Case 6:20-cv-01212-ADA Document 15 Filed 03/12/21 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 SEMICONDUCTORS LLC,
`Plaintiff,
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`v.
`NXP SEMICONDUCTORS N.V., et al.,
`Defendants.
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`Civil Action No. 6:20-CV-1212-ADA
`JURY TRIAL DEMANDED
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`NXP USA, INC.’S MOTION TO DISMISS
`FOR FAILURE TO STATE A CLAIM UNDER 35 U.S.C. § 271(g)
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`Case 6:20-cv-01212-ADA Document 15 Filed 03/12/21 Page 2 of 10
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`TABLE OF CONTENTS
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` I.
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`INTRODUCTION............................................................................................................. 1
`LEGAL STANDARD ....................................................................................................... 1
`II.
`III. ARGUMENT ..................................................................................................................... 3
`A.
`Plaintiff’s Fault Detection Patents Output Information, Not A Physical
`Article ..................................................................................................................... 3
`1.
`’402 Patent, Claim 1 .................................................................................. 3
`2.
`’538 Patent, Claim 1 .................................................................................. 5
`Plaintiff’s Scheduling Patents Output Information, Not A Physical Article ... 5
`1.
`’305 Patent, Claim 1 .................................................................................. 5
`2.
`’248 Patent, Claim 1 .................................................................................. 6
`IV. CONCLUSION ................................................................................................................. 7
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`B.
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`Case 6:20-cv-01212-ADA Document 15 Filed 03/12/21 Page 3 of 10
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`I.
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`INTRODUCTION
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`Defendant NXP USA, Inc. (“NXP” or “Defendant”) moves to dismiss with prejudice
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`certain of Plaintiff Ocean Semiconductor LLC’s (“Ocean” or “Plaintiff”) Section 271(g)
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`infringement claims for failure to state a claim. Infringement under 35 U.S.C. § 271(g) is limited
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`to importation of “a product which is made by a process patented in the United States.” It applies
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`to process claims that result in a manufactured good when implemented. Section 271(g) does not
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`encompass method claims whose implementation result in the mere generation of information
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`Yet, for at least four1 of the asserted patents, Plaintiff has pleaded Section 271(g) infringement of
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`claims that generate information rather than result in a manufactured good.
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`Specifically, U.S. Patent No. 6,725,402 (“’402 patent”) concerns the receipt and
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`processing of “operational state data of a processing tool.” U.S. Patent No. 8,676,538 (“’538
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`patent”) concerns “fault detection.” And U.S. Patent Nos. 6,907,305 (“’305 patent”) and
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`6,968,248 (“’248 patent”) claim “scheduling an action” in response to “detecting an occurrence
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`of a predetermined event.” These claims cover generation or detection of information about a
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`processing environment, not, as the law requires, processes “used directly in the manufacture of
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`the product.” See, e.g., Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1378 (Fed. Cir. 2003)
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`(“[T]he process must be used directly in the manufacture of the product . . .”).
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`II.
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`LEGAL STANDARD
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`35 U.S.C. § 271(g) creates a cause of action for infringement for the importation, sale, or
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`use of a product manufactured according to a patented method, but only where (1) there is no
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`1 Given the stage of the case and associated burdens, this motion focuses on the four most egregious
`patents. Defendant reserves the right to challenge Plaintiff’s Section 271(g) claims as to other asserted
`patents as the case progresses.
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`1
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`Case 6:20-cv-01212-ADA Document 15 Filed 03/12/21 Page 4 of 10
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`infringement under Section 271(a); (2) the product produced by the claimed method is not
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`substantially changed before importation; and (3) the product produced according to a claimed
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`process is not a trivial component of something else. See 35 U.S.C. 271(g).
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`Infringement claims under § 271(g) are “limited to physical goods that were
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`manufactured” using a patented process and do not extend to “information generated by a
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`patented process.” Bayer, 340 F.3d at 1368. Section 271(g) applies to “the actual ‘ma[king]’ of
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`a product,” not “methods of testing a final product or an intermediate substance.” Momenta
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`Pharms., Inc. v. Teva Pharms. USA Inc., 809 F.3d 610, 615 (Fed. Cir. 2015) (alteration in
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`original). A product is “made by” a process when that process “create[s] or give[s] new
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`properties” to the product. Id. at 616–17. “[T]he Supreme Court [has] defined the verb form of
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`‘manufacture’ as ‘the production of articles for use from raw or prepared materials by giving to
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`these materials new forms, qualities, properties, or combinations, whether by hand-labor or by
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`machinery.” Bayer, 340 F.3d at fn.4 (quoting American Fruit Growers, Inc. v. Brogdex Co., 283
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`U.S. 1, 11 (1931)) (emphasis in original).
