Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 1 of 19 PageID #: 375
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`
`OCEAN SEMICONDUCTOR LLC,
`
`
`
`
`Plaintiff,
`
`v.
`
`HUAWEI DEVICE USA, INC., HUAWEI
`DEVICE CO., LTD., AND HISILICON
`TECHNOLOGIES CO., LTD.,
`
`
`
`Defendants.
`
`
`
`C.A. No. 4:20-cv-00991-ALM
`
`DEMAND FOR JURY TRIAL
`
`
`PLAINTIFF OCEAN SEMICONDUCTOR LLC’S OPPOSITION
`TO DEFENDANTS’ MOTION
`TO DISMISS FOR FAILURE TO STATE A CLAIM UNDER 35 U.S.C. § 271(g)
`
`
`
`
`
`
`
`
`Dated: April 19, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DEVLIN LAW FIRM LLC
`Timothy Devlin
`tdevlin@devlinlawfirm.com
`Henrik Parker (pro hac vice forthcoming)
`hparker@devlinlawfirm.com
`Alex Chan
`State Bar No. 24108051
`achan@devlinlawfirm.com
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Telephone: (302) 449-9010
`Facsimile: (302) 353-4251
`
`Attorneys for Plaintiff
`Ocean Semiconductor LLP
`
`1
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 2 of 19 PageID #: 376
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ................................................................................................................... 1
`
`II.
`
`LEGAL STANDARD .......................................................................................................... 1
`
`A. The High Bar for a Motion to Dismiss ................................................................................ 1
`
`B. The Broad Reach of Infringement Under 35 U.S.C. § 271(g) ............................................. 2
`
`III. ARGUMENT ....................................................................................................................... 3
`
`A. The Methods of the ’402 Patent Involve the Making of Physical Products Such as Silicon
`Wafers, and Ocean’s Pleadings Reflect that Fact ....................................................................... 4
`
`1. The Intrinsic Record Amply Shows that Physical Products Are Being Manufactured ... 4
`
`2. Huawei’s Argument Fails Because There Is No Legitimate Dispute that Each Claimed
`Limitation is Performed During the Manufacture of Physical Products ................................. 5
`
`3. Huawei’s Arguments Are Not Supported by Bayer or Momenta .................................... 6
`
`B. The Methods of the ’538 Patent Involve the Making of Physical Products Such as Silicon
`Wafers, and Ocean’s Pleadings Reflect that Fact ....................................................................... 7
`
`1. Huawei’s Arguments Are Not Supported by Bayer or Momenta .................................... 9
`
`2. Huawei Omits Key Claim Elements that Unmistakably Cover the Manufacture of
`Physical Products .................................................................................................................. 10
`
`C. The Methods of the ’305 and ’248 Patents Involve the Making of Physical Products Such
`as Silicon Wafers, and Ocean’s Pleadings Reflect that Fact .................................................... 10
`
`D. In All Events, Fact Issues Preclude Dismissal ................................................................... 13
`
`E. At Worst, Rather Than Dismissing the Complaint, Leave to Amend Should Be Granted 14
`
`IV. CONCLUSION .................................................................................................................. 14
`
`
`
`
`
`
`
`
`i
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 3 of 19 PageID #: 377
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Ashcroft v. Iqbal
`556 U.S. 662 (2009) .................................................................................................................... 1
`
`Bayer AG v. Housey Pharm., Inc.,
`340 F.3d 1367, 1368 (Fed. Cir. 2003)................................................................................ passim
`
`Bell Atl. Corp. v. Twombly
`550 U.S. 544 (2007) ................................................................................................................ 1, 2
`
`Biotec Biologische Naturverpackungen GmbH & Co. v. Biocorp, Inc.,
`249 F.3d 1341 (Fed. Cir. 2001)................................................................................................. 15
`
`Bio-Technology General Corp. v. Genentech, Inc.,
`80 F.3d 1553 (Fed. Cir. 1996)........................................................................................... 4, 8, 14
`
`Bustos v. Martini Club, Inc.,
`599 F.3d 458 (5th Cir. 2010) ...................................................................................................... 2
`
`Causey v. Sewell Cadillac-Chevrolet, Inc.
