Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 1 of 18
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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,
`
`Plaintiff,
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`C.A. No. 6:20-cv-1212-ADA
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`
`
`v.
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`NXP Semiconductors N.V., NXP B.V. and NXP
`USA, Inc.,
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`Defendants.
`
`JURY TRIAL DEMANDED
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` PATENT CASE
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`
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`PLAINTIFF OCEAN SEMICONDUCTOR LLC’S OPPOSITION TO NXP USA, INC.’S
`MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM
`UNDER 35 U.S.C. § 271(g)
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`DATED: March 26, 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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`
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`

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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 2 of 18
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`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................................. 1
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`I.
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`II. LEGAL STANDARD ........................................................................................................... 1
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`A.
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`B.
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`The High Bar for a Motion to Dismiss ........................................................................... 1
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`The Broad Reach of Infringement Under 35 U.S.C. § 271(g) ........................................ 2
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`III. ARGUMENT ......................................................................................................................... 3
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`A.
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`The ’402 Patent Involves the Making of Physical Products Such as Silicon Wafers, and
`Ocean’s Pleadings Reflect that Fact ............................................................................... 3
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`1.
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`2.
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`The Intrinsic Record Amply Shows that Physical Products Are Being Manufactured
` ..................................................................................................................................... 3
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`NXP’s Argument Fails Because There Is No Dispute that Each Claimed Limitation
`is Performed During the Manufacture of Physical Products....................................... 4
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`B.
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`The ’538 Patent Involves the Making of Physical Products Such as Silicon Wafers, and
`Ocean’s Pleadings Reflect that Fact ............................................................................... 6
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`1.
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`2.
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`C.
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`D.
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`E.
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`NXP’s Arguments Find No Support From Bayer ....................................................... 8
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`NXP Deliberately Omits Key Claim Elements that Unmistakably Cover the
`Manufacture of Physical Products .............................................................................. 8
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`The ’305 and ’248 Patents Involve the Making of Physical Products Such as Silicon
`Wafers, and Ocean’s Pleadings Reflect that Fact ........................................................... 9
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`In All Events, Fact Issues Preclude Dismissal .............................................................. 11
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`At Worst, Rather Than Dismissing the Complaint, Leave to Amend Should Be Granted
` ...................................................................................................................................... 12
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`IV. CONCLUSION ................................................................................................................... 12
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`i
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 3 of 18
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`TABLE OF AUTHORITIES
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`Page(s)
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`
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`Cases
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`Ashcroft v. Iqbal
`556 U.S. 662 (2009) .................................................................................................................... 1
`
`Bell Atl. Corp. v. Twombly
`550 U.S. 544 (2007) .................................................................................................................... 1
`
`Biotec Biologische Naturverpackungen GmbH & Co. v. Biocorp, Inc.,
`249 F.3d 1341 (Fed. Cir. 2001) ................................................................................................ 12
`
`Bio-Technology General Corp. v. Genentech, Inc.,
`80 F.3d 1553 (Fed. Cir. 1996) ...................................................................................... 2, 3, 6, 11
`
`Causey v. Sewell Cadillac-Chevrolet, Inc.
`394 F.3d 285 (5th Cir. 2004) ...................................................................................................... 2
`
`Disc Disease Sols. Inc. v. VGH Sols., Inc.
`888 F.3 1256 (Fed. Cir. 2018) .................................................................................................... 2
`
`Eli Lilly & Co. v. Am. Cyanamid Co.,
`82 F.3d 1568 (Fed. Cir. 1996) .......................................................................................... 2, 3, 11
`
`Encoditech, LLC v. Citizen Watch Co. of Am.
