Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 1 of 20
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`DEMARAY LLC,
`
`Plaintiff
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG SEMICONDUCTOR,
`INC., and SAMSUNG AUSTIN
`SEMICONDUCTOR,
`LLC,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`CASE NO. 6:20-cv-00636-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`PUBLIC VERSION
`
` RESPONSE IN OPPOSITION TO
`SAMSUNG’S
`DEMARAY’S MOTION TO AMEND FINAL INFRINGEMENT CONTENTIONS
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 2 of 20
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ......................................................................................................... 1
`BACKGROUND ........................................................................................................... 2
`ARGUMENT ................................................................................................................. 6
`Demaray Cannot Show Good Cause To Amend Its Infringement
`A.
`Contentions ........................................................................................................ 6
`Demaray Already Accuses These Exact Products in Its Supplier Case ............. 9
`Demaray Is Estopped from Pursuing Its Proposed Amendments .................... 10
`Demaray’s Proposed Amendments Would Be Highly Prejudicial To
`Samsung ........................................................................................................... 13
`CONCLUSION ............................................................................................................ 13
`
`B.
`C.
`D.
`
`
`
`I.
`II.
`III.
`
`IV.
`
`
`i
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 3 of 20
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`
`
` ...........................................................................3, 10
`
`CommScope Techs. LLC v. Dali Wireless Inc.,
`10 F.4th 1289 (Fed. Cir. 2021) ................................................................................................13
`
`CyWee Grp. Ltd. v. Huawei Device Co.,
`No. 2:17-CV-495-WCB, 2018 WL 4002776 (E.D. Tex. Aug. 22, 2018)
`(Bryson, J., sitting by designation) ..........................................................................................10
`
`New Hampshire v. Maine,
`532 U.S. 742 (2001) .................................................................................................................13
`
`Tegic Commc’ns Corp. v. Board of Regents of the Univ. of Texas Sys.,
`458 F.3d 1335 (Fed. Cir. 2006)................................................................................................10
`
`Trs. of Columbia Univ. v. NortonLifeLock, Inc.,
`No. 3:13-cv-00808, 2019 WL 7040931 (E.D. Va. Dec. 20, 2019) ..........................................13
`
`Upaid Sys., Ltd. v. Ocean Breeze Pac., LLC,
`No. 18-cv-00744, 2018 WL 5279568 (C.D. Cal. July 25, 2018) .............................................10
`
`Other Authorities
`
`U.S. Patent No. 7,381,657................................................................................................................4
`
`U.S. Patent No. 7,544,276................................................................................................................4
`
`
`
`
`
`
`ii
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 4 of 20
`
`
`
`I.
`
`INTRODUCTION
`
`Demaray seeks to accuse two additional products under a brand-new infringement theory
`
`that directly contradicts Demaray’s prior positions taken before this Court and the Patent Office.
`
`Demaray’s motion should be denied for at least four independent reasons.
`
`First, Demaray cannot show good cause to amend. Demaray has known about these
`
`products, as well as their use by Samsung, for years, yet Demaray knowingly declined to advance
`
`its new infringement theory against those products in any of its prior nine sets of contentions.
`
`Samsung disclosed its use of the
`
` long ago—going back to
`
`Samsung’s document production in this case from December 2020. The question of whether
`
` should be in this case has already been decided: the Court recently denied Demaray’s
`
`motion to compel discovery on
`
` finding no good cause for injecting it into the case
`
`now. See Ex. 1 (Sept. 14, 2022 Hr’g Tr.) at 17:14-16; Dkt. 224.1 The
`
` should
`
`be treated in the exact same way—indeed, Demaray has specifically relied (since August 2021) on
`
`a document showing the specific structure and operation of Samsung’s implementations of
`
`
`
` (in the Samsung-produced
`
` manual) in its infringement contentions,
`
`albeit for a purpose unrelated to
`
`confirming (1) Demaray’s knowledge of precisely how
`
` work, and (2) its decision not to accuse
`
`until now. The Court long ago
`
`put Demaray on notice that it may not hide the ball on its contentions where, as here, Samsung
`
`provided Demaray will all relevant information about its products. Ex. 2 (Jan. 26, 2021 Hr’g Tr.)
