Case 4:20-cv-00991-ALM Document 13 Filed 04/05/21 Page 1 of 8 PageID #: 366
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
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`OCEAN SEMICONDUCTOR LLC,
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`Plaintiff,
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`v.
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`HUAWEI DEVICE USA, INC.,
`HUAWEI DEVICE CO., LTD.; and
`HISILICON TECHNOLOGIES CO., LTD.,
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`Defendants.
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`No. 4:20-cv-991
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`Jury Trial Demanded
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`DEFENDANTS’ MOTION TO DISMISS
`FOR FAILURE TO STATE A CLAIM UNDER 35 U.S.C. § 271(g)
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`Case 4:20-cv-00991-ALM Document 13 Filed 04/05/21 Page 2 of 8 PageID #: 367
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`Defendants Huawei Device USA, Inc., Huawei Device Co., Ltd., and HiSilicon
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`Technologies Co., Ltd. (collectively “Huawei”) move to dismiss four of Plaintiff Ocean
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`Semiconductor LLC’s (“Ocean” or “Plaintiff”) infringement claims arising under 35 U.S.C.
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`§ 271(g) for failure to state a claim. Infringement under Section 271(g) is limited to importation
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`of “a product which is made by a process patented in the United States.” This provision applies
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`only to process claims that result in a manufactured good. Section 271(g) does not encompass
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`method claims that result in the mere generation of information, or the testing of products or
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`intermediaries. In its Complaint, Plaintiff asserts that the importation of certain Huawei
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`semiconductor chips infringes Plaintiff’s patents under 271(g). The asserted claims from four1 of
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`the patents-in-suit, however, relate to methods of controlling the fabrication tools that may be
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`used in making semiconductor chips, not processes of making the chips themselves. Indeed, the
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`claimed methods generate only information and do not create a manufactured good. Thus, the
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`Court should dismiss Plaintiff’s 271(g) claims as to these four patents.2
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`I.
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`LEGAL STANDARD
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`35 U.S.C. § 271(g) creates a cause of action for infringement for the importation, sale, or
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`use of a product manufactured according to a patented method, but only where (1) there is no
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`1 Defendants reserve the right to challenge Plaintiff’s Section 271(g) claims as to other
`asserted patents as the case progresses.
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`2 This issue is currently pending before Judge Albright in the Western District of Texas,
`as other defendants accused of infringing some or all of the same patents filed similar motions in
`their respective cases: Ocean Semiconductor LLC v. NVIDIA Corp., No. 6:20-cv-1211-ADA,
`Dkt. 13 (W.D. Tex. Mar. 12, 2021); Ocean Semiconductor LLC v. NXP Semiconductors N.V.,
`No. 6:20-cv-1212-ADA, Dkt. 15 (W.D. Tex. Mar. 12, 2021); Ocean Semiconductor LLC v.
`Silicon Labs Inc., No. 6:20-cv-1214-ADA, Dkt. 14 (W.D. Tex. Mar. 11, 2021); Ocean
`Semicondcutor LLC v. STMicroelectronics Inc., No. 6:20-cv-1215-ADA, Dkt. 18 (W.D. Tex.
`Mar. 12, 2021); Ocean Semiconductor LLC v. Western Digital Techs., Inc., No. 6:20-cv-1216-
`ADA, Dkt. 12 (W.D. Tex. Mar. 12, 2021).
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`1
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`Case 4:20-cv-00991-ALM Document 13 Filed 04/05/21 Page 3 of 8 PageID #: 368
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`infringement under Section 271(a); (2) the product produced by the claimed method is not
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`substantially changed before importation; and (3) the product produced according to a claimed
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`process is not a trivial component of something else. See 35 U.S.C. 271(g).
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`Infringement under § 271(g) is “limited to physical goods that were manufactured and
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`does not include information generated by a patented process.” Bayer AG et al. v. Housey
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`Pharmaceuticals, Inc., 340 F.3d 1367, 1368 (Fed. Cir. 2003). More specifically, the claimed
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`process “must be used directly in the manufacture of the product, and not merely as a predicate
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`process.” Id. at 1378. Deficient Section 271(g) claims may be dismissed at the Rule 12(b) stage.