`394 F.3d 285 (5th Cir. 2004) ...................................................................................................... 2
`
`Disc Disease Sols. Inc. v. VGH Sols., Inc.
`888 F.3 1256 (Fed. Cir. 2018)..................................................................................................... 3
`
`Eli Lilly & Co. v. Am. Cyanamid Co.,
`82 F.3d 1568 (Fed. Cir. 1996)........................................................................................... 3, 4, 14
`
`Encoditech, LLC v. Citizen Watch Co. of Am.
`C.A. No. 18-1335-XR, 2019 U.S. Dist. LEXIS 105833 (W.D. Tex. June 25, 2019) ................. 3
`
`Frye v. Anadarko Petro. Corp.,
`953 F.3d 285 (5th Cir. 2019) ....................................................................................................... 2
`
`Griggs v. Hinds Junior Coll.,
`563 F.2d 179 (5th Cir. 1977) .................................................................................................... 16
`
`Lone Star Motor Imp., Inc. v. Citroen Cars Corp.,
`288 F.2d 69 (5th Cir. 1961) ...................................................................................................... 16
`
`Lormand v. US Unwired, Inc.,
`565 F.3d 228 (5th Cir. 2009) ....................................................................................................... 2
`
`Millennium Cryogenic Techs., Ltd. v. Weatherford Artificial Lift Sys.,
`Civil Action No. H-12-0890-KPE,
`2012 U.S. Dist. LEXIS 196638 (S.D. Tex. 2012) .................................................................... 15
`
`Momenta Pharms., Inc. v. Teva Pharms. USA Inc.,
`809 F.3d 610 (Fed. Cir. 2015)..................................................................................................... 9
`
`Ormco Corp. v. Align Tech., Inc.,
`653 F. Supp. 2d 1016 (C.D. Cal. 2009) .............................................................................. 14, 15
`
`ii
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 4 of 19 PageID #: 378
`
`Skinner v. Switzer
`562 U.S. 521 (2011) .................................................................................................................... 2
`
`Zond, LLC v. Renesas Elecs. Corp.,
`Civil Action No. 13-11625-NMG,
`2014 U.S. Dist. LEXIS 114363 (D. Mass. Aug. 15, 2014)....................................................... 15
`
`
`
`Statutes
`
`35 U.S.C. § 271 ............................................................................................................................... 2
`
`Rules
`
`Fed. R. Civ. P. 15 .......................................................................................................................... 14
`
`
`
`
`
`iii
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 5 of 19 PageID #: 379
`
`I.
`
`INTRODUCTION
`
`The Motion to Dismiss (Dkt. 13) filed by by defendants Huawei Device USA, Inc.,
`
`Huawei Device Co., Ltd., and HiSilicon Technologies Co., Ltd. (collectively “Huawei”), which
`
`is essentially a replica of a Rule 12(b) motion filed by NXP—a defendant in a parallel action
`
`pending in the Western District of Texas (Ocean Semicondcutor LLC. V. NXP Semiconductors
`
`N.V. et al., No. 6:20-cv-1212-ADA (W.D. Tex.), misconstrues both the nature of the patents at
`
`issue and the applicable law. Each of the four patents asserted by Ocean Semiconductor LLC
`
`(“Ocean”) in this action that Huawei seeks to dismiss—U.S. Patent Nos. 6,725,402 (“’402
`
`patent”), 8,676,538 (“’538 patent”), 6,907,305 (“’305 patent”), and 6,968,248 (“’248 patent”)
`
`(collectively “Asserted Patents”)—describes the manufacturing of semiconductors in
`
`excruciating detail and claims methods used for, and during, that manufacturing used, for
`
`example, to manufacture semiconductor wafers—physical products falling squarely within the
`
`scope of § 271(g). Huawei’s bare bones motion, which includes little factual or legal argument,
`
`coupled with Huawei’s (a) artificial attempt to limit the Court’s analysis to isolated claimed
`
`features; and (b) misapplication of the relevant law, falls far short of the high bar necessary to
`
`obtain dismissal. In all events, fact issues preclude dismissal and the Motion should be denied.