`
`at 73:15-74:14 (“[I]f the defendants are able to show that they were prejudiced by not getting
`
`adequate infringement contentions at this time, despite the fact that they -- the defendants had
`
`
`1 All citations to “Ex. 1-14” herein refer to the exhibits to the Declaration of Kat Li in Support
`of Samsung’s Sealed Opposition to Demaray’s Motion to Amend Its Infringement Contentions,
`filed contemporaneously herewith.
`
`1
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 5 of 20
`
`
`
`produced sufficient information, I will take into consideration striking any of those claims for
`
`which there are not sufficient infringement contentions.”). Having chosen not to assert its new
`
`infringement theory over the past 2.5 years, it is far too late for Demaray to inject this theory into
`
`the case now.
`
`Second, Demaray is already litigating infringement of the exact same products in an
`
`infringement case against
`
`—the manufacturer of these products. There is simply
`
`no reason to prejudicially disrupt these proceedings to duplicate those parallel proceedings against
`
`Samsung’s supplier in the present customer suit. The relief sought by Demaray’s motion will
`
`only burden the Court unnecessarily, and unduly prejudice Samsung.
`
`Third, Demaray should be estopped from pursuing its new infringement theory. Demaray
`
`explicitly circumscribed the scope of the patents and of discovery (before this Court and at the
`
`PTAB) to exclude products with the very same configuration Demaray now seeks to accuse. This
`
`Court, the PTAB, and the parties have all relied on Demaray’s prior representations about the
`
`scope of the technology at issue, and Demaray should be held to its prior position.
`
`Finally, Samsung would be significantly prejudiced by Demaray’s new theory of
`
`infringement. Samsung has already litigated invalidity before the PTAB based upon Demaray’s
`
`prior representations concerning the scope of its patents. Now that those proceedings are
`
`concluded, Samsung would be deprived of the full opportunity to litigate the invalidity of
`
`Demaray’s patents under the same claim scope that Demaray needs to maintain in order to pursue
`
`its new infringement theory.
`
`II.
`
`BACKGROUND
`
`This case involves two patents relating to physical vapor deposition (“PVD”) chambers
`
`used to manufacture microprocessors and chipsets. All presently accused chambers are
`
`manufactured by non-party
`
`, and Samsung is the end user of those third-party
`
`2
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 6 of 20
`
`
`
`chambers.2 There is currently a co-pending litigation between
`
` and Demaray in
`
`which Demaray accuses Applied Materials of infringing the same two patents at issue in this case.
`
` Demaray
`
`has served infringement contentions in that parallel supplier suit, and the two products Demaray
`
`seeks to add to this case
`
` are already accused there.
`
`The present case has been pending for nearly 2.5 years, during which Demaray has served
`
`nine sets of infringement contentions; its proposed amended contentions would be the tenth. This
`
`Court long ago admonished Demaray that it would not be allowed to proceed on infringement
`
`contentions where it chose not accuse certain products after receiving “sufficient information”
`
`from Samsung that would allow Demaray “to provide more robust infringement contentions.” Ex.
`
`2 at 73:15-74:14. And just two months ago, the Court denied Demaray’s motion to compel
`
`regarding the
`
` that Demaray seeks to accuse (again). Dkt. 224.
`
`Pursuant to the Court’s scheduling order (Dkt. 229), the parties recently met and conferred
`
`to discuss case narrowing. Based upon Demaray’s prior representation that it was limiting its
`
`infringement allegations to the
`
` (against which Demaray has asserted
`
`infringement of one of the two patents-in-suit), Samsung was prepared to limit its invalidity case.
`
`However, during the meet-and-confer process, Demaray indicated that it did not intend to limit the
`
`case to the
`
`(the
`
` Instead, Demaray sought to add two additional products
`
` to the case under an entirely new infringement theory.
`
`This is not the first the Court has heard about
`
` Demaray initially accused the
`
`
`2 Demaray recently informed Samsung that
`
`
` Dkt. 245 (Demaray Ex. U). Based
`upon Demaray’s operative infringement contentions, the only remaining accused products in
`
`
`
`3
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 7 of 20
`
`
`
` but abandoned those allegations with its fourth supplemental amended
`
`contentions on December 27, 2021. See, e.g., Ex. 3 (Dec. 27, 2021 Plaintiff’s Fourth Suppl.
