Case 6:20-cv-01211-ADA Document 19-2 Filed 04/09/21 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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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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`Civil Action No.: 6:20-cv-1211-ADA
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` JURY TRIAL DEMANDED
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` PATENT CASE
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`PLAINTIFF OCEAN SEMICONDUCTOR LLC’S SUR-REPLY IN SUPPORT OF
`ITS OPPOSITION TO NVIDIA CORPORATION’S MOTION TO DISMISS
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`DATED: April 9, 2021
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`/s/ Alex Chan
`Timothy Devlin
`tdevlin@devlinlawfirm.com
`Henrik D. Parker
`hparker@devlinlawfirm.com   
`Alex Chan (State Bar No. 24108051)
`achan@devlinlawfirm.com   
`DEVLIN LAW FIRM LLC 
`1526 Gilpin Avenue 
`Wilmington, Delaware 19806 
`Telephone: (302) 449-9010 
`Facsimile: (302) 353-4251 
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`
`
`
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`Attorneys for Plaintiff, 
`Ocean Semiconductor LLC 
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`Case 6:20-cv-01211-ADA Document 19-2 Filed 04/09/21 Page 2 of 10
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`TABLE OF CONTENTS
`INTRODUCTION .................................................................................................................. 1
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`I.
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`II. ARGUMENT .......................................................................................................................... 1
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`The ’538, ’305, and ’248 Patents Are Directed to the Manufacture of a Product and
`A.
`Subject to Section 271(g) ............................................................................................................ 1
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`1.
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`2.
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`3.
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`NVIDIA Mischaracterizes Federal Circuit Authority on Section 271(g) ..................... 1
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`The ’538 Process Is Used in the Making of Semiconductors ....................................... 3
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`The ’305 and ’248 Processes Are Used in the Making of Semiconductors ................. 3
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`B.
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`NVIDIA Has Raised an Issue of Fact Precluding Dismissal ........................................... 4
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`Leave to Amend Is Appropriate in the Unlikely Event that the Court Determines the
`C.
`Motion to Be Well-Founded ....................................................................................................... 6
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`III. CONCLUSION .................................................................................................................... 6
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`i
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`Case 6:20-cv-01211-ADA Document 19-2 Filed 04/09/21 Page 3 of 10
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Anticancer, Inc. v. Pfizer, Inc.,
`Case No. 11-CV-107-JLS,
`2012 WL 13180611 (C.D. Cal. June 1, 2012) ............................................................................ 2
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`Bayer AG v. Housey Pharms, Inc.,
`340 F.3d 1367 (Fed. Cir. 2003) .................................................................................................. 2
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`Momenta Pharms., Inc. v. Teva Pharms. USA Inc.,
`809 F.3d 610 (Fed. Cir. 2015) .................................................................................................... 2
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`Ormco Corp. v. Align Tech., Inc.,
`653 F. Supp. 2d 1016 (C.D. Cal. 2009) ...................................................................................... 5
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................................................. 3
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`Zond, LLC v. Renesas Elecs. Corp.,
`Civil Action No. 13-11625-NMG,
`2014 U.S. Dist. LEXIS 114363 (D. Mass. Aug. 15, 2014) ........................................................ 5
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`ii
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`Case 6:20-cv-01211-ADA Document 19-2 Filed 04/09/21 Page 4 of 10
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`I.
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`INTRODUCTION
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`NVIDIA’s Reply continues either to mischaracterize or ignore relevant precedent while
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`attempting to blur the early threshold requirements to survive a motion to dismiss. The cases,
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`from this Court, other district courts, and the Federal Circuit, all support denial of NVIDIA’s
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`Motion to Dismiss. When properly analyzed both factually and legally, it is clear that the
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`methods of the asserted patents fall squarely within the coverage of § 271(g). At worst, fact
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`issues relating to commercial viability preclude dismissal of the § 271(g) causes of action.
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`II.
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`ARGUMENT
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`A.