`
`II.
`
`LEGAL STANDARD
`
`A.
`
`The High Bar for a Motion to Dismiss
`
`Under Federal Rule of Civil Procedure 12(b)(6), dismissal of a complaint or cause of
`
`action is appropriate if it fails to state a claim for relief that is “plausible on its face.” Ashcroft v.
`
`Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
`
`When considering a motion to dismiss under Rule 12(b)(6), “[t]he court must accept all well-
`
`pleaded facts as true and must draw all reasonable inferences in favor of the plaintiff.” Frye v.
`
`Anadarko Petro. Corp., 953 F.3d 285, 290-91 (5th Cir. 2019) (citing Lormand v. US Unwired,
`
`1
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 6 of 19 PageID #: 380
`
`Inc., 565 F.3d 228, 232 (5th Cir. 2009));1 see also Bustos v. Martini Club, Inc., 599 F.3d 458, 461
`
`(5th Cir. 2010) (internal quotations omitted); see also Bell Atl. Corp., 550 U.S. at 570. The
`
`question resolved is “whether [the] complaint was sufficient to cross the federal court’s
`
`threshold”—not whether the plaintiff will ultimately prevail. Skinner v. Switzer, 562 U.S. 521,
`
`530 (2011). Pleadings should be construed broadly in light of the allegations as a whole, and the
`
`facts pled should be viewed expansively in light of the liberal pleading standards. See, e.g.,
`
`Causey v. Sewell Cadillac-Chevrolet, Inc., 394 F.3d 285, 288-90 (5th Cir. 2004).
`
`This Court has held, based on Federal Circuit precedent, that identification of specific
`
`products, when coupled with allegations that defendants make, sell, offer to sell, import or use
`
`the accused products in the United States the accused products and that each accused product
`
`satisfies each and every limitation of at least one patent claim is enough to meet “the relatively
`
`low threshold for stating a claim for patent infringement.” Encoditech, LLC v. Citizen Watch Co.
`
`of Am., C.A. No. 18-1335-XR, 2019 U.S. Dist. LEXIS 105833, at *10 (W.D. Tex. June 25, 2019)
`
`(citing Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3 1256 (Fed. Cir. 2018)).
`
`B.
`
`The Broad Reach of Infringement Under 35 U.S.C. § 271(g)
`
`Section 271(g) attaches liability to the import, use, sale, or offer for sale of products made
`
`by a patented process. “By enacting the Process Patent Amendments Act, the principal portion
`
`of which is codified as 35 U.S.C. § 271(g), Congress changed the law by making it an act of
`
`infringement to import into the United States, or to sell or use within the United States ‘a product
`
`which is made by a process patented in the United States[.]’” Eli Lilly & Co. v. Am. Cyanamid
`
`Co., 82 F.3d 1568, 1572 (Fed. Cir. 1996).
`
`Congress created liability under § 271(g) to ensure that holders of process patents and
`
`domestic manufacturers were not disadvantaged relative to holders of device and system claims
`
`
`1 Unless otherwise indicated, all emphasis in this brief has been added.
`2
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 7 of 19 PageID #: 381
`
`or foreign manufacturers, and the courts interpret “made by” in view of these policy goals.
`
`Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1368, 1373 (Fed. Cir. 2003); Bio-Technology
`
`General Corp. v. Genentech, Inc., 80 F.3d 1553, 1561 (Fed. Cir. 1996), cert. denied, 519 U.S.
