Case 6:20-cv-00636-ADA Document 96 Filed 04/06/21 Page 1 of 8
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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,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG SEMICONDUCTOR,
`INC., and SAMSUNG AUSTIN
`SEMICONDUCTOR, LLC,
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`Defendants.
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`NO. 6:20-cv-636-ADA
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`PUBLIC VERSION
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`REPLY TO MOTION TO TRANSFER VENUE BY DEFENDANTS SAMSUNG
`ELECTRONICS CO., LTD, SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG
`SEMICONDUCTOR, INC. AND SAMSUNG AUSTIN SEMICONDUCTOR, LLC
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`Case 6:20-cv-00636-ADA Document 96 Filed 04/06/21 Page 2 of 8
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`Plaintiff Demaray LLC’s brief does not dispute that venue is proper in NDCA, or that this
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`case could have been brought there. The threshold determination in the § 1404 analysis is met.
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`NDCA Is Clearly More Convenient for Willing Witnesses. Plaintiff fails to identify any
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`willing witness in WDTX. Resp. at 9-11. There are none. On the other hand, the majority of willing
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`witnesses are in NDCA. First, Dr. Demaray resides in NDCA. Despite Plaintiff having “committed
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`to attending trial,” than does not make WDTX more convenient than Dr. Demaray’s home district,
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`nor has he contended that it is. Second, Samsung Austin’s presence (and alleged infringement at
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`its fabs) in WDTX is irrelevant to likely trial witnesses. Mot. 9-10. Rather, Applied witnesses are
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`most knowledgeable about the configuration of the accused chambers. Id.; Exs. AA, 28;14-29:24;
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`40:8-14; AG, 8-9, 13. Plaintiff contends that “Applied witnesses will voluntarily appear” to
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`downplay the lack of availability of compulsory process, Resp. 9, but even accepting that is true,
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`these important witnesses are all in NDCA: (1) Keith Miller, person in charge of configuring the
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`accused hardware (i.e., the power supplies and any filters) in the accused PVD chambers1 (Ex. AB,
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`10:1-12:8; 202:11-19); (2) John Forster, an important invalidity witness, with unique knowledge
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`regarding Applied’s prior art Vectra IMP PVD system that is no different than Applied systems
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`accused in this case (Ex. AC); and (3) Chris Talbot, who has unique information regarding Dr.
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`Demaray’s unsuccessful attempts to sell and/or license the patents-in-suit. Mot. 5. Plaintiff states
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`that Applied is a third-party in name only, Resp. 10, but regardless of how Applied witnesses are
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`counted, Plaintiff has not identified a single willing witness located in WDTX and concedes there
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`are witnesses in NDCA. The location of these Applied individuals, whether as willing witnesses
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`or witnesses requiring compulsory process, heavily favors transfer.
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`1 Under “venue discovery”, Plaintiff deposed Mr. Miller on technical topics regarding Applied’s
`(not Samsung’s) configuration of the accused chambers because that information, as admitted by
`Plaintiff, comes from Applied. Exs. AD (e.g., topics 6, 7, 9); AE; AF, 32:7-33:2; 34:16-21.
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`-1-
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`Case 6:20-cv-00636-ADA Document 96 Filed 04/06/21 Page 3 of 8
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`Finally, the inventors’ location and willingness to attend trial— who Plaintiff “anticipates”
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`will provide the “most important non-party testimony,” Resp. 10—also favors transfer. Two of the
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`four are in NDCA: Dr. Demaray and Dr. Ravi Mullapudi. According to Plaintiff, Dr. Mullapudi (a
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`former Applied employee) is unlikely to voluntarily appear. Ex. AH, 286:2-287:18. The other two,
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`Dr. Hongmei Zhang (in Boston) and Mukundan Narasimhan (in India), are consulting with
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`Plaintiff. Ex. AI, ¶7. Their expected travel time (flight and drive) to a San Jose versus Waco
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`courthouse favors NDCA or is at least neutral. Ou Decl. ¶¶3-6. Moreover, Samsung expects Mr.
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`Narasimhan (for whom NDCA would be closer) to be a more important witness, as he left Applied
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`to join Symmorphix less than a year before filing for the patents-in-suit and will have unique
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`information to Samsung’s lack of standing and failure to join co-owner affirmative defense. Dkt.
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`No. 29 at 20-23; Ex. AJ, ¶¶ 109-118.
