Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 1 of 13
`
`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 REPLY IN SUPPORT OF ITS 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 REPLY IN SUPPORT OF ITS 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)
`
`______________________________________________________________________________
`
`
`
`I.
`II.
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 2 of 13
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`TABLE OF CONTENTS
`
`Page
`INTRODUCTION................................................................................................ 1
`ARGUMENT ....................................................................................................... 1
`A.
`35 U.SC. § 271(g) requires that a process be “used directly” to
`manufacture a physical product. ............................................................. 1
`Plaintiff cannot show how the claimed process of the ‘538 patent
`is “used directly” in the creation or transformation of any
`product. ..................................................................................................... 4
`Plaintiff cannot show how the claimed process of the ‘305 and
`‘248 patents is “used directly” in the creation or transformation
`of any product. .......................................................................................... 6
`Plaintiff should not be granted leave to amend its complaint and
`its claims under the ‘538, ‘305, and ‘248 patents should be
`dismissed with prejudice.......................................................................... 9
`
`D.
`
`B.
`
`C.
`
`i
`
`
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 3 of 13
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`I.
`
`INTRODUCTION
`Plaintiff’s opposition rests on a mistaken interpretation of 35 U.S.C. § 271(g).
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`Plaintiff argues that processes merely “implicating” manufacturing or related to
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`“commercial viability” are enough to meet the “made by” requirement of section
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`271(g).
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` To the contrary, a patented process must be “used directly” in the
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`manufacture of a physical product to be “made by” a process within the scope of 35
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`U.S.C. § 271(g). Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1378 (Fed. Cir.
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`2003).
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`Dismissal is required, because no wafers or other products are “made by” the
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`methods recited in the ‘538, ‘305, or ‘248 patent claims. The recited processes for
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`“performing . . . a fault detection” and “scheduling” are not “used directly” to
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`manufacture any products. Instead, they are the same kinds of processes that have
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`been rejected in prior cases for failing to create the product or affect its properties, as
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`required for any liability under § 271(g). Because no amendment by Plaintiff can cure
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`this deficiency, dismissal with prejudice should be granted.
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`II.
`
`ARGUMENT
`A.
`35 U.SC. § 271(g) requires that a process be “used directly” to
`manufacture a physical product.
`Under Bayer, “the process must be useddirectlyin the manufacture of the
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`product” to satisfy 35 U.SC. § 271(g). Bayer, 340 F.3d at 1378 (emphasis added).
`
`Contrary to Plaintiff’s representations, processes that “implicate” (Opp. at 4), “relate[]”
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`(Opp. at 6), or are “remote” (Opp. at 7) to the manufacturing of a product are not
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`1
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 4 of 13
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`enough. The processes must be “used directly” in the manufacture of a physical
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`product.
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`Nor is “commercial viability” relevant to the “made by” requirement of 35 U.SC.
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`§ 271(g). The cases cited by Plaintiff that deal with this commercial viability inquiry
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`are relevant only to a different part of the test for section 271(g): the statutory
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`exception that applies to products found to be made by a patented process. The
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`statutory language of § 271(g) states that where a product is otherwise “made by a
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`patented process . . ., for purposes of this title,” such a product is exempted after “it
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`is materially changed by subsequent processes.” 35 U.S.C. § 271(g)(1). Here, the
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`question is not whether a product has been “materially changed by subsequent
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`processes,” but is instead whether the product was “made by” the patented process.
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`The question at issue here—whether a product is manufactured by a process
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`within the meaning of § 271(g)—is a question of law properly adjudicated at this stage,
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`as it has been treated by other courts, including the Federal Circuit. See Bayer, 340
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`F.3d 1367, 1368, 1378 (affirming district court’s dismissal for failure to state a claim);
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`Anticancer, Inc. v. Pfizer, Inc., No. 11-cv-107-JLS, 2012 WL 13180611, at *2-3 (S.D.
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`Cal. June 1, 2012) (granting motion for judgment on the pleadings against § 271(g)
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`claim). There are no factual issues that preclude the Court from dismissing the
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`infringement claims regarding the ‘538, ‘305, and ‘248 patents under § 271(g).
