Case 6:20-cv-00636-ADA Document 59 Filed 03/02/21 Page 1 of 21
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`DEMARAY LLC,
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`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD (A
`KOREAN COMPANY), SAMSUNG
`ELECTRONICS AMERICA, INC.,
`SAMSUNG SEMICONDUCTOR, INC.,
`and SAMSUNG AUSTIN
`SEMICONDUCTOR, LLC,
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`Defendants.
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`
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`
`
`Case No. 6:20-cv-00636-ADA
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`JURY TRIAL DEMANDED
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`PUBLIC VERSION
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`DEMARAY LLC’S OPPOSITION TO SAMSUNG’S MOTION TO
`TRANSFER VENUE
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`10916607
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`DEMARAY'S OPPOSITION TO SAMSUNG’S MOTION TO
`TRANSFER VENUE
`(Case No. 6:20-cv-00636-ADA)
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`Case 6:20-cv-00636-ADA Document 59 Filed 03/02/21 Page 2 of 21
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ............................................................................................................ 1
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`FACTUAL AND PROCEDURAL BACKGROUND...................................................... 3
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`III.
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`ARGUMENT .................................................................................................................... 5
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`Access To Sources Of Proof Favors This District, Or At
`Worst Is Neutral ........................................................................................ 5
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`The Availability Of Compulsory Process Is Neutral ................................ 8
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`This District is Equally Or More Convenient For Willing
`Witnesses .................................................................................................. 9
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`Other Practicalities Weigh Heavily Against Samsung’s
`Motion ..................................................................................................... 12
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`Court Congestion Within NDCA Strongly Militates
`Against Transfer...................................................................................... 13
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`Localized Interests Weigh Against Transfer........................................... 14
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`No Other Public Interest Factors Favor Transfer .................................... 15
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`IV.
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`CONCLUSION ............................................................................................................... 15
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`
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`Cases
`
`In re Adobe,
`823 F. App’x 929 (Fed. Cir. July 28, 2020) .............................................................................14
`
`Aerielle, Inc. v. Monster Cable Prod., Inc.,
`No. 2:06-cv-00382-TJW, 2007 WL 951639 (E.D. Tex. Mar. 26, 2007) .................................11
`
`Applied Materials, Inc. v. Advanced Micro-Fabrication Equip., Inc.,
`630 F. Supp. 2d 1084 (N.D. Cal. 2009) ...............................................................................2, 15
`
`Atl. Marine Constr. Co. v. U.S. Dist. Court for the W. Dist. of Tex.,
`571 U.S. 49 (2013) .....................................................................................................................5
`
`Fintiv, Inc. v. Apple Inc.,
`No. 6:18-cv-00372-ADA, 2019 WL 4743678 (W.D. Tex. Sept. 13, 2019) ............................11
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009)............................................................................................8, 14
`
`Hammond Dev. Int’l, Inc. v. Google LLC.,
`No. 1:20-cv-00342-ADA, 2020 WL 3452987 (W.D. Tex. June 24, 2020) .............................12
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)................................................................................................14
`
`Huawei Techs. Co. v. Huang,
`No. 4:17-cv-00893, 2019 WL 1978339 (E.D. Tex. May 2, 2019) ..........................................15
`
`Kuster v. W. Dig. Techs., Inc.,
`6-20-cv-00563-ADA, 2021 WL 466147 (W.D. Tex. Feb. 9, 2021) ........................................13
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`MV3 Partners LLC v. Roku, Inc.,
`2019 WL 10981851 (W.D. Tex. June 25, 2019) ...............................................................10, 11
`
`In re Nintendo Co.,
`544 F. App’x 934 (Fed. Cir. 2013) ............................................................................................6
`
`Opperman v. Path, Inc.,
`No. A-12-CA-219-SS, 2013 WL 7753577 (W.D. Tex. Jan. 15, 2013) ...................................15
`
`Realtime Adaptive Streaming LLC v. Amazon.com, Inc.,
`No. 6:17-cv-00549-JRG, 2018 WL 4444097 (E.D. Tex. Sept. 5, 2018) .................................14
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`Page(s)
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`Solas OLED Ltd. v. Apple Inc.,
`No. 6:19-cv-00537-ADA, 2020 WL 3440956 (W.D. Tex. June 23, 2020) ...................5, 7, 8, 9
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`Uniloc 2017 LLC v. Apple Inc.,
`6:19-cv-00532-ADA, 2020 WL 3415880 (W.D. Tex. June 22, 2020) ....................................13
