Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 1 of 10
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Civil Action No.: 6:20-cv-1211
`
`JURY TRIAL DEMANDED
`
`PATENT CASE
`
`§
`§
`
`§§
`
`§
`§
`
`§§
`
`§
`
`OCEAN SEMICONDUCTOR LLC,
`
`Plaintiff
`
`v.
`
`NVIDIA CORPORATION,
`
`Defendant
`
`______________________________________________________________________________
`
`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)
`
`______________________________________________________________________________
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Civil Action No.: 6:20-cv-1211
`
`JURY TRIAL DEMANDED
`
`PATENT CASE
`
`§
`§
`
`§§
`
`§
`§
`
`§§
`
`§
`
`OCEAN SEMICONDUCTOR LLC,
`
`Plaintiff
`
`v.
`
`NVIDIA CORPORATION,
`
`Defendant
`
`______________________________________________________________________________
`
`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)
`
`______________________________________________________________________________
`
`
`
`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 2 of 10
`
`I.
`
`INTRODUCTION
`35 U.S.C. § 271(g) applies only where a product is used, sold, offered for sale
`
`in, or imported into, the U.S. and was “made by” a process patented in the U.S. The
`
`“made by” element covers “the creation or transformation of a product, such as by
`
`synthesizing, combining components, or giving raw materials new properties.”
`
`Momenta Pharms., Inc. v. Teva Pharms. USA, Inc., 809 F.3d 610, 616 (Fed. Cir. 2015).
`
`“Made by” does not extend to “testing to determine whether an already
`
`[manufactured product] possesses existing qualities or properties,” quality control
`
`processes, or generating data. Id.
`
`Here, three of the nine patents asserted so clearly fail to satisfy the “made by”
`
`element that they cannot state a plausible claim for infringement under § 271(g): U.S.
`
`Patent Nos. 8,676,538; 6,907,305; and 6,968,248 (the “271(g) Patents”). The claimed
`
`methods do not create or transform any product and thus do not meet the “made by”
`
`requirement. There is therefore no way for Plaintiff Ocean Semiconductor LLC
`
`(“Ocean Semiconductor”) to cure these shortcomings with additional pleading,
`
`amendment, discovery, or case development. The 271(g) Patents must be dismissed
`
`with prejudice.
`
`II.
`
`LEGAL STANDARD
`In deciding a Rule 12(b)(6) motion to dismiss for failure to state a claim, the
`
`court accepts all well-pleaded facts as true, viewing them in the light most favorable
`
`to the non-movant. In re Katrina Canal Breaches Litig., 495 F. 3d 191, 205 (5th Cir.
`
`2007). A court need not, however, blindly accept each and every allegation of fact,
`
`particularly where an allegation is conclusory or comprises a legal conclusion
`
`1
`
`
`
`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 3 of 10
`
`“masquerading as a factual conclusion.” Taylor v. Books A Million, Inc., 296 F. 3d
`
`376, 378 (5th Cir. 2002); Bell Atlantic Corp v. Twombly, 550 U.S. 544, 555 (2007);
`
`Ashcroft v. Iqbal, 56 U.S. 652, 678 (2009). To avoid dismissal, the complaint must
`
`plead enough facts to state a claim for relief that is plausible on its face, Twombly,
`
`550 U.S. at 570, and the factual allegations must be enough to raise a right to relief
`
`above the level of speculation. Id. at 555.
`
`ARGUMENT
`III.
`Infringement under 35 U.S.C. § 271(g) occurs when a party sells, offers, or uses
`
`in the United States (or imports into the U.S.) “a product which is made bya process
`
`patented in the United States.” 35 U.S.C. § 271(g) (emphasis added). A “product”
`
`must be a physical product, and it is “made” by a patented process only when
`
`“manufactured” by that process. Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367,
`
`1377 (Fed. Cir. 2003). Manufacturing covers the “creation or transformation” of the
`
`product, such as by “synthesizing, combining components, or giving raw materials
`
`new properties.” Momenta, 809 F.3d at 616. Making or manufacturing does not,
`
`however, “extend to testing” to determine whether an already-manufactured product
`
`possesses certain qualities. Id.; Phillip M. Adams &Assocs., LLC v. Dell Comput.
`
`Corp., 519 F.App’x 998, 1005 (Fed. Cir. 2013) (unpublished) (“[E]ven assuming the
`
`certification testing constituted infringement …, the motherboards where not ‘made
`
`by’ the certification testing pursuant to 35 U.S.C. § 271(g).”).
`
`The production of information, as opposed to a physical product, is also outside
`
`the scope of § 271(g) and cannot be the basis for an infringement allegation under
`
`2
`
`
`
`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 4 of 10
`
`that section. Bayer, 340 F.3d at 1372. Thus, to state a cognizable claim under
`
`§ 271(g), Ocean Semiconductor must plausibly plead that the tangible NVIDIA
`
`products accused here—not informationabout them or about the process by which
`
`they were made—were “created or transformed” by the processes claimed in the 271(g)
`
`Patents.
`
`Ocean Semiconductor must also show that the accused NVIDIA products were
`
`manufactured “by” the patented processes. To meet this requirement, “the process
`
`must be used directlyin the manufacture of the product, and not merely as a
`
`predicate process to identify the product to be manufactured.” Id. at 1378 (emphasis
`
`added). Here again, “methods of testinga final product or an intermediate substance”
`
`are insufficient. Momenta, 809 F.3d at 615 (emphasis added).