`C.A. No. 18-1335-XR, 2019 U.S. Dist. LEXIS 105833 (W.D. Tex. June 25, 2019) ................. 2
`
`Frye v. Anadarko Petro. Corp.,
`953 F.3d 285 (5th Cir. 2019) ....................................................................................................... 1
`
`Lone Star Motor Imp., Inc. v. Citroen Cars Corp.,
`288 F.2d 69 (5th Cir. 1961) ...................................................................................................... 12
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`Lormand v. US Unwired, Inc.,
`565 F.3d 228 (5th Cir. 2009) ....................................................................................................... 1
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`Millennium Cryogenic Techs., Ltd. v. Weatherford Artificial Lift Sys.,
`Civil Action No. H-12-0890-KPE,
`2012 U.S. Dist. LEXIS 196638 (S.D. Tex. 2012) .................................................................... 11
`
`Ormco Corp. v. Align Tech., Inc.,
`653 F. Supp. 2d 1016 (C.D. Cal. 2009) .................................................................................... 11
`
`Skinner v. Switzer
`562 U.S. 521 (2011) .................................................................................................................... 2
`
`ii
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 4 of 18
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`Statutes
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`35 U.S.C. § 271 ............................................................................................................................... 2
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`Rules
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`Fed. R. Civ. P. 15 .......................................................................................................................... 12
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`iii
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 5 of 18
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`I.
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`INTRODUCTION
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`NXP USA, Inc.’s (“NXP”) Motion to Dismiss for Failure to State a Claim Under §
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`271(g) (“Motion”) misconstrues both the nature of the patents at issue and the applicable law.
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`Each of the four patents that NXP seeks to dismiss—U.S. Patent Nos. 6,725,402 (“’402 patent”),
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`8,676,538 (“’538 patent”), 6,907,305 (“’305 patent”), and 6,968,248 (“’248 patent”)
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`(collectively, “Asserted Patents”)—describes the manufacture of semiconductors in excruciating
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`detail and claims methods used for, and during, the manufacture of semiconductors including
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`semiconductor wafers, which are physical products falling squarely within the scope of § 271(g).
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`NXP’s bare bones motion with little factual or legal argument, coupled with its artificial attempt
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`to limit the Court’s analysis to isolated claimed features and its misapplication of the relevant
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`law, falls far short of the high bar necessary to obtain dismissal. The Motion should be denied.
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`II.
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`LEGAL STANDARD
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`A.
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`The High Bar for a Motion to Dismiss
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`Under Federal Rule of Civil Procedure 12(b)(6), dismissal of a complaint or cause of
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`action is appropriate if it fails to state a claim for relief that is “plausible on its face.” Ashcroft v.
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`Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
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`When considering a motion to dismiss under Rule 12(b)(6), “[t]he court must accept all well-
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`pleaded facts as true and must draw all reasonable inferences in favor of the plaintiff.” Frye v.
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`Anadarko Petro. Corp., 953 F.3d 285, 290-91 (5th Cir. 2019) (citing Lormand v. US Unwired,
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`Inc., 565 F.3d 228, 232 (5th Cir. 2009));1 see also Bustos v. Martini Club, Inc., 599 F.3d 458, 461
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`(5th Cir. 2010) (internal quotations omitted); see also Bell Atl. Corp., 550 U.S. at 570. The
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`question resolved is “whether [the] complaint was sufficient to cross the federal court’s
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`threshold”—not whether the plaintiff will ultimately prevail. Skinner v. Switzer, 562 U.S. 521,
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`1 Unless otherwise indicated, all emphasis in this brief has been added.
`1
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 6 of 18
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`530 (2011). Pleadings should be construed broadly in light of the allegations as a whole, and the
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`facts pled should be viewed expansively in light of the liberal pleading standards. See, e.g.,
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`Causey v. Sewell Cadillac-Chevrolet, Inc., 394 F.3d 285, 288-90 (5th Cir. 2004).
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`This Court has held, based on Federal Circuit precedent, that identification of specific
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`products, when coupled with allegations that defendants make, sell, offer to sell, import or use
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`the accused products in the United States the accused products and that each accused product
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`satisfies each and every limitation of at least one patent claim is enough to meet “the relatively
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`low threshold for stating a claim for patent infringement.” Encoditech, LLC v. Citizen Watch Co.
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`of Am., C.A. No. 18-1335-XR, 2019 U.S. Dist. LEXIS 105833, at *10 (W.D. Tex. June 25, 2019)
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`(citing Disc Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3 1256 (Fed. Cir. 2018)).
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`B.