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`In re Volkswagen AG,
`371 F.3d 201 (5th Cir. 2004) .....................................................................................................5
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) ...........................................................................................5, 6, 14
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`Voxer, Inc. v. Facebook, Inc.,
`6:20-cv-00011-ADA, 2020 WL 3416012 (W.D. Tex. June 22, 2020) ......................................9
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`Whitewater W. Indus., Ltd. v. Alleshouse,
`981 F.3d 1045 (Fed. Cir. 2020)................................................................................................15
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`XY, LLC v. Trans Ova Genetics, LC,
`No. W-16-CA-00447-RP, 2017 WL 5505340 (W.D. Tex. Apr. 5, 2017) .................................8
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`Statutes
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`28 U.S.C. § 1404(a) .....................................................................................................................2, 5
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`* Unless otherwise noted, internal citations and subsequent history are omitted, and emphasis is
`added.
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`* All exhibits are attached to the Declaration of C. Maclain Wells (“Wells”) filed herewith. Also
`referenced is the Declaration of Brian Marcucci (“Marcucci”) also filed herewith.
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`I.
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`INTRODUCTION
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`This case involves Samsung’s configuration and use of semiconductor fabrication
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`chambers
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`, to manufacture semiconductor chips in this District, and which
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`Samsung thereafter markets and sells in high volumes in this District. Contrary to Samsung’s
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`assertions, it has extensive case-related contacts with this District, including its only two
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`domestic fabs where it has over 3000 employees and makes the semiconductor products made
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`in the infringing manner. The primary reactor supplier to which Samsung points, Applied
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`Materials (“Applied”), similarly has extensive case-related contacts here—
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`. This District is thus not just a legally proper forum for this
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`action—a fact that Samsung necessarily concedes—but is the most sensible and convenient forum.
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`An additional reason this case should remain here is that the case has already progressed
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`significantly before this Court, and Samsung has participated extensively in those proceedings.
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`Samsung, for instance, has answered the complaint, submitted a case schedule in which it agreed
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`to Markman hearing and trial dates in Waco, participated in discovery hearings, produced core
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`technical documents, commenced the claim construction process, and has demanded and will
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`shortly receive depositions (including about claim construction)—all in this case. In addition,
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`Demaray sued Intel at the same time as Samsung on the same patents (Case No. 6:20-cv-00634-
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`ADA). Like Samsung, Intel has extensive contacts with this district relating to its infringement.
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`Transferring this case, while keeping the Intel case, would be grossly inefficient.
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`Despite its extensive case-related connections to this District and the considerable
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`progress already made here, Samsung has decided that it would prefer to litigate this matter
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`elsewhere—in particular, in a court facing a serious backlog and that is much slower to get to
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`trial before even considering that it typically stays proceedings in favor of IPRs. To that end,
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`after Demaray filed this suit, Samsung coordinated with Applied and Intel to file multiple
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`declaratory judgment (DJ) actions about this suit in the Northern District of California (NDCA) as
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`well as four IPRs against the Demaray patents in suit. Samsung’s escape plot has little to do with
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`“the convenience of parties and witnesses” or “in the interest of justice” under § 1404(a).
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`Samsung’s procedural maneuvering is, instead, all part of an extreme attempt at forum shopping
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`designed to delay trial on Samsung’s infringement of Demaray’s patented reactor configurations
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`and processes, which it uses to make billions of dollars’ worth of semiconductor products.