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`The ’538, ’305, and ’248 Patents Are Directed to the Manufacture of a
`Product and Subject to Section 271(g)
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`As an initial matter, NVIDIA’s claim that “Plaintiff argues that processes merely
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`‘implicating’ manufacturing or related to ‘commercial viability’ are enough to meet the ‘made
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`by’ requirement of section 271(g)” (Dkt. 18 at 1) is incorrect. Contrary to NVIDIA’s
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`characterization, Ocean has not asserted that each of the patents is covered by § 271(g) solely
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`because the claimed processes “implicate” to the production of semiconductors. (See Dkt. 17 at
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`3-6.) Rather, in accordance with Bayer and other precedent, Ocean has looked to the claims and
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`specification of the patents themselves and has identified aspects of each process demonstrating
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`that the claimed processes result in the making of physical products. Moreover, Ocean only
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`argued about “commercial viability” in the context that fact issues preclude dismissal at this
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`time.1 (Id. at 8-9.)
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`1.
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`NVIDIA Mischaracterizes Federal Circuit Authority on Section
`271(g)
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`NVIDIA’s recitation of applicable law continues to be incomplete. For example, the full
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`quotation from Bayer cited in added bold by NVIDIA (Dkt. 18 at 3) reads: “Thus, the process
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`1 NVIDIA cites no authority for its contention (Dkt. 18 at 2) that commercial viability is “only”
`relevant to whether a product is materially changed by subsequent processes.
`1
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`Case 6:20-cv-01211-ADA Document 19-2 Filed 04/09/21 Page 5 of 10
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`must be used directly in the manufacture of the product, and not merely as a predicate process
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`to identify the product to be manufactured.”2 Bayer AG v. Housey Pharms, Inc., 340 F.3d
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`1367, 1378 (Fed. Cir. 2003). Ocean has never asserted that processes do not need to be used in
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`manufacturing semiconductors under § 271(g), only that they do not need to claim physical
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`manufacture of products. (Dkt. 17 at 5.) NVIDIA’s attempt to blur this distinction in the law is
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`inappropriate and should be rejected.3
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`Similarly, NVIDIA further confuses matters when it sets up a straw man argument that
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`Ocean has never made: that the drug product in Bayer was “made by” a process covered by §
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`271(g). (Dkt. 18 at 3.) In reaching its conclusion that the claimed process in question there
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`produced only information, the Bayer court noted that the drug product analyzed by the claimed
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`process issue was itself a physical product. Bayer, 340 F.3d at 1377. Here, however, what is
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`imported is not information, but the physical products that are manufactured using these
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`patented processes.
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`NVIDIA’s continued reliance on Momenta (Dkt. 18 at 4) is also misplaced as that case
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`involved a testing process that was performed on a sampling of intermediate products that
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`destroyed the samples on which the tests were performed. Momenta Pharms., Inc. v. Teva
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`Pharms. USA Inc., 809 F.3d 610, 616-17 (Fed. Cir. 2015). As a result, there could never be any
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`subsequent sale of any product on which the claimed method had been performed—only
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`products on which the claimed method had not been performed survived to be developed into
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`final products, and later imported and sold.
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`2 Unless otherwise noted, emphasis within this brief has been added.
`3 Anticancer, Inc. v. Pfizer, Inc., Case No. 11-CV-107-JLS, 2012 WL 13180611 (C.D. Cal. June
`1, 2012), cited by NVIDIA (Dkt. 18 at 2) for the proposition that the scope of § 271(g) is a question
`of law, is inapposite. The complaint there failed to allege both a product manufactured using a
`patented process and importation of a product and, as such, judgment on the pleadings was
`appropriate. Moreover, the plaintiff there acknowleged that the process in question was for testing.
`2
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`Case 6:20-cv-01211-ADA Document 19-2 Filed 04/09/21 Page 6 of 10
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`Here, however, the patented methods recited in the ’538, ’402, ’305 and ’248 patents are
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`performed during manufacturing and on all wafers and, thus, are actually utilized on the same
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`units of product later imported and sold. This alone distinguishes Momenta.