`
`Infringement Contentions), Ex. A at 3 (listing only
`
`The
`
`Demaray’s abandonment of its infringement allegations for the
`
`).
`
` and
`
` was
`
`consistent with its position at the time that its claims require an RF power supply connected to the
`
`substrate.3 Demaray’s current operative contentions mention the
`
` in a footnote,
`
`but expressly decline to accuse it because
`
`
`
` Ex. 4 (Jul. 13, 2022 Plaintiff’s Suppl. Final Infringement Contentions), Ex. A at 4, n.2;
`
`see also Ex. 5 (Feb. 9, 2021 Miller Dep. Tr.) at 75:9-11
`
`
`
`
`
`
`
`).4 Just two months ago, Demaray sought to compel additional discovery
`
`concerning the
`
` but the Court denied that request. Dkt. 224. The
`
` has not been previously accused, but, like
`
`
`
`Demaray’s proposed amended contentions seek to accuse the
`
`
`
`
`
`
`
` under an entirely new infringement theory. Up until now, Demaray has insisted that
`
`chambers that lack an RF generator connected to the substrate
`
`
`
`are not accused and are not relevant to this case. See, e.g., Ex. 8 (Sept. 27, 2021 Hr’g Tr.) at 36:14-
`
`
`3 See, e.g., Ex. 6, U.S. Patent No. 7,544,276 (“the ’276 Patent”) at cl. 1 (“an RF bias power
`supply coupled to the substrate”); Ex. 7, U.S. Patent No. 7,381,657 (“the ’657 Patent”) at cl. 1
`(“providing an RF bias at a frequency that corresponds to the narrow band rejection filter to the
`substrate”).
`4 All emphases added unless otherwise indicated.
`
`4
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 8 of 20
`
`
`
`19 (describing “the grouping of reactors that are at issue in this case” as reactors with “an RF bias
`
`generator connected to the substrate”); Ex. 9 (Nov. 17, 2021 Hr’g Tr.) at 9:17-22 (resisting
`
`discovery on “technologies where there was an RF generator connected to the target” because
`
`“nobody disputes that those aren’t accused in this case” and they reflect “an entirely different
`
`reactor configuration” that is “just not relevant to any of the issues in this case”). Demaray’s
`
`proposed amended infringement contentions contradict that prior position and assert that a
`
`chamber configuration with an RF power supply connected to the target (but not the substrate) can
`
`nevertheless infringe. The figures below illustrate the difference between the infringement theory
`
`from Demaray’s current operative contentions and the new infringement theory that Demaray
`
`seeks to advance through its proposed amendment. As shown on the left—which is an annotated
`
`version of Figure 1A from both asserted patents—Demaray’s current infringement theory is based
`
`upon the presence of an RF power supply connected to the substrate at the bottom of the chamber.
`
`Under Demaray’s new infringement theory shown on the right—which is a modified rendition of
`
`Figure 1A from the patents, and which is not disclosed in the asserted patents—the RF power
`
`supply is not connected to the substrate at the bottom of the chamber,
`
`
`
`
`
`As explained below, there is no new factual development supporting this untimely
`
`5
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 9 of 20
`
`
`
`amendment to Demaray’s infringement contentions. Demaray has known about Samsung’s use of
`
`the
`
` for years and has long understood how those chambers are
`
`configured. Demaray’s proposed amendment simply reflects a belated desire to change
`
`infringement theories without any good cause for doing so.
`
`III. ARGUMENT
`A.
`
`Demaray Cannot Show Good Cause To Amend Its Infringement Contentions
`
`Demaray’s motion rests on the false premise that it only recently obtained the knowledge
`
`it needs to accuse the
`
` of infringement. See Mot. 1-4, 6-8. That
`
`is incorrect. Demaray has known about Samsung’s use of the
`
`
`
`for nearly two years, and Demaray has long known the technical features of these products.
`
`Indeed, Demaray previously accused the
`
` before it abandoned that contention.
`
`Compare Ex. 10 (Aug. 16, 2021 Plaintiff’s Third Suppl. Infringement Contentions), Ex. A at 3
`
`(identifying
`
` as one of the accused chambers), with, e.g.,
`
`
`
`Ex. 3 (Dec. 27, 2021 Plaintiff’s Fourth Suppl. Infringement Contentions), at Ex. A at 3 (only
`
`accusing
`
` is not accused).