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`Id. (affirming dismissal at the Rule 12(b) stage where the asserted claim covered the generation
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`of information, not the manufacture of a product).
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`Further, § 271(g) claims do not extend “to methods of testing a final product or an
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`intermediate substance to ensure that the intended product or substance has in fact been made.”
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`Momenta Pharms., Inc. v. Teva Pharms. USA Inc., 809 F.3d 610, 615 (Fed. Cir. 2015) (alteration
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`in original). A product is “made by” a process when that process “create[s] or give[s] new
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`properties” to the product. Id. at 616–17. Further, Section 271(g) will not apply when the
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`claimed process is too far removed from the making of the product. Id. at 617.
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`II.
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`ARGUMENT
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`Plaintiff asserts that Huawei infringes U.S. Pat. Nos. 6,725,402 (Count II); 8,676,538
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`(Count VII); 6,907,305 (Count III); and 6,968,248 (Count IV) under 271(g). Dkt. 1 (Complaint).
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`As discussed below, all the asserted claims from these patents are directed to processes for
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`generating information to be used by tools in an assembly line, rather than methods to
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`manufacture semiconductor chips, which are the accused products in this case.
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`2
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`Case 4:20-cv-00991-ALM Document 13 Filed 04/05/21 Page 4 of 8 PageID #: 369
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`A.
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`Ocean’s fault detection patents generate information, not a physical article.
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`1.
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`’402 Patent, Claim 1
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`Plaintiff alleges that Huawei infringes claim 1 of the ’402 patent under Section 271(g).
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`Dkt. 1 ¶ 94. Claim 1 of the ’402 patent reads:
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`1. A method comprising:
`receiving at a first interface operational state data of a processing tool related to
`the manufacture of a processing piece;
`sending the state data from the first interface to a fault detection unit, wherein the
`act of sending comprises:
`sending the state data from the first interface to a data collection unit;
`accumulating the state data at the data collection unit;
`translating the state data from a first communications protocol to a second
`communications protocol compatible with the fault detection unit; and
`sending the translated state data from the data collection unit to the fault
`detection unit;
`determining if a fault condition exists with the processing tool based upon the
`state data received by the fault detection unit;
`performing a predetermined action on the processing tool in response to the
`presence of a fault condition; and
`sending an alarm signal indicative of the fault condition to an advanced process
`control framework from the fault detection unit providing that a fault condition of
`the processing tool was determined by the fault detection unit,
`wherein performing a predetermined action further comprises sending a signal by
`the framework to the first interface reflective of the predetermined action.
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`As the claim language shows, claim 1 of the ’402 patent covers “receiving...operational
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`state data of a processing tool”; “sending the state data...to a fault detection unit”; using the state
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`data to “determine[e] if a fault condition exists”; and if so, “performing a predetermined action
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`on the processing tool,” including “sending a signal...reflective of the predetermined action,” and
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`sending an alarm signal indicative of the fault condition.” In other words, claim 1 produces only
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`information – notification of the existence of a fault condition. It does not claim a method to
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`Case 4:20-cv-00991-ALM Document 13 Filed 04/05/21 Page 5 of 8 PageID #: 370
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`manufacture a semiconductor chip. Accordingly, allegations of Section 271(g) infringement of
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`the ’402 patent are not legally cognizable and should be dismissed.
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`2.
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`’538 Patent, Claim 1
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`Plaintiff alleges that Huawei infringes claim 1 of the ’538 patent under § 271(g). Dkt. 1 ¶
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`195. Claim 1 of the ’538 patent reads:
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`A method, comprising:
`performing in a computer a fault detection analysis relating to processing of a
`workpiece;
`determining in a said computer a relationship of a parameter relating to said fault
`detection analysis to a detected fault;
`adjusting in said computer a weighting of said parameter based upon said
`relationship of said parameter to said detected fault; and
`performing in said computer the fault detection analysis relating to processing of
`a subsequent workpiece using said adjusted weighting.
