Case 6:20-cv-00636-ADA Document 89-2 Filed 03/30/21 Page 1 of 5
`Case 6:20-cv-00636—ADA Document 89-2 Filed 03/30/21 Page 1 of 5
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`EXHIBIT AE
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`EXHIBIT AE
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`Case 6:20-cv-00636-ADA Document 89-2 Filed 03/30/21 Page 2 of 5
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`From:
`To:
`Cc:
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`Subject:
`Date:
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`Milvenan, Rick
`Hannah Santasawatkul
`Joshua Yi; Hattenbach, Ben; Zhong, Annita; Chu, Morgan; steve.ravel@khh.com; Hattenbach, Ben; Zhong,
`Annita; Chu, Morgan; brian.nash@pillsburylaw.com; Wells, Maclain; Ou, Philip; Soobert, Allan M.; Rumpler,
`Joseph; Chaikovsky, Yar R.; Barton, Travis
`[EXT] Demaray LLC (6:20-cv-00634, 636)
`Sunday, December 20, 2020 12:02:45 PM
`
`Hannah, Defendants Intel and Samsung have moved to transfer the pending actions
`brought by Demaray (Demaray v. Intel and Demaray v. Samsung) to the Northern District of
`California. After extensive meet and confer efforts, while the parties have reached agreement
`on a number of their differences, the parties have the disputes set forth below relating to
`transfer discovery. Demaray requests an oral hearing with the Court to resolve these
`remaining questions. Demaray has accused Intel and Samsung of using Demaray’s patented
`configurations of physical vapor deposition (PVD) reactive magnetron sputtering (RMS)
`chambers in reactors for the deposition of thin film layers in an infringing manner to develop
`and manufacture their semiconductor products. The following discovery is necessary to
`determine which reactors are in dispute and where they, and materials and persons related
`thereto, are located.
`
`
`(1) Demaray has sought discovery from Intel on its use of the accused reactor
`configurations for research and development purposes. Intel has refused to
`respond to these requests. In its infringement contentions, Demaray accused Intel’s
`use of the claimed reactor configurations “at its fabrication plants and research
`facilities, including but not limited to premises within the United States.” There is no
`exception to infringement for research and development activities under the patent
`statute. This is particularly relevant in this case, as Intel maintains a 1700 person
`research facility in Austin, Texas and it is unclear to what extent Intel performs
`research with these reactors in this and other locations.
`
`(2) Demaray has sought discovery on Intel’s use of the accused reactor configurations
`for thin films. Intel refuses to respond to Demaray’s discovery for any thin films
`besides TiN and TaN. In its infringement contentions, Demaray accused Intel’s use
`of the claimed reactor configurations for the deposition of “films having a wide variety
`of chemistries on insulating substrates in connection with its manufacture of a wide
`variety of semiconductor products.” Demaray identified TiN and TaN as examples of
`such layers, because those were the types of layers for which publicly available Intel
`and Samsung information was available. It is clear from the asserted patents and other
`materials that the accused reactor configurations can be used for the deposition of other
`types of layers as well. See, e.g., Dkt. 1 at 39 (’276 patent) (can be used with, for
`example, “oxides, fluorides, sulfides, nitrides, phosphates, sulfates, and carbonates”).
`Demaray needs discovery on the location of any possibly infringing reactors, not
`simply those reactors on which Intel chooses to respond.
`
`(3) Demaray has sought discovery from Applied Materials, one of the vendors of
`Intel’s and Samsung’s reactors. Applied refuses to produce certain documents
`responsive to Demaray’s document subpoena. Applied is a supplier of reactors to
`Intel and Samsung and has been coordinating with Intel and Samsung in these matters.
`Applied maintains large customer support operations and equipment manufacturing in
`this district employing over 1,800 people that is responsible for the manufacture of
`parts used in the reactors supplied to Intel and Samsung. Applied is a third party to
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`Case 6:20-cv-00636-ADA Document 89-2 Filed 03/30/21 Page 3 of 5
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`this suit in name only. Applied has told this Court that it owes potential indemnity
`obligations to Intel/Samsung and filed a third-filed action in the Norther District of
`California seeking to enjoin this Court from proceeding with these first and second
`filed cases (the N.D. Cal. court recently denied Applied’s injunction request). Applied
`is coordinating its litigation strategy with Intel and Samsung, including using the same
`litigation counsel in N.D. Cal. as Intel and Samsung are using here and has voluntarily
`produced documents in these actions at the request of Intel and Samsung.