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`The Broad Reach of Infringement Under 35 U.S.C. § 271(g)
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`Section 271(g) attaches liability to the import or sale of products made by a patented
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`process. “By enacting the Process Patent Amendments Act, the principal portion of which is
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`codified as 35 U.S.C. § 271(g), Congress changed the law by making it an act of infringement to
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`import into the United States, or to sell or use within the United States ‘a product which is made
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`by a process patented in the United States[.]’” Eli Lilly & Co. v. Am. Cyanamid Co., 82 F.3d
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`1568, 1572 (Fed. Cir. 1996).
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`Congress created liability under § 271(g) to ensure that holders of process patents and
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`domestic manufacturers were not disadvantaged relative to holders of device and system claims
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`or foreign manufacturers, and the courts interpret “made by” in view of these policy goals.
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`Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1368, 1373 (Fed. Cir. 2003); Bio-Technology
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`General Corp. v. Genentech, Inc., 80 F.3d 1553, 1561 (Fed. Cir. 1996), cert. denied, 519 U.S.
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`911 (1996); Eli Lilly & Co. 82 F.3d at 1578; 5 Chisum on Patents § 16.02[6][d][iv] (2019). The
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`2
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 7 of 18
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`Federal Circuit has interpreted the term “made” as used in § 271(g) to mean “manufactured” and
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`the term “product” to mean a “physical article.” Bayer AG, 340 F.3d at 1377.
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`Section 271(g) is applied broadly. When enacting the Process Patent Amendments Act
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`(“PPAA”), Congress specifically declined to require that a product be made “directly” from a
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`patented process in order to infringe under § 271(g). See Eli Lilly & Co., 82 F.3d at 1576. “In
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`enacting the PPAA, Congress did not include a positive definition of ‘made by.’ The court must
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`interpret ‘made by’ in light of the PPAA’s policy to afford meaningful protection for owners of
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`patents claiming processes.” 5 Chisum on Patents § 16.02[6][d][iv] (2019) (citing Bayer, 340
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`F.3d at 1368; Bio-Technology General Corp., 80 F.3d at 1561). “The connection between a
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`patented process and a product can vary from immediate . . . to remote[.]” 5 Chisum on Patents
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`§ 16.02[6][d][iv] (2019).
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`Consequently, whether a product is “made by” a patent should be interpreted expansively
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`to include products made through the “agency,” “efficacy,” “work,” “participation,” “means or
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`instrumentality,” “medium,” or “operation” of a process. Bayer at 1378, n.12 (citing Webster’s
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`and Random House dictionaries).
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`III. ARGUMENT
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`Contrary to NXP’s misdirection and conclusory allegations, each of the four patents at
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`issue relates to the making of physical products. As such, Ocean properly pleaded a cause of
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`action under § 271(g). At all events, fact issues preclude dismissal at this time.
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`A.
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`The ’402 Patent Involves the Making of Physical Products Such as Silicon
`Wafers, and Ocean’s Pleadings Reflect that Fact
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`1.
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`The Intrinsic Record Amply Shows that Physical Products Are Being
`Manufactured
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`As a preliminary matter, at least one defendant in a parallel litigation (namely NVIDIA)
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`does not challenge the applicability of Section 271(g) to the ’402 patent, implicitly recognizing
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`3
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 8 of 18
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`that NXP’s argument here has no merit. Indeed, the ’402 patent itself confirms that the invention
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`relates to: (1) the making of physical products such as silicon wafers; and (2) the actual
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`manufacture of such products. For example, the exemplary system and its manufacturing tools
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`as described in the ’402 patent are “semiconductor fabrication equipment used to produce a
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`processing piece, such as a silicon wafer,” and the exemplary tool is a “Rapid Thermal
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`Processing (RTP) tool” or “a tool for processing silicon wafers.” (Dkt. 1-3 (’402 patent) at 2:42-
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`48.) The independent method claim recites “the manufacture of a processing piece”; and the
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`independent system claim recites a tool adapted to “manufacture a processing piece” (claim 8).
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`One dependent claim recites that “the processing piece is a silicon wafer” (claim 14).
