Case 6:20-cv-00636-ADA Document 258 Filed 12/06/22 Page 1 of 8
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`DEMARAY LLC,
`
`Plaintiff,
`v.
`SAMSUNG ELECTRONICS CO., LTD (A
`KOREAN COMPANY), 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
`
`DEMARAY LLC'S REPLY BRIEF IN SUPPORT OF ITS MOTION TO
`AMEND FINAL INFRINGEMENT CONTENTIONS
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`Case 6:20-cv-00636-ADA Document 258 Filed 12/06/22 Page 2 of 8
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`I.
`
`INTRODUCTION
` in
`Recently produced information, which confirms that Defendants have
`, presents good
`and
` families of chambers that can be used to
`their
`cause for Demaray to amend its FICs. Demaray has drastically streamlined this case for trial with
`proposed infringement contentions focused on Defendants’ use of just two
` chamber
`families—
`
`. These two families have similar base
`configurations in which both
` and a
`
` is used to
`. When so configured, the
`. In some
`
`
`models,
`
` directly connected to the
` (an alternative infringing configuration).
`In the last few weeks
` has produced documents confirming that (1) the
` supplied to Defendants all have an
` and (2)
` on the
` in the
`
`chambers. In addition, Defendants recently produced testing and qualification materials
`confirming that the
`. These new
`disclosures belie the assertion Defendants and
` have taken throughout these cases (and
`resisted discovery on) that
` Moreover, since this
`motion’s filing, a Samsung corporate witness testified that its
`
` (an alternative basis for infringement).
`
`At the last discovery hearing in July, the Court denied Demaray’s request for
`, but the
` after hearing Defendants’
` arguments that the
`Court carefully noted: “if there is information that, as you put it, comes out during discovery
`that…is inconsistent with representations that [Defendants] made or
` made…
`I'm always open.” Dkt. 272-13, 38:21-39:1. Such information has now been revealed in discovery.
`As the Court previously indicated, Demaray should be allowed to present its infringement case
`against these five chambers—all of which share the same infringement read whereby the
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`Case 6:20-cv-00636-ADA Document 258 Filed 12/06/22 Page 3 of 8
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` Given the overlap in theories directed at the
` chambers (already at issue) and the additional chambers at issue on this motion, there is ample
`room in the schedule to accommodate any additional discovery and no good reason for Demaray
`to be required to litigate a separate infringement suit on the
` or
` chambers.
`II.
`RECENT DISCOVERY CONFIRMS THAT DEFENDANTS’ PRIOR
`DISCLOSURES WERE INACCURATE
`
`The discovery that Demaray just received from
`confirms that the
` chambers all include an
`to the
` See Mot. at 6-7. Additionally, recent documents from
`Defendants indicate that the
`
`and not from Defendants,
` in addition
` and
`
`
`
` Ex. E, 3:64-67; see also Exs. F-G.
`Second, Demaray has been seeking depositions since the July 29, 2022 hearing in which
`Defendants argued that they should not be compelled to provide the information sought because,
`"obviously, certainly…we expect there will be depositions of the persons knowledgeable, and
`[Demaray] can ask questions there." Dkt. 187, 14:11-13. That same day, Demaray began noticing
`depositions—but because of Defendants’ delays, technical fact depositions just started on
`November 10 (the day before Demaray’s motion).
`
`
` On November 22, a Samsung corporate
`
`
` Ex. Y, 95:6-9. This recent deposition testimony from
`Defendants’ witnesses is directly at odds with the position so forcefully stated earlier in the case
`that an
`
`III. DEMARAY HAS NOT ABANDONED INFRINGEMENT THEORIES BASED ON
`
`
`representative confirmed the use of
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`to
`the
`
`the
`
`chambers, for the
`
` but to
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`Case 6:20-cv-00636-ADA Document 258 Filed 12/06/22 Page 4 of 8
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`Defendants incorrectly argue that Demaray abandoned infringement contentions relating
`. Intel Opp. at 5-6; Samsung Opp. at 6-7. Demaray’s contentions regarding
` chambers encompass any
`
`
`
` For the
`
` Demaray’s FICs pointed not only to the
` witness testimony (Miller Depo. at 80:7-16) identifying
` (Ex. K at 38) and the associated
`
` citing
`
` (excerpted below):
`
`
`
`
`, consistent with the claims, thus cover
`
`Demaray’s contentions for
`
`regardless whether an
`Defendants ignore these disclosures and selectively excerpt/mischaracterize prior
`discovery hearing transcripts to argue that Demaray has not accused
`
` or has somehow waived infringement theories involving any
`
` See Intel Opp. 10-11, Samsung Opp. 10-11. This
`is not the case. First, it is undisputed that the patent claims do not require the
`
` See Mot. 2 (claims require
`
`). Second, Defendants agreed
`
`at the beginning of discovery that they would
` Exs. A-B (Resp. Rog. 1). Defendants are trying to walk
`back that agreement (and their failure to adhere to it) by now arguing for their undisclosed,
`unilateral “connected to” limitation—a dubious proposition given that even in the chambers to
`which Defendants point, the
`
`Third, the parties have been before the Court repeatedly making clear that the issue
`is whether there is
` not whether the
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`Case 6:20-cv-00636-ADA Document 258 Filed 12/06/22 Page 5 of 8
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`and the Court already ordered discovery on chambers where there is
`Mot. 3 (citing transcript/order). Finally, Demaray noted this very issue in its FICs and stated that
`if an
`) is present and used, the chambers will be at issue:
`
`For example, in the 9/27/21 transcript Demaray counsel stated:
`
`Counsel’s later discussion of
`Defendants’ word-smithing:
`
`The Samsung FICs contain similar language. It is hard to see how this constitutes a waiver.
