`Case 4:20-cv-00991-ALM Document 14-2 Filed 04/19/21 Page 1 of 11 PageID #: 396
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 1 of 10Case 4:20-cv-00991-ALM Document 14-2 Filed 04/19/21 Page 2 of 11 PageID #: 397
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Civil Action No.: 6:20-cv-1211
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`JURY TRIAL DEMANDED
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`PATENT CASE
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`§
`§
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`§§
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`§
`§
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`§§
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`§
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`OCEAN SEMICONDUCTOR LLC,
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`Plaintiff
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`v.
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`NVIDIA CORPORATION,
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`Defendant
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`______________________________________________________________________________
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`NVIDIA’S RULE 12(b)(6) MOTION TO DISMISS CLAIMS UNDER
`THE ‘538, ‘305, AND ‘248 PATENTS BECAUSE
`THEY ARE NOT COGNIZABLE UNDER 35 U.S.C. § 271(g)
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`______________________________________________________________________________
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`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 2 of 10Case 4:20-cv-00991-ALM Document 14-2 Filed 04/19/21 Page 3 of 11 PageID #: 398
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`I.
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`INTRODUCTION
`35 U.S.C. § 271(g) applies only where a product is used, sold, offered for sale
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`in, or imported into, the U.S. and was “made by” a process patented in the U.S. The
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`“made by” element covers “the creation or transformation of a product, such as by
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`synthesizing, combining components, or giving raw materials new properties.”
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`Momenta Pharms., Inc. v. Teva Pharms. USA, Inc., 809 F.3d 610, 616 (Fed. Cir. 2015).
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`“Made by” does not extend to “testing to determine whether an already
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`[manufactured product] possesses existing qualities or properties,” quality control
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`processes, or generating data. Id.
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`Here, three of the nine patents asserted so clearly fail to satisfy the “made by”
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`element that they cannot state a plausible claim for infringement under § 271(g): U.S.
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`Patent Nos. 8,676,538; 6,907,305; and 6,968,248 (the “271(g) Patents”). The claimed
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`methods do not create or transform any product and thus do not meet the “made by”
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`requirement. There is therefore no way for Plaintiff Ocean Semiconductor LLC
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`(“Ocean Semiconductor”) to cure these shortcomings with additional pleading,
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`amendment, discovery, or case development. The 271(g) Patents must be dismissed
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`with prejudice.
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`II.
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`LEGAL STANDARD
`In deciding a Rule 12(b)(6) motion to dismiss for failure to state a claim, the
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`court accepts all well-pleaded facts as true, viewing them in the light most favorable
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`to the non-movant. In re Katrina Canal Breaches Litig., 495 F. 3d 191, 205 (5th Cir.
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`2007). A court need not, however, blindly accept each and every allegation of fact,
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`particularly where an allegation is conclusory or comprises a legal conclusion
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`1
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`“masquerading as a factual conclusion.” Taylor v. Books A Million, Inc., 296 F. 3d
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`376, 378 (5th Cir. 2002); Bell Atlantic Corp v. Twombly, 550 U.S. 544, 555 (2007);
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`Ashcroft v. Iqbal, 56 U.S. 652, 678 (2009). To avoid dismissal, the complaint must
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`plead enough facts to state a claim for relief that is plausible on its face, Twombly,
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`550 U.S. at 570, and the factual allegations must be enough to raise a right to relief
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`above the level of speculation. Id. at 555.
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`ARGUMENT
`III.
`Infringement under 35 U.S.C. § 271(g) occurs when a party sells, offers, or uses
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`in the United States (or imports into the U.S.) “a product which is made bya process
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`patented in the United States.” 35 U.S.C. § 271(g) (emphasis added). A “product”
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`must be a physical product, and it is “made” by a patented process only when
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`“manufactured” by that process. Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367,
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`1377 (Fed. Cir. 2003). Manufacturing covers the “creation or transformation” of the
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`product, such as by “synthesizing, combining components, or giving raw materials
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`new properties.” Momenta, 809 F.3d at 616. Making or manufacturing does not,
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`however, “extend to testing” to determine whether an already-manufactured product
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`possesses certain qualities. Id.; Phillip M. Adams &Assocs., LLC v. Dell Comput.
