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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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`Civil Action No. 6:20-cv-1212-ADA
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`v.
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`NXP USA, Inc.,
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`DEMAND FOR JURY TRIAL
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`Defendant.
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`ORDER ON DISCOVERY DISPUTE
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`Pursuant to the Court’s June 17, 2021 Standing Order for Discovery Hearings in Patent
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`Cases, August 29, 2022 oral order, and September 20, 2022 oral order, the parties Plaintiff Ocean
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`Semiconductor LLC (“Ocean”) and Defendant NXP USA, Inc. (“NXP”) hereby jointly submit
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`the following proposed order summarizing the nature of the parties’ September 20, 2022
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`discovery dispute hearing (“Hearing”) and the parties’ understanding of the Court’s rulings.
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`The Court heard argument from Ocean and NXP regarding the following four disputes:
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`• Issue #1: Whether the Court should vacate the TSMC- and UMC-related relief orally
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`granted at the August 29, 2022 hearing given that Plaintiff Ocean’s subsequent RPX
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`settlement agreement means TSMC- and UMC-sourced NXP products are no longer
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`accused products. For Issue #1, NXP sought the following relief:
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`o “Vacate the TSMC- and UMC-related relief orally granted at the August 29, 2022
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`hearing given that Plaintiff Ocean’s subsequent RPX settlement agreement means
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`TSMC- and UMC-sourced NXP products are no longer accused products.”
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`1
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`Case 6:20-cv-01212-ADA-DTG Document 106 Filed 10/04/22 Page 2 of 4
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`• Issue #2: Whether NXP should be compelled to produce: (1) documents covering
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`licenses and agreements with NXP’s equipment manufacturers (“First Category”); (2)
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`documents regarding its processes for manufacturing the accused products using ultra-
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`thin resist (“Second Category”); and (3) NXP’s sales information for products NXP
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`manufactures in its own fabs (“Third Category”). For Issue #2, Ocean sought the
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`following relief:
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`o “NXP must produce documents responsive to the First, Second, and Third Category
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`of documents as well as the Preliminary Information by September 16, 2022 or within
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`(3) three business days of the Court’s ruling, whichever is later.”
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`• Issue #3: Whether NXP should be compelled to supplement its Interrogatory Responses
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`Nos. 1-4, 7-11, and 13-14. For Issue #3, Ocean sought the following relief:
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`o “NXP must supplement its responses to Ocean’s Interrogatory Nos. 1-4, 7-11, and 13-
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`14 by September 16, 2022 or within (3) three business days of the Court’s ruling,
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`whichever is later.”
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`• Issue #4: Whether the scope of relief granted by the Court at the August 29, 2022,
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`hearing on sales and financial information covers NXP products, including those
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`manufactured by TSMC and UMC as well as products manufactured by NXP in its
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`manufacturing facilities.
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`o “The scope of relief granted by the Court at the August 29, 2022, hearing on sales and
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`financial information is not limited to those products manufactured by TSMC and
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`UMC, and that NXP must also produce sales and financial information on products
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`NXP manufactures in its own fabs.”
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`2
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`Case 6:20-cv-01212-ADA-DTG Document 106 Filed 10/04/22 Page 3 of 4
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`For the reasons stated at the Hearing, the Court rules as follows:
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`For Issue #1, it is hereby ORDERED that the Court will not withdraw its August 29,
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`2022 oral order (“August 29 Order”), but the Court will MODIFY the order. The Court hereby
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`modifies its August 29 Order, and it is hereby ORDERED that on or before October 4, 2022,
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`NXP shall produce:
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`(i) Sales information for any sales into or from the U.S. or products made in whole or part
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`in the U.S. beginning December 31, 2014 for any NXP-manufactured wafer and any NXP
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`product that contains or is made from an NXP-manufactured or unlicensed wafer; and (ii) TM
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`numbers and UMC identifiers for any NXP product sold beginning December 31, 2014 that
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`contains or is made from NXP or unlicensed wafers and wafers from either TSMC or UMC.
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`NXP is not obligated to produce sales information for any NXP product that contains or is made
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`from a TSMC- or UMC-manufactured wafer where such product sources wafers solely from
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`licensed parties such as TSMC and UMC.
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`For Issue #2:
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`• As to the “First Category,” the Court DENIES Ocean’s request based on NXP’s
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`representation that “they are producing and have been producing those
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`agreements,” but it is hereby ORDERED that NXP substantially complete its
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`production of licenses and agreements relating to Applied Materials by October 7,
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`2022; and substantially complete production of licenses and agreements for all
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`other equipment manufacturers by October 21, 2022;
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`• As the “Second Category,” the Court DENIES Ocean’s motion to compel without
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`prejudice;
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`• As the “Third Category,” Ocean’s motion to compel the Third Category of
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`3
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`Case 6:20-cv-01212-ADA-DTG Document 106 Filed 10/04/22 Page 4 of 4
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`documents is MOOT as it is subsumed within Issue #1.
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`For Issue #3, the Court DENIES Ocean’s motion to compel without prejudice. The
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`parties are ORDERED to meet and confer regarding Issue #3 after the production of sales data
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`pursuant to Issue #1.
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`For Issue #4, this issue is MOOT because it is subsumed within Issue #1.
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`IT IS SO ORDERED.
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` The Honorable Judge Derek T. Gilliland
`United States Magistrate Judge
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`4
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