`
`In sum, a product is “made by” a patented process when that process “create[s]
`
`or give[s] new properties” to the product. Id. at 616–17. Here, because of the nature
`
`of the claims in 271(g) Patents, Ocean Semiconductor has not pled—and cannot
`
`plead—a plausible claim of infringement under § 271(g). The claims under those
`
`patents should therefore be dismissed with prejudice as legally implausible and
`
`infirm. Any attempt to replead would be futile.
`
`A.
`
`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
`
`theory of infringement for that claim is § 271(g). Complaint (Dkt. 1), at ¶ 77. Claim
`
`1 reads:
`
`1. A method, comprising:
`
`3
`
`
`
`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 5 of 10
`
`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.
`
`The claim recites a process for detecting faults that arise during a
`
`manufacturing process and then tuning the ongoing fault detection process. The
`
`claimed method generates information about the “relationship” between a parameter
`
`and a detected fault, uses that data to adjust parameter “weighting” in the fault-
`
`detection algorithm, and applies the adjusted weighting when performing subsequent
`
`fault detection analysis. Complaint (Dkt. 1), at ¶¶ 71, 247.
`
`This claimed process does not directly result in the “creation or transformation”
`
`of any product let alone the accused NVIDIA products. Momenta, 809 F.3d at 616.
`
`Rather, the claim addresses the fault-detection process itself, monitoring and
`
`adjusting that process on an ongoing basis. The claim says nothing about making
`
`changes to the products being manufactured. Thus, claim 1 of the ‘538 patent fits
`
`squarely in the “testing” category and is thus outside the scope of § 271(g). Momenta,
`
`809 F.3d at 616; Philip M. Adams, 519 F.App’x at 1005.
`
`Indeed, the process claimed in the ’538 patent resembles the method in Bayer
`
`that the Federal Circuit found insufficient to sustain infringement under § 271(g). In
`
`4
`
`
`
`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 6 of 10
`
`Bayer, the patented method was directed at identifying drugs that affect protein
`
`activity. Bayer, 340 F.3d at 1369. The court rejected the idea that drugs identified
`
`using the claimed process were “products” “made by” that process because
`
`“identification and generation of data are not steps in the manufacture of a final drug
`
`product.” Id. at 1377 (citation and quotation marks omitted). Here too, the claimed
`
`process detects and generates data about the fault-detection process—it does not
`
`itself manufacture the end products. The ‘538 patent thus simultaneously involves
`
`both testing and the generation of data—each of which is indicative of a process that
`
`falls outside the scope of § 271(g).
`
`For these reasons, Ocean Semiconductor’s Count VII fails to state a claim for
`
`which relief can be granted. That claim should be dismissed with prejudice.
`
`B.
`
`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
`
`similarly claim processes that do not directly result in the manufacture of any
`
`products. Because of this, Ocean Semiconductor has not, and cannot, plausibly plead
`
`that these patents satisfy the elements of § 271(g).
`
`These two related patents address the scheduling of activities in a
`
`manufacturing environment and thus relate to the question of when a product is
`
`made, rather than to the creation or transformation of its characteristics.
`
`Ocean Semiconductor asserts claim 1 of the ’305 patent:
`
`1. A method for scheduling in an automated manufacturing
`environment, comprising:
`
`5
`
`
`
`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 7 of 10
`
`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.
`
`Dkt. 1-2, Ex. B, 39:52–60.
`
`The ’248 patent is a continuation of the application that became the ’305 patent.
`
`Again, only claim 1 is asserted:
`
`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.
`
`The two asserted claims differ in two minor ways that are irrelevant to the
`
`analysis here: claim 1 of the ’248 patent adds the term “automatically” to the second
`
`and third limitations and the phrase “integrated, automated” to the second limitation.
`
`All other claim language is the same.
`
`Both claims recite a straightforward “method for scheduling”: upon detection
`
`of a “predetermined event,” a “software scheduling agent” schedules an action in
`
`response. The only thing the claims say about the “action” is that it is “scheduled” in
`
`6
`
`
`
`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 8 of 10
`
`response to the detection of a predetermined event.1 In other words, the claims do
`
`not recite performing any action and say nothing about what the action might be or
`
`how it might create or transform the end product; they merely address how it is
`
`scheduled. But § 271(g) is triggered only by processes that cover the “creation or
`
`transformation” of a product, such as by “synthesizing, combining components, or
`
`giving raw materials new properties.” Momenta, 809 F.3d at 616. Mere scheduling
`
`does not qualify.
`
`For these reasons, Ocean Semiconductor’s Counts III and IV fail to state a
`
`claim for which relief can be granted. These claims should therefore be dismissed
`
`with prejudice.
`
`
`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”).
`
`7
`
`
`
`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 9 of 10
`
`Respectfully submitted,
`
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`
`/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
`
`ATTORNEYS FOR DEFENDANT NVIDIA
`CORP.
`
`8
`
`
`
`Case 6:20-cv-01211-ADA Document 13 Filed 03/12/21 Page 10 of 10
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the above and
`
`foregoing document has been served on all counsel of record via the Court’s ECF
`
`system.
`
`/s/ Scott L. Cole___________
`Scott L. Cole
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