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`Samsung’s procedural maneuvering has not stopped there. It also coordinated with
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`Applied and Intel to request that the NDCA enjoin this Court from proceeding with the cases
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`against Intel and Samsung. The NDCA soundly rejected the request and determined that there
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`was not even subject matter jurisdiction for the DJ case. Ex. 2 (Order). But even that did not
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`stop Samsung, Applied and Intel. Before the NDCA formally dismissed the third-filed case,
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`Applied filed yet another fourth-filed DJ case on essentially the same theory. The parties in
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`NDCA are now briefing a motion to dismiss that fourth-filed DJ case on the same bases on
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`which the third-filed case was already rejected. Until that issue is resolved (again) the NDCA
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`judge has stayed all substantive action in the fourth-filed DJ case. See Ex. 6 (CMC Tr.) at 16–17.
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`Despite the orders in NDCA, Samsung still tries to leverage the NDCA cases by pointing
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`to “licensing/ownership” affirmative defenses raised by Applied and restated here (see Dkt. 29
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`(Amended Answer) ¶¶ 98, 100, 104, 110), and alleging that a locus of facts relating to the
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`defenses is in California. Samsung fails to inform the Court that the NDCA already ruled that the
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`exact Applied assignment provisions (and similar Applied Komatsu provisions) on which the
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`defenses are predicated are unlawful and void as a matter of public policy. See Applied
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`Materials, Inc. v. Advanced Micro-Fabrication Equip., Inc., 630 F. Supp. 2d 1084, 1090 (N.D.
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`Cal. 2009).
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`In stark contrast to its extensive, case-related ties to this District, Samsung makes no
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`alleged use whatsoever of the claimed reactor configurations at its locations in NDCA. Given the
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`lack of ties to the far slower forum that it prefers, Samsung points to contacts between NDCA
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`and Demaray and a subset of the named inventors. But Dr. Demaray is willing to come here and
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`this forum is more convenient for the only domestic, true third-party inventor, Dr. Zhang.
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`Marcucci, ¶ 8. Samsung also relies on contacts to NDCA of Applied. But, Applied conducts
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`While Samsung may not like Demaray’s choice of venue, under settled precedent that
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`choice may not be disturbed unless Samsung can show that NDCA is clearly more convenient and
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`in the interests of justice. When all the relevant facts are properly considered, this District
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`unassailably emerges as the superior venue. Among other reasons, this District is as convenient a
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`destination for the majority of the non-party witnesses both inside and outside of Texas, has strong
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`interest in resolving Samsung’s substantial infringing activity here, and considerable progress has
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`already been made in the case here. Samsung has not satisfied its burden to show that NDCA
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`would be clearly more convenient and in the interest of justice and its motion should be denied.
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`II.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`Demaray filed suit against both Samsung and Intel on July 14, 2020. Dkt. 1 (Complaint).
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`The Demaray patents relate generally to a method of depositing thin films using a specific PVD
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`reactor configuration. See id., ¶¶ 23, 49. The two Texas cases are being coordinated for pre-trial
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`purposes, Applied is indemnifying to some extent Intel and Samsung (Ex. 7 at 19), and all three
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`are represented by the same litigation counsel (see Dkt. 24 (Joint Case Report)). The cases are
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`proceeding in an orderly fashion with Samsung’s participation (e.g., Samsung has filed
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`substantive motions to compel supplemental infringement contentions, attended hearings on
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`those motions (see Dkt. 44) and just agreed to a revised Scheduling Order that the Court entered
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`in which it agreed to a joint Markman hearing on April 6, 2021 and December 27, 2021 trial date
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`in Waco (Dkt. 47).
