Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 1 of 13
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`DEMARAY LLC,
`Plaintiff,
`
`v.
`
`SAMSUNG EECTRONICS CO., LTD
`(A KOREAN COMPANY), SAMSUNG
`ELECTRONICS AMERICA, INC.,
`SAMSUNG SEMICONDUCTOR, INC.,
`and SAMSUNG AUSTIN
`SEMICONDUCTOR, LCC
`
`Defendants.
`
`Case No. 6:20-cv-00634-ADA
`
`JURY TRIAL DEMANDED
`
`PUBLIC VERSION
`
`DEMARAY LLC'S BRIEF IN SUPPORT OF ITS MOTION TO
`AMEND FINAL INFRINGEMENT CONTENTIONS
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 2 of 13
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`I.
`
`INTRODUCTION
`
`Critical, recently-produced information from Samsung's and Intel's
` has revealed that Defendants failed to disclose to Demaray and this
`Court the full scope of their infringing activities. In the last few weeks,
` produced
`documents confirming that its
`
`
` Defendants also recently confirmed that they use all of these chambers. Demaray
`respectfully moves for leave to add these products to its Final Infringement Contentions.
`Throughout discovery, Demaray has diligently sought to discover the full complement of
`reactors that Intel and Samsung use in manufacturing various semiconductor products that are
`configured in accordance with Demaray's '276 and '657 patents. To that end, on June 15, 2021,
`Demaray served interrogatories asking Defendants to
`
`
` Exs. A-B (Defs. Resp. to Interrogatory 1). Notwithstanding Defendants'
`agreement to identify such chambers, numerous conferences, motions to compel and
`
`
`(9/27/2021 Tr. 42:19-23), Defendants failed to provide full disclosures, instead limiting or
`withholding pertinent information at every turn in an apparent attempt to bypass this Court (and
`its transfer ruling that Demaray's claims be heard here) and instead have certain of their chambers
`addressed in the co-pending Northern District of California case filed by
` ("ND Cal case").
`Based on the disclosures at the time of its Final Infringement Contentions (FICs), Demaray focused
`on the
`
`chambers, and Demaray
`expressly reserved the right to add additional infringing chambers, if later discovered.
`As a result of Demaray's continuing investigation, on September 30 and October 4, 2022,
`Demaray received
`
`confirming
`that additional Intel/Samsung chambers use Demaray's patented chamber
`configuration. In particular,
` produced evidence showing that its
`
`contain the
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 3 of 13
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` Samsung have confirmed, for the first time, on November 3 and
`
`—and
`November 8, 2022, usage of
`
` chambers
`.
` recent
`production also confirmed that Defendants'
` chambers utilize a similar infringing
`combination.
`In light of these changed circumstances and other recent developments, Demaray has more
`than good cause to serve supplemental final infringement contentions that identify the additional
`infringing
` and
` chambers. Demaray did not delay this important
`amendment, serving contentions in the ND Cal case and requesting leave here shortly after
`obtaining both the previously unproduced evidence and confirmation that Defendants use these
`chambers. Defendants also will not be prejudiced in their ability to respond to Demaray's
`allegations and should not be rewarded for withholding this information for so long. As evident
`from the contentions Demaray has already served in the ND Cal Case, Demaray's infringement
`allegations against the
` chambers track those already in play for the
`
` chambers. As such, Defendants already are on notice of these contentions given that
` and Defendants share the same counsel. Allowing amendment also avoids a separate
`lawsuit on these chambers, which is efficient for both the parties and the Court.
`II.
`BACKGROUND
`A.
`The Demaray Patents
`The Demaray patents cover novel configurations for PVD chambers involving: (1) pulsed
`DC; (2) RF bias "to the substrate;" and (3) a NBRF, e.g., to protect the DC power from harmful
`RF feedback. For the RF bias element, the patent claims require "RF bias…to the substrate" (Ex.
`C, '657, cl. 1) or an "RF bias power supply coupled to provide an RF bias to the substrate" (Ex.
`D, '276, cl. 6). There is no claim limitation requiring only a direct connection of the RF generator
`to the substrate. The patent specification instead specifically contemplates that the substrate could
`be biased because of capacitive coupling of the RF to the substrate through the plasma. Id., 5:26-
`27.
`
`The coupling identified in the patent specification is at issue in this case, where an RF
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 4 of 13
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`generator connected to a target induces an RF bias on the substrate through capacitive coupling.
`
`
`
`
`
`
`
`
`
`
`B.