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`Ocean’s pleading allegations are consistent with the ’402 patent’s focus on physical
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`articles, in particular semiconductor products made by NXP. The Complaint limits its
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`accusations under § 271(g) to products made using the claimed method—expressly alleging that
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`“NXP has directly infringed and continues to infringe at least claim 1 of the ’402 patent . . . by
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`importing into the United States, and/or using, and/or selling, and/or offering for sale in the
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`United States, without authority or license, the ’402 Accused Products, in violation of 35 U.S.C.
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`§ 271(g).” (Dkt. 1 at ¶ 104.)
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`2.
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`NXP’s Argument Fails Because There Is No Dispute that Each
`Claimed Limitation is Performed During the Manufacture of Physical
`Products
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`Apparently recognizing that Ocean clearly accuses eligible products, NXP contends that
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`“claim 1 produces only information – notification of the existence of a fault condition.” (Dkt. 15 at
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`4.) But NXP’s argument is premised on a deliberate misreading of what the ’402 patent actually
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`describes and claims, which is a process for manufacturing physical products (“processing
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`pieces”) such as silicon wafers. The claims themselves demonstrate this fact.
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`4
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 9 of 18
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`Specifically, the patented system receives “operational state data of a processing tool”
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`(e.g., recited as “receiving . . .operational state data of a processing tool related to the
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`manufacture of a processing piece” in claim 1) “when the tool 105 is operating and processing a
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`given wafer,” and sends data to a fault detection unit (e.g., recited as “sending the translated state
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`data from the data collection unit to the fault detection unit in claim 1) “while the particular
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`wafer is being processed” to ensure that the tool is operating “within acceptable operational
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`limits (Dkt. 1-3 (’402 patent) at 3:27-31; 4:3-7.) If the processing tool is operating within
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`appropriate parameters, manufacturing proceeds (e.g., recited as “determining if a fault condition
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`exists with the processing tool” in claim 1). If a “fault condition” is detected, the system can act
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`to adjust the manufacturing process in a variety of ways, including: “manipulate the tool,” (id. at
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`5:18-20); “shut down the tool,” (id. at 5:65-6:4); or “apprise a technician of any potential
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`solutions to rectify the fault condition” (id. at 6:4-9) (e.g., recited as “performing a
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`predetermined action on the processing tool in response to the presence of a fault condition” in
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`claim 1). Where the system is monitoring tools but detects no fault, manufacturing can continue
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`as normal. All of these activities, and the recited limitations, relate directly to the manufacture
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`of the physical products and the language of claim 1 readily reflects these activities.
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`a.
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`Every Claim Limitation of the Patented Method Is
`Implemented During the Manufacture of NXP’s Accused
`Products—the Exact Conduct Prohibited by Section 271(g)
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`NXP’s narrow interpretation of Section 271(g) misses the mark. The target of Section
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`271(g) is the importation of a product made using a patented process or its subsequent sale
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`within the United States. Bayer, 340 F.3d at 1375. While the statute requires a physical product,
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`the offending physical product is that which was manufactured using the patented process. Id. at
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`1377. What is important here is not the “notification of the existence of a fault condition” in
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`5
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 10 of 18
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`isolation, as phrased by NXP, but the use of that process in manufacturing the accused physical
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`products.
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`Ocean alleges that NXP used the patented processes, including all of the limitations of
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`claim 1, as part of the manufacture of NXP’s accused products. (Dkt. 1 at ¶ 93: “The ’402
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`Accused Products are manufactured by a process including all of the limitations of at least claim
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`1 of the ’402 patent. Each such product includes an integrated circuit fabricated or manufactured
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`using, for example, the Applied Materials E3 system and/or PDF Solutions’ Exensio system.”)
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`In other words, a semiconductor physical product, such as a silicon wafer, made by a
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`manufacturing tool that uses the patented fault detection method to identify manufacturing faults
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`is a product “made by” a patented process for detecting such faults. This is the exact type of
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`conduct prohibited by Section 271(g). Bio-Tech. Gen. Corp., 80 F.3d at 1561 (holding that a
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`protein made by a host organism expressing an inserted plasmid was a product “made by” a
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`patented process for creating the plasmid).
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`There is no dispute that each limitation in claim 1 is practiced in the actual manufacture
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`of NXP’s semiconductors. The determination of fault conditions and the performance of a
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`corrective action are alleged to be crucial steps in the manufacture of NXP’s semiconductors,
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`unlike the generation of information in Bayer which was not part of the manufacture of the drug
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`products accused of infringement. Section 271(g) is thus implicated because the patented
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`method is used to manufacture the alleged infringing products.
