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`Poison Mode
`
`Metallic Mode
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`’657 Patent at 10:46-48, 11:28-35, 12:5-9
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`Defendants’ Markman
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`30
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`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 32 of 37
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`Demaray’s Response to Specification’s Definitional Statement on
`“Poison Mode” Is Unpersuasive
`Demaray’s Sur-Reply
`
`Dkt. 136 at 2
`“Lenovo argues that this language does no more than describe a single embodiment implementing a NIM
`template as XML rather than compiled code. That argument is unpersuasive. The key language in the
`specification—that ‘the definition of the NIM is content, rather than compiled code’—is not limited to the ‘one
`embodiment’ in Figure 13. It defines, generally, what a NIM is.
`Lenovo Holding Co., Inc. v. DoDots Licensing Sols. LLC, No. 2021-1247, 2021 WL 5822248, at *3 (Fed. Cir. Dec. 8, 2021) (emphasis added)
`31
`Defendants’ Markman
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`Federal Circuit Rejected Demaray’s “Some Embodiments” Argument
`DoDotsPatent
`’657 Patent
`
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 33 of 37
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`U.S. Patent No. 9,369,545 at 21:55-22:3
`
`’657 Patent at 10:41-60
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`Defendants’ Markman
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`32
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`

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`Demaray’s Misleading Reliance on Claim 4 Does Not Support Its
`Disembodied Claim Interpretation
`Demaray’s Responsive Brief
`
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 34 of 37
`
`Claim 4
`
`Dkt. 134 at 3
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`Defendants’ Markman
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`33
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`Original Claim 86 Deposited Oxide Films, Claim 2 Covers Both Oxide and
`Oxynitride Insulating Films
`Demaray’s Responsive Brief
`
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 35 of 37
`
`’657 Patent
`
`Dkt. 134 at 4 (red underlines in original)
`Original Claim 86: Only Oxide Films
`
`’657 Patent, 1:10-13
`Claim 2: Oxides and Oxynitrides
`
`Defendants’ Markman
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`34
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`Demaray’s Theory that Applicants Intended to Claim Disembodied
`Deposition of Material on Substrate is Not Credible and Unsupported
`
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 36 of 37
`
`Method #1 Steps
`
`Method #2:
`separately
`depositing
`material on
`the substrate
`by any
`method
`Method #1 Steps
`
`657 Patent, File History (Aug. 9, 2006 Amendment) at 2-4, 5
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`Defendants’ Markman
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`35
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`Procedural Posture as of Jan. 7, 2022 Hearing
`
`Case 6:20-cv-00636-ADA Document 176-2 Filed 03/03/22 Page 37 of 37
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`MR. WELLS: … The first -- and I've discussed this with counsel for the defendants -- obviously we have
`a schedule in place. Currently, there's a number of reactors that we've identified through this discovery
`process that might ultimately be at issue, but we don't want to go take deep dives of discovery on
`reactors that ultimately don't have something that we think is the narrow band-rejection filter or
`an equivalent. We don't want to burden the defendants by doing that. That's not in anybody's interest,
`and we don't want to waste anybody's resources, including the Court, doing so.
`
`But ultimately, once we determine which reactors we believe have a narrow band-rejection filter
`or an equivalent, we're going to need discovery on the products that are produced, damages
`documents, that kind of thing. That's going to take some time. So we wanted just to make the Court
`aware of this issue because we don't want to come back to the Court in March and say, your Honor, we
`need this other discovery now that we've determined which ones are at issue and be in a position where
`the Court's wondering why we didn't raise it earlier.
`
`THE COURT: You know, you guys have come to me repeatedly and let me know where you're
`at. You've been good stewards to your clients. Y'all can just work out whatever scheduling issues
`you have to make sure that everything gets done, and we'll figure it out on our end after that
`happens.
`
`Jan. 7, 2022 Discovery Hearing Tr. at 30:2-31:3
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`Defendants’ Markman
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`36
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