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`Corp., 519 F.App’x 998, 1005 (Fed. Cir. 2013) (unpublished) (“[E]ven assuming the
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`certification testing constituted infringement …, the motherboards where not ‘made
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`by’ the certification testing pursuant to 35 U.S.C. § 271(g).”).
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`The production of information, as opposed to a physical product, is also outside
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`the scope of § 271(g) and cannot be the basis for an infringement allegation under
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`that section. Bayer, 340 F.3d at 1372. Thus, to state a cognizable claim under
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`§ 271(g), Ocean Semiconductor must plausibly plead that the tangible NVIDIA
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`products accused here—not informationabout them or about the process by which
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`they were made—were “created or transformed” by the processes claimed in the 271(g)
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`Patents.
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`Ocean Semiconductor must also show that the accused NVIDIA products were
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`manufactured “by” the patented processes. To meet this requirement, “the process
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`must be used directlyin the manufacture of the product, and not merely as a
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`predicate process to identify the product to be manufactured.” Id. at 1378 (emphasis
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`added). Here again, “methods of testinga final product or an intermediate substance”
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`are insufficient. Momenta, 809 F.3d at 615 (emphasis added).
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`In sum, a product is “made by” a patented process when that process “create[s]
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`or give[s] new properties” to the product. Id. at 616–17. Here, because of the nature
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`of the claims in 271(g) Patents, Ocean Semiconductor has not pled—and cannot
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`plead—a plausible claim of infringement under § 271(g). The claims under those
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`patents should therefore be dismissed with prejudice as legally implausible and
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`infirm. Any attempt to replead would be futile.
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`A.
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`The ‘538 patent cannot ground a 271(g) claim because it addresses “fault
`detection,” not the creation or transformation of the accused products.
`Ocean Semiconductor asserts only claim 1 of the ‘538 patent, and the only
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`theory of infringement for that claim is § 271(g). Complaint (Dkt. 1), at ¶ 77. Claim
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`1 reads:
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`1. A method, comprising:
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`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.
`Dkt. 1-7, Ex. G, 13:27–39.
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`The claim recites a process for detecting faults that arise during a
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`manufacturing process and then tuning the ongoing fault detection process. The
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`claimed method generates information about the “relationship” between a parameter
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`and a detected fault, uses that data to adjust parameter “weighting” in the fault-
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`detection algorithm, and applies the adjusted weighting when performing subsequent
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`fault detection analysis. Complaint (Dkt. 1), at ¶¶ 71, 247.
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`This claimed process does not directly result in the “creation or transformation”
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`of any product let alone the accused NVIDIA products. Momenta, 809 F.3d at 616.
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`Rather, the claim addresses the fault-detection process itself, monitoring and
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`adjusting that process on an ongoing basis. The claim says nothing about making
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`changes to the products being manufactured. Thus, claim 1 of the ‘538 patent fits
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`squarely in the “testing” category and is thus outside the scope of § 271(g). Momenta,
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`809 F.3d at 616; Philip M. Adams, 519 F.App’x at 1005.
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`Indeed, the process claimed in the ’538 patent resembles the method in Bayer
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`that the Federal Circuit found insufficient to sustain infringement under § 271(g). In
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`Bayer, the patented method was directed at identifying drugs that affect protein
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`activity. Bayer, 340 F.3d at 1369. The court rejected the idea that drugs identified
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`using the claimed process were “products” “made by” that process because
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`“identification and generation of data are not steps in the manufacture of a final drug
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`product.” Id. at 1377 (citation and quotation marks omitted). Here too, the claimed
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`process detects and generates data about the fault-detection process—it does not
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`itself manufacture the end products. The ‘538 patent thus simultaneously involves
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`both testing and the generation of data—each of which is indicative of a process that
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`falls outside the scope of § 271(g).