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`B.
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`The ’538 Patent Involves the Making of Physical Products Such as Silicon
`Wafers, and Ocean’s Pleadings Reflect that Fact
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`The ’538 patent covers similar subject matter to the ’402 patent—fault detection and its
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`use in a tool manufacturing semiconductor wafers. As such, NXP’s contentions suffer from all
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`of the same flaws discussed above with respect to the ’402 patent.
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`6
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 11 of 18
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`Like the ’402 patent, the ’538 patent claims “[a] method, comprising: performing in a
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`computer a fault detection analysis relating to processing of a workpiece.” (Dkt. 1-8 (’538
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`patent) at 13:28-30.) This “workpiece comprises a semiconductor wafer.” (Claim 2.) The fault
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`detection analysis includes determining “a relationship of a parameter relating to said fault
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`detection analysis to a detected fault,” including a relationship between at least one of
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`“pressure,” “temperature,” “data,” “humidity,” or “gas flow.” (See claim 9.) The performance
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`of the fault detection method is not undertaken for mere testing or data collection purposes, but
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`rather “relat[es] to processing of a subsequent workpiece. . . .” (Id. at 13:38.) Thus, on its face,
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`the method of claim 1 is one that directly implicates the manufacture of semiconductor wafers.
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`This is confirmed by the specification, which further delineates the ways in which the
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`patented methods involve not only collection and analysis of information from the manufacturing
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`process, but also control of manufacturing tools used for manufacturing semiconductor wafers.
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`For example, as part of the weighting process, “the processing system may perform subsequent
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`processes upon the semiconductor wafers based upon the newly adjusted parameter-weighting. .
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`. .” (Id. at 11:7-9.) Figure 7 similarly indicates that the “perform subsequent process step”
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`follows the “perform dynamic PCA weighting process” step. (Id. at Fig. 7.)
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`The specification also illustrates that fault detection is an integral part of the
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`manufacturing process, not a function that occurs at a spatial or temporal remove. For example,
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`“[t]he system 300 also comprises a fault detection unit 380, which is capable of performing
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`various fault detection associated with the processing tool 310 when processing the
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`semiconductor wafers 105.” (Id. at 7:3-6.) Similarly, “in some embodiments . . . the control
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`strategies taught by the present invention can be applied to virtually any of the semiconductor
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`manufacturing tools on the factory floor.” (Id. at 12:52-61.)
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`7
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 12 of 18
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`Indeed, the ability to improve the functioning of process tools is among the principal
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`benefits cited in the patent. For example, the patent “utilizing embodiments of the present
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`invention, a more effective and accurate process adjustment may be performed to achieve more
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`accurate semiconductor wafer 105 characteristics and improved yields.” (Id. at 12:47-51.)
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`1.
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`NXP’s Arguments Find No Support From Bayer
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`As with claim 1 of the ’402 patent, NXP again contends that “claim 1 [of the ’538 patent]
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`covers adjusting a parameter used for fault detection to perform fault detection using the adjusted
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`parameter – all of which is informational.” (Dkt. 15 at 5.) In other words, NXP argues that §
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`271(g) liability only attaches where the patented method directly claims the physical
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`manufacture of that product. But Bayer provides no such support. Bayer relates to the question
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`of whether information developed using a patented process is a “product” within the scope of §
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`271(g), such that importation of that information is an infringement. Bayer, 340 F.3d at 1370-
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`71. The court in Bayer held that the importation of information was not importation of a
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`“product,” because information is not “manufactured” at all. (Id. at 1377.) Here, what is
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`imported is not information, but the physical products manufactured using these patented
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`processes.
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`Notably, Bayer itself articulates this distinction, demonstrating why the asserted patents
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`are all within the scope of § 271(g). The Bayer court separately analyzed claims involving a
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`physical drug, holding that it “is beyond dispute that a drug is a physical product that has been
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`manufactured.” (Id.) As with the drug in Bayer, it is beyond dispute that the semiconductor
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`wafers described in the ’538 patent, and the products alleged to infringe, are physical products,
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`and that the ’538 patent relates directly to the manufacture of such products.