`
`911 (1996); Eli Lilly & Co. 82 F.3d at 1578; 5 Chisum on Patents § 16.02[6][d][iv] (2019). The
`
`Federal Circuit has interpreted the term “made” as used in § 271(g) to mean “manufactured” and
`
`the term “product” to mean a “physical article.” Bayer, 340 F.3d at 1377.
`
`Section 271(g) is applied broadly. When enacting the Process Patent Amendments Act
`
`(“PPAA”), Congress specifically declined to require that a product be made “directly” from a
`
`patented process in order to infringe under § 271(g). See Eli Lilly & Co., 82 F.3d at 1576. “In
`
`enacting the PPAA, Congress did not include a positive definition of ‘made by.’ The court must
`
`interpret ‘made by’ in light of the PPAA’s policy to afford meaningful protection for owners of
`
`patents claiming processes.” 5 Chisum on Patents § 16.02[6][d][iv] (2019) (citing Bayer, 340
`
`F.3d at 1368; Bio-Technology General Corp., 80 F.3d at 1561). “The connection between a
`
`patented process and a product can vary from immediate . . . to remote[.]” 5 Chisum on Patents
`
`§ 16.02[6][d][iv] (2019).
`
`Consequently, whether a product is “made by” a patent should be interpreted expansively
`
`to include products made through the “agency,” “efficacy,” “work,” “participation,” “means or
`
`instrumentality,” “medium,” or “operation” of a process. Bayer, 340 F.3d at 1378, n.12 (citing
`
`Webster’s and Random House dictionaries).
`
`III. ARGUMENT
`
`Contrary to Huawei’s misdirection and simplistic, conclusory allegations, each of the
`
`four patents at issue claims methods that relate directly to the making of physical products. As
`
`such, Ocean properly pleaded causes of action under § 271(g) as to each of those patents. In all
`
`events, fact issues preclude dismissal at this early stage.
`
`3
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 8 of 19 PageID #: 382
`
`A.
`
`The Methods of the ’402 Patent Involve the Making of Physical Products
`Such as Silicon Wafers, and Ocean’s Pleadings Reflect that Fact
`
`1.
`
`The Intrinsic Record Amply Shows that Physical Products Are Being
`Manufactured
`
`Contrary to Huawei’s contention,2 the ’402 patent itself confirms that the claimed
`
`invention directly relates to: (1) the making of physical products such as silicon wafers; and (2)
`
`the actual manufacture of such products. For example, the exemplary system and its
`
`manufacturing tools are “semiconductor fabrication equipment used to produce a processing
`
`piece, such as a silicon wafer,” and the exemplary tool is a “Rapid Thermal Processing (RTP)
`
`tool” or “a tool for processing silicon wafers.” (Dkt. 1-3 (’402 patent) at 2:42-48.) The
`
`independent method claim recites “the manufacture of a processing piece”; and the independent
`
`system claim recites a tool adapted to “manufacture a processing piece” (claim 8). One
`
`dependent claim recites that “the processing piece is a silicon wafer” (claim 14).
`
`Ocean’s pleading allegations are consistent with the ’402 patent’s focus on physical
`
`articles, in particular semiconductor products made by Huawei and its contract suppliers. In
`
`particular, the Complaint limits its accusations under § 271(g) to products made using the
`
`claimed method—expressly alleging that “Huawei has directly infringed and continues to
`
`infringe at least claim 1 of the ’402 patent . . . by importing into the United States, and/or using,
`
`and/or selling, and/or offering for sale in the United States, without authority or license, the ’402
`
`Accused Products, in violation of 35 U.S.C. § 271(g).” (Dkt. 1 at ¶ 94.)
