Case 4:20-cv-00991-ALM Document 16 Filed 04/26/21 Page 1 of 7 PageID #: 409
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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’ REPLY IN SUPPORT OF 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 16 Filed 04/26/21 Page 2 of 7 PageID #: 410
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`Ocean’s Opposition relies on an incorrect and overly broad application of 35 U.S.C. §
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`271(g). A claimed process that only “involves” or “relates to” product manufacturing is not
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`enough. According to Federal Circuit precedent, § 271(g) applies only when the patented process
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`creates or modifies a physical product. Applying this correct standard, the claimed methods of the
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`‘402, ‘538, ‘305, and ‘248 patents cannot be infringed under § 271(g), and these infringement
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`claims should be dismissed.
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`ARGUMENT
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`Ocean agrees that § 271(g) requires a patent holder to identify a product “made by” a
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`patented process (Dkt. 14 at 2-3). But Ocean then argues, relying on a patent treatise, that “made
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`by” is to be read expansively so that any process that “relates” to product manufacturing is “made
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`by” that process (Dkt. 14 at 7). This expansive view of § 271(g) ignores Federal Circuit precedent
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`that expressly limits the application of § 271(g). See e.g., Momenta Pharms., Inc. v. Teva Pharms.
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`USA Inc., 809 F.3d 610, 615 (Fed. Cir. 2015). For example, in Momenta, the Federal Circuit hold
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`that the products at issue were not “made by” a patented process used for quality control:
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`it is more consonant with the language of the statute, as well as with this court's
`precedent, to limit § 271(g) to the actual “ma[king]” of a product, rather than
`extend its reach to methods of testing a final product or intermediate substance
`to ensure that the intended product or substance has in fact been made.
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`Momenta Pharm., 809 F.3d at 615.
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`The claimed process must create or transform a physical product. Id. at 616. Section 271(g)
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`does not apply to processes that may be related to manufacturing but are “too far removed from
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`the actual making of the product.” Id. at 617. Thus, the Federal Circuit held that “made” as used
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`in § 271(g) “extends to the creation or transformation of a product, such as by synthesizing,
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`combining components, or giving raw materials new properties.” Id. at 616. In Momenta, the
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`claimed method fell short of this standard, despite its use as part of manufacturing. Id. at 618.
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`Case 4:20-cv-00991-ALM Document 16 Filed 04/26/21 Page 3 of 7 PageID #: 411
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`Similarly, in Bayer, the patent holder alleged that the accused infringer used a claimed
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`research process for identifying useful drugs. 340 F.3d at 1377. The court held that because the
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`research process was not “used in the actual synthesis of the drug product,” the patent holder could
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`not state a claim under § 271(g). Id. at 1377–78. Specifically, “the process must be used directly
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`in the manufacture of the product.” Id. at 1378 (emphasis added).
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`In response, Ocean argues that in Eli Lilly, the Federal Circuit noted that Congress chose
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`not to add the term “directly” to § 271(g). But Eli Lilly also observes that this was because the
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`statute already included additional provisions that capture, for example, products made by a
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`claimed process but altered in immaterial ways after manufacture. Eli Lilly & Co. v. Am. Cyanamid
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`Co., 82 F.3d at 1568, 1576 (Fed. Cir. 1996). So Eli Lilly cannot be read to extend § 271(g) to
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`cover any process connected to manufacturing.
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`Controlling Federal Circuit authority—the holdings in Bayer and Momenta—contradicts
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`Ocean’s assertion that § 271(g) infringement includes products that are the result of the asserted
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`method claims of the ’538, ’402, ’305, and ’248 patents. None of these claimed methods describe
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`processes that create or transform tangible products. Accordingly, Ocean’s claims based on
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`§ 271(g) should be dismissed with prejudice; granting leave to amend would be futile since Ocean
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`cannot change the patent claims to fit Section 271(g)’s requirements.
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`I.
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`The’538 and ’402 Method Claims Do Not Create or Transform a Physical Product
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`Claim 1 of the ’538 patent requires a process for detecting fault conditions during
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`semiconductor manufacturing and adjusting the weighting of fault-related parameters in the
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`detection algorithm. Ocean argues that the claimed method “relates” to semiconductor wafer
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`manufacturing and refers to a product, namely, a semiconductor “workpiece” or “wafer.” But
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`Ocean does not and cannot argue that the claimed process makes a tangible product because it
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`Case 4:20-cv-00991-ALM Document 16 Filed 04/26/21 Page 4 of 7 PageID #: 412
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`merely performs and purportedly improves fault detection, producing information about faults and
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`refining the process for finding them. It matters not whether this claimed process is connected to
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`manufacturing generally or whether the claims refer to a workpiece or a wafer. Similar claims in
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`Bayer and Momenta, which included references to products, were held to be insufficient under
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`§ 271(g). Here, Ocean relies on the specification’s disclosures of wafer processing that occurs
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`after the claimed process. But the claims are limited to fault detection and do not cover any such
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`processing. Ocean tries to distinguish Bayer by alleging that a physical product is imported, rather
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`than just information. This is irrelevant where the physical product is not “made by” the claimed
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`process. This was also true in Bayer, which involved an imported product that was held to be
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`made without using the claimed process. 340 F.3d at 1377–78.
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`Likewise, asserted claim 1 of the ’402 patent relates to fault detection. Ocean concedes
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`that the claimed process gathers processing tool data, looks for fault conditions, and—if such
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`conditions are detected—adjusts by shutting down a tool or by informing a technician. These
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`claimed steps do not create or transform a physical product.