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`2.
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`The ’538 Process Is Used in the Making of Semiconductors
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`NVIDIA’s contentions that the claims of the ’538 patent do not “recite any processing or
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`manufacturing steps that create or transform the properties of a product” (Dkt. 18 at 5) is flatly
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`contradicted by the unequivocal statement in the ’538 patent that its fault detection method is
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`“relat[ed] to processing of a subsequent workpiece” (Dkt 1-8 at 13:38), as well as by numerous
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`other passages cited in Ocean’s Opposition. (See Dkt. 19 at 4-5.) For the same reasons, the
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`claims do not “only recite analysis.” (Dkt. 18 at 5.) These disclosures cannot simply be ignored
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`as NVIDIA would like this Court to do.
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`Moreover, NVIDIA cites no authority for its creative proposition that Ocean’s reliance on
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`the specification of a patent is somehow “irrelevant” for the purpose of determining the
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`applicability of Section 271(g). (Dkt. 18 at 6.) In fact, claims are always construed in light of
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`the entirety of the patent’s disclosure, including the specification and other claims. Phillips v.
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`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).
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`3.
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`The ’305 and ’248 Processes Are Used in the Making of
`Semiconductors
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`Returning to its conclusory argument that the the asserted patents are not “used directly”
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`in the manufacture of products (Dkt. 18 at 6), NVIDIA mischaracterizes the disclosures of the
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`’305 and ’248 patents. Indeed, its Reply does not contain any direct citations to the patents, and
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`relies entirely on legal argument.
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`Both the ’305 patent and the ’248 patent cover the complex scheduling of tools and wafer
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`lots in semiconductor fabrication processes. Without scheduling in any form, no manufacturing
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`could take place, including, for example, which semiconductor tools are used and when, what
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`Case 6:20-cv-01211-ADA Document 19-2 Filed 04/09/21 Page 7 of 10
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`processing recipes are deployed and at what rate, and where the wafers would be transported and
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`how.
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`NVIDIA’s argument that the “the claimed process of ‘scheduling’ is not used directly in
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`any processes that give Defendant’s accused products their form and properties” (Dkt. 18 at 7)
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`grossly mischaracterizes and oversimplifies the invention of each patent. Instead, as the
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`extensive citations from both patents in Ocean’s Opposition (Dkt. 17 at 6-8) reveal, the
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`scheduling methods dictate when a wafer lot will be processed by a given tool and how many
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`wafers will be processed by that tool. The ’305 and ’248 processes directly control the
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`transformation of raw materials, wafer substrates, into finished semiconductor products. Again,
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`this is more than sufficient to place the claimed methods within the purview of § 271(g).
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`Here again, NVIDIA overstates the reach of Federal Circuit precedent. As discussed in
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`Section II.A.1 above, Momenta involved testing of finished products, while the ’305 and ’248
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`processes schedule process steps during manufacturing. Bayer’s exclusion of processes that
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`produce information as a product does not affect these processes either, as they both result in the
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`making of physical products. Ocean has never argued that the ’248 or ‘305 processes fall within
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`the purview of § 271(g) solely because they are “indispensable.” (Dkt. 18 at 6-7.)
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`Finally, NVIDIA again argues, without any authority, that “[t]he claims do not recite the
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`performance of any 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.” (Dkt 18 at
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`8.) This simplistic tautology has no basis in the law and should be disregarded.
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`B.