`
`Moreover, this Court found on September 14, 2022—in a hearing addressing Demaray’s motion
`
`to compel discovery on
`
`—that there was no good cause to allow Demaray to pursue that
`
`product. Ex. 1 at 17:14-16. That reasoning still applies to
`
` and it applies equally to the
`
`
`
`Demaray has known for years that Samsung uses both the
`
`
`
` Samsung produced a
`
`2020 describing the key configurations of the chamber,
`
` on December 11,
`
`
`
`6
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 10 of 20
`
`
`
` Indeed, Demaray’s infringement contentions have cited the
`
`
`
`
`
` since August 16, 2021—yet Demaray did not seek to accuse the
`
` See
`
`Ex. 10 (Aug. 16, 2021 Plaintiff’s Third Suppl. Infringement Contentions) at Ex. A at 72, Ex. B at
`
`36, 54; Ex. 3 (Dec. 27, 2021 Plaintiff’s Fourth Suppl. Infringement Contentions) at Ex. A at 93,
`
`Ex. B at 45, 69; Ex. 4 (Jul. 13, 2022 Plaintiff’s Suppl. Final Infringement Contentions) at Ex. A at
`
`57. Likewise, Demaray has known about Samsung’s use of the
`
` since at least
`
`January 2021. See Ex. 12 (Jan. 18, 2021 Samsung Suppl. Resp. to Transfer Interrog. No. 1 & Ex.
`
`B).
`
`Demaray has long known the relevant technical configuration of the
`
`
`
`
`
` For example, as to the
`
`, on February 9, 2022, Keith Miller,
`
` corporate representative, explained to Demaray that in the
`
` E.g., Ex. 5 at 92:6-11
`
` id. at 92:14-21
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`. And counsel for
`
` id. at 93:1-5
`
` produced
`
`documents and addressed Demaray’s questions concerning the technical details of the
`
`
`
`7
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 11 of 20
`
`
`
` in discovery correspondence in the months that followed. See, e.g., Ex. 14 (Sept. 19,
`
`2021 Email)
`
`As to the
`
`, Mr. Miller confirmed that:
`
`.
`
` E.g., Ex. 5, at 75:9-11
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`80:3
`
`, id. at 79:25-
`
`
`
`; see also id. at 77:1-6.
`
`Demaray has no basis for accusing two new products now, nearly 2.5 years into this case,
`
`based on a new theory that
`
`
`
` constitutes “RF bias” and purportedly infringes. The Court has warned
`
`Demaray that it would not be allowed to proceed on infringement contentions where it chose not
`
`accuse certain products after receiving “sufficient information” from Samsung that would allow
`
`Demaray “to provide more robust infringement contentions.” Ex. 2 at 73:15-74:14. Samsung has
`
`done so, and Demaray can provide no viable excuse for its delay. Demaray claims that it had no
`
`idea that Samsung “actually” uses
`
` (Mot. 8), but that is belied by documents
`
`8
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 12 of 20
`
`Samsung produced in this case years ago—including as part of its core technical document
`
`production in December 2020—and Demaray’s own infringement contentions citing the
`
`
`
` Demaray also claims that
`
` corporate representative failed to
`
`disclose that the
`
`But as explained above, Mr. Miller clearly explained that both the
`
` Mot. 7-8.
`
`
`
`—the exact configuration that Demaray
`
`now accuses. E.g., Ex. 5 at 63:25-64:3, 75:9-11.
`
`In reality, the only thing that has changed is Demaray’s choice of infringement theories,
`
`not Demaray’s knowledge. But even this changed theory lacks good cause. Demaray argues that
`
`it only recently learned that an RF power source connected to the target can provide a bias to the
`
`substrate through “capacitive coupling.” Mot. 2-3, 7-8. The only document that Demaray cites
`
`in support of its new “capacitive coupling” infringement theory is an
`
`
`
`
`
` see Mot. 3, 7, 8. Given its age, this patent can hardly provide the
`
`good faith basis for Demaray’s untimely amendment.