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`Roughly a month after Demaray brought the Texas cases, Applied brought a third-filed
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`DJ case against Demaray in NDCA on the same patents seeking a declaration of non-
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`infringement and then filed an amended complaint raising licensing/ownership claims. Ex. 1
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`(Applied First Amended Complaint). Applied then sought the extraordinary remedy of
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`requesting the NDCA judge to enjoin this Court from proceeding with the Intel and Samsung
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`cases. See Dkt. 39-1, Ex. U (Applied motion). Applied also filed four IPRs against the Demaray
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`patents, naming Intel and Samsung as interested parties. See Dkt. 42 (Notice of IPRs). The
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`NDCA court denied Applied’s injunction request on the papers, holding that because the Texas
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`cases concern Intel’s and Samsung’s infringing activities, “[t]he facts put forth by Applied do not
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`establish that there is a ‘substantial controversy’ between [Applied and Demaray].” Ex. 2 (Order)
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`at 6. This Court similarly rejected Intel’s and Samsung’s request to stay the first- and second-
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`filed Texas cases in favor of the third-filed NDCA case. See Dkt. 24 at 3–4. Applied
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`subsequently voluntarily dismissed the third-filed DJ case. Ex. 3.
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`Desperate to avoid having a jury in Waco address Intel’s and Samsung’s infringing
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`behavior, and despite its earlier-failed attempts to enjoin this Court, Applied again tried to
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`initiate disputes with Demaray in NDCA by filing a largely duplicative fourth-filed action in
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`NDCA. Ex. 4 (Complaint). Given the earlier determinations regarding lack of subject matter
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`jurisdiction, the NDCA court stayed substantive proceedings in the fourth-filed DJ case pending
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`resolution of Demaray’s motion to dismiss. Ex. 6 (CMC Tr.) at 16–17; Ex. 5 (motion to dismiss).
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`III. ARGUMENT
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`It is well settled that that “plaintiffs are ordinarily allowed to select whatever forum they
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`consider most advantageous.” Atl. Marine Constr. Co. v. U.S. Dist. Court for the W. Dist. of Tex.,
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`571 U.S. 49, 63 (2013). To upset this choice, a defendant must “clearly demonstrate” that
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`statutory requirements support transfer. In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th
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`Cir. 2008) (“Volskwagen II”). A plaintiff’s forum privilege “places a significant burden on the
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`movant to show good cause for the transfer.” Id. at 314, n.10. “[W]hen the transferee venue is
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`not clearly more convenient … the plaintiff’s choice should be respected.” Id. at 315. Courts
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`within this circuit assess the eight factors (listed below) in evaluating transfer.1 In re Volkswagen
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`AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volskwagen I”). A district court enjoys “broad
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`discretion in deciding whether to order a transfer.” Volkswagen II, 545 F.3d at 311. Samsung
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`cannot meet its heavy burden given its substantial ties to infringing activity in this District, the
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`lack of inconvenience to witnesses, and the congestion in the proposed transferee forum. See
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`Solas OLED Ltd. v. Apple Inc., 2020 WL 3440956, at *8 (W.D. Tex. June 23, 2020) (denying
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`transfer where facts did not “merit a finding of clearly more convenient”).
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`1.
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`Access To Sources Of Proof Favors This District, Or At Worst Is Neutral
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`This factor asks where the parties store physical evidence such as documents. See
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`Volkswagen II, 545 F.3d at 316. Samsung confirms
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`two domestic fabs are located in Austin, operated by SAS,
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` Dkt. 40-2 (Kim Dec.) ¶ 11. Samsung’s only
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`1 Contrary to Samsung’s assertions, the “interest of justice” analysis of § 1404(a) is borne
`out in these factors. See Mot. at 15.