`Defendants' Deficient Disclosures
`Early in discovery, the parties agreed
`
`
` See 1/26/2021 Tr. at
`21:15-18. When general discovery opened in June 2021, Demaray immediately asked Defendants
`to identify
`
` Exs. A-B (Resp. to Interrogatory 1). By September 27, 2021, Defendants
`claimed they had provided a complete list of such reactors:
`
`
` 9/27/2021 Tr. 9:17-20. To resolve any ambiguity,
`
`the Court ordered Defendants to
` Id. at 42:19-23. These agreed-upon and Court-ordered disclosure obligations
`have not changed. See, e.g., 4/1/22 Tr. 3:24-4:3
`
`
`
`
`
`It is now apparent that Defendants did not disclose all reactor chambers with
` Based on the recently-produced
` chambers include
`
` Exs. H-I
`
` chambers in its
`
` Samsung did not identify its use of
`
`, it is evident that the
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 5 of 13
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`responses to Demaray's discovery requests. Ex. B (Resp. Rog. 1). And it only confirmed the use
`of
`chambers last week. Ex. J 11/8/2022.
`
`
`
`
`
`
`
`
`C.
`Demaray's Infringement Contentions
`Demaray served its Supplemental Final Infringement Contentions on July 13, 2022.
`Because
` third-party
`
` for the
` chambers had
`
`, the focus of Demaray's FICs was on those chambers. Demaray's contentions
`detailed that the chambers included
`
`
`
`
` See
`
` Samsung FICs ('276) at L (same).
`In the Third Revised Scheduling Order entered May 6, 2022 setting the applicable deadline,
`
`and in its FICs, Demaray expressly reserved the right to amend should previously undisclosed
`
`information be obtained. See, e.g., D.I. 169, n. 1 ("Plaintiff Demaray expressly reserves the right to
`
`amend its Final Infringement Contentions after July 13, 2022, to address new information obtained
`
`from Defendants or their suppliers regarding the presence of any protective filters or alternative
`
`protective mechanisms…."). Demaray included this reservation because of Defendants' continuing
`efforts to obfuscate the full scope of their use of reactors.
`D.
` Confirms Other Chambers With Infringing Configurations
`While Demaray has been seeking complete discovery and trying to remedy long-running
`deficiencies, Demaray recently received directly from
` information that exposed
`Defendants' failure to abide by their disclosure agreements and the Court's orders. On September
`30 and October 4, 2022, after the deadline for FICs in this case,
` provided technical details
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 6 of 13
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` and
`confirming infringing configurations in the
`chambers,
` produced documents showing the presence of
`
` also provided
` Exs. Q-R. For the
`documents confirming the presence of
`
` chambers. For the
`
`
`
` Exs. H, M-O (BOM, manual,
` showing the use of a
` similarly provided
`
` Ex. I. The use of
`
`
`the same
`
` was surprising given Defendants' assertions that the
`
`On October 28, 2022, Demaray served its Preliminary Infringement Contentions in the ND
`Cal Case addressing this recently-produced discovery. Demaray also promptly raised the issue
`with Defendants, who finally confirmed using
` in addition to the
` chambers, but
`refused to provide further discovery absent infringement contentions in the Texas cases.
`III. APPLICABLE STANDARD
`The Court's Standing Order Governing Proceedings (OGP) 4.2—Patent Cases provides
`that after the deadline for serving final infringement contentions, "leave of Court is required for
`any amendment …." OGP at 14. A party may amend upon a showing of good cause. Id.; Fed. R. Civ.
`
`P. 16(b)(4). The following factors determine whether good cause is present: (1) the explanation for the
`
`failure to meet the deadline; (2) the importance of the amendment; (3) potential prejudice in allowing
`
`the amendment; and (4) the availability of a continuance to cure such prejudice. MV3 Partners LLC v.
`
`Roku, Inc., No. 6:18-cv-00308-ADA, (W.D. Tex. Mar. 23, 2020), Dkt. 145 at 1-2. Amendments also
`
`are contemplated. For example, the OGP expressly directs a party "to seasonably amend if new
`
`information is identified after initial contentions." Id.
`IV. DEMARAY SHOULD BE GRANTED LEAVE TO AMEND
`Each of the relevant factors weighs in favor of finding good cause to allow Demaray to
`include infringement claims against the
`
` the
` chambers
`(Samsung), and the
` chambers
`. The Court has noted the complexity of this case,
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 7 of 13
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`stating that
`
`
` 12-16-2021 Tr. 39:14-19. But
`Defendants' late disclosures have prejudiced Demaray's investigation to date.
`A.
`Defendants Withheld Critical Information That Prevented Demaray From
`Identifying The
` And
` Chambers In Its Original FICs
`
`Defendants did not disclose the configuration and use of the Additional Chambers until
`well after Demaray served its FICs. Early in discovery, the parties agreed that Defendants would
`provide a complete list of
`
` is used.