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`As the claim language shows, claim 1 of the ’538 patent covers “performing . . . a fault
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`detection analysis”; “determining...a relationship of a parameter relating to said fault detection
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`analysis to a detected fault”; “adjusting...a weighting of said parameter”; and “performing...the
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`fault detection analysis...using said adjusted weighting.” Claim 1 covers adjusting a parameter
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`used for fault detection to perform fault detection using the adjusted parameter – all of which is
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`informational. No physical article is made by performing the claimed method, and § 271(g)
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`cannot apply. Accordingly, Plaintiff’s allegations of infringement of the ’538 patent under
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`§ 271(g) should be dismissed.
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`B.
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`Ocean’s scheduling patents output information, not a physical article.
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`1.
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`’305 Patent, Claim 1
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`Plaintiff alleges that Huawei infringes claim 1 of the ’305 patent under Section 271(g).
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`Dkt. 1 ¶ 114. Claim 1 of the ’305 patent reads:
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`Case 4:20-cv-00991-ALM Document 13 Filed 04/05/21 Page 6 of 8 PageID #: 371
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`A method for scheduling in an automated manufacturing environment, comprising:
`detecting an occurrence of a predetermined event in a process flow;
`notifying a software scheduling agent of the occurrence; and,
`reactively scheduling an action from the software scheduling agent responsive to
`the detection of the predetermined event.
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`Claim 1 of the ’305 patent is directed to “scheduling in an automated manufacturing
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`environment” by “detecting an occurrence of a predetermined event”; “notifying a software
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`scheduling agent of the occurrence”; and “reactively scheduling an action” in response. Again,
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`this method does not manufacture a physical product. Rather, it creates information, namely the
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`scheduling of an action from the software scheduling agent. Because the method does not
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`manufacture the accused products, Plaintiff’s allegations of infringement of the ’305 patent
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`under § 271(g) should be dismissed.
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`2.
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`’248 Patent, Claim 1
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`Plaintiff alleges that Huawei infringes claim 1 of the ’248 patent under § 271(g). Dkt. 1
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`¶ 134. Claim 1 of the ’248 patent reads:
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`A method for scheduling in an automated manufacturing environment, comprising:
`automatically detecting an occurrence of a predetermined event in an integrated,
`automated process flow;
`automatically notifying a software scheduling agent of the occurrence; and
`reactively scheduling an action from the software scheduling agent responsive to
`the detection of the predetermined event.
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`Claim 1 of the ’248 patent is virtually identical to claim 1 of the ’305 patent. The only
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`difference is insertion of the words “automated” and “automatically” (see emphasis added,
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`above), and that does not change the Section 271(g) analysis. Just as with the ’305 patent, the
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`allegations of § 271(g) infringement of the ’248 patent are not legally cognizable and should be
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`dismissed with prejudice.
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`III.
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`CONCLUSION
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`The application of Section 271(g) is limited to physical goods manufactured by a
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`patented process, not information generated by a patented process. Section 271(g) is also not
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`applicable to processes for testing final products or intermediate substances to ensure that the
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`intended product or substance has in fact been made. Because the asserted claims from the ’402,
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`’538, ’305, and ’248 patents are all directed to the generation of information or testing of the
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`process for manufacturing the accused products, § 271(g) does not provide a legally cognizable
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`claim. Accordingly, Plaintiff’s allegations of infringement under § 271(g) for these patents
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`(Counts II, III, IV, and VII) should be dismissed.
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`Dated: April 5, 2021
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`Respectfully submitted,
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`/s/ Aaron Davidson
`Aaron Davidson
`Texas Bar No. 24007080
`adavidson@coleschotz.com
`Vishal Patel
`Texas Bar No. 24065885
`vpatel@coleschotz.com
`James R. Perkins
`Texas Bar No. 24074881
`perkins@coleschotz.com
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`COLE SCHOTZ, P.C.
`901 Main Street, Suite 4120
`Dallas, Texas 75202
`Tel: (469) 557-9390
`Fax: (469) 533-1587
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`ATTORNEYS FOR HUAWEI DEVICE USA, INC.,
`HUAWEI DEVICE CO., LTD., AND HISILICON
`TECHNOLOGIES CO., LTD.
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`6
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`Case 4:20-cv-00991-ALM Document 13 Filed 04/05/21 Page 8 of 8 PageID #: 373
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing was electronically filed this
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`5th day of April 2021, using the Court’s CM/ECF system.
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`/s/ Aaron Davidson
`Aaron Davidson
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`7
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