`
`In short, Demaray’s motion simply repackages the same arguments it advanced in its
`
`motion to compel discovery concerning the same
`
` at issue here. The Court
`
`correctly denied Demaray’s motion to compel just two months ago (Dkt. 224), and the current
`
`motion to amend should be denied as well. Indeed, Demaray does not even acknowledge the
`
`Court’s prior ruling regarding
`
` let alone explain why the result should be different now.
`
`B.
`
`Demaray Already Accuses These Exact Products in Its Supplier Case
`
`Demaray asserts that its proposed amendment would promote efficiency because, absent
`
`leave to amend, it would “be forced to file additional lawsuits” to present its new infringement
`
`theory. Mot. 2, 8. But as Demaray acknowledges (id. at 2, 5, 9-10), there is already an ongoing
`
`9
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 13 of 20
`
`
`
`litigation between Demaray and the supplier of these products,
`
` where Demaray
`
`accuses
`
` of infringing the two patents.
`
`
`
` It would be far more efficient
`
`(and less prejudicial) for Demaray to continue litigating directly against the manufacturer of these
`
`products rather than injecting accusations against those products in the cases involving the end-
`
`users (Intel and Samsung) at this stage; in fact, courts strongly favor supplier cases over customer
`
`cases. See, e.g., Tegic Commc’ns Corp. v. Board of Regents of the Univ. of Texas Sys., 458 F.3d
`
`1335, 1343 (Fed. Cir. 2006) (explaining that the preference for advancing lawsuits against a
`
`manufacturer over a lawsuit against a customer is based on principles of “efficiency and judicial
`
`economy”); CyWee Grp. Ltd. v. Huawei Device Co., No. 2:17-CV-495-WCB, 2018 WL 4002776,
`
`at *6 (E.D. Tex. Aug. 22, 2018) (Bryson, J., sitting by designation); Upaid Sys., Ltd. v. Ocean
`
`Breeze Pac., LLC, No. 18-cv-00744, 2018 WL 5279568, at *3-4 (C.D. Cal. July 25, 2018). To the
`
`extent Demaray wishes to pursue its new infringement theory, it should do so in the
`
`
`
` case where it can be adjudicated against the supplier. Indeed, as Demaray acknowledges
`
`(Mot. 5, 9-10), it has already served infringement contentions in the
`
` case that
`
`address the
`
` under Demaray’s new infringement theory. And
`
`unlike this case which is near the close of fact discovery, sufficient time remains under the
`
`scheduling order in the
`
` case to address Demaray’s new theory in that case.
`
`C.
`
`Demaray Is Estopped from Pursuing Its Proposed Amendments
`
`Even if Demaray had some basis for changing its infringement theory, it should be estopped
`
`from doing so given its numerous express representations to this Court and the Patent Office that
`
`chambers without an RF power supply connected to the substrate are outside the scope of the case
`
`and the patents. For example, Demaray’s counsel stated multiple times during a September 27,
`
`2021, discovery hearing that the only chambers at issue were chambers with an RF generator that
`
`10
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 14 of 20
`
`
`
`is “hooked up” or “connected” to the substrate. Ex. 8 at 34:23-35:1 (“But it’s still unclear if there
`
`actually is an RF generator that is supplied, that’s hooked up to the substrate such that it would
`
`be a reactor at issue.”); id. at 36:14-19 (“They should clearly state whether there is an RF bias
`
`generator connected to the substrate ..., and if so, that’s -- the grouping of reactors that are at
`
`issue in this case ....”).
`
`In a separate hearing on November 17, 2021, Demaray doubled down in an effort to justify
`
`its refusal to produce certain documents, again representing to the Court that reactors with an RF
`
`generator connected to the target (and not connected to the substrate) are “an entirely different
`
`reactor configuration” that is “not relevant” and “unrelated to ... any issues in this case.” Ex. 9 at
`
`11:19-12:2 (“What we’re saying we don’t want to go look for and produce, because it’s entirely
`
`unrelated to this action, is any work … on the original reactors that have RF bias to them -- to
`
`the target. That’s just unrelated to conception and reduction to practice or any issues in this
`
`case.”); id. at 9:17-22 (“Symmorphix was doing other work at the time related to unrelated
`
`technologies where here was an RF generator connected to the target. So this is an entirely
`
`different reactor configuration. Nobody disputes that those aren’t accused in this case. It’s not
`
`prior art. It’s just not relevant to the issues in this case.”).