` (see Exs. A-B, Rog. 1) and determine if an
`
`Despite this commitment, Defendants limited their disclosures to
` apparently deeming anything else irrelevant, despite the
`teachings of the Demaray patents and
`own patents. This unilateral determination was
`undisclosed and directly contrary to
` own recent disclosures that
`
`
`
`
`On September 30, 2022,
`chambers confirming the use of
`
` produced representative
`
` for
`
`
`
`
` also produced its internal specification for
` Ex. H.
` Ex. Q. Before this, Defendants and
` had
` confirming that it is a
` used in these chambers or identified the
`
`
` chambers.
` On November 8, counsel for Samsung confirmed Samsung uses
`Ex. J (11/8/22 email).1 These confirmations were new to Demaray, who had no reason to follow-
`up before because Defendants never disclosed that they used
`chambers.
`Defendants have tried to justify their incomplete disclosures by arguing that, in the
`
`the
`not detailed the
`
` used.
`
`
`
`
`1 While counsel for Samsung alleges that he confirmed use of such chambers on 11/4/22
`at a meet and confer, he actually stated that he would have to get back to Demaray on Samsung's
`use during those discussions.
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 8 of 13
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`chambers, the
`
`
` In essence, Defendants
`have unilaterally deemed these chambers to be non-infringing—without telling Demaray or the
`Court. But Defendants' non-infringement arguments are unsupported. First, for the relevant RF
`limitations, the patent claims require, e.g., "RF bias…to the substrate" (Ex. C, '657, cl. 1) or a
`"RF bias power supply coupled to provide an RF bias to the substrate" (Ex. D, '276, cl. 6). There
`is no requirement that the RF bias power supply be "directly" coupled to the substrate. The patent
`specification discloses that coupling can be achieved indirectly, e.g., through capacitively coupling
`through the plasma (Ex. D, '276 5:26-27)—teachings in the patents that Defendants apparently
`ignore. Second, Demaray on its own has located various
`
`
`
`Similarly, with regard to the
`materials confirming the presence of
`
`use of the same
`
`in the
`
`chambers was a surprising revelation given that the
`
`—just as the Demaray patents describe.
` chambers,
` has just produced relevant
`
`
` Ex. I. The
` includes
`
` In addition
` chambers
`
` both Defendants failed to identify that they used the
`to not disclosing
`in their discovery responses.
` witness testified (in a limited
`Demaray expects Defendants to argue that an
`
`deposition taken during venue discovery) that the
` and that Demaray purportedly dropped these chambers thereafter. Ex. S (Miller
`Depo., 75:3-11, 77:1-6; 92:8-11). Relying on this venue discovery is fundamentally flawed for
`several reasons. Demaray had no reason to probe further in view of Intel and Samsung's
`interrogatory responses, until Demaray learned that those interrogatory responses were incomplete
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 9 of 13
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` chambers, which came to light on November
`and that Intel and Samsung actually use the
`3 and November 8, 2022 (respectively). Additionally, Demaray also now knows that the testimony
`on the
` was not accurate.
`
`
`
`
` confirm the basis
`
` Again,
`
`
`
`for Intel's determination is inaccurate.
`In short, Demaray has been more than reasonably diligent when considering the many
`obstacles, described above, thrown up throughout the discovery process. In similar circumstances,
`courts have allowed leave to amend the contentions. See Mediostream, Inc. v. Microsoft Corp.,
`No. 208CV369CE, 2010 WL 4118589, at *3 (E.D. Tex. Oct. 18, 2010) (plaintiff was diligent and
`could not have made amendments prior to receiving the source code repository); Nidec Corp. v.
`LG Innotek Co., No. 6:07CV108-LED-JDL, 2009 WL 3673253, at *2 (E.D. Tex. Sept. 2, 2009)
`(granting motion to amend contentions after defendants delayed discovery regarding additional
`potentially infringing products); Mass Engineered Design, Inc. v. Ergotron, Inc., No. 206 CV 272,
`2008 WL 1930299, at *3 (E.D. Tex. Apr. 30, 2008) (first factor favored amendment when plaintiff
`was denied access to discovery until only shortly before the deadline to amend).
`B.
`The Amendments Are Highly Important
`These important amendments to the FICs identify three additional infringing reactor
`chambers allowing a full adjudication of the issues regarding Samsung's and Intel's use on the
`merits. Demaray has a clear factual basis to add these allegations. Indeed, if these reactors are not
`included in this litigation, Demaray may be forced to file additional suits on overlapping
`infringement/validity issues to protect its rights. This highlights the importance of the amendment
`and the justification. See GREE, Inc. v. Supercell Oy, No. 2:19-CV-00310-JRG-RSP, 2020 WL
`7396506, at *3 (E.D. Tex. Dec. 17, 2020) ("For the sake of judicial economy, it would be very
`advantageous to include the amended infringement contentions to avoid another suit."); TiVo, Inc.