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`Case 6:20-cv-00636-ADA Document 59 Filed 03/02/21 Page 10 of 21
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`. Id., ¶¶ 13-14. These fabs employ 3000 people in this District and comprise a 20-year,
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`$17 billion investment in Austin.2 Id.; Exs. 13–14 (SAS history and investment). Thus, accused
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`reactors
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` (Ex. 10 (1/18/2021 Rog. Resp.) at 20–21
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` where they are used to create Samsung semiconductor products. Ex. 8 (Kim
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`Dep.), 69:7–14
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` Samsung admits
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`. Id., 20:14–22, 23:20-24:20; Dkt. 40-6, Ex. T
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`(purchase order indicating Austin as point of origin). Sources of proof, including Samsung’s use
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`of infringing reactors and related activities, are thus directly tied to this District—a fact
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`Samsung does not contest as it is completely silent on the location of Samsung sources of
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`proof in its motion.3 See Mot. at 11.
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`It is also undisputed that
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`”4 Ex. 9 (Miller Dep.), 15:13–16:10, 37:4–11
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`, Ex. 17 (2400 employees in Austin). The Austin facility
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`s. Ex. 9 (Miller Dep.),
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`20:18–21:2, 22:10–23:2. Applied admits
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`. Dkt. 40-3 (Miller Dec.) ¶ 4
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`2 Indeed, Samsung plans to expand its presence in Austin by spending another $17 billion
`to create another fab with 1800 additional employees in this District. Ex. 15.
`3 Samsung’s assertion that it is a mere retailer of Applied reactors (see Mot at 12 citing In
`re Nintendo Co., 544 F. App’x 934, 941 (Fed. Cir. 2013) for the proposition that “retailers will
`have very little to offer in the way of evidence”) is wrong. It is undisputed that Samsung does not
`sell reactors and Samsung is accused of using the claimed reactor configurations in the
`production of its semiconductor products. See Dkt. 1 ¶ 28.
`4Applied asserts
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`Case 6:20-cv-00636-ADA Document 59 Filed 03/02/21 Page 11 of 21
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` Samsung argues that “Applied …
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`manufactures, configures, and installs its Endura systems for Samsung …. [and that] Applied
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`evidence will … be critical to this action and the location of that evidence of utmost
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`importance.” Mot. at 11. This necessarily includes evidence relating to
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` installation in Austin. Although the full scope of Samsung’s infringement is not yet clear,
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`Demaray has established that substantial sources of proof reside in this District.
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`Remaining relevant materials are spread across the world and easily accessible
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`electronically from this District.5 For example, Samsung says its documents are overwhelmingly
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`in Korea, not NDCA. See Mot. at 10–11. In addition, many such documents are available to
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`Samsung’s Austin employees. Ex. 8 (Kim Dep.), 35:14–24
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`. This is logical because
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`. Id., 92:22–93:24.
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`Id., 18:25–19:18
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`, 37:9–
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`38:5, 39:1–8
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`; 101:7–102:10.
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`Samsung’s reliance on alleged Applied PVD reactor R&D work in NDCA is misplaced.
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`See Mot. at 11. First, the notion that Applied, and thus NDCA, will be the predominant locus of
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`evidence is in conflict with Demaray’s pleadings. Demaray has not alleged that Applied’s
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`reactors standing alone infringe or that they are the only reactors that Samsung uses to infringe.
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`See, e.g., Dkt. 1, ¶ 28 (“Samsung configures RMS reactors, including, but not limited to
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`5 The Court has correctly observed that this factor, by focusing on the location of physical
`documents, “conflicts with the realities of modern patent litigation.” See Solas OLED, 2020 WL
`3440956, at *3 n.1.
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`Case 6:20-cv-00636-ADA Document 59 Filed 03/02/21 Page 12 of 21
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`reactors in the Endura product line from Applied Materials ….”). Indeed,
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`. Ex. 10 (1/18/2021 Rog. Resp.) at 20–21 (
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`; Ex. 8 (Kim Dep.), 70:14–71:9
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` Wells, ¶ 19. Applied also acknowledged
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`. Ex. 9 (Miller Dep.), 134:13–20
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`Contrary to Samsung’s assertion, Demaray’s headquarters in NDCA does not favor
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`transfer. See Mot at 11. The bulk of the evidence in this case will reside with the accused
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`infringer, Samsung. Solas, 2020 WL 3440956, at *3 (“As Apple is the accused infringer, Apple
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`likely possesses the bulk of the relevant documents for this case ….”). And, like Samsung and
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`Applied, Demaray maintains its documents electronically (e.g., Google Cloud) such that they are
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`accessible at locations across the country. Marcucci, ¶ 9 (person at Demaray involved with PVD
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`with the most complete set of materials, Brian Marcucci, is located in Phoenix, Arizona).6
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`2.