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`Method claims that concern only the testing of a product or intermediate substance do not
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`constitute the manufacture of that product and are not enforceable under Section 271(g). See
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`Momenta Pharm., 809 F.3d at 615 (“[I]it is more consonant with the language of the statute, as
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`well as with this court’s precedent, to limit § 271(g) to the actual ‘ma[king]’ of a product, rather
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`than extend its reach to methods of testing a final product or intermediate substance to ensure
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`that the intended product or substance has in fact been made.” (alteration in original)); id. at 616
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`(“‘[M]a[king]’ does not extend to testing to determine whether an already-synthesized drug
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`substance possesses existing qualities or properties.” (second alteration in original)).
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`Similarly, claims that concern the mere generation of information—such as “the
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`Case 6:20-cv-01212-ADA Document 15 Filed 03/12/21 Page 5 of 10
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`identification and characterization of” a product—cannot support a cause of action for
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`infringement under Section 271(g). See Bayer, 340 F.3d at 1370, 1377; id at 1367 (“[W]e
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`conclude that infringement under 35 U.S.C. § 271(g) is limited to physical goods that were
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`manufactured and does not include information generated by a patented process.”). Deficient
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`Section 271(g) claims may be dismissed at the Rule 12(b) stage. Id. at 1378 (affirming dismissal
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`at the Rule 12(b) stage where the asserted claim covered the generation of information, not the
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`manufacture of a product).
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`III.
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`ARGUMENT
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`Infringement under 35 U.S.C. § 271(g) requires that the practiced method result in the
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`manufacture of a physical article. See Bayer, 340 F.3d at 1370; id at 1367 (“[W]e conclude that
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`infringement under 35 U.S.C. § 271(g) is limited to physical goods that were manufactured and
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`does not include information generated by a patented process.”). The Federal Circuit has
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`“equated the word ‘made’ in § 271(g) with ‘manufacture,’” which entails “‘the production of
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`articles for use from raw or prepared materials by giving to these materials new forms, qualities,
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`properties, or combinations, whether by hand-labor or by machinery.’” See Momenta Pharm.,
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`809 F.3d at 616; Bayer, 340 F.3d at 1371, fn.4 (quoting American Fruit Growers, 283 U.S. at 11)
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`(emphasis in original).
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`A. Plaintiff’s Fault Detection Patents Output Information, Not A Physical Article
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`1. ’402 Patent, Claim 1
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`Plaintiff alleges that NXP infringes claim 1 of the ’402 patent under Section 271(g). Dkt.
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`1 ¶ 104. Claim 1 of the ’402 patent reads:
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`1. A method comprising:
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`receiving at a first interface operational state data of a processing
`tool related to the manufacture of a processing piece;
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`sending the state data from the first interface to a fault detection unit,
`wherein the act of sending comprises:
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`sending the state data from the first interface to a data collection
`unit;
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`accumulating the state data at the data collection unit;
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`translating the state data from a first communications protocol to a
`second communications protocol compatible with the fault detection
`unit; and
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`sending the translated state data from the data collection unit to the
`fault detection unit;
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`determining if a fault condition exists with the processing tool based
`upon the state data received by the fault detection unit;
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`performing a predetermined action on the processing tool in
`response to the presence of a fault condition; and
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`sending an alarm signal indicative of the fault condition to an
`advanced process control framework from the fault detection unit
`providing that a fault condition of the processing tool was
`determined by the fault detection unit,
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`wherein performing a predetermined action further comprises
`sending a signal by the framework to the first interface reflective
`of the predetermined action.
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`As the claim language shows, claim 1 of the ’402 patent covers “receiving…operational
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`state data of a processing tool”; “sending the state data…to a fault detection unit”; using the state
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`data to “determine[e] if a fault condition exists”; and if so, “performing a predetermined action
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`on the processing tool,” including “sending a signal…reflective of the predetermined action,”
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`and sending an alarm signal indicative of the fault condition.” In other words, claim 1 produces
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`only information – notification of the existence of a fault condition. It does not produce a
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`physical article. Accordingly, allegations of Section 271(g) infringement of the ’402 patent are
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`Case 6:20-cv-01212-ADA Document 15 Filed 03/12/21 Page 7 of 10
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`not legally cognizable and should be dismissed with prejudice.