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`Availability of Compulsory Process Heavily Favors Transfer. This factor “weigh[s]
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`heavily in favor of transfer when more third-party witnesses reside within the transferee venue
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`than reside in the transferor venue.” In re Apple, Inc., 581 F. App’x 886, 889 (Fed. Cir. 2014).
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`Plaintiff has not identified a single non-party witness in WDTX. Although Plaintiff points to
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`“Applied personnel in Austin responsible for PVD chamber manufacturing,” Resp. 8-9, it fails to
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`explain why manufacturing personnel (as opposed to those responsible for the development of the
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`accused equipment, such as Mr. Miller and Mr. Forster in NDCA) are likely trial witnesses.
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`Besides Applied, other non-party witnesses with highly relevant and unique information
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`are in NDCA. As discussed, Dr. Mullapudi, the only named inventor not working with Plaintiff,
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`is in NDCA. Samsung also now believes that Robert Weisse, a consultant at the time for
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`Symmorphix (Demaray’s predecessor), may be an unnamed inventor that patentee failed to name
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`during prosecution. Ex. AP, 7. Merits discovery, when permitted, may yield an inequitable conduct
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`Case 6:20-cv-00636-ADA Document 96 Filed 04/06/21 Page 4 of 8
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`defense based on patentee’s omission of Mr. Weisse, making prosecuting attorney, Gary Edwards,
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`also a likely trial witness. At a minimum, both will have unique knowledge to Samsung’s
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`inventorship defense, and both are in NDCA. Mot. 6; Exs. M, AK.
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`Several former Applied and/or Applied Komatsu (“AKT”) employees are likely witnesses
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`to Samsung’s license defense based on a sales and relationship agreement (“SRA”) that granted
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`Applied (and thus, Samsung as Applied’s customer) a license. In deposition, Plaintiff identified
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`several individuals likely involved in the negotiations of the SRA in NDCA: Michael Danaher for
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`Symmorphix and David Sponseller, Larry Edelman, and Jim Scholer for AKT. Exs. AH, 241:18-
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`244:18; AM-AO; AP, 5; AQ, 1; Ou Decl. ¶7. Plaintiff did not identify any in WDTX. After the
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`Court ordered a second deposition, Demaray changed its story by identifying Applied’s former
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`counsel, Donald Verplancken, as critical to the negotiations, despite being “not certain as to who
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`he was, unless he’s in the notes here somewhere” during the first deposition. Ex. AH, 186:2-5.
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`While Mr. Verplancken lists his office in Houston, he is (1) outside the 100-mile radius of the
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`Waco courthouse and (2) prefers a trial in NDCA instead of WDTX. Verp. Decl.¶¶1-5; Ou Decl.
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`¶8. He also identified two other people as individuals most knowledgeable for AKT as to this
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`defense: Kam Law and Don Kumamoto. Id., ¶4. Both are in NDCA. Exs. AR-AS.
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`Finally, Demaray identified other former Symmorphix employees with potential
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`knowledge (and thus potential witnesses) to Samsung’s defenses: Kai-An Wang and Bill Lee, both
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`in NDCA. Exs. AL, 455:16-457:12; 458:11-460:11; AP, 5-6; AQ, 1-2; AT-AU. When considering
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`the location of likely witnesses (willing and subject to compulsory process), at least fifteen are in
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`NDCA, and none are in WDTX (summary in Table 1 of Ou Decl., ¶2; Ex. AW).
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`Access to Sources of Proof Favors Transfer. Plaintiff fails to identify any sources of
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`proof accessible in WDTX, but not in NDCA,
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`-3-
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`Case 6:20-cv-00636-ADA Document 96 Filed 04/06/21 Page 5 of 8
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`Ex. AB, 134:7-135:14; 206:14-207:17. Applied first builds its chambers in its NDCA lab, where
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`it performs demonstrations for customers on the same chambers later purchased and used by
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`Samsung. Id., 15:15-16:1; 197:2-199:13. The physical tools, and the specifications for how they
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`are built and operate, are in NDCA (not WDTX). Id., 203:15-205:2. Plaintiff otherwise concedes
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`that electronic documents “are equally accessible at locations across the country” (Resp. 8) and
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`argues that focusing on the location of physical documents “conflicts with the realities of modern
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`patent litigation.” Resp. 7, n.3. But the location of both electronic and physical documents must
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`be considered in evaluating whether access to sources of proof favor transfer; here they do.