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`The Availability Of Compulsory Process Is Neutral
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`If called for trial, Dr. Demaray has agreed to appear in this District. Marcucci, ¶ 8. While
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`Samsung points to Applied witnesses as being beyond the subpoena power of the Court (Mot. at
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`12), the Applied personnel in Austin
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` are subject to the Court’s subpoena power (the Applied Austin facility is within 100
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`miles of the Waco courthouse) and would not be subject to compulsory process in NDCA. In
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`6 Samsung’s case law is inapposite. See Mot. at 11. The court in XY, LLC v. Trans Ova
`Genetics, LC, 2017 WL 5505340, at *13 (W.D. Tex. Apr. 5, 2017), agreed that “[t]he trier of fact
`ought to be as close as possible to the milieu of the infringing device ….” In re Genentech, Inc.,
`566 F.3d 1338, 1345 (Fed. Cir. 2009), involved a district court’s speculation that “although the
`petitioners identified all of its evidence in California, there could be evidence in existence in
`some other offices around the country.” Here, the facts confirm Samsung ties to this District.
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`Case 6:20-cv-00636-ADA Document 59 Filed 03/02/21 Page 13 of 21
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`addition, Applied has appeared voluntarily in this action on behalf of Samsung (see Dkt. 38-5),
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`has some indemnity obligations to Samsung (Ex. 7 at 19), and has been coordinating Intel’s and
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`Samsung’s and Intel’s litigation strategy (Dkt. 24). The evidence indicates that Applied
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`witnesses will voluntarily appear. See Mot. at 5 (identifying Applied employees Keith Miller and
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`John Forster as “anticipated witnesses at trial”). See Solas, 2020 WL 3440956, at *5 (“[T]he
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`submission of the witnesses by Samsung signals a willingness to testify … As such, a willing
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`witness nullifies the need for compulsory process.”); see also Voxer, Inc. v. Facebook, Inc., 2020
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`WL 3416012, at *4 (W.D. Tex. June 22, 2020) (factor does not favor transfer when defendants
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`“lack [] evidence that its third-party witnesses would be unwilling to travel.”).
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`3.
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`This District is Equally Or More Convenient For Willing Witnesses
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`As discussed above, Samsung’s only two domestic fabs are located in Austin, employ
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`3000 people, and
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`
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` Dkt. 40-2 (Kim Dec.) ¶¶ 13–14; Ex. 10 (1/18/2021 Rog. Resp.) at 13–
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`17; Ex. 8 (Kim Dep.), 69:7–14
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`willing witnesses naturally reside in this district. For example,
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`. Id., 87:5–17
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`Samsung also
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`; 100:24–101:16
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`. Id., 20:14–22; see also id., 27:2–28:3
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`.
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`Also, as discussed above,
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` Thus,
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`.
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`10913769
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`- 9 -
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`DEMARAY'S OPPOSITION TO SAMSUNG’S MOTION TO
`TRANSFER VENUE
`(Case No. 6:20-cv-00636-ADA)
`
`

`

`Case 6:20-cv-00636-ADA Document 59 Filed 03/02/21 Page 14 of 21
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`
`
`. Samsung asserts that “Applied personnel in Austin do not have
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`specific knowledge about … marketing, or sales” of reactor. Mot. at 10. But, Applied’s witness
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`testified
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`. Ex. 9
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`(Miller Dep.), 20:18–21:16. While Samsung and Applied have sought to downplay their
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`activities in this District, personnel at these locations likely have relevant information relating to
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`Samsung’s actual use (and thus infringement) of the claimed reactor configurations. As one
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`example, a search for patents relating to PVD technology assigned to Applied or Samsung and
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`mentioning Austin turned up over 120 patents. Wells, ¶ 20, Ex. 19–20 (example patents relating
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`to semiconductor manufacturing processes). Further, Applied has acknowledged the convenience
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`of this District by filing infringement actions here, including cases on PVD reactors. Ex. 21.7
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`Demaray anticipates that the most important non-party testimony will be from inventors.