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`2.
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`NXP Deliberately Omits Key Claim Elements that Unmistakably
`Cover the Manufacture of Physical Products
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`8
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 13 of 18
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`In alleging that claim 1 covers only “[i]information regarding a parameter [that] is
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`adjusted to produce information reflecting the existence of a fault,” NXP deliberately omits key
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`claim elements that expressly recite the physical nature of the products being manufactured. For
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`example, as stated above, claim 1 recites the “processing of a workpiece” as well as “processing
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`of a subsequent workpiece” where the “workpiece comprises a semiconductor wafer.” NXP,
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`however, intentionally left off these key claim limitations in its motion, choosing to use ellipses
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`to conceal those elements from the Court. (Dkt. 15 at 5.) In doing so, NXP failed to explain
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`why or how those limitations are not implicated under Section 271(g). Nor did NXP articulate
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`why those key elements in combination with the remaining limitations are not used to
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`manufacture physical articles such as semiconductor wafers.
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`C.
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`The ’305 and ’248 Patents Involve the Making of Physical Products Such as
`Silicon Wafers, and Ocean’s Pleadings Reflect that Fact
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`NXP construes the claimed invention of the ’305 and ’248 patents as “a schedule for a
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`future unspecified action” (Dkt. 15 at 6) but ignores the fact that scheduling semiconductor
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`fabrication processes is an indispensable part of semiconductor manufacturing. Without a means
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`of scheduling, for example, semiconductor lots and individual wafers for production, it would be
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`impossible to coordinate the complex operational steps and multiple tools used in a
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`manufacturing facility. As such, NXP’s contention that these patents do not claim methods for
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`manufacturing a physical article—and particularly its assertion that the claims of these patents
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`“do[] not describe taking any action” (Dkt. 15 at 6)—are wrong.
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`As discussed in the specifications, the semiconductor fabrication process “involves
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`processing a number of wafers through a series of fabrication tools” in which “[l]ayers of
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`materials are added to, removed from, and/or treated on a semiconducting substrate during
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`fabrication to create the integrated circuits.” (Dkt. 1-2 (’305 patent) at 1:38-42; Dkt. 1-4 (’248
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`patent) at 1:41-45.) “Efficient management of a facility for manufacturing products such as
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`9
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 14 of 18
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`semiconductor chips requires monitoring various aspects of the manufacturing process” and
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`“track[ing] the amount of raw materials on hand, the status of work-in-process and the status and
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`availability of machines and tools at every step in the process.” (Dkt. 1-2 at 2:10-16; Dkt. 1-4 at
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`2:12-18.)
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`The ’305 and ’248 patents both describe ways “for efficiently scheduling and controlling
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`the lots [] of wafers [] through the fabrication process,” such as “schedul[ing] ahead for each lot
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`[] one or more operations on a specified qualified process tool 115, including . . . making
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`optimizing decisions such as running an incomplete batch as opposed to waiting for an
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`approaching lot,” and “schedule[ing] and initiat[ing] activities such as lot transport and
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`processing.” (Dkt. 1-2 at 6:45-48 and 6:65-7:11; Dkt. 1-4 at 6:47-50 and 6:67-7:13.) As is
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`evident, each of these processes is more than just “a schedule for a future unspecified action.”
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`(Dkt. 15 at 6.)
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`This teaching is not limited to the specification; it is also manifested in the claims
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`themselves. For example, each claim 1 of the ’305 and ’248 patents recites “a method for
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`scheduling in an automated manufacturing environment,” including “automatically detecting
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`an occurrence of a predetermined event in an integrated, automated process flow,” which is a
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`“process flow [for] fabricat[ing] semiconductor devices.” (Dkt. 1-2 at 5:3-4; Dkt. 1-4 at 5:5-6.)
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`This “process flow comprises a portion of a semiconductor manufacturing facility.” (See Claim
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`43 of the ’305 patent.) Several of the dependent claims also elaborate on the types of events
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`detected during manufacturing at the “semiconductor manufacturing facility.”