`
`
`2 Notably, one of the other defendants—NVIDIA—in parallel actions pending in the Western
`District of Texas (Ocean Semicondcutor LLC. V. NVIDIA Corporation, No. 6:20-cv-1211-ADA
`(W.D.Tex.)) who previously filed motions to dismiss litigation (see Dkt. 13 at 1 n.2) does not
`challenge the applicability of § 271(g) to the ’402 patent while challenging that section’s
`applicability to the other three patents here at issue, thus implicitly recognizing that Huawei’s
`argument here has no merit. (See Ex. 1 to the co-filed Declaration of Alex Chan in Support of
`Plaintiff’s Brief in Opposition to Defendant’s Motion to Dismiss Under 35 U.S.C. § 271(g), at ¶
`4.)
`
`4
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 9 of 19 PageID #: 383
`
`2.
`
`Huawei’s Argument Fails Because There Is No Legitimate Dispute
`that Each Claimed Limitation is Performed During the Manufacture
`of Physical Products
`
`Apparently recognizing that Ocean clearly accuses products falling with the scope of §
`
`271(g), Huawei relies solely on a misguided contention that “claim 1 produces only information –
`
`notification of the existence of a fault condition.” (Dkt. 13 at 3.) Huawei’s argument, however, is
`
`premised on a deliberate misreading of what the ’402 patent actually describes and claims—a
`
`process for manufacturing physical products (“processing pieces”) such as silicon wafers. The
`
`patent claims themselves demonstrate this fact.
`
`Specifically, the patented system receives “operational state data of a processing tool”
`
`(e.g., recited as “receiving . . .operational state data of a processing tool related to the
`
`manufacture of a processing piece” in claim 1) “when the tool 105 is operating and processing a
`
`given wafer,” and sends data to a fault detection unit (e.g., recited as “sending the translated state
`
`data from the data collection unit to the fault detection unit in claim 1) “while the particular
`
`wafer is being processed” to ensure that the tool is operating “within acceptable operational
`
`limits (Dkt. 1-3 (’402 patent) at 3:27-31; 4:3-7.) If the processing tool is operating within
`
`appropriate parameters, manufacturing proceeds (e.g., recited as “determining if a fault condition
`
`exists with the processing tool” in claim 1). If a “fault condition” is detected, the system can act
`
`to adjust the manufacturing process in a variety of ways, including: “manipulate the tool,” (id. at
`
`5:18-20); “shut down the tool,” (id. at 5:65-6:4); or “apprise a technician of any potential
`
`solutions to rectify the fault condition” (id. at 6:4-9) (e.g., recited in claim 1 as “performing a
`
`predetermined action on the processing tool in response to the presence of a fault condition”).
`
`Where the system is monitoring tools but detects no fault, manufacturing can continue as normal.
`
`All of these activities, and the recited limitations, relate directly to the manufacture of
`
`the physical products and the language of claim 1 readily reflects these activities. Thus,
`
`5
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 10 of 19 PageID #: 384
`
`Huawei’s narrow interpretation of § 271(g) misses the mark. The target of § 271(g) is the
`
`importation of a product made using a patented process or subsequent use, sale, or offer for sale
`
`of that product within the United States. Bayer, 340 F.3d at 1375. While the statute requires a
`
`physical product, the offending physical product is that which was manufactured using the
`
`patented process. (Id. at 1377.) In that context, what is important here is not the “notification of
`
`the existence of a fault condition” (Dkt. 13 at 3) in isolation, as has been phrased by Huawei, but
`
`the use of that process in the manufacturing of the physical products later imported into, for use,
`
`sale, or offer for sale in, the United States.
`
`Ocean’s Complaint alleges that Huawei used (and still uses) the patented processes,
`
`including all of the limitations of claim 1, as part of the manufacture of Huawei’s accused
`
`products. (See, e.g., Dkt. 1 at ¶ 92: “The ’402 Accused Products are manufactured by a process
`
`including all of the limitations of at least claim 1 of the ’402 patent. Each such product includes
`
`an integrated circuit fabricated or manufactured using, for example, the Applied Materials E3
`
`system and/or PDF Solutions’ Exensio system.”). In other words, a semiconductor physical
`
`product, such as a silicon wafer, made by a manufacturing tool that uses the patented fault
`
`detection method to identify manufacturing faults is a product “made by” a patented process for
`
`detecting such faults. This is the exact type of conduct prohibited by § 271(g). Bio-Tech. Gen.