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`Dr. Demaray has committed to attending trial (Marcucci, ¶ 8) and there is no indication that Dr.
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`Zhang or Dr. Mullapudi (who was until recently an Applied employee (see Mot. at 9)), will not
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`attend. Of these witnesses, Dr. Demaray will tell the story of inventorship, including how he
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`conceived and reduced to practice the claimed invention. See Marcucci, ¶ 8. Dr. Zhang, the only
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`true non-party, domestic inventor whose specific testimony the parties have identified as likely
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`and relevant, lives in Boston and is thus closer to Waco than NDCA, making the cost of
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`attendance factor with regards to Dr. Zhang weigh against transfer.
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`Samsung reliance on Samsung personnel in NDCA or Korea (Mot. at 10) as well as
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`persons associated with Demaray (id. at 3) as supporting transfer is misplaced—“the
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`convenience of party witnesses is given little weight.” See MV3 Partners LLC v. Roku, Inc., 2019
`
`
`7 Samsung points to some sales activity and a 45-person SAS office within NDCA, Mot.
`at 4–5; Dkt. 40-2 (Kim Dec.) ¶ 10. This is unrelated to the fab usage that is solely within this
`District. Regarding SSI’s and SEA’s NDCA connections, Samsung admits that “[n]either SEA
`nor SSI performs semiconductor fabrication or manufacturing ….” Id., ¶ 12.
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`10913769
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`- 10 -
`
`DEMARAY'S OPPOSITION TO SAMSUNG’S MOTION TO
`TRANSFER VENUE
`(Case No. 6:20-cv-00636-ADA)
`
`

`

`Case 6:20-cv-00636-ADA Document 59 Filed 03/02/21 Page 15 of 21
`
`
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`WL 10981851, at *3 (W.D. Tex. June 25, 2019). Moreover, Samsung fails to identify “specific
`
`witnesses, outline the substance of their testimony, [or to] provide more than general allegations”
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`to support its assertion. See id. at *4. For example, Samsung points to random people “identified
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`on Demaray’s website” including “William Krupke, Board Member … Aubert Demaray,
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`Operations and Financial Officer … and Adam Lambert, Advanced Research” (Mot. at 3), but
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`offers no reason why testimony would be required from these individuals at trial. With regard to
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`alleged Applied witnesses, as discussed above, Applied has likely witnesses in this District and is
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`a third party to this litigation in name only. Any Applied witnesses should be considered willing
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`party witnesses who should not heavily implicate this factor. In addition, Demaray’s allegations
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`extend beyond reactors furnished by Applied
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`
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`are likely located outside of NDCA. See Wells, ¶ 19.