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`For example, claim 7 of the ’305 patent and claim 5 of the ’248 patent specify the
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`“predetermined event” to include “a machine becoming available, . . . a chamber a chamber
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`going down, a chamber becoming available, a change in machine capabilities, a lot arriving at a
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`machine, . . . a lot wafer count changed, a lot process operation changed, and a lot departing a
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 15 of 18
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`machine.” Other dependent claims (e.g., claim 9 of the ’305 patent and claim 7 of the ’248
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`patent) also focus on possible actions taken in view of a detected event that directly impacts
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`manufacturing, including “adding new processing capabilities” and “deleting old processing
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`capabilities” “of a machine.” (Dkt. 1-2 at Table 1; Dkt. 1-4 at Table1.)
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`Thus, contrary to NXP’s contention (Dkt. 15 at 6), the “scheduling” method as described
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`in both the ’305 and ’248 patents governs not only when to take certain manufacturing actions
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`but also what manufacturing actions to take in making the physical products. It dictates when
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`and how, for example, the wafers, lots, and tools interact to ensure successful manufacturing of
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`semiconductor wafers.
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`D.
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`In All Events, Fact Issues Preclude Dismissal
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`While, as discussed above, the claims of the ’402, ’538, ’305, and ’248 patents fall within
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`the scope of § 271(g) as a matter of law, at least one fact issue exists regarding the commercial
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`viability of producing the accused products without use of the patented methods. This fact issue
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`also precludes dismissal of the challenged causes of action.
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`A product is considered “made by” a patented process when the use of that process is
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`needed to make the process commercially viable, independent of the exact role played by the
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`patented method in the manufacture of an accused product. See, e.g., Eli Lilly & Co., 82 F.3d at
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`1575; Bio-Technology Gen. Corp., 80 F.3d at 1561; Ormco Corp. v. Align Tech., Inc., 653 F.
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`Supp. 2d 1016, 1026 (C.D. Cal. 2009). Here, the benefits of the claimed methods do not relate to
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`some product that is remote to the accused products, but instead relate to the quality and cost of
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`the final semiconductor products accused in this action.
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`Moreover, whether a patent’s claims are sufficiently tied to the accused products to
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`impose § 271(g) liability is a classic fact question reserved for the trier of fact. Millennium
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`Cryogenic Techs., Ltd. v. Weatherford Artificial Lift Sys., Civil Action No. H-12-0890-KPE,
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 16 of 18
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`2012 U.S. Dist. LEXIS 196638, at *8 (S.D. Tex. 2012) (holding that “issues regarding whether
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`the refurbished stators are ‘made by’ the patented process . . . are material fact issues that are,
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`and should remain, within the province of the fact finder in this case”) (citing Biotec Biologische
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`Naturverpackungen GmbH & Co. v. Biocorp, Inc., 249 F.3d 1341, 1352 (Fed. Cir. 2001)).
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`While NXP’s motion should be denied as a matter of law, Ocean should, at a minimum, be
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`entitled to discovery on these issues before any further consideration is undertaken.
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`E.
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`At Worst, Rather Than Dismissing the Complaint, Leave to Amend Should
`Be Granted
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`Should the Court be inclined to rule in NXP’s favor on any issue, Ocean instead should
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`be granted leave to amend the Complaint rather than having it dismissed outright. Indeed, this
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`Court has the power to sua sponte grant leave to amend the Complaint as justice requires. Fed.
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`R. Civ. P. 15(a); Lone Star Motor Imp., Inc. v. Citroen Cars Corp., 288 F.2d 69, 75 (5th Cir.
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`1961). Granting leave to amend is especially appropriate in the context of dismissing for failure
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`to state a claim. Griggs v. Hinds Junior Coll., 563 F.2d 179, 180 (5th Cir. 1977).
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`IV. CONCLUSION
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`For all of the foregoing reasons, NXP’s Motion to Dismiss for Failure to State a Claim
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`Under 35 U.S.C. § 271(g) should be denied in its entirety.
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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 17 of 18
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`Dated: March 26, 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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`Case 6:20-cv-01212-ADA Document 18 Filed 03/26/21 Page 18 of 18
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 26, 2021, I caused a copy of this document to be served by
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`transmitting it via e-mail or e