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`For these reasons, Ocean Semiconductor’s Count VII fails to state a claim for
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`which relief can be granted. That claim should be dismissed with prejudice.
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`B.
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`The ‘305 and ‘248 patents also cannot support a claim under 271(g)
`because the methods address “scheduling”—whenproducts are made—
`and do not result in any change to or transformation of the end products.
`As with the fault-detection process in the ‘348 patent, the ‘305 and ‘248 patents
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`similarly claim processes that do not directly result in the manufacture of any
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`products. Because of this, Ocean Semiconductor has not, and cannot, plausibly plead
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`that these patents satisfy the elements of § 271(g).
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`These two related patents address the scheduling of activities in a
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`manufacturing environment and thus relate to the question of when a product is
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`made, rather than to the creation or transformation of its characteristics.
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`Ocean Semiconductor asserts claim 1 of the ’305 patent:
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`1. A method for scheduling in an automated manufacturing
`environment, comprising:
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`detecting an occurrence of a predetermined event in a process
`flow;
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`notifying a software scheduling agent of the occurrence; and
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`reactively scheduling an action from the software scheduling
`agent responsive to the detection of the predetermined event.
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`Dkt. 1-2, Ex. B, 39:52–60.
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`The ’248 patent is a continuation of the application that became the ’305 patent.
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`Again, only claim 1 is asserted:
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`1. 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.
`Dkt. 1-4, Ex. D, 30:40–48.
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`The two asserted claims differ in two minor ways that are irrelevant to the
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`analysis here: claim 1 of the ’248 patent adds the term “automatically” to the second
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`and third limitations and the phrase “integrated, automated” to the second limitation.
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`All other claim language is the same.
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`Both claims recite a straightforward “method for scheduling”: upon detection
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`of a “predetermined event,” a “software scheduling agent” schedules an action in
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`response. The only thing the claims say about the “action” is that it is “scheduled” in
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`response to the detection of a predetermined event.1 In other words, the claims do
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`not recite performing any action and say nothing about what the action might be or
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`how it might create or transform the end product; they merely address how it is
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`scheduled. But § 271(g) is triggered only by processes that cover the “creation or
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`transformation” of a product, such as by “synthesizing, combining components, or
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`giving raw materials new properties.” Momenta, 809 F.3d at 616. Mere scheduling
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`does not qualify.
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`For these reasons, Ocean Semiconductor’s Counts III and IV fail to state a
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`claim for which relief can be granted. These claims should therefore be dismissed
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`with prejudice.
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`1 Consistent with the claim language, Ocean Semiconductor’s claim charts do
`not point to any action beyond scheduling activities. Dkt. 1-15, Ex. O (claim chart for
`‘248 Pat.) at 7 (“the SmartSched reactively schedules actions (e.g., schedules [sic]
`updates) in response to predetermined events”); Dkt. 1-14, Ex. N (claim chart for ‘305
`Pat.) at 9-10 (“schedule[s] maintenance tasks” and “synchronize the equipment
`status”).
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`Respectfully submitted,
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`QUINN EMANUEL URQUHART & SULLIVAN LLP
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`/s/ Scott L. Cole___________________________
`Sean S. Pak
`seanpak@quinnemanuel.com
`admitted pro hac vice
`California Bar No. 219032
`Andrew M. Holmes
`drewholmes@quinnemanuel.com
`admitted pro hac vice
`California Bar No. 260475
`50 California Street
`22nd Floor
`San Francisco, CA 94111
`Phone: (415) 875-6600
`Fax: (415) 875-6700
`
`Scott L. Cole
`scottcole@quinnemanuel.com
`Texas Bar No. 00790481
`201 West 5th Street
`11th Floor
`Austin, TX 77002
`Phone: (737) 667-6104
`Fax: (737) 667-6110
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`ATTORNEYS FOR DEFENDANT NVIDIA
`CORP.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and
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`foregoing document has been served on all counsel of record via the Court’s ECF
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`system.
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`/s/ Scott L. Cole___________
`Scott L. Cole
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