`
`Demaray’s assertion that Samsung made a “unilateral determination” to limit its response
`
`to Demaray’s Interrogatory No. 1 to
`
`
`
` Mot. 3-4, 6. At the September 27, 2021, discovery hearing, Demaray
`
`represented that if Samsung identified its reactors with “an RF bias generator connected to the
`
`substrate,” that would constitute “a complete response” to Interrogatory No. 1. Ex. 8 at 36:14-19
`
`(“They should clearly state whether there is an RF bias generator connected to the substrate [in]
`
`the reactors that they provide, and if so, that’s -- the grouping of reactors that are at issue in this
`
`11
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 15 of 20
`
`
`
`case and they should provide a complete response on the reactor configurations, which is rog
`
`1.”).
`
`Moreover, in parallel IPR proceedings, Demaray successfully distinguished prior art that
`
`(like the
`
`) included an RF power supply and DC power supply
`
`connected to the same source of sputter material (i.e., “coil 6”), positioned opposite from the
`
`substrate on surface 14, which Demaray contended “differs from” the configuration covered by its
`
`patent claims. E.g., Ex. 13 (IPR2021-00104, Patent Owner Prelim. Resp.) at 40 (“In the design
`
`below, the coil 6 is connected to both the RF power 16 and the DC power 30. This differs from
`
`the challenged claims, where bipolar pulsed DC power is provided to the target and RF power is
`
`provided to the substrate.”) (citations omitted); id. at 41 (distinguishing prior art that had DC power
`
`and an RF generator connected to the same component acting as a source of sputter material in the
`
`chamber because the “pulsed DC power source and RF power are coupled to different components
`
`(target and substrate respectively)” in Demaray’s patents).
`
`Having successfully resisted Samsung’s motion to obtain discovery and defeated invalidity
`
`challenges in parallel IPR proceedings by distinguishing the configurations used in the
`
`
`
` Demaray may not now reverse course and accuse those chambers of
`
`infringement. See, e.g., New Hampshire v. Maine, 532 U.S. 742, 749 (2001) (“[W]here a party
`
`assumes a certain position in a legal proceeding, and succeeds in maintaining that position, he may
`
`not thereafter, simply because his interests have changed, assume a contrary position, especially if
`
`it be to the prejudice of the party who has acquiesced in the position formerly taken by him.”)
`
`(quotation omitted); Trs. of Columbia Univ. v. NortonLifeLock, Inc., No. 3:13-cv-00808, 2019 WL
`
`7040931, at *4-6 (E.D. Va. Dec. 20, 2019) (applying estoppel based upon IPR proceeding).
`
`12
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 16 of 20
`
`
`
`D.
`
`Demaray’s Proposed Amendments Would Be Highly Prejudicial To
`Samsung
`
`Allowing Demaray to adopt a previously disclaimed theory of infringement would severely
`
`prejudice Samsung. Demaray’s patents survived parallel IPR proceedings based upon Demaray
`
`asserting that its patents had a narrower scope to avoid the prior art and that would not cover
`
`Samsung’s manufacturing process if Demaray were held to those representations. Permitting
`
`Demaray to change its infringement theory at this stage would unfairly give Demaray a do-over
`
`on infringement while effectively depriving Samsung of the opportunity to adjudicate invalidity
`
`under that same claim scope. That is fundamentally unfair. E.g., CommScope Techs. LLC v. Dali
`
`Wireless Inc., 10 F.4th 1289, 1299 (Fed. Cir. 2021) (“[A] ‘patent may not, like a nose of wax, be
`
`twisted one way to avoid anticipation and another to find infringement.’”) (quoting Amazon.com,
`
`Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001)).
`
`Throughout every step of this case, Samsung has relied on Demaray’s longstanding theory
`
`of infringement and Demaray’s express representations about the scope of the case. It would be
`
`highly prejudicial for Demaray now, with just three months remaining in fact discovery, and after
`
`prevailing in the IPRs under its old theory, to amend its infringement contentions and raise the
`
`theory of infringement that it previously disclaimed.5 By contrast, there is no prejudice to
`
`Demaray, as it has levied these exact same two accusations against the supplier of the accused
`
`products in co-pending litigation.