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`Similarly, Plaintiff’s arguments regarding the scope and interpretation of §
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`271(g) are either contrary to the plain language of § 271(g) or the Federal Circuit’s
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`holdings in Bayerand Momenta, and should be rejected. Plaintiff misconstrues Bayer
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`2
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 5 of 13
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`when they argue that “whether a product is ‘made by’ a patent should be interpreted
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`expansively to include products made through the ‘agency,’ ‘efficacy,’ ‘work,’
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`‘participation,’ ‘means or instrumentality,’ ‘medium,’ or ‘operation’ of a process.” Opp.
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`at 3 (quoting Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1368, 1373 (Fed. Cir.
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`2003) (citing Webster’s and Random Housedictionaries)). The Court found that these
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`dictionary definitions recited by Plaintiff support the requirement that the process
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`must be “used directly in the manufacture of the product” to be “made by” a patented
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`process within the scope of § 271(g). Bayer, 340 F.3d 1367, 1378 & fn. 12. Contrary
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`to Plaintiff’s assertion of broad applicability of § 271(g), as the Court in Bayerheld,
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`“the statute clearly contemplates that ‘made’ means ‘manufactured.’” Id. at 1372.
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`And Bayer further held that when the claimed process-at-issue is not “used directly”
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`to manufacture the accused product, § 271(g) is inapplicable. Id. at 1378.
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`Plaintiff is also wrong in its argument that Bayerapplies narrowly to just the
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`question of “whether information developed using a patented process is a ‘product’
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`within the scope of § 271(g).” Opp. at 5. But as just shown, Bayer is not that limited.
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`While, as Plaintiff notes, the Bayer court recognized that “it is beyond dispute that a
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`drug is a physical product that has been manufactured,” (Opp. At 6 (quoting Bayer,
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`340 F.3d at 1377)), the court further held that the physical drug product at issue “is
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`not used in the actual synthesis of the drug product.” Bayer, 340 F.3d at 1377.
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`Therefore, the physical drug was not manufactured bythe process because “the
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`process must be used directly in the manufacture of the product.” Id. at 1378
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`(emphasis added). As explained in Defendant’s Motion, none of the claimed
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`3
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 6 of 13
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`technology in the patents-at-issue here are used directly to make or manufacture the
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`accused products under the proper authorities. Mot. at 3-7.
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`Plaintiff similarly erroneously attempts to limit Momenta’s holding, arguing
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`that it applies only to “the production of test wafers or intermediate wafers” or
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`“certification of already completed products.” Opp. at 5. Building on Bayer, Momenta
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`confirmed that “made” in the context of § 271(g) means “manufacture.” The court
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`explained that “dictionaries define the verb form of ‘manufacture’ to involve the
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`creation or bringing into existence of something,” and, therefore, the term “extends
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`to the creation or transformation of a product, such as by synthesizing, combining
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`components, or giving raw materials new properties.” Momenta Pharms., Inc. v. Teva
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`Pharms. USA Inc., 809 F.3d at 616 (Fed. Cir. 2015). The court concluded that the
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`drug product at issue was not “manufactured” by the claimed testing process because
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`“the tests [do not] create or give new propertiesto the enoxaparin substance in
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`batches that are selected for further processing” for incorporation into the final drug
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`process. Id. at 616-17 (emphasis added). Also, as explained in Defendant’s Motion,
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`none of the claimed technology in the patents-at-issue here create or give new
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`properties to any manufactured product. Mot. at 3-7. § 271(g) does not apply as a
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`matter of law.
`
`B.
`
`Plaintiff cannot show how the claimed process of the ‘538 patent is
`“used directly” in the creation or transformation of any product.
