Case 6:20-cv-00636-ADA Document 99 Filed 04/09/21 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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`RESPONSE TO DEMARAY LLC’S MOTION FOR LEAVE TO FILE SUR-REPLY TO
`SAMSUNG’S MOTION TO TRANSFER VENUE
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`Case 6:20-cv-00636-ADA Document 99 Filed 04/09/21 Page 2 of 8
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`Demaray LLC (“Demaray”) claims it needs to file an improper sur-reply in order to
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`respond to supposedly new evidence submitted with Samsung’s reply brief. Its request should be
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`denied because (1) the supposedly new evidence simply corroborates that witnesses identified by
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`Demaray’s own corporate representative are located in NDCA and (2) the proposed sur-reply
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`consists almost entirely of arguments that Demaray could have made in its opposition brief and
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`that do not relate to the supposedly new evidence. Demaray is seeking to file a sur-reply not
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`because of anything new in Samsung’s reply, but because it recognizes that the arguments made
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`in its opposition brief are insufficient to defeat transfer. But even if considered on its merits, the
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`proposed sur-reply does not provide grounds to deny Samsung’s motion. Taken together, NDCA
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`is clearly the more convenient forum:
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` There are at least fifteen (15) witnesses in NDCA and zero (0) in WDTX;
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`
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`It is undisputed that the design and development of the accused Applied reactors occurs in
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`NDCA; none of that work occurs in WDTX;
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` Similarly, the Applied prior art system was designed and developed in NDCA, not in
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`WDTX;
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` Several witnesses with unique and highly relevant knowledge regarding Samsung’s license
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`defense are in NDCA, but again, none are in WDTX; and
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` All that Demaray can point to is that the accused reactors are manufactured in Texas and
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`that Samsung Austin uses the reactors in Texas, but Samsung is not accused of “making”
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`the reactors and use by Samsung Austin is not in question; a location of any alleged
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`infringement, however, does not equate to the location of relevant witnesses and evidence.
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`Samsung’s Reply Evidence Is Not New Nor Is It Addressed By Demaray’s Proposed
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`Sur-Reply. Plaintiff takes issue with the ‘new’ declaration and exhibits submitted with Samsung’s
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`-1-
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`Case 6:20-cv-00636-ADA Document 99 Filed 04/09/21 Page 3 of 8
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`Reply, but ignores that most of these exhibits simply corroborate that the non-party witnesses that
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`Demaray’s own corporate representative identified are located in NDCA. As shown in Exhibit
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`AW, at least fifteen (15) witnesses are in NDCA, the majority of whom are non-parties and require
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`compulsory process, and zero (0) witnesses are in WDTX. Demaray claims it was not “afforded
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`an opportunity to address” the relevance of these witnesses, but Demaray was aware of each when
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`it filed its opposition brief because they were identified by Demaray’s own principal, Dr.
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`Demaray. Demaray characterizes some of these witnesses (without specifically identifying which
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`ones) as having “incidental roles in peripheral events occurring decades ago”, but this is nothing
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`more than unsupported attorney argument that they are “extraordinary unlikely to be witnesses at
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`trial.” Dkt. No. 91-1 at 1. Dr. Demaray had the opportunity to disclose each individual’s relevant
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`knowledge, and such disclosure could have potentially narrowed the list of trial witnesses. But
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`Demaray refused Samsung’s request to examine Dr. Demaray, and Demaray’s corporate
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`representative identified these individuals. Each is thus as likely a trial witness on Samsung’s prior
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`art system invalidity, licensing, standing/ownership, inventorship and inequitable conduct
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`defenses as Dr. Demaray himself absent evidence to the contrary.
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`Demaray’s proposed sur-reply is also not responsive to the evidence raised by Samsung’s
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`reply. Rather, Demaray proposes arguments and evidence it could have made, but did not, in its
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`opposition. Indeed, Demaray’s proposed sur-reply was planned before Samsung even filed its
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`reply. As the Court knows, Demaray provided a corporate representative, Brian Marcucci, for
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`deposition instead of Dr. Demaray himself. Dkt. 61. The Court then ordered Mr. Marcucci to sit
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`for a second deposition due to counsel’s improper instructions not to answer. Dkt. No. 82. At the
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`end of the second deposition, Demaray’s counsel redirected Mr. Marcucci on topics unrelated to
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`Samsung’s examination, such as his search for patents assigned to Applied Materials containing
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`-2-
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`Case 6:20-cv-00636-ADA Document 99 Filed 04/09/21 Page 4 of 8
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`the words “Austin” and “PVD” to purportedly show that there are relevant witnesses in this district.
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`Ex. AL, 491:23-495:6. Four of Demaray’s proposed sur-reply exhibits were introduced by
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`Demaray’s counsel at that deposition, a week before Samsung’s reply was even filed. Thus,
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`Demaray moves for leave not to respond to “untimely” evidence, but to execute a planned strategy
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`to submit evidence it failed to include in its opposition brief.1 Compare Demaray Exs. 27-28
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`(Applied patents filed 25 years ago), Ex. 31 (Applied article), Ex. 32 (Advanced Energy website)
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`with Exs. 10-13 identified in Marcucci Dep. (Ex. AL) at 491:4-495:6. The Court should not reward
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`that maneuvering by allowing Demaray the last word on Samsung’s motion.