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`NVIDIA Has Raised an Issue of Fact Precluding Dismissal
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`While NVIDIA takes pains to argue that the Court should not consider the factual
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`question of whether a patented process contributes to the commercial viability of a product when
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`4
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`Case 6:20-cv-01211-ADA Document 19-2 Filed 04/09/21 Page 8 of 10
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`considering the scope of § 271(g) (Dkt. 20 at 2), it once again mischaracterizes the caselaw
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`(while not actually citing to it). For example, Ormco Corp. v. Align Tech., Inc., 653 F. Supp. 2d
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`1016 (C.D. Cal. 2009), specifically found that the issue of commercial viability was “one
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`relevant factor” to be considered. Ormco Corp., 653 F. Supp. 2d at 1026 n.1.4 As such, and as
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`discussed in Ocean’s Opposition (Dkt. 17 at 8-9), whether or not producing the accused products
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`without the use of the patented methods would be commercially viable is a fact issue that
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`precludes dismissal.
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`Further, NVIDIA cannot properly argue that Ocean “attempts to create a factual dispute”
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`(Dkt. 18 at 8). It was NVIDIA that raised the issue of the contents of Ocean’s claim charts (Dkt.
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`13 at 7 n. 1). To the extent that NVIDIA is arguing that Ocean’s claim charts fail to allege “any
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`type of manufacturing action that creates or transforms the properties of the accused products”
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`(Dkt. 18 at 8), this is plainly contradicted by the very charts that NVIDIA cites. Those charts
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`refer respectively to: (a) “the Applied Materials SmartFactory Productivity Solution including
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`SmartSched and Advanced Productivity Family (“APF”) suite (“SmartFactory”), which is used
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`to fabricate or manufacture the ’248 Infringing Instrumentalities” (Dkt. 1-15 at 3); and (b)
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`“the camLine LineWorks system, which is used to fabricate or manufacture the ’305
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`Infringing Instrumentalities.” (Dkt. 1-14 at 4.)
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`To the extent that the materials cited in Ocean’s charts are relevant to this motion, they
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`point to questions of fact precluding dismissal. See Zond, LLC v. Renesas Elecs. Corp., Civil
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`Action No. 13-11625-NMG, 2014 U.S. Dist. LEXIS 114363 at *8 (D. Mass. Aug. 15, 2014)
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`(denying a motion to dimiss § 271(g) claims when it “would require factual findings outside of
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`the Fed. R. Civ. P. 12(b)(6) record”).
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`4 Related to this, it does not appear that the courts in Bayer and Momenta were ever even asked to
`address the issue of commercial viability.
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`5
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`Case 6:20-cv-01211-ADA Document 19-2 Filed 04/09/21 Page 9 of 10
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`C.
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`Leave to Amend Is Appropriate in the Unlikely Event that the Court
`Determines the Motion to Be Well-Founded
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`Given the numerous flaws in NVIDIA’s motion, it should be denied in its entirety.
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`Nevertheless, as set forth in Ocean’s Opposition (Dkt. 17 at 9), the Court may grant leave to
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`amend rather than dismissing counts. Should the Court determine that Ocean has in any way
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`failed to sufficiently meet the requirements for pleading § 271(g) infringement, then it should
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`appropriately grant Ocean leave to amend to correct any insufficiencies in the pleaded
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`allegations.
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`III. CONCLUSION
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`For all of the reasons stated above and in Ocean’s Opposition, Defendant’s Motion to
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`Dismiss should be denied.
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`Dated: April 9, 2021
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`/s/ Alex Chan
`Timothy Devlin
`tdevlin@devlinlawfirm.com   
`Henrik D. Parker
`hparker@devlinlawfirm.com
`Alex Chan  
`State Bar No. 24108051  
`achan@devlinlawfirm.com   
`DEVLIN LAW FIRM LLC 
`1526 Gilpin Avenue 
`Wilmington, Delaware 19806 
`Telephone: (302) 449-9010 
`Facsimile: (302) 353-4251 
`  
`Attorneys for Plaintiff, 
`Ocean Semiconductor LLC 
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 9, 2021, a true and correct copy of the above and foregoing
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`Case 6:20-cv-01211-ADA Document 19-2 Filed 04/09/21 Page 10 of 10
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`document has been served on all counsel of record via the Court’s CM/ECF system.
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`/s/ Alex Chan
`Alex Chan
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`7
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