`The ‘538 patent recites a process for “fault detection,” not a process that
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`“directly controls” (Opp. at 3) the manufacture of a semiconductor wafer. Plaintiff
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`incorrectly contends that the mere relation of this “fault detection” process to
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`4
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 7 of 13
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`manufacturing a product is sufficient under § 271(g). Opp. At 3. As Bayerand
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`Momentaheld, performing “analysis relating to processing” of a product does not give
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`rise to liability under § 271(g). Plaintiff’s argument that the patented process of the
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`‘538 patent “directly controls the processing tools that create semiconductors” and
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`that the patent “relates to the making of physical products” is just wrong. Opp. At 3.
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`Plaintiff provides no explanation of how the claims of the ‘538 patent create any
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`manufactured product or give properties to such products, nor could they. The claims
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`of the ‘538 patent do not claim processing, as they only recite analysis not “used
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`directly” to manufacture the product: they recite “performing in a computer a fault
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`detection analysis relating to processing of a workpiece” and subsequently
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`“performing in said computer the fault detection analysis relating to processing of a
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`subsequent workpiece.” Dkt. 1-7 at 13:27-39. Nowhere does the claim recite any
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`processing or manufacturing steps that create or transform the properties of a
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`product. Mot. at 3-5. Here, the processes do not fall within § 271(g) because they are
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`not “used directly”to manufacture the accused products; that is, they have no role in
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`creating the product or transforming it so as to give it new properties. See Bayer,
`
`340 F.3d at 1377-78; Momenta, 809 F.3d at 616. Plaintiff’s contention that merely
`
`relating to processing is sufficient stands contrary to precedent. Indeed, the processes
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`at issue in both Bayer and Momentaclaimed analysis relating to processing of a drug
`
`product and were therefore tangentially
`
`involved
`
`in the processing and
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`manufacturing of the drug product. Id.
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`5
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`
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 8 of 13
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`Plaintiff’s contention that the claimsare directed to processing a workpiece or
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`semiconductor wafer also fails. Opp. at 4-5. Plaintiff’s only cited evidence for this
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`contention is the specification. Id.(citing Dkt. 1-7 at 13:38, 11:7-9: 7:3-6, 12:52-61,
`
`12:47-51, Fig. 7). But Plaintiff makes no attempt to explain where or how the cited
`
`portions of the specification are incorporated into the claimsof the ‘538 patent. It is
`
`therefore irrelevant if the specification describes processing of a semiconductor wafer
`
`because the claims themselves do not reach to such processing.
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`Plaintiff has not, and cannot, show that the process of the ‘538 patent is “used
`
`directly” to manufacture products, and Plaintiff’s claim for infringement of the ‘538
`
`patent under § 271(g) fails.
`
`C.
`
`Plaintiff cannot show how the claimed process of the ‘305 and ‘248
`patents is “used directly” in the creation or transformation of any
`product.
`The ‘305 and ‘248 patents claim methods for “scheduling” activities in a
`
`manufacturing environment. These activities that relate to whenactions are taken
`
`are not “used directly” in the manufacture of a physical product. Plaintiff argues that
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`“scheduling semiconductor fabrication processes is an indispensable part of
`
`semiconductor manufacturing.” Opp. at 6. But that is irrelevant. There are many
`
`functions that are in some way an “indispensable” part of semiconductor
`
`manufacturing, but that does not mean that a resulting product is “manufactured by”
`
`such functions. For example, such processes as raw material provisioning, shipping,
`
`purchasing of warehouse space, employee payroll processing, and factory air
`
`conditioning may all be an “indispensable part” of semiconductor manufacturing, but
`
`none of these processes “make” the resultant products. Similarly, the testing method
`6
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 9 of 13
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`claimed in Momentawas an “indispensable part” of the manufacture of the drug
`
`product at issue in that case as it identified suitable intermediary products for
`
`incorporation into the final product. However, the Federal Circuit held that the
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`product was not “made by” the claimed process as the process did not create or
`
`transform the product itself. Likewise, here, the claimed process of “scheduling” is
`
`not used directly in any processes that give Defendant’s accused products their form
`
`and properties—scheduling does not create or transform Defendant’s products.