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`Other Practicalities Favor NDCA. Plaintiff relies on its case against Intel but ignores that
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`Intel has also moved to transfer to the home of its headquarters, Plaintiff, and Intel and Samsung’s
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`primary supplier of the accused chambers (Applied)2, and where Applied has filed a DJ action.
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`These cases present the classic “customer suit” that warrants preference for Applied’s case.
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`Plaintiff’s references to the dismissal of Applied’s original DJ action are misleading. The NDCA
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`credited Plaintiff’s representations that its allegations were directed to purported post-installation
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`“configurations” by Samsung in finding no jurisdiction. Ex. AV, 7-12. But affirmative acts by
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`Plaintiff since the original DJ complaint (e.g., the Applied subpoenas) refute those arguments, and
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`establish jurisdiction for Applied’s second action. Ex. AJ, ¶¶9, 27-50. Likewise, this dispute may
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`be resolved by license and ownership defenses personal to Applied and Plaintiff at issue in the DJ
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`action. Id., ¶¶101-118. Transfer to NDCA avoids duplicative litigation and promotes judicial
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`2
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`-4-
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`Case 6:20-cv-00636-ADA Document 96 Filed 04/06/21 Page 6 of 8
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`efficiency. Finally, Plaintiff’s argument that Samsung has “availed itself of the Court’s resources”
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`is unsupported. Opp., 12. Samsung was given no choice but to defend itself, and Plaintiff cites no
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`cases supporting its argument. Judicial attention after a transfer motion is filed should generally
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`not weigh against the movant. In re Apple Inc., 979 F.3d 1332, 1343 (Fed. Cir. 2020).
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` Local Interest Considerations Clearly Favors NDCA because: (1) the patents-in-suit
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`were invented in NDCA; (2) Demaray is in NDCA; (3) the SRA, and Applied/Samsung’s license,
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`was negotiated and executed in NDCA, the interpretation of which is disputed and governed by
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`California law; (4) the employee agreements, which assign rights to the patents in-suit, were
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`entered into by California employees, the enforcement of which is governed by California law; (5)
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`the accused reactors were designed and developed by Applied in NDCA; and (6) Samsung has
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`extensive presence in NDCA. Mot. 3–7. Plaintiff argues that WDTX also has local interests
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`because Samsung manufacturers and sells semiconductor products and both Samsung and Applied
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`have presences in this district. Although true, similar (and more) local interests exist in NDCA.
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`NDCA Is More Familiar with the Significant Questions of California Law. Plaintiff
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`does not dispute this factor, only asserting these are “meritless defense[s]” and a “sideshow.” Opp.,
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`15 n.11. Not so. On the license, Plaintiff provides no basis for declaring it invalid other than its
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`claim that separate and independent assignment agreements are invalid. But the license, negotiated
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`between two sophisticated companies (AKT and Symmorphix), stands on its own; and, far from
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`being a “sideshow,” provides a complete defense on Applied’s equipment. Nor did the prior
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`holding in Advanced involve the SRA or any assignments of the named inventors. Regardless, it
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`is undisputed that questions of California law, and its application here, support transfer.
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`I.
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`CONCLUSION
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`Other than a faster time to trial, not a single factor favors keeping the cases here (or is even
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`neutral). But time to trial cannot override the other factors; transfer should be granted.
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`-5-
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`Case 6:20-cv-00636-ADA Document 96 Filed 04/06/21 Page 7 of 8
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`Dated: March 30, 2021
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`By: /s/ Yar R. Chaikovsky
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`Brian C. Nash
`Texas Bar No. 24051103
`Brian.nash@pillsburylaw.com
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`401 Congress Ave., Suite 1700
`Austin, Texas 78701-3797
`Phone: (512) 580-9629
`Fax: (512) 580-9601
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`Yar R. Chaikovsky
`yarchaikovsky@paulhastings.com
`Philip Ou
`philipou@paulhastings.com
`Allan M. Soobert
`allansoobert@paulhastings.com
`Joseph J. Rumpler, II
`josephrumpler@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, California 94304-1106
`Telephone:
`1(650) 320-1800
`Facsimile:
`1(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
`Tel: (212) 351-3400
`Fax: (212) 351-3401
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`Attorney for Samsung Defendants
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`Case 6:20-cv-00636-ADA Document 96 Filed 04/06/21 Page 8 of 8
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 30, 2021, I electronically filed the foregoing document with the
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`Clerk of the Court using the CM/ECF system which will send notification of such filing via electronic
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`mail to all counsel of record.
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`/s/ Yar R. Chaikovsky
`Yar R. Chaikovsky
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`-7-
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