`
`Corp., 80 F.3d at 1561 (holding that a protein made by a host organism expressing an inserted
`
`plasmid was a product “made by” a patented process for creating the plasmid).
`
`3.
`
`Huawei’s Arguments Are Not Supported by Bayer or Momenta
`
`While Huawei cites to Bayer and Momenta as allegedly supportive of its contentions, a
`
`proper analysis reveals just the contrary.
`
`First, as set out in Ocean’s Complaint, the determination of fault conditions and the
`
`performance of a corrective action are crucial steps in the manufacture of Huawei’s
`
`6
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 11 of 19 PageID #: 385
`
`semiconductors, unlike the generation of information in Bayer—information that was not part of
`
`the manufacture of the drug products accused of infringement. Section 271(g) is thus implicated
`
`here (unlike in Bayer) because the patented method is used to manufacture the alleged infringing
`
`products. Consequently, Huawei’s assertion that the ’402 patent claims a process “for testing
`
`final products or intermediate substances to ensure that the intended product or substance has in
`
`fact been made” (Dkt. 13 at 6), is demonstrably incorrect.3
`
`Second, Momenta involved a testing process that was performed on a sampling of
`
`intermediate products—a process used to destroy and discard samples on which the tests were
`
`performed. Momenta Pharms., Inc. v. Teva Pharms. USA Inc., 809 F.3d 610, 616-17 (Fed. Cir.
`
`2015). As a result, there could never be any subsequent sale of any product on which the
`
`claimed method had been performed: only products on which the claimed method had not been
`
`performed survived to be developed into final products that were imported and sold. Here,
`
`however, the patented method of the ’402 patent is performed during manufacturing and on all
`
`wafers, and thus is actually utilized on the same units of accused products later imported and
`
`used, sold, or offered for sale by Huawei. Momenta is inapposite.
`
`B.
`
`The Methods of the ’538 Patent Involve the Making of Physical Products
`Such as Silicon Wafers, and Ocean’s Pleadings Reflect that Fact
`
`The ’538 patent covers similar subject matter to the ’402 patent—i.e., fault detection and
`
`its use in the operation of a tool manufacturing semiconductor wafers. As such, Huawei’s
`
`contentions as to the ’538 patent suffer from all of the same flaws discussed above with respect
`
`to the ’402 patent.
`
`
`3 While Huawei quotes from Bayer (Dkt. 13 at 2), it truncates the quote to blur the full meaning.
`The full quotation reads: “Thus, the process must be used directly in the manufacture of the
`product, and not merely as a predicate process to identify the product to be manufactured.” Bayer,
`340 F.3d at 1378. Certainly, the processes claimed in the patents at issue here are not used simply
`“to identify the product to be manufactured.”
`
`7
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 12 of 19 PageID #: 386
`
`Like the ’402 patent, the ’538 patent claims “[a] method, comprising: performing in a
`
`computer a fault detection analysis relating to processing of a workpiece.” (Dkt. 1-7 (’538
`
`patent) at 13:28-30.) This “workpiece comprises a semiconductor wafer.” (Claim 2.) The fault
`
`detection analysis includes determining “a relationship of a parameter relating to said fault
`
`detection analysis to a detected fault,” including a relationship between at least one of
`
`“pressure,” “temperature,” “data,” “humidity,” or “gas flow.” (See claim 9.) The performance
`
`of the fault detection method is not undertaken for mere testing or data collection purposes, but
`
`rather “relat[es] to processing of a subsequent workpiece. . . .” (Id. at 13:38.) Thus, on its face,
`
`the method of claim 1 is one directly implicating the manufacture of semiconductor wafers.