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`2. ’538 Patent, Claim 1
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`Plaintiff alleges that NXP infringes claim 1 of the ’538 patent under § 271(g). Dkt. 1 ¶
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`226. Claim 1 of the ’538 patent reads:
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`1. A method, comprising:
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`performing in a computer a fault detection analysis relating to
`processing of a workpiece;
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`determining in a said computer a relationship of a parameter relating
`to said fault detection analysis to a detected fault;
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`adjusting in said computer a weighting of said parameter based upon
`said relationship of said parameter to said detected fault; and
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`performing in said computer the fault detection analysis relating to
`processing of a subsequent workpiece using said adjusted
`weighting.
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`As the claim language shows, claim 1 of the ’538 patent covers “performing . . . a fault
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`detection analysis”; “determining…a relationship of a parameter relating to said fault detection
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`analysis to a detected fault”; “adjusting…a weighting of said parameter”; and “performing…the
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`fault detection analysis…using said adjusted weighting.” In other words, claim 1 covers
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`adjusting a parameter used for fault detection to perform fault detection using the adjusted
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`parameter – all of which is informational. Information regarding a parameter is adjusted to
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`produce information reflecting the existence of a fault. No physical article is produced.
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`Accordingly, allegations of Section 271(g) infringement of the ’538 patent are not legally
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`cognizable and should be dismissed with prejudice.
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`B. Plaintiff’s Scheduling Patents Output Information, Not A Physical Article
`1. ’305 Patent, Claim 1
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`Plaintiff alleges that NXP infringes claim 1 of the ’305 patent under Section 271(g). Dkt.
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`Case 6:20-cv-01212-ADA Document 15 Filed 03/12/21 Page 8 of 10
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`1 ¶ 124. Claim 1 of the ’305 patent reads:
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`1. A method for scheduling in an automated manufacturing
`environment, comprising:
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`detecting an occurrence of a predetermined event in a process flow;
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`notifying a software scheduling agent of the occurrence; and,
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`reactively scheduling an action from the software scheduling agent
`responsive to the detection of the predetermined event.
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`As the claim language shows, claim 1 of the ’305 patent covers “scheduling in an
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`automated manufacturing environment” by “detecting an occurrence of a predetermined event”;
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`“notifying a software scheduling agent of the occurrence”; and “reactively scheduling an action”
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`in response. The only thing produced is a schedule for a future unspecified action—i.e., mere
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`information. Notably, the claim does not describe taking any action, much less an action that
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`constitutes the manufacture of a physical article. Bayer, 340 F.3d at 1368. Accordingly,
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`allegations of Section 271(g) infringement of the ’305 patent are not legally cognizable and
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`should be dismissed with prejudice.
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`2. ’248 Patent, Claim 1
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`Plaintiff alleges that NXP infringes claim 1 of the ’248 patent under § 271(g). Dkt. 1 ¶
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`144. Claim 1 of the ’248 patent reads:
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`1. A method for scheduling in an automated manufacturing
`environment, comprising:
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`automatically detecting an occurrence of a predetermined event in
`an integrated, automated process flow;
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`automatically notifying a software scheduling agent of the
`occurrence; and,
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`reactively scheduling an action from the software scheduling agent
`responsive to the detection of the predetermined event.
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`Case 6:20-cv-01212-ADA Document 15 Filed 03/12/21 Page 9 of 10
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`Claim 1 of the ’248 patent is virtually identical to claim 1 of the ’305 patent. The only
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`difference is insertion of the words “automated” and “automatically” (see emphasis added,
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`above), and that does not change the Section 271(g) analysis. Accordingly, for the same reason
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`as the ’305 patent, allegations of Section 271(g) infringement of the ’248 patent are not legally
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`cognizable and should be dismissed with prejudice.
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`IV.
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`CONCLUSION
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`For the foregoing reasons, Defendant respectfully requests that the Court dismiss with
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`prejudice Plaintiff’s Section 271(g) infringement claims for U.S. Patent Nos. 6,725,402;
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`8,676,538; 6,907,305; and 6,968,248.
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`Case 6:20-cv-01212-ADA Document 15 Filed 03/12/21 Page 10 of 10
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`Dated: March 12, 2021
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`Respectfully submitted,
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` /s/ Bradley D. Coburn
`Barry K. Shelton
`Texas State Bar No. 24055029
`Bradley D. Coburn
`Texas State Bar No. 24036377
`SHELTON COBURN LLP
`311 RR 620, Suite 205
`Austin, TX 78734-4775
`bshelton@sheltoncoburn.com
`coburn@sheltoncoburn.com
`(512) 263-2165 (Telephone)
`(512) 263-2166 (Facsimile)
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`Attorneys for Defendants
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on all counsel of record via the Court’s ECF system.
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` /s/ Bradley D. Coburn
`Bradley D. Coburn
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