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`Samsung also says nothing about whether its laundry list of Samsung/Demaray/Applied
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`witnesses will feasibly testify live given the time constraints of trial. See Fintiv, Inc. v. Apple
`
`Inc., 2019 WL 4743678, at *6 (W.D. Tex. Sept. 13, 2019) (“the Court does not assume that all of
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`the party and third-party witnesses listed in 1404(a) briefing will testify at trial … Therefore,
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`long lists of potential party and third-party witnesses do not affect the Court's analysis for this
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`factor.”). The concern is elevated here because the realities of patent trials in this Court make it
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`extremely unlikely that all these witnesses would testify. Aerielle, Inc. v. Monster Cable Prod.,
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`Inc., 2007 WL 951639, at *2 (E.D. Tex. Mar. 26, 2007) (“This Court, however, must also be
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`mindful that many patent infringement cases are driven by expert testimony.”). For example,
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`Applied’s or Samsung’s engineers may very well be deposed during this litigation (indeed, an
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`Applied engineer, Mr. Miller, has already been deposed once) rendering their attendance at trial
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`unnecessary. As another example, Samsung identifies at least three witnesses regarding the
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`10913769
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`- 11 -
`
`DEMARAY'S OPPOSITION TO SAMSUNG’S MOTION TO
`TRANSFER VENUE
`(Case No. 6:20-cv-00636-ADA)
`
`

`

`Case 6:20-cv-00636-ADA Document 59 Filed 03/02/21 Page 16 of 21
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`
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`licensing history of the Demaray patents (see Mot. at 8), but does not explain why anyone other
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`than Dr. Demaray himself would be needed. At a minimum, Samsung fails to describe any
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`specific testimony for the three witnesses for the Court to find relevant venue facts.
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`4.
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`Other Practicalities Weigh Heavily Against Samsung’s Motion
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`When it sued Samsung, Demaray also filed suit at the same time on the same patents
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`against Intel in co-pending Case No. 6:20-cv-00634-ADA. Like Samsung, Intel has extensive
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`contacts with this district relating to its infringement, including the
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`marketing, and sale
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`of products using the claimed reactor configurations. Transferring this case, while keeping the
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`Intel case, would be grossly inefficient. Hammond Dev. Int’l, Inc. v. Google LLC., 2020 WL
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`3452987, at *4 (W.D. Tex. June 24, 2020) (“two cases involving precisely the same issues are
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`simultaneously pending in different District Courts leads to the wastefulness ….”). Indeed, the
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`Court and parties have realized built-in efficiencies by having both the Samsung and Intel cases
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`here. See id. at *5 (efficiency for joint filings).
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`In addition, Samsung has already availed itself of the Court’s resources. Samsung has
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`filed substantive motions to compel supplemental infringement contentions in this District,
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`attended hearings on those motions (Dkt. 45), and just submitted a revised Scheduling Order in
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`which it agreed to a joint Markman hearing for both cases on April 6, 2021 and trials beginning
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`December 27, 2021 in Waco (Dkt. 47). Thus, even at this stage of the proceedings, the Court has
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`already invested meaningful time in the coordinated cases, and these cases have progressed to
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`the point where they are now only about 10 months from trial.
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`Samsung’s argument that “transfer would not cause delays” (Mot at 13) could not be
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`further from the truth. Applied has filed four IPRs on behalf of Intel and Samsung. Dkt. 42. It
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`appears that Defendants are seeking to transfer this case to a court where it would be given a far
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`slower case schedule, which it would then halt for years by seeking a stay pending the IPRs. Ex.
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`10913769
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`- 12 -
`
`DEMARAY'S OPPOSITION TO SAMSUNG’S MOTION TO
`TRANSFER VENUE
`(Case No. 6:20-cv-00636-ADA)
`
`

`

`Case 6:20-cv-00636-ADA Document 59 Filed 03/02/21 Page 17 of 21
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`
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`11 (LegalMetric) at 94 (NDCA stays pending IPR roughly 70% of the time).
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`The Court should also reject Samsung’s efforts to manufacture ties to NDCA based upon
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`Applied’s rejected request to enjoin this Court or Applied’s now dismissed third-filed DJ action.
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`See Mot. at 1, 3, 13–15. As discussed above, the NDCA court denied Applied’s baseless
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`injunction request on the papers. Ex. 2 (Order) at 6. Contrary to Samsung’s assertion that
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`“Applied’s DJ Action in NDCA currently pending before Judge Davila will be dispositive of
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`most—if not all—issues in this case” (Mot. at 13), Applied voluntarily dismissed that action after
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`the NDCA judge found subject matter jurisdiction to be lacking. Ex. 3. There is