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 10 of 13
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`v. Verizon Commc'ns, Inc., No. 2:09-CV-257-JRG, 2012 WL 2036313, at *2 (E.D. Tex. June 6,
`2012) (granting leave to amend to add a product because "[w]ithout inclusion, the entire dispute
`between the parties will not be adjudicated and a subsequent lawsuit may be necessary.").
`C.
`Defendants Will Not Suffer Prejudice
`Allowing the amendment will not cause prejudice. Defendants have been on notice that all
`
` Exs. A-B (Resp. to Rog. 1). As more information has been obtained,
`Demaray has narrowed its allegations, significantly decreasing the number of reactor chambers at
`issue to those where an
` is readily apparent.
`
`
`
` For Samsung, Demaray
`agreed to a similar narrowing and reservation. Ex. U (10/7/2022 email). As noted, Demaray was
`careful to preserve its rights regarding the
` chambers of which it knew by that time and
`other chambers, e.g., the
` as to which disclosures had not been provided.
`Defendants will argue that the amendments will dramatically expand the scope of the
`case and claim all kinds of prejudice. But the hyperbole that Demaray can foresee is not
`grounded in reality.
`
`
`
` For the RF bias limitation, Demaray specifically cited to both the
`
`
`
`
`
`
`
`on the
`
`
`. This is important given Intel's assertion that it
` Thus, the infringement read
` for the additional chambers—i.e., that the
` overlap. Moreover, Demaray's proposed amended FICs contain
`arguments that Defendants (at least their counsel) have already seen on account of the
`preliminary infringement contentions served in the ND Cal Case, which take into account
`
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 11 of 13
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` recent productions. On the validity side, Defendants are largely estopped given their
`failed IPRs under 35 U.S.C. § 315(e), but for what remains, given the overlapping infringement
`reads, no new validity arguments should arise.
`Demaray recognizes that Defendants will need to supplement their disclosures to provide
`financial information relating to the products manufactured using these chambers, and to update
` for these chambers. But these are all points on which
`Demaray has been requesting complete discovery from Defendants for some time and should be
`provided before the close of fact discovery in February 2023. Finally, Defendants should not be
`heard to complain of prejudice of their own making. Had Defendants not unilaterally deemed the
`chambers at issue to be non-infringing (contrary to the teachings of the Demaray patent and the
`), Demaray would have included these arguments in its FICs long ago.
`D.
`The Availability Of A Continuance
`The final factor is the availability of a continuance to cure any purported prejudice. This
`factor is either neutral or favors Demaray. As noted, Demaray has been working with Defendants
`to complete discovery and depositions under the current schedule. This can be accomplished if
`Defendants provide discovery and appropriate supplementations that have been requested and
`provide fact witnesses for deposition. The parties agreed to trial in September 2023. To the extent
`that compression of some pretrial dates becomes necessary, the parties should be able to do so
`(e.g., reverting to recommended timelines under the OGP) without moving the trial date.
`V.
`CONCLUSION
`Demaray received information that necessitates an amendment to its FICs to identify
`additional infringing products. The balance of factors confirms that good cause exists to allow the
`requested amendment.
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`Case 6:20-cv-00636-ADA Document 249 Filed 11/21/22 Page 12 of 13
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`Dated: November 11, 2022
`
`/s/ C. Maclain Wells
` By: C. Maclain Wells
`Richard D. Milvenan
`State Bar No. 14171800
`Travis C. Barton
`State Bar No. 00790276
`MCGINNIS LOCHRIDGE LLP
`1111 W. 6th Street, Suite 400
`Austin, Texas 78703
`Telephone: (512) 495-6000
`Facsimile: (512) 495-6093
`rmilvenan@mcginnislaw.com
`tcbarton@mcginnislaw.com
`
`Morgan Chu
`Benjamin W. Hattenbach
`Annita Zhong
`Samuel K. Lu
`Olivia Weber
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`mchu@irell.com
`bhattenbach@irell.com
`azhong@irell.com
`slu@irell.com
`oweber@irell.com
`
`C. Maclain Wells
`FOLIO LAW GROUP PLLC
`C. Maclain Wells (221609)
`2376 Pacific Ave.
`San Francisco, CA 94115
`(415) 562-8632
`maclain@foliolaw.com
`
`Attorneys for Demaray LLC 
`
`
`
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`CERTIFICATE OF SERVICE
`A true and correct copy of the foregoing instrument and its attachments were served
`electronically via email upon all counsel of record on this 11th day of November, 2022.
`
`By: /s/ Jeffrey Linxwiler
`Jeffrey Linxwiler
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