`
`IV. CONCLUSION
`
`The Court correctly denied Demaray’s motion to compel in September 2022 (Dkt. 224)
`
`
`5 Allowing Demaray to do so would require a new trial date. Demaray’s representation that the
`trial date can remain the same, and the parties can compress the intervening dates is not feasible.
`It is not proper for Demaray to knowingly delay changing its infringement theory and prejudicing
`Samsung’s ability to defend itself by compressing expert report deadlines to make up for that
`delay.
`
`13
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 17 of 20
`
`
`
`regarding the same
`
` that are the subject to this motion, and for the foregoing
`
`reasons, Demaray’s current motion to amend should be denied as well.
`
`14
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 18 of 20
`
`
`
`Dated: November 21, 2022
`
`Yar R. Chaikovsky (pro hac vice)
`yarchaikovsky@paulhastings.com
`Philip Ou (pro hac vice)
`philipou@paulhastings.com
`Allan M. Somadea obert (pro hac vice)
`allansoobert@paulhastings.com
`Joseph J. Rumpler, II (pro hac vice)
`josephrumpler@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
`
`John M. Desmarais (pro hac vice)
`jdesmarais@desmaraisllp.com
`Yung-Hoon Ha (pro hac vice)
`yha@desmaraisllp.com
`Cosmin Maier (pro hac vice)
`cmaier@desmaraisllp.com
`Christian Dorman (pro hac vice)
`cdorman@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue, 26th Floor
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`
`
`Respectfully submitted,
`
`
`
`
`
` /s/ Kat Li
`Adam R. Alper (pro hac vice)
`adam.alper@kirkland.com
`Akshay S. Deoras (pro hac vice)
`akshay.deoras@kirkland.com
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: (415) 439-1400
`
`Michael W. De Vries (pro hac vice)
`michael.devries@kirkland.com
`KIRKLAND & ELLIS LLP
`555 South Flower Street, Suite 3700
`Los Angeles, CA 90071
`Telephone: (213) 680-8400
`
`Sharre Lotfollahi (pro hac vice)
`sharre.lotfollahi@kirkland.com
`KIRKLAND & ELLIS LLP
`2049 Century Park East
`Los Angeles, CA 90067
`Telephone: (310) 552-4200
`
`Leslie Schmidt (pro hac vice)
`leslie.schmidt@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Ave.
`New York, NY 10022
`Telephone: (212) 446-4800
`
`Kat Li
`Texas State Bar No. 24070142
`kat.li@kirkland.com
`KIRKLAND & ELLIS LLP
`401 Congress Ave.
`Austin, TX 78701
`Telephone: (512) 678-9100
`
`Attorneys for Defendants, Samsung
`Electronics Co., Ltd. (a Korean Company),
`Samsung Austin Semiconductor, LLC,
`Samsung Electronics America, Inc., and
`Samsung Semiconductor, Inc.
`
`
`
`

`

`
`
`
`
`
`
`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 19 of 20
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that all counsel of record are being served with a copy of the foregoing
`
`sealed documents via electronic mail on November 21, 2022.
`
`
`
`
`
`
`
`
`
`/s/ Kat Li
` Kat Li
`
`
`
`

`

`Case 6:20-cv-00636-ADA Document 255 Filed 11/28/22 Page 20 of 20
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`DEMARAY LLC,
`
`
`Plaintiff
`
`v.
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG SEMICONDUCTOR,
`INC., and SAMSUNG AUSTIN
`SEMICONDUCTOR,
`LLC,
`
`
`Defendants.
`
`
`
`CASE NO. 6:20-cv-00636-ADA
`
`FILED UNDER SEAL
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`ORDER
`
`
`
`
`
`On this day came on to be heard Demaray’s Motion to Amend Final Infringement
`
`Contentions (“The Motion”). The Court is of the opinion The Motion should be DENIED.
`
`It is therefore ordered Demaray’s Motion to Amend Final Infringement Contentions is
`
`DENIED IN ITS ENTIRETY.
`
`
`
`SIGNED this _____ day of ___________, 2022.
`
`
`
`_____________________________
`ALAN D. ALBRIGHT
`UNITED STATES DISTRICT JUDGE
`
`
`
`