`
`This is confirmed by the specification, which further delineates the ways in which the
`
`patented methods involve not only collection and analysis of key manufacturing data from the
`
`manufacturing process, but also control of manufacturing tools used for manufacturing
`
`semiconductor wafers.4 For example, as part of the weighting process, “the processing system
`
`may perform subsequent processes upon the semiconductor wafers based upon the newly
`
`adjusted parameter-weighting. . . .” (Id. at 11:7-9.) Figure 7 similarly indicates that the
`
`“perform subsequent process step” follows the “perform dynamic PCA weighting process” step.
`
`(Id. at Fig. 7.)
`
`The specification also illustrates that fault detection is an integral part of the
`
`manufacturing process, not a function that occurs at a spatial or temporal remove. For example,
`
`“[t]he system 300 also comprises a fault detection unit 380, which is capable of performing
`
`various fault detection associated with the processing tool 310 when processing the
`
`semiconductor wafers 105.” (Id. at 7:3-6.) Similarly, “in some embodiments . . . the control
`
`
`4 Claims are always construed in light of the entirety of the patent’s disclosure, including the
`specification and other claims. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).
`8
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 13 of 19 PageID #: 387
`
`strategies taught by the present invention can be applied to virtually any of the semiconductor
`
`manufacturing tools on the factory floor.” (Id. at 12:52-61.)
`
`Indeed, the ability to improve the functioning of process tools is among the principal
`
`benefits cited in the patent. For example, by “utilizing embodiments of the present invention, a
`
`more effective and accurate process adjustment may be performed to achieve more accurate
`
`semiconductor wafer 105 characteristics and improved yields.” (Id. at 12:47-51.)
`
`1.
`
`Huawei’s Arguments Are Not Supported by Bayer or Momenta
`
`As with claim 1 of the ’402 patent, Huawei wrongly contends that “claim 1 [of the ’538
`
`patent] covers adjusting a parameter used for fault detection to perform fault detection using the
`
`adjusted parameter – all of which is informational.” (Dkt. 13 at 4.) In other words, Huawei
`
`argues that § 271(g) liability only attaches where the patented method directly claims the
`
`physical manufacture of that product. But the cases cited by Huawei provide no such support.
`
`In particular, Bayer relates to the question of whether information developed using a
`
`patented process is a “product” within the scope of § 271(g), such that importation of that
`
`information is an infringement. Bayer, 340 F.3d at 1370-71. The court in Bayer held that the
`
`importation of information was not importation of a “product,” because information is not
`
`“manufactured” at all. (Id. at 1377.) Here, on the other hand, what is imported is not
`
`information, but rather the physical products manufactured using these patented processes.
`
`Notably, Bayer itself articulates this very distinction, plainly demonstrating why the
`
`asserted patents in this case are all within the scope of § 271(g). The Bayer court separately
`
`analyzed claims involving a physical drug, holding that it “is beyond dispute that a drug is a
`
`physical product that has been manufactured.” (Id.) As with the drug in Bayer, it is beyond
`
`legitimate dispute that the semiconductor wafers described in the ’538 patent, and the products
`
`9
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 14 of 19 PageID #: 388
`
`alleged to infringe, are physical products, and that the claimed methods of the ’538 patent relate
`
`directly to the manufacture of such products.
`
`Huawei is also wrong to the extent that it argues that the ’538 patent claims a method for
`
`“testing of the process for manufacturing the accused products” (Dkt. 13 at 6) as in Momenta.
`
`As was discussed above with respect to the ’402 patent, the ’538 method is performed during
`
`manufacture and on all wafers.
`
`2.