`
`Plaintiff also tries to rely on the claims’ recitations that the scheduling
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`methods of the ‘305 and ‘248 patents are performed “in an automated manufacturing
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`environment” and “in an integrated, automated process flow,” and a dependent
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`claim’s recitation that the “process flow comprises a portion of a semiconductor
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`manufacturing facility” to somehow bolster their argument. Opp. at 7. Again, this is
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`irrelevant. As with the ‘538 patent and the products at issue in Bayer and Momenta,
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`even if the process takes place in the context of manufacturing or in a manufacturing
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`environment, that does not equate to the product being “made by” the claimed process
`
`or the process creating or transforming the product itself, as required by § 271(g). See
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`Bayer, 340 F.3d at 1377-78; Momenta, 809 F.3d at 616.
`
`Plaintiff further cites to dependent claims regarding a “predetermined event,”
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`“adding new processing capabilities,” and “deleting old processing capabilities,” but
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`Plaintiff again fails to explain how this equates to the claimed processes being “used
`
`directly” in the manufacture of any products. Contrary to Plaintiff’s assertions, the
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`‘305 and ‘248 patents do not govern “what manufacturing actions to take in making
`
`7
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 10 of 13
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`the physical products.” The claims do not recite the performance of any
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`manufacturing steps and, as such, no aspect of the claims interacts with the
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`manufactured products so as to create the product or give the product its properties.
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`The claimed “scheduling” activities of the ‘305 and ‘248 patents have no impact on
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`how the form and properties of any products are created or transformed.
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`Finally, Plaintiff attempts to create a factual dispute by arguing that
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`Defendant “ignores sections” of Plaintiff’s claim charts reciting alleged examples of
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`“tool control” Opp. at 8 (citing Dkt. 1-14 at 8). However, Plaintiff misconstrues the
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`plain reading of its own pleadings, and they do not save Plaintiff’s allegations.
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`Plaintiff’s claim chart describes the cited alleged examples of “tool control” as the
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`accused products “receiv[ing]
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`information regarding process events,” which
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`corresponds to the claim language of “detection of [a] predetermined event” and which
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`Plaintiff cites to in its claim charts for that limitation. See Dkt. 1-14 at 5, 7-9. Yet,
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`nowhere in Plaintiff’s claim charts does it assert that “receiv[ing] information
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`regarding a process event” constitutes the claims dictating any type of manufacturing
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`action that creates or transforms the properties of the accused products. Furthermore,
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`the only “scheduling” action actually pointed to in Plaintiff’s claim charts is the
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`accused products “schedul[ing] maintenance tasks.” Dkt. 1-14 at 9-10. Thus,
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`Plaintiff’s own claim charts fail to plead that the accused products are “made by” the
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`claims of the ‘305 and ‘248 patents as required by § 271(g). Plaintiff’s claims under §
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`271(g) fail with regard to the ‘305 and ‘248 patents.
`
`8
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 11 of 13
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`D.
`
`Plaintiff should not be granted leave to amend its complaint and its
`claims under the ‘538, ‘305, and ‘248 patents should be dismissed with
`prejudice.
`As explained in Defendant’s Motion and in this Reply, the claims of the
`
`patents-at-issue are directed to nothing more than “fault detection” and “scheduling”
`
`in the context of a manufacturing process. Such functions are not “used directly” in
`
`the manufacture of those products to permit liability under § 271(g), regardless of any
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`amendment Plaintiff may make to its pleadings. Nor has Plaintiff identified any
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`relevant material that it could add to its pleadings to overcome their patents’
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`deficiencies. Accordingly, amendment would be futile. The claims should be
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`dismissed with prejudice.
`
`Dated: April 2, 2021
`
`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
`
`9
`
`
`
`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 12 of 13
`
`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.
`
`10
`
`
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`Case 6:20-cv-01211-ADA Document 18 Filed 04/02/21 Page 13 of 13
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the above and
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`foregoing document has been served on April 2, 2021, on all counsel of record via the
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`Court’s ECF system.
`
`/s/ Scott L. Cole___________
`Scott L. Cole
`
`11
`
`
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