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`As with the ‘538 Patent, Ocean asserts that the process claimed in the ’402 patent can be
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`infringed because the process “relates” to manufacturing and is performed by manufacturing
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`equipment. But § 271(g) requires that a product be “made by a process patented in the United
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`States,” which the Federal Circuit has held means that the claimed process must create or transform
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`a tangible product. 35 U.S.C. § 271(g) (emphasis added); Bayer, 340 F.3d at 1368, 1377–78;
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`Momenta, 809 F.3d at 615–16. Here, the claimed process detects faults and responds by
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`performing an action. Ocean’s Complaint accuses tangible products of infringement but cannot
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`plausibly state a claim that the accused products are “made by” the claimed process. As stated
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`above, infringement under § 271(g) is impossible for the accused products because the claimed
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`Case 4:20-cv-00991-ALM Document 16 Filed 04/26/21 Page 5 of 7 PageID #: 413
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`processes do not directly create or transform the accused semiconductor chips. Even if Ocean is
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`correct that the process claimed in the ’402 patent is “crucial” during manufacturing, it cannot
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`establish that those products are “made by” the process. This is fatal to Ocean’s claims.
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`Ocean’s reliance on Bio-Technology General Corp. v. Genentech, Inc., 80 F.3d 1553, 1561
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`(Fed. Cir. 1996), is misplaced. In Bio-Tech., the Federal Circuit concluded that an accused protein
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`generated by a plasmid was “made by” a claimed method for creating the plasmid. 80 F.3d at
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`1560–61. The process at issue in that case resulted in the “actual synthesis” of the protein. Bayer,
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`340 F.3d at 1377. In contrast, here the fault detection process claimed in the ’402 patent does not
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`create a semiconductor wafer.
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`II.
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`The Processes Claimed in the ’305 and ’248 Patents Also Do Not Create or
`Transform a Physical Product
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`The asserted claims of the ’305 and ’248 patents focus on logistics, reciting a scheduling
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`method for a manufacturing process where an action is scheduled in response to a detected event.
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`Ocean does not and cannot assert that the claimed process creates or transforms any tangible
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`product.
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` Instead, Ocean alleges that scheduling is “indispensable” to semiconductor
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`manufacturing. Dkt. 14 at 10–11. But the scheduling of actions does not mean a product is “made
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`by” the claimed process. Accordingly, the methods claimed in the ’305 and ’248 patents do not
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`meet the standard required for infringement under § 271(g), they merely schedule actions.
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`Ocean further argues that the specification and claims mention and relate to manufacturing.
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`But again, the scope of the asserted claims is what matters, and these claims describe processes to
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`detect events and respond by scheduling actions. None of the steps make or alter a product. And
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`while Ocean also argues that the claimed events and scheduled actions could relate directly to
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`manufacturing, the claimed processes are limited to scheduling, not performing any actions that
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`manufactures a semiconductor device.
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`Case 4:20-cv-00991-ALM Document 16 Filed 04/26/21 Page 6 of 7 PageID #: 414
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`III.
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`No Issues of Fact Must be Resolved
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`Fact issues do not preclude dismissal of Ocean’s § 271(g) claims. Ocean first argues that
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`a product could be considered to be “made by” a patented process if the process is necessary to
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`make the product “commercially viable.” Dkt. 14 at 17. But nothing in § 271(g) concerns
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`“commercial viability.” Nor does Bayer or Momenta. Although Ocean cites Ormco Corp. v. Align
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`Tech., Inc., the district court in that case observed that “the issue of commercial viability is
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`not . . . dispositive.” 653 F. Supp. 2d 1016, 1026, n. 1 (C.D. Cal. 2009). The threshold question
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`under § 271(g) remains whether the process creates or transforms a tangible product; Ocean does
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`not and cannot plausibly allege that the asserted claims do.
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`Ocean next argues there is a fact question about whether a claimed process is “sufficiently
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`tied” to a product. As support, Ocean offers a partial quote from Millennium Cryogenic Techs.,
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`Ltd. v. Weatherford Artificial Lift Sys., No. H-12-0890, 2012 WL 12894799, at *2 (S.D. Tex. Sept.
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`5, 2012). But when the quoted language is read in context, including the parentheticals in the cases
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`relied upon as authority, the Millennium court was addressing its ability to resolve a § 271(g)(1)
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`defense based on the accused products having been “materially changed by subsequent processes.”
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`Id. That is a different issue, and not the basis of Huawei’s motion. Ocean relies upon another
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`unpublished district court decision Zond, LLC. v. Renesas Elecs. Corp., No. 13-11625-NMG (D.
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`Mass. Aug. 15, 2014). In Zond, the patents at issue claimed methods of producing plasma, and
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`plasma was the explicitly described product of the claimed process. Id. at *3-4. As described
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`above, Ocean’s asserted claims are different and do not identify a claimed method that makes any
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`physical article or produces a tangible product. Moreover, both unpublished district court
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`decisions pre-date the Federal Circuit’s decision in Momenta.
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`Case 4:20-cv-00991-ALM Document 16 Filed 04/26/21 Page 7 of 7 PageID #: 415
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`Dated: April 26, 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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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing was electronically filed this
`26th day of April 2021, using the Court’s CM/ECF system.
`
`/s/ Aaron Davidson
`Aaron Davidson
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`6
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