`
`Huawei Omits Key Claim Elements that Unmistakably Cover the
`Manufacture of Physical Products
`
`In alleging that claim 1 of the ’538 patent covers only “adjusting a parameter used for
`
`fault detection to perform fault detection using the adjusted parameter” (Dkt. 13 at 4), Huawei
`
`inappropriately omits key claim elements that expressly recite the physical nature of the products
`
`being manufactured. For example, as stated above, claim 1 recites the “processing of a
`
`workpiece” as well as “processing of a subsequent workpiece” where the “workpiece comprises
`
`a semiconductor wafer.” Huawei’s motion, however, left off these key claim limitations,
`
`deliberately choosing to use ellipses to conceal those elements from the Court. (Id. at 4.) In
`
`doing so, Huawei failed to explain why or how those limitations are not implicated under §
`
`271(g).
`
`Nor did Huawei articulate any explanation as to why those key elements in combination
`
`with the remaining limitations are not used to manufacture physical articles such as
`
`semiconductor wafers.
`
`C.
`
`The Methods of the ’305 and ’248 Patents Involve the Making of Physical
`Products Such as Silicon Wafers, and Ocean’s Pleadings Reflect that Fact
`
`Huawei construes the claimed invention of the ’305 and ’248 patents as “scheduling of an
`
`action from the software scheduling agent” (Dkt. 13 at 5) but then ignores the fact that
`
`scheduling semiconductor fabrication processes is an indispensable part of semiconductor
`
`10
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 15 of 19 PageID #: 389
`
`manufacturing. Without a means of scheduling, for example, semiconductor lots and individual
`
`wafers for production, it would be impossible to coordinate the complex operational steps and
`
`multiple tools used in a manufacturing facility. As such, Huawei’s contention that these patents
`
`do not claim methods used in the manufacturing of physical articles—and particularly its
`
`assertion that the claims of these patents “output information” (Dkt. 13 at 4)—are wrong.
`
`As discussed in the specifications, the semiconductor fabrication process “involves
`
`processing a number of wafers through a series of fabrication tools” in which “[l]ayers of
`
`materials are added to, removed from, and/or treated on a semiconducting substrate during
`
`fabrication to create the integrated circuits.” (Dkt. 1-2 (’305 patent) at 1:38-42; Dkt. 1-4 (’248
`
`patent) at 1:41-45.) “Efficient management of a facility for manufacturing products such as
`
`semiconductor chips requires monitoring various aspects of the manufacturing process” and
`
`“track[ing] the amount of raw materials on hand, the status of work-in-process and the status and
`
`availability of machines and tools at every step in the process.” (Dkt. 1-2 at 2:10-16; Dkt. 1-4 at
`
`2:12-18.)
`
`The ’305 and ’248 patents both describe ways “for efficiently scheduling and controlling
`
`the lots [] of wafers [] through the fabrication process,” such as “schedul[ing] ahead for each lot
`
`[] one or more operations on a specified qualified process tool 115, including . . . making
`
`optimizing decisions such as running an incomplete batch as opposed to waiting for an
`
`approaching lot,” and “schedule[ing] and initiat[ing] activities such as lot transport and
`
`processing.” (Dkt. 1-2 at 6:45-48 and 6:65-7:11; Dkt. 1-4 at 6:47-50 and 6:67-7:13.) As is
`
`evident, each of these processes is more than just “scheduling of an action.” (Dkt. 13 at 5.)
`
`This teaching is not limited to the specification; it is also manifested in the claims
`
`themselves. For example, each claim 1 of the ’305 and ’248 patents recites “a method for
`
`scheduling in an automated manufacturing environment,” including “automatically detecting
`
`11
`
`

`

`Case 4:20-cv-00991-ALM Document 14 Filed 04/19/21 Page 16 of 19 PageID #: 390
`
`an occurrence of a predetermined event in an integrated, automated process flow,” which is a
`
`“process flow [for] fabricat[ing] semiconductor devices.” (Dkt. 1-2 at 5:3-4; Dkt. 1-4 at 5:5-6.)
`
`This “process flow comprises a portion of a semiconductor manufacturing facility.” (See Claim
`
`43 of the ’305 patent.) Several of the dependent claims also elaborate on the types of events
`
`detected during manufacturing at the “semiconductor manufacturing facility.”
`
`For example, cla