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`The Sur-Reply Arguments Do Not Alter The Analysis Or Conclusion That Transfer
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`is Appropriate. To the extent the Court accepts Demaray’s sur-reply, the new evidence and
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`arguments therein do not affect the analysis that aside from considering the case’s originally set
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`trial date, every factor weighs in favor of transfer. First, Demaray cannot substantiate why the
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`individuals in Exhibit AW are not likely witnesses. Demaray argues, without support, that
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`Samsung’s inventorship defense is “unalleged” and “speculative”. Not so. Demaray’s own sur-
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`reply exhibit, Defendants’ invalidity contentions, confirms Demaray has been on notice of this
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`defense since last December. Ex. 30 at 15-16. Next, even including the individuals from Corning
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`(none of whom negotiated the license of the patents-in-suit from Symmorphix to AKT, and none
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`of whom are located in WDTX), the witness count is still fifteen (15) in NDCA versus zero (0) in
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`WDTX, and fourteen (14) to zero (0) if excluding party witnesses. Moreover, Demaray does not
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`argue that any of the Corning individuals are willing witnesses or that they would be subject to
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`1 Within thirty minutes of Samsung’s filing its reply, Demaray contacted Samsung indicating its
`intent to seek leave to file a sur-reply. Demaray filed its motion the next day while ignoring
`Samsung’s request to meet and confer about what purportedly new arguments and evidence
`Demaray sought to address. That practice is inconsistent with the letter and spirit of Local Rule
`CV-7(i), which requires a conference and good-faith attempt to resolve matters by agreement.
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`-3-
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`Case 6:20-cv-00636-ADA Document 99 Filed 04/09/21 Page 5 of 8
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`compulsory process from either the NDCA or WDTX court—they do not affect the analysis or
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`conclusion. The availability of compulsory process still “weigh[s] heavily in favor of transfer when
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`more third-party witnesses reside within the transferee venue than reside in the transferor venue.”
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`In re Apple, Inc., 581 F. App’x 886, 889 (Fed. Cir. 2014).
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`Next, Demaray’s reliance on Mr. Marcucci’s belated patent searches for “PVD” and
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`“Austin” to speculate about witnesses with knowledge in this District is not credible. Dkt. 91, Ex.
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`A at 3. Demaray knows that the accused Applied RMS PVD reactors were designed, developed
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`and configured at Applied’s headquarters and Maydan Technology Center in NDCA. Demaray
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`had the opportunity to depose Applied about where this work occurs, and whether any of it
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`occurred in Austin. Demaray’s subpoena to Applied included topics on these very points. Ou Ex.
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`AD (see, e.g.,Topics 4-5). Although the accused Applied RMS PVD reactors are commercially
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`manufactured in Austin, the important fact is that such manufacturing only happens after the
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`reactor is first built for customer demonstratives at Applied’s Maydan Technology Center in
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`NDCA, where the individuals responsible for its design, development, initial build, and
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`configuration (i.e., individuals within Keith Miller’s organization) are located. The patents Mr.
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`Marcucci located do not suggest otherwise. Mr. Miller confirms that none of the named inventors
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`listing Austin as their location design Applied’s PVD reactors. Miller Decl., ¶¶ 3-4.
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`Mr. Miller also reaffirmed his prior testimony: the design,
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`development, initial build and configuration of the accused Applied RMS PVD reactors occurs in
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`NDCA, not in Austin; and there is no research and development work on these PVD reactors done
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`in Austin. Id., ¶ 5. Design documents for those PVD reactors are also created and maintained by
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`his organization in NDCA
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`-4-
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`Case 6:20-cv-00636-ADA Document 99 Filed 04/09/21 Page 6 of 8
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` Mr. Miller also refuted Demaray’s reliance on Applied patents to suggest
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`that prior art system witnesses are in Texas. Id., ¶7. Like the Applied systems accused of
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`infringement, these prior art systems were also designed and developed in NDCA, including by
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`former Symmorphix employees identified in Exhibit AW. Demaray’s proposed sur-reply does not
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`identify or contend that there are actually any likely prior art trial witnesses in WDTX, nor can
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`Demaray credibly assert that the inventors on these irrelevant patents would be such witnesses.
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`Finally, Demaray’s proposed sur-reply revisits the same arguments regarding other
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`practicalities, court congestion, localized interest, and public interest factors that Demaray already
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`raised in its opposition, and none of which respond to any “new” arguments or evidence in
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`Samsung’s reply. Notably, however, Demaray does not dispute that any localized interest of this
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`district also exists in NDCA, or that NDCA has additional local interests not present in this district.
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`Samsung and Applied both have a significant presence in NDCA, as the accused reactors are
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`designed, developed, tested and configured in NDCA, and Samsung markets and sells products
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`produced by the accused reactors in NDCA. Nor does Demaray dispute that California law governs
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`significant disputed issues, including that Samsung is licensed under the SRA. No Court has found
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`the SRA invalid, nor has Dr. Demaray, who was personally involved in the negotiations, claimed
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`the license is invalid. Samsung expects witnesses from the AKT/Applied-side, including Don
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`Kumamoto (located in NDCA), Kam Law (located in NDCA) and Donald Verplancken (located
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`in Houston, but prefers to attend trial in NDCA) to testify to the intent of the parties in entering
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`and modifying the license grant and rebut any claim by Demaray that the license grant is invalid.
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`Accordingly, Demaray’s motion for leave should be denied for at least these reasons.
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`Samsung also respectfully renews its request for oral argument on its motion to transfer at
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`the Court’s convenience. Dkt. 86.
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`-5-
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`Case 6:20-cv-00636-ADA Document 99 Filed 04/09/21 Page 7 of 8
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`Dated: April 2, 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
`
`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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`-6-
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`Case 6:20-cv-00636-ADA Document 99 Filed 04/09/21 Page 8 of 8
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 2, 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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