`
`Given Applied’s involvement in the development, manufacture, assembly and
`installation of reactors which are then used by Intel/Samsung in an infringing manner,
`Demaray has sought from Applied certain “[m]aterials relating to Samsung/Intel
`reactors with RMS PVD chambers with the option of providing DC power to the target
`and a RF bias to the substrate” to determine Applied’s involvement and the location of
`such activities. After meeting and conferring to narrow the requested materials to
`address Applied’s concerns regarding breadth, Applied nevertheless still refuses to
`produce the following:
`
` i. Transfer Request 2: Documents sufficient to identify the location of
`the sale, delivery, and installation of the reactors with a RMS PVD
`chamber with the option of providing DC power to the target and a
`RF bias to the substrate provided to Intel or Samsung.
` ii. Transfer Request 3: Documents sufficient to generally describe the
`manufacture, assembly and installation processes for such reactors
`and the location(s) at which those processes occur.
` iii. Transfer Request 4: Documents sufficient to generally describe the
`configuration process of the RMS PVD chambers and the
`location(s) at which the process occurs
` iv. Transfer Request 6: Documents sufficient to generally describe the
`development of such reactors and the location(s) at which such
`development occurred and the persons involved.
` v. Transfer Request 10: Documents sufficient to identify the location of
`development work related to the use of pulsed DC power to the
`target in RMS PVD chambers.
` vi. Transfer Request 11: Documents sufficient to identify the location of
`development work related to the use of RF bias on the substrate in
`RMS PVD chambers.
` vii. Transfer Request 12: Documents sufficient to identify the location of
`development work related to the use of a filter associated with the
`power sources to the target or substrate in such RMS PVD
`chambers.
`
`
`These documents are relevant to the location and extent of Applied’s activities relating
`to Intel’s and Samsung’s infringing use of the reactors, persons involved therewith, and
`the location of relevant documents and sources of proof.
`
`(4) Timing of Demaray’s Opposition to Samsung’s motion to transfer. The Court’s
`standing order on transfer discovery states that Demaray’s opposition to Samsung’s
`motion to transfer is due “two weeks after the completion of venue or jurisdictional
`discovery.” In addition to outstanding discovery from Samsung, Demaray is seeking
`transfer discovery from Applied Materials. Once Samsung and Applied complete their
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`Case 6:20-cv-00636-ADA Document 89-2 Filed 03/30/21 Page 4 of 5
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`disclosures, Demaray will timely respond to Samsung’s motion. Samsung has taken
`the position that the two-week deadline begins after the deposition of its corporate
`designee (scheduled for Dec. 23 (US)). Samsung ignores that Demaray still needs
`remote access to Samsung’s reactor configurations (discussed in item (6) below) to
`determine the reactors in dispute and documents and testimony from Applied regarding
`the location of its efforts, employees and documents relating to those reactors.
`
`(5) The Protective Order/Litigation Manager access. The parties for the most part
`agreed upon a Protective Order in this matter, except for one provision. Demaray
`requests that the parties be allowed to designated one in-house attorney as a Litigation
`Manager allowed to see “Confidential” and “Attorneys’ Eyes’ Only” materials under
`the Protective Order. Demaray is a small company and has a consultant attorney hired
`to manage this litigation, among other duties unrelated to the technology of this case.
`There is no reason not to allow this person access to Intel’s productions as he will
`agree to use the information only for this case, is not a competitive decision maker for
`any semiconductor products, and will agree to the prosecution and development bars.
`Preventing access will prejudice Demaray by needlessly increasing review costs by
`outside counsel. Under Demaray’s proposal Intel likewise would be allowed a
`Litigation Manager with symmetric access to Demaray materials.
`
`(6) Remote access to Intel/Samsung/Applied discovery on process recipes and best
`known methods. Intel, Samsung and Applied have taken the position that their
`process recipes and best known method documents are the only readily available
`documents detailing the configurations of the reactors used by Intel and Samsung and
`have demanded stringent security for these types of documents. Demaray is willing to
`treat such materials under heightened security measures, but given issues associated
`with COVID-19 the proposed measures currently proposed by Defendants are not
`workable. The parties are working on agreement regarding remote access for Demaray
`to such materials and hope to reach a compromise. If they are unable to do so,
`Demaray asks for the Court to address the issue. The parties will update the Court on
`the status of the parties’ discussions.
`
`Thanks in advance for your help with this matter. Please let us know when the parties can
`discuss these issues with the Court. --Rick
`
`
` 
`
`Richard Milvenan
`Partner
`McGINNIS LOCHRIDGE
`600 Congress Avenue, Suite 2100
`Austin, TX 78701
`o 512-495-6005 f 512-505-6305
`
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`Case 6:20-cv-00636-ADA Document 89-2 Filed 03/30/21 Page 5 of 5
`Case 6:20-cv-00636—ADA Document 89-2 Filed 03/30/21 Page 5 of 5
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