`Defendants have cherry-picked hearing transcript excerpts and taken them out of context
`to distort their meaning. The surrounding transcript context makes clear that an
`
` not the only way.
`
` Dkt. 272-11, 32:9-16.
` was in the context of questioning
`
`
` Id., 34:2-8. The 11/17/21 transcript addressed Defendants’ attempts to compel
`discovery on all chambers with
` even those without a
` (a claim element) and
` are
`counsel properly noted that
`
` Dkt. 272-12, 11:19-12:2. None of these statements can be transformed into some
`kind of waiver of the infringement contentions set forth in the proposed amended FICs.
`IV. DEFENDANTS’ PROSECUTION ESTOPPEL THEORY IS WITHOUT MERIT
`Defendants “estoppel” theory is also without merit, both procedurally and substantively.
`First, the argument is essentially a disguised summary judgment motion. While Demaray
`strenuously disagrees with Defendants, if Defendants choose to pursue an estoppel defense, it
`should be presented in a summary judgment motion or in an appropriate context on a complete
`record, not in connection with a case management or discovery dispute. Substantively, Defendants
`have mischaracterized the underlying assertions on which they rely. Defendants admit the cited
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`Case 6:20-cv-00636-ADA Document 258 Filed 12/06/22 Page 6 of 8
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`statements address the use of a filter to
`12, Dkt. 272-14 at 40)—
`the
`
` (Intel Opp.
` The other cited statement addresses that
`
`
`.” Id. This statement does not exclude embodiments, such as here, where the
`In all events, the statements are not a clear
`and unmistakable limitation on claim scope excluding embodiments at issue in the case.
`V.
`DEFENDANTS’ IMPROPER ATTEMPTS TO PRIORITIZE THE ND CAL. CASE
`Defendants confirm in their opposition their goal of having
`
`
`
` Intel Opp. 10, Samsung Opp.
`10. The Court has twice denied Defendants’ attempts to prioritize the later-filed ND Cal. case—
`there is no reason to do so now.1 The Court first denied Defendants’ request to stay in favor of the
`ND Cal. case. See Intel Dkt. 23, 3-4. The Court then denied Defendants’ transfer request noting
`DJ action was filed after Demaray filed its actions against Intel and Samsung in this
`Court.” Intel Dkt. 99, 10. Left to litigate infringement in this district, Defendants have provided
`incomplete, belated disclosures on the
` and
` families. Rewarding this behavior by
`limiting Demaray’s infringement claims by requiring Demaray to file a new lawsuit against
`Defendants’ infringement on the
`and the
` chambers is far from efficient.
`VI. A SHORT CONTINUANCE CAN CURE ANY PURPORTED PREJUDICE
`Trial in this matter is scheduled for 9/11/2023 and the discovery cutoff is 2/9/23. Dkt. 244.
`This seventh-month period between fact discovery and trial is far longer than the 22 weeks called
`for under the Court’s OGP. To the extent necessary, the schedule has a cushion.
`This motion is not a request for a do over, as Defendants attempt to suggest. The Court has
`repeatedly stated that Demaray will not be prejudiced by
`Defendants’ disclosure
`failures. Now that such failures have been shown, good cause exists for amendment.
`
`
`1 Like in their failed motion to transfer (Dkt. 39 at 15), Defendants again try to cast this
`case as a mere “customer suit.” This case is about Defendants’ infringing use of the chambers and
`the Defendants’ products made in them—a fact that the Court has already acknowledged in
`rejecting these same arguments previously.
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`Case 6:20-cv-00636-ADA Document 258 Filed 12/06/22 Page 7 of 8
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`Dated: November 28, 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(cid:3)
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`Case 6:20-cv-00636-ADA Document 258 Filed 12/06/22 Page 8 of 8
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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 28th day of November, 2022.
`
`By: /s/ Jeffrey Linxwiler
`Jeffrey